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. 87883302 FREEDOM(Standard Characters, see http://uspto.report/TM/87883302/mark.png) has been amended as follows:

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

Response for Serial No. 87883302 FREEDOM

 

Section 2 (d) Likelihood of Confusion

 

The Examiner has refused registration of the applied-for mark because of a likelihood of confusion with the mark in U.S. Registration No. 4907872.

 

1. Comparison of the Marks

 

The Examiner alleges that the marks are similar since they “share the common phonetically equivalent terms FREEDOM.  However, Applicant believes that the marks are distinguishable for the following reasons.

 

Sight, Sound and Meaning

 

It is well-settled that marks are to be considered in their entirety and as they appear in the marketplace.  Specifically, “[c]onflicting composite marks are to be compared by looking at them as a whole rather than breaking the marks up into their component parts for comparison.” J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Section 23:414^th Ed. (2009) (citing Estate of R.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545-46, 40 S. Ct. 414, 64 L. Ed. 705 (1920)).  Although the predominate part of the marks is FREEDOM, the cited mark contains additional terms that significantly alter the appearance and commercial impression of the mark.  FREEDOM MUNITIONS is likely to be interpreted as a company that manufactures firearms, not the goods themselves. 

 

 

2. The Marks Have Co-Existed for almost 3 Years With No Known Confusion

According to the Registrant’s Certificate of Registration, Registrant’s FREEDOM MUNITIONS mark was allegedly first used in commerce in connection with the registered goods and services on February 12, 2011.  Applicant’s FREEDOM mark has been used in commerce since at least as early as May of 2016 and has been used continuously in commerce, in connection with Applicant’s goods and services since then.  Applicant states that there has been no evidence of any confusion between its FREEDOM mark and the cited marks among relevant persons or the consuming public although applicant’s and registrants’ marks have co-existed for almost 3 years.  If confusion were to exist or to have existed in the past, the Applicant would be aware of such instances, and there is none.  Thus, while the marks may appear arguably similar in the abstract, in actual fact there is no basis for a determination that confusion is likely given the reality that there has been no confusion in the marketplace.  The question of confusion is related not to the nature of the mark, but to its effect in the marketplace: the only relevant application is made in the marketplace.  Application of E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (1973).   Some courts place great weight on the lack of actual confusion in the past as evidence of no likelihood of confusion in the future.  See Lever Bros. Co. v. American Bakeries Co., 693 F.2d 251, 216 U.S.P.Q. 177 (2nd Cir. 1982); Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 212 U.S.P.Q. 246 (1st Cir. 1981); Barre-National, Inc. v. Barr Laboratories, Inc., 773 F. Supp 735, 21 U.S.P.Q.2d 1755 (D.N.J. 1991) (absence of actual confusion for seventeen years between BARR and BARRE "weighs heavily against a finding of likelihood of confusion");

 

3.  FREEDOM Marks are Weak and Have a Narrow Scope of Protection

 

Applicant’s proposed mark and the cited mark are particularly distinguishable, one from another, because a number of marks containing the term FREEDOM have been allowed to co-exist on the Principal Register at the U.S. Patent and Trademark Office (“PTO”) for related goods and services.  Consequently, it appears as though the PTO has previously determined that FREEDOM is dilute in connection with the present goods and services.  The fact that the FREEDOM term is repeatedly used in connection with related goods and services indicates that marks that share it are entitled only to a narrow scope of protection.  "Determining that a mark is weak means that consumer confusion has been found unlikely because the mark’s components are so widely used that the public can easily distinguish slight differences in the marks, even if the goods are related."  General Mill, Inc. v. Kellogg Co., 824 F.2d 622, 3 U.S.P.Q.2d 1442 (8th cir. 1987).  As expressed by the Court of Customs and Patent Appeals:

 

It seems both logical and obvious to us that where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owners of strong trademarks.  Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights.  The essence of all we have said is that in the former case there is not the possibility of confusion that exists in the latter case.

 

Sure-Fit Prods. Co. v. Saltzson Drapery Co., 254 F.2d 158, 160, 117 U.S.P.Q. 295, 297 (C.C.P.A. 1958) (SURE-FIT and RITE-FIT not confusingly similar).

 

A review of the current registry clearly supports the claim that the term FREEDOM is dilute as many registrations and/or applications have registered or been approved to register despite sharing FREEDOM as a dominant term and in connation with related goods/services.  Please see the following list of registrations/applications employing the FREEDOM term:   

 

Trademark	Goods/Services (in part)	Owner	Status
FEED YOUR FREEDOM	Firearms in IC 13	ARES Defense Systems, Inc.	Registered
PHILADELPHIA FREEDOM	Fireworks in IC 13	American Promotional Events, Inc.	Registered
FREEDOM GUNCO.	Firearms in IC 13	Norsworthy, Bradley David DBA Freedom GunCo. Bradley David Norsworthy	Registered
FAN OF FREEDOM	Fireworks in IC 13	American Promotional Events, Inc.	Registered
FREEDOM FLAG	Component parts for guns; Muzzle brakes that screw onto a rifle barrel in IC 13	Freedom Flag Products	Registered
FORGED IN FREEDOM	Component parts for guns in IC 13	LRB or Long Island, Inc.	Registered
DON'T TREAD ON US THE FREEDOM RIFLE	Firearms in IC 13	Zanna, Gianluca	Registered
LIGHTS OF FREEDOM	Fireworks in IC 13	American Promotional Events, Inc.	Registered
DEFENDING YOUR FREEDOM, DEFENDING YOUR FAMILY.	Firearms in IC 13	Daniel Defense, Inc.	Registered
FREEDOM STARTS HERE	Ammunition in IC 13	Howell Munitions & Technology, Inc.	Registered
FREEDOM MUNITIONS	Ammunition in IC 13	Howell Munitions & Technology, Inc.	Registered
NATION OF FREEDOM	Fireworks in IC 13	American Promotional Events, Inc.	Registered
MANUFACTURING FREEDOM	Firearms in IC 13	Daniel Defense, Inc.	Registered
DEFENDERS OF FREEDOM	Firearms in IC 13	AHL, Inc. DBA America Remembers	Registered
LET FREEDOM RINGS	Fireworks in IC 13	PHANTOM I.P., LLC	Registered
FREEDOM FOREVER	Firearms in IC 13	AHL, Inc. DBA America Remembers	Registered
ENDURING FREEDOM	Fireworks in IC 13	American Promotional Events, Inc.	Registered
AMERICAN FREEDOM TRIBUTE	Firearms in IC 13	AHL, Inc. DBA America Remembers	Registered
FREEDOM FIREWORKS	Fireworks in IC 13	American Promotional Events, Inc.	Registered
FA FREEDOM ARMS	guns, holsters for guns, ammunition boxes in IC 13	Freedom Arms, Inc.	Registered
FREEDOM FIREWORKS	Fireworks in IC 13	American Promotional Events, Inc.	Registered

As illustrated in the chart above, the Trademark Office has allowed many FREEDOM related marks to coexist in International Class 13 for many years.

 

CONCLUSION

The two-part test required to determine that there exists a likelihood of confusion between marks, namely, a comparison of the marks themselves for similarities has not been satisfied.  This is because the marks of the parties differ substantially, the marks have co-existed for almost 3 years with no known instances of confusion, and the FREEDOM term is weak and only afforded a narrow scope of protection.  For these reasons, Applicant respectfully states that that there is no likelihood of confusion between its mark and the marks in the cited registrations.  Applicant states that its application is now in order and asks that it be passed on to publication.        

 

Applicant's attorney has provided the below contact information in the event that the Examiner has additional questions.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 013 for Firearms
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/00/2016 and first used in commerce at least as early as 05/00/2016 , and is now in use in such commerce.

Proposed: Class 013 for Firearms
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/00/2016 and first used in commerce at least as early as 05/00/2016 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 013 . The specimen(s) submitted consists of A firearm with the mark thereon .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Anthony J DoVale/      Date: 02/15/2019
Signatory's Name: Anthony J. DoVale
Signatory's Position: Attorney of Record (GA Bar 227520)
Signatory's Phone Number: 6787431125


Response Signature
Signature: /Anthony J DoVale/     Date: 02/15/2019
Signatory's Name: Anthony J DoVale
Signatory's Position: Attorney of Record (GA Bar 227520)

Signatory's Phone Number: 678-743-1125

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: 87883302
Internet Transmission Date: Fri Feb 15 10:12:23 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20190215101223499
589-87883302-6209e933f78139ae0b450397d7a
d7b3eaa2d0d57bd627c63934111398215c8e8-N/
A-N/A-20190215100743266136