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)

---

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. 87740540 MINT(Standard Characters, see http://uspto.report/TM/87740540/mark.png) has been amended as follows:

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

RESPONSE TO OFFICE ACTION

 

The Office has refused the subject application (Ser. No. 87/740540), for the word MINT and covering only mattresses, based on an alleged potential likelihood of confusion with two registered marks and two prior-filed pending applications. As set forth below, Applicant submits that there is no likelihood of confusion and therefore requests that the Office approve the application for publication.

 

The Office has refused to register Applicant’s MINT mark based on a likelihood of confusion with the registrations detailed below.

 

Mark	Reg. No.	Relevant Goods/Services
MINT	3710848	Duffel bags; luggage; backpacks; tote bags; overnight bags; carry-on bags; garment bags for travel; shoe bags for travel; cosmetic bags sold empty; diaper bags; beach bags; and specifically excluding women's handbags and purses, in Class 18.   Nap mats; sleeping bags; sleeping mats, in Class 20.
HOMEMINT	4235429	Retail store services and online retail store services featuring furniture, artwork, home furnishings, home decor and housewares; marketing and consulting services in the field of promoting the products, services, and brands of others through all public communication means, particularly specializing in the use of mobile, social, and print media to drive consumer interest, engagement, and action, in Class 35

 

            The Office has also indicated there may be a possible likelihood of confusion with two prior filed marks, detailed below, which have both been Allowed.

 

Mark	App. No.	Classes
MINT PANTRY	87/234656 (Allowed)	Classes 6, 8, 21, 24, 25, 35
LITTLE MINT	87/482432 (Allowed)	Classes 9, 11, 16, 20, 21, 24, 25, 27, 28, 35

 

As an initial matter, in the Statement of Use filed on July 3, 2018 (after the subject Office Action was issued), the application for MINT PANTRY (Ser. No. 87/234656) was amended to drop all goods in Class 20 and bedding products in Class 24. In part because bedroom furniture and bedding products have been deleted, and for the additional reasons discussed below, this application should not be an obstacle to the use or registration of the subject mark.

 

Second, in allowing all of the applications noted above, the Office has already determined that MINT is sufficiently distinct in appearance and connotation from HOMEMINT, MINT PANTRY, and LITTLE MINT to avoid a likelihood of confusion. The latter three marks should thus be removed as obstacles for the subject application as well. The following additional MINT marks have been approved as well, further proving the point:

 

Mark	Ser./Reg. No.	Relevant Goods/Services	Owner Name
HONEYMINT	87/635199 (published)	Furniture, namely, lawn chairs, lounge chairs and beach chairs, in Class 20	Target Brands, Inc.
HANAMINT	4751729	Furniture, in Class 20	Hanamint Corporation, Inc.
BLUEMINT	4868497	Online retail store services featuring towels, clothing, headgear, footwear, in Class 35	Bluemint Magazacilik A.S.
THE DANBURY MINT	4849151	Accent pillows, in Class 20	MBI, Inc.
MINIMINT	2264233	Furniture, namely, showcases, display cases, countertop showcases and counter tables, in Class 20	Peter Pepper Products, Inc.
PEPPERMINT	2264234	Furniture, namely, showcases, display cases, display counters, counter tables, wardrobes and etagere, in Class 20	Peter Pepper Products, Inc.

 

Copies of the USPTO records for these marks are attached as Exhibit A.

 

With regard to the senior registration for MINT (Reg. No. 3710848), it, in relevant part, covers “nap mats; sleeping bags; sleeping mats.” These are sufficiently unrelated to Applicant’s “mattresses” to avoid a likelihood of consumer confusion. A review of the registrant’s products on its website at OhMint.com, reveals more information about its products:  “[The nap rolls] can be carried by the toddling toddlers on their way to Mother's Day Out, preschool, or to the corner for a time out.” See Exhibit B (http://www.ohmint.com/Mermaid.html?sc=27&category=18366). Similarly, “sleeping bags” are padded bags for sleeping outdoors or in a tent. See Exhibit C (http://www.merriam-webster.com/dictionary/sleeping%20bag). Mattresses, by contrast, are often heavy furniture items sold at a much higher price point than sleeping mats or bags. Consumers exercise a much greater degree of care in purchasing them and are thus less likely to be confused.

 

Based on the foregoing, Applicant believes there is no likelihood of confusion between its mark and the cited marks and requests the Office to approve its application for publication.

 

EVIDENCE
Evidence in the nature of Exhibits A-C has been attached.
Original PDF file:
evi_20447535-20180806144409812543_._MINT_OAR_Exhibits.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7

SIGNATURE(S)
Response Signature
Signature: /diana s. bae/     Date: 08/06/2018
Signatory's Name: Diana S. Bae
Signatory's Position: Attorney for Applicant, Associate at Arent Fox LLP, DC bar member

Signatory's Phone Number: 2028576000

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: 87740540
Internet Transmission Date: Mon Aug 06 14:52:11 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.X.XX.XX-201808061452119089
88-87740540-6102344fe9eb7f94de1db623f9bf
3afc4a2d243d65d4a0e2bac5c65eb684713a8-N/
A-N/A-20180806144409812543