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. 88170130 VERSUS CYCLES(Standard Characters, see http://uspto.report/TM/88170130/mark.png) has been amended as follows:

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

This is a response to a communication from the Examining Attorney dated February 7, 2019; reconsideration of the application identified above is requested for the reasons stated in the following paragraphs.

LIKELIHOOD OF CONFUSION REFUSAL

The Examining Attorney has refused registration of the mark VERSUS CYCLES based upon three prior registrations, Registration Nos. 2265157, 2487129, and 4123563, for the mark VERSUS for goods in International Class 12 and 25.

However, Applicant has deleted the Class 25 goods from his application, and thus Reg. Nos.  2487129 and 4123563 should no longer present obstacles to registration of the application.  Therefore, only Reg. No. 2265157 for wheels for land vehicles in Class 12 will be addressed in the present arguments.

I.          Dissimilar Sight, Sound & Meaning.  If the marks in question are dissimilar in regards to sight, sound and meaning then no confusion exists. Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998). In the cited case it was found that the dissimilarity of the marks alone precluded any likelihood of confusion. The marks at issue in Delicato Vineyards were CRISTAL and CRYSTAL CREEK, both used in association with wine, yet the marks were found not to be confusingly similar.

Applicant’s mark differs substantially from the cited registration.  Applicant’s mark is visually different, as the mark is always accompanied by the word CYCLES.

The marks differ greatly in sound from each other.  While both marks begin the same way, as was the case in Delicato Vineyards, sharing the word VERSUS, Applicant’s mark has the additional word CYCLES.  Applicant’s mark is also four syllables, whereas Registrant’s is only two. 

The meanings of the marks diverge as well.   VERSUS means “against;

in contrast to or as the alternative of.” Merriam-Webster Dictionary, Second Edition.   CYCLES, however, means “to pass through a cycle; to recur in cycles; to ride a cycle specifically: bicycle”  Merriam-Webster Dictionary, Second Edition. Obviously, there is a profound difference in the meanings of the word VERSUS alone and the words VERSUS CYCLES, thus eliminating any likelihood of confusion that might exist with marks that share a common word.

The above distinctions create a completely different commercial impression in consumers’ minds, to the extent that no likelihood of confusion exists between Applicant’s mark and the cited registration and prior pending applications.

II.         Similar Marks of Third Parties

Similar marks to VERSUS are used by various third parties on similar goods, demonstrating that such marks are relatively weak, and thus receive a very narrow scope of protection.  Sun Banks of Florida, Inc. v. Sun Federal Sav. & Loan  Ass'n,  651 F.2d 311, 211 U.S.P.Q. 844  (5th Cir. 1981).   When there are a number of third parties using similar marks, a crowded field exists. When confronted with a mark that falls into a crowded field, the consumer has developed the ability to differentiate one source of goods from another, and thus no confusion results. Id.  The following list of very similar marks already in use on the same or similar goods demonstrates that VERSUS should receive very narrow protection and therefore should not bar the registration of Applicant’s mark.

MARK	GOODS	OWNER
VERSYS	Motorcycles, [ mopeds, and scooters; ] parts and accessories for motorcycles, [ mopeds, and scooters, ] namely, tank pads.	Kawasaki Jukogyo Kabushiki Kaisha

 

 

III.        Dissimilar Trade Channels.  If differences in goods result in products being sold in different trade channels, or used for different purposes, the products may be deemed not confusingly similar.  In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973).  Comparison of the goods discussed here shows that although they are very loosely related as “wheels”, the distinctiveness of the image, marketing, customers and trade channels renders confusion as to origin highly unlikely.

Applicant’s image is that of a mountain bike company that sells, among other items, wheels and tires specifically for mountain bicycles.   The goods will be sold in mountain biking stores and other specialty sporting goods  retailers.  The average retail price is approximately $50.  Applicant’s product is not sold to any automobile aftermarket specialists and cannot be used on automobile, only on bicycles.

In contrast, the image associated with the mark VERSUS is a high-end, specialty custom automobile wheel rim dealer.  These types of goods are quite expensive, with an average price of $750, are sold by specialty automotive aftermarket dealers, and are certainly not  mountain bicycle-related or sporting goods items.  These high-end automotive aftermarket dealers do not carry the low priced, mountain bike specific wheels and tires of VERSUS CYCLES by the Applicant, nor are they likely to do so, nor does Applicant intend to sell to this type of retailer.  Any purchaser of VERSUS goods would be considered a “sophisticated purchaser” and thus not likely to confuse Registrant’s marks with Applicant’s.  Stouffer Corp. v. Health Valley Natural Foods, Inc., 1 USPQ2d 1900 (TTAB 1986). 

Taking into consideration the crowded field in which the cited registered mark and prior pending applications exist, the narrow protection afforded such marks, the differences between Applicant’s mark and the cited registered mark, as well as the dissimilar trade channels of the goods, it is unlikely that consumers will be at all confused as to the source of Applicant’s goods. 

EVIDENCE
Evidence in the nature of VERSYS registration information has been attached.
Original PDF file:
evi_7219770210-20190415185430200960_._versys.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 025 for Head wear; Headwear; Socks; Sweatshirts; T-shirts; T-shirts for Men; T-shirts for Women; T-shirts for Children; Caps being headwear; Children's headwear; Graphic T-shirts; Hooded sweatshirts; Short-sleeved or long-sleeved t-shirts; Visors being headwear

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 012 for Bicycle frames; Bicycle frames and bicycle handlebar grips; Bicycle grip tape; Bicycle handlebar grips; Bicycle parts, namely, tubes and connectors for bicycle frames; Bicycle tires; Bicycle tyres; Bicycle wheel rims; Bicycle wheels; Bicycles; Motorcycle tires; Handlebar grips for bicycles; Inner tubes; Inner tubes for bicycle tires; Inner tubes for bicycle tyres; Inner tubes for bicycles; Inner tubes for motorcycle tires; Mountain bicycles; Parts of motorcycles, namely, handle bar grips; Pumps for bicycle tires; Pumps for bicycle tyres; Rims for bicycle wheels; Tires for children's bicycles; Tubeless tires for bicycles; Tubeless tyres for bicycles; Wheels for bicycles, cycles
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: Bicycle frames; Bicycle frames and bicycle handlebar grips; Bicycle grip tape; Bicycle handlebar grips; Bicycle parts, namely, tubes and connectors for bicycle frames; Bicycle tires; Bicycle tyres; Bicycle wheel rims; Bicycle wheels; Bicycles; Motorcycle tires; Handlebar grips for bicycles; Inner tubes; Inner tubes for bicycle tires; Inner tubes for bicycle tyres; Inner tubes for bicycles; Mountain bicycles; Inner tubes for motorcycle tires; Pumps for bicycle tires; Pumps for bicycle tyres; Parts of motorcycles, namely, handle bar grips; Rims for bicycle wheels; Tires for children's bicycles; Tubeless tires for bicycles; Tubeless tyres for bicycles; Wheels for bicycles; Wheels for bicycles, cyclesClass 012 for Bicycle frames; Bicycle frames and bicycle handlebar grips; Bicycle grip tape; Bicycle handlebar grips; Bicycle parts, namely, tubes and connectors for bicycle frames; Bicycle tires; Bicycle tyres; Bicycle wheel rims; Bicycle wheels; Bicycles; Handlebar grips for bicycles; Inner tubes; Inner tubes for bicycle tires; Inner tubes for bicycle tyres; Inner tubes for bicycles; Mountain bicycles; Pumps for bicycle tires; Pumps for bicycle tyres; Rims for bicycle wheels; Tires for children's bicycles; Tubeless tires for bicycles; Tubeless tyres for bicycles; Wheels for bicycles
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.

ATTORNEY ADDRESS
Applicant proposes to amend the following:
Proposed:
VICTORIA NEWLAND of LAW OFFICES OF VICTORIA NEWLAND, having an address of
3460 MARRON RD, STE 103-356 OCEANSIDE, California 92056
United States
VICTORIA@VNEWLANDLAW.COM
7602166440


CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
SCOTT HULTGREN
PO BOX 230290
ENCINITAS
California
US
92023

Proposed:
VICTORIA NEWLAND of LAW OFFICES OF VICTORIA NEWLAND, having an address of
3460 MARRON RD, STE 103-356 OCEANSIDE, California 92056
United States
VICTORIA@VNEWLANDLAW.COM
7602166440



ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use CYCLES apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /VN/     Date: 04/15/2019
Signatory's Name: VICTORIA NEWLAND
Signatory's Position: ATTORNEY, CALIFORNIA BAR MEMBER

Signatory's Phone Number: 7602166440

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.

Mailing Address:    VICTORIA NEWLAND
   LAW OFFICES OF VICTORIA NEWLAND
   3460 MARRON RD, STE 103-356
   OCEANSIDE, California 92056
        
Serial Number: 88170130
Internet Transmission Date: Mon Apr 15 19:06:53 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019041519065315
1180-88170130-6206185bbbfca304afe9f2bdff
0daf9d33873e6cba3deedb9b85f7ca2da739243-
N/A-N/A-20190415185430200960