| PTO Form 1822 (Rev 11/2007) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86331284 |
| LAW OFFICE ASSIGNED | LAW OFFICE 117 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/86331284/mark.png |
| LITERAL ELEMENT | LIBRARY |
| 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. |
| PENDING SERIAL NUMBER(S) | |
| Serial number(s) 86437908 should not be used as a citation(s) under Section 2(d) of the Trademark Act, in the event that said serial number(s) mature(s) into a registration(s). The applicant hereby requests removal of this application from suspension, based on the following arguments. In the event that the examining attorney is not persuaded by these arguments, the applicant hereby requests that this application be returned to suspended status, awaiting ultimate disposition of the referenced serial number(s). | |
| ARGUMENT FILE NAME(S) | |
| ORIGINAL PDF FILE | PE_2078613618-141942503_._Consent_with_Burwell_-_LIBRARY_OF_FLOWERS__01298977_.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\863\312\86331284\xml7\RSI0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\863\312\86331284\xml7\RSI0003.JPG | |
| CANCELLATION PROCEEDING(S) | |
| Cancellation No(s). 92060989 has/have been terminated. The applicant hereby requests removal of this application from suspension for further action by the examining attorney. | |
| COMMENT(S)/REMARK(S) | |
|
ARGUMENT AGAINST REFUSAL AND POTENTIAL REFUSAL UNDER SECTION 2(d) REFUSAL BASED ON REG. NO. 4243997 The Examining Attorney refused registration based on alleged likelihood of confusion with the mark covered by Reg. No. 4243997 in the name of Byredo AB (“Byredo”). The cited registration covers the mark BIBLIOTHEQUE for use with “Soaps; perfumery, essential oils, cosmetics and scented candles” (hereinafter “Byredo’s Goods”). Applicant requests the reconsideration and withdrawal of the instant refusal based on the consent from Byredo as well as the differences in the respective marks, as further set forth below. A. The Respective Marks Differ Notwithstanding the doctrine of foreign equivalents, Applicant submits that the average U.S. consumer would not translate the word BIBLIOTHÈQUE to LIBRARY and thus would not be confused when encountering those respective marks as used on Applicant’s goods and Byredo’s Goods. Aside from the translation of the cited mark, there is no similarity in appearance or sound between Applicant’s mark and the cited mark. B. Consent from Owner of Cited Registration In recognition of the fact that Applicant and Byredo believe the respective marks differ sufficiently to avoid confusion, Applicant is attaching a copy of its Consent to Trademark Registration ("Consent") with Byredo. Byredo has consented to registration of Applicant's mark and has agreed with Applicant to cooperate to avoid confusion (Consent at Paragraph 3). Applicant points specifically to Paragraph 1 of the Consent, which states that Applicant may use and register the mark LIBRARY for the goods identified in the subject Application. Such consents to registration weigh in favor of a finding that confusion is unlikely. In re Four Seasons Hotels Ltd., 26 U.S.P.Q.2d 1071 (Fed. Cir. 1993). This is especially true where, as here, the consent sets forth in detail the ways in which confusion between the marks is avoided. See id. Here, as in Four Seasons, the consent provides that the parties will cooperate to prevent the possibility of consumer confusion arising in the future and is thus more than "a mere consent." See Consent at ¶ 3. In recognition of the differences in their respective marks, Applicant and Byredo have agreed that confusion is unlikely. See Consent at third WHEREAS clause. The Consent is, therefore, entitled to significant weight. [T]he more information that is in the consent agreement as to why the parties believe confusion to be unlikely, and the more evidentiary support for such conclusions in the facts of record or in the way of undertakings by the parties, the more we can assume that the consent is based on a reasoned assessment of the market place, and consequently the more weight the consent will be accorded.
In re Donnay Int'l, Societe Anonyme,31 U.S.P.Q.2d 1953, 1956 (T.T.A.B. 1994). Applicant and Byredo are in the best positionto evaluate whether confusion is likely, and they have determined that it is not. In reviewing prior case law, the Federal Circuit has determinedthat "those most familiar with and affected by the marketplace were best able to attest to its effectsand determine whetherthere was likelihood of confusion -- even in cases where marks were identical and goods closelyrelated. 11 Four Seasons,26 U.S.P.Q.2d at 1073 (citations omitted). See, e.g., In re E.I. du Pont de Nemours &Co.,177 U.S.P.Q.2d 563 (C.C.P.A.1973) (consent agreement tipped infavor of reversing findingof confusion between RALLY for automobile cleansersand RALLY for all-purpose detergents); Bongrain Int 'l v. Delice de France,1 U.S.P.Q.2d 1775 {Fed. Cir. 1987) (confusion unlikelybased on consent to use of DEUCE DE FRANCE,INC. for basedgoods and LE PETIT DEUCEDE FRANCE for dairy products); see also Donnay Int'l,31 U.S.P.Q.2d 1953 (considering naked consent as evidence that confusion unlikelybetween THE GHOST for soccer balls and GHOST for rackets and bags therefor). Accordingly, Applicant requeststhat the refusalbased on the cited registration be withdrawn for the reasons set forthherein as well as the attached consent agreement and above arguments based thereon. POTENTIAL REFUSAL BASED ON SERIAL NO. 86437908 The Examining Attorney has also indicated that registration could be refused herein if the mark covered by Serial No. 86437908 issues to registration. That cited application was filed by Burwell Industries (“Burwell”), and it seeks registration of the mark LIBRARY OF FLOWERS for use with “eau de parfum; perfume; fragrances; hand cream; shower gel; bubble bath; bar soap; perfume sampler kit consisting of samples of different fragrances; bath oil; bath milk; perfumed cream; beauty cream; body cream and candles” (“Burwell’s Goods”). Applicant is attaching a consent to registration from Burwell and submits that the same arguments made above with respect to Byredo’s cited registration apply to the potential refusal based on Burwell’s application. Specifically, the respective marks differ and Burwell and Applicant have agreed that the marks can coexist for their respective goods in view of those differences in the respective marks. Moreover, Burwell and Applicant have agreed to cooperate to avoid confusion. As such, the attached consent is entitled to “great weight” and the potential citation should therefore be withdrawn. |
|
| REMARKS FILE NAME(S) | |
| ORIGINAL PDF FILE | CAR_2078613618-141942503_._byredoconsent.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\863\312\86331284\xml7\RSI0004.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\863\312\86331284\xml7\RSI0005.JPG | |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /karinsegall/ |
| SIGNATORY'S NAME | k |
| SIGNATORY'S POSITION | Attorney, Member NY Bar |
| DATE SIGNED | 06/10/2015 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jun 10 14:24:07 EDT 2015 |
| TEAS STAMP | USPTO/RSI-XXX.XX.XXX.XX-2 0150610142407339046-86331 284-5307b55fd89c2be25c7bf 241da5bece95897674efda254 e8f72d012346fd5b-N/A-N/A- 20150610141942503648 |
| PTO Form 1822 (Rev 11/2007) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
ARGUMENT AGAINST REFUSAL AND POTENTIAL REFUSAL UNDER SECTION 2(d)
REFUSAL BASED ON REG. NO. 4243997
The Examining Attorney refused registration based on alleged likelihood of confusion with the mark covered by Reg. No. 4243997 in the name of Byredo AB (“Byredo”). The cited registration covers the mark BIBLIOTHEQUE for use with “Soaps; perfumery, essential oils, cosmetics and scented candles” (hereinafter “Byredo’s Goods”). Applicant requests the reconsideration and withdrawal of the instant refusal based on the consent from Byredo as well as the differences in the respective marks, as further set forth below.
A. The Respective Marks Differ
Notwithstanding the doctrine of foreign equivalents, Applicant submits that the average U.S. consumer would not translate the word BIBLIOTHÈQUE to LIBRARY and thus would not be confused when encountering those respective marks as used on Applicant’s goods and Byredo’s Goods. Aside from the translation of the cited mark, there is no similarity in appearance or sound between Applicant’s mark and the cited mark.
B. Consent from Owner of Cited Registration
In recognition of the fact that Applicant and Byredo believe the respective marks differ sufficiently to avoid confusion, Applicant is attaching a copy of its Consent to Trademark Registration ("Consent") with Byredo. Byredo has consented to registration of Applicant's mark and has agreed with Applicant to cooperate to avoid confusion (Consent at Paragraph 3). Applicant points specifically to Paragraph 1 of the Consent, which states that Applicant may use and register the mark LIBRARY for the goods identified in the subject Application.
Such consents to registration weigh in favor of a finding that confusion is unlikely. In re Four Seasons Hotels Ltd., 26 U.S.P.Q.2d 1071 (Fed. Cir. 1993). This is especially true where, as here, the consent sets forth in detail the ways in which confusion between the marks is avoided. See id. Here, as in Four Seasons, the consent provides that the parties will cooperate to prevent the possibility of consumer confusion arising in the future and is thus more than "a mere consent." See Consent at ¶ 3.
In recognition of the differences in their respective marks, Applicant and Byredo have agreed that confusion is unlikely. See Consent at third WHEREAS clause. The Consent is, therefore, entitled to significant weight.
[T]he more information that is in the consent agreement as to why the parties believe confusion to be unlikely, and the more evidentiary support for such conclusions in the facts of record or in the way of undertakings by the parties, the more we can assume that the consent is based on a reasoned assessment of the market place, and consequently the more weight the consent will be accorded.
In re Donnay Int'l, Societe Anonyme,31 U.S.P.Q.2d 1953, 1956 (T.T.A.B. 1994).
Applicant and Byredo are in the best positionto evaluate whether confusion is likely, and they have determined that it is not. In reviewing prior case law, the Federal Circuit has determinedthat "those most familiar with and affected by the marketplace were best able to attest to its effectsand determine whetherthere was likelihood of confusion -- even in cases where marks were identical and goods closelyrelated. 11 Four Seasons,26 U.S.P.Q.2d at 1073 (citations omitted). See, e.g., In re E.I. du Pont de Nemours &Co.,177 U.S.P.Q.2d 563 (C.C.P.A.1973) (consent agreement tipped infavor of reversing findingof confusion between RALLY for automobile cleansersand RALLY for all-purpose detergents); Bongrain Int 'l v. Delice de France,1 U.S.P.Q.2d 1775 {Fed. Cir. 1987) (confusion unlikelybased on consent to use of DEUCE DE FRANCE,INC. for basedgoods and LE PETIT DEUCEDE FRANCE for dairy products); see also Donnay Int'l,31 U.S.P.Q.2d 1953 (considering naked consent as evidence that confusion unlikelybetween THE GHOST for soccer balls and GHOST for rackets and bags therefor).
Accordingly, Applicant requeststhat the refusalbased on the cited registration be withdrawn for the reasons set forthherein as well as the attached consent agreement and above arguments based thereon.
POTENTIAL REFUSAL BASED ON SERIAL NO. 86437908
The Examining Attorney has also indicated that registration could be refused herein if the mark covered by Serial No. 86437908 issues to registration. That cited application was filed by Burwell Industries (“Burwell”), and it seeks registration of the mark LIBRARY OF FLOWERS for use with “eau de parfum; perfume; fragrances; hand cream; shower gel; bubble bath; bar soap; perfume sampler kit consisting of samples of different fragrances; bath oil; bath milk; perfumed cream; beauty cream; body cream and candles” (“Burwell’s Goods”). Applicant is attaching a consent to registration from Burwell and submits that the same arguments made above with respect to Byredo’s cited registration apply to the potential refusal based on Burwell’s application. Specifically, the respective marks differ and Burwell and Applicant have agreed that the marks can coexist for their respective goods in view of those differences in the respective marks. Moreover, Burwell and Applicant have agreed to cooperate to avoid confusion. As such, the attached consent is entitled to “great weight” and the potential citation should therefore be withdrawn.
