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. 88205650 MAKE HAPPY(Standard Characters, see http://uspto.report/TM/88205650/mark.png) has been amended as follows:

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

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE Law Office: 107 ) ) Trademark Attorney: Jimmy Stein ) ) Applicant: Ann Williams Group LLC ) ) Serial No.: 88/205,650 ) ) Filed: November 26, 2018 ) ) For: MAKE HAPPY ) ________________________________________________ ) RESPONSE TO OFFICE ACTION This is a full and timely response to the Non-Final Office Action dated February 26, 2019, issued in connection with the above-referenced trademark application. The undersigned attorney respectfully presents the following arguments for review and consideration regarding the present rejections under 15 U.S.C. ?1052(d). More particularly, the present application (?650 Application) is currently under a Section 2(d) rejection based upon U.S. Registration No. 4918931 (?931 Registration) owned by Kipling Apparel Corp. I. LIKELIHOOD OF CONFUSION UNDER 15 U.S.C 1052(d) ?The PTO may refuse to register a trademark if it so resembles a previously registered mark ?as to be likely to cause confusion or to cause mistake, or to deceive.? On-Line Careline, Inc. v. America Online, Inc., 228 F.3d 1080, 1084, 56 U.S.P.Q.2d 1471 (Fed. Cir. 2000) citing 15 U.S.C. ? 1052(d) (1999). The CAFC?s predecessor, in In re E.I. DuPont DeNemours & Co., enumerated thirteen factors to be considered in determining whether such a likelihood of confusion exists. See In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973). However, ?[t]he determination of a likelihood of confusion does not require examination and findings as to each and every DuPont factor.? Bose Corp. v. QSC Audio Prods., Inc., 292 F.3d 1367, 1372 (Fed. Cir. 2002). ?Rather, different DuPont factors may play dominant roles in determining likelihood of confusion depending on the evidence in each case.? Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 352, 22 U.S.P.Q.2d 1453 (Fed. Cir. 1992); See also In re Dixie Rests, Inc., 105 F.3d 1405, 1406, 41 U.S.P.Q.2d 1531 (Fed. Cir. 1997) (?[N]ot all of the DuPont factors are relevant or of similar weight in every case.?) In the instant matter, we look to two (2) of the DuPont factors being relevant, and these factors together, weigh heavily in favor of a finding that the refusal to register under Section 2(d) is improper. Specifically, the following DuPont factors are perhaps most determinative in this matter: (i) the similarity of the nature of the goods and (ii) the sophistication of consumers and relevant channels of trade. DuPont, 476 F.2d at 1361. Each of these DuPont factors is interrelated on this record and will be addressed and described below. i. The Similarity of the Nature of the Goods The first relevant DuPont factor looks to the nature of the goods/services. In comparing the parties? goods and services, it should be considered whether ?the respective products are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.? Coach Services, Inc.v. Triumph Learing LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (citing 7-eleven Inc. v. Wexhsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). When assessing this factor and looking to the goods and services, this factor requires a comparison between the goods or services described in the application and those described in the registration. M2 Software Inc., v. M2 Communications, 450 F.3d 1378, 78 USPQ2d 1944 at 1382 (noting that, when reviewing the relatedness of the goods, this court considers ?the applicant's goods as set forth in its application, and the opposer's goods as set forth in its registration?). In this instance the Applicants goods at issue for the ?650 Application as applied-for read: ?Hobby project craft kits for children and adults comprising of one or more of the following items, namely, bags, tote bags, purses, wallets and leather straps? The goods as listed in the ?650 Application should then be compared to the goods as listed in the ?931 Registration: ?Retail store services featuring bags and related accessories; online retail store services and mail order retail services featuring bags and related accessories.? When looking to the degree of similarity needed to support confusion, we must look to the goods and services at issue in both the Application and cited Registration. If we do that in this case there is no overlap in the recited goods and services. The Applicant offers Hobby Craft Kits containing specified items, whereas the Registrant offers retail store services, therefore there can be no direct overlap. Essentially, the Applicant offers craft kits which contain certain items necessary to make the intended craft. Those items may not be the end products, but items used to make the end products. As another point, the goods and services have to be found to be related based on substantial evidence. In In re Coors Brewing Company., 343 F.3d 1340 (Fed. Cir. 2003) the Court held that the Board erred in concluding that restaurant services and beer are related. In this case, Coors Brewing Company sought to register the mark ?Blue Moon? and design for beer. The Examining Attorney refused the mark citing to another mark for ?Blue Moon? and design for restaurant services stating that the goods and services were related. Comparable to the matter before us, in Coors, the Examining Attorney cited to third party evidence that allegedly shows the relatedness of the services. The focus is whether or not the consumer would believe the products and services to originate from the same source. The Board in Coors, cited to Jacobs v. International Multifoods Corp., 668 F.2d 1234, 1236 (CCPA 1982) that held that ?the fact that restaurants serve food and beverages is not enough to render food and beverages related to restaurant services for purposes of determining the likelihood of confusion.? The Court goes onto say ?[t]o establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and for restaurant services.? Id. (emphasis added). The finding that the services are related must be supported by substantial evidence. Evidence showing that some companies make or offer both services and a few articles of the same, does not support the conclusion that consumers are likely to conclude that these different services emanate from the same source. The facts in Coors can be compared to those presented in this current case. Any sparse evidence showing that some companies could offer both services is not significant to show relatedness. The fact that there is certain overlap in a relatively small area of the goods and services is not enough to show the relatedness of the goods and services given there are just as many companies that only sell one or the other. The consumer looking for the Applicant?s goods and services versus the consumer looking for the goods and services of the cited application are two different and distinct consumers. For the foregoing reasons, Applicant respectfully submits that the level of discrimination of the consumers of these products dictates that the likelihood of confusion is further reduced, thus requiring withdrawal of the present rejections under Section 2(d). ii. The Sophistication Of Consumers And Relevant Channels Of Trade The second relevant DuPont factor assesses the conditions under which and buyers to whom sales are made. ?There is always less likelihood of confusion where goods are expensive and purchased after careful consideration.? Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 220 U.S.P.Q. 786, 790 (1st Cir. 1983). ?If the goods or services are relatively expensive, more care is taken and buyers are less likely to be confused as to the source or affiliation.? 4 McCarthy on Trademarks and Unfair Competition ? 23:95 (4th ed. 2007); See also Pignons S.A. de Mechanique v. Polaroid Corp., 212 U.S.P.Q. 246, 252 (1st Cir. 1981) (?Purchaser sophistication is important and often dispositive because sophisticated consumers may be expected to exercise greater care.?) The purchasing conditions for Applicant?s goods, in comparison to goods set forth in the cited ?931 registration, commands discrimination and studied selectivity by the relevant purchaser. In this case, the nature of the discriminating consumer of the goods at issue further bolsters the conclusion that no likelihood of confusion exists. Courts and the TTAB have routinely held that the type of sophisticated purchaser who will be involved in the purchase of Registrants? and Applicant?s corresponding highly expensive goods exercises a greater degree of care in entering into purchase transactions or where the consumer exercises an increased degree of care where the purchaser has a ?reasonably focused need? or ?specific purpose? involving the relevant goods or services. Hayden Switch & Instrument v. Rexnord, Inc., 4 USPQ2d 1510 (D. Conn. 1987) See, e.g., Washington National Insurance Co. v. Blue Cross and Blue Shield United of Wisconsin, 772 F.Supp. 472 (N.D. Ill. 1990); see also Societe Anonyme de la Grande Distillerie E. Cusenier Fils Aine & Cie. v. Julius Wile Sons & Co., Inc., 161 F.Supp. 545, 547-48 (D.N.Y. 1958) (stating that ?the selection and purchase of a creme de menthe cordial generally involves an exercise of personal taste and purchasers of such liqueurs are apt to buy with a greater degree of sophistication and care than might be true in their purchase of other merchandise. Such a consideration is always relevant in appraising the likelihood of confusion.?); G.H. Mumm & Cie v. Desnoes & Geddes Ltd., 917 F.2d 1292, 1295 (Fed. Cir. 1990) (?Mumm markets its product as a premium good: the purchaser of Mumm champagne can be presumed to be in the market for an upscale item for consumption and to have a reasonably focused need. Desnoes does not market its product as a premium good. These differences weigh against a holding of a likelihood of confusion.?). In the present case, it is submitted that consumers of the products offered by Applicant or the Registrant(s) seek to transact business with each party based on or to satisfy a specific need or purpose for specific goods, heightening the degree of care that each consumer exercises; additionally, given the cost, consumers are likely to comparison shop, another factor cited as creating a heightened degree of care and corresponding reduction in the likelihood of confusion. In addition, consumers seeking out products from the Applicant know and understand that these products can only be found certain retail locations such as Michaels, Target, Joanne, etc. as well as on the Applicants? website. The Applicants? products are relatively inexpensive and intended for the consumer looking to do craft projects. The consumer for the Registrants? services is a consumer specifically looking for a bag or accessory for a bag and going to a particular website (which doesn?t even use the mark). It should be noted in fact, that the Registrant doesn?t even use the mark as trademark in that it is only represented on one page of their specimen and not used as a domain name or even a tagline. It is quite obvious, that the consumer may not even know that the Registrants? mark is being used as a trademark. Applicant respectfully submits that this distinction is highly relevant in regards to the distinct class of purchasers sold to and marketing channels utilized by the Applicant and the cited Registrants. In contrast to the normal ordinary purchaser that would be purchasing standard products, consumers who purchase relatively expensive goods or services such as the products offered by the Registrants, which are specific in the nature of the goods exemplified by Registrants? mark , relative to those consumers who are fashion conscious and representative of the revival of the city, are often seen as ?discriminating purchasers? who are less likely to be confused in looking at products with similar marks. 4 MCCARTHY 24:96. As stated by the Federal Circuit, ?[i]n making purchasing decisions regarding ?expensive? goods, the reasonably prudent person standard is elevated to the standard of the ?discriminating purchaser.?? Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 1548 (Fed. Cir. 1990). The consumer most likely to purchase the registrants goods will not be confused as to the origin of a product. This consumer is highly educated and well informed. They know exactly where their purchase can be made therefore leaving no room for any issue of confusion. Thus, a consumer is unlikely to see, or come into contact with, the Applicant?s products in the same location as the Registrants? goods, and thus the conditions under which sales occur are unlikely to produce confusion. Indeed, this is especially true in this case concerning the ?931 registration where the products are craft products. The consumer for Applicant?s goods will not be looking for these goods where Registrants? services are offered, nor will the consumer for the Registrant?s goods be looking for Registrants? merchandise in the arena where the Applicant?s goods are sold. For the foregoing reasons, Applicant respectfully submits that the level of discrimination of the consumers of these products dictates that the likelihood of confusion is further reduced, thus requiring withdrawal of the present rejections under Section 2(d). CONCLUSION Applicant respectfully requests that the outstanding rejections be reconsidered in light of the remarks above and that the mark be allowed to pass to publication. If the Examining Attorney intends to maintain the present objections, then prior to issuing another action, the undersigned attorney courteously requests a personal hearing to attempt to resolve, or at least narrow, any remaining issues. If further questions should arise, or if the Examining Attorney wishes to discuss this application in more detail, he is courteously requested to telephone the undersigned attorney at (248) 292-2920. Respectfully submitted, Date: August 26, 2019 By: /Rebecca L. Wilson/ Rebecca L Wilson The Dobrusin Law Firm PC 29 W. Lawrence Street, Suite 210 Pontiac, MI 48342 (248) 292-2920

The applicant's current attorney information: Rebecca L. Wilson. Rebecca L. Wilson of THE DOBRUSIN LAW FIRM, PC, is located at

      SUITE 210
      29 WEST LAWRENCE STREET
      PONTIAC, Michigan 48342
      US
The docket/reference number is 1300.051US.

The phone number is 248-292-2920.

The fax number is 248-292-2910.

The email address is tmmail@patentco.com

The applicants proposed attorney information: Rebecca L. Wilson. Rebecca L. Wilson of THE DOBRUSIN LAW FIRM, PC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 210
      29 WEST LAWRENCE STREET
      PONTIAC, Michigan 48342
      United States
The docket/reference number is 1300.051US.

The phone number is 248-292-2920.

The fax number is 248-292-2910.

The email address is tmmail@patentco.com

Rebecca L. Wilson submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: REBECCA L. WILSON. REBECCA L. WILSON of THE DOBRUSIN LAW FIRM, PC, is located at

      SUITE 210
      29 WEST LAWRENCE STREET
      PONTIAC, Michigan 48342
      US
The docket/reference number is 1300.051US.

The phone number is 248-292-2920.

The fax number is 248-292-2910.

The email address is tmmail@patentco.com

The applicants proposed correspondence information: Rebecca L. Wilson. Rebecca L. Wilson of THE DOBRUSIN LAW FIRM, PC, is located at

      SUITE 210
      29 WEST LAWRENCE STREET
      PONTIAC, Michigan 48342
      United States
The docket/reference number is 1300.051US.

The phone number is 248-292-2920.

The fax number is 248-292-2910.

The email address is tmmail@patentco.com

SIGNATURE(S)
Response Signature
Signature: /Rebecca L. Wilson/     Date: 08/26/2019
Signatory's Name: Rebecca L. Wilson
Signatory's Position: Attorney of Record Michigan Bar Member

Signatory's Phone Number: 2482922920

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:    REBECCA L. WILSON
   THE DOBRUSIN LAW FIRM, PC
   SUITE 210
   29 WEST LAWRENCE STREET
   PONTIAC, Michigan 48342
Mailing Address:    Rebecca L. Wilson
   THE DOBRUSIN LAW FIRM, PC
   SUITE 210
   29 WEST LAWRENCE STREET
   PONTIAC, Michigan 48342
        
Serial Number: 88205650
Internet Transmission Date: Mon Aug 26 21:10:44 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201908262110444
32801-88205650-610d34901d0151a85b13f4e97
513c1a736736b48c081256d327e2badcea86-N/A
-N/A-20190826210748715968