| 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 | 87100790 |
| LAW OFFICE ASSIGNED | LAW OFFICE 119 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87100790/mark.png |
| LITERAL ELEMENT | BALANCE |
| 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) | |
|
In response to the substantive refusal, please note the following:
This is in response to the Office action dated October 21, 2016, in which the Examining Attorney refused registration of Applicant's mark because of a likelihood of confusion with the marks in U.S. Registration Nos. 3937988 and 3905687.
Based upon the arguments and amendments presented below, Applicant respectfully requests that the Examining Attorney withdraw the refusal based upon Section 2(d) of the Act and approve its mark for publication in the Official Gazette.
1. Amendment of Identification of Goods
Applicant requests that the identification of goods be amended as follows:
"Electrolyte replacement solutions", in International Class 5.
2. Section 2(d) Refusal
As amended, there is no likelihood between Applicant's mark and the cited marks for the following reasons:
1. Applicant's goods and cited registrants' respective goods are not related as a ELECTROLYTE REPLACEMENT solution (emphasis added) differs from mineral supplements (which by definition are in addition thereto) in US Registration 3905687 and dietary food supplements of US Registration 3937988; and
2. The cited marks are only suggestive; thus, they are entitled only to narrow trademark protection.
Likelihood of Confusion
1. The Parties' Respective Goods are Sufficiently Different and Unrelated
The parties' respective goods are not related and are used for different purposes, rendering consumer confusion unlikely. It is well settled that an Examining Attorney must not only consider the similarities of the marks, but also compare the goods and/or services to determine if they are related such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983). The Examining Attorney must also consider all circumstances surrounding the sale of the goods and/or services, such as the marketing channels and the identity of the prospective purchasers. Industrial Nucleonic Corp v. Hinde Engineering Co., 475 F.2d 1197, 177 USPQ 386 (CCPA 1973).
Applicant's goods, as amended, are electrolyte replacement solutions. The cited '988 registration covers nutritional supplements and dietary food supplements which are vastly different than a electrolyte replacement solution. Similarly, the cited '687 registration covers nutritional supplements for animals; mineral supplements for cattle -- there is no indiction that these supplements are electrolyte replacement solution.
Based upon the foregoing, Applicant contends that the parties' respective goods are sufficiently different and unrelated, rendering consumer confusion between the marks unlikely.
2. Suggestive Marks are Entitled Only a Narrow Scope of Protection
Confusion between Applicant's mark and cited marks is also unlikely because the cited marks are only suggestive, which entitles them to only a limited scope of protection as opposed to if they were fanciful marks.
It is undisputed that the scope of protection afforded a weak mark is less than that accorded an arbitrary mark. As stated in General Mills v. Kellogg Co., 3 USPQ2d 1442 (8th Cir. 1987), "[d]etermining that a mark is weak means that consumer confusion has been found unlikely because the mark's components are so widely used that the public can easily distinguish slight differences in the marks, even if the goods are related."
The Board explained the effect of this rule in In re Lar Mor International Inc., 221 USPQ 180 (TTAB 1983): "It seems both logical and obvious to us that where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owners of strong trademarks. Where a party chooses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights." 221 USPQ at 182.
The Federal Circuit applied the same reasoning in finding no likelihood of confusion between PECAN SANDIES and PECAN SHORTIES, both for cookies. Keebler Co. v. Murray Bakery Products, 866 F.2d. 1386 (Fed. Cir. 1989). The Federal Circuit also found no likelihood of confusion between ROMAN and ROMANBURGER, both for food products. Mr. Hero Sandwich Systems, Inc. v. Roman Meal Co., 781 F.2d 884 (Fed. Cir. 1986).
Applicant respectfully submits that the rationale underlying those decisions applies with full force here. When the cited marks and Applicant's mark are used to designate unrelated goods, likelihood of confusion cannot be grounded solely on the fact that the parties' respective marks share the same descriptive term BALANCE. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 005 |
| DESCRIPTION | |
| Electrolyte replacement solutions; Nutritional drinks for animals; Nutritional supplements; Veterinary pharmaceutical compounds for equine use to treat conditions of the leg, hoof, ear, nose and throat | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 005 |
| TRACKED TEXT DESCRIPTION | |
| Electrolyte replacement solutions; |
|
| FINAL DESCRIPTION | Electrolyte replacement solutions |
| FIRST USE ANYWHERE DATE | At least as early as 08/01/2016 |
| FIRST USE IN COMMERCE DATE | At least as early as 08/01/2016 |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /JWR/ |
| SIGNATORY'S NAME | John W. Ryan |
| SIGNATORY'S POSITION | Attorney of Record, DC bar member |
| SIGNATORY'S PHONE NUMBER | 202-372-9092 |
| DATE SIGNED | 11/22/2016 |
| RESPONSE SIGNATURE | /JWR/ |
| SIGNATORY'S NAME | John W. Ryan |
| SIGNATORY'S POSITION | Attorney of Record, DC bar member |
| SIGNATORY'S PHONE NUMBER | 202-372-9092 |
| DATE SIGNED | 11/22/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Nov 22 11:19:19 EST 2016 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0161122111919600428-87100 790-570b5bde942f4973ebd67 8deacf5f8f3874528c65746b4 face6d6af3c894a53d43a-N/A -N/A-20161122110731278374 |
| 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) |
In response to the substantive refusal, please note the following:
This is in response to the Office action dated October 21, 2016, in which the Examining Attorney refused registration of Applicant's mark because of a likelihood of confusion with the marks in U.S. Registration Nos. 3937988 and 3905687.
Based upon the arguments and amendments presented below, Applicant respectfully requests that the Examining Attorney withdraw the refusal based upon Section 2(d) of the Act and approve its mark for publication in the Official Gazette.
1. Amendment of Identification of Goods
Applicant requests that the identification of goods be amended as follows:
"Electrolyte replacement solutions", in International Class 5.
2. Section 2(d) Refusal
As amended, there is no likelihood between Applicant's mark and the cited marks for the following reasons:
1. Applicant's goods and cited registrants' respective goods are not related as a ELECTROLYTE REPLACEMENT solution (emphasis added) differs from mineral supplements (which by definition are in addition thereto) in US Registration 3905687 and dietary food supplements of US Registration 3937988; and
2. The cited marks are only suggestive; thus, they are entitled only to narrow trademark protection.
Likelihood of Confusion
1. The Parties' Respective Goods are Sufficiently Different and Unrelated
The parties' respective goods are not related and are used for different purposes, rendering consumer confusion unlikely. It is well settled that an Examining Attorney must not only consider the similarities of the marks, but also compare the goods and/or services to determine if they are related such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983). The Examining Attorney must also consider all circumstances surrounding the sale of the goods and/or services, such as the marketing channels and the identity of the prospective purchasers. Industrial Nucleonic Corp v. Hinde Engineering Co., 475 F.2d 1197, 177 USPQ 386 (CCPA 1973).
Applicant's goods, as amended, are electrolyte replacement solutions. The cited '988 registration covers nutritional supplements and dietary food supplements which are vastly different than a electrolyte replacement solution. Similarly, the cited '687 registration covers nutritional supplements for animals; mineral supplements for cattle -- there is no indiction that these supplements are electrolyte replacement solution.
Based upon the foregoing, Applicant contends that the parties' respective goods are sufficiently different and unrelated, rendering consumer confusion between the marks unlikely.
2. Suggestive Marks are Entitled Only a Narrow Scope of Protection
Confusion between Applicant's mark and cited marks is also unlikely because the cited marks are only suggestive, which entitles them to only a limited scope of protection as opposed to if they were fanciful marks.
It is undisputed that the scope of protection afforded a weak mark is less than that accorded an arbitrary mark. As stated in General Mills v. Kellogg Co., 3 USPQ2d 1442 (8th Cir. 1987), "[d]etermining that a mark is weak means that consumer confusion has been found unlikely because the mark's components are so widely used that the public can easily distinguish slight differences in the marks, even if the goods are related."
The Board explained the effect of this rule in In re Lar Mor International Inc., 221 USPQ 180 (TTAB 1983): "It seems both logical and obvious to us that where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owners of strong trademarks. Where a party chooses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights." 221 USPQ at 182.
The Federal Circuit applied the same reasoning in finding no likelihood of confusion between PECAN SANDIES and PECAN SHORTIES, both for cookies. Keebler Co. v. Murray Bakery Products, 866 F.2d. 1386 (Fed. Cir. 1989). The Federal Circuit also found no likelihood of confusion between ROMAN and ROMANBURGER, both for food products. Mr. Hero Sandwich Systems, Inc. v. Roman Meal Co., 781 F.2d 884 (Fed. Cir. 1986).
Applicant respectfully submits that the rationale underlying those decisions applies with full force here. When the cited marks and Applicant's mark are used to designate unrelated goods, likelihood of confusion cannot be grounded solely on the fact that the parties' respective marks share the same descriptive term BALANCE.
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.