| 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 | 86824854 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/86824854/mark.png |
| LITERAL ELEMENT | ROCKET |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
Applicant has applied to register the mark ROCKET & design, U.S. App. No. 86824854 for “Retail convenience stores” in Class 35 (“Applicant’s Mark”). In an Office Action dated May 10, 2017, the Office continued its refusal of the registration of Applicant’s Mark under § 2(d) of the Trademark Act based on an alleged likelihood of confusion with U.S. Registration No. 4687969 for the mark ROCKET FOODS SIMPLY OUT OF THIS WORLD EST. 2075 & design, which covers “Wholesale, retail and online retail store services featuring snack foods” in Class 35 (“Registrant’s Mark”), owned by Rocket Foods Inc. (“Registrant”). Applicant respectfully requests that the Examining Attorney withdraw the § 2(d) refusal and approve Applicant’s Mark for publication for the reasons set forth below. As noted in Applicant’s Response to Office Action dated July 12, 2016, Applicant does not believe there is a likelihood of confusion between Applicant’s Mark and Registrant’s Mark given the coexistence of third-party marks incorporating the word “ROCKET” and/or a Rocket design; differences in the appearance, connotation and sound of the marks; and differences in the services covered, channels of trade, and target consumers. Nevertheless, Applicant has obtained and hereby submits for review by the Examining Attorney the enclosed U.S. Trademark Consent Agreement entered into between Applicant and Registrant (the “Consent Agreement”), wherein, for a variety of reasons, Registrant recognizes that there is no likelihood of confusion posed by the coexistence of Applicant’s Mark and Registrant’s Mark in connection with the parties’ respective services, and consents to the use and registration of Applicant’s Mark by Applicant in connection with its applied-for services. The Consent Agreement is attached as Exhibit A. Moreover, Registrant has also filed a Section 7 Request to Amend its registration for Registrant’s Mark to delete the words “retail and” from its Class 35 identification of services. See Exhibit B. As amended, the services covered by Registrant’s Mark is “Wholesale and online retail store services featuring snack foods,” which further clarifies that Registrant does not offer its services in brick-and-mortar and retail stores. Thus, it is evident that is no overlap between the covered services or the channels of trade. Meanwhile, it is well-settled that the existence of a consent agreement between owners of allegedly confusingly similar marks creates a strong presumption of a lack of likelihood of confusion between the marks. The Court of Appeals for the Federal Circuit held in Bongrain International (American) Corp. v. Delice de France Inc., 1 U.S.P.Q.2d 1775 (Fed. Cir. 1987), that consents executed between parties should be accorded substantial—even dispositive—weight, in deciding issues of likelihood of confusion: We have often said, in trademark cases involving agreements reflecting parties’ views on the likelihood of confusion in the marketplace, that they are in a much better position to know the real life situation than bureaucrats or judges and therefore such agreements may, depending on the circumstances, carry great weight as was held in Dupont. Id. at 1778 (emphasis added). The agreement entered into by Delice and Bongrain, among other evidence, makes it perfectly clear that they both intend to go on using their respective marks no matter what the PTO does, and neither wishes to interfere with such use by the other. It is, therefore, contrary to the policy and purposes of the Trademark Act to remove Bongrain’s marks from the register by canceling its registrations if they may be preserved without clear violation of the statute. Id. at 1779 (emphasis added). Similarly, in In re Four Seasons Hotel, Ltd., 26 U.S.P.Q.2d 1071 (Fed. Cir. 1993), the court reversed a refusal to register the mark FOUR SEASONS BILTMORE for an oceanside resort, which had been refused registration because of a perceived likelihood of confusion with the mark THE BILTMORE LOS ANGELES for a hotel. In reversing the refusal in view of the consent which had been provided by the registrant, the Federal Circuit emphasized that the Trademark Office’s role is not “to second-guess the conclusions of those most familiar with the marketplace.” Id. at 1071; see also Mid-States Distributing Co., Inc. v. Morrison Oil Co., 10 U.S.P.Q.2d 1860, 1862 (T.T.A.B. 1989) (confirming that “the clear message of the case law is that agreements between parties who are in a position to assess the effect of their uses should be given great weight”) Likewise, in In re E.I. Du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973), the court stated: Thus when those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won’t. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not. Id. at 568 (emphasis added). In this case, Applicant and Registrant, the parties with the most knowledge about their own respective businesses, have acknowledged the distinct commercial impressions generated by the marks, the differences in the services of the parties, and the differences in the channels of trade and target consumers for the parties’ respective services. See Consent Agreement ¶¶ 2(a) and (b). The parties have also agreed to continue to keep separate their channels of trade (i.e., online sales as opposed to brick-and-mortar stores). See Consent Agreement ¶¶ 2(c) and (d). Furthermore, the parties agree—based on their analyses of their own marks, businesses, and target markets—that there is no likelihood of confusion between their marks. See Consent Agreement ¶ 2. Thus, the Consent Agreement fully meets the requirements set out in Bongrain and the other cases cited above and the Examining Attorney should be free of any question or doubt as to the parties’ beliefs about the absence of a likelihood of confusion, as well as the possibility for future confusion. Additionally, § 1207.01(d)(viii) of the TMEP clearly states the evidentiary weight of a consent agreement in overcoming a 2(d) likelihood of confusion rejection: …[E]xamining attorneys should give substantial weight to a proper consent agreement. When an applicant and registrant have entered into a credible consent agreement and, on balance, the other factors do not dictate a finding of likelihood of confusion, an examining attorney should not interpose his or her own judgment that confusion is likely. Accordingly, in view of the differences between the Applicant’s Mark and Registrant’s Mark when considered in their entireties, as well as the differences in the parties’ respective services and channels of trade, particularly in light of Registrant’s Section 7 Request to Amend its covered services, and the Consent Agreement between the parties, Applicant submits that there is no likelihood of confusion posed between Applicant’s Mark and Registrant’s Mark. Finally, Applicant notes that in conjunction with this Response, it has submitted an additional processing fee of $125 in order to comply with the requirement that it file a change of owner’s address through the Trademark Electronic Application System (TEAS). Conclusion For all of the foregoing reasons, Applicant respectfully requests that the Examining Attorney withdraw the § 2(d) refusal, and approve the application for publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_20447350-20170516195703999815_._ROCKET_exhibits_A_and_B.pdf |
| CONVERTED PDF FILE(S) (11 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\868\248\86824854\xml6\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\868\248\86824854\xml6\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\868\248\86824854\xml6\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\868\248\86824854\xml6\ROA0005.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\868\248\86824854\xml6\ROA0006.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\868\248\86824854\xml6\ROA0007.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\868\248\86824854\xml6\ROA0008.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\868\248\86824854\xml6\ROA0009.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\868\248\86824854\xml6\ROA0010.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\868\248\86824854\xml6\ROA0011.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\868\248\86824854\xml6\ROA0012.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A: Consent Agreement Exhibit B: Registrant's Section 7 Request to Amend |
| PAYMENT SECTION | |
| NUMBER OF CLASSES | 1 |
| FEE FOR FAILURE TO SATISFY TEAS PLUS OR TEAS RF REQUIREMENTS | 125 |
| TOTAL FEES DUE | 125 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /diana s. bae/ |
| SIGNATORY'S NAME | Diana S. Bae |
| SIGNATORY'S POSITION | Attorney for Applicant, Associate at Arent Fox LLP, MD bar member |
| SIGNATORY'S PHONE NUMBER | 202.350.3695 |
| DATE SIGNED | 05/16/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue May 16 20:05:58 EDT 2017 |
| TEAS STAMP | USPTO/ROA-XXX.X.XX.XX-201 70516200558166241-8682485 4-59026232ea58680732febf3 6c653afa38a1617992fb8be06 9b66a6a4e3275b8-CC-6066-2 0170516195703999815 |
| 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 has applied to register the mark ROCKET & design, U.S. App. No. 86824854 for “Retail convenience stores” in Class 35 (“Applicant’s Mark”). In an Office Action dated May 10, 2017, the Office continued its refusal of the registration of Applicant’s Mark under § 2(d) of the Trademark Act based on an alleged likelihood of confusion with U.S. Registration No. 4687969 for the mark ROCKET FOODS SIMPLY OUT OF THIS WORLD EST. 2075 & design, which covers “Wholesale, retail and online retail store services featuring snack foods” in Class 35 (“Registrant’s Mark”), owned by Rocket Foods Inc. (“Registrant”).
Applicant respectfully requests that the Examining Attorney withdraw the § 2(d) refusal and approve Applicant’s Mark for publication for the reasons set forth below.
As noted in Applicant’s Response to Office Action dated July 12, 2016, Applicant does not believe there is a likelihood of confusion between Applicant’s Mark and Registrant’s Mark given the coexistence of third-party marks incorporating the word “ROCKET” and/or a Rocket design; differences in the appearance, connotation and sound of the marks; and differences in the services covered, channels of trade, and target consumers. Nevertheless, Applicant has obtained and hereby submits for review by the Examining Attorney the enclosed U.S. Trademark Consent Agreement entered into between Applicant and Registrant (the “Consent Agreement”), wherein, for a variety of reasons, Registrant recognizes that there is no likelihood of confusion posed by the coexistence of Applicant’s Mark and Registrant’s Mark in connection with the parties’ respective services, and consents to the use and registration of Applicant’s Mark by Applicant in connection with its applied-for services. The Consent Agreement is attached as Exhibit A.
Moreover, Registrant has also filed a Section 7 Request to Amend its registration for Registrant’s Mark to delete the words “retail and” from its Class 35 identification of services. See Exhibit B. As amended, the services covered by Registrant’s Mark is “Wholesale and online retail store services featuring snack foods,” which further clarifies that Registrant does not offer its services in brick-and-mortar and retail stores. Thus, it is evident that is no overlap between the covered services or the channels of trade.
Meanwhile, it is well-settled that the existence of a consent agreement between owners of allegedly confusingly similar marks creates a strong presumption of a lack of likelihood of confusion between the marks. The Court of Appeals for the Federal Circuit held in Bongrain International (American) Corp. v. Delice de France Inc., 1 U.S.P.Q.2d 1775 (Fed. Cir. 1987), that consents executed between parties should be accorded substantial—even dispositive—weight, in deciding issues of likelihood of confusion:
We have often said, in trademark cases involving agreements reflecting parties’ views on the likelihood of confusion in the marketplace, that they are in a much better position to know the real life situation than bureaucrats or judges and therefore such agreements may, depending on the circumstances, carry great weight as was held in Dupont.
Id. at 1778 (emphasis added).
The agreement entered into by Delice and Bongrain, among other evidence, makes it perfectly clear that they both intend to go on using their respective marks no matter what the PTO does, and neither wishes to interfere with such use by the other. It is, therefore, contrary to the policy and purposes of the Trademark Act to remove Bongrain’s marks from the register by canceling its registrations if they may be preserved without clear violation of the statute.
Id. at 1779 (emphasis added).
Similarly, in In re Four Seasons Hotel, Ltd., 26 U.S.P.Q.2d 1071 (Fed. Cir. 1993), the court reversed a refusal to register the mark FOUR SEASONS BILTMORE for an oceanside resort, which had been refused registration because of a perceived likelihood of confusion with the mark THE BILTMORE LOS ANGELES for a hotel. In reversing the refusal in view of the consent which had been provided by the registrant, the Federal Circuit emphasized that the Trademark Office’s role is not “to second-guess the conclusions of those most familiar with the marketplace.” Id. at 1071; see also Mid-States Distributing Co., Inc. v. Morrison Oil Co., 10 U.S.P.Q.2d 1860, 1862 (T.T.A.B. 1989) (confirming that “the clear message of the case law is that agreements between parties who are in a position to assess the effect of their uses should be given great weight”)
Likewise, in In re E.I. Du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973), the court stated:
Thus when those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won’t. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not.
Id. at 568 (emphasis added).
In this case, Applicant and Registrant, the parties with the most knowledge about their own respective businesses, have acknowledged the distinct commercial impressions generated by the marks, the differences in the services of the parties, and the differences in the channels of trade and target consumers for the parties’ respective services. See Consent Agreement ¶¶ 2(a) and (b). The parties have also agreed to continue to keep separate their channels of trade (i.e., online sales as opposed to brick-and-mortar stores). See Consent Agreement ¶¶ 2(c) and (d). Furthermore, the parties agree—based on their analyses of their own marks, businesses, and target markets—that there is no likelihood of confusion between their marks. See Consent Agreement ¶ 2. Thus, the Consent Agreement fully meets the requirements set out in Bongrain and the other cases cited above and the Examining Attorney should be free of any question or doubt as to the parties’ beliefs about the absence of a likelihood of confusion, as well as the possibility for future confusion.
Additionally, § 1207.01(d)(viii) of the TMEP clearly states the evidentiary weight of a consent agreement in overcoming a 2(d) likelihood of confusion rejection:
…[E]xamining attorneys should give substantial weight to a proper consent agreement. When an applicant and registrant have entered into a credible consent agreement and, on balance, the other factors do not dictate a finding of likelihood of confusion, an examining attorney should not interpose his or her own judgment that confusion is likely.
Accordingly, in view of the differences between the Applicant’s Mark and Registrant’s Mark when considered in their entireties, as well as the differences in the parties’ respective services and channels of trade, particularly in light of Registrant’s Section 7 Request to Amend its covered services, and the Consent Agreement between the parties, Applicant submits that there is no likelihood of confusion posed between Applicant’s Mark and Registrant’s Mark.
Finally, Applicant notes that in conjunction with this Response, it has submitted an additional processing fee of $125 in order to comply with the requirement that it file a change of owner’s address through the Trademark Electronic Application System (TEAS).
Conclusion
For all of the foregoing reasons, Applicant respectfully requests that the Examining Attorney withdraw the § 2(d) refusal, and approve the application for publication.
