| 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 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86756133 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/86756133/mark.png |
| LITERAL ELEMENT | EZ PZ |
| 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) | |
|
REMARKS
Examining Attorney notes the following trademark applications have abandoned and are no longer pertinent to baring registration of the applied-for mark:
85785086
And that 86512982 is owned by Applicant, and therefore presents no bar for registration of the applied-for mark
This leaves only the registered marks, 3941772, 3671299, and 4965696 here in question.
• EASY PEASY, Reg. No. 3941772, registered to Easy Peasy, LLC, in Class 016 for Children’s’ Books
Examining Attorney writes that “the following factors were most relevant” in denying registration of the applied-for mark: “similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services”. But the goods are entirely distinct (class 035 is not coextensive with either class 028 or 016), the marks in question have been found to be dissimilar in previous cases where registration was effected by the Office, and the likelihood of confusion as to source of goods/services sold is very unlikely indeed.
This ‘772 mark, cited above, is registered in an entirely contrary class of goods – international class 016 – restricted to children’s books only. It is entirely unreasonable to consider likelihood of confusion between the source of goods of Applicant’s applied-for mark in class 035 (online retail) and class 016 (children’s books) for Reg. No. ‘772.
Children’s books are not coextensive with an online retail space at all, according to the ordinary definition of the terms. And while books may be sold online, no one visiting Applicant’s website would in any way be confused as to the sources of goods there provided, nor would any ordinary consumer purchasing a children’s book retailed under thee ‘772 mark confuse it as somehow having originated from Applicant’s websites.
Further, we must consider the use of the EASY PEASY mark on the goods in question, i.e. children’s books, as highly unlikely to engender confusability for an ordinary consumer over Applicant’s goods sold via the online platform with which the applied-for mark is already in use. The EASY PEASY mark, as used by its owner, is fully spelled out (having nine letters) and is specifically used in connection with the additional phrase, PARENTING CO., as employed on the cover of the particular books with which the goods sold under the mark are defined.
See the sample attached.
Considering this striking visual distinction, the actual use of the ‘772 mark on book covers, the mark’s concurrent dilution with the added phrase PARENTING CO. specifically attached, and the distinct classes recognized by 016 and the instant applied-for mark’s class 035, confusion as to source of goods seems highly unlikely indeed. See, for pertinent example, Am. Home Prods. Corp. v. B. F. Ascher & Co., 473 F.d 903, 904 (C. C. P. A. 1973) where no likelihood of confusion was found between AYEREST and AYR TAB, even though TAB had been disclaimed.
The only overlap appears to be in the phonetic sounding of the marks, which Examining Attorney notes as part of her reasoning, citing specifically In re White Swan and In re 1st Realty Prof’ls, Inc. However previous registrations overturn Examining Attorney’s position here. Specifically, the mark EZPZ registered to Ez-etail, Inc., as Reg. No. 4965696, in class 035, on May 24, 2016, and the mark EZPZ registered to Applicant as Reg. No. 4765676 in class 021 on June 30, 2015.
Furthermore, for the record, these cases cited by Examining Attorney in support of preemptive phonetic similarity are not particularly germane to the marks here in question. For example, in the White Swan case cited by Examining Attorney, the marks SHAKE-N-GROW and SHAKE SCATTER & GROW were found to be confusingly similar due to the likeness of goods (in this case “seeds”) despite the apparent dissimilarity in channels of trade (since neither Applicant in that case had limited the channels of trade). While phonetic sounding was important in deciding that case, such reasoning was applied in a much narrower scope than appears Examining Attorney’s wont to do here. It should be noted, also, that the marks SHAKE-N-GROW and SHAKE SCATTER & GROW are visually similar – strikingly so – and are employed over identical goods in addition to the phonetic similarity. Again, the question in White Swan was in determining between apparent distinct channels of trade in which the finding of similar phonetics was brought into play and, ultimately, established as precedent. Thus it is incorrect to simply conclude that phonetic similarity is applicable in some sort of vacuum and applicable to our particular case here. Examining Attorney’s reliance on this case appears overly partial.
Furthermore, Applicant’s applied-for mark has become famous, having been featured on national television shows (s.a. Shark Tank, The Today Show, and other local and national programs) and prominently featured in nationwide advertisements on television (as seen advertised with Quickbooks® nationwide) and due to an impactful and well-known website and active social media presence. Applicant has been using the mark on her website since Sept. 2014, and online since at least as early as August 2014.
You can see a shot of the applied-for mark on national television here, as part of an article hosted online regarding the particular episode of the show “Sharktank” broadcast on ABC:
http://www.inc.com/anna-hensel/shark-tank-sets-20-million-valuation.html
A video published online featuring Applicant’s applied-for mark in use in an online capacity recently went viral, and now counts over 18 million views. See the video here:
http://www.facebook.com/Droold/videos/1444046705626582/?pnref=story
As of today, December 23, 2016, the video, posted by third party “Drool’d”, has over 18 million views, 55,000 comments and 388,456 shares. The applied-for mark (which has registered in class 021 already in conjunction with placemats and tableware) has already acquired some distinction in the marketplace and is recognizable by ordinary consumers in the US and abroad. Since latter 2014, Applicant’s website proper (not including additional channels where the mark is seen online) has registered 942,186 unique visitors.
Applicant respectfully requests registration of the applied-for mark in regards Reg. no. ‘772 since there is no reasonable grounds for refusing registration relative to the spelled out EASY PEASY ‘772 mark, used specifically in conjunction with PARENTING CO., which actually bears little semblance to Applicant’s mark aside from a phonetic pronunciation. No confusion in the marketplace among ordinary consumers is likely at all to arise concerning the source of goods retailed under the marks here in question as is evidenced by the subsequent registration of Reg. No. 4965696 to Ez-etail, Inc., in class 035, on May 24, 2016, and registration of Reg. No. 4765676 to Applicant in class 021 on June 30, 2015.
• EEZY PEEZY, 3671299, registered to Toy Monster International, Ltd. In Class 028
Examining Attorney’s refusal of Applicant’s mark with reference to the ‘299 mark here in question is equally perplexing. Applicant notes that the ‘299 mark was registered in class 028 on August 25, 2009. Applicant registered her mark EZ PZ in class 021 as Reg. no. 4765676 on June 30, 2015. If Examining Attorney’s reasoning refusing registration of the applied-for mark is to be conclusive, then the Office would have made similar determination with regard to Applicant’s previous registration. Yet Applicant’s EZ PZ mark did register in class 021.
Attorney’s reasoning that there is a visual confusability of the applied-for mark and the EEZY PEEZY mark by which refusal is maintained is not consistent with the findings of the Office on previous occasions. Moreover, it is perhaps worth observing that the marks EEZY PEEZY and EASY PEASY are in fact much more visually similar that Applicant’s applied-for mark, in closer class designations (children’s books as well as children’s toys) in either instance, and yet the two marks were found to be nonetheless distinct.
Even if Examining Attorney were to assume a closer similarity between goods sold in the instant application versus Applicant’s registration in class 021 relative the ‘772 and ‘299 marks cited herein, the mark EZPZ, registering to Ez-Etail, Inc. in class 035 as Reg. No. 4965696 on May 24, 2016, which Examining Attorney cites against Applicant herein, would likewise not have registered in class 035 if Examining Attorney’s reasoning were to be upheld. Examining Attorney is applying the prong of the law inconsistent with actions already taken by the Office.
Refusal of registration of Applicant’s applied-for mark in class 035 relative the ‘299 mark appears untenable.
The only real grounds for refusal of the applied-for mark for registration appears to be the EZPZ mark registered to Ez-etail, Inc., in May of this year.
• EZPZ, 86512342, registered to Ez-Etail, Inc., in class 035
This registration was filed under 1b as an intent-to-use application on January 23, 2015, and registered as Reg. No. 4965696 on May 24, 2016. According to the statement of use filed by the owner of this mark, the date of first use and the date of first use in commerce was not before February 4, 2016.
Applicant demonstrates use of her applied-for mark as early as September 1, 2014. Applicant also registered her mark EZPZ in class 021 on June 30, 2015, more than six months prior to registration of the ‘696 mark. Since this time, Applicant’s applied-for mark has become well-known in the marketplace.
Importantly, with mind to earlier use of the mark in question by Applicant established in the marketplace, in commerce and online, the ‘696 registration is currently subject to a cancelation proceeding initiated by Applicant, who demonstrates prior use and acquisition of distinctiveness in the marketplace, wherefore Applicant respectfully solicits abeyance of the present refusal and suspension of the application pending resolution of said cancellation proceeding.
Respectfully submitted,
/davidkwilliams/
David K. Williams Attorney-at-Law Colorado bar Member |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) |
\\TICRS\EXPORT17\IMAGEOUT 17\867\561\86756133\xml1\ ROA0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | Photo of "EasyPeasy" mark specimen in use on book covers |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /davidkwilliams/ |
| SIGNATORY'S NAME | David K. Williams |
| SIGNATORY'S POSITION | Attorney of Record, Colorado bar member |
| SIGNATORY'S PHONE NUMBER | 720-328-5343 |
| DATE SIGNED | 01/20/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Jan 20 13:08:27 EST 2017 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XX.XXX-2 0170120130827054703-86756 133-580698f1b3ac465555ad7 247bbe3b85212bcd9b13d1bff 4217f15a9bcc4551b49-N/A-N /A-20170120130455878249 |
| 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 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
REMARKS
Examining Attorney notes the following trademark applications have abandoned and are no longer pertinent to baring registration of the applied-for mark:
85785086
And that 86512982 is owned by Applicant, and therefore presents no bar for registration of the applied-for mark
This leaves only the registered marks, 3941772, 3671299, and 4965696 here in question.
• EASY PEASY, Reg. No. 3941772, registered to Easy Peasy, LLC, in Class 016 for Children’s’ Books
Examining Attorney writes that “the following factors were most relevant” in denying registration of the applied-for mark: “similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services”. But the goods are entirely distinct (class 035 is not coextensive with either class 028 or 016), the marks in question have been found to be dissimilar in previous cases where registration was effected by the Office, and the likelihood of confusion as to source of goods/services sold is very unlikely indeed.
This ‘772 mark, cited above, is registered in an entirely contrary class of goods – international class 016 – restricted to children’s books only. It is entirely unreasonable to consider likelihood of confusion between the source of goods of Applicant’s applied-for mark in class 035 (online retail) and class 016 (children’s books) for Reg. No. ‘772.
Children’s books are not coextensive with an online retail space at all, according to the ordinary definition of the terms. And while books may be sold online, no one visiting Applicant’s website would in any way be confused as to the sources of goods there provided, nor would any ordinary consumer purchasing a children’s book retailed under thee ‘772 mark confuse it as somehow having originated from Applicant’s websites.
Further, we must consider the use of the EASY PEASY mark on the goods in question, i.e. children’s books, as highly unlikely to engender confusability for an ordinary consumer over Applicant’s goods sold via the online platform with which the applied-for mark is already in use. The EASY PEASY mark, as used by its owner, is fully spelled out (having nine letters) and is specifically used in connection with the additional phrase, PARENTING CO., as employed on the cover of the particular books with which the goods sold under the mark are defined.
See the sample attached.
Considering this striking visual distinction, the actual use of the ‘772 mark on book covers, the mark’s concurrent dilution with the added phrase PARENTING CO. specifically attached, and the distinct classes recognized by 016 and the instant applied-for mark’s class 035, confusion as to source of goods seems highly unlikely indeed. See, for pertinent example, Am. Home Prods. Corp. v. B. F. Ascher & Co., 473 F.d 903, 904 (C. C. P. A. 1973) where no likelihood of confusion was found between AYEREST and AYR TAB, even though TAB had been disclaimed.
The only overlap appears to be in the phonetic sounding of the marks, which Examining Attorney notes as part of her reasoning, citing specifically In re White Swan and In re 1st Realty Prof’ls, Inc. However previous registrations overturn Examining Attorney’s position here. Specifically, the mark EZPZ registered to Ez-etail, Inc., as Reg. No. 4965696, in class 035, on May 24, 2016, and the mark EZPZ registered to Applicant as Reg. No. 4765676 in class 021 on June 30, 2015.
Furthermore, for the record, these cases cited by Examining Attorney in support of preemptive phonetic similarity are not particularly germane to the marks here in question. For example, in the White Swan case cited by Examining Attorney, the marks SHAKE-N-GROW and SHAKE SCATTER & GROW were found to be confusingly similar due to the likeness of goods (in this case “seeds”) despite the apparent dissimilarity in channels of trade (since neither Applicant in that case had limited the channels of trade). While phonetic sounding was important in deciding that case, such reasoning was applied in a much narrower scope than appears Examining Attorney’s wont to do here. It should be noted, also, that the marks SHAKE-N-GROW and SHAKE SCATTER & GROW are visually similar – strikingly so – and are employed over identical goods in addition to the phonetic similarity. Again, the question in White Swan was in determining between apparent distinct channels of trade in which the finding of similar phonetics was brought into play and, ultimately, established as precedent. Thus it is incorrect to simply conclude that phonetic similarity is applicable in some sort of vacuum and applicable to our particular case here. Examining Attorney’s reliance on this case appears overly partial.
Furthermore, Applicant’s applied-for mark has become famous, having been featured on national television shows (s.a. Shark Tank, The Today Show, and other local and national programs) and prominently featured in nationwide advertisements on television (as seen advertised with Quickbooks® nationwide) and due to an impactful and well-known website and active social media presence. Applicant has been using the mark on her website since Sept. 2014, and online since at least as early as August 2014.
You can see a shot of the applied-for mark on national television here, as part of an article hosted online regarding the particular episode of the show “Sharktank” broadcast on ABC:
http://www.inc.com/anna-hensel/shark-tank-sets-20-million-valuation.html
A video published online featuring Applicant’s applied-for mark in use in an online capacity recently went viral, and now counts over 18 million views. See the video here:
http://www.facebook.com/Droold/videos/1444046705626582/?pnref=story
As of today, December 23, 2016, the video, posted by third party “Drool’d”, has over 18 million views, 55,000 comments and 388,456 shares. The applied-for mark (which has registered in class 021 already in conjunction with placemats and tableware) has already acquired some distinction in the marketplace and is recognizable by ordinary consumers in the US and abroad. Since latter 2014, Applicant’s website proper (not including additional channels where the mark is seen online) has registered 942,186 unique visitors.
Applicant respectfully requests registration of the applied-for mark in regards Reg. no. ‘772 since there is no reasonable grounds for refusing registration relative to the spelled out EASY PEASY ‘772 mark, used specifically in conjunction with PARENTING CO., which actually bears little semblance to Applicant’s mark aside from a phonetic pronunciation. No confusion in the marketplace among ordinary consumers is likely at all to arise concerning the source of goods retailed under the marks here in question as is evidenced by the subsequent registration of Reg. No. 4965696 to Ez-etail, Inc., in class 035, on May 24, 2016, and registration of Reg. No. 4765676 to Applicant in class 021 on June 30, 2015.
• EEZY PEEZY, 3671299, registered to Toy Monster International, Ltd. In Class 028
Examining Attorney’s refusal of Applicant’s mark with reference to the ‘299 mark here in question is equally perplexing. Applicant notes that the ‘299 mark was registered in class 028 on August 25, 2009. Applicant registered her mark EZ PZ in class 021 as Reg. no. 4765676 on June 30, 2015. If Examining Attorney’s reasoning refusing registration of the applied-for mark is to be conclusive, then the Office would have made similar determination with regard to Applicant’s previous registration. Yet Applicant’s EZ PZ mark did register in class 021.
Attorney’s reasoning that there is a visual confusability of the applied-for mark and the EEZY PEEZY mark by which refusal is maintained is not consistent with the findings of the Office on previous occasions. Moreover, it is perhaps worth observing that the marks EEZY PEEZY and EASY PEASY are in fact much more visually similar that Applicant’s applied-for mark, in closer class designations (children’s books as well as children’s toys) in either instance, and yet the two marks were found to be nonetheless distinct.
Even if Examining Attorney were to assume a closer similarity between goods sold in the instant application versus Applicant’s registration in class 021 relative the ‘772 and ‘299 marks cited herein, the mark EZPZ, registering to Ez-Etail, Inc. in class 035 as Reg. No. 4965696 on May 24, 2016, which Examining Attorney cites against Applicant herein, would likewise not have registered in class 035 if Examining Attorney’s reasoning were to be upheld. Examining Attorney is applying the prong of the law inconsistent with actions already taken by the Office.
Refusal of registration of Applicant’s applied-for mark in class 035 relative the ‘299 mark appears untenable.
The only real grounds for refusal of the applied-for mark for registration appears to be the EZPZ mark registered to Ez-etail, Inc., in May of this year.
• EZPZ, 86512342, registered to Ez-Etail, Inc., in class 035
This registration was filed under 1b as an intent-to-use application on January 23, 2015, and registered as Reg. No. 4965696 on May 24, 2016. According to the statement of use filed by the owner of this mark, the date of first use and the date of first use in commerce was not before February 4, 2016.
Applicant demonstrates use of her applied-for mark as early as September 1, 2014. Applicant also registered her mark EZPZ in class 021 on June 30, 2015, more than six months prior to registration of the ‘696 mark. Since this time, Applicant’s applied-for mark has become well-known in the marketplace.
Importantly, with mind to earlier use of the mark in question by Applicant established in the marketplace, in commerce and online, the ‘696 registration is currently subject to a cancelation proceeding initiated by Applicant, who demonstrates prior use and acquisition of distinctiveness in the marketplace, wherefore Applicant respectfully solicits abeyance of the present refusal and suspension of the application pending resolution of said cancellation proceeding.
Respectfully submitted,
/davidkwilliams/
David K. Williams
Attorney-at-Law
Colorado bar Member
