| 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 1822 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88199246 |
| LAW OFFICE ASSIGNED | LAW OFFICE 109 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88199246/mark.png |
| LITERAL ELEMENT | PATRIOT |
| 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. |
| PENDING SERIAL NUMBER(S) | |
| ARGUMENT(S) | |
|
RESPONSE TO SUSPENSION NOTICE
This responds to the Suspension Notice mailed February 24, 2019. Applicant Nufarm Americas Inc. (“Applicant”) responds as follows. POTENTIAL SECTION 2(d) REFUSAL The Examining Attorney issued a refusal of registration of Applicant’s PATRIOT mark. The Examining Attorney’s refusal of registration was based on an alleged likelihood of confusion with the U.S. Serial No. 88/114346 for the mark PATRIOT (“Cited Mark”), whose filing date preceded applicant’s filing date. However, since the Suspension Notice issued, U.S. Serial No. 88/114346 registered on April 9, 2019, and is now identified by U.S. Registration No. 5722306. In this case, discussion and analysis of the traditional likelihood of confusion factors is unnecessary because Applicant and Bayer HealthCare LLC (“Bayer”), the owner of the Cited Mark, have entered into a Trademark Consent to Register and Coexistence Agreement (“Agreement”) regarding one another’s use and registration of the PATRIOT marks. A copy of the fully executed Agreement by Applicant and Bayer is attached to this Response, as Exhibit A. Applicant and Bayer’s Executed Agreement Applicant’s and Bayer’s Agreement is compelling evidence that their respective uses of the PATRIOT marks are not likely to cause consumer confusion. The Agreement sets forth detailed reasons why there is no likelihood of confusion between Applicant’s and Bayer’s respective marks. Moreover, the Agreement identifies specific, detailed steps that Applicant and Bayer have agreed to undertake to limit and avoid any confusion between their respective marks. The judgment of those most familiar with the marketplace and the circumstances of use, and with the greatest interest in preventing confusion, tips the scales in favor of allowing Applicant’s Mark to register on the Principal Register. See In re E. I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 568 (C.C.P.A. 1973). Indeed, the Du Pont Court counseled that a “mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it will not.” Id. (emphasis in original). Id. The Agreement entered into by the Applicant and Bayer is not a mere "naked" consent, but rather is a fully reasoned and supported agreement, coupled with clear and specific undertakings by both the Applicant and Bayer to take steps to resolve any confusion that may occur in the future. As noted at TMEP 1207.01(d)(viii), the Federal Circuit has established that consent agreements are entitled to “great weight,” and that unless the other factors clearly dictate a finding of a likelihood of confusion, the Patent and Trademark Office should not substitute its own judgment for those most concerned with the matter. See Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ3d 1305 (Fed.Cir. 1988) and other cases cited therein. The Examining Attorney should likewise give Applicant’s and Bayer’s executed Agreement “great weight” and “should not interpose his or her own judgment concerning likelihood of confusion.” See TMEP 1207.01(d)(viii). Consequently, the Agreement clearly supports registration of Applicant’s PATRIOT Mark. Conclusion: For all of the foregoing reasons, the Applicant’s Mark is entitled to registration on the Principal Register. Accordingly, Applicant requests that the likelihood of confusion refusal be withdrawn. If any questions remain, the Examining Attorney is invited to contact the undersigned at (913) 647-9050 to resolve the same. It is believed that no fees are due in connection with this application. If any such fees are deemed necessary, the undersigned authorizes that they be charged to Deposit Account No. 19-0522. Respectfully submitted, Dianne M. Smith-Misemer Hovey Williams LLP Attorney for Applicant |
|
| ARGUMENT FILE NAME(S) | |
| ORIGINAL PDF FILE | PE_23228143250-120059888_._PATRIOT_51738-US_Executed_Coexistance_Agreement_1343622-1.PDF |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\881\992\88199246\xml4\RSI0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\881\992\88199246\xml4\RSI0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\992\88199246\xml4\RSI0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\992\88199246\xml4\RSI0005.JPG | |
| The referenced serial number(s) 88114346 has/have now registered. I am requesting removal of this application from suspension, for consideration by the examining attorney of the issue of likelihood of confusion under Section 2(d). | |
| ATTORNEY SECTION (current) | |
| NAME | Dianne M. Smith-Misemer |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | HOVEY WILLIAMS LLP |
| STREET | 10801 MASTIN BLVD., SUITE 1000 |
| CITY | OVERLAND PARK |
| STATE | Kansas |
| COUNTRY | US |
| PHONE | 913-647-9050 |
| FAX | 913-647-9057 |
| tmdocketing.misemer@hoveywilliams.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 51738/5182 |
| OTHER APPOINTED ATTORNEY | Dianne M. Smith-Misemer |
| ATTORNEY SECTION (proposed) | |
| NAME | Dianne M. Smith-Misemer |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | HOVEY WILLIAMS LLP |
| STREET | 10801 MASTIN BLVD., SUITE 1000 |
| CITY | OVERLAND PARK |
| STATE | Kansas |
| POSTAL CODE | 66210 |
| COUNTRY | United States |
| PHONE | 913-647-9050 |
| FAX | 913-647-9057 |
| tmdocketing.misemer@hoveywilliams.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 51738/5182 |
| OTHER APPOINTED ATTORNEY | John M. Collins, Thomas B. Luebbering, Andrew G. Colombo, Scott R. Brown, Tracy L. Bornman, Michael B. Hurd, Joan O. Herman, Kameron D. Kelly, Gregory J. Skoch, Cheryl L. Burbach, Michael Elbein, Randall W. Schwartz, Crissa A. Cook, Matthew Walters, Paul J. Walker, Chad Kyle, Stephen Huggins, Kyle Mendenhall, C. Blair Barbieri, Chris Dawson, Darin McCollum, and Chandler E. Schmidt |
| CORRESPONDENCE SECTION (current) | |
| NAME | DIANNE M. SMITH-MISEMER |
| FIRM NAME | HOVEY WILLIAMS LLP |
| STREET | 10801 MASTIN BLVD., SUITE 1000 |
| CITY | OVERLAND PARK |
| STATE | Kansas |
| COUNTRY | US |
| PHONE | 913-647-9050 |
| FAX | 913-647-9057 |
| tmdocketing.misemer@hoveywilliams.com; rnichols@hoveywilliams.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 51738/5182 |
| OTHER APPOINTED ATTORNEY | Dianne M. Smith-Misemer |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Dianne M. Smith-Misemer |
| FIRM NAME | HOVEY WILLIAMS LLP |
| STREET | 10801 MASTIN BLVD., SUITE 1000 |
| CITY | OVERLAND PARK |
| STATE | Kansas |
| POSTAL CODE | 66210 |
| COUNTRY | United States |
| PHONE | 913-647-9050 |
| FAX | 913-647-9057 |
| tmdocketing.misemer@hoveywilliams.com; rnichols@hoveywilliams.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 51738/5182 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /dsmisemer/ |
| SIGNATORY'S NAME | Dianne M. Smith-Misemer |
| SIGNATORY'S POSITION | Attorney for Applicant |
| SIGNATORY'S PHONE NUMBER | 9136479050 |
| DATE SIGNED | 08/28/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Aug 28 12:56:26 EDT 2019 |
| TEAS STAMP | USPTO/RSI-XX.XXX.XXX.XXX- 20190828125626652035-8819 9246-610abdcb81a73de2bb76 19b4e4214b451e2f8efa967dd be6688ca6e4c4577a88-N/A-N /A-20190828120059888261 |
| 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 1822 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
RESPONSE TO SUSPENSION NOTICE
This responds to the Suspension Notice mailed February 24, 2019. Applicant Nufarm Americas Inc. (“Applicant”) responds as follows.
POTENTIAL SECTION 2(d) REFUSAL
The Examining Attorney issued a refusal of registration of Applicant’s PATRIOT mark. The Examining Attorney’s refusal of registration was based on an alleged likelihood of confusion with the U.S. Serial No. 88/114346 for the mark PATRIOT (“Cited Mark”), whose filing date preceded applicant’s filing date. However, since the Suspension Notice issued, U.S. Serial No. 88/114346 registered on April 9, 2019, and is now identified by U.S. Registration No. 5722306.
In this case, discussion and analysis of the traditional likelihood of confusion factors is unnecessary because Applicant and Bayer HealthCare LLC (“Bayer”), the owner of the Cited Mark, have entered into a Trademark Consent to Register and Coexistence Agreement (“Agreement”) regarding one another’s use and registration of the PATRIOT marks. A copy of the fully executed Agreement by Applicant and Bayer is attached to this Response, as Exhibit A.
Applicant and Bayer’s Executed Agreement
Applicant’s and Bayer’s Agreement is compelling evidence that their respective uses of the PATRIOT marks are not likely to cause consumer confusion. The Agreement sets forth detailed reasons why there is no likelihood of confusion between Applicant’s and Bayer’s respective marks. Moreover, the Agreement identifies specific, detailed steps that Applicant and Bayer have agreed to undertake to limit and avoid any confusion between their respective marks.
The judgment of those most familiar with the marketplace and the circumstances of use, and with the greatest interest in preventing confusion, tips the scales in favor of allowing Applicant’s Mark to register on the Principal Register. See In re E. I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 568 (C.C.P.A. 1973). Indeed, the Du Pont Court counseled that a “mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it will not.” Id. (emphasis in original). Id.
The Agreement entered into by the Applicant and Bayer is not a mere "naked" consent, but rather is a fully reasoned and supported agreement, coupled with clear and specific undertakings by both the Applicant and Bayer to take steps to resolve any confusion that may occur in the future. As noted at TMEP 1207.01(d)(viii), the Federal Circuit has established that consent agreements are entitled to “great weight,” and that unless the other factors clearly dictate a finding of a likelihood of confusion, the Patent and Trademark Office should not substitute its own judgment for those most concerned with the matter. See Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ3d 1305 (Fed.Cir. 1988) and other cases cited therein. The Examining Attorney should likewise give Applicant’s and Bayer’s executed Agreement “great weight” and “should not interpose his or her own judgment concerning likelihood of confusion.” See TMEP 1207.01(d)(viii). Consequently, the Agreement clearly supports registration of Applicant’s PATRIOT Mark.
Conclusion:
For all of the foregoing reasons, the Applicant’s Mark is entitled to registration on the Principal Register. Accordingly, Applicant requests that the likelihood of confusion refusal be withdrawn. If any questions remain, the Examining Attorney is invited to contact the undersigned at (913) 647-9050 to resolve the same. It is believed that no fees are due in connection with this application. If any such fees are deemed necessary, the undersigned authorizes that they be charged to Deposit Account No. 19-0522.
Respectfully submitted,
Dianne M. Smith-Misemer
Hovey Williams LLP
Attorney for Applicant
