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. 88095809 MIKEY (Stylized and/or with Design, see http://uspto.report/TM/88095809/mark.png) has been amended as follows:

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

APPLICANT: Garcia Cortez, Miguel MARK: MIKEY Design Mark APPLICATION SERIAL NO.: 88/095,809 CORRESPONDENT EMAIL: jvillalobos@velawoodlaw.com The Office refused registration of the MIKEY design mark (USPTO App. No. 88/095,809 or ?Applicant?s Mark?) on the basis that the mark?s use is merely ornamental and that there is a likelihood of confusion with a registered mark. Applicant contends that the mark is not ornamental due to use with secondary goods and services and that there is no likelihood of confusion with the other prior pending application due to the existence of a crowded field of similarly situated marks RESPONSE TO SECTIONS 1, 2 AND 45 REFUSAL ? MERELY ORNAMENTAL In its refusal, the Office found that Applicant?s specimen presented the mark in a merely ornamental manner. Applicant contends that the mark?s use also serves a source-indicating function and is not merely ornamental. To show that a mark is not merely ornamental, an applicant may submit evidence that the proposed mark would be recognized as a mark through its use with goods or services other than those being refused as ornamental. To show secondary source, the applicant may show non-ornamental use of the mark in commerce on other goods or services. Accordingly, Applicant has attached to its response to the office action examples of non-ornamental use of the mark in commerce in connection with class 016 (stickers) and class 035 (online retail store services) [See Exhibit A ? Secondary Sources] RESPONSE TO SECTION 2(d) REFUSAL OF REGISTRATION ? LIKELIHOOD OF CONFUSION In its refusal, the Office found that Applicant?s Mark may have a likelihood of confusion with Michael Stars, Inc.?s MIKEY STARS mark (?Registered Mark?) and that the most relevant factors for determining a likelihood of confusion in this case are (1) the similarity of the marks and (2) the similarity and nature of the goods. Applicant respectfully disagrees with the findings of the Office and would request that the Office reconsider the Applicant?s Mark. A determination that there is no likelihood of confusion may be appropriate, even where the marks are similar and the goods are related, because these factors are outweighed by other factors including the presence in the marketplace of a significant number of similar marks in use on similar goods or services. TMEP 1207.01(d)(iii). Applicant contends that no likelihood of confusion should be found in this instance because (1) there are such a significant number of similar marks in both the Registered Mark?s class and the Applicant?s Mark?s class that the terms are so commonly used that the public will look to other elements to distinguish the source of the goods or services. Accordingly, Applicant respectfully requests that the Office reconsider the Applicant?s Mark. Argument and Citation to Authority (1) MIKEY is Part of a Crowded Field That Obviates any Likelihood of Confusion 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). When there are many similar marks in use on similar goods or services, the mark is considered weak and ?merely one of a crowd of marks.? One Industries, LLC v. Jim O?Neal Distributing, Inc., 578 F.3d 1154, 1164 (9th Cir. 2009). This is known as a crowded field. Id. When a mark exists in a crowded field, the public is presumed to be able to distinguish the mark from other marks that may have only minor differences. King Candy Co. v. Eunice King?s Kitchen Inc., 182 U.S.P.Q. 108 (C.C.P.A. 1974) (?confusion is unlikely because the marks are ? so widely used that the public easily distinguishes slight differences in the marks as well as differences in the goods ??); Jupiter Hosting Inc. v. Jupitermedia Corp., 76 U.S.P.Q.2d 1042 (N.D. Cal. 2004); In re Hamilton Bank, 222 U.S.P.Q. 174, 179 (T.T.A.B. 1984). Moreover, an examining attorney may not simply ignore evidence of a crowded field and must give due consideration and weight to the significance of such evidence. Juice Generation, Inc. v. GS Enterprises LLC, 2015 U.S. App. LEXIS 12456, *7-12 (Fed. Cir. July 20, 2015); Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, SLU, 2015 U.S. App. LEXIS 14514, *18-23 (Fed. Cir. Aug. 19, 2015). In Juice Generation, the Federal Circuit reversed the Board?s decision sustaining an opposition because the Board failed to properly consider Juice Generation?s crowded field evidence. Juice Generation, 2015 U.S. App. LEXIS 12456, at *7-12. In doing so, the Federal Circuit held that evidence of many similar registered marks is ?powerful on its face? and the Board may not simply disregard evidence of third party registrations just because there may not be additional evidence regarding the use, sales, and promotional efforts of the registered marks in the marketplace. Id. at *9-10. Removing any doubt about the importance of crowded field evidence, the Federal Circuit again reversed the Board in Jack Wolfskin for failing to properly consider such evidence in accordance with its decision in Juice Generation. Jack Wolfskin, 2015 U.S. App. LEXIS 14514, at *20-21. Accordingly, pursuant to binding Federal Circuit precedent, an examining attorney must give serious consideration and weight to evidence of a crowded field. In the instant case, there is an abundance of marks that integrate the word ?MIKE? or ?MIKEY? in connection with apparel. Applicant found the similar marks with similar goods and services listed below during a review of the USPTO database for registered marks. Applicant also identified many marks that integrate MICHAEL, but determined that the nicknames ?Mike? and ?Mikey? has such broad use that the nicknames alone produced a crowded field. [Electronic copies of the registrations taken from the electronic database of the USPTO of the marks below are attached to the response form as Exhibit B]. MIKE'S Class 018: tote bags, duffel bags, gym bags, briefcases, beach bags, [ fanny packs ] and backpacks. Class 025: shirts, t-shirts, jackets, sweatshirts and caps. Registration Number 3661334 Registration Date July 28, 2009 Owner: Mark Anthony International SRL (Barbados Corp) Parker House, Wildey Business House Wildey Road St. Michael, Barbados MIKEY & JOEY Class 025: T-shirts. Registration Number 5172606 International Registration Number 1306165 Registration Date March 28, 2017 Owner: Detour Apparel, Inc. (NY Corp) 530 7th Avenue, Suite 608 New York, NY 10018 MIKEY & JOEY Class 025: Dresses; Pants; Shorts; Tops. Registration Number 5241476 Registration Date July 11, 2017 Owner: Detour Apparel, Inc. (NY Corp) 530 7th Avenue, Suite 608 New York, NY 10018 HIKEY MIKEY Class 025: Bottoms; Footwear; Tops. Registration Number 4907612 Registration Date March 1, 2016 Owner: A/Trail, Inc. (TN Corp) 503 N Military Avenue Lawrenceburg, TN 38464 Class 025: Beanies; Dresses; Infant and toddler one piece clothing; Rompers; Tank-tops; Tee shirts. Registration Number 3625861 Registration Date May 26, 2009 Owner: Michael Stars, Inc. (CA Corp) 12955 Chadron Avenue Hawthorne, CA 90250 MIKEY STARS Class 025: CLOTHING, NAMELY, TOPS, BOTTOMS AND HATS. Registration Number 2393643 Registration Date October 10, 2000 Owner: Michael Stars, Inc. (CA Corp) 12955 S. Chadron Avenue Hawthorne, CA 90249 Literal Element: MIKE Class 025: Hats; Hooded sweatshirts; Jeans; Shirts; T-shirts. Registration Number 5318881 Registration Date October 24, 2017 Owner: Tan, Michael 1502 Springtree Ct APT i Henrico, VA 23228 MIKE'S LOT Class 025: Hats; T-shirts. Class 039: Parking space reservation service. Registration Number 5101362 Registration Date December 13, 2016 Owner: MIKE'S LOT, LLC (FL LLC) 3900 NORTH GLEN AVENUE TAMPA, FL 33607 MIKE'S HARDER Class 018: Bags, namely, all-purpose carrying bags and back packs. Class 025: Clothing, namely, shirts and jackets. Registration Number 4860014 Registration Date November 24, 2015 Owner: Mark Anthony International SRL (Barbados Corp) Parker House, Wildey Business House, Wildey Road St. Michael, Barbados MIKE HOCK Class 025: Clothing, namely, caps, T-shirts, tops, tank tops, jackets, shorts, loungewear, robes, bathrobes, briefs, boxer briefs, boxer shorts, undergarments, swimwear and pajamas. Registration Number 4842461 Registration Date October 27, 2015 Owner: Thomas D. Nowell 151 11th Street Southwest Rugby, ND 58368 GOT MIKE? Class 025: Bandanas; Baseball caps and hats; Beanies; Hooded sweat shirts; Shirts; Sweat shirts. Registration Number 5028499 Registration Date August 23, 2016 Owner: Kurt G. Redlinger PO Box 19961 San Diego, CA 92159 MIKE HAILWOOD Class 025: T-Shirts. Registration Number 2643659 Registration Date October 29, 2002 Owner: Hailwood, Pauline Barbara 2 Flint Cottage, The Street Kelshall, Nr. Royston Herts United Kingdom SG8 9SG MIKE LANES Class 025: Jeans. Registration Number 3629748 Registration Date June 2, 2009 Owner: Mike Lanes, LLC (CA LLC) P.O. BOX 9036 San Pedro, CA 90734 MIKE TYSON Class 025: Wearing apparel, namely, warm-up suits, sweatshirts, tee-shirts; muscle shirts; sports shirts; tank tops; bathing suits; beach wear; jogging suits; shorts; shirts; gloves; underwear; jerseys; headwear; footwear, belts, socks, hats; caps; workout and sports apparel, namely, shorts and shirts. Registration Number 3489868 International Registration Number 1079213 Registration Date August 19, 2008 Owner: Tyson, Michael Gerard, Mr. AKA Mike Tyson 1900 Avenue of the Stars, 25th Floor c/o Kia Kamran P.C. Los Angeles, CA 900674301 MIKE LOLA Class 025: Suits, Dresses, Pants, Shoes, Belts for clothing, Shirts, Underwear, Coats, Pullovers, Jackets, Skirts, Sweatshirts, Headwear, Socks, Shorts, Ties Registration Number 4259766 International Registration Number 1105406 Registration Date December 18, 2012 Owner: Qvord AB (Sweden LLC) Box 8002 SE-104 20 Stockholm, Sweden These third-party registrations serve as compelling evidence that the shared term ?MIKE? or ?MIKEY? is weak and diluted, such that it creates little source identifying significance that could contribute to any likelihood of confusion apart from the cited mark as a whole. Further, based upon the foregoing evidence, it can be presumed that all of the ?MIKE? and ?MIKEY? marks peacefully coexist on the Federal Register because neither the USPTO nor the trademark owners themselves believe there is a likelihood of confusion arising from the simultaneous registrations using the term ?MIKE? and ?MIKEY? by unrelated third parties in connection with apparel. This coexistence further demonstrates that relatively minor differences in the marks and/or the associated goods and services are sufficient to avoid confusion. Due to the substantial number of similar marks that include the words ?MIKE? and ?MIKEY? in connection with apparel, Applicant contends that the term is so commonly used that the public will look to other elements to distinguish the source of the goods or services. As a result of the abundance of third-party usage in connection with apparel, Applicant respectfully requests that the mark may proceed with consideration for registration on the Principal Register. (2) Similarity or Dissimilarity of Marks or Goods. Due to the fact that the Registered Mark is a standard character mark, Applicant does not disagree with the Office that the Registered Mark could appear similar to the Applicant?s Mark. Additionally, Applicant does not contend that the goods potentially be similar. Applicant maintains that such similarity is outweighed by the crowded field of similar marks. Conclusion For the foregoing reasons, Applicant contends that Applicant?s Mark is not likely to cause confusion with the Registered Mark and that its use is not merely ornamental. Applicant therefore respectfully requests that the Office reverses its Section 2(d) refusal of registration and requirement for disclaimer and that the application be passed to publication. Should any questions remain with respect to the above, please contact Applicant?s attorney of record.

EVIDENCE
Evidence in the nature of The evidence consists of Exhibits in support of the argument. has been attached.
Original PDF file:
evi_174286163-20190419142413953195_._88095809_-_ROA_-_Exhibit_A_-_SECONDARY_USES.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_174286163-20190419142413953195_._88095809_-_ROA_-_Exhibit_B_-_Crowded_Field_of_Marks.pdf
Converted PDF file(s) ( 47 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
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Evidence-24
Evidence-25
Evidence-26
Evidence-27
Evidence-28
Evidence-29
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Evidence-45
Evidence-46
Evidence-47

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
GARCIA CORTEZ, MIGUEL
15917 ANGEL FIRE COURT
MORENO VALLEY
California
US
92555

Proposed:
Robert Jeffrey Villalobos of Vela Wood PC, having an address of
5307 E. Mockingbird Lane, Suite 802 Dallas, Texas 75206
United States
jvillalobos@velawoodlaw.com;bhart@velawoodlaw.com
2148212300
2148212844



SIGNATURE(S)
Response Signature
Signature: /Robert Jeffrey Villalobos/     Date: 04/19/2019
Signatory's Name: Robert Jeffrey Villalobos
Signatory's Position: Attorney of record, Texas bar member

Signatory's Phone Number: 2148212300

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.

Mailing Address:    Robert Jeffrey Villalobos
   Vela Wood PC
   5307 E. Mockingbird Lane, Suite 802
   Dallas, Texas 75206
        
Serial Number: 88095809
Internet Transmission Date: Fri Apr 19 14:30:00 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.X.XXX-20190419143000382
483-88095809-620861f72fcec1df2f9b9d553a7
ff422fa2dd0e02f1f85455486909c51242ed0-N/
A-N/A-20190419142413953195