Response to Office Action

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)

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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)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87075869 FOX(Standard Characters, see http://uspto.report/TM/87075869/mark.png) has been amended as follows:

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

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 

Applicant:  Twentieth Century Fox Film Corporation

 

Application Serial No.:  87075869

 

Filing Date:  June 17, 2016

 

Mark:  FOX

 

Class:  16

 

Examining Attorney:  Kristin M. Dahling

 

Law Office:  105

 

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APPLICANT’S RESPONSE TO OFFICE ACTION

 

Pursuant to 37 C.F.R. §2.62(a) and TMEP § 711, Applicant Twentieth Century Fox Film Corporation (“Applicant”), by and through its attorneys, respectfully submits this Response to Office Action (the “Response”) regarding Application Serial No. 87075869 (the “Application”) for the mark FOX (“Applicant’s Mark”).  Applicant is responding to the Office Action dated September 23, 2016 (the “Office Action”).  Applicant responds to each of the issues identified in the Office Action as follows:

 

I.                Amendment to Identification of Goods

 

To clarify Applicant’s goods in view of the refusal under Section 2(d) of the Trademark Act, Applicant hereby amends the identification of goods from:

 

Stationery; calendars; stickers; bookmarks; greeting cards; posters; postcards; pens and pencils; notebooks; comic books; trading cards; series of fiction books; children's books; children's activity books; coloring books; cardboard stand-up cutouts featuring photographs or artwork; art prints

 

to:

 

Stationery; calendars; stickers; bookmarks; greeting cards; posters; postcards; pens and pencils; notebooks; comic books; trading cards; series of fiction books; children's books; children's activity books; coloring books; cardboard stand-up cutouts featuring photographs or artwork; art prints; all the aforesaid goods not related to motocross and bicycling sports

 

II.                Likelihood of Confusion Refusal Under Section 2(d)

 

The Examining Attorney refused registration of Applicant’s Mark under Section 2(d) of the Trademark Act, citing U.S. Trademark Registration Nos. 3309294 and 2189804 (the “Cited Registrations”), arguing the Cited Registrations give rise to confusion with Applicant’s Mark.  Applicant respectfully requests that the Examining Attorney reconsider and withdraw the refusal to register.

 

At the outset, it must be borne in mind that under the Trademark Act, a refusal to register based upon a likelihood of confusion requires that confusion as to the source of the goods or services be likely, not merely possible; as the Second Circuit has stated, “likelihood of confusion means a probability of confusion; it is not sufficient if confusion is merely ‘possible.’”  Estee Lauder, Inc. v. The Gap, Inc., 42 USPQ2d 1228 (2nd Cir. 1997) (internal quotations omitted) quoting 2 J. McCarthy, Trademarks and Unfair Competition, Section 23:3.  A likelihood of confusion is based on the cumulative effect of the differences in the goods and the differences in the marks themselves.  See Federated Foods, Inc. v. Fort Howard Paper, Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976).

 

The standard for determining whether two marks are likely to be confused is set forth in In re E.I. DuPont de Nemours & Co., 177 USPQ 563 (C.C.P.A. 1973); see also TMEP § 1207.01.  The DuPont case establishes a number of factors to be considered in the analysis of whether two marks are likely to be confused under Trademark Act Section 2(d).  Each factor may play a more dominant or diminished role, depending on the facts of each case.  DuPont, 177 USPQ at 567.  No single factor is dispositive.  Id.  The Examining Attorney need not consider all factors, but may consider those factors that are most relevant to the case at hand.  See In re Dixie Restaurants, Inc., 41 USPQ2d 1531, 1533 (Fed. Cir. 1997); Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., 227 USPQ 541, 542 (Fed. Cir. 1985).

 

The most relevant DuPont factors in this case are: (1) the dissimilarities between the respective marks; (2) the dissimilarities between the respective goods; and (3) the differences in the respective channels of trade.

 

1. The Differences in Appearance, Connotation, and Overall Commercial Impression of the Marks at Issue Preclude a Likelihood of Confusion

 

When Registrant’s Marks and Applicant’s Mark are viewed in their entireties, as they must be, the differences are sufficient to avoid a likelihood of confusion.  The similarity between the respective marks in their entireties as to appearance, sound, connotation, and overall commercial impression are primary factors to consider in a DuPont analysis.  177 USPQ at 567.  It is well settled that in assessing likelihood of confusion, marks may not be dissected, nor any element of a mark ignored.  TMEP 1207.01(b); In re Electrolyte Laboratories Inc., 16 USPQ2d 1239, 1240 (Fed. Cir. 1990).  Since marks tend to be perceived in their entireties, similarities between marks are based upon the overall impression of the marks.  Opryland USA, Inc. v. Great American Music Show Inc., 23 USPQ2d 1471, 1473 (Fed. Cir. 1992) (“When it is the entirety of the marks that is perceived by the public, it is the entirety of the marks that must be compared.”).

 

The mere fact that the marks at issue share the word “FOX” does not compel a finding that confusion is likely.  Even when word marks with overlapping text are applied to the same or related goods or services, they can function to signify different sources.  See Gen. Mills Inc. v. Kellogg Co., 3 USPQ2d 1442, 1445 (8th Cir. 1987) (Kellogg, which used APPLE RAISIN CRISP for cereal, failed to show entitled to preliminary injunction against General Mills’ use of OATMEAL RAISIN CRISP for cereal); Little Caesar Enterpriser Inc. v. Pizza Caesar Inc., 4 USPQ2d 1942, 1444-45 (6th Cir. 1987) (LITTLE CAESARS for pizza not infringed by PIZZA CAESAR USA for an Italian restaurant).  Many Trademark Trial and Appeal Board and Court of Appeals for the Federal Circuit decisions reiterate this requirement to compare marks in their entireties in order to assess whether they create a distinct commercial impression.  Additional examples of cases in which overlapping marks were found unlikely to be confused include the following:

 

·         PECAN SANDIES versus PECAN SHORTIES (both for cookies)

·         HEALTHY LIFE versus HEALTH FOR LIFE (both for vitamins and dietary supplements)

·         POLY FLO versus POLY PRO and EASY FLO (all for paint brushes) and POLY-GLO (for paint applicators)

·         CHIRO-MATIC versus CHIROPRACTIC (both for mattresses)

·         TACO TOWN versus TACO TIME (both for restaurant services)

·         CATFISH BOBBERS (CATFISH disclaimed) (for fish) versus BOBBERS (for a restaurant)

·         COBBLER’S OUTLET versus CALIFORNIA COBBLER’S (both for shoes)

·         CRISTAL (for champagne) versus CRYSTAL CREEK (for wine)

·         ZINGERS (for cakes) versus RED ZINGER (for herbal tea)

·         PEAK (for toothpaste) versus PEAK PERIOD (for deodorant)

·         VOLTA (for vodka) versus TERZA VOLTA and Design (for wine)

 

Keebler Co. v. Murray Bakery Prods., 9 USPQ2d 1736 (Fed. Cir. 1989); Approved Pharmaceutical Corp. v. P. Leiner Nutritional Products Inc., 5 USPQ2d 1219 (TTAB 1987); The Wooster Brush Co. v. Prager Brush Co., 231 USPQ 316 (TTAB 1986); The Land-O-Nod Co. v. Paulison, 220 USPQ 61 (TTAB 1983); Taco Time Intl., Inc. v. Taco Town, Inc., 217 USPQ 268 (TTAB 1982); In re Farms Fresh Catfish Co., 231 USPQ 495 (TTAB 1986); The U.S. Shoe Corp. v. Chapman, 229 USPQ 74 (TTAB 1985); Champagne Louis Roederer S.A. v. Delicato Vineyards, 47 USPQ 1459 (Fed Cir. 1998); In Interstate Brands v. Celestial Seasonings, 198 USPQ 151 (CCPA 1978); Colgate-Palmolive Co. v. Carter-Wallace, 167 USPQ 529 (CCPA 1970); In re White Rock Distilleries Inc., 92 USPQ2d 1282 (TTAB 2009).

 

If all components of the respective marks are considered, as with the examples listed above, Applicant’s and Registrants’ Marks are not likely to be confused.  Reg. No. 3309294 contains a dominant drawing of a fox head on the top of the mark that immediately catches the viewer’s eye.  In general, consumers are inclined to focus on the first word or portion in a trademark. L’Oreal S.A. and L’Oreal USA, Inc. v. Robert Victor Marcon, 102 USPQ2d 1434 (TTAB 2012); see also Presto Products, Inc. v. Nice-Pack Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is likely to be impressed upon the mind of a purchaser and remembered).  As the first and largest portion of the mark, the fox design in this Cited Registration is likely to be what consumers focus on.  Reg. No. 2189804 also displays a distinguishing design in the shape of a fox head.  This design element is the dominant feature of the mark and creates a memorable image in consumers’ minds.

 

These design elements demonstrate that simply because marks have one common element does not mean that the marks cannot co-exist.  The marks are different enough to warrant co-existence on the Register.

 

B.     Applicant’s and Registrant’s Respective Goods Are Completely Different and Unrelated

 

Settled law holds that for a likelihood of confusion to exist, the goods must be related in some manner or “that the conditions surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that, because of the marks used in connection therewith, would lead to the mistaken belief that they originate from the same source.” TMEP § 1207.01(a)(i) (emphasis added); and cases cited therein.  The specific goods, as amended herein, are so dissimilar that it is unlikely consumers will confuse the source of these products.  In this regard, the threshold requirement of relatedness has not been met, and as a result it cannot be said that there is a likelihood of confusion.

 

Applicant’s goods, as amended, are:

 

Class 16: Stationery; calendars; stickers; bookmarks; greeting cards; posters; postcards; pens and pencils; notebooks; comic books; trading cards; series of fiction books; children's books; children's activity books; coloring books; cardboard stand-up cutouts featuring photographs or artwork; art prints; all the aforesaid goods not related to motocross and bicycling sports

 

The Cited Registrations, on the other hand, cover products specifically related to motocross and bicycling sports, or motocross sports clothing, protective gear, footwear, casualwear, and accessories.  Fox Head, Inc., the owner of the Cited Registrations, is a motocross and mountain biking gear and apparel company.  See Exhibit A.  Applicant’s products are not tailored towards athletes or motocross riders, as indicated in the amended goods description.

 

Furthermore, it must be borne in mind that even "a tiny percentage" of crossover business "is a very weak evidentiary basis for a finding of relatedness." In re Coors Brewing Co., 68 USPQ2d 1059 (Fed. Cir. 2003) (degree of overlap in the sources of BLUE MOON for beer and BLUE MOON for restaurant was de minimis, no likelihood of confusion).  Given the unique markets in which the parties' goods move, it is highly doubtful the offerings of the respective parties will even be encountered together by prospective purchasers at all, let alone in a context-giving rise to confusion.  Thus, even if there were some overlap, confusion is nonetheless unlikely to occur among consumers. See Fruit of the Loom Inc. v. Fruit of the Earth Inc., 3 USPQ2d 1531, 1533 (T.T.A.B. 1987).

 

C.    Applicant’s and Registrants’ Goods Will Be Marketed and Offered in Distinct Channels of Trade

 

Further militating against any likelihood of confusion are the differences between Applicant’s and Registrant’s trade channels in which they market and offer their goods, and the sophistication of their relevant consumers.  The conditions and activities surrounding the marketing of Applicant’s and most of the Cited Registrations’ respective goods are such that they would not be encountered by the same persons under circumstances that could give rise to the mistaken belief that they originate from the same source.  See 1207.01(a)(i); In re Hal Leonard Publishing Corp. d/b/a Hal Leonard Books, 15 USPQ2d 1574, 1575 (TTAB 1990); In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999).  The threshold significance of the trade channels is whether the same class of persons is exposed to the marks at issue under circumstances likely to result in confusion.  Jeanne-Marc, Inc. v. Cluett, Peabody & Co., Inc., 221 USPQ 58, 61 (TTAB 1984); TCPIP Holding Co. v. Haar Communications, 57 USPQ2d 1969 (2d Cir. 2001) (similar buyers targeted).  Where, as here, the parties subject to a confusion analysis "operate in distinctly different markets, sell distinctly different products, and contact, for the most part, very different people in their marketing efforts," confusion is unlikely to result. Heartsprings, Inc. v. Heartspring, Inc., 143 F.3d 550, 557 (10th Cir. 1998) (finding no likelihood of confusion between HEARTSPRINGS for educational materials and HEARTSPRING for residential school for disabled children).

 

As previously stated, Registrant is a motocross and mountain biking gear and apparel company.  Their website states that “everything we make is developed with the rider in mind.”  Exhibit A.  Fox Head, Inc. specifically targets its marketing towards athletes, specifically riders.  This is a narrow trade channel with a precise audience.  Applicant’s products are not tailored towards athletes or riders.  In a market separate from Registrant, Applicant is one of the largest film studios in the United States.

 

Since the connection between the respective trade channels and consumers is tenuous at best, and Applicant’s and the Cited Registrations’ goods are not competitive, related or interchangeable, confusion is unlikely.

 

D.    Conclusion

 

In light of the foregoing, Applicant respectfully submits that the refusal under Trademark Act Section 2(d) is incorrect because the threshold of a “probability” of confusion has not been met.  The clear differences between the marks when viewed in their entireties, the differences in the goods offered, and the unique trade channels in which the products travel all compel the conclusion that even a possibility of confusion is remote.  Therefore, Applicant respectfully requests that the Examining Attorney withdraw the refusal under Section 2(d) of the Trademark Act.

 

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Applicant submits that with this Response, all of the issues raised by the Examining Attorney in the Office Action have been resolved.  Applicant therefore respectfully requests that the Application be approved for publication.

 

The Examining Attorney is invited to contact the undersigned with any remaining questions or concerns.

 

Respectfully submitted,

/Curtis Krechevsky/

 

Curtis Krechevsky

Cantor Colburn LLP

 

Attorneys for Applicant Twentieth Century Fox Film Corporation

Our Ref:  FEG3874TUS

 

Curtis Krechevsky

Cantor Colburn LLP

20 Church Street

22^nd Floor

Hartford, Connecticut  06103-3207 U.S.A.

Phone:  860-286-2929

Fax:  860-286-0115

Email:  TM-CT@cantorcolburn.com

EVIDENCE
Evidence in the nature of Extract from Fox Head's website has been attached.
Original PDF file:
evi_12227902-20170323094954932323_._FEG3874TUS_-_Exhibit_A.PDF
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Stationery; calendars; stickers; bookmarks; greeting cards; posters; postcards; pens and pencils; notebooks; comic books; trading cards; series of fiction books; children's books; children's activity books; coloring books; cardboard stand-up cutouts featuring photographs or artwork; art prints
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the application. 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 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/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Stationery; calendars; stickers; bookmarks; greeting cards; posters; postcards; pens and pencils; notebooks; comic books; trading cards; series of fiction books; children's books; children's activity books; coloring books; cardboard stand-up cutouts featuring photographs or artwork; art prints; all the aforesaid goods not related to motocross and bicycling sportsClass 016 for Stationery; calendars; stickers; bookmarks; greeting cards; posters; postcards; pens and pencils; notebooks; comic books; trading cards; series of fiction books; children's books; children's activity books; coloring books; cardboard stand-up cutouts featuring photographs or artwork; art prints; all the aforesaid goods not related to motocross and bicycling sports
Filing Basis: Section 1(b), Intent to Use: 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 in the application. 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 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/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /Curtis Krechevsky/     Date: 03/23/2017
Signatory's Name: Curtis Krechevsky
Signatory's Position: Attorney of Record; Massachusetts State Bar Member

Signatory's Phone Number: (860)286-2929

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.

        
Serial Number: 87075869
Internet Transmission Date: Thu Mar 23 13:53:51 EDT 2017
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-201703231353515472
44-87075869-58032623c54c949b38706adc95d3
89cf784541184ad69c7419e6d7c56a865e9af-N/
A-N/A-20170323094954932323