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. 88146419 BIG COUNTRY(Standard Characters, see http://uspto.report/TM/88146419/mark.png) has been amended as follows:

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

Applicant respectfully disagrees with Examiner that Applied For Mark (BIG COUNTRY) and the cited mark (BIG FLAVOR COUNTRY) are confusingly similar. Applicant notes that ?BIG? and ?COUNTRY? are not strong distinguishing elements, and the cited mark has the dominating difference of FLAVOR in the midst of that mark, which distinguishes it in appearance, phonetically, and in meaning from the Applied For Mark. Miss Universe, L.P., LLLP v. Villegas, 672 F. Supp. 2d 575, 586, 93 U.S.P. Q.2d 1652 (S.D. N.Y. 2009) (no likelihood of confusion in MISS U.S.A. versus MISS ASIA U.S.A. because ?a mark that alters ?Miss USA? by inserting a ?distinguishable major element? in the middle? found to be dissimilar enough to avoid confusion even though both marks were used for beauty pageants); see Miss Universe, Inc. v. Patricelli, 408 F. 2d 506, 510 (2nd Cir. 1969) (?the mark ?Miss World-U.S.A.? is, on its face, dominated by the distinguishable major element, ?Miss World? [from Miss U.S.A.] and does not share the same tendency toward confusion.?). While Applicant believes the cited cases here provide sufficient basis for finding a lack of confusing similarity, Applicant also respectfully notes that it disagrees with Examiner's suggestion that Marks, when compared in their entireties on the basis of similarities or differences in appearance, sound, connotation, and commercial impression, are confusingly similar. As already noted, ?BIG? and ?COUNTRY? are not strong distinguishing elements, and thus a fair representation of the appearance of the marks could really be * * v. * FLAVOR *, which does not seem to be a confusingly similar appearance. Commentators and courts have found marks with such differences to fall far short of being confusingly similar. See 4 McCarthy On Trademarks, ?23.48 at 23-269 to 23-272 (2018). The sound is obviously different as well, as the cited mark sounds in what is the equivalent of five notes, which the second and third note (i.e. FLA and VOR), not being at all present in the Applied For Mark. Cf. Williams v. Gaye, 885 F. 3d 1150, 1191-92 (9th Cir. 2018) (?The various unprotected elements identified by Finell don't even coincide with one another in that short, four-second snippet. And her narrow focus on these elements ignored the different harmonies in each phrase. ?To pull these elements out of a song individually, without also looking at them in combination, is to perform an incomplete and distorted musicological analysis.? ?Given the lack of similarities between the Signature Phrases, there is no basis to conclude that they are substantially similar. ?The most that can be said is that the two segments bear some relation to one another within a finite world of melodies. Given the limited musical vocabulary available to composers, this is far from enough to support an inference of [infringement].??). As to connotation, and the related commercial impression, the cited mark and the Applied For Mark are also very different, as the meaning of the two differ: the Applied For Mark literally means the country is big, and also picks up the use of ?Big Country? as a slang term for a large man, particularly one from rural areas or farm country. See Ex. 1 herewith from Urban Dictionary, retrieved from http://www.urbandictionary.com/define.php?term=Big%20Country; Ex. 2 herewith, an example of BIG COUNTRY being used to describe a large man from rural area, at page 13, retrieved from http://bleacherreport.com/articles/1125210-the-best-nicknames-in-nba-history#slide6 (note well that Mr. Reeves and the product are not related to each other). Therefore, while the cited mark suggests perhaps lots of flavor, in the Applied For Mark BIG COUNTRY is suggestive of something man-sized, or even man-sized, extra-large. Again, very different meaning/connotation/impressions. Id. All of this shows that the cited mark and the Applied For Mark are not likely to be confused.

EVIDENCE
Evidence in the nature of Urban Dictionary definitins of BIG COUNTRY; example of BIG COUNTRY used to describe a large man from rural area has been attached.
Original PDF file:
evi_65223154155-20190208170445426665_._Big_Country_Ex._1.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_65223154155-20190208170445426665_._Big_country_Ex._2__page_13.pdf
Converted PDF file(s) ( 13 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13

SIGNATURE(S)
Response Signature
Signature: /James P. Flynn/     Date: 02/08/2019
Signatory's Name: James P. Flynn
Signatory's Position: attorney of record, DC, NY and NJ bar member

Signatory's Phone Number: 9736398285

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: 88146419
Internet Transmission Date: Fri Feb 08 17:23:29 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201902081723296
98889-88146419-62069fc379cad6afd30c7f16a
664dc142d78bd37bcdcd4cda8b2a9e0d4aa4977a
-N/A-N/A-20190208170445426665