| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87778571 |
| LAW OFFICE ASSIGNED | LAW OFFICE 107 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/87778571/mark.png |
| LITERAL ELEMENT | AESOP |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
Color is not claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the word "Aesop" with a macron above the letter "e". |
| ARGUMENT(S) | |
|
Section 2(d) Refusal– Likelihood of Confusion
The examining attorney has refused registration on the basis of likelihood of confusion with a prior existing trademark registration -- U.S. Registration No. 2246359. Applicant notes, and has added to the record a statement, that the cited registration is owned by the same owner as the pending application. As such, the prior existing trademark registration does not bar registration of the applied for mark. Applicant respectfully submits that the examining attorney should withdraw the refusal of registration made on the basis of likelihood of confusion.
Prior Pending Applications
The examining attorney has cited two prior pending applications on the basis of a possible likelihood of confusion. The applicant respectfully submits that likelihood of confusion with the marks in these pending applications, even if they are to mature to registration, does not bar registration of the applied for mark.
First, Applicant references U.S. Registration No. 2246359, cited above, which is in fact owned by the applicant. Applicant notes that the dates of first use for the goods and services covered in this registration are November, 1994. These pre-date the dates of first use for both of the cited applications -- Application Serial No. 87750899 cites 10/20/2017 and Application Serial No. 87526727 cites 1/31/17. The goods and services covered by Applicant’s Registration No. 2246359 – “skin soaps, perfumery, essential oils for personal use, personal room aroma oils, hair lotions, dentifrices, scalp cleansers, hair shampoos, hair conditioners, hair styling preparations, oil-based hair treatments, hair sealants and polishes, body oils, namely, hand and foot oils, massage and skin care oils, body balms, aromatic body balms, bath oils, bath and shower gels, body soaking salts, foot soaking salts, skin creams and cleansers, skin exfoliant herbs, facial creams and masques, facial hydrosols, facial spritz, non-medicated lip balm, oil-based lip treatments and nourishing mud masks” – are at least as similar to the goods and services covered by the prior pending applications as are the goods and services covered by Applicant’s present application (which cover retail sales of the same products). If the cited prior pending applications are not blocked by the existence of Applicant’s prior registration, it does not seem that Applicant’s present application should be blocked by these applications.
In any case, while the Applicant reserves the right to make a fuller argument in the case that the examining attorney actually refuses registration on the basis of either of these prior pending applications, the Applicant submits that there would be no likelihood of confusion with the marks in these prior pending applications.
While the compared goods and/or services need not be identical or even competitive they need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).Here, the applicant’s services, namely “retail shops featuring skin care products, hair care products, body care products, fragrances, gifts, and music; retail store and on-line retail store services featuring skin care products, hair care products, body care products, fragrances, gifts, and music; retail store services featuring skin care products, hair care products, body care products, fragrances, gifts, and music; web-based catalog services featuring skin care products, hair care products, body care products, fragrances, gifts, and music.” These are not closely related to the goods and services covered by the prior pending applications – for Application Serial No. 87750899 these are Atomic clocks; Clocks; Clocks and watches, electric; Parts for clocks; Stopwatches; Watch bands; Watch cases being parts of watches; Watch glasses; Watches; Wristwatches and for Application Serial No. 87526727 these are alcoholic beverages except beers. The goods are clearly not the same. They do not even fall into the same International Classes. Nor, generally, do they travel through the same channels of trade. Consumers are not likely to confront the goods in the marketplace in a way that is likely to create confusion. Therefore, Applicant respectfully submits that its application should not be suspended or refused on the basis of the cited prior pending applications. |
|
| ADDITIONAL STATEMENTS SECTION | |
| ACTIVE PRIOR REGISTRATION(S) | The applicant claims ownership of active prior U.S. Registration Number(s) 2246359. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Michael H. Sproule/ |
| SIGNATORY'S NAME | Michael H. Sproule |
| SIGNATORY'S POSITION | Attorney of Record, New York bar member |
| SIGNATORY'S PHONE NUMBER | 212-308-8505 |
| DATE SIGNED | 11/08/2018 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Nov 08 16:05:44 EST 2018 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20181108160544463458-877 78571-610fcaf7fec21c3ace1 1a4f8240bdf03bf063ca27093 f82b45149fee2db397293f-N/ A-N/A-2018110816001217471 9 |
| 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) |
Section 2(d) Refusal– Likelihood of Confusion
The examining attorney has refused registration on the basis of likelihood of confusion with a prior existing trademark registration -- U.S. Registration No. 2246359. Applicant notes, and has added to the record a statement, that the cited registration is owned by the same owner as the pending application. As such, the prior existing trademark registration does not bar registration of the applied for mark. Applicant respectfully submits that the examining attorney should withdraw the refusal of registration made on the basis of likelihood of confusion.
Prior Pending Applications
The examining attorney has cited two prior pending applications on the basis of a possible likelihood of confusion. The applicant respectfully submits that likelihood of confusion with the marks in these pending applications, even if they are to mature to registration, does not bar registration of the applied for mark.
First, Applicant references U.S. Registration No. 2246359, cited above, which is in fact owned by the applicant. Applicant notes that the dates of first use for the goods and services covered in this registration are November, 1994. These pre-date the dates of first use for both of the cited applications -- Application Serial No. 87750899 cites 10/20/2017 and Application Serial No. 87526727 cites 1/31/17. The goods and services covered by Applicant’s Registration No. 2246359 – “skin soaps, perfumery, essential oils for personal use, personal room aroma oils, hair lotions, dentifrices, scalp cleansers, hair shampoos, hair conditioners, hair styling preparations, oil-based hair treatments, hair sealants and polishes, body oils, namely, hand and foot oils, massage and skin care oils, body balms, aromatic body balms, bath oils, bath and shower gels, body soaking salts, foot soaking salts, skin creams and cleansers, skin exfoliant herbs, facial creams and masques, facial hydrosols, facial spritz, non-medicated lip balm, oil-based lip treatments and nourishing mud masks” – are at least as similar to the goods and services covered by the prior pending applications as are the goods and services covered by Applicant’s present application (which cover retail sales of the same products). If the cited prior pending applications are not blocked by the existence of Applicant’s prior registration, it does not seem that Applicant’s present application should be blocked by these applications.
In any case, while the Applicant reserves the right to make a fuller argument in the case that the examining attorney actually refuses registration on the basis of either of these prior pending applications, the Applicant submits that there would be no likelihood of confusion with the marks in these prior pending applications.
While the compared goods and/or services need not be identical or even competitive they need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).Here, the applicant’s services, namely “retail shops featuring skin care products, hair care products, body care products, fragrances, gifts, and music; retail store and on-line retail store services featuring skin care products, hair care products, body care products, fragrances, gifts, and music; retail store services featuring skin care products, hair care products, body care products, fragrances, gifts, and music; web-based catalog services featuring skin care products, hair care products, body care products, fragrances, gifts, and music.” These are not closely related to the goods and services covered by the prior pending applications – for Application Serial No. 87750899 these are Atomic clocks; Clocks; Clocks and watches, electric; Parts for clocks; Stopwatches; Watch bands; Watch cases being parts of watches; Watch glasses; Watches; Wristwatches and for Application Serial No. 87526727 these are alcoholic beverages except beers. The goods are clearly not the same. They do not even fall into the same International Classes. Nor, generally, do they travel through the same channels of trade. Consumers are not likely to confront the goods in the marketplace in a way that is likely to create confusion.
Therefore, Applicant respectfully submits that its application should not be suspended or refused on the basis of the cited prior pending applications.