| 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 | 86883734 |
| LAW OFFICE ASSIGNED | LAW OFFICE 102 |
| MARK SECTION | |
| MARK FILE NAME | http://tmng-al.gov.uspto.report/resting2/api/img/86883734/large |
| LITERAL ELEMENT | MARK BELL SLING SHOT POWER 45 HOWMUCHYABENCH.NET |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
Color is not claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of a stylized rectangle with a dark background and light border with the signature of Mark Bell in light script at left, above the words "SLING SHOT" in large, light type outlined by a dark field in the middle, with a weight plate forming the "o" and containing the words "POWER 45," above the words HowMuchYaBench.net in small, light type at the bottom. |
| ARGUMENT(S) | |
|
This responds to the PTO’s office action dated April 29, 2016. In it, the PTO object to Applicant’s application to register a logo containing the words “MARK BELL SLING SHOT POWER 45 HOWMUCHYABENCH.NET” in Class 025 for “hats, shirts, shorts, singlets” based on a perceived likelihood of confusion with registrations owned by Polaris Industries, Inc. (Reg. Nos. 4610257 and 4610256), for a logo and word mark containing SLING SHOT as a literal element in Class 025 for “Clothing, namely, shirts, pants, hats, gloves, jackets.” (The PTO did not object to Applicant’s application for its goods in Class 028.) The PTO also objected because Applicant’s personal consent was not signed by Mark Bell, which also is addressed below.
A. No Likelihood of Confusion Exists.
No likelihood of confusion exists between the parties’ marks for several reasons.
First, the marks are different. The literal element of Applicant’s design mark states: “MARK BELL SLING SHOT POWER 45 HOWMUCHYABENCH.NET.” As such, it does not look like, sound like, or have the same meaning of either of Registrant’s marks that merely contain the words “SLING SHOT.” Moreover, the words in Applicant’s mark indicates an association with Mark Bell (“MARK BELL”) and weight lifting (“HOWMUCHYABENCH.NET”), not Registrant or the activities for which Registrant is known (snowmobiling). These distinguishing features alone dispel a likelihood of any mistaken association between Applicant and Registrant.
Second, the PTO has previously found that no likelihood of confusion exists between Applicant’s and Registrant’s use of “SLING SHOT” as a formative in their respective trademarks. Indeed, Applicant already owns registrations for SLING SHOT (Reg. No. 4610206) in Class 025 for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; clothing for exercise, weightlifting, and powerlifting, namely, moisture-wicking sports shirts, shorts, and wristbands”; and SLING SHOT COMPRESSION CUFFS (Reg. No. 4946741) in Class 028 for “Exercise equipment, namely, elastic compression sleeves made of woven polyester for arms, knees, chest and back to increase one repetition maximum for use in weightlifting, bench pressing and powerlifting.” See Exhibits A and B. The instant application is merely an extension of the registrations that Applicant already owns.
Third, Applicant and Registrant have entered into a coexistence and consent agreement covering the parties’ respective uses of trademarks that include “SLING SHOT” as a formative. In it, Applicant and Registrant agree that no likelihood of confusion exists between such respective marks; Registrant will not use its trademark in connection with “athletic apparel specifically intended for exercise, weightlifting or powerlifting,” and Applicant will not use its trademark in connection with “clothing for recreational vehicles”; the parties’ “goods, trade channels and target consumers” differ; and in the unlikely event that any actual confusion nonetheless arises, the parties will “cooperate to take steps to abate the confusion and to prevent confusion from recurring.” As such, Registrant agreed “not to oppose, contest or otherwise challenge the validity of [Applicant’s] rights or applications or registrations for SLING SHOT or MARK BELL SLING SHOT” for athletic apparel. See Exhibit C. In short, the parties in the best position to determine whether a likelihood of confusion exists have found that there is no such likelihood. Because their agreement addresses the only element of overlap between the parties’ marks (“SLING SHOT”), as well as the apparel listed in Applicant’s application, the PTO should accept the parties' determination.
For all of these reasons, the PTO should accept Applicant’s application and publish Applicant’s mark for potential third-party opposition. Ordinarily, if Registrant believed registration of Applicant’s trademark would harm it in some way, it could oppose Applicant’s application. Here, however, Registrant has already expressly acknowledged it would suffer no such injury and, therefore, it would not file an opposition. Therefore, the PTO can be assured that publishing Applicant’s mark would not harm anyone.
B. Mark Bell’s Signed Consent Is Submitted Herewith.
Applicant submitted Mark Bell’s personal consent for use of his name and signature in its trademark with its application, but apparently uploaded a form that did not include his signature. To correct that oversight, a signed version is included herewith. See Exhibit D.
C. Conclusion
For the reasons stated above, Applicant respectfully requests the PTO accept Applicant’s application and publish it for potential third-party opposition. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| JPG FILE(S) | \\TICRS\EXPORT16\IMAGEOUT 16\868\837\86883734\xml6\ ROA0009.JPG |
| ORIGINAL PDF FILE | evi_172944659-20160512155319193849_._Exhibit_A_-_SLING_SHOT_-_Registration_Certificate.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\868\837\86883734\xml6\ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\868\837\86883734\xml6\ROA0003.JPG | |
| ORIGINAL PDF FILE | evi_172944659-20160512155319193849_.__B_-_SLING_SHOT_COMPRESSION_CUFFS_-_Registration_Certificate.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\868\837\86883734\xml6\ROA0004.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\868\837\86883734\xml6\ROA0005.JPG | |
| ORIGINAL PDF FILE | evi_172944659-20160512155319193849_._Exhibit_C_-_Signed_Consent_Agreement.pdf |
| CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\868\837\86883734\xml6\ROA0006.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\868\837\86883734\xml6\ROA0007.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\868\837\86883734\xml6\ROA0008.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Applicant's registration certificates for its similar "SLING SHOT" trademarks; Applicant's consent agreement with the registrant the PTO cited as the basis for its likelihood of confusion objection; and the signed personal consent the PTO found was previously missing. |
| ADDITIONAL STATEMENTS SECTION | |
| NAME(S), PORTRAITS(S), SIGNATURE(S) OF INDIVIDUAL(S) | The name(s), portrait(s), and/or signature(s) shown in the mark identifies Mark Bell, whose consent(s) to register is made of record. |
| CONSENT FILE NAME(S) |
\\TICRS\EXPORT16\IMAGEOUT 16\868\837\86883734\xml6\ ROA0010.JPG |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Michael G. Atkins/ |
| SIGNATORY'S NAME | Michael G. Atkins |
| SIGNATORY'S POSITION | Attorney of record, Washington bar member |
| SIGNATORY'S PHONE NUMBER | 206-628-0983 |
| DATE SIGNED | 05/12/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu May 12 16:19:41 EDT 2016 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XX.XX-20 160512161941863323-868837 34-5505a401bbb56dc5ddb5fd 7613dd7fe88b79b3c61ceb944 fb652a5ef7484cb6cb6c-N/A- N/A-20160512155319193849 |
| 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) |
This responds to the PTO’s office action dated April 29, 2016. In it, the PTO object to Applicant’s application to register a logo containing the words “MARK BELL SLING SHOT POWER 45 HOWMUCHYABENCH.NET” in Class 025 for “hats, shirts, shorts, singlets” based on a perceived likelihood of confusion with registrations owned by Polaris Industries, Inc. (Reg. Nos. 4610257 and 4610256), for a logo and word mark containing SLING SHOT as a literal element in Class 025 for “Clothing, namely, shirts, pants, hats, gloves, jackets.” (The PTO did not object to Applicant’s application for its goods in Class 028.) The PTO also objected because Applicant’s personal consent was not signed by Mark Bell, which also is addressed below.
A. No Likelihood of Confusion Exists.
No likelihood of confusion exists between the parties’ marks for several reasons.
First, the marks are different. The literal element of Applicant’s design mark states: “MARK BELL SLING SHOT POWER 45 HOWMUCHYABENCH.NET.” As such, it does not look like, sound like, or have the same meaning of either of Registrant’s marks that merely contain the words “SLING SHOT.” Moreover, the words in Applicant’s mark indicates an association with Mark Bell (“MARK BELL”) and weight lifting (“HOWMUCHYABENCH.NET”), not Registrant or the activities for which Registrant is known (snowmobiling). These distinguishing features alone dispel a likelihood of any mistaken association between Applicant and Registrant.
Second, the PTO has previously found that no likelihood of confusion exists between Applicant’s and Registrant’s use of “SLING SHOT” as a formative in their respective trademarks. Indeed, Applicant already owns registrations for SLING SHOT (Reg. No. 4610206) in Class 025 for “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; clothing for exercise, weightlifting, and powerlifting, namely, moisture-wicking sports shirts, shorts, and wristbands”; and SLING SHOT COMPRESSION CUFFS (Reg. No. 4946741) in Class 028 for “Exercise equipment, namely, elastic compression sleeves made of woven polyester for arms, knees, chest and back to increase one repetition maximum for use in weightlifting, bench pressing and powerlifting.” See Exhibits A and B. The instant application is merely an extension of the registrations that Applicant already owns.
Third, Applicant and Registrant have entered into a coexistence and consent agreement covering the parties’ respective uses of trademarks that include “SLING SHOT” as a formative. In it, Applicant and Registrant agree that no likelihood of confusion exists between such respective marks; Registrant will not use its trademark in connection with “athletic apparel specifically intended for exercise, weightlifting or powerlifting,” and Applicant will not use its trademark in connection with “clothing for recreational vehicles”; the parties’ “goods, trade channels and target consumers” differ; and in the unlikely event that any actual confusion nonetheless arises, the parties will “cooperate to take steps to abate the confusion and to prevent confusion from recurring.” As such, Registrant agreed “not to oppose, contest or otherwise challenge the validity of [Applicant’s] rights or applications or registrations for SLING SHOT or MARK BELL SLING SHOT” for athletic apparel. See Exhibit C. In short, the parties in the best position to determine whether a likelihood of confusion exists have found that there is no such likelihood. Because their agreement addresses the only element of overlap between the parties’ marks (“SLING SHOT”), as well as the apparel listed in Applicant’s application, the PTO should accept the parties' determination.
For all of these reasons, the PTO should accept Applicant’s application and publish Applicant’s mark for potential third-party opposition. Ordinarily, if Registrant believed registration of Applicant’s trademark would harm it in some way, it could oppose Applicant’s application. Here, however, Registrant has already expressly acknowledged it would suffer no such injury and, therefore, it would not file an opposition. Therefore, the PTO can be assured that publishing Applicant’s mark would not harm anyone.
B. Mark Bell’s Signed Consent Is Submitted Herewith.
Applicant submitted Mark Bell’s personal consent for use of his name and signature in its trademark with its application, but apparently uploaded a form that did not include his signature. To correct that oversight, a signed version is included herewith. See Exhibit D.
C. Conclusion
For the reasons stated above, Applicant respectfully requests the PTO accept Applicant’s application and publish it for potential third-party opposition.
