TEAS Petition to Revive Abandon Applic

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 2194 (Rev 03/2012)

OMB No. 0651-0054 (Exp 12/31/2020)

---

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 2194 (Rev 03/2012)

OMB No. 0651-0054 (Exp 12/31/2020)

Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action

To the Commissioner for Trademarks:

Application serial no. 88017845 CREAM(Standard Characters, see http://uspto.report/TM/88017845/mark.png) has been amended as follows: PETITION Petition Statement
Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application.RESPONSE TO OFFICE ACTION

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

To the Trademark Examiner and/or Commissioner for Trademarks:
This communication is in response to the Office Action dated October 3, 2018 regarding US Application number 88017845 (CREAM). The issues raised therein are addressed below.
The Examining Attorney has refused registration of Applicant's mark under section 2(d) of the Lanham Act on the basis that Applicant's mark, when used in connection with the identified goods in International Classes 032 and 033, are likely to be confused with the following registered marks: (1) U.S. Registration No. 1483750, for CREME in connection with "soft drinks for consumption on and off premises" in Class 032; (2) U.S. Registration No. 2393573, for LA CREMA in connection with "wines" in Class 033; (3) U.S. Registration No. 2881734, for CASK & CREAM in connection with "brandy" in Class 033; and (4) U.S. Registration No. 4450260, CASK & CREAM in connection with "distilled spirits" in Class 033. Additionally, the Examining Attorney cited the following pending applications to Applicant: (1) Application No. 79151197, for CREAM in connection with “clothing, namely, jeans, trousers, coats, jackets, blousons, shirt jackets, skirts, dresses, pants, vests, waistcoats, hats, jumpsuits, jump-dresses, caps, gloves, coveralls, overalls, shirts, blouses, sweaters, sweatshirts, t-shirts, polo-shirts, shorts, bathing suits, underwear, ties, scarves, belts, socks and shawls; footwear; all of the aforesaid for females only” in Class 025 and “ retail services in relation to clothing, namely, jeans, trousers, coats, jackets, blousons, shirt jackets, skirts, dresses, pants, vests, waistcoats, hats, jumpsuits, jump-dresses, caps, gloves, coveralls, overalls, shirts, blouses, sweaters, sweatshirts, t-shirts, polo-shirts, shorts, bathing suits, underwear, ties, scarves, belts, socks and shawls; footwear; all of the aforesaid for females only” in Class 035; (2) Application No. 87041764, for CREAM in connection with “Clothing, namely, belts, gloves, hosiery, jackets, dresses, skirts, jumpers, coats, trousers, shirts, t-shirts, underwear, footwear, headwear, visors, caps, swimsuits, shorts, pants, socks, and hats; knitwear, namely, jackets and tops; swimsuit covers, namely, beach cover-ups” in Class 025; (3) Application No. 87499246, for CREAM ALE in connection with “Beer” in Class 032; (4) Application No. 87511391, for CASK & CREAM in connection with “Alcoholic beverages except beers” in Class 033; and (5) Application No. 87724877 to for CREAM in connection with “Apparel, namely, board shorts, walking shorts, swimwear, surf wear, shirts, t-shirts, sweatshirts, crew necks, hooded sweatshirts, hoodies, fleece tops, and pullovers; hats; headwear” in Class 025. Applicant respectfully requests the refusal based upon the above registrations and application be withdrawn.
The Examining Attorney has also refused registration of Applicant's mark under section 2(e) of the Lanham Act on the basis that Applicant's mark, when used in connection with the identified goods, is merely descriptive. Applicant respectfully requests the refusal be withdrawn as well.
§2(d) – Likelihood of Confusion Refusal
The test for likelihood of confusion under Section 2(d) is a weighted consideration of the Du Pont factors, which include the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; 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; the purchasers of the goods i.e. “impulse” vs. careful, sophisticated purchasing; and the number and nature of similar marks in use on similar goods.  In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). The Examining Attorney states that in this case, the most important factors are the similarity of the marks, the similarity of the goods and services, and the similarity of the channels. Applicant respectfully submits that on review of these factors, there is no likelihood of confusion between applicant and registrant’s marks. Further, other Du Pont factors also weigh against a likelihood of confusion.

Applicant’s Mark is Dissimilar from Registrant’s in its Appearance, Sound, Connotation, and Commercial Impression
In determining likelihood of confusion, marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. DuPont, 476 F.2d at 1361; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); T.M.E.P. §1207.01(b). If the trademarks at issue are not similar as to appearance, sound, connotation, and commercial impression, then no confusion is likely. Kellogg Company v. Pack'em Enterprises, 951 F.2d 330, 21 USPQ 2d 1142 (Fed. Cir. 1991).  The mere fact that two trademarks contain a common element does not in itself create a likelihood of confusion.  This is true even if the trademarks at issue are used in relation to identical goods and services.  For example, the following trademarks with common elements were held not to be confusingly similar despite the fact that the marks are used in relation to the same goods and services:
 
(1) CRISTAL (alcoholic beverage) and CRYSTAL CREEK
 (alcoholic beverage);
(2) WIZZ (garden tool) and GEE WHIZ (garden tool);
(3) BOBBERS (for fish) and CATFISH BOBBERS (restaurant services);
(4) VARGAS (calendars) and VARGA GIRL (calendars); 
PARENTS (publications) and PARENTS DIGEST (publications); and
TAMAYA (wine) and MAYA (wine).
 
Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 4714 U.S.P.Q.2d 59 (Fed. Cir. 1998); J. Wiss & Sons Co. v. Gee Whiz Tool Corp., 364 F.2d 910, 150 U.S.P.Q. 583 (6th Cir. 1966); In re Farm Fresh Catfish Co., 231 U.S.P.Q. 495 (T.T.A.B. 1986); In re Hearst Corp., 982 F.2d 494, 25 U.S.P.Q. 2d (BNA) 1238 (Fed. Cir. 1992); Gruner + Jahr USA Publishing v. Meredith Corp., 991 F. 2d. 1072, 26 U.S.P.Q.2d 1583 (2d Cir. 1993).
While Applicant’s mark and the Cited marks all share the literal “cream” element, they differ greatly in terms of connotation and commercial impression. Differing connotations themselves can be determinative, even where identical words with identical meanings are used. Revlon, Inc. v. Jerrell, Inc., 713 F. Supp. 93, 11 U.S.P.Q. 2d 1612, 1616 (S.D.N.Y. 1989) (No likelihood of confusion because the meaning and connotation of the marks THE NINES and INTO THE NINETIES are not related. THE NINES suggests the number nine, or nine of something in a group. INTO THE NINETIES is a reference to the decade of the 1990's, and more generally the future; Plaintiff's motion for preliminary injunction is denied.); citing Clarks of England, Inc. v. Glen Shoe Company, 465 F. Supp. 375, 379, 209 USPQ 852, 854-55, (S.D.N.Y. 1960) (TREK and STAR TREK for shoes; TREK connotes hiking across the Himalayas; STAR TREK connotes space travel.)
All of the cited marks, both registered and prior-filed, use “cream” in some descriptive sense. The Examiner has attached dictionary definitions of cream indicating its meaning as a color (in reference to Classes 025 and 035), as a food/beverage and a flavor (in reference to Classes 032 and 033), and as a texture (applicable to all). With each of the cited marks, therefore, the connotation of the mark is obvious to the consumer.
Applicant, however, has adopted CREAM as an acronym. For Applicant, CREAM stands for Conscious Renewal Education Agriculture Medicine. Applicant’s CREAM is completely unrelated to any of the descriptive qualities of cream; rather, it is a handy shorthand. It is common for an adopted acronym to be unrelated to its composite terms. Consider RAINN (the Rape Abuse Incest National Network); sexual assault is unrelated to weather; WASP (White Anglo-Saxon Protestant), unrelated to the stinging insect; DINO and RINO (Democrat/Republican In Name Only), unrelated to their namesake animals. Likewise, Applicant’s product has little to do with “cream” as defined by the dictionary. Applicant’s attached evidence includes a detailed list from the Accuracy Project of similar examples. Applicant’s CREAM sends a distinct message to consumers separate from that of other users. Thus, the likelihood of confusion is diminished.
Applicant and Registrant Offer Unrelated Goods
There is no per se rule that goods or services sold in the same field or industry are similar or related for purposes of likelihood of confusion. See Cooper Industries, Inc. v. Repcoparts USA, Inc., 218 USPQ 81, 84 (TTAB 1983); Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993) (reversing likelihood of confusion cancellation of LLOYD’S for barbecued meats based on LLOYD’s for restaurant services). In the present case, the overlapping goods and services are beverages, clothing, and retail services. However, those similarities do not immediately render them related per se. See Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010) (“[A] finding that the goods are similar is not based on whether a general term or overarching relationship can be found to encompass them both.”) (internal citation omitted). Under Edwards, a shared industry or field does not necessarily equate to an identical target market or related services.
Regarding likelihood of confusion for goods in International Class 025 (for which the Examiner has issued an advisory), Applicant believes its apparel differs significantly from that offered by the prior Applicants. As stated, Applicant’s CREAM is an acronym for Conscious Renewal Education Agriculture Medicine. Applicant’s goods are based on supporting these goals; to that end, Applicant’s clothing is created from sustainable materials.
Regarding likelihood of confusion for services in International Class 035 (for which the Examiner has issued an advisory), Applicant lists a wide variety of retail stores, including not just apparel, but bakeries, convenience stores, gift shops, grocery stores, and variety stores. These stores would have cohesive branding and marketing. In contrast, prior-Applicant U.S. Serial No. 79151197, CREAM, intends to offer apparel stores solely featuring women’s clothing. Further, as with its goods in IC 025, Applicant’s services strive to support its goals of environmental friendliness and sustainability.  These principals are important to the demographic which Applicant will be serving and will thus be a defining feature of Applicant’s services; consumers will distinguish between the services based on this fact.
Regarding likelihood of confusion for goods in International Classes 032 and 033, Applicant believes that its beverages differ significantly from those offered by the Registrants and prior Applicants. To begin, Applicant offers a number of goods which do not overlap at all with those in the cited marks, including aerated mineral waters, energy drinks, flavored waters, fruit drinks and juices, mineral water, and water beverages in IC 032; and herb liqueurs, alcoholic cocktails containing milk, and alcoholic fruit beverages in IC 033. The Examiner’s evidence that these goods are sold through the same channels as the overlapping goods is unconvincing for two reasons. First, “A wide variety of products, not only from different manufacturers within an industry but also from diverse industries, have been brought together in the modern supermarket for the convenience of the consumer. The mere existence of such an environment should not foreclose further inquiry into the likelihood of confusion.” See Federated Foods, Inc. v. Ft. Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). Grocery stores and drug stores sell a wide range of products; the mere fact that goods are sold within a single store does not automatically mean that buyers are likely to be confused as to source. See also Hi-Country Foods Corp.v. Hi Country Beef Jerky, 4 USPQ2d 1169 (TTAB 1987) [not all food products are related merely because they are sold in the modern supermarket “with its enormous variety of food, cleaning, paper and other products”]. Secondly, because while the products may be sold at the same location, the relevant question is whether consumers will be confused as to the source of the goods. In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (finding Office had failed to establish that wine and vodka infused with caffeine are related goods because there was no evidence that vodka and wine emanate from a single source under a single mark or that such goods are complementary products that would be bought and used together). In the present case, the only source offering all types of goods is Applicant.
Further, the natural arrangement of liquor and other beverages in a store would prevent confusion. Stores group liquor or other beverages together by type and location of origin for ease of the consumer. Thus, beers in one aisle, wines in another, whiskey in a third, brandy in a fourth, and so on. This type of organization is commonplace in liquor stores and sends a signal to consumers about what products are and are not related and how they might be related, so that consumers can locate their target product with ease. Only consumers who are browsing would even encounter all the cited marks, and, having been inundated by so many other labels on the shelves, are unlikely to make a connection. This is even more true with a specialty store: consumers clearly understand that not all alcohol sold in a liquor store comes from the same source. With the vast number of brands a consumer is confronted with in a single visit to the store, they may not even remember a single brand name from one aisle to the next. The disparity of locations, combined with the visual overload experienced by consumers, should weigh against a likelihood of confusion.

Applicant and Registrant Use Different Trade Channels From One Another in Selling Their Goods
In comparing marks, the relevant application is in context of the marketplace, where confusion of prospective customers would or would not occur. Du Pont at 1360; Burger Chef Systems, Inc. v. Sandwich Chef, Inc., 608 F.2d. 875, 877 (C.C.P.A. 1973). Consideration is given not only to the marks, but the goods and the whole situation as it bears on their distribution in the market. Witco Chemical Co. v. Whitfield Chemical Co., 418 F.2d 1403, 164 USPQ 43 (CCPA 1969). If the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See, e.g.,Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012).
Applicant lists a variety of retail stores among its proposed goods and services. This implies that Applicant’s CREAM-branded goods will be sold at Applicant’s CREAM-branded stores. Thus, as required by Coach Servs., Inc., none of Applicant’s goods would be marketed or sold in a way that would create an impression of being related to the goods of any of the Registrants or of the prior-filed Applicants. By selling its goods exclusively in self-owned and self-managed trade channels, Applicant can ensure that consumers only encounter CREAM goods in a certain environment and thus come to associate Applicant’s mark only with that environment; goods with a similar mark encountered elsewhere will be understood as unrelated. By exercising control over where and when consumers encounter Applicant’s CREAM mark, Applicant significantly decreases any possible likelihood of confusion.

The Market for “CREAM” Marks is Saturated
It is well settled law that when a market is crowded with similar marks, marks using the same and similar names can be registered. Whether a trademark is classified as “strong” or “weak” is an important element in deciding whether a likelihood of confusion exists.  Independent Grocers' Alliance Distributing Co. v. Potter-McCune Co., 404 F.2d 622, 160 U.S.P.Q. 46 (C.C.P.A. 1968). Elements of a trademark may be “weak” if the elements are laudatory, descriptive, or if the elements are in common use by many other sellers in the market. Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400, 167 U.S.P.Q. 529 (C.C.P.A. 1970). If the common element of conflicting trademarks is a word that is “weak”, then this reduces the likelihood of confusion.  Nestle's Milk Products, Inc. v. Baker Importing Co., 182 F.2d 193, 86 U.S.P.Q. 80 (C.C.P.A. 1950).  McCarthy on Trademarks explains that “[m]arks like ACME and NATIONAL, which are in common use by many sellers, are not entitled to the same scope of protection as strong marks....” because in such a crowd, customers will not likely be confused between any two of the crowd and may have learned to carefully pick out one from the other. McCarthy at §11.85-11.86; see also Miss World (UK) LDT. v. Mrs. America Pageants, 856 F.2d 1445, 1449 (9th Cir. 1988) (discussing a "crowded field of marks" and stating: "In such a crowd, customers will not likely be confused between any two of the crowd and may have learned to carefully pick out one from the other.") Third-party use of a term in the marketplace may be offered as evidence of a term’s weakness and dilution with respect to a particular field and weighs in favor of narrowing the scope of its protection against subsequent applications. See Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983); Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). A TESS search returned 1963 live CREAM-formative marks on the Principal register. Not including the marks cited by the Examiner, examples include:


These third-party registrations serve as compelling evidence that while Applicant and Registrants’ marks contain similar elements, individuals viewing Registrants’ marks are likely to be inundated with similar marks. Hence, in context, Registrants’ marks are already extremely weak and diluted such that they create little source identifying significance that could contribute to any likelihood of confusion. In this case, the existence of numerous CREAM-formative marks on the Supplemental Register compounds the point; if those marks do not cause confusion, one more mark will not tip the scale.

The Wide Variety of Goods Weighs Against a Likelihood of Confusion
Du Pont raises the question of “the variety of goods on which a mark is or is not used.” 476 F.2d at 1361. While this factor has received less treatment than others, and is given less weight, it begs consideration in the present case. If a mark is only used on one type of goods, it is less likely that a consumer will believe a different type of good is made by the same business, even if the trademark is similar. In contrast, if the mark is used on a wide variety of goods by a single company, confusion may be more likely, as a consumer will more readily accept that the company has expanded. And in contrast to that, where the mark is used on a wide variety of goods by multiple users, consumers have learned to be discerning and to distinguish among markholders.
As noted above, CREAM-formative marks are prolific, spanning many International Classes to mark a myriad of goods offered by many unrelated companies. The above list of examples excludes numerous marks on the Supplemental Register which must necessarily have been deemed unlikely to cause confusion; Applicant’s mark is no different. Consumers already differentiate between CREAM mark users. Allowing Applicant’s CREAM mark will not change that.

The Potential for Confusion is de minimus
Only when a situation suggests that there is a practical likelihood of such confusion, mistake or deception as would cause damage does the balance tip in favor of the registrant. Witco Chemical, 164 USPQ at 43. (“We are not concerned with mere theoretical possibilities of confusion…or with de minimus situations but with the practicalities of the commercial world”) (emphasis added). Mere speculation cannot provide the basis for a finding of confusion; the standard must be greater than a scintilla of a possibility.
In the present case, the market is saturated with cream-formative marks in use on a large variety of products. Yet, there is no history of confusion among the current Registrants. It is therefore unlikely that an additional market entrant will alter the status quo. Hence, Applicant is unlikely to generate a likelihood of confusion with its mark.

Where a Likelihood of Confusion is not Clear, Publication of the Mark is Proper
Applicant contends that its mark is easily distinguishable from the Cited Marks, and that any minimal similarity among them would not be perceived by the sophisticated consumers each party targets. In these circumstances, the USPTO endorses approving the mark for publication and leaving the issue up to the Opposition procedure. See e.g., In re Protection Controls, Inc., 185 USPQ 692, 694 (TTAB 1975) (“the better approach in this particular situation … is to authorize publication of the mark for opposition.”). Thus, Applicant respectfully requests that the Examining Attorney allow the Mark to proceed to publication so the likelihood of confusion issue, if raised, can be decided through Opposition.

§2(e) – Merely Descriptive Refusal
To be refused registration under 15 U.S.C. §1052(e), a mark must be merely descriptive of the goods and services to which it relates. T.M.E.P. §1209.01(b). The term “merely” is interpreted to mean “only.” In re Quik-Print Copy Shops, Inc., 616 F.2d 523 (C.C.P.A. 1980). Accordingly, a term is considered merely descriptive only if it forthwith conveys an immediate idea of a significant ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. T.M.E.P. §1209.01(b); see also In re MBNA Am. Bank, NA, 340 F.3d 1328 (Fed. Cir. 2003); In re Stereotaxis, Inc., 429 F.3d 1039 (Fed. Cir. 2005). Moreover, for a term to be properly considered merely descriptive, it must not only convey the relevant information immediately, but it must also convey such information with “a degree of particularity.” In re TMS Corp. of the Americas, 200 U.S.P.Q. 57, 59 (T.T.A.B. 1978) (emphasis added).
The Examining Attorney bears the burden of proving that the relevant term is merely descriptive. In re Box Solutions Corp., 79 U.S.P.Q.2d 1953 (T.T.A.B. 2006). Any doubt as to the descriptiveness of the term must be resolved in favor of the Applicant and publication. In re Morton-Norwich Prods., Inc., 209 U.S.P.Q. 791 (T.T.A.B. 1981). Accordingly, the ultimate question is whether the mark “conveys information about a significant characteristic or feature of applicant’s goods with the immediacy and particularity required by the Trademark Act.” In re Aristocrat Techs. Austl. PTY Ltd., Serial No. 76/460,409 (T.T.A.B. Aug. 9, 2006); see also In re Hutchinson Tech. Inc., 852 F.2d 552 (Fed. Cir. 1988).

CREAM Is Not Merely Descriptive
A term is merely descriptive within the meaning of Section 2(e)(1) if it immediately conveys knowledge of a significant quality, characteristic, function, feature or purpose of the goods with which it is used or intended to be used. In re Gyulay, 3 USPQ2d 1009,1011 (Fed. Cir. 1987). In considering if a mark is merely descriptive, the Examining Attorney is to consider what the mark would mean to the potential consumer when applied to applicant's goods. When the question of registrability is a “close case, any doubt on the matter should be resolved in applicant’s favor.” In re Waverly Inc., 27 U.S.P.Q.2d 1620, 1624 (T.T.A.B. 1993).
Applicant’s mark CREAM does not identify a quality, characteristic, function, feature or purpose of its goods. The Examiner’s evidence assigns the word cream multiple meanings, including a yellow-white color, a milk by-product, or items containing, flavored, or textured like that product. Applicant does not ascribe any of these meanings to its mark; instead, as previously noted CREAM is an acronym, the letters standing for Conscious Renewal Education Agriculture Medicine. Applicant’s acronym, therefore, does not describe any part of its goods.
Given the court in In re Colonial Stores, 55 C.C.P.A. 1049, 1051-1052 (C.C.P.A. 1968) concluded that the main question in determining descriptiveness is whether someone who knows what the goods or services are will understand the mark to convey information about those services, the mark CREAM is not descriptive.

CREAM Is, At a Minimum, Suggestive
A suggestive term is one which “suggests rather than describes, some particular characteristic of the goods or services to which it applies and requires the consumer to exercise the imagination in order to draw a conclusion as to the nature of goods and services.” Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 791 (C.A. La. 1983). The court applies a test to determine if a mark is suggestive by seeing if the mark requires consumers to use imagination to link the mark to the product or service in question. If the mark requires imagination or creativity to apply to the product, it is suggestive, but if the word conveys information about the product, it is descriptive. Id.
A mark is arbitrary when it is comprised of a common word put to use in an unfamiliar or bizarre way. Abercrombie Fitch Co. v. Hunting World, Inc., 537 F.2d 4, footnote 12 (2d Cir. 1976). Nothing about the word CREAM describes or suggests Applicant’s products; the word is thus being used in an unfamiliar way. Further, Applicant’s CREAM is an acronym. Historically, acronyms are protectable as marks so long as the acronym is unrelated to the terms comprising it. CREAM stands for Conscious Renewal Education Agriculture Medicine.  As these concepts are core to Applicant, it is possible they could be considered descriptive, although a leap of imagination is still required to connect them to any of Applicant’s goods. Nevertheless, “that the letters of the acronym stand for words that are themselves descriptive does not mean that the acronym is likewise descriptive.” New York State Elec. Gas v. U.S. Gas Elec., 697 F.Supp 2d 415, 435 (W.D.N.Y. 2010). In connection with Applicant’s goods, CREAM neither immediately conveys the ideas of sustainability to which it refers, nor does it automatically suggest a dairy bi-product of the same name. At a minimum it requires “some operation of the imagination…to equate the initials with the product.” Anheuser-Busch Inc., v. Stroh Brewery Co., 750 F.2d 631, 641-42 (8th Cir. 1984), though only the most creative of consumers could make this leap unassisted. The vast chasm between the dictionary definition for CREAM, the words comprising Applicant’s acronym CREAM, and the goods and services offered by Applicant indicate that Applicant’s mark is suggestive if not arbitrary.
CREAM Does Not Convey Information With Immediacy Or Particularity
Although the Examiner attached and discussed dictionary definitions of the term “cream,” none of these describe salient features of Applicant’s goods. Any descriptive overlap is merely incidental, and does not meet the level of significance required by In re Gyulay, 3 USPQ2d 1009,1011 (Fed. Cir. 1987). As noted, CREAM is an acronym: Conscious Renewal Education Agriculture Medicine. Consequently, when faced with Applicant’s CREAM mark and considering the goods identified, the average consumer would not immediately understand anything, much less with particularity or about any significant feature or quality of the goods. Therefore, the mark is not merely descriptive.
The Trademark Trial and Appeal Board has repeatedly found marks to be suggestive if their relevant meaning is not sufficiently immediate. For example, in the case of In re Intermedia Adver. Group, Inc., (T.T.A.B. March 19, 2004), the Board fount the mark REWARDTV to be not merely descriptive for “business marketing and consulting services; conducting business research and surveys, promoting the sale of goods and services of others through promotional contests on the Internet; and providing a website which features advertisements for the goods and services of others on the Internet” inter alia, because the mark lacked the “immediacy required…to be considered merely descriptive.” Similarly, the Board found the mark PROFESSIONAL HELP DESK not merely descriptive for “computer software and instructional manuals, sold together as a unit, for the management, tracking and resolution of support inquiries and requests for help regarding computer technical issues” due to lack of immediacy. In re CA Think, Inc., (T.T.A.B. Aug. 31, 1999); see also In re Commerce Bancorp, Inc., (T.T.A.B. Dec. 20, 2005). In this case, the mark CREAM does not convey information about Applicant’s goods – clothing, beverages, smoking products, or retail stores – with any immediacy or particularity.

CREAM Is No Less Descriptive Than Other Third Party Registrants
The United States Patent and Trademark Office has registered many marks on the Principal Register that also would be considered as descriptive of the product’s intended use. The PTO granted registration on the Principal Register in the following cases, and thus, did not find that the marks were descriptive of the services merely because the mark described the particular service offered. In addition to the marks cited against Applicant in the §2(d) refusal, which are arguably equally descriptive of their goods, other examples of such registrations include:


Applicant contends that these prior registrations are indistinguishable from, if not more descriptive, than the present case. In particular, U.S. Registration No. 4182506, THE CREAM, lists creams in the identification of goods and services. “Cream” is not just merely descriptive of the product; it is the product. “A would-be proprietor’s use of the words in the mark to refer to the kind of services it and its competitors provide is powerful evidence that the words in the putative mark are being used generically.” Welding Serv. v. Forman, 509 F.3d 1351, 1359 (11th Cir. 2007); see Retail Servs. Inc. v. Freebies Publ’g, 364 F.3d 535, 545 (4th Cir.2004). Similarly, U.S. Registration No. 3282893, PURE CREAM, lists non-medicated skin care preparations. These are typically gels, lotions, and creams; “pure” is a descriptive term about the quality of the product. The TTAB has recognized the significance of inconsistent treatment of trademarks and their registrability. In re Waverly Inc., 27 USPQ2d 1620, 1623 (T.T.A.B. 1923). Therefore, Applicant respectfully requests fair and consistent treatment in the instant case.

Doubt Is Resolved In The Favor Of The Applicant
Applicant acknowledges that there is a thin line of distinction between a suggestive and a merely descriptive term, and it has been the longstanding practice of the USPTO that, “when the question of registrability is a “close case, any doubt on the matter should be resolved in applicant’s favor.” In re Waverly Inc., 27 U.S.P.Q.2d 1620, 1624 (T.T.A.B. 1993), See In re The Gracious Lady Serv., Inc., 175 U.S.P.Q.  380 (T.T.A.B. 1972). Even assuming that there were doubts as to whether CREAM should be found merely descriptive of Applicant’s goods, Board precedent and PTO practice requires that doubt be resolved in the Applicant’s favor and the Subject Application approved for publication. In re Box Solutions Corp., 79 U.S.P.Q.2d 1953 (T.T.A.B. 2006).
Ultimately, the question is not whether Applicant’s mark has any meaning with respect to the identified goods, but instead whether the mark conveys information about a significant characteristic or feature of Applicant’s goods with immediacy and particularity. Applicant respectfully submits that any meaning imparted about Applicant’s goods is not sufficiently immediate or particular as to render Applicant’s Mark merely descriptive. To the extent that there is any doubt as to the inherent distinctiveness of Applicant’s CREAM mark, this doubt should be resolved in Applicant’s favor and the Subject Application should proceed to publication.
Conclusion
Applicant is attempting to enter a saturated market with highly discerning consumers. Lack of confusion in the market presently indicates that Applicant will not upset the status quo. For these and other reasons enumerated above, there is no likelihood of confusion between the cited marks and Applicant’s mark. Applicant respectfully requests that the §2d refusal to its application be withdrawn and that the application proceed to publication.
Additionally, CREAM is not merely descriptive of Applicant’s goods. It does not define a significant quality or feature of them, and does not identify anything about the goods to consumers with immediacy or particularity. Likewise, the words comprising the CREAM acronym are not descriptive of Applicant’s goods or services. Applicant respectfully requests that the §2e refusal to its application be withdrawn and that the application proceed to publication.



EVIDENCE

Original PDF file:
evi_722146314-20190524134022863709_._rainn_acronym.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_722146314-20190524134022863709_._creamcenter.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_722146314-20190524134022863709_._creamking.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_722146314-20190524134022863709_._creammark1.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_722146314-20190524134022863709_._creammark2.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_722146314-20190524134022863709_._creammark3.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_722146314-20190524134022863709_._creammark4.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_722146314-20190524134022863709_._creammark5.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_722146314-20190524134022863709_._creammark6.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_722146314-20190524134022863709_._creammark7.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_722146314-20190524134022863709_._creammark8.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

FEE(S)
Fee(s) in the amount of $100 is being submitted.

SIGNATURE(S)

Signature: /polliegautsch/      Date: 05/24/2019
Signatory's Name: Pollie Gautsch
Signatory's Position: Attorney of Record
Signatory's Phone Number: 858-344-5905


Response Signature
Signature: /polliegautsch/     Date: 05/24/2019
Signatory's Name: Pollie Gautsch
Signatory's Position: Attorney of Record, CA bar member

Signatory's Phone Number: 858-344-5905

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/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 applicant 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/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.

        
RAM Sale Number: 88017845
RAM Accounting Date: 05/28/2019
        
Serial Number: 88017845
Internet Transmission Date: Fri May 24 13:50:15 EDT 2019
TEAS Stamp: USPTO/POA-XX.XXX.XX.XX-20190524135015667
120-88017845-620e7663f2be31f2b73ca2e495a
1d2ada8bb466b50654c7bc06d55073e941e-CC-2
393-20190524134022863709