Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86121094 CALIBER(Standard Characters, see http://uspto.report/TM/86121094/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant respectfully requests that the Trademark Examining Attorney withdraw the refusal to register because, in the opinion of the Trademark Examining Attorney, there is a likelihood of confusion with the mark in U.S. Registration No. 4,918518. Applicant respectfully submits that there is no such likelihood of confusion for the following reasons: U.S. Registration No. 4,918,518 ? STETSON CALIBER It is well-established that ?likelihood of confusion cannot be predicated on dissection of a mark?the ultimate conclusion rests on consideration of the marks in their entireties.? In re National Data Corp., 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985); TMEP ? 1207.01(b)(iv). The Federal Circuit has instructed that marks must be viewed in their entirety when measuring likelihood of confusion under Section 2(d), and ?dissecting the respective marks and comparing only common elements is improper.? Opryland U.S.A., Inc. v. The Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). As the Federal Circuit stated: ?When it is the entirety of the marks that is perceived by the public, it is the entirety of the marks that must be compared.? 23 USPQ2d at 1473. When the marks are compared in their entireties, they are significantly different in visual and aural impression, in meaning, and in overall commercial impression. The only similarity in the marks is the term ?CALIBER?. However, a search of the PTO database shows that there are 163 active ?CALIBER? marks being used in connection with goods and services in the PTO database. (See Exhibit 1). Furthermore, in Class 3 there are 3 different registrations for marks using the term ?CALIBER?, two of which have different owners. (See Exhibit 2). The records of the Patent and Trademark Office demonstrate that many entities have used CALIBER without their being instances of consumer confusion. Applicant?s mark is drastically different in its visual appearance from the mark cited by the Examining Attorney. Because the marks must be considered in their entirety, the term CALIBER creates a very different visual appearance from STETSON CALIBER. While both marks contain the word ?caliber?, the addition of the term STETSON results in no visual similarities. This makes consumer confusion highly unlikely. Furthermore, spoken aloud, CALIBER does not sound similar to STETSON CALIBER. Due to the lack of aural similarity between the cited mark and Applicant?s mark, there is no likelihood of confusion among consumers who hear the cited mark and Applicant?s mark. The Trademark Examining Attorney in comparing the ?cosmetics and makeup? of Applicant to the ?after-shave, shampoos and body wash for humans? of the Registrant alleges that these types of goods are closely related and are frequently sold together under the same brand names. Well-established case law supports the premise that even identical marks, when used on potentially related goods are not confusingly similar. In the cases that follow, the goods are either similar or move in the same channels of trade, but are not considered to be confusingly similar and thus, strongly support registration of the Applicant?s CALIBER mark. The goods are arguably related only by a tenuous connection to cosmetics and after-shave and shampoos, but are different in all other respects. In Faultless Starch Co. v. Sales Producers Assoc., Inc., 530 F.2d 1400, 189 USPQ 141 (CCPA 1976), the court upheld the TTAB that the mark FAULTLESS for canned foods was not confusingly similar to the mark FAULTLESS for laundry starch, based on large part to the wide variety of different goods in supermarkets. On a similar note, while both of these products may be found in a drug store or pharmacy, they would not be found in the same sections or aisles so as to confuse consumers. Many products sold in pharmacies have similar names without leading to consumer confusion. For example, a search of the PTO database shows that there are currently 11 active marks which use the term CALIBER for clothing in Class 25, 9 of which are registered. (See Exhibit 3). All 11 marks are owned by 11 different owners. This would indicate that the term CALIBER should not be owned by one registrant. See also, In re British Bulldog, Ltd., 224 U.S.P.Q. 854 (TTAB 1984) (PLAYERS for men?s underwear held not likely to be confused with PLAYERS for shoes). The Board observed that shoes and underwear are distinctively different even when sold in the same store. Even marks which are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties? goods or services so that there is no likelihood of confusion. See, e.g., In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987) (CROSS-OVER for bras not likely to be confused with CROSSOVER for ladies? sportswear); In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977) (BOTTOMS UP for ladies and children?s underwear held not likely to be confused with BOTTOMS UP for men?s clothing). These cases support a finding that CALIBER for cosmetics when compared to the cited registration is not likely to cause confusion. The parties marks are CALIBER and STETSON CALIBER. Clearly, when considered as a whole and in their commercial context, they are not confusingly similar in appearance, sound, or overall commercial impression. Applicant submits that this application is in condition for acceptance in all respects and so requests that the mark be approved for publication.

EVIDENCE
Evidence in the nature of Evidence consists of searches of the U.S. PTO database indicating the number of various registrations/pending applications which currently exist using the term "CALIBER". has been attached.
JPG file(s):
Evidence-1
Original PDF file:
evi_6912168250-20161128201723504802_._calibercl3.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_6912168250-20161128201723504802_._calibercl25.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

SIGNATURE(S)
Response Signature
Signature: /Lindsey Leibowitz/     Date: 11/28/2016
Signatory's Name: Lindsey Leibowitz
Signatory's Position: Attorney OF RECORD, NYS BAR MEMBER

Signatory's Phone Number: 9143283521

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 86121094
Internet Transmission Date: Mon Nov 28 20:23:25 EST 2016
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2016112820232502
2761-86121094-5704ad7eb7c155e2eb04e09393
a8346eac95fa1ebfc842c851f1dc384955e3d-N/
A-N/A-20161128201723504802