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)

---

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. 88134288 KANE(Standard Characters, see http://uspto.report/TM/88134288/mark.png) has been amended as follows:

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

The Examining Attorney has maintained the refusal of this application under Section 2(d), citing a likelihood of confusion with Reg. No. 5259738 for the mark CAIN BROTHERS. Applicant disagrees with the Examining Attorney's position, and reiterates the arguments set forth in its prior response as to why there is no likelihood of confusion in this case. Among other things, confusion is unlikely due to the dissimilarities between the marks as a whole, the high degree of care and analysis that consumers will apply to their decisions to purchase the parties' services, and the more than 35 years of the marks' coexistence in the marketplace without any actual confusion. Applicant now submits a Consent Agreement that it has entered into with KeyCorp, owner of Reg. No. 5259738. As indicated in the Consent Agreement, the parties believe that confusion between their marks is unlikely for the aforementioned reasons. Moreover, the Consent Agreement reflects the parties' commitment to cooperate with each other as necessary to minimize the likelihood of confusion and, in the unlikely event that either party becomes aware of any actual confusion, to take steps to promptly address such confusion and prevent its future occurrence. The Federal Circuit has made it clear that the PTO should give "substantial weight" to the parties' assessment of likelihood of confusion in a consent agreement. See In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1569 (1993) ("The parties themselves have determined that confusion of the public by concurrent use of their marks is unlikely and intend to abide by their contractual agreement. . . . There is no reason to ignore their assessment of likelihood of confusion and not give substantial weight to their agreement as evidence that likelihood of confusion does not exist."); In re. E. I. Du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973); TMEP Sec. 1207.01(d)(viii). For the reasons set forth above, Applicant respectfully requests that the Section 2(d) refusal be withdrawn and the application be approved for publication.

EVIDENCE
Evidence has been attached: Executed Consent Agreement
Original PDF file:
evi_6949136242-2020031211 4944658821_._Executed_Con sent_Agreement.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: The Kane Company, Inc., a corporation of New Hampshire, having an address of
      210 Commerce Way, Suite 300
      Portsmouth, New Hampshire 03801
      United States

Proposed: The Kane Company, Inc., a corporation of New Hampshire, having an address of
      210 Commerce Way, Suite 300
      Portsmouth, New Hampshire 03801
      United States
      Email Address: XXXX

The owner's/holder's current attorney information: Jonathan M. Gelchinsky. Jonathan M. Gelchinsky of PIERCE ATWOOD LLP, is located at

      254 COMMERCIAL STREET
      PORTLAND, Maine 04101
      United States
The docket/reference number is 35123/2528.
      The phone number is 207-791-1100.
      The fax number is 207-791-1350.
      The email address is trademark@pierceatwood.com

The owner's/holder's proposed attorney information: Jonathan M. Gelchinsky. Other appointed attorneys are each of the attorneys of Pierce Atwood LLP. Jonathan M. Gelchinsky of Pierce Atwood LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      254 Commercial Street
      Portland, Maine 04101
      United States
The docket/reference number is 35123/2528K.
      The phone number is 207-791-1100.
      The fax number is 207-791-1350.
      The email address is trademark@pierceatwood.com

Jonathan M. Gelchinsky 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.Correspondence Information (current):
      JONATHAN M. GELCHINSKY
      PRIMARY EMAIL FOR CORRESPONDENCE: trademark@pierceatwood.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 35123/2528.
Correspondence Information (proposed):
      Jonathan M. Gelchinsky
      PRIMARY EMAIL FOR CORRESPONDENCE: trademark@pierceatwood.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 35123/2528K.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /JMG/     Date: 03/12/2020
Signatory's Name: Jonathan M. Gelchinsky
Signatory's Position: Attorney of record, Maine bar member

Signatory's Phone Number: 207-791-1100

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:    JONATHAN M. GELCHINSKY
   PIERCE ATWOOD LLP
   
   254 COMMERCIAL STREET
   PORTLAND, Maine 04101
Mailing Address:    Jonathan M. Gelchinsky
   Pierce Atwood LLP
   254 Commercial Street
   Portland, Maine 04101
        
Serial Number: 88134288
Internet Transmission Date: Thu Mar 12 15:38:46 ET 2020
TEAS Stamp: USPTO/RFR-XX.XX.XXX.XXX-2020031215384623
6487-88134288-7103f2cb4cb38525419488b9b7
da92b3195513835bb4b9deea1d07396c332ffd6d
6-N/A-N/A-20200312121838044369