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. 87854940 MOXIE(Standard Characters, see http://uspto.report/TM/87854940/mark.png) has been amended as follows:

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

RESPONSE TO OFFICIAL ACTION

In response to the Official Action dated July 16, 2018, Applicant submits the following.

LIKELIHOOD OF CONFUSION REFUSAL

The Examining Trademark Attorney (Examiner) has refused registration based on the Examiner's finding that the applied-for mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 5,219,804 as to be likely to cause confusion, to cause mistake or to deceive. In response thereto, Applicant respectfully submits that its mark is not likely to cause confusion, to cause mistake or to deceive consumers who would encounter the mark of Applicant and those of the cited mark. Since no confusion is likely, Applicant's mark may properly be approved for publication.

Likelihood of confusion is determined on a case-specific basis, applying the factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973) . The DuPont factors are: (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; (2) the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; (3) the similarity or dissimilarity of established, likely-to-continue trade channels; (4) the conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing; (5) the fame of the prior mark (sales, advertising, length of use); (6) the number and nature of similar marks in use on similar goods; (7) the nature and extent of any actual confusion; (8) the length of time during and conditions under which there have been concurrent use without evidence of actual confusion; (9) the variety of goods on which a mark is or is not used (house mark, "family" mark, product mark); (10) the market interface between applicant and the owner of a prior mark; (11) the extent to which applicant has a right to exclude others from use of its mark on its goods; (12) the extent of potential confusion, i.e., whether de minimis or substantial; and (13) any other established fact probative of the effect of use. See id.

In making a determination concerning likelihood of confusion, all of the relevant factors enumerated by the Court in DuPont must be analyzed. All relevant facts must be considered on a case by case basis: [T]rademark law must necessarily be flexible responding to particular circumstances disclosed by particular fact situations... [E]ach case must be decided on the basis of all relevant facts which include the marks and the goods as well as the marketing environment in which a purchaser normally encounters them... Interstate Brands Corp. v. Celestial Seasonings, Inc., 196 USPQ 321, 324 (TTAB 1977) aff'd 198 USPQ 1151 (CCPA 1978) (emphasis added). Further, "the test is a difficult one, geared to analysis of each case on the basis of the characteristics of the marks and goods in issue". In re August Storck KG, 218 USPQ 823 (TTAB1983).

The Examiner asserts that a likelihood of confusion exists in the instant case between Applicant's mark MOXIE and the following cited mark:

MOXY for “containers, namely cartons and boxes made from paperboard”, owned by Nippon Dynawave Packaging Co., Reg. No. 5,219,804 issued June 6, 2017.

A Number Of DuPont Factors Favors A Finding Of No Likelihood Of Confusion.

DuPont Factor 1: The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

The cited mark and the applied for mark differ in appearance:

cited mark	applied for mark
MOXY	MOXIE

The XY ending versus the XIE ending clearly distinguishes the applied for mark from the cited mark in the eyes of the consumer.  This factor favors a finding of no likelihood of confusion.

DuPont Factor 2: The similarity or dissimilarity and nature of the goods as set forth in an application or registration or in connection with which a prior mark is in use.

The Examiner argues that these products are all related due to the fact that their purpose and function are arguably identical, namely for the purpose of storing and organizing household goods.

There is no evidence that the goods offered under the cited mark are

for the purpose of storing and organizing household goods.

 

The goods offered under the cited mark are “containers, namely cartons and boxes made from paperboard”.  Paperboard is a material commonly used for packaging of foods and liquids, such as cereal boxes and milk cartons (See Attachment A and Attachment B).  The owner of the cited mark, Nippon Dynawave Packaging Co., by using the word “paperboard” in the description, clearly intended that the carton and box containers sold under the cited mark are carton and box containers made of paperboard.  Carton and box containers made from paperboard can be distinguished from carton and box containers made from cardboard, for example, given that both materials differ in composition as illustrated by this photograph (see Attachment C).  Based on the material of which the products sold under the cited mark are made, namely paperboard, it cannot be concluded that the carton and box containers sold under the cited mark are used for storing and organizing household goods.

Applicant’s goods, namely file crates and plastic cates and stacking storage bins of plastic are clearly distinguishable from the goods sold under the cited mark. The materials are different (paperboard vs. plastic) the goods are different (cartons and boxes vs. crates and bins) and the supposition that the goods sold under the cited mark are for the purpose of storing and organizing household goods is cannot be supported by the wording of the description of goods of the cited mark.  This factor favors a finding of no likelihood of confusion.

The issue in determining whether goods or services are so commercially similar that confusion is likely is not whether some conceptual connection exists between such goods or services, or whether a situation can be hypothesized wherein a person may encounter the goods or services at issue, but rather whether such goods or services are likely to be encountered by the same persons under circumstances that would give rise, because of the marks used in connection therewith, to an incorrect assumption that they originate from the same source. See Local Trademarks, Inc. v. Handy Boys, Inc., 16 USPQ2d 1156, 1158 (TTAB 1990). While it may be hypothesized that confusion may occur here because both marks are for different types of containers, when the nature of the goods contained in the cited mark and the applied for mark are fully considered and examined closely, such confusion is not likely.

DuPont Factor 3: The similarity or dissimilarity of established, likely-to-continue trade channels. Given the nature of the goods offered under the cited mark, namely cartons and boxes made of paperboard, and plastic crates and bins for household use, it can be inferred that the channels of trade differ between the two marks.  Cartons and boxes made of paperboard are not commonly products purchased directly by consumers , unlike plastic crates and bins for household use.

These differences show the trade channel of the applied for mark and the trade channel of the cited mark are distinguishable.  As such, this factor favors a finding of no likelihood of confusion.

DuPont Factor 4: The conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing.  In this case, given the nature of the goods offered under the cited mark, these goods would be purchased with care in view of the intended purchaser.  In the case of the applied for mark, the goods would be considered an impulse buy.  See In re Research and Trading Corp., 230 USPQ 49, 50 (Fed. Cir. 1986). As such, this factor favors Applicant.

DuPont Factor 5: The fame of the prior marks (sales, advertising, length of use). The cited mark was registered on June 11, 2016. The earliest date of use claimed is October 31, 2014. In view of the short amount of time of use and registration of the cited mark, no finding of fame can reasonably be made.

DuPont Factor 6: The number and nature of similar marks in use on similar goods. The Applicant wishes to bring to the attention of the Examiner the following registered trademarks and approved applications which show use of the term MOXIE and MOXY for a number of goods which would fall under the extremely broad category of containers of various materials:

Registration No./ Application No.	Mark	Class	Goods	Owner	Comment
5,219,804	MOXY	16	Containers, namely cartons and boxes made from paperboard	Nippon Dynawave Packaging Co.	Cited registration
87/854,940	MOXIE	20	Plastic file crates, plastic crates for household storage, stacking storage bins for household use	LF, LLC (Applicant)	Trademark application at issue
87/854,952	MOXIE	16	Tall kitchen plastic bags, tall kitchen plastic bags with odor control, tall flex kitchen plastic bags, paper and plastic trash compactor bags; trash bags, trash can liners, debris clean up bags, clear trash bags, lawn and leaf disposal bags, clear lawn and leaf disposal bags, paper towels, toilet paper	LF, LLC (Applicant)	Notice of Allowance issued November 6, 2018
87/979,111	MOXIE	12	Three drawer cart for household use; four drawer cart for household use	LF, LLC (Applicant)	Published for opposition January 15, 2019

These marks share the common element of the term MOXY or MOXIE used in connection with generally, containers.  These above references cannot be considered any less similar than the cited mark and the applied for mark. This factor favors Applicant and a finding of no likelihood of confusion.

DuPont Factor 7: No actual confusion between Applicant’s mark and the cited mark. Applicant filed an intent-to-use application. This factor is neutral.

DuPont Factor 8: No concurrent use between Applicant’s mark and the cited mark.  Applicant filed an intent-to-use application. This factor is neutral.

DuPont Factor 9: The variety of goods on which a mark is or is not used. A search of MOXIE and MOXY on TESS reveals a number of different entities who have registered the terms for a variety of goods and services.  This factor favors Applicant.

DuPont Factor 10: The market interface between Applicant and the owner of the cited mark.  Given the differences in the goods one must conclude that there would be no market interface between Registrant and Applicant.

DuPont Factor 11: The extent to which applicant has a right to exclude others from use of its mark on its goods.  Applicant has established, though a number of approved applications, a significant space in which to use the MOXIE mark unimpeded in the areas in which it has filed applications.       

DuPont Factor 12: The extent of potential confusion, i.e., whether de minimis or substantial.  Given the clear differences in the marks themselves and the narrow scope of protection afforded the term MOXIE or MOXY when used in connection with the goods, the potential for confusion is de minimis.  This factor favors Applicant.

Applicant submits that there is no reasonable likelihood of confusion between Applicant's mark and the cited mark. The trademark laws seek to prevent a likelihood of confusion, not remote possibilities of confusion based on speculation or supposition. See In re Chalet Chocolates, Inc., 212 USPQ 968, 969 (TTAB 1982). A conclusion that a likelihood of confusion exists between Applicant's mark and Registrant's mark would be speculative and not supported by the record.

EVIDENCE
Evidence in the nature of Attachment A is a copy of an article explaining the difference between Cardboard and Paperboard; Attachment B is a copy of an article from ScienceDirect explaining the meaning of Paperboard; Attachment C is a photograph depicting the difference between Paperboard and Cardboard has been attached.
Original PDF file:
evi_168244459-20190116155138857658_._Attachment_A_image2019-01-16-145411.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_168244459-20190116155138857658_._Attachment_B_image2019-01-16-145650.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_168244459-20190116155138857658_._Attachment_C_image2019-01-16-145912.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for Plastic file crates; plastic crates for household storage; stacking storage bins for household use
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Proposed:
Tracked Text Description: Plastic file crates; plastic crates for household storage; stacking storage bins for household useClass 020 for Plastic file crates; plastic crates for household storage;
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

SIGNATURE(S)
Response Signature
Signature: /swgoode/     Date: 01/16/2019
Signatory's Name: Scott W. Goode
Signatory's Position: Attorney of record: DC Bar

Signatory's Phone Number: 704 758 4927

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: 87854940
Internet Transmission Date: Wed Jan 16 16:23:30 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.X.XX-20190116162330778
899-87854940-6203d4e79aeb7e5c75e8bb34c85
187b4a4282a60e13b1e87cf5569a6d6d5eb4f6-N
/A-N/A-20190116155138857658