| 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 | 88138128 |
| LAW OFFICE ASSIGNED | LAW OFFICE 125 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88138128/mark.png |
| LITERAL ELEMENT | ELITE |
| 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 trademark examining attorney asserts there is a likelihood of confusion between Applicant’s mark and U.S. Registration Nos. 4,382,616, 4,725,715, and 5,615,904 (“Cited Marks”). The trademark examining attorney contends that the marks being identical and similarity of goods are likely to lead to consumer confusion. Applicant has carefully reviewed the Office Action, and asserts that registration of Applicant’s mark will not result in a likelihood of confusion with the Cited Marks because the goods related the Cited Marks are sufficiently dissimilar from Applicant’s amended goods. Applicant has amended the identification of goods related in the present application to expressly limit its goods to sports lockers that are constructed of both metal and wood. The goods of U.S. Registration No. 4,382,616 are explicitly limited to “modular non-metal structures for interior storage.” Applicant’s amended goods include metal and are not limited to interior to interior storage. The goods of U.S. Registration No. 4,725,715 are specifically limited to “containers not of metal for commercial use.” Applicant’s amended goods include metal and are not limited to commercial use (i.e., goods can be used for non-profit school athletics). And the goods of U.S. Registration No. 5,615,904 is specifically limited to shelving and storage racks. Applicant’s narrow scope of goods avoids the particular goods of the Cited Marks. Therefore, consumer confusion is not likely to result. An additional factor considered in determining whether likelihood of confusion exists is the nature and similarity of the mark. “[I]n a ‘crowded’ field of similar marks, each member of the crowd, is relatively 'weak' in its ability to prevent use by others in the crowd.” J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 11:85 at 11-163 (4th Ed. 2001). In this case, the cited mark is relatively narrow in scope in view of the fact that other marks for ELITE have been allowed or exist on the principal register for what the trademark examining attorney has identified as similar goods (i.e., the Cited Marks). The fact that these marks are coexisting without confusion on the register is strong evidence that Applicant’s mark similarly will not cause confusion. It is respectfully submitted that this application is now in condition for publication and such action is respectfully requested at an early date. Applicant has filed this response within the statutory period in a bona fide attempt to advance the examination of the application, and, in Applicant’s view, it is a complete response to the office action. If there are any issues that remain to be addressed before passing this application to publication, the trademark examining attorney is invited to contact the undersigned. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 020 |
| DESCRIPTION | Lockers and storage racks |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 020 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | Sports lockers constructed of metal and wood |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Tye Biasco/ |
| SIGNATORY'S NAME | Tye Biasco |
| SIGNATORY'S POSITION | Attorney of record, Minnesota bar member |
| SIGNATORY'S PHONE NUMBER | 6123493010 |
| DATE SIGNED | 06/10/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jun 10 12:19:56 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.X.XX-201 90610121956833440-8813812 8-620236240d6d16dac10ab33 2145561024f4efb8bcc0e5733 390178f54a9c2bd93-N/A-N/A -20190610111410408834 |
| 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) |
The trademark examining attorney asserts there is a likelihood of confusion between Applicant’s mark and U.S. Registration Nos. 4,382,616, 4,725,715, and 5,615,904 (“Cited Marks”). The trademark examining attorney contends that the marks being identical and similarity of goods are likely to lead to consumer confusion. Applicant has carefully reviewed the Office Action, and asserts that registration of Applicant’s mark will not result in a likelihood of confusion with the Cited Marks because the goods related the Cited Marks are sufficiently dissimilar from Applicant’s amended goods.
Applicant has amended the identification of goods related in the present application to expressly limit its goods to sports lockers that are constructed of both metal and wood. The goods of U.S. Registration No. 4,382,616 are explicitly limited to “modular non-metal structures for interior storage.” Applicant’s amended goods include metal and are not limited to interior to interior storage. The goods of U.S. Registration No. 4,725,715 are specifically limited to “containers not of metal for commercial use.” Applicant’s amended goods include metal and are not limited to commercial use (i.e., goods can be used for non-profit school athletics). And the goods of U.S. Registration No. 5,615,904 is specifically limited to shelving and storage racks. Applicant’s narrow scope of goods avoids the particular goods of the Cited Marks. Therefore, consumer confusion is not likely to result.
An additional factor considered in determining whether likelihood of confusion exists is the nature and similarity of the mark. “[I]n a ‘crowded’ field of similar marks, each member of the crowd, is relatively 'weak' in its ability to prevent use by others in the crowd.” J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 11:85 at 11-163 (4th Ed. 2001). In this case, the cited mark is relatively narrow in scope in view of the fact that other marks for ELITE have been allowed or exist on the principal register for what the trademark examining attorney has identified as similar goods (i.e., the Cited Marks). The fact that these marks are coexisting without confusion on the register is strong evidence that Applicant’s mark similarly will not cause confusion.
It is respectfully submitted that this application is now in condition for publication and such action is respectfully requested at an early date. Applicant has filed this response within the statutory period in a bona fide attempt to advance the examination of the application, and, in Applicant’s view, it is a complete response to the office action. If there are any issues that remain to be addressed before passing this application to publication, the trademark examining attorney is invited to contact the undersigned.