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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87663330 VIVID(Standard Characters, see http://uspto.report/TM/87663330/mark.png) has been amended as follows:

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

The Examiner provisionally refused registration of Applicant’s VIVID mark for “Snow goggles and sports goggles and non-prescription lenses for sports goggles” in International Class 9 (“Applicant’s Mark”) on the ground that there is a likelihood of confusion with Registration Nos. 2799623 (VIVID) and 4423125 (VIVID) (collectively, the “Registered Marks”). Applicant respectfully disagrees with the refusal because Applicant’s goods are limited to a small class of sophisticated consumers and sold through distinct trade channels.

There can be no rule that certain goods are per se related. In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009). Where goods such as clothing and accessories would be found in a different department, even within the same store, goods are not necessarily related. In Re Sydel Lingerie Co., Inc., 197 U.S.P.Q. (BNA) ¶ 629 (T.T.A.B. Aug. 25, 1977); see also In Re British Bulldog, Ltd., 224 U.S.P.Q. (BNA) ¶ 854 (T.T.A.B. Nov. 1, 1984). In Bulldog, the Board found that men’s underwear and shoes, although both in the category of wearing apparel, were not related, because “they are not complementary or companion items, as are coats and boots, or athletic shoes and athletic clothing,” further noting that “men's underwear is in the nature of a self-service, ‘off the shelf’ item, whereas shoes are purchased with care, usually with the assistance of a salesman. 

Here, although both parties’ marks are used in connection with “lenses” in Class 9, the types of lenses are distinct and travel in different trade channels. The Registered Marks, both owned by Vision Ease, LP, cover “anti-reflective coatings sold as a component of eyeglass lenses” and “ophthalmic lenses for eyeglasses.” Eyeglass lenses are marketed to a specific class of customer, those who wear eyeglasses, generally with prescription lenses, for every day wear. In contrast, Applicant’s goods are goggles and lenses for goggles, and the identification specifically limits the goods as meant for use in sports, including skiing and other snow sports. Applicant’s goods are even further limited by specifying that its lenses are not prescription. Furthermore, similar to Bulldog, goggles for sports like skiing are usually purchased “off the shelf”, whereas prescription glasses are purchased not only with the assistance of a salesman but also with the help of a medical professional.

For these reasons, Applicant asserts there is no likelihood of confusion between Applicant’s Mark and the Registered Marks.

SIGNATURE(S)
Response Signature
Signature: /Julia K. Sutherland/     Date: 04/17/2018
Signatory's Name: Julia K. Sutherland
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 312-460-5577

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: 87663330
Internet Transmission Date: Tue Apr 17 14:43:53 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20180417144353413
244-87663330-510508b42f8a33fcfc0291b2255
4e773fd17771d2b5e1e364f981dfc16e83bef2-N
/A-N/A-20180417144026321991