| 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 | 87946732 |
| LAW OFFICE ASSIGNED | LAW OFFICE 106 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/87946732/mark.png |
| LITERAL ELEMENT | BTS |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
I. Amendment to Identification of Goods and Services Applicant hereby amends the identification of goods to the following Class 25: “Clothing, namely, concert sportswear jerseys and hoodies featuring a musical band and sold at concert venues to concert attendees.” II. Likelihood of Confusion In the Office Action dated September 29, 2018, the Examining Attorney refused registration of the mark BTS (AND DESIGN) under Section 2(d) of the Trademark Act based on a likelihood of confusion with the mark in U.S. Registration No. 3684289 for BTS for “lingerie” in Class 25 (the “Cited Registration” or “Cited Mark”). In considering whether there is a likelihood of confusion, a number of factors are relevant, including the similarity of the marks, similarity of the goods or services, the similarity of the trade channels, the strength of the marks, and other factors. As support for the refusal to register Applicant’s mark, the Examining Attorney states that the marks are similar because they share the same letter abbreviation, “BTS.” However, for the reasons discussed below, Applicant respectfully requests that the Examining Attorney withdraw the refusal to registration and allow the subject application to register. A. Applicant’s Goods, as Amended, are Sufficiently Unrelated to the Goods Covered by the Cited Registration Such That Confusion Would Not be Likely Applicant’s amendment to the identification of goods obviates any potential likelihood of confusion. The identification of goods has been narrowly tailored such that the applied-for goods are no longer related, similar, or overlapping with the goods covered by the Cited Registration. Moreover, Applicant’s amendment makes clear that the applied-for goods are intended for different prospective consumers (concert attendees vs. lingerie shoppers) and travel in different channels of trade (concert venues vs. lingerie boutiques), thereby further ensuring that the applied-for goods are no longer similar or related to the goods covered by the Cited Registration. The respective goods of the parties are clearly identified as specific and distinctive goods that are intended for separate and different intended uses by clearly distinct relevant prospective consumers. In light of this amendment, Applicant respectfully requests that the refusal to register be withdrawn. B. Applicant’s Mark is Sufficiently Distinguishable from the Cited Mark Due to Differences in Sight and Commercial Impression. Under the Lanham Act, a refusal to register based on a likelihood of confusion requires that such confusion as to the source of the goods or services is not merely possible, but likely. A mere possibility of confusion is an insufficient basis for rejection under Section 2(d). In re Massey-Ferguson Inc., 222 U.S.P.Q. 367 (T.T.A.B. 1983). Moreover, mere similarity or even identity between two marks can never alone be decisive of likelihood of confusion. In Jacobs v. Int'l Multifoods Corp., the Court stated that "[t]o establish likelihood of confusion a party must show something more than that similar or even identical marks are used…" 212 U.S.P.Q. 641, 642 (C.C.P.A. 1982) (emphasis added) (footnote omitted). See also Merritt Foods Co. v. Americana Submarine, 209 U.S.P.Q. 591, 599 (T.T.A.B. 1980); In re Ferrero, 178 U.S.P.Q. 167, 168 (C.C.P.A. 1973) (that the goods "might both emanate from a single source [is not sufficient to establish that the marks are] likely to cause confusion as to the source, or to cause mistake, or to deceive"). Furthermore, in analyzing the similarity of the marks, it is not proper to dissect the marks of the parties or to discard or ignore all other non-similar elements. The existence of even identical elements does not necessarily give rise to a likelihood of confusion. Consideration must be given to the effect of the entirety of the marks, including the non-common matter, the paramount consideration being the overall commercial impression created by each mark viewed in its entirety. New England Fish Co. v. Hervin Co., 511 F.2d 562, 184 U.S.P.Q. 817 (C.C.P.A. 1975). When Applicant's mark is viewed in its entirety, the mark significantly differs from the Cited Mark in appearance and commercial impression, such that confusion would not be likely. In stating that the marks are similar merely because they share the letters “BTS,” the Examining Attorney has failed to account for the marks’ respective differences, namely the applied-for mark’s highly distinctive design element. See Parfums de Coeur Ltd. v. Lazarus, 83 U.S.P.Q. 2d 1012 (T.T.A.B. 2007) (finding no likelihood of confusion between BM BODYMAN and design and BOD and BOD MAN); Steve's Ice Cream v. Steve's Famous Hot Dogs, 3 U.S.P.Q. 2d 1477, 1478-79 (T.T.A.B. 1987) (no likelihood of confusion between STEVE’S and design for restaurant services and STEVE'S (in typed characters) for ice cream). This variance between the respective marks distinguishes the marks visually such that they convey separate and unique commercial impressions. Applicant's position is further supported by several analogous cases featuring other marks sharing common terms. For example, in Colgate-Palmolive Co. v. Carter-Wallace, Inc., 167 U.S.P.Q. 529 (C.C.P.A. 1970) the mark "PEAK PERIOD" for personal deodorants was found not to be confusingly similar to the mark "PEAK" for dentifrices. The Court specifically noted that the determination of likelihood of confusion "[m]ust arise from a consideration of the respective marks in their entireties." The Court stated: “The difference in appearance and sound of the marks in issue is too obvious to render detailed discussion necessary. In their entireties neither look nor sound alike.” Id. at 530; see also Gruner + Jahr USA Publishing v. Meredith Corp., 26 U.S.P.Q. 2d 1583 (2d Cir. 1993) ("PARENTS" and "PARENTS DIGEST" for the same type of magazines determined to be not confusingly similar); In re Ferrero, 178 U.S.P.Q. 167 (C.C.P.A. 1973) ("TIC TAC" for candy not held to be confusingly similar to "TIC TAC DOE" for ice cream); In re Hearst Corp., 25 U.S.P.Q. 2d 1238 (Fed. Cir. 1992) ("VARGAS" and "VARGA GIRL," both for calendars, were sufficiently different so that there was no likelihood of confusion); Paco Sport Ltd. v Paco Rabanne Parfums, 54 U.S.P.Q. 2d 1205 (S.D.N.Y. 2000) ("PACO" was not confusingly similar to "PACO RABANNE"). C. Conclusion In view of the foregoing, there is no likelihood of confusion between the concurrent use of Applicant’s mark and the Registrant’s mark. Accordingly, Applicant respectfully requests that the Examining Attorney withdraw the refusal to register under Section 2(d) of the Trademark Act and approve the application for publication. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 025 |
| DESCRIPTION | |
| Clothing, namely, slacks, leather pants, waterproof pants, shorts, footwear, sportswear in the form of jerseys, climbing trousers, golf trousers, pants, blue jeans, jump suits, knit pants, under garments, socks and stockings, caps and hats, belts, rain wear, panties, shorts and briefs | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 025 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Clothing, namely, concert sportswear jerseys and hoodies featuring a musical band and sold at concert venues to concert attendees | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Richard Y. Kim/ |
| SIGNATORY'S NAME | Richard Y. Kim |
| SIGNATORY'S POSITION | Attorney of Record - D.C. Bar Member |
| SIGNATORY'S PHONE NUMBER | 202-756-8000 |
| DATE SIGNED | 03/19/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Mar 19 14:10:38 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20190319141038842047-879 46732-620716250da25d15895 64e72cb93e8734fac70131e2e 75eba2e1f9ff38549d-N/A-N/ A-20190319113258332494 |
| 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) |
I. Amendment to Identification of Goods and Services
Applicant hereby amends the identification of goods to the following
Class 25: “Clothing, namely, concert sportswear jerseys and hoodies featuring a musical band and sold at concert venues to concert attendees.”
II. Likelihood of Confusion
In the Office Action dated September 29, 2018, the Examining Attorney refused registration of the mark BTS (AND DESIGN) under Section 2(d) of the Trademark Act based on a likelihood of confusion with the mark in U.S. Registration No. 3684289 for BTS for “lingerie” in Class 25 (the “Cited Registration” or “Cited Mark”).
In considering whether there is a likelihood of confusion, a number of factors are relevant, including the similarity of the marks, similarity of the goods or services, the similarity of the trade channels, the strength of the marks, and other factors. As support for the refusal to register Applicant’s mark, the Examining Attorney states that the marks are similar because they share the same letter abbreviation, “BTS.” However, for the reasons discussed below, Applicant respectfully requests that the Examining Attorney withdraw the refusal to registration and allow the subject application to register.
A. Applicant’s Goods, as Amended, are Sufficiently Unrelated to the Goods Covered by the Cited Registration Such That Confusion Would Not be Likely
Applicant’s amendment to the identification of goods obviates any potential likelihood of confusion. The identification of goods has been narrowly tailored such that the applied-for goods are no longer related, similar, or overlapping with the goods covered by the Cited Registration. Moreover, Applicant’s amendment makes clear that the applied-for goods are intended for different prospective consumers (concert attendees vs. lingerie shoppers) and travel in different channels of trade (concert venues vs. lingerie boutiques), thereby further ensuring that the applied-for goods are no longer similar or related to the goods covered by the Cited Registration. The respective goods of the parties are clearly identified as specific and distinctive goods that are intended for separate and different intended uses by clearly distinct relevant prospective consumers. In light of this amendment, Applicant respectfully requests that the refusal to register be withdrawn.
B. Applicant’s Mark is Sufficiently Distinguishable from the Cited Mark Due to Differences in Sight and Commercial Impression.
Under the Lanham Act, a refusal to register based on a likelihood of confusion requires that such confusion as to the source of the goods or services is not merely possible, but likely. A mere possibility of confusion is an insufficient basis for rejection under Section 2(d). In re Massey-Ferguson Inc., 222 U.S.P.Q. 367 (T.T.A.B. 1983). Moreover, mere similarity or even identity between two marks can never alone be decisive of likelihood of confusion. In Jacobs v. Int'l Multifoods Corp., the Court stated that "[t]o establish likelihood of confusion a party must show something more than that similar or even identical marks are used…" 212 U.S.P.Q. 641, 642 (C.C.P.A. 1982) (emphasis added) (footnote omitted). See also Merritt Foods Co. v. Americana Submarine, 209 U.S.P.Q. 591, 599 (T.T.A.B. 1980); In re Ferrero, 178 U.S.P.Q. 167, 168 (C.C.P.A. 1973) (that the goods "might both emanate from a single source [is not sufficient to establish that the marks are] likely to cause confusion as to the source, or to cause mistake, or to deceive").
Furthermore, in analyzing the similarity of the marks, it is not proper to dissect the marks of the parties or to discard or ignore all other non-similar elements. The existence of even identical elements does not necessarily give rise to a likelihood of confusion. Consideration must be given to the effect of the entirety of the marks, including the non-common matter, the paramount consideration being the overall commercial impression created by each mark viewed in its entirety. New England Fish Co. v. Hervin Co., 511 F.2d 562, 184 U.S.P.Q. 817 (C.C.P.A. 1975).
When Applicant's mark is viewed in its entirety, the mark significantly differs from the Cited Mark in appearance and commercial impression, such that confusion would not be likely. In stating that the marks are similar merely because they share the letters “BTS,” the Examining Attorney has failed to account for the marks’ respective differences, namely the applied-for mark’s highly distinctive design element. See Parfums de Coeur Ltd. v. Lazarus, 83 U.S.P.Q. 2d 1012 (T.T.A.B. 2007) (finding no likelihood of confusion between BM BODYMAN and design and BOD and BOD MAN); Steve's Ice Cream v. Steve's Famous Hot Dogs, 3 U.S.P.Q. 2d 1477, 1478-79 (T.T.A.B. 1987) (no likelihood of confusion between STEVE’S and design for restaurant services and STEVE'S (in typed characters) for ice cream). This variance between the respective marks distinguishes the marks visually such that they convey separate and unique commercial impressions.
Applicant's position is further supported by several analogous cases featuring other marks sharing common terms. For example, in Colgate-Palmolive Co. v. Carter-Wallace, Inc., 167 U.S.P.Q. 529 (C.C.P.A. 1970) the mark "PEAK PERIOD" for personal deodorants was found not to be confusingly similar to the mark "PEAK" for dentifrices. The Court specifically noted that the determination of likelihood of confusion "[m]ust arise from a consideration of the respective marks in their entireties." The Court stated: “The difference in appearance and sound of the marks in issue is too obvious to render detailed discussion necessary. In their entireties neither look nor sound alike.” Id. at 530; see also Gruner + Jahr USA Publishing v. Meredith Corp., 26 U.S.P.Q. 2d 1583 (2d Cir. 1993) ("PARENTS" and "PARENTS DIGEST" for the same type of magazines determined to be not confusingly similar); In re Ferrero, 178 U.S.P.Q. 167 (C.C.P.A. 1973) ("TIC TAC" for candy not held to be confusingly similar to "TIC TAC DOE" for ice cream); In re Hearst Corp., 25 U.S.P.Q. 2d 1238 (Fed. Cir. 1992) ("VARGAS" and "VARGA GIRL," both for calendars, were sufficiently different so that there was no likelihood of confusion); Paco Sport Ltd. v Paco Rabanne Parfums, 54 U.S.P.Q. 2d 1205 (S.D.N.Y. 2000) ("PACO" was not confusingly similar to "PACO RABANNE").
C. Conclusion
In view of the foregoing, there is no likelihood of confusion between the concurrent use of Applicant’s mark and the Registrant’s mark. Accordingly, Applicant respectfully requests that the Examining Attorney withdraw the refusal to register under Section 2(d) of the Trademark Act and approve the application for publication.