| 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 | 87238576 |
| LAW OFFICE ASSIGNED | LAW OFFICE 105 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87238576/mark.png |
| LITERAL ELEMENT | ARIEL |
| 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) | |
|
The Examining Attorney refuses registration to applicant’s mark because she states that applicant’s mark, when used on or in connection with the identified goods, so resembles the marks in U.S. Registration No. 2851037, 3854096, 3928344, 3978892 and 5118206, as to be likely to cause confusion, to cause mistake or to deceive. Applicant respectfully traverses the rejection. The marks cited by the Examining Attorney are the following: ARIEL in the name of Brooks Sports, Inc. of Seattle, Washington, covering “Athletic footwear;” ARIEL in the name of Disney Enterprises, Inc. of Burbank, California, covering “Articles made from imitations of leather, namely, luggage, bags, namely, backpacks, book bags, duffel bags, overnight bags; shopping bags of textile; tote bags; purses; handbags,” and goods in class 21; ARIEL TIAN, in the name of Ariel AKA Tian Li Tian of Elmhurst, New York, covering “Imitation leather key chains; Leather and imitation leather; Leather and imitation leather bags; Leather bags and wallets; Leather cases for keys; Leather credit card wallets; Leather handbags; Leather key chains; Leather purses; Wallets made of leather or other materials,” “Belts for clothing; Headbands for clothing; Jackets; Jerseys; Leather belts; Leather coats; Leather headwear; Leather jackets; Leather shoes; Leather vests; Scarfs; Tops; Wearable garments and clothing, namely, shirts,” as well as goods in classes 3, 14; This registration was due for a Section 8 Affidavit as of March 8, 2017. To date, no Affidavit has been filed. The grace period ends September 8, 2017, and if no affidavit is filed by that date, this registration should be canceled and the rejection based upon this registration moot. ARIEL MARTIN in the name of Merchantman LLC of Jersey City, New Jersey covering “Clothing, namely, jeans, shirts, blouses and jackets;” This registration was due for a Section 8 Affidavit as of June 14, 2017. To date, no Affidavit has been filed. The grace period ends December 14, 2017, and if no affidavit is filed by that date, this registration should be canceled and the rejection based upon this registration moot. ARIEL SARAH in the name of Yiwu Shizhe E-commerce Co., Ltd. of China, covering “Aprons; Babies' pants; Bibs, not of paper; Boots; Footwear; Girdles; Gloves as clothing; Hosiery; Leggings; Neckties; Pyjamas; Scarfs; Tee-shirts; Underwear; Baby layettes for clothing.” The law is clear that, in determining likelihood of confusion, what must be considered is the similarity, as to appearance, sound, connotation, and commercial impression, of marks in their entireties. In re E.I. du Pont de Nemours and Co., 177 USPQ 563 (CCPA 1973); Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F. 2d 1399, 181 USPQ 272 (CCPA 1974); Franklin Mint Corp. v. Master Mfg. Co., 667 F. 2d 1005, 212 USPQ 233 (CCPA 1981). Accordingly, in the comparison of applicant’s mark to the cited marks, the marks as a whole should be compared. The applicant’s mark is ARIEL, while the cited marks include 2 different ARIELs, as well as an ARIEL TAN, ARIEL MARTIN and an ARIEL SARAH. Each of these registrations are in the name of different parties. As there are 5 different marks cited by the Examining Attorney as confusingly similar to applicant’s mark, it is clear that no one party has exclusive rights in marks comprising or incorporating this term and that the addition of applicant’s mark, for dissimilar goods, will not cause confusion. Applicant submits that its mark, when used on the identified goods, “Backpacks; Backpacks compatible with personal hydration systems, sold empty,” is not confusingly similar to any of the cited registrations. It may be helpful to provide a brief explanation of the nature of applicant’s goods. The applicant’s mission is to create innovative high performance gear that reflects the company’s love of adventure and devotion to the outdoors. Applicant’s products must meet the demanding expectation of its most discerning customers and those customers are proud to use applicant’s packs. Applicant’s backpacks are high performance, and custom fitted to the user. All backpacks are designed to accept a hydration reservoir. Applicant does not sell its products online or directly to customers; it only sells its products through retail partners, to ensure that each backpack is the right fit for the user and for his or her purpose. Each pack has an “All Mighty Guarantee,” free of charge, the company will repair any damage or defect in its product – whether it was purchased in 1974 or yesterday. If applicant is unable to repair the item, it will happily replace it. The All Mighty Guarantee covers any product, any reason, any era. Applicant’s products have received many awards for their quality, design and durability, including Backpacker Magazine Editor’s Choice Award in 1995, 2005 and 2009, Grand GG award from Outdoor Life Network in 2002, Outside Magazine Gear of the Year Award in 2003, 2006 and 2009, Good Design Award for the World’s Best Design in 2009, Best of Adventure Award from National Geographic Adventure Magazine in 2010 and 2015, and more. Applicant has been providing its ARIEL backpacks since at least as early as March 1986, long before the any of the registrant’s products were sold. The backpacks are designed specifically for women, and are promoted for backpacking and mountaineering expeditions. The technology of the backpack ensures a custom fit, has antigravity features and allows the product to be converted to a daypack. These backpacks typically sell for $300 or more. The backpack is generally used for hiking expeditions of a week or more. The cited marks ARIEL and ARIEL TIAN are the only ones listed that cover goods in the same class as that of the applicant, class 18 goods. ARIEL, in the name of Disney, references a fictional character and the title character of Walt Disney Pictures' animated film “The Little Mermaid,” which came out in 1989. In 2000, Ariel became an official member of the newly launched Disney Princess line, which includes various Disney princesses under its banner. Ariel is one of the original 8 characters that were included at the franchise's launch. The franchise is directed at young girls and covers a wide variety of merchandise, including but not limited to magazines, music albums, toys, video games, clothes, and stationery. Information about the Disney Ariel character, and material from Disney’s website related to that character and the associated merchandise, is attached to this response. As can be seen, the products bear Ariel’s image Given the target audience of Disney’s mark, young girls and persons buying for those young girls, it is difficult to believe that there would be source confusion if applicant’s mark is allowed to regsiter. Applicant submits that there will be no confusion as to source between applicant’s ARIEL backpacks, and the products branded with Disney’s ARIEL. Disney’s product bears Ariel’s name, image or likeness, and/or copy her costumes. They are completely different from applicant’s specialized backpacks. The goods of applicant and registrant are so different that it is beyond the pale of reason to believe that the respective goods would be encountered in the same channels of trade. If these products were to be encountered in the same channels of trade, there will be no confusion as to source, given the fame of Disney’s princess and the type of products sold bearing Disney’s mark. Under the mark ARIEL TIAN, the registrant provides leather and imitation leather fashion products. Applicant’s products are not made of leather or imitation leather. They are not fashion products, but are for the serious outdoor enthusiast. In her Office Action, the Examining Attorney has provided printouts from Saddleback Leather, Tumi and Tory Burch to show that the same entity commonly manufactures the applicant’s backpacks and the registrant’s class 18 goods. Nonetheless, the nature of the applicant’s goods, and those of the registrant, ensures that there will be no confusion as to source if applicant’s mark is allowed to register, and if this registration is maintained. The Examining Attorney has also cited four marks covering class 25 goods, ARIEL in the name of Brooks Sports, Inc. “Athletic footwear,” ARIEL TIAN, ARIEL MARTIN, and ARIEL SARAH. The differences in the applicant’s products from those of any of those registrations, and the manner in which they are advertised and sold, will ensure that there will be no confusion as to the source of the goods should this application be allowed to register. In the office action, the Examining Attorney provides printouts from the Under Armour, Nike and The North Face websites, to illustrate that parties that sell footwear and jackets may also sell backpacks. The registrant Brooks Sports provides footwear under its ARIEL mark; more importantly, it does not sell backpacks at all. The only bag it sells are bags for spike shoes. A consumer will not believe that Brooks would also sell backpacks under this mark, since it does not sell this type of product. A copy of the website for ARIEL SARAH is attached. It is clear that no one would assume that this party would provide applicant’s technical backpacks. The remaining registrations, if they are not cancelled, also cover fashion clothing items. Applicant submits that when someone wants to purchase applicant’s items, they will scrutinize the product for its features and for the name of its manufacturer, whether buying in person or through the internet. Applicant’s products are expensive, on the order of $300, which will further heighten the scrutiny that a purchaser or potential purchaser will conduct prior to purchase. With that scrutiny, members of the relevant consuming public are not likely to be confused as to the source of the respective goods sold under these different marks. The goods of the applicant and registrants are distinct, and it is unlikely that the respective goods would be encountered by the same consumers in the same channels of trade, let alone to asuem that consumers would believe that they emanate from a common source. In the present situation, potential purchasers, even if they were to confront the respective products of each party, would easily and quickly realize that they do not emanate from a common source. As all matters in the Office Action have been addressed, applicant respectfully requests that the Examining Attorney reconsider the rejection in light of the comments above, and approve the application and pass it to publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_6412517543-20170809115229088876_._ariel_evidence_1.pdf |
| CONVERTED PDF FILE(S) (14 pages) |
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| \\TICRS\EXPORT17\IMAGEOUT17\872\385\87238576\xml4\ROA0003.JPG | |
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| \\TICRS\EXPORT17\IMAGEOUT17\872\385\87238576\xml4\ROA0008.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\872\385\87238576\xml4\ROA0009.JPG | |
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| \\TICRS\EXPORT17\IMAGEOUT17\872\385\87238576\xml4\ROA0015.JPG | |
| ORIGINAL PDF FILE | evi_6412517543-20170809115229088876_._ariel_evidence_2.pdf |
| CONVERTED PDF FILE(S) (5 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\872\385\87238576\xml4\ROA0016.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\872\385\87238576\xml4\ROA0017.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\872\385\87238576\xml4\ROA0018.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\872\385\87238576\xml4\ROA0019.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\872\385\87238576\xml4\ROA0020.JPG | |
| ORIGINAL PDF FILE | evi_6412517543-20170809115229088876_._ariel_evidence_3.pdf |
| CONVERTED PDF FILE(S) (6 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\872\385\87238576\xml4\ROA0021.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\872\385\87238576\xml4\ROA0022.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\872\385\87238576\xml4\ROA0023.JPG | |
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| \\TICRS\EXPORT17\IMAGEOUT17\872\385\87238576\xml4\ROA0025.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\872\385\87238576\xml4\ROA0026.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Material from cited registrants' websites |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /barbara a. barakat/ |
| SIGNATORY'S NAME | Barbara A. Barakat |
| SIGNATORY'S POSITION | Attorney of record |
| SIGNATORY'S PHONE NUMBER | 617 526 6154 |
| DATE SIGNED | 08/09/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Aug 09 11:56:05 EDT 2017 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0170809115605764206-87238 576-510e0a5e2dba0eab81756 967426f556977daaca47a3074 4ea8cfc41cc9d56f5ac-N/A-N /A-20170809115229088876 |
| 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) |
The Examining Attorney refuses registration to applicant’s mark because she states that applicant’s mark, when used on or in connection with the identified goods, so resembles the marks in U.S. Registration No. 2851037, 3854096, 3928344, 3978892 and 5118206, as to be likely to cause confusion, to cause mistake or to deceive. Applicant respectfully traverses the rejection.
The marks cited by the Examining Attorney are the following:
ARIEL in the name of Brooks Sports, Inc. of Seattle, Washington, covering “Athletic footwear;”
ARIEL in the name of Disney Enterprises, Inc. of Burbank, California, covering “Articles made from imitations of leather, namely, luggage, bags, namely, backpacks, book bags, duffel bags, overnight bags; shopping bags of textile; tote bags; purses; handbags,” and goods in class 21;
ARIEL TIAN, in the name of Ariel AKA Tian Li Tian of Elmhurst, New York, covering “Imitation leather key chains; Leather and imitation leather; Leather and imitation leather bags; Leather bags and wallets; Leather cases for keys; Leather credit card wallets; Leather handbags; Leather key chains; Leather purses; Wallets made of leather or other materials,” “Belts for clothing; Headbands for clothing; Jackets; Jerseys; Leather belts; Leather coats; Leather headwear; Leather jackets; Leather shoes; Leather vests; Scarfs; Tops; Wearable garments and clothing, namely, shirts,” as well as goods in classes 3, 14;
This registration was due for a Section 8 Affidavit as of March 8, 2017. To date, no Affidavit has been filed. The grace period ends September 8, 2017, and if no affidavit is filed by that date, this registration should be canceled and the rejection based upon this registration moot.
ARIEL MARTIN in the name of Merchantman LLC of Jersey City, New Jersey covering “Clothing, namely, jeans, shirts, blouses and jackets;”
This registration was due for a Section 8 Affidavit as of June 14, 2017. To date, no Affidavit has been filed. The grace period ends December 14, 2017, and if no affidavit is filed by that date, this registration should be canceled and the rejection based upon this registration moot.
ARIEL SARAH in the name of Yiwu Shizhe E-commerce Co., Ltd. of China, covering “Aprons; Babies' pants; Bibs, not of paper; Boots; Footwear; Girdles; Gloves as clothing; Hosiery; Leggings; Neckties; Pyjamas; Scarfs; Tee-shirts; Underwear; Baby layettes for clothing.”
The law is clear that, in determining likelihood of confusion, what must be considered is the similarity, as to appearance, sound, connotation, and commercial impression, of marks in their entireties. In re E.I. du Pont de Nemours and Co., 177 USPQ 563 (CCPA 1973); Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F. 2d 1399, 181 USPQ 272 (CCPA 1974); Franklin Mint Corp. v. Master Mfg. Co., 667 F. 2d 1005, 212 USPQ 233 (CCPA 1981). Accordingly, in the comparison of applicant’s mark to the cited marks, the marks as a whole should be compared.
The applicant’s mark is ARIEL, while the cited marks include 2 different ARIELs, as well as an ARIEL TAN, ARIEL MARTIN and an ARIEL SARAH. Each of these registrations are in the name of different parties. As there are 5 different marks cited by the Examining Attorney as confusingly similar to applicant’s mark, it is clear that no one party has exclusive rights in marks comprising or incorporating this term and that the addition of applicant’s mark, for dissimilar goods, will not cause confusion.
Applicant submits that its mark, when used on the identified goods, “Backpacks; Backpacks compatible with personal hydration systems, sold empty,” is not confusingly similar to any of the cited registrations. It may be helpful to provide a brief explanation of the nature of applicant’s goods. The applicant’s mission is to create innovative high performance gear that reflects the company’s love of adventure and devotion to the outdoors. Applicant’s products must meet the demanding expectation of its most discerning customers and those customers are proud to use applicant’s packs. Applicant’s backpacks are high performance, and custom fitted to the user. All backpacks are designed to accept a hydration reservoir. Applicant does not sell its products online or directly to customers; it only sells its products through retail partners, to ensure that each backpack is the right fit for the user and for his or her purpose. Each pack has an “All Mighty Guarantee,” free of charge, the company will repair any damage or defect in its product – whether it was purchased in 1974 or yesterday. If applicant is unable to repair the item, it will happily replace it. The All Mighty Guarantee covers any product, any reason, any era. Applicant’s products have received many awards for their quality, design and durability, including Backpacker Magazine Editor’s Choice Award in 1995, 2005 and 2009, Grand GG award from Outdoor Life Network in 2002, Outside Magazine Gear of the Year Award in 2003, 2006 and 2009, Good Design Award for the World’s Best Design in 2009, Best of Adventure Award from National Geographic Adventure Magazine in 2010 and 2015, and more.
Applicant has been providing its ARIEL backpacks since at least as early as March 1986, long before the any of the registrant’s products were sold. The backpacks are designed specifically for women, and are promoted for backpacking and mountaineering expeditions. The technology of the backpack ensures a custom fit, has antigravity features and allows the product to be converted to a daypack. These backpacks typically sell for $300 or more. The backpack is generally used for hiking expeditions of a week or more.
The cited marks ARIEL and ARIEL TIAN are the only ones listed that cover goods in the same class as that of the applicant, class 18 goods.
ARIEL, in the name of Disney, references a fictional character and the title character of Walt Disney Pictures' animated film “The Little Mermaid,” which came out in 1989. In 2000, Ariel became an official member of the newly launched Disney Princess line, which includes various Disney princesses under its banner. Ariel is one of the original 8 characters that were included at the franchise's launch. The franchise is directed at young girls and covers a wide variety of merchandise, including but not limited to magazines, music albums, toys, video games, clothes, and stationery. Information about the Disney Ariel character, and material from Disney’s website related to that character and the associated merchandise, is attached to this response. As can be seen, the products bear Ariel’s image
Given the target audience of Disney’s mark, young girls and persons buying for those young girls, it is difficult to believe that there would be source confusion if applicant’s mark is allowed to regsiter. Applicant submits that there will be no confusion as to source between applicant’s ARIEL backpacks, and the products branded with Disney’s ARIEL. Disney’s product bears Ariel’s name, image or likeness, and/or copy her costumes. They are completely different from applicant’s specialized backpacks. The goods of applicant and registrant are so different that it is beyond the pale of reason to believe that the respective goods would be encountered in the same channels of trade. If these products were to be encountered in the same channels of trade, there will be no confusion as to source, given the fame of Disney’s princess and the type of products sold bearing Disney’s mark.
Under the mark ARIEL TIAN, the registrant provides leather and imitation leather fashion products. Applicant’s products are not made of leather or imitation leather. They are not fashion products, but are for the serious outdoor enthusiast. In her Office Action, the Examining Attorney has provided printouts from Saddleback Leather, Tumi and Tory Burch to show that the same entity commonly manufactures the applicant’s backpacks and the registrant’s class 18 goods. Nonetheless, the nature of the applicant’s goods, and those of the registrant, ensures that there will be no confusion as to source if applicant’s mark is allowed to register, and if this registration is maintained.
The Examining Attorney has also cited four marks covering class 25 goods, ARIEL in the name of Brooks Sports, Inc. “Athletic footwear,” ARIEL TIAN, ARIEL MARTIN, and ARIEL SARAH. The differences in the applicant’s products from those of any of those registrations, and the manner in which they are advertised and sold, will ensure that there will be no confusion as to the source of the goods should this application be allowed to register.
In the office action, the Examining Attorney provides printouts from the Under Armour, Nike and The North Face websites, to illustrate that parties that sell footwear and jackets may also sell backpacks.
The registrant Brooks Sports provides footwear under its ARIEL mark; more importantly, it does not sell backpacks at all. The only bag it sells are bags for spike shoes. A consumer will not believe that Brooks would also sell backpacks under this mark, since it does not sell this type of product.
A copy of the website for ARIEL SARAH is attached. It is clear that no one would assume that this party would provide applicant’s technical backpacks.
The remaining registrations, if they are not cancelled, also cover fashion clothing items. Applicant submits that when someone wants to purchase applicant’s items, they will scrutinize the product for its features and for the name of its manufacturer, whether buying in person or through the internet. Applicant’s products are expensive, on the order of $300, which will further heighten the scrutiny that a purchaser or potential purchaser will conduct prior to purchase. With that scrutiny, members of the relevant consuming public are not likely to be confused as to the source of the respective goods sold under these different marks.
The goods of the applicant and registrants are distinct, and it is unlikely that the respective goods would be encountered by the same consumers in the same channels of trade, let alone to asuem that consumers would believe that they emanate from a common source. In the present situation, potential purchasers, even if they were to confront the respective products of each party, would easily and quickly realize that they do not emanate from a common source.
As all matters in the Office Action have been addressed, applicant respectfully requests that the Examining Attorney reconsider the rejection in light of the comments above, and approve the application and pass it to publication.
