| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88134517 |
| LAW OFFICE ASSIGNED | LAW OFFICE 126 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88134517/mark.png |
| LITERAL ELEMENT | BROOKSHIRE BROTHERS EXPRESS |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
Color is not claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the wording BROOKSHIRE BROTHERS positioned above the word EXPRESS, all in stylized lettering. |
| ARGUMENT(S) | |
|
Applicant respectfully submits that its mark and the cited applications are not likely to cause confusion. In support of such argument, Applicant submits the attached Letter of Consent concerning the use and registration of Applicant’s mark and the cited applications. As stated in the Letter of Consent, the parties have agreed that there is and will be no likelihood of confusion as between the parties’ respective marks, based, in part, on the differences between the parties’ marks in terms of overall appearance and commercial impression, the differences in the trade dress of the retail outlets in which the marks are used, the distinct channels of trade, and long period of co-existence. The parties have further agreed to cooperate with each other and take steps to avoid any likelihood of confusion as outlined in the Letter of Consent (none of which are inconsistent with the mark as presented in this application and/or the identification of services set forth in the present application). In light of such Letter of Consent and the great weight that should be afforded thereto, Applicant respectfully submits that that the anticipatory refusal to register its mark is not warranted and requests that its application be approved for publication. See TMEP 1207.01(d)(viii); see also In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1566–67, 26 USPQ2d 1071 (Fed. Cir. 1993) (consent agreements ought to “carry great weight” in the likelihood of confusion analysis); In re American Cruise Lines, Inc., 128 USPQ2d 1157, at *7 (TTAB 2018) [precedential] (“Accordingly, ‘clothed’ consent agreements where ‘competitors have clearly thought out their commercial interests’ should be given great weight, and the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion.”). |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_381043034-20190524110731546602_._Letter_of_Consent_-_BBI_and_BGC_-_Fully_Executed.pdf |
| CONVERTED PDF FILE(S) (16 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\881\345\88134517\xml6\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\881\345\88134517\xml6\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\345\88134517\xml6\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\345\88134517\xml6\ROA0005.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\345\88134517\xml6\ROA0006.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\345\88134517\xml6\ROA0007.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\345\88134517\xml6\ROA0008.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\345\88134517\xml6\ROA0009.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\345\88134517\xml6\ROA0010.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\345\88134517\xml6\ROA0011.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\345\88134517\xml6\ROA0012.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\345\88134517\xml6\ROA0013.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\345\88134517\xml6\ROA0014.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\345\88134517\xml6\ROA0015.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\345\88134517\xml6\ROA0016.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\345\88134517\xml6\ROA0017.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Letter of Consent |
| ADDITIONAL STATEMENTS SECTION | |
| DISCLAIMER | No claim is made to the exclusive right to use "brothers" apart from the mark as shown. |
| SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Five or More Years' Use | BROOKSHIRE BROTHERS has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement. |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /eric t. fingerhut/ |
| SIGNATORY'S NAME | Eric T. Fingerhut |
| SIGNATORY'S POSITION | Attorney of record, DC bar member |
| DATE SIGNED | 05/24/2019 |
| RESPONSE SIGNATURE | /eric t. fingerhut/ |
| SIGNATORY'S NAME | Eric T. Fingerhut |
| SIGNATORY'S POSITION | Attorney of record, DC bar member |
| DATE SIGNED | 05/24/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri May 24 11:10:19 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XX-20 190524111019534579-881345 17-6205af366d7cf3ba7ccce3 ad86a5b583177fc3e53681497 e1b35854a28ca636b0-N/A-N/ A-20190524110731546602 |
| 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) |
Applicant respectfully submits that its mark and the cited applications are not likely to cause confusion. In support of such argument, Applicant submits the attached Letter of Consent concerning the use and registration of Applicant’s mark and the cited applications. As stated in the Letter of Consent, the parties have agreed that there is and will be no likelihood of confusion as between the parties’ respective marks, based, in part, on the differences between the parties’ marks in terms of overall appearance and commercial impression, the differences in the trade dress of the retail outlets in which the marks are used, the distinct channels of trade, and long period of co-existence. The parties have further agreed to cooperate with each other and take steps to avoid any likelihood of confusion as outlined in the Letter of Consent (none of which are inconsistent with the mark as presented in this application and/or the identification of services set forth in the present application). In light of such Letter of Consent and the great weight that should be afforded thereto, Applicant respectfully submits that that the anticipatory refusal to register its mark is not warranted and requests that its application be approved for publication. See TMEP 1207.01(d)(viii); see also In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1566–67, 26 USPQ2d 1071 (Fed. Cir. 1993) (consent agreements ought to “carry great weight” in the likelihood of confusion analysis); In re American Cruise Lines, Inc., 128 USPQ2d 1157, at *7 (TTAB 2018) [precedential] (“Accordingly, ‘clothed’ consent agreements where ‘competitors have clearly thought out their commercial interests’ should be given great weight, and the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion.”).
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
