| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86134581 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/86134581/mark.png |
| LITERAL ELEMENT | CHALLENGER |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
Registration was refused under Section 2(d) as to the following mark: Registration No. 1336551 for CHALLENGER, owned by Crosman Corporation for “Sporting guns.” For the reasons set forth below, the refusal to register the Applicant’s mark should be withdrawn. The parties are already coexisting with their respective marks in Canada, and previously coexisted with use in the U.S. for nearly a decade, and did not experience any confusion known to either party. The Applicant uses its CHALLENGER mark for ammunition for hunting and shooting, whereas Crosman uses its mark CHALLENGER sporting guns. The parties sell their respective products through different channels of trade. Based on the long history of coexistence and other factors that militate against any likelihood of confusion, the parties have entered into a Trademark Consent/Coexistence Agreement that explains the parties’ belief that the marks can peacefully coexist; a copy is attached as Exhibit A. In particular, the Trademark Consent/Coexistence Agreement specifies that no confusion is likely due to the differences in (i) the parties’ respective products, and (ii) the channels of trade, coupled with the fact that the marks are already coexisting without any known instances of confusion. The Court of Appeals for the Federal Circuit has held that a coexistence agreement such as the one submitted here, setting forth fully the reasons why confusion would not be likely, is entitled to great weight in considering the issue of likelihood of confusion. In re N.A.D., Inc., 224 U.S.P.Q. 969, 971 (Fed. Cir. 1985). As the Court stated there, quoting from In re E.I. du Pont de Nemours & Co., 177 U.S.P.Q. 563, 568 (CCPA 1973), “A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not” (emphasis in the original). Accordingly, it is respectfully submitted that the refusal to register under Section 2(d) be withdrawn. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_631381729-123327271_._CHALLENGER_-_Consent_Agreement_signed__F1353568x96B9E_.pdf |
| CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\861\345\86134581\xml4\ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\861\345\86134581\xml4\ROA0003.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\861\345\86134581\xml4\ROA0004.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A - Consent Agreement |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /sud/ |
| SIGNATORY'S NAME | Susan Upton Douglass |
| SIGNATORY'S POSITION | Attorney of Record, New York State Bar Member |
| DATE SIGNED | 05/21/2014 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed May 21 13:34:27 EDT 2014 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.X-20 140521133427893958-861345 81-500cd63114b76628e69c41 9ef23fcd6c2a2fca2f4a17c85 883ea6fac3390303ac2-N/A-N /A-20140521123327271438 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
Registration was refused under Section 2(d) as to the following mark: Registration No. 1336551 for CHALLENGER, owned by Crosman Corporation for “Sporting guns.” For the reasons set forth below, the refusal to register the Applicant’s mark should be withdrawn.
The parties are already coexisting with their respective marks in Canada, and previously coexisted with use in the U.S. for nearly a decade, and did not experience any confusion known to either party. The Applicant uses its CHALLENGER mark for ammunition for hunting and shooting, whereas Crosman uses its mark CHALLENGER sporting guns. The parties sell their respective products through different channels of trade. Based on the long history of coexistence and other factors that militate against any likelihood of confusion, the parties have entered into a Trademark Consent/Coexistence Agreement that explains the parties’ belief that the marks can peacefully coexist; a copy is attached as Exhibit A. In particular, the Trademark Consent/Coexistence Agreement specifies that no confusion is likely due to the differences in (i) the parties’ respective products, and (ii) the channels of trade, coupled with the fact that the marks are already coexisting without any known instances of confusion.
The Court of Appeals for the Federal Circuit has held that a coexistence agreement such as the one submitted here, setting forth fully the reasons why confusion would not be likely, is entitled to great weight in considering the issue of likelihood of confusion. In re N.A.D., Inc., 224 U.S.P.Q. 969, 971 (Fed. Cir. 1985). As the Court stated there, quoting from In re E.I. du Pont de Nemours & Co., 177 U.S.P.Q. 563, 568 (CCPA 1973), “A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not” (emphasis in the original).
Accordingly, it is respectfully submitted that the refusal to register under Section 2(d) be withdrawn.
