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 09/30/2020)

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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 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88175361 DOLLY'S BABY BLUES(Standard Characters, see http://uspto.report/TM/88175361/mark.png) has been amended as follows:

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

I. REFUSAL OF REGISTRATION ? LIKELIHOOD OF CONFUSION The Examining Attorney has continued her refusal of registration of the mark DOLLY?S BABY BLUES (?Applicant?s Mark?) on the grounds that it is confusingly similar to Registration No. 4165139 for VENICE BABY BLUES BBQ with Design , owned by Baby Blues BBQ IP, LLC (the ?Cited Registration?) within the meaning of Section 2(d) of the Federal Trademark Act, as amended. The Examining Attorney contends that because the respective marks are ?similar? and because the services are related, regardless of the distinctive differences between the marks, confusion is likely. However, for the reasons discussed below, Applicant again respectfully requests that the Examining Attorney withdraw the refusal to register and allow the subject application to proceed to registration. Applicant?s Mark and the Cited Registration Are Dissimilar As noted above, one of the factors in evaluating a likelihood of confusion is the similarity or dissimilarity of the respective marks. Applicant?s mark is different than the Cited Registration. This conclusion is obvious given the overall distinctiveness of the respective marks, as discussed below. In determining whether a likelihood of confusion exists, ?the marks?must be viewed in their entireties.? Textronics v. Daktronics, 534 F.2d 915 (CCPA 1976). It is inappropriate to disregard one element of a mark, thereby de-emphasizing other components of the marks. In re the Hearst Corp., 982 F.2d 493, 494, 25 USPQ 1238 (Fed. Cir. 1992). That is, ?the marks must be considered in the way they are used and perceived.? Id. at 1239, citing In re National Data Corp., 753 F.2d 1056 (Fed. Cir. 1985). As the Hearst court stated, ?marks tend to be perceived in their entireties, and all components thereof must be given appropriate weight,? citing Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847 (Fed. Cir. 1992). Id. In the present case, the Examining Attorney has stressed only the shared component of the marks and not the differences, and has erroneously concluded that because the marks contain the terms ?baby? and ?blues? the marks are confusingly similar. Indeed, each portion of both Applicant?s and Registrant?s respective marks must be given appropriate weight in determining the overall appearance, sound, connotation and commercial impression elicited from the mark. When viewed as a whole, the marks are not likely to be confused. 1. The Visual Differences Between the Marks Renders Any Likelihood of Confusion Remote i. The Marks Contain Different Visual Elements and Are Distinguishable Applicant?s Mark DOLLY?S BABY BLUES is substantially different from the cited stylized design registration. While the Examining Attorney has stated that ?baby? and ?blues? are featured in both of the marks, and argues that because the marks contain the same dominant elements, that the marks are confusingly similar. Applicant respectfully disagrees. As seen above, the Registrant?s Mark has a distinctive color and design. Moreover, most consumers viewing the marks can easily distinguish between the respective marks through the differences, including the additional text. In fact, most consumers viewing the respective marks will not assume that the marks are related given their marked differences. Moreover, the marks have very different visual impressions elements, and therefore are not similar. 2. The Terms ?baby? and ?blues? Appear in Other Co-Existing Registrations for Goods Similar to The One Identified in the Cited Registration Applicant submits the co-existing applications and registrations previously cited in its earlier response and Registrations to show the coexistence of the mark and includes copies of such applications and registrations to be included in the record. This co-existence of the Cited Marks and others on the Federal Register evidences that the U.S. Patent and Trademark Office believes that consumers can and do distinguish between the sources of the services sold under the respective marks. In this regard, Applicant includes below an illustrative chart of various marks featuring the terms ?baby? and ?blues? for similar goods/services: MARK REGISTRATION NO. BABB BROS BBQ & BLUES 4393992 THE BLUES BBQ CO. 4939963 SWEET BABY RAY?S 5008119 GEORGIA BLUE 5175430 DOTTIE?S TRUE BLUE CAF? 5211874 BLUE J BAR & LOUNGE 5295980 BLUE?S 5474212 BIG BABY Q 5606915 PITTSBURGH BLUE STEAKHOUSE 5806834 IOU BBQ 5839004 BABY?S BURGERS 5936744 BLUES BOULEVARD JAZZ 5980872 BLUE BEAR 5993815 BLUE COLLAR 5995114 Attached as exhibits are the TESS printouts from the above mentioned trademark registrations. 3. Consumers that Purchase These Services Would Not Be Confused Diners are sophisticated and will know the difference between DOLLY?S BABY BLUES vs. the stylized . Even where two products or services are used by the same type of consumers in the same general area, the channels of trade can be sufficiently dissimilar. See Electronic Design & Sales v. Electronic Data Systems, 954 F.2d 713, 715 (Fed. Cir. 1992) (E.D.S. and EDS not confusingly similar where used with computer programming services and design of power supplies, respectively, even where both parties sold their goods or services to many of the same customers in the automotive, communications, and merchandising industries). Further, in In Hewlett- Packard Co. V. Human Performance Measurement, Inc., 23 U.S.P.Q.2d 1390, 1395, the T.T.A.B. held that the fact that both the parties sell their goods to hospitals, and thus share a common channel of trade, does not necessarily mandate a finding that the products are related and that confusion is likely. Therefore, even if the services may be encountered by the same consumers, that does not, by itself, establish similarity of trade channel or market overlap resulting in a likelihood of confusion. 4. Allegations of Potential Confusion are Theoretical and Not Grounds for Refusal to Register The possibility, either theoretical or de minimis that confusion may occur is not a sufficient basis for refusal to register Applicant?s Mark. Whitco Chem. Co. v. Whitfield Chem. Co., 418 F.2d 1403, 164 USPQ 43, 44-45 (CCPA 1969) (?Whitco?). Rather, a likelihood of confusion must exist. Id. While Applicant realizes that actual confusion is not necessary, Applicant notes that more than a mere theoretical possibility of confusion must be present. In Whitco, the Court stated: We are not concerned with the mere theoretical possibilities of confusion, deception or mistake or with the de minimis situations but with the practicalities of the commercial word, with which the trademark laws deal. In the present case, the possibility of confusion as to the source of the respective parties? services is merely theoretical or at most, de minimis. There is no proof that consumers will view Applicant?s Mark as being similar to the Cited Registration, and there is no proof that consumers will be actually confused by the respective uses of the marks. II. CONCLUSION In light of the foregoing comments and information, and having complied with all of the outstanding requirements of the Examining Attorney?s Office Action, Applicant respectfully requests that the Examining Attorney withdraw the Section 2(d) refusal and promptly pass the subject application to publication.

EVIDENCE
Evidence has been attached: Arguments in .pdf in case the text of the arguments is unclear. Copies of registrations showing co-existence of the cited marks.
Original PDF file:
evi_1-3810653100-20201023 220206776865_._DOLLY_S_BA BY_BLUES.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4
Original PDF file:
evi_2-3810653100-20201023 220206776865_._Registrati ons.pdf
Converted PDF file(s) ( 14 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14

ADDITIONAL STATEMENTS
Name(s), Portrait(s), Signature(s) of individual(s)
The name(s), portrait(s), and/or signature(s) shown in the mark identifies Dolly Parton, whose consent(s) to register is made of record.

Original PDF file:
consent-3810653100-220206 776_._Consent_to_Use_of_N ame.pdf
Converted PDF file(s) ( 1 page) Consent File1

Miscellaneous Statement
Domicile address has been updated using the change address form.

Correspondence Information (current):
      Willmore F. Holbrow III, Esq.
      PRIMARY EMAIL FOR CORRESPONDENCE: wholbrow@buchalter.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jgass@buchalter.com; ipdocket@buchalter.com

The docket/reference number is D6525.5015.
Correspondence Information (proposed):
      Willmore F. Holbrow III, Esq.
      PRIMARY EMAIL FOR CORRESPONDENCE: wholbrow@buchalter.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jgass@buchalter.com; ipdocket@buchalter.com

The docket/reference number is D6525.5015.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Willmore F. Holbrow III/     Date: 10/23/2020
Signatory's Name: Willmore F. Holbrow III
Signatory's Position: Attorney of Record, California bar member

Signatory's Phone Number: 213-891-0700

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Willmore F. Holbrow III, Esq.
   BUCHALTER
   SUITE 1500
   1000 WILSHIRE BOULEVARD
   LOS ANGELES, California 90017
Mailing Address:    Willmore F. Holbrow III, Esq.
   BUCHALTER
   SUITE 1500
   1000 WILSHIRE BOULEVARD
   LOS ANGELES, California 90017
        
Serial Number: 88175361
Internet Transmission Date: Fri Oct 23 22:46:34 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020102322463454
7112-88175361-75041d6ecfc9ad9c1e19ad225b
e89ebd665e5a497ed3ceb7d44af308c6bc388-N/
A-N/A-20201023220206776865