| 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 09/30/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88084980 |
| LAW OFFICE ASSIGNED | LAW OFFICE 128 |
| MARK SECTION | |
| MARK | mark |
| LITERAL ELEMENT | WINFORD |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
The Examining Attorney has raise objections to several Classes of goods, alleging a likelihood of confusion with the mark WYNFORD covering "Socks; Lingerie; Hosiery; Tee-shirts; Polo shirts; Undershirts; Underpants" Applicant disagrees that registration of the mark for those goods is confusingly similar to Applicant's WINFORD mark, specifically: Class 3: Cosmetics; Non-medicated toiletry preparations; Perfume; Non-medicated skin care creams and lotions Class 18: Backpacks; Tote bags Class 25: Bottoms as clothing, Hats; Jackets, and Tops as clothing, all of the foregoing specifically excluding underwear and hosiery, as herein amended With regard to the Class 3 goods, Applicant strongly believes that the marks are easily distinguishable. The registrant is Wynford Hosiery, and as its name applies its goods are limited to those types of goods, or those that are closely related. The manufacture of cosmetics and toiletries is a completely different manufacturing process. Hosiery and lingerie are made in garment type factories, and it is not that usual for hosiery companies to also be in the business of cosmetics. Well known brand names such as Jockey and Hanes are widely known for their underwear and hosiery goods, but they have not registered or have current applications for their marks for goods in International Class 3. Class 3 goods are not an expected area of expansion. Any company can expand into any area of use, but where expansion is not likely, the likelihood of confusion is lessened. Consumers do not immediately associate a good in Class 3 with a hosiery and underwear company's mark. This is especially true in the current comparison, because the cited mark WYNFORD is not well known, and it is spelled differently than the cited mark. With regard to Class 18 goods, Applicant also believes that the marks are easily distinguishable when use on Applicants' goods. Applicant's mark is spelled differently, and backpacks and tote bags are not similar to the goods of the cited registration. They are not apparel goods, and the channels of trade and the consumers for these types of goods are much different. Class 18 goods are not a logical or expected area of expansion are possible, but not likely, given the applicant, as is apparent from its name, a hosiery manufacturer. Further, the spelling alters the appearance of the marks, further lessening any potential for conflict. With regard to the Class 25 goods, as herein amended, the differences in the goods, as amended, is obvious. Applicant's goods are marks that are meant to be worn on the outside, not like the goods of the cited registration, such as socks and underwear, which are meant to be worn underneath clothing. Further, the spelling of the marks are different - WINFORD vs. WYNFORD, which also alters the overall appearance and commercial impressions of the marks. Because of these differences, there is little potential for any confusion as to source of sponsorship of the goods sold under the mark. Therefore, approval of the application is requested. |
|
| CORRESPONDENCE INFORMATION (current) | |
| NAME | Jill Anderfuren |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | USDocket@lewisbrisbois.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | Toni.Espinoza@lewisbrisbois.com |
| DOCKET/REFERENCE NUMBER | 39385-55 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Jill Anderfuren |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | USDocket@lewisbrisbois.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | Toni.Espinoza@lewisbrisbois.com |
| DOCKET/REFERENCE NUMBER | 39385-55 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /ja/ |
| SIGNATORY'S NAME | Jill Anderfuren |
| SIGNATORY'S POSITION | Attorney of Record, IL Bar Member |
| SIGNATORY'S PHONE NUMBER | 13123451718 |
| DATE SIGNED | 10/20/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Oct 20 22:16:10 ET 2020 |
| TEAS STAMP | USPTO/ROA-X.XX.XXX.XX-202 01020221610623775-8808498 0-7502e49828c76715bce8731 ad8ae35e32c45dbf15750df1e 84f62281c8f1bba485-N/A-N/ A-20201020153839025545 |
| 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 09/30/2020) |
The Examining Attorney has raise objections to several Classes of goods, alleging a likelihood of confusion with the mark WYNFORD covering "Socks; Lingerie; Hosiery; Tee-shirts; Polo shirts; Undershirts; Underpants" Applicant disagrees that registration of the mark for those goods is confusingly similar to Applicant's WINFORD mark, specifically: Class 3: Cosmetics; Non-medicated toiletry preparations; Perfume; Non-medicated skin care creams and lotions Class 18: Backpacks; Tote bags Class 25: Bottoms as clothing, Hats; Jackets, and Tops as clothing, all of the foregoing specifically excluding underwear and hosiery, as herein amended
With regard to the Class 3 goods, Applicant strongly believes that the marks are easily distinguishable. The registrant is Wynford Hosiery, and as its name applies its goods are limited to those types of goods, or those that are closely related. The manufacture of cosmetics and toiletries is a completely different manufacturing process. Hosiery and lingerie are made in garment type factories, and it is not that usual for hosiery companies to also be in the business of cosmetics. Well known brand names such as Jockey and Hanes are widely known for their underwear and hosiery goods, but they have not registered or have current applications for their marks for goods in International Class 3. Class 3 goods are not an expected area of expansion. Any company can expand into any area of use, but where expansion is not likely, the likelihood of confusion is lessened. Consumers do not immediately associate a good in Class 3 with a hosiery and underwear company's mark. This is especially true in the current comparison, because the cited mark WYNFORD is not well known, and it is spelled differently than the cited mark.
With regard to Class 18 goods, Applicant also believes that the marks are easily distinguishable when use on Applicants' goods. Applicant's mark is spelled differently, and backpacks and tote bags are not similar to the goods of the cited registration. They are not apparel goods, and the channels of trade and the consumers for these types of goods are much different. Class 18 goods are not a logical or expected area of expansion are possible, but not likely, given the applicant, as is apparent from its name, a hosiery manufacturer. Further, the spelling alters the appearance of the marks, further lessening any potential for conflict.
With regard to the Class 25 goods, as herein amended, the differences in the goods, as amended, is obvious. Applicant's goods are marks that are meant to be worn on the outside, not like the goods of the cited registration, such as socks and underwear, which are meant to be worn underneath clothing. Further, the spelling of the marks are different - WINFORD vs. WYNFORD, which also alters the overall appearance and commercial impressions of the marks. Because of these differences, there is little potential for any confusion as to source of sponsorship of the goods sold under the mark.
Therefore, approval of the application is requested.