Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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PTO Form 1957 (Rev 9/2005)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86415783 MAGNUM(Standard Characters, see http://uspto.report/TM/86415783/mark.png) has been amended as follows:

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

REMARKS

In the Office Action dated January 13, 2015, the Examining Attorney preliminarily refused registration of the Application on the ground that the applied-for mark is likely to be confused with the registered marks MAGNUM MARINE and Design, Registration No. 1593796, covering “BRIEFCASE PORTFOLIOS AND LUGGAGE,” in Class 18, and MAGNUM, Registration No. 3628941, covering a variety of “Equipment and clothing for horses and domestic animals” (the cited registrations are collectively referred to as the “Cited Registrations”).  The Cited Registrations are owned by different and unrelated registrants.

Applicant respectfully disagrees with the Examining Attorney’s conclusion.  Likelihood of confusion is determined on a case-specific basis, applying the factors set out in In re E. I. DuPont DeNemours &Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973).  Some of the DuPont factors are (1) the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; (2) the similarity or dissimilarity of the channels of trade; and (3) the conditions under which and the buyers to whom sales are made, i.e., “impulse” v. “careful, sophisticated purchasing.”  These factors are not listed in order of merit.  Each may from case to case play a dominant role.  Id. at 1361.

There is no likelihood of confusion between Applicant’s mark and the Cited Registrations because of differences in the goods, marks, channels of trade and the buyers to whom sales are made, all of which is made clear by the amendment Applicant has made to its identification of goods and the USPTO’s treatment of similar marks on the federal register.

 

A.  The Parties’ Goods are Not Related

Applicant has herein amended its description of goods to specify that its products are for use by uniformed professionals and not in connection with boats and equipment and clothing for horses and domestic animals, which are the core goods offered by the owners of the Cited Registrations (as explained further below).  Applicant’s description of goods now covers the following:

"Duffel bags; all-purpose gear bags; all-purpose utility bags; all purpose carrying bags; backpacks; day packs; carryalls; carry all bags; kit bags; travel bags, fanny packs, shoulder bags and tote bags; all of the foregoing to be used by uniformed professionals and not in connection with boats and equipment and clothing for horses and domestic animals", in Class 18.

The goods in Applicant’s application are an extension of the goods covered in Applicant’s registered MAGNUM trademark for clothing and footwear.  See Applicant’s U.S. Registration No. 4103655 covering “Protective clothing, footwear and headgear for protection against accident, fire and injury; protective industrial clothing, footwear and headgear for protection against accident, fire and injury; clothing, footwear and headgear for protection against accident, fire and injury; waterproof safety clothing and footwear for protection against accident, fire and injury; excluding gloves and cut resistant sleeves for industrial use” and U.S. Registration No. 1764589 covering “shoes; namely, a rugged boot.”

In contrast, the Cited Registrants offer equipment and clothing for horses and domestic animals (MAGNUM), and boats (MAGNUM MARINE and Design).  With respect to the MAGNUM MARINE mark, the cited Class 18 goods are mere promotional goods for the core “boat” product.  See <MagnumMarine.com> (printout attached as evidence).

As such, Applicant’s goods are not in any way related to the goods covered by the Cited Registrations.  If goods are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely.  TMEP 1207.01(a)(i).  See, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field).

Applicant respectfully submits that promotional boating products and equipment and clothing for horses and domestic animals are entirely different from the specialized bags covered by the instant application.  Even though the goods covered by the marks at issue can be generally categorized as clothing and bags -- they are clothing and bags with a very specific and specialized purpose that are marketed to, and used by, a separate and unique set of consumers.  Indeed, the Applicant’s registered MAGNUM mark has co-existed on the U.S. federal register with the cited MAGNUM registration for over 6 years and with the cited MAGNUM MARINE and Design registration for over 22 years.

The fact that the marks are -- in a broadly defined sense – clothing/bags does not mean that consumers will assume that they originate from the same source.  Applicant has amended its identification of goods to make clear the manner and industry for which its goods will be used and to restrict its channels of trade.  Accordingly, Applicant’s goods are unrelated to the goods covered by the Cited Registrations. 

B.  Differences in Channels of Trade      

Applicant’s goods travel in different channels of trade than the goods covered by the Cited Registrations.  If the goods of one party are sold to one set of buyers in a different marketing context than the goods of another seller, the likelihood that a single group of buyers will be confused by similar trademarks is less than if both parties sold their goods through the same channels of distribution.  Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388 (Fed. Cir. 1992) (no likelihood of confusion between E.D.S. for computer services and EDS for power supplies and battery chargers.) 

The Cited Registrants’ goods are marketed and sold directly to those seeking MAGNUM MARINE brand boats and MAGNUM brand equestrian equipment.  These are NOT general consumer products.  Moreover, the Cited Registrants’ products are not available for sale in general retail stores – the goods are available directly from the cited registrants or in specialized retail supply stores that offer products that cater specifically to the particular industry (horses/boats).  See attached evidence.   

Therefore, the goods covered by the Cited Registrations are highly specialized and marketed via narrow trade channels and suppliers that cater to a highly specialized industry.  On the other hand, the Applicant’s goods are marketed to uniformed professionals in need of professional grade bags.  Applicant’s channel of trade is equally specialized yet very different from, and does not overlap with, the specialized products marketed under the Cited Registrations.  In fact, purchasers of the Applicant’s goods and the Cited Registrants’ goods will never encounter their respective products within the same channels of trade.  The parties products will not appear together in the same stores or retail establishments.  Only consumers interested in equestrian products will encounter the mark in the cited MAGNUM registration.  Moreover, only consumers seeking boats, and in turn promotional or secondary goods offered under the MAGNUM MARINE and Design mark will encounter the mark in the cited MAGNUM MARINE and Design registration.  Accordingly, not only are the parties’ good unrelated, they also travel in different channels of trade and are marketed to different purchasers.  Therefore, the significant differences in the distinct and specialized channels of trade eliminate any likelihood of confusion.   

C.  Differences in, and Sophistication of, Consumers

The buyers of the goods covered by Applicant’s mark and those covered by the Cited Registrations are sophisticated.  Circumstances suggesting care in purchasing may tend to minimize likelihood of confusion.  TMEP 1207.01(d)(vii).  Highly sophisticated and specialized goods, which are likely to be purchased only with care and deliberation after investigation to determine suitability for specific needs are less likely to be confused than if the marks were both used to purchase inexpensive over the counter items likely to be orally requested in retail stores.  See In re Software Design, Inc., 220 U.S.P.Q. 662, 663 (T.T.A.B. 1983) (DOX for computer programming services and DOC’S for custom manufacture of computer systems held unlikely to be confused even though services are related on ground that services were highly sophisticated, technical, relatively expensive and likely to be purchased after careful investigation and deliberation). 

In this case, Applicant’s goods are directed to consumers who are uniformed professionals interested in purchasing bags to function as equipment to complement their professional duties.  These individuals will make significant, well-researched and deliberative purchases.  This type of consumer exercises a greater level of care, thus minimizing a likelihood of confusion as to source.  Likewise, consumers of the goods covered by the Cited Registrations will also make well-thought out and deliberative decisions because they are seeking highly specialized products (equestrian equipment for MAGNUM and promotional goods for MAGNUM MARINE boats).  These purchasers are not impulse purchasers.  Accordingly, consumers of the respective goods of the parties make deliberative decisions with a greater level of care, thereby minimizing confusion between the Applicant’s mark and the marks in the Cited Registrations.  Therefore, the goods offered by the parties appeal to different customers who are sophisticated, exist for distinct purposes, and as a result, are in no sense likely to cause confusion.

D.  Differences Between the Marks

 

The MAGNUM MARINE and Design mark differs from Applicant’s mark on numerous levels.  For one, it incorporates additional wording and design elements that allow the overall marks, and the wording therein, to stand apart from one another.  Applicant’s mark is MAGNUM and the meaning and connotation of the mark are associated with the MAGNUM mark and registrations that have co-existed on the federal register with the cited MAGNUM MARINE and Design registration for 22 years.

 

The addition of “Marine” to the cited mark describes the boating products offered under the MAGNUM MARINE mark.  The different commercial impressions created by each mark are re-enforced when considering the specialized goods and channels of trade in which the respective products are offered and marketed. 

 

These differences, when combined with the factors stated above, render confusion between the marks even less likely.

            E.  Third Party Registrations For Clothing & Bags

 

It is noteworthy that the USPTO has determined that many marks containing the term MAGNUM may co-exist for clothing and bags.  This co-existence indicates that the Trademark Office affords marks incorporating the term MAGNUM a narrow range of protection, and believes that such marks are distinguishable from each other where the parties accurately identify the nature of the goods (as the parties have clearly done in the instant case).  The following is a representative list of third party registrations:

 

Mark and Owner	Registration No.	Relevant Goods
MAGNUM, owned by Cited Registrant	3628941	Equipment and clothing for horses and domestic animals, namely, blankets, tote bags, leashes, collars, bits, bridles, halters, gaiters, namely, jumping boots for horses, saddle pads, bareback pads, seat pads for saddles, storage bags for equestrian gear, saddle bags, feed bags, harnesses, hoods, cinches, cinch covers, cinch ring protectors, neck sweats, jowl sweats, sheet sweats, tail wraps and sacks, mane tamers, face covers, reins, hobbles, leads, girths, girth covers, stirrup straps, trailer ties, martingales, saddles, curb straps and chains, lunge lines, headstalls, shipping boots for horses hooves and legs, but not boots, eyewear, luggage or clothing for humans
MAGNUM, owned by Applicant	4103655	Protective clothing, footwear and headgear for protection against accident, fire and injury; protective industrial clothing, footwear and headgear for protection against accident, fire and injury; clothing, footwear and headgear for protection against accident, fire and injury; waterproof safety clothing and footwear for protection against accident, fire and injury; excluding gloves and cut resistant sleeves for industrial use
MAGNUM MARINE and Design, owned by Cited Registrant	3994862	BRIEFCASE PORTFOLIOS AND LUGGAGE in Class 18; and CLOTHING BELTS, SPORTSWEAR, NAMELY, TEE-SHIRTS, KNIT DRESS SHIRTS, STYLE AUTO JACKETS, LADIES SCOOP-NECK SHIRTS AND COMMODORE HATS in Class 25
MAGNUM THUNDER	4225899	clothing, namely, hats, shirts, jackets, pants, shorts and gloves
MAGNUM RESEARCH	3629795	Clothing, namely, shirts, sweatshirts, vests and hats
MAGNUM WEIGHT	3019396	CLOTHING, NAMELY, T-SHIRTS SOLD PARTICULARLY AS BLANKS FOR PRINTING BY OTHERS

 

Third party use of MAGNUM demonstrates that the mark is weak for clothing/bags and entitled only to a narrow scope of protection.  As such, the marks covered by the Cited Registrations should not be afforded a broader scope of protection and present a bar to registration for Applicant’s mark, which covers unrelated goods. 

Applicant respectfully submits that if third party marks containing MAGNUM, as well as Applicant’s prior and current MAGNUM Registrations, can co-exist on the federal register, then the mark in Applicant’s instant application should also be allowed to co-exist on the register with the Cited Registrations.

 

CONCLUSION

Based on the foregoing remarks and amendments herein, Applicant believes that it has satisfied all of the Examining Attorney's objections and respectfully submits that its mark should be passed to publication.

EVIDENCE
Evidence in the nature of web printout of Magnum Marine website; 3rd party retailer of cited Magnum goods for horses has been attached.
Original PDF file:
evi_7465222101-20150710104917704032_._magnummarine-com.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_7465222101-20150710104917704032_._www-smartpakequine-com.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for Duffel bags; all-purpose gear bags; all-purpose utility bags; all purpose carrying bags; backpacks; day packs; carryalls; carry all bags; kit bags; travel bags, fanny packs, shoulder bags and tote bags
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Duffel bags; all-purpose gear bags; all-purpose utility bags; all purpose carrying bags; backpacks; day packs; carryalls; carry all bags; kit bags; travel bags, fanny packs, shoulder bags and tote bags; all of the foregoing to be used by uniformed professionals and not in connection with boats and equipment and clothing for horses and domestic animalsClass 018 for Duffel bags; all-purpose gear bags; all-purpose utility bags; all purpose carrying bags; backpacks; day packs; carryalls; carry all bags; kit bags; travel bags, fanny packs, shoulder bags and tote bags; all of the foregoing to be used by uniformed professionals and not in connection with boats and equipment and clothing for horses and domestic animals
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /Roberto Ledesma/     Date: 07/10/2015
Signatory's Name: Roberto Ledesma
Signatory's Position: Attorney for Applicant, New York state bar member

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 applicant'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 applicant in this matter: (1) the applicant 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 applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant'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: 86415783
Internet Transmission Date: Fri Jul 10 10:52:23 EDT 2015
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2015071010522325
1532-86415783-53033a444bedb633d55934fbf9
fc95d56889476126172b29fcdaa8de41a4b7f8d-
N/A-N/A-20150710104917704032