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
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
88127869 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 107 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/88127869/mark.png |
| LITERAL ELEMENT |
GROUNDED |
| 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 refused registration on the basis of 2(d) likelihood of confusion with Registration No. 4,417,702. In response,
Applicant submits a consent agreement between Applicant and Registrant setting forth the parties' belief that there exists no likelihood of confusion between the marks, the reasons for such belief,
and their agreement to cooperate in the event confusion develops. As set forth in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), the likelihood of confusion analysis
takes into account the market interface between the applicant and the owner of a prior mark, including a consent to register or use. An agreement that includes provisions that give a reasonable
separation between the use of the respective marks and which tends to insure that confusion will not occur is sufficient to overcome a likelihood of confusion rejection based upon a previously
registered mark. As the court in DuPont stated: "It can safely be taken as fundamental that reputable business-users of valuable trademarks have no interest in causing public confusion. . . . Thus,
when those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. . . . A mere
assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not." DuPont, 476 F.2d at 1363. A consent agreement between the
parties functions as evidence that there is no likelihood of confusion absent any contrary evidence. In re Four Seasons Hotels Ltd., 26 USPQ2d 1071, 1073 (Fed. Cir. 1993). Consent agreements should
be given great weight and the Office should not substitute its own judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason. Amalgamated Bank
of New York v. Amalgamated Trust and Savings Bank, 6 USPQ2d 1305 (Fed. Cir. 1998); TMEP 1207.01(d)(viii). In light of the consent agreement between the parties, the refusal based on 2(d) likelihood
of confusion should be withdrawn. Based upon the foregoing, Applicant respectfully requests that the application be passed through to publication. |
| EVIDENCE SECTION |
| EVIDENCE FILE NAME(S) |
| ORIGINAL PDF FILE |
evi_10715466-20190605171002601305_._GROUNDED_-_Consent_Agreement.PDF |
CONVERTED PDF FILE(S)
(2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\881\278\88127869\xml4\ROA0002.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\881\278\88127869\xml4\ROA0003.JPG |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/Joy Durand/ |
| SIGNATORY'S NAME |
Joy Durand |
| SIGNATORY'S POSITION |
Attorney of Record California Bar Member |
| SIGNATORY'S PHONE NUMBER |
7072527122 |
| DATE SIGNED |
06/05/2019 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Wed Jun 05 17:34:34 EDT 2019 |
| TEAS STAMP |
USPTO/ROA-XXX.X.XX.XX-201
90605173434359298-8812786
9-6207965ef76e0d9fd2b748f
ac4393459aba5e76533d51c9b
c82625dc62ec82b71e-N/A-N/
A-20190605171002601305 |
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.
88127869 GROUNDED(Standard Characters, see http://uspto.report/TM/88127869/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
The Examining Attorney has refused registration on the basis of 2(d) likelihood of confusion with Registration No. 4,417,702. In response, Applicant submits a consent agreement between Applicant and
Registrant setting forth the parties' belief that there exists no likelihood of confusion between the marks, the reasons for such belief, and their agreement to cooperate in the event confusion
develops. As set forth in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), the likelihood of confusion analysis takes into account the market interface between the
applicant and the owner of a prior mark, including a consent to register or use. An agreement that includes provisions that give a reasonable separation between the use of the respective marks and
which tends to insure that confusion will not occur is sufficient to overcome a likelihood of confusion rejection based upon a previously registered mark. As the court in DuPont stated: "It can
safely be taken as fundamental that reputable business-users of valuable trademarks have no interest in causing public confusion. . . . Thus, when those most familiar with use in the marketplace and
most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. . . . A mere assumption that confusion is likely will rarely prevail against
uncontroverted evidence from those on the firing line that it is not." DuPont, 476 F.2d at 1363. A consent agreement between the parties functions as evidence that there is no likelihood of confusion
absent any contrary evidence. In re Four Seasons Hotels Ltd., 26 USPQ2d 1071, 1073 (Fed. Cir. 1993). Consent agreements should be given great weight and the Office should not substitute its own
judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason. Amalgamated Bank of New York v. Amalgamated Trust and Savings Bank, 6 USPQ2d 1305
(Fed. Cir. 1998); TMEP 1207.01(d)(viii). In light of the consent agreement between the parties, the refusal based on 2(d) likelihood of confusion should be withdrawn. Based upon the foregoing,
Applicant respectfully requests that the application be passed through to publication.
EVIDENCE
Original PDF file:
evi_10715466-20190605171002601305_._GROUNDED_-_Consent_Agreement.PDF
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
SIGNATURE(S)
Response Signature
Signature: /Joy Durand/ Date: 06/05/2019
Signatory's Name: Joy Durand
Signatory's Position: Attorney of Record California Bar Member
Signatory's Phone Number: 7072527122
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.
Serial Number: 88127869
Internet Transmission Date: Wed Jun 05 17:34:34 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.X.XX.XX-201906051734343592
98-88127869-6207965ef76e0d9fd2b748fac439
3459aba5e76533d51c9bc82625dc62ec82b71e-N
/A-N/A-20190605171002601305
