TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88109301 FOCUS(Standard Characters, see http://uspto.report/TM/88109301/mark.png) has been amended as follows:

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

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE SERIAL NO.: 88109301 FILING DATE: September 5, 2018 MARK: FOCUS APPLICANT: Film Ethnographer, LLC LAW OFFICE: 120 EXAMINING ATTORNEY: Jules Dean Commissioner for Trademarks 600 Dulany Street Alexandria, VA 22314 APPLICANT?S RESQUEST FOR RECONSIDERATION Dear Commissioner: This is in response to the Final Office Action mailed on May 14, 2019, in connection with the above-referenced application. The Examining Attorney has preliminarily refused registration of the mark FOCUS (?Applicant?s Mark?) pursuant to Trademark Act Section 2(d), 15 U.S.C. ? 1052(d), on the grounds that the Applicant?s Mark is likely to be confused with registered marks FOCUS (4,154,525) and FOCUS (4,490,187) (hereinafter referred to ?Cited Registration? or ?Cited Registrant?). Applicant has carefully reviewed the Examining Attorney?s comments and submits the following amendments and response to the likelihood of confusion. Further, Applicant submits that there is no likelihood of confusion between the Registered Marks and Applicant?s Mark, and respectfully requests that the Examining Attorney reconsider his refusal to register Applicant?s Mark. AMENDMENT OF MARK Applicant respectfully requests the mark be amended to read ?FOCUS COMICS? LIKELIHOOOD OF CONFUSION RESPONSE In the Office Action dated May 16, 2019, the Examining Attorney has preliminarily refused registration of the mark FOCUS (?Applicant?s Mark?) pursuant to Trademark Act Section 2(d), 15 U.S.C. ? 1052(d), on the grounds that the Applicant?s Mark is likely to be confused with registered marks FOCUS (4,154,525) and FOCUS (4,490,187 (hereinafter referred to the ?525 registration? and the ?187 registration?). Applicant has requested to amend the mark to include the word ?COMIC? such that the mark becomes FOCUS COMIC and is distinguished from the registered marks. Although the word COMIC is descriptive, adding the term to the mark distinguishes Applicant?s Mark from the cited Registered Marks. A likelihood of confusion between two marks at the USPTO is determined by a review of all the relevant factors under the DuPont test. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The two key considerations in ex parte likelihood of confusion analysis are the similarity of the marks and the similarity of the goods or services. See Federated Goods, Inc. v. Fort Howard Paper Co, 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). In determining whether there is a likelihood of confusion, courts look to many factors, including as particularly relevant here: The number and nature of similar marks in use on similar goods and services; ? The similarity or dissimilarity and nature of the goods or services such that one party?s goods will be mistaken for those of the other party; ? The channels of distribution of the goods or services; ? The conditions under which the goods or services are purchased (i.e. impulse buying versus purchases made after careful consideration); ? The similarity or dissimilarity of the marks in their entirety; and ? The nature and extent of any actual confusion Id. At 1361. An analysis of these factors here leads inevitably to the conclusion that no confusion will result between Applicant?s Mark and the Cited Registrations. As more specifically discussed below, Applicant?s Mark is used in connection with a product that is not the same as, or related to, the products of the Cited Registrations, both of which offer very different products to specific and distinct consumers in separate and divergent markets. Additionally, Applicant has not evidenced any actual confusion with either of the registered marks in the over 3 years they?ve offered comics. For all these reasons there is no real potential that the relevant purchasers would be confused as to the source of the parties? respective products. Similarity of the Goods The determination of ?likelihood of confusion? is based upon the description of goods or services as contained in the applications of the parties. TMEP ? 1207.01(a)(iii). Although goods covered by the marks in a general sense relate to printed material, this fact is not dispositive. The mere fact that both parties sell generally similar items is insufficient for a finding of likelihood of confusion. See Standard Brands Inc. v. Peters, 191 U.S.P.Q. 168, 172 (TTAB 1975) (addition of the word ?corn? is sufficient to render the mark ?CORN-ROYAL? as a whole distinguishable from and registrable over ?ROYAL? for butter and margarine products, which are specifically different from shortening for volume deep fat frying); see also Imperial Sugar Co. v. Imperial Prods., 139 U.S.P.Q. 344, 345 (TTAB 1963) (IMPERIAL mark used for both dessert powders and sugar, no likelihood of confusion because dessert powders and sugar are ?such different food products?); Elec. Design & Sales, 954 F.2d at 717-18 (EDS mark used for computer programming services and battery charges and power supplies, no likelihood of confusion even though goods and services under both marks were sold to some of the same companies). Applicant sells a publication featuring fictional characters, and fictional stories in illustrated art form, namely comic books. Both of the Registered Marks, in contrast, sell publications nonfictional in nature, namely medical advertising materials and photography book series. There are no prominent illustrated art fictional stories or characters in Registered Marks? materials. A search of the USPTO records reveals that neither of the Registered Marks sells items similar or identical to Applicant?s line of featuring fictional characters, and fictional stories especially in illustrated art form. In particular, the ?187 mark is related to ?printed matter?the field of medicine??. The ?187 mark lists publications in the manner of brochures, pamphlets, posters, catalogues, and magazines in the field of medicine. Applicant respectfully points out that the ?187 mark?s description of goods is very narrow and is specifically related to the medical field. Additionally, the field of medicine is very distinct from Applicant?s goods, namely comic books related to fictional stories. Examiner lists evidence of various publishers to establish that the same entity commonly produces and provides the relevant goods and markets the goods under the same mark, and that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. However, Applicant respectfully points out that the evidence listed does not list either of the Registered marks such that Examiner is broadening the scope of the Registered Marks beyond their actual description of goods. Applicant reminds Examiner that the Registered marks have very limited and distinct goods related to specific fields of content as compared to the evidence supporting the refusal. In fact, the ?187 mark is owned by a separate publishing company. Therefore, Examiners argument that publishers of comic books also publish magazines and books featuring photographs is not applicable here. Just because some publishers provide many types of publications does not mitigate the argument that a registered mark with a limited description of goods sells the same wide variety of publications. In particular, the ?525 mark is related to ?a series of books featuring photographs??. Applicant points out that photographs are not illustrated art such as found in comic books. To further illustrate the difference, the ?525 mark is comprised of the word Focus where the letter O forms a camera lens. A comic book is defined as ?a magazine that presents a serialized story in the form of a comic strip, typically featuring the adventures of a superhero?. Additionally, a comic strip is defined by Merriam-Webster as ?a group of cartoons in narrative sequence?. Here, Applicant?s goods match the definition of a comic book and comic strip featuring illustrated art whereas the definition of goods for the ?525 mark relating to photographs are not similar or the same as illustrated art cartoons. Additionally, the ?187 mark is in association with relatively expensive and unique goods, i.e., high end health items forming an atlas of the human anatomy and physiology. Customers purchase goods from Registrant?s mark only after significant deliberation. This allows the potential customer to determine if Registrant?s Goods ?fit? a particular need. This process takes time. It simply defies logic to believe that purchasers of expensive, high-end, interactive audiovisual health animation items focusing on anatomy and physiology will be confused with a comic book series bearing the term FOCUS COMIC. The standard for determination of likelihood of confusion is not a mere possibility of overlap but instead a probability of confusion. See 3 McCarthy ? 23:3 at 23-10, and cases cited therein. The existence of a de minimis amount of overlap is insufficient to create a likelihood of confusion. Elec. Design & Sales, 954 F.2d at 719. The Federal Circuit has noted: ?[W]e believe that, at least in the case of goods and services that are sold, the inquiry [into likelihood of confusion] generally will turn on whether actual or potential ?purchasers? are confused.... The essential inquiry in this appeal then is whether there is likely to be sufficient overlap of the respective purchasers of the parties? goods and services to confuse actual and potential purchasers.? Id. at 716. Consumers who purchase any of the goods sold in connection with the Registered Marks and Applicant?s line of publications featuring fictional characters and fictional stories as told in a group of cartoons in narrative sequence are not likely to be confused with the items sold by the other, namely medical literature or photography books. The businesses are very different; the customer who buys the goods sold in connection with the Registered Marks is buying a particular non-fiction item. Applicant?s customers, on the other hand, are purchasing a line of publications featuring fictional characters, and fictional stories, and specifically illustrated art. There is simply no commercial connection between Applicant?s Goods and those sold in connection with the Registered Marks. Furthermore, there simply can be no reverse confusion because the purchase of publications featuring fictional characters, and fictional stories is so unique and requires so much thought that confusion as to source is inconceivable, regardless of the marks involved. Accordingly, the goods covered by the various Registered Marks and the goods covered by Applicant?s Mark are highly dissimilar and, therefore, confusion is not likely. The Similarity Trade Channels Examiner cites evidence in the current refusal to demonstrate that the same entity commonly manufactures, produces, and provides the relevant goods and markets the goods under the same mark. Examiner also states that the evidence also establishes that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Examiner specifically points out that book publishers often offer all types of books in many formats and subject matters in printed or downloadable formats. Purchasers looking for book publishers will often expect the publisher to publish all types of books regardless of format and subject matter. Examiner concludes that because of this Applicant?s and Registrant?s goods are considered related for likelihood of confusion purposes. Applicant respectfully disagrees with Examiner?s premise and conclusion in that Examiner applies the stream of commerce definition too broadly in this instance. Applicant?s trade channels are dissimilar to those utilized by the owners of the Registered Marks. Applicant sells its FOCUS COMIC brand publications, namely comic books featuring fictional characters and fictional stories in a cartoon series, solely through its own online shop and comic book stores. Simply because Applicant?s online shop highlight the sale of Applicant?s products and no others (because none of the Registrants may sell items bearing the Registered Marks through Applicant?s trade channels), Applicants? trade channels differentiate Registrants? and Applicant?s Goods. Additionally, comic book stores typically only carry comic books as defined above relating to illustrated stories typically featuring superheroes, as Applicant?s goods do. One will not find medical literature or books featuring photography in a comic book store. Thus, this DuPont factor weighs heavily in favor of Applicant. Conditions Under Which Buyers To Whom Sales Are Made, i.e. ?Impulse? vs. Careful, Sophisticated Purchasing The test for ?likelihood of confusion? is conducted with respect to the perception of ?reasonably prudent purchasers,? except in the case of a product or service which is considered expensive, rare, or unique, where the standard is raised to ?discriminating purchasers.? See 3 McCarthy, ? 23:96 at 23-188 and cases cited therein. In this case, the ?discriminating purchaser? standard should be applied. Applicant?s Mark is used in association with unique goods, i.e., publications featuring fictional characters and fictional stories in a comic book. It is almost a clich?, but certainly self-evident, to say that the individuals (comic book fans) who buy publications featuring fictional characters and fictional stories are educated, knowledgeable, brand conscious and are discriminating shoppers. Applicant?s customers purchase Applicant?s Goods only after significant deliberation. This allows the potential customer to determine if Applicant?s Goods ?fit? a particular need. This process takes time. It simply defies logic to believe that purchasers of publications featuring fictional characters, and fictional stories will be confused with nonfiction items or printed material bearing the term FOCUS. Because of the nature of the goods involved, this DuPont factor weighs heavily in favor of a finding of no likelihood of confusion. Conclusion Taken together with the goods and trade channel differences between the marks, it is clear that Applicant?s mark and the cited Registrations are not likely to be confused in the marketplace. The cited FOCUS marks are different from Applicant's FOCUS COMIC mark in overall commercial impression and goods. The differences in products and targeted consumers weigh heavily in favor of allowing registration. Accordingly, there is no likelihood of confusion between the marks cited by the Examining Attorney and Applicant's FOCUS COMIC mark. In view of the foregoing, Applicant respectfully submits that Applicant?s Mark should proceed to registration because the differences between the two marks after the amendment, in addition to the differences in trade channels and goods, puts the application in condition for allowance, and requests that it be promptly passed to publication.

The applicant's current attorney information: Keith A. Miller. Keith A. Miller of THE KEITH MILLER LAW GROUP, PLLC, is located at

      15725 W. BERKELEY RD.
      GOODYEAR, Arizona 85395
      US
The docket/reference number is WANY18021TM.

The phone number is 480-241-7306.

The email address is keith@keithmillerpllc.com

The applicants proposed attorney information: Keith A. Miller. Keith A. Miller of THE KEITH MILLER LAW GROUP, PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      15725 W. BERKELEY RD.
      GOODYEAR, Arizona 85395
      United States
The docket/reference number is WANY18021TM.

The phone number is 480-241-7306.

The email address is keith@keithmillerpllc.com

Keith A. Miller submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: KEITH A. MILLER. KEITH A. MILLER of THE KEITH MILLER LAW GROUP, PLLC, is located at

      15725 W. BERKELEY RD.
      GOODYEAR, Arizona 85395
      US
The docket/reference number is WANY18021TM.

The phone number is 480-241-7306.

The email address is keith@keithmillerpllc.com; yvonnewan@hotmail.co.uk

The applicants proposed correspondence information: Keith A. Miller. Keith A. Miller of THE KEITH MILLER LAW GROUP, PLLC, is located at

      15725 W. BERKELEY RD.
      GOODYEAR, Arizona 85395
      United States
The docket/reference number is WANY18021TM.

The phone number is 480-241-7306.

The email address is keith@keithmillerpllc.com

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Keith A. Miller/     Date: 11/12/2019
Signatory's Name: Keith A. Miller
Signatory's Position: Attorney of record, Arizona bar member

Signatory's Phone Number: 480-241-7306

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    KEITH A. MILLER
   THE KEITH MILLER LAW GROUP, PLLC
   
   15725 W. BERKELEY RD.
   GOODYEAR, Arizona 85395
Mailing Address:    Keith A. Miller
   THE KEITH MILLER LAW GROUP, PLLC
   15725 W. BERKELEY RD.
   GOODYEAR, Arizona 85395
        
Serial Number: 88109301
Internet Transmission Date: Tue Nov 12 16:06:11 EST 2019
TEAS Stamp: USPTO/RFR-XX.XXX.XXX.XXX-201911121606119
80037-88109301-700e5bed91c63a923318406ba
077456120645de61ffefa25822a74d564747b15-
N/A-N/A-20191112160103511274