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. 88136496 MUSE(Standard Characters, see http://uspto.report/TM/88136496/mark.png) has been amended as follows:

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

This is in response to the January 17, 2019 Office Action.

There Is No Likelihood of Confusion

In the Office Action, the Examiner advised of a “potential conflict” involving pending U.S. Application Serial Nos. 88091296, 87433462 and 86969689.  As set forth below, Applicant Brill respectfully disagrees with the assertions raised by the Examining Attorney.  In view of: (a) the differences in the respective goods; (b) the differences in the channels of trade; and (c) the sophistication of consumers of Applicant Brill’s products; Applicant Brill respectfully states that there is no likelihood of confusion. 

Importantly, the products intended to be offered by Brill and the prior Applicants (the owners of the prior pending applications referenced by the Examiner) under the respective marks are unrelated, for different purposes, and provided through different streams of commerce to highly sophisticated consumers.  Applicant Brill therefore respectfully requests approval of this application, without suspension or refusal of registration.

Applicant Brill’s use of its MUSE mark on and in connection with its recited products is not likely to cause confusion with the prior Applicants’ use in connection with their respective goods/services recited in Application Serial Nos. 88091296, 87433462 and 86969689.  “[I]f the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely.”  TMEP § 1207.01(a)(i); see, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ 2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ 2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ 2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field).

Serial No. 88091296 for MUSE for Class 9 and Class 42 software

The goods/services identified in the ‘296 application are software for quality assurance of perishable food products.  As referenced herein, Applicant Brill has amended this application to delete Class 9: “Computer software for three dimensional (3D) printing of food.”  Thus, the goods identified in this application that Applicant Brill intends to offer under the MUSE mark are totally unrelated from the software products/services identified in the ‘296 application. 

Serial No. 87433462 for MUSE for fruits, vegetables, and beans and Serial No. 86969689 for MUSE for yeast.

The ‘462 application is owned by World Farmers International, Inc. and the goods identified in ‘462 application are primarily for fruits, vegetables, and beans – items grown on a farm – and fruit and vegetable juices.  The ‘689 application is owned by Renaissance Yeast Inc. for yeast.

Unlike the products recited in the ‘462 application and the ‘689 application, Applicant Brill’s products are edible ingredients for use with three dimensional (3D) printing of food.  Applicant Brill’s products are not for consumption on their own, they are for use in a high-tech three dimensional (3D) printer that mixes the ingredients and then creates a new, edible object from the inks and powders that are input into the three dimensional (3D) printer machine.  Further, Applicant Brill’s products are not grown on a farm, do not contain fruits, vegetables, beans, nor yeast, and are not for use in leavening baked goods.  The products in the ‘462 application and the ‘689 application are completely different from Applicant Brill’s products for use with its three dimensional (3D) printer.

Significantly, the Applicant Brill’s edible printer ingredients are intended for distribution in a business to business manner, to be used by professional bakeries, restaurants, chefs, and companies in the hospitality business who utilize the ingredients in conjunction with Applicant Brill’s three dimensional (3D) printer machine.  The three dimensional (3D) printer machine is a high-tech device which is intended for use by industry professionals, not general consumers.  Considering the complex nature of Applicant Brill’s three dimensional (3D) printer machine, and the target market for its products, these sophisticated users would know with whom they are dealing when ordering edible ingredients designed specifically for Applicant Brill’s compatible three dimensional (3D) printer machine.

Applicant Brill’s  three dimensional (3D) printer and edible ingredients are unrelated to the specific product recited in the ‘462 application and the ‘689 application.  The respective companies are not known competitors and the audience for their respective products are unrelated.  Consumers cannot be confused when the parties are not likely to become competitors, and the respective marketing channels and services do not overlap.  See, e.g., Current Communications Group LLC v. Current Media LLC, 76 USPQ2d 1686 (S.D. Ohio 2005) (“…generic internet use is not the equivalent of overlapping marketing channels.”).  A likelihood of confusion does not and cannot exist due to the mere possibility that the goods or services might potentially be vaguely similar or overlap. See e.g., In re Mars. Inc., 741 F.2d 395, 222 U.S.P.Q. 938 (Fed. Cir. 1984) (use of CANYON for candy bars not likely to cause confusion with registered mark CANYON for fresh citrus fruit).

In summary, Applicant Brill’s MUSE mark is not likely to be confused with the pending U.S. Application Serial Nos. 88091296, 87433462 and 86969689, because of the differences in the respective goods, channels of trade, and sophistication of the respective customers.

Conclusion

Based on the foregoing remarks, Applicant Brill respectfully requests entry of the above-referenced amendments to the description of goods, and approval of the application for publication.  If the Examining Attorney has any questions, please contact the undersigned Attorney of Record.

Respectfully Submitted,

/lcs/

Lindsay Cohen Schneider, Esq.
Bryan Cave Leighton Paisner, LLP
Phone:  (314) 259-2481
E-Mail:  Lindsay.Schneider@bclplaw.com
Docketing:  BCipDocketing@bclplaw.com

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 009 for Computer software for three dimensional (3D) printing of food

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 002 for Edible ingredients for use with three dimensional (3D) printing of food; edible printing ink; edible printing compositions and edible printing powders, pastes and liquids
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Proposed:
Tracked Text Description: Edible ingredients for use with three dimensional (3D) printing of food; Edible ingredients in the nature of edible ink and binder for use with three dimensional (3D) printing of food; edible printing ink; edible printing compositions and edible printing powders, pastes and liquids; edible printing compositions and edible printing powders and liquids, each of the foregoing in the nature of printing compositionsClass 002 for Edible ingredients in the nature of edible ink and binder for use with three dimensional (3D) printing of food; edible printing ink; edible printing compositions and edible printing powders and liquids, each of the foregoing in the nature of printing compositions
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 030 for Edible ingredients in the nature of flavored and unflavored powdered sugar and confectionary dry mix containing sugar for use with three dimensional (3D) printing of food
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.


I hereby elect to by-pass any fee edit for an added class(es), because I believe the original fee payment was sufficient. I understand that the examining attorney could still, upon later review, require a fee payment.
SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /lcs/     Date: 07/10/2019
Signatory's Name: Lindsay Cohen Schneider
Signatory's Position: Attorney of Record, MO Bar Member

Signatory's Phone Number: 314-259-2481

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: 88136496
Internet Transmission Date: Wed Jul 10 17:17:04 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20190710171704018
333-88136496-620d1d163948bcaf46977bdff96
84757fa5e7389b75871327289346917e774ca-N/
A-N/A-20190710170036185054