| 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 | 86769201 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION | |
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86769201/large |
| LITERAL ELEMENT | AVALANCHE |
| 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) | |
|
Applicant respectfully disagrees that its AVALANCHE mark, when used on or in connection with granola, is likely to be confused with U.S. Registration No. 3,848,902 for MARSHMALLOW AVALANCHE used on or in connection with breakfast cereal, or U.S. Registration No. 3,801,005 for ALMOND AVALANCHE used on or in connection with snack mix. Both of the cited registrations begin with a word other than AVALANCHE, and consumers will therefore focus on "MARSHMALLOW", being one of the featured ingredients in MARSHMALLOW AVALANCE, and "ALMOND", being one of the featured ingredients in ALMOND AVALANCHE. Consumers will never think that applicant's granola contains marshmallows, which would be inconsistent with the healthy nature of granola in general; nor will they confuse applicant's granola with a snack mix consisting primarily of almonds, nuts and dried fruit, because granola is predominantly made of grains. For the foregoing reasons, applicant respectfully requests that the examiner withdraw the refusal to register and permit the mark to proceed to publication. If, on the other hand, the examiner maintains the refusal to register based on one or both of the foregoing registrations, applicant wishes to draw the examiner's attention to the fact that the owner of U.S. Registration No. 3,801,005 has not filed a Section 8 declaration, which was due by June 7, 2016. Applicant has conducted several online searches and believes the owner of U.S. Registration No. 3,801,005 is no longer using the mark, and that the registration will therefore cancel in due course. Likewise, applicant notes that the owner of U.S. Registration No. 3,848,902 must file a Section 8 declaration by September 13, 2016. Again, applicant's online searches reveal that mark is also no longer in use, and therefore believes that registration will cancel in due course. Consequently, if the examiner maintains the refusal to register, pursuant to TMEP Section 716.02(e) the examiner should suspend the application pending a determination of whether the two registrants timely file, and the USPTO accepts, Section 8 declarations within applicable grace periods. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Peter A. Arturi/ |
| SIGNATORY'S NAME | Peter A. Arturi |
| SIGNATORY'S POSITION | Attorney of record |
| SIGNATORY'S PHONE NUMBER | (203) 792-2771 |
| DATE SIGNED | 06/08/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jun 08 15:31:29 EDT 2016 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20160608153129782209-8676 9201-550fd1c576c792faa48f 388b357bf5ce26f5e7475ff5a 4e2201471263bfcfd33b-N/A- N/A-20160608145738489777 |
| 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) |
Applicant respectfully disagrees that its AVALANCHE mark, when used on or in connection with granola, is likely to be confused with U.S. Registration No. 3,848,902 for MARSHMALLOW AVALANCHE used on or in connection with breakfast cereal, or U.S. Registration No. 3,801,005 for ALMOND AVALANCHE used on or in connection with snack mix. Both of the cited registrations begin with a word other than AVALANCHE, and consumers will therefore focus on "MARSHMALLOW", being one of the featured ingredients in MARSHMALLOW AVALANCE, and "ALMOND", being one of the featured ingredients in ALMOND AVALANCHE. Consumers will never think that applicant's granola contains marshmallows, which would be inconsistent with the healthy nature of granola in general; nor will they confuse applicant's granola with a snack mix consisting primarily of almonds, nuts and dried fruit, because granola is predominantly made of grains. For the foregoing reasons, applicant respectfully requests that the examiner withdraw the refusal to register and permit the mark to proceed to publication.
If, on the other hand, the examiner maintains the refusal to register based on one or both of the foregoing registrations, applicant wishes to draw the examiner's attention to the fact that the owner of U.S. Registration No. 3,801,005 has not filed a Section 8 declaration, which was due by June 7, 2016. Applicant has conducted several online searches and believes the owner of U.S. Registration No. 3,801,005 is no longer using the mark, and that the registration will therefore cancel in due course. Likewise, applicant notes that the owner of U.S. Registration No. 3,848,902 must file a Section 8 declaration by September 13, 2016. Again, applicant's online searches reveal that mark is also no longer in use, and therefore believes that registration will cancel in due course.
Consequently, if the examiner maintains the refusal to register, pursuant to TMEP Section 716.02(e) the examiner should suspend the application pending a determination of whether the two registrants timely file, and the USPTO accepts, Section 8 declarations within applicable grace periods.