TEAS Request Reconsideration after FOA

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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

---

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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 86480801 GOLD (Stylized and/or with Design, see http://uspto.report/TM/86480801/mark.png) has been amended as follows:

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

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE Law Office: 104 ) ) Trademark Attorney: Barney L. Charlon ) ) Applicant: TDeltaS Limited ) ) Serial No.: 86/480,801 ) ) Filed: December 15, 2014 ) ) For: ΔGOLD mark ) ________________________________________________ ) REQUEST FOR RECONSIDERATION IN REPLY TO THE FINAL OFFICE ACTION DATED SEPTEMBER 14, 2017 Dear Examining Attorney Charlon: This is a full and timely request for reconsideration in reply to the Final Office Action dated September 14, 2017, issued in connection with the above-referenced trademark application. The undersigned attorney respectfully presents the following arguments for review and consideration regarding the present rejections under 15 U.S.C. ?1052(d). More particularly, the present application is currently under a Section 2(d) rejection based upon the U.S. Reg. No. 2,766,131 for DELTA GOLD (?131 Registration) and U.S. Reg. No. 2,818,341 for DELTAGOLD (?341 registration). As a threshold matter, the Applicant incorporates by reference the previously filed arguments. The Applicant would also confirm that this response and the related office action only apply to classes 005 and 029, therefore regardless of the outcome, the applications should move forward for classes 003, 030 and 032. LIKELIHOOD OF CONFUSION ISSUES UNDER 15 U.S.C. 1052(d) I. LIKELIHOOD OF CONFUSION ISSUES UNDER 15 U.S.C. 1052(d) For purposes of the present response, Applicant wishes to clarify the difference between the types of goods offered by the Applicant under the ΔGOLD mark, compared to the differing goods provided by the separate Registrants in the ?131 and ?341 registrations which reflect separate uses of the marks: DELTA GOLD and DELTAGOLD. In this regard, Applicant initially notes that the present mark, ΔGOLD certainly appears to co-exist in the marketplace with the separate Registrants, who engage in separate usage of DELTA GOLD and DELTAGOLD, respectively. When coupled with the attendant differences in the respective channels of trade, regulatory impact, and the sophistication of the relevant ?food eating? and health conscious consumer, the present Applicant submits that the present Section 2(d) rejection should be rescinded. The goods set forth in the ?131 registration consist of Fresh Fruits And Vegetables, Other Than Mushrooms? while the named registrant of the ?341 registration provides registered goods of ?Nutritional Supplements?. In other words, while it could be said that all of the marks at issue (i.e. ΔGOLD, DELTA GOLD, and DELTAGOLD) relate to ?comestible? products, the relevant goods serve wholly different purposes and functions. Applicant respectfully submits that this distinction is highly relevant in regards to the selection, purpose, and function of the goods as well as the distinct class of purchasers sold to and marketing channels utilized by the Applicant and the cited Registrants, especially where the selection and purchase of food items and nutritional products is a highly personal and subjective decision where great care is taken by consumers in the decision of what will be introduced to their own physical bodies. More simply stated, although it is recognized that the present goods and the cited goods in each of the ?131 and ?341 registrations are physically consumed in the general sense, in the trademark sense they are fundamentally different products having different features, attributes, and functions which appeal to differing and discerning types of consumers. Sophistication of Purchasers There is no likelihood of confusion because the purchasing conditions for Applicant?s goods in comparison to the separate goods set forth in the ?131 registration for fresh fruits and vegetables and the ?341 registration for nutritional supplements since the relevant purchaser would command discrimination and studied selectivity. In this case, the nature of the discriminating consumer of the goods at issue, which are highly-regulated and a function of nearly exclusive personal selection in a knowing manner, further bolsters the conclusion that no likelihood of confusion exists. Most notably, a consumer can distinguish between fresh fruits and vegetables and nutritional supplements, which may also target different and specific health regimens. More simply stated, a user and relevant purchaser would ?know? what they are selecting and consuming as part of their personal lifestyle, eating, and health choices. The courts and the TTAB have routinely held that the type of sophisticated purchaser who will be involved in the purchase of Registrants? and Applicant?s products would exercise a greater degree of care in entering into purchase transactions since the consumer has a ?reasonably focused need? or ?specific purpose? involving the relevant goods or services. Hayden Switch & Instrument v. Rexnord, Inc., 4 USPQ2d 1510 (D. Conn. 1987). See, e.g., Washington National Insurance Co. v. Blue Cross and Blue Shield United of Wisconsin, 772 F.Supp. 472 (N.D. Ill. 1990); see also Societe Anonyme de la Grande Distillerie E. Cusenier Fils Aine & Cie. v. Julius Wile Sons & Co., Inc., 161 F.Supp. 545, 547-48 (D.N.Y. 1958) (stating that ?the selection and purchase of a creme de menthe cordial generally involves an exercise of personal taste and purchasers of such liqueurs are apt to buy with a greater degree of sophistication and care than might be true in their purchase of other merchandise. Such a consideration is always relevant in appraising the likelihood of confusion.?); G.H. Mumm & Cie v. Desnoes & Geddes Ltd., 917 F.2d 1292, 1295 (Fed. Cir. 1990) (?Mumm markets its product as a premium good: the purchaser of Mumm champagne can be presumed to be in the market for an upscale item for consumption and to have a reasonably focused need. Desnoes does not market its product as a premium good. These differences weigh against a holding of a likelihood of confusion.?). In the present case, it is submitted that consumers of the products offered by Applicant or the Registrant(s) seek to transact business with each party based on or to satisfy a specific need or purpose for a desired personal preference or need (i.e. what they wish to eat and consume), heightening the decree of care that each consumer exercises. Additionally, the legal and regulatory requirements of both food products and nutritional supplements demonstrates that consumers are likely to be selective and comparison shop, another factor cited as creating a heightened degree of care and corresponding reduction in the likelihood of confusion. Specifically, the buyers of the goods exemplified by Applicant?s mark and the Registrants? marks are discerning consumers seeking to express their personal tastes and preferences and thereby sophisticated consumers capable of differentiating their respective purchasing decisions. The buyers of Applicant?s goods are likely to be individuals that highly desire and seek products to address a specific health or lifestyle need. Such buyers are keenly aware of the function and performance of the goods they are looking to purchase. Such consumers rarely buy on impulse, instead buying based on information or experience relating to the quality of a particular source of the goods ? especially where the products are used for personal use and consumption ? the more careful the typical potential purchaser is expected to be, reducing the likelihood of confusion. Kirkpatrick, Likelihood of Confusion in Trademark Law, Section 6.5. See also Camacho Cigars, Inc. v. Compania Insular Tabacalera, S.A., 171 U.S.P.Q. 673, 674 (D.D.C. 1971) (discussing cigars and stating ?[b]uyers of these high-priced cigars are not impulsive buyers, stimulated by monotonous TV advertising; but they are careful, well-informed buyers and, like the dealers in cigars, those that promote the sale of cigars in high-class cigar store counters, are basically experts in the cigar field.?). Like the cigar purchasers in Camacho, the ability of, and indeed propensity of, consumers to distinguish between sources of food items and nutritional supplements make it unlikely that the consumers would be confused as to the source of the goods by the similarities between the respective marks. Applicant respectfully contends that the typical purchaser of Applicant?s products is ?persuaded principally by the quality of the products or services and its intended use rather than the source of supply,? thus further decreasing any possible confusion. General Motors Corp. v. Cadillac Marine and Boat Co., 226 F. Supp. 716 (W. D. Mich. 1964). For the foregoing reasons, Applicant respectfully submits that the level of discrimination of the consumers of these products dictates that the likelihood of confusion is further reduced, thus requiring withdrawal of the present rejection(s) under Section 2(d). In addition to these arguments, the Applicant has agreed to amend the goods in class 005 and 029 as proposed below, which should alleviate the 2(d) issue as it relates to Registration 2,766,131. AMENDMENT OF GOODS The Examining Attorney has requested the Applicant to amend the identification of goods in class 005 and class 029 because it is indefinite and must be clarified. As such, Applicant requests the Examiner to amend the listing of goods as follows: Nutritional food and beverage additives for medical purposes in the nature of medicated and non-medicated additives for animal feed and natural food extracts derived from fish, meat and vegetables, nutraceutical use or as a food in the nature of a dietary supplement or food and beverage additive for medical purposes in the nature of natural food extracts derived from fish, meat and vegetables for use in pharmaceutical or veterinary preparations; esters including ketone body esters for use as non-chemical additives in pharmaceutical and veterinary preparations (International Class 005) Foodstuffs of animal origin, namely, chicken, beef, all-natural and processed lamb; milk products, namely, cow's milk, milk, milk powder (International Class 029) CONCLUSION Applicant respectfully requests that the outstanding rejection be reconsidered in light of the remarks above and that the mark be allowed to pass to publication. If the Examining Attorney intends to maintain his present objections, then prior to issuing another action, the undersigned attorney courteously requests a personal hearing to attempt to resolve, or at least narrow, any remaining issues. If further questions should arise, or if the Examining Attorney wishes to discuss this application in more detail, he is courteously requested to telephone the undersigned attorney at (248) 292-2920. Respectfully submitted, Date: March 14, 2018 By: /Rebecca L. Wilson/ Rebecca L. Wilson The Dobrusin Law Firm, PC 29 W. Lawrence Street, Suite 210 Pontiac, MI 48342 (248) 292-2920

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Nutritional additives or supplements for medical purposes, nutraceutical use or as a food in the nature of a dietary supplement or additive for use in pharmaceutical or veterinary preparations; dietetic substances in the nature of a dietary supplement or additive for medical purposes, nutraceutical use or as a food for use in pharmaceutical or veterinary preparations, esters including ketone body esters for use as non-chemical additives in pharmaceutical and veterinary preparations hydroxybutyrates in the nature of a dietary supplement for use as non-chemical additives in pharmaceutical and veterinary preparations; nutritional additives for medical purposes, nutraceutical use or as a food in the nature of a dietary supplement or additive containing components for raising blood ketone levels in the human or animal body; nutritional additives for medical purposes, nutraceutical use or as a food in the nature of a dietary supplements for treating medical conditions including vascular conditions, weight loss, diabetes, heart failure, sickle cell anemia, trauma, administration pre-surgery or post-surgery, use in intensive care treatment and conditions of the brain including Alzheimer's disease, Parkinson's disease, depression; nutritional additives for medical purposes, nutraceutical use or as a food in the nature of a dietary supplement for treating muscular conditions including treating or preventing fatigue, improving muscle function efficiency and muscular power, reducing or retarding muscle wastage and in maintaining or improving cognitive function; nutritional additives for medical purposes, nutraceutical use or as a food in the nature of a dietary supplement when adapted for oral, topical, sublingual or intravenous administration to the human or animal body
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Community - CTM registration number 013006226 registered 02/24/2017 with a renewal date of __________ and an expiration date of 02/24/2027 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Nutritional additives or supplements for medical purposes, nutraceutical use or as a food in the nature of a dietary supplement or additive for use in pharmaceutical or veterinary preparations; Nutritional food and beverage additives for medical purposes in the nature of medicated and non-medicated additives for animal feed and natural food extracts derived from fish, meat and vegetables, nutraceutical use or as a food in the nature of a dietary supplement or food and beverage additive for medical purposes in the nature of natural food extracts derived from fish, meat and vegetables for use in pharmaceutical or veterinary preparations; dietetic substances in the nature of a dietary supplement or additive for medical purposes, nutraceutical use or as a food for use in pharmaceutical or veterinary preparations, esters including ketone body esters for use as non-chemical additives in pharmaceutical and veterinary preparations hydroxybutyrates in the nature of a dietary supplement for use as non-chemical additives in pharmaceutical and veterinary preparations; esters including ketone body esters for use as non-chemical additives in pharmaceutical and veterinary preparations; nutritional additives for medical purposes, nutraceutical use or as a food in the nature of a dietary supplement or additive containing components for raising blood ketone levels in the human or animal body; nutritional additives for medical purposes, nutraceutical use or as a food in the nature of a dietary supplements for treating medical conditions including vascular conditions, weight loss, diabetes, heart failure, sickle cell anemia, trauma, administration pre-surgery or post-surgery, use in intensive care treatment and conditions of the brain including Alzheimer's disease, Parkinson's disease, depression; nutritional additives for medical purposes, nutraceutical use or as a food in the nature of a dietary supplement for treating muscular conditions including treating or preventing fatigue, improving muscle function efficiency and muscular power, reducing or retarding muscle wastage and in maintaining or improving cognitive function; nutritional additives for medical purposes, nutraceutical use or as a food in the nature of a dietary supplement when adapted for oral, topical, sublingual or intravenous administration to the human or animal bodyClass 005 for Nutritional food and beverage additives for medical purposes in the nature of medicated and non-medicated additives for animal feed and natural food extracts derived from fish, meat and vegetables, nutraceutical use or as a food in the nature of a dietary supplement or food and beverage additive for medical purposes in the nature of natural food extracts derived from fish, meat and vegetables for use in pharmaceutical or veterinary preparations; esters including ketone body esters for use as non-chemical additives in pharmaceutical and veterinary preparations
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Community - CTM registration number 013006226 registered 02/24/2017 with a renewal date of __________ and an expiration date of 02/24/2027 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 029 for Foodstuffs of animal origin, namely, chicken, beef, lamb; milk products, namely, cow's milk, milk, milk powder; comestible vegetable processed products, namely, processed vegetables; comestible horticultural processed products, namely, processed vegetables
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Community - CTM registration number 013006226 registered 02/24/2017 with a renewal date of __________ and an expiration date of 02/24/2027 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Foodstuffs of animal origin, namely, chicken, beef, lamb; Foodstuffs of animal origin, namely, chicken, beef, all-natural and processed lamb; milk products, namely, cow's milk, milk, milk powder; comestible vegetable processed products, namely, processed vegetables; comestible horticultural processed products, namely, processed vegetablesClass 029 for Foodstuffs of animal origin, namely, chicken, beef, all-natural and processed lamb; milk products, namely, cow's milk, milk, milk powder
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Community - CTM registration number 013006226 registered 02/24/2017 with a renewal date of __________ and an expiration date of 02/24/2027 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Rebecca L. Wilson/     Date: 03/14/2018
Signatory's Name: Rebecca L. Wilson
Signatory's Position: Attorney of Record Michigan Bar Member

Signatory's Phone Number: 248-292-2920

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 86480801
Internet Transmission Date: Wed Mar 14 13:01:39 EDT 2018
TEAS Stamp: USPTO/RFR-XX.XXX.XXX.XX-2018031413013942
0714-86480801-510aeba137e13d075facad76d9
b943f1a201ce3dd72f627526ec8c936303f7322e
2-N/A-N/A-20180314125613620485