| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86332821 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/86332821/mark.png |
| LITERAL ELEMENT | VANGUARD |
| 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) | |
|
The Examining Attorney has refused registration of the applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that the applicant’s mark, when used in connection to the relevant goods, is likely to be confused with the marks in U.S. Registration Nos. 0922158, 3647583 and 3647582. The applicant respectfully disagrees and requests that the Examining Attorney withdraw the refusal to register because the respective trademarks are not likely to be confused in the marketplace. In support of the likelihood of confusion refusal based on the cited registrations, the Examining Attorney takes the position that the applicant’s goods are related to the Registrants’ in that “The parties’ goods are closely related. Both applicant and registrants identify ‘weapons’ and that “The attached Internet evidence consists of online articles from www.wikipedia.org together with web pages from www.colt.com and www.arsenal.com that show that weapons, including rifles, are used and sold in conjunction with applicant’s grenades. Therefore, applicant’s and registrants’ goods are considered related for likelihood of confusion purposes.” See Office Action at 5. However, the applicant points out that the web pages the Examining Attorney references to support her contention that the applicant’s goods are related to those of the Registrants’ goods fails to demonstrate that the applicant’s goods are sufficiently related to those of the Registrant’s goods to cause likelihood of confusion. Specifically, the www.wikipedia.org web pages submitted by the Examiner merely provide definitions and information about a particular grenade launcher called the “M203 grenade launcher” for attachment to rifles and some companies that sell them, as well as a definitions of a “Rifle Grenade,” with reference to certain companies that make such goods. Therefore, these web pages do not demonstrate that the same manufacturers make and sell firearms and “hand-held throw-able grenades and firecrackers. With regard to the attached web pages from www.colt.com, these pages merely show that this particular company makes and sells grenade launchers, not hand-thrown grenades. Therefore, the “Colt” web pages do not demonstrate that the same companies make both the applicant’s goods and those of the registrants’. Further, the www.arsenal.com web pages attached to the Examiner’s Office Action appears to consist of a website that sells (or sold) grenade launchers, grenades and firearms. However, the www.arsenal.com website address referenced in the Office Action now appears to direct to a website consisting of information and content regarding a soccer (European football) team, which certainly does not support a finding of similarity between the goods and/or channels of trade of the applicant’s goods and the registrants’ goods. Consequently, the applicant submits that none of the evidence attached to the Office Action demonstrates that the same companies manufacture and sell firearms and hand-held throwable grenades. In addition, none of the cited registrations include the applicant’s goods, namely hand-held throwable grenades and firecrackers. Hence, the Examining Attorney has not demonstrated that any of the Applicant’s goods or services are so related to those of the Registrants’ goods to warrant a finding of confusion. In addition to the above, with regard to U.S. Registration No. 0922158, as shown by the Registrant’s website, the Registrant’s goods associated with the registered mark consist of hunting rifles for sport. See Attachment 1. Similarly, with regard to U.S. Registration Nos. 3647583 and 3647582, the registered marks are for use only with explosive detection devices, not weapons such as firearms or explosives. Consequently, as can be seen from the attached evidence, the goods associated with all three cited registrations are wholly unrelated to those of the applicant’s goods and are marketed to a different class of consumers and in different channels of trade. In addition to the above, circumstances suggesting care in purchasing may tend to minimize likelihood of confusion. See TMEP §1207.01(d)(vii). As should be obvious from the applicant’s identification of goods, the applicant’s goods are not of a type available to the general purchasing public. Rather, the applicant’s goods are sold to military establishments or law enforcement agencies specially licensed to use such goods. The applicant posits that military and law enforcement agencies are highly sophisticated and knowledgeable purchasers of such goods and exercise great care when purchasing goods such as the applicant’s, thereby further decreasing any potential for confusion as to source. Finally, with regard to the marks associated with the cited registrations, the cited marks create different overall impressions when used with the relevant goods from the applicant’s mark when used with its goods. When used in connection the applicant’s goods, the applicant’s “VANGUARD” mark creates unique overall impression easily distinguishable from the overall impressions of the cited registered marks when used in connection with their goods. Further, with reference to the “ALLEN-VANGUARD” marks, the presence of “ALLEN” in both registrations, as well as the distinctive design element contained in U.S. Reg. No. 3647583, creates impressions completely distinguishable from the overall impression of the applicant’s mark. Prior Pending U.S. Application Serial Nos. 77539503 and 77539440 With regard to prior pending application Serial Nos. 77539503 and 77539440, the applicant notes that the subject prior pending applications have registered since the issuance of the present Office Action. Therefore, the applicant incorporates by reference and applies the arguments and evidence presented above to the newly issued U.S. Registration Nos. 4645370 and 4645368 and request that these newly registered marks not be cited as a basis for refusal of the applicant’s mark. Finally, the applicant notes the coexistence of the now 5 cited registrations. Specifically, the owner of the marks incorporating “Vanguard” associated with U.S. Registration Nos. 3647583 and 3647582, 4645370 and 4645368 is allowed to coexist on the Register together with the owner of the “VANGUARD” mark associated with U.S. Reg. No. 0922158, despite all 5 registrations being for use with goods in the field of weaponry. This supports a contention that despite all of the noted registrations containing “Vanguard” (or variations thereof) associated with goods in the field of weaponry, and owned by different parties, that the “Vanguard” marks create a suggestive impression, thereby allowing them to peacefully coexist on the Register, and without resulting in likelihood of confusion. Hence, the applicant requests consistent treatment with prior Office practice and that its mark be afforded similar treatment and be allowed to register and coexist with the prior registrations noted above. In view of the difference between the applicant’s goods and the Registrants’ goods and associated differences in channels of trade, coupled with the sophisticated nature of the purchasers of the applicant’s goods, as well as the coexistence of the above-referenced “Vanguard” marks, it is submitted that confusion between the respective marks is highly unlikely. In consideration of the above, the applicant respectfully requests that the likelihood of confusion refusal be withdrawn. Should the Examining Attorney have any further questions or comments, she is invited to contact the undersigned at the below-listed telephone number. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_174781494-20150216201532370459_._2015-02-15_Attachment_1_for_OA_Response.PDF |
| CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\863\328\86332821\xml4\ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\863\328\86332821\xml4\ROA0003.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\863\328\86332821\xml4\ROA0004.JPG | |
| ORIGINAL PDF FILE | evi_174781494-20150216201532370459_._2015-02-15_Attachment_2_for_OA_Response.PDF |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT16\IMAGEOUT16\863\328\86332821\xml4\ROA0005.JPG |
| ORIGINAL PDF FILE | evi_174781494-20150216201532370459_._2015-02-15_Attachment_3_for_OA_Response.PDF |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\863\328\86332821\xml4\ROA0006.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\863\328\86332821\xml4\ROA0007.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Web pages associated with cited registrations. |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | Applicant notes the requirement to submit an English translation of the corresponding foreign registration and will do so as soon as possible. In the meantime, the applicant requests that both the intent to use basis under 1(b) and the corresponding foreign registration under 44(e) be maintained. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Martin R. Geissler/ |
| SIGNATORY'S NAME | Martin R. Geissler |
| SIGNATORY'S POSITION | Attorney for Applicant; NY bar member |
| SIGNATORY'S PHONE NUMBER | 703-621-7140 |
| DATE SIGNED | 02/16/2015 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Feb 16 21:16:40 EST 2015 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XXX.X-20 150216211640938287-863328 21-5308bfd8eca3bd92b93eb9 7afe5c580bfd3d0c0e4144e99 0f3234760d4eb2253ff-N/A-N /A-20150216201532370459 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
The Examining Attorney has refused registration of the applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that the applicant’s mark, when used in connection to the relevant goods, is likely to be confused with the marks in U.S. Registration Nos. 0922158, 3647583 and 3647582. The applicant respectfully disagrees and requests that the Examining Attorney withdraw the refusal to register because the respective trademarks are not likely to be confused in the marketplace.
In support of the likelihood of confusion refusal based on the cited registrations, the Examining Attorney takes the position that the applicant’s goods are related to the Registrants’ in that “The parties’ goods are closely related. Both applicant and registrants identify ‘weapons’ and that “The attached Internet evidence consists of online articles from www.wikipedia.org together with web pages from www.colt.com and www.arsenal.com that show that weapons, including rifles, are used and sold in conjunction with applicant’s grenades. Therefore, applicant’s and registrants’ goods are considered related for likelihood of confusion purposes.” See Office Action at 5. However, the applicant points out that the web pages the Examining Attorney references to support her contention that the applicant’s goods are related to those of the Registrants’ goods fails to demonstrate that the applicant’s goods are sufficiently related to those of the Registrant’s goods to cause likelihood of confusion. Specifically, the www.wikipedia.org web pages submitted by the Examiner merely provide definitions and information about a particular grenade launcher called the “M203 grenade launcher” for attachment to rifles and some companies that sell them, as well as a definitions of a “Rifle Grenade,” with reference to certain companies that make such goods. Therefore, these web pages do not demonstrate that the same manufacturers make and sell firearms and “hand-held throw-able grenades and firecrackers.
With regard to the attached web pages from www.colt.com, these pages merely show that this particular company makes and sells grenade launchers, not hand-thrown grenades. Therefore, the “Colt” web pages do not demonstrate that the same companies make both the applicant’s goods and those of the registrants’. Further, the www.arsenal.com web pages attached to the Examiner’s Office Action appears to consist of a website that sells (or sold) grenade launchers, grenades and firearms. However, the www.arsenal.com website address referenced in the Office Action now appears to direct to a website consisting of information and content regarding a soccer (European football) team, which certainly does not support a finding of similarity between the goods and/or channels of trade of the applicant’s goods and the registrants’ goods.
Consequently, the applicant submits that none of the evidence attached to the Office Action demonstrates that the same companies manufacture and sell firearms and hand-held throwable grenades. In addition, none of the cited registrations include the applicant’s goods, namely hand-held throwable grenades and firecrackers. Hence, the Examining Attorney has not demonstrated that any of the Applicant’s goods or services are so related to those of the Registrants’ goods to warrant a finding of confusion.
In addition to the above, with regard to U.S. Registration No. 0922158, as shown by the Registrant’s website, the Registrant’s goods associated with the registered mark consist of hunting rifles for sport. See Attachment 1. Similarly, with regard to U.S. Registration Nos. 3647583 and 3647582, the registered marks are for use only with explosive detection devices, not weapons such as firearms or explosives. Consequently, as can be seen from the attached evidence, the goods associated with all three cited registrations are wholly unrelated to those of the applicant’s goods and are marketed to a different class of consumers and in different channels of trade.
In addition to the above, circumstances suggesting care in purchasing may tend to minimize likelihood of confusion. See TMEP §1207.01(d)(vii). As should be obvious from the applicant’s identification of goods, the applicant’s goods are not of a type available to the general purchasing public. Rather, the applicant’s goods are sold to military establishments or law enforcement agencies specially licensed to use such goods. The applicant posits that military and law enforcement agencies are highly sophisticated and knowledgeable purchasers of such goods and exercise great care when purchasing goods such as the applicant’s, thereby further decreasing any potential for confusion as to source.
Finally, with regard to the marks associated with the cited registrations, the cited marks create different overall impressions when used with the relevant goods from the applicant’s mark when used with its goods. When used in connection the applicant’s goods, the applicant’s “VANGUARD” mark creates unique overall impression easily distinguishable from the overall impressions of the cited registered marks when used in connection with their goods. Further, with reference to the “ALLEN-VANGUARD” marks, the presence of “ALLEN” in both registrations, as well as the distinctive design element contained in U.S. Reg. No. 3647583, creates impressions completely distinguishable from the overall impression of the applicant’s mark.
Prior Pending U.S. Application Serial Nos. 77539503 and 77539440
With regard to prior pending application Serial Nos. 77539503 and 77539440, the applicant notes that the subject prior pending applications have registered since the issuance of the present Office Action. Therefore, the applicant incorporates by reference and applies the arguments and evidence presented above to the newly issued U.S. Registration Nos. 4645370 and 4645368 and request that these newly registered marks not be cited as a basis for refusal of the applicant’s mark.
Finally, the applicant notes the coexistence of the now 5 cited registrations. Specifically, the owner of the marks incorporating “Vanguard” associated with U.S. Registration Nos. 3647583 and 3647582, 4645370 and 4645368 is allowed to coexist on the Register together with the owner of the “VANGUARD” mark associated with U.S. Reg. No. 0922158, despite all 5 registrations being for use with goods in the field of weaponry. This supports a contention that despite all of the noted registrations containing “Vanguard” (or variations thereof) associated with goods in the field of weaponry, and owned by different parties, that the “Vanguard” marks create a suggestive impression, thereby allowing them to peacefully coexist on the Register, and without resulting in likelihood of confusion. Hence, the applicant requests consistent treatment with prior Office practice and that its mark be afforded similar treatment and be allowed to register and coexist with the prior registrations noted above.
In view of the difference between the applicant’s goods and the Registrants’ goods and associated differences in channels of trade, coupled with the sophisticated nature of the purchasers of the applicant’s goods, as well as the coexistence of the above-referenced “Vanguard” marks, it is submitted that confusion between the respective marks is highly unlikely. In consideration of the above, the applicant respectfully requests that the likelihood of confusion refusal be withdrawn.
Should the Examining Attorney have any further questions or comments, she is invited to contact the undersigned at the below-listed telephone number.
