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. 88173087 TULIP(Standard Characters, see http://uspto.report/TM/88173087/mark.png) has been amended as follows:

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

            In response to the Office Action of December 22, 2018 (the “Office Action”), Maison Battat Inc. (hereinafter “Applicant”) respectfully requests reconsideration of the above-referenced Application seeking registration of the mark TULIP, Serial No. 88/173,087 for “toy animals” in International Class 28 (hereinafter the “Mark” or “Applicant’s Mark”) in view of the following Remarks.

REMARKS

The Examining Attorney initially refused registration of the Mark because of a purported likelihood of consumer confusion with the prior registered mark, “TULP with design,” Registration No. 4,463,582 for “ball-jointed dolls; ball-jointed porcelain dolls; ball-jointed resin dolls; ball-jointed vinyl dolls; bean bag dolls; bobble head dolls; bobblehead dolls; bodhidharma dolls with pupils undrawn (menashi-daruma); Christmas dolls; clothes for European dolls; clothes for Japanese traditional dolls; doll accessories; doll cases; doll clothing; doll costumes; doll furniture; doll house furnishings; doll houses; dolls; dolls and accessories therefor; dolls and doll accessories, namely, clothing for dolls, doll rooms, doll beds, doll houses, toy fabrics and linens for dolls and strollers for dolls; dolls and dolls' clothing; dolls and playsets therefor; dolls for Christmas; dolls for playing; dolls in sitting posture (osuwari dolls); dolls' clothes; dolls' feeding bottles; dolls' houses; dolls' rooms; European style dolls; furniture for doll's houses; furniture for dolls' houses; girls' festival dolls and their fittings; headgear for dolls; paper dolls; playsets for dolls; plush dolls; plush dolls created from children's drawings; porcelain dolls; rag dolls; shoes for dolls; soft sculpture dolls; talking dolls; vinyl dolls” in International Class 28 (hereinafter the “Cited TULP Registration”) pursuant to Trademark Act §2(d), 15 U.S.C. §1052(d).  Registration of the Mark was also refused because of prior pending Application Serial No. 86/519,406, for the mark TULIPOP which registered on April 9, 2019 in several classes, including in International Class 28 for “toys, namely, stuffed toys, plush toys, modeled plastic toy figurines; jigsaw puzzles” (hereinafter the “Cited TULIPOP Registration”). The Cited TULP Registration and the Cited TULIPOP Registration are hereinafter referred to as the “Cited Registrations.”  They are the basis for the rejection of the mark based on likelihood of consumer confusion but, actually, the two Registered Marks are the basis for a determination of the absence of likelihood of consumer confusion.  The fact that those two marks can co-exist without likelihood of consumer confusion dictates a conclusion of the absence of confusion when Applicant’s applied for mark is sought for registration as the goods and the marks are distinct and consumer will recognize the differences. 

            In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. (BNA) 563 (C.C.P.A. 1973) provides a useful guide for determining the factors for a determination of a likelihood of confusion under the Trademark Act §2(d); 15 U.S.C. §1052(d).  From the opinion, which sets forth a number of factors to be considered, the following are believed highly relevant to the current application and marks under review:

• The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression;

• The relatedness of the goods as described in an application or registration or in connection with which a prior mark is in use;

• The number and nature of similar marks in use on similar goods; and

• The level of fame associated with the prior mark (sales, advertising, etc.).

 

 

A.        The Marks Are Dissimilar.

Applicant respectfully submits that the Examining Attorney has not considered – as is required – clear and pronounced visual, auditory and connotative differences of the marks at issue. 

The Cited TULP Registration

From a visual standpoint, the mark of this Registration and that of Applicant are clearly different. It should be noted that the word designations are not even the same, TULIP vs. TULP.  They will be pronounced and considered quite differently.  The Cited TULP Registration has no penultimate “I” which is present in Applicant’s Mark. This distinction is huge and changes the visual representation of the marks, the pronunciation and connotation. Additionally, Applicant’s Mark is a standard character mark without claim to any particular font, design, style, size, or color.  Whereas, the Cited TULP Registration mark consists of the word ‘TULP’ with the letter ‘T’ in lavender, the letters ‘U’ and ‘P’ in green, and the letter ‘L’ in pink.  Between the letters ‘T’ and ‘U’ is a stylized flower design consisting of a blue bud and a green stem with two green leaves. The overall mark including the integrated logo in the Cited TULP Registration has a different look, sound and especially connotation from Applicant’s single term TULIP mark. Accordingly, there is little doubt that the marks are visually distinct.  It is well settled that when a composite mark includes both words and a design, the design element cannot be ignored in assessing a likelihood of confusion.  In re Electrolyte Laboratories, Inc., 16 U.S.P.Q.2d (BNA) 1239, 1240 (Fed. Cir. 1990) (emphasis added). When encountering the Cited TULP Registration, the distinctive “odd” word and the design are most likely to be impressed upon the mind of a purchaser and remembered.  On the contrary, the applied-for Mark TULIP is in standard character form with no other distinguishing features.  Consumers know how to pronounce it, what it means, and it is distinct from TULP with design.  It is well settled that when a mark includes stylization, this stylization cannot be ignored in assessing a likelihood of confusion.  In re Electrolyte Laboratories, Inc. 16 U.S.P.Q.2d 1239, 1240 (Fed. Cir. 1990).  Indeed, the stylization is likely to dominate if it is more conspicuous to the purchasing public.  See Association of Co-operative Members, Inc. v. Farmland Indus. Inc., 684 F.2d 1134, 1142-1143 (5^th Cir. 1982).  Thus, here, Applicant’s Mark is easily distinguishable from the Cited TULP Registration-in look, sound, number of syllables, meaning and connotation.    

For instance in In re Electrolyte Labs, Inc. 16 U.S.P.Q.2d 1239 (Fed. Cir. 1990), applicant there applied to register the mark K+ (Stylized) in connection with a dietary supplement. Applicant’s mark consisted of a large “K+” written in bubble lettering inside a square.  The Examiner refused registration on the grounds that applicant’s mark was likely to be confused with a registration for K+EFF that was written in large, black capital letters, and which was registered in connection with a potassium and chloride supplement.  Id.  The Trademark Trial and Appeal Board (“the Board”) affirmed the Examiner’s decision holding that confusion was likely since consumers would say “K-plus” and “K-plus-eff” when calling for the products. 

In reversing the Board’s decision, the Court of Appeals for the Federal Circuit (the “Federal Circuit”) held that the Board erroneously focused on the K+ common elements in both marks to the exclusion of, among other things, the design element in applicant’s mark.  As the Federal Circuit explained, “the nature of stylized letter marks is that they partake of both visual and oral indicia, and both must be weighed in the context in which they occur” (citations omitted, emphasis added).  Id. at 1240.  Accordingly “the spoken or vocalizable element of a design mark, taken without the design, need not itself serve to distinguish the goods.” Id.  As the Federal Circuit stated “a design is viewed, not spoken, and a stylized letter design cannot be treated simply as a word mark.” Id.  Viewed as a whole, the Federal Circuit thus found that the two marks were readily distinguishable due to the design element in applicant’s mark which was a “significant feature thereof” and the addition of “EFF” in registrant’s mark. Id. See also Hewlett-Packard Company v Human Performance Measurement, Inc. 23 U.S.P.Q.2d 1390 (T.T.A.B. 1991) (no likelihood of confusion between “HPM” and design and “HP” for medical products since the design elements of applicant’s mark, which included a horizontal bar graph superimposed on a profile of a human face enclosed within a square-shaped block, were “significant features of applicant’s mark which [were] at least as prominent as, if not more prominent than, the letters “HPM”); Omaha National Bank v. Citibank, 633 F. Supp.231 (D. Neb. 1986) (no likelihood of confusion between plaintiff’s registration which consisted of the words BANK IN A BILLFOLD with a border design resembling that on paper currency and its house mark with defendant’s use of the words BANK IN A WALLET alone, the court stating that “[d]efendant’s designations are mere words while plaintiff’s composite mark is a combination of words and design”).  Here, the stylization is the most conspicuous feature of the Cited TULP Registration and clearly distinguishes it from the applied-for word-only Mark.  Coupled with the fact that the marks to do not share the same terms, syllables, meaning, nor sound and the Cited TULP Registration contains significant design features, the Cited TULP Registration should be withdrawn from further consideration and reliance by the Examiner.  The Cited TULP mark and the applied-for Mark are easily concluded to be not likely to cause consumer confusion. 

Regarding sound, Applicant’s Mark is TULIP- two syllables and representative of a girl’s name and pronounced TU-LIP (emphasis on the first syllable).  See Exhibit A. Registrant’s mark is, in contrast, TULP with a design- one syllable, likely pronounced as TULP and with stress on the ending “P.” Moreover, the fact that the Mark, TULIP, can be spoken aloud in its entirety, while the Cited TULP Registration contains significant non-verbal design elements, is yet another distinguishing factor that must be considered in assessing a likelihood of confusion. In light of these striking differences, Applicant respectfully submits that when considered in their entireties, the sound of the applied-for Mark differs from the sound of the Cited TULP Registration. This factor should also weigh heavily in favor of a conclusion of no likelihood of confusion. 

 

 

The Cited TULIPOP Registration

Similarly, the Cited TULIPOP Registration is also noticeably visually, number of syllables, meaning, connotation and aurally different from Applicant’s Mark, TULIP.

It is well-settled that, when determining likelihood of confusion, the Examiner should assess the mark as a whole (both the applied-for Mark and the Cited TULIPOP Registration) and not focus on a single aspect of either mark.  This is the “anti-dissection” rule.  See 4 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:41 at 23-227 (4th ed. 2015) (“A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion.  It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important”).  Marks are compared in their entireties for similarities in appearance, sound, connotation and commercial impression.  In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1358, 1362 (C.C.P.A. 1973). 

To begin, Applicant’s applied-for Mark is TULIP, and Registrant’s mark is, in contrast, TULIPOP. As discussed above, a mark should not be dissected. Nonetheless, the Examining Attorney has split the Cited TULIPOP Registration into two component parts and compared only the shared part with Applicant’s Mark to make an objection based on alleged likelihood of confusion, yet ignoring the –POP aspect of this cited Registration. This is improper. The marks at issue are distinct.  Even if improperly “dissected,” a single overlapping sound or even a word is not grounds for rejection, even for identical goods, as explained above, citing The Murray Corp. of America v. Red Spot Paint and Varnish Co., Inc., 126 U.S.P.Q. 390 (T.T.A.B. 1960), especially where the other word/component of the mark is so distinctive as to provide a different connotation, meaning, and look/sound. That is exactly the case here. Assessed as a whole, Applicant’s Mark is markedly different from the Cited TULIPOP Registration.

As suggested above, the marks also do not sound the same. Applicant’s Mark, TULIP, is simple, two syllables, and representative of a girl’s name and is pronounced TU-LIP. See Exhibit A. TULIPOP, on the other hand, has a totally different sound, is three-syllables, is coined and/or fictional, represents nothing or, more probably, a sort of ingestible popsicle as it is pronounced TULI-POP. These factors should weigh heavily in favor of a conclusion of no likelihood of confusion as to the sound nor look of the respective marks.  Additionally, the meaning of the applied-for Mark is quite distinct. TULIP, as used in connection with toy animals represents or is intended to refer to both the trademark and to provide a mental connection to a single soft, beautiful flora-like item, in this case, the distinct name of a female toy animal.  Whereas, the Cited TULIPOP Registration immediately invokes the meaning of a frozen edible article.  This impression is not present in the applied-for Mark. The Cited TULIPOP Registration is used by its owner in connection with an invented universe. “Tulipop is a wondrous island in the middle of two seas, governed by three moons. It was created when a magical underwater volcano erupted many lifetimes ago, the lava formed the island that evolved into the beautiful place that is Tulipop.” See Exhibit B.  Accordingly, the distinct word TULIPOP, the different pronunciation and most considerably, Registrant’s make believe animated world creates a significantly different commercial impression when used in connection with Registrant’s goods and supports a finding of no likelihood of confusion with the Applicant’s goods, entirely distinct, when sold under its applied-for Mark, TULIP.

 

 

B.        The Goods Are Dissimilar

The goods associated with the applied-for Mark are distinct from those associated with the Cited Registrations. As held by the Federal Circuit, where two marks are used on goods that are different, and sold to different, discriminating customers, there is no likelihood of confusion even if the marks are identical. Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 718 (Fed. Cir. 1992) (citing Dynamics Research Corp. v. Langenau Mfg. Co., 704 F.2d 1575, 217 U.S.P.Q. 649 (Fed. Cir. 1983)) (emphasis added). Here, the goods are different, distinct and the marks are different, too.  Applicant has applied to register its mark TULIP for use in connection with toy animals. The owner of the Cited TULP Registration sells a variety of dolls and doll accessories under the mark TULP such being described by Registrant as ball-jointed dolls, bean bag dolls, bobble head dolls, doll cases, doll costumes, dolls for Christmas, European style dolls and other similar dolls. The owner of the Cited TULIPOP Registration sells “toys, namely, stuffed toys, plush toys, modeled plastic toy figurines; jigsaw puzzles.” It should be noted that Registrants do not list nor identify their goods as being associated with the sale of toy animals. With respect to the Cited TULP Registration, the Examiner states that “[t]he applicant’s toy animals are closely related to the registrant’s dolls and accessories therefor as these goods move in the same toy channels of trade, are encountered by the same purchasers and are intended for use by the same consumers.” This is not dispositive of the likelihood of confusion inquiry because parents, even more so their children, have usually done their “research” on what type of product they want to play with and what toy they want their parent to purchase. Children, while not consumers in the sense of making final payment decisions, are very knowledgeable about branded products – they see the toys in the stores, they see them on television, on play dates, etc.  And, of course, parents are very knowledgeable about the type of products they will be buying for their children or others as gifts.  There is a huge difference between buying dolls or toys based on an animated world and a toy animal named TULIP.  Accordingly, both consumers of Applicant’s TULIP toy animals and Registrant’s dolls or toys based on an animated world would be highly knowledgeable about the product they want to purchase, and thus very discriminating purchasers, as opposed to ordinary quick purchasers of socks, plastic cutlery, and/or pencils, for example.  It has been proven that children constitute the most lucrative market there is for many businesses:

“They [children] are a current market that spends $4.2 billion a year of their own money on their own desires. In this sense children are viewed as having needs, having money to spend on items that satisfy their needs, and having a willingness to spend money. Entire industries - such as producers of candy, gum, frozen desserts, soft drinks, toys, comic books, records and cassettes - treat children as a current market.”

 

“Today’s kids have more autonomy and decision-making power within the family than in previous generations, so it follows that kids are vocal about what they want their parents to buy. “Pester power” refers to children’s ability to nag their parents into purchasing items they may not otherwise buy. Marketing to children is all about creating pester power, because advertisers know what a powerful force it can be.” See Exhibit C.

 

Therefore, it is highly unlikely that such a large segment of consumers, children, especially those directing, even manipulating their parents, would mistakenly believe that Applicant’s TULIP toy animals sold under its distinct name would emanate from and/or are otherwise associated with the Registrants and their goods, under TULP or TULIPOP, respectively. This additional factor weighs heavily in favor of a conclusion of no likelihood of confusion. 

 

C.        The Number and Nature of Similar Marks in Use on Similar Goods.

The following non-exhaustive list below demonstrates that the U.S. Patent and Trademark Office has allowed and registered marks that include TULIP as a standalone mark but also coupled with other terms, all also in Class 28.  Thus, minor differences in the marks are entitled to weight on the issue of absence of likelihood of consumer confusion:     

Trademark	Serial No./ Reg. No.	Relevant Goods
TULIP	Reg. No. 2,274,101	Fishing rod holder
TULIP	Reg. No. 3,913,374	Hobby craft dyeing kits; Tie dye Kits; spray dye kits; hemp dye kits; batik dye kits; tie dye kits for groups; spray dye kits for groups; all comprised primarily of dyes, color fixers, latex gloves and rubber bands
TULIP ONE-STEP	Reg. No. 3,974,735	Hobby craft kits for tie-dye comprised primarily of dyes, mixing bottles, color fixers, latex gloves and rubber bands, specifically for dying clothing, fabrics and textiles
TULIP ONE-STEP MINI TIE-DYE KIT	Reg. No. 4,926,687	Hobby craft kit for making tie-dye projects comprising dyes, mixing bottles, color fixers, latex gloves, and rubber bands
TULIP WIND SPINNER	Reg. No. 5,582,544	Decorative wind spinners

 

               And, of course, the mere fact that the Examiner has relied on two Registrations, with the marks TULP with design and TULIPOP, to reject the present application means that those marks are not entitled to any great scope of protection as they co-exist with one another and are similar, for more related goods. 

 Registration Certificates and TSDR Printouts for the marks referenced above are attached hereto as Exhibit D.  Widely used terms in the same class as the applied-for mark have limited protection in terms of preventing others from using similar variations and, therefore, the Cited TULP with design and TULIPOP Registrations should not be accorded wide breadth of protection, especially when distinctions can be drawn based upon appearance, sound, syllables and the goods that are provided under the respective marks. Although the decisions of prior Examining Attorneys are not binding in subsequent applications, consistency in examination has been recognized as a goal of the US Trademark Office. In re Nett Designs, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Rodale, Inc., 80 USPQ2d 1696 (TTAB 2006). Applicant submits this same justification extends to allow registration of Applicant’s distinct Mark for different goods.

 

D.        The Absence of Evidence Demonstrating Fame and/or Notoriety Associated with the Cited Registration

 

            In this particular instance, the Examining Attorney has submitted no evidence demonstrating that the Cited TULP Registration has acquired any level of fame and/or notoriety such that the ordinary purchaser would immediately believe that Applicant’s goods marketed under the TULIP mark actually emanate from and/or are otherwise associated with the owner of the Cited Registration for TULP.  Specifically, the record is devoid of any evidence in the nature of sales/profits and advertising. This additional factor also weighs heavily against a finding of likely confusion.

In sum, an analysis of the relevant du Pont factors strongly leads to the conclusion that Applicant’s intended use of its Mark on or in connection with its goods will not likely lead to confusion, mistake or deception with the Cited Registrations among prospective consumers.  The subject marks differ on many levels, namely, those pertaining to overall sight, sound, syllables, look, meaning, cadence, and as now explained, different meaning and commercial impression.  Moreover, the goods offered in connection with the marks are distinct and the numerous third party co-existing registrations for marks incorporating similar elements are additional factors that weigh against a finding of likely confusion.  Therefore, in light of all cumulative factors, it is respectfully requested that the §2(d) objection with respect to the Cited Registrations be withdrawn.

 

CONCLUSION  

In view of submission of the aforesaid Remarks responsive to the issues raised in the Office Action, Applicant believes that the instant Application is in a present condition for publication.  Favorable action is therefore solicited and believed to be fully warranted.

Should there be any remaining questions or comments, or if there are any additional issues that can be resolved through an Examiner’s Amendment, the Examining Attorney is encouraged to telephone the attorney of record for a likely quick resolution of the same.

EVIDENCE
Evidence in the nature of Exhibits A through D has been attached.
Original PDF file:
evi_389416710-20190621122926715980_._Exhibit_A.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_389416710-20190621122926715980_._Exhibit_B.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_389416710-20190621122926715980_._Exhibit_C.pdf
Converted PDF file(s) ( 10 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Original PDF file:
evi_389416710-20190621122926715980_._Exhibit_D.pdf
Converted PDF file(s) ( 24 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
Evidence-14
Evidence-15
Evidence-16
Evidence-17
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Evidence-24

SIGNATURE(S)
Response Signature
Signature: /Andrew S. Langsam/     Date: 06/21/2019
Signatory's Name: Andrew S. Langsam
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: (212) 326-0180

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: 88173087
Internet Transmission Date: Fri Jun 21 12:34:45 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20190621123445027
727-88173087-620997a6b51209ee9a6cb84de6f
5cca7781605018e8344f6c16df212c34679cdcd-
N/A-N/A-20190621122926715980