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. 88215101 NOW(Standard Characters, see http://uspto.report/TM/88215101/mark.png) has been amended as follows:

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

Dear Ms. Oputa,

This firm represents Carissa Kranz ("Applicant"). We have reviewed the United States Patent and Trademark Office ("USPTO") Office Action in connection with the Applicant's trademark application for the mark NOW in Class 025, USPTO Serial No. 88215101, for clothing (the "Mark"). In the Office Action, as the trademark examining attorney for this application ("Examiner") you preliminarily refused registration of Applicant’s Mark "because of a likelihood of confusion with the registered mark NOW for watches, Registration No. 1446294 the "Cited Mark").

Applicant respectfully requests reconsideration of the Examiner’s 2(d) refusal in view of the following remarks, and Applicant desires to amend the description of goods as requested by Examiner.

I. LIKELIHOOD OF CONFUSION

A. Refusal Under Section 2(d): The Law on Likelihood of Confusion.

Likelihood of confusion is said to be synonymous with "probable confusion" – it is not sufficient if confusion is merely "possible." American Steel Foundries v. Robertson, 269 U.S. 372 (1926); Eastern Wine Corp. v. Winslow-Warren Ltd, 137 F.2d 955 (2d Cir. 1943), Cert. Denied, 320 U.S. 758 (1943); Sears Roebuck & Co. v. Allstate's Life Insurance Company, 246 F.2d 161 (5th Cir. 1957), Cert. Denied, 355 U.S. 894 (1957); HMH Publishing Co. v. Brincat, 504 F.2d 713 (9th Cir. 1974) (Mere possibility that public will be confused with respect to registrant's sponsorship of another's products marketed under registrant's trademark without registrant's approval is not enough to allow registrant to recover under Lanham Trade-Mark Act; there must exist a likelihood that confusion will result. Lanham Trade-Mark Act, § 32(1), 15 U.S.C.A. § 1114(1).)

The overriding concern when performing the "likelihood of confusion analysis" is to prevent buyer confusion as to the source. Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 U.S.P.Q. 698 (N.D. Ga. 1980). Moreover, the subject marks must be considered in the way that they are perceived. See, In Re National Data Corp., 753 F.2d 1056, 1058-59 (Fed. Cir. 1985). Marks tend to be perceived in their entireties, and all components thereof must be given appropriate weight. See, Opryland USA, Inc. v. Great American Music Show, Inc., 970 F.2d 847, 851 (Fed. Cir. 1992).

The factors used to test for likelihood of confusion are set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Not all of the DuPont factors may be relevant or of equal weight in a given case, and "any one of these factors may control a particular case." In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07 (Fed. Cir. 1997).

B. Amendment of Identification of Goods

Applicant’s initial identification of goods included clothing, shoes.

Applicant would like to amend the description of goods to include as follows:

"Clothing, namely, shirts, shorts, pants, jackets, headwear namely caps, dresses, skirts, coats, pajamas, and shoes.

C. The relatedness of the goods/services

In the Office Action, the Examiner refused registration of Applicant's mark under Section 2(d) of the Trademark Act, in view of the Cited Mark.

There are numerous cases of more similar marks having been held not to give rise to a likelihood of confusion, even when applied to related or even identical goods or services. See, Omaha Nat’l Bank v. Citibank (South Dakota), N.A., 633 F. Supp. 231, 229 U.S.P.Q. 51 (D. Neb. 1986) (BANK IN A BILLFOLD not confusingly similar to BANK IN A WALLET although both are for credit card services); Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1330, 50 U.S.P.Q.2d 1161 (Fed. Cir. 1999) (no likelihood of confusion between MAGNIVISION and MAGNADOT although both are for eyeglasses); Glamorene Prods. v. Earl Grissmer, 203 U.S.P.Q. 1090 (T.T.A.B. 1979) (no likelihood of confusion between SPRAY ‘N VAC and RINSENVAC although both are for vacuum rug cleaners). See also, Taj Mahal Enterprises, Ltd. V. Trump, 745 F.Supp. 240, 16 U.S.P.Q. 2D 1577 (D.NJ 1990) (TAJ MAHAL for an Indian Restaurant v. TAJ MAHAL for a casino-hotel). In Taj Mahal, and in the other above cited cases for that matter, similar marks for related goods or services were held to have no likelihood of confusion.

The USPTO) has previously permitted registrations of marks that are both visually and aurally similar for jewelry products and clothing products. Below are examples in which marks that are highly undistinguishable in appearance, but fall within different classifications of goods, were permitted registration, without objection. Copies of USPTO status reports on these registrations have been attached for your reference as Exhibit A.

1. ROMAN (U.S. Reg. No. 2,363,727) – International Class 014: "Jewelry". Registrant: Roman & Sunstone LLC.

2. ROMAN FASHIONS (U.S. Reg. No. 1,504,802) – International Class 014: "pendants, necklaces, bracelets, charms, rings, earrings and pins of non-precious metals." Registrant: Roman & Sunstone LLC.

AND

1. ROMANO (U.S. Reg. No. 4,228,284) – International Class 018: "Leather and imitations of leather; and goods made of these materials and not included in other classes, namely, leather straps; garment bags for travel, beauty-cases, namely, cosmetic cases sold empty; backpacks, school bags; sporting bags, traveling bags, handbags, purses, attaché cases, briefcases, shopping bags and suitcases with wheels attached, wallets, pocket wallets, change purses, leatherware key cases, calling card cases, credit card cases, name card cases, business card cases, passport and document wallets, cases and holders of cosmetic articles, namely, cosmetic cases sold empty; cases for manicure sets sold empty; jewelry rolls, umbrellas, parasols" and International Class 025: Clothing, namely, jeans, trousers, shirts, t-shirts, sweats, namely, sweat pants and sweat shirts; skirts, socks, stockings, jackets, coats, shorts, blouses, sweaters; shawls; baby clothes, namely, t-shirts, infant trousers, jeans, shirts, skirts, socks, stockings, jackets, coats, shorts, blouses; rainwear and warm-up suits; ski-wear; undergarments; footwear, namely, shoes, sports shoes, boots, headgear, namely, hats, caps; leather belts." Registrant: Kacam Beheer B.V.

2. ROMAN (U.S. Reg. No. 2,022,874) – International Class 018: "leather goods, namely, wallets, keycases and waist bags." Registrant: Shin's Trading Co.

In the instant matter, Examiner includes screenshots of very large and institutional brands such as Adidas, Kate Spade, and Michael Kors to state that sell clothing, shoes and watches establishes that the same entity commonly produces the relevant goods under the same mark. However, as the cases above point out, the USPTO has allowed similar and identical marks to co-exist when one mark pertains to clothing, and the other pertains to watches, or jewelry or bags. In addition, large national brands such as BANANA REPUBLIC, THE GAP and OLD NAVY do not sell watches. Please see Exhibits B, C and D attached hereto. It is not automatic or standard that clothing centric brands sell watches.

Conclusion: As the 9th Circuit Court of Appeals stated in HMH Publishing Co. v. Brincat above, mere possibility that public will be confused with respect to registrant's sponsorship of another's products marketed under registrant's trademark without registrant's approval is not enough to allow registrant to recover under Lanham Trade-Mark Act; there must exist a likelihood that confusion will result. [Emphasis added]. In the instant matter, Applicant respectfully states that a mere possibility of confusion is not enough and that there is not a likelihood of confusion. Applicant respectfully requests examiner to allow Applicant’s application to proceed to publication.

EVIDENCE
Evidence in the nature of Screen shots of web pages of national clothing brands that do not sell watches has been attached.
Original PDF file:
evi_767911150-20190912191222053322_._Exhibit_A_for_the_NOW_applications.pdf
Converted PDF file(s) ( 15 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
Original PDF file:
evi_767911150-20190912191222053322_._Exhibit_B_Banana_Republic_no_watches.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_767911150-20190912191222053322_._Exhibit_C_THE_GAP_no_watches.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_767911150-20190912191222053322_._Exhibit_D_OLD_NAVY_no_watcghes.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Clothing, shoes
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: Clothing, shoes; Clothing, namely, shirts, shorts, pants, jackets, headwear namely caps, dresses, skirts, coats, pajamas, and shoesClass 025 for Clothing, namely, shirts, shorts, pants, jackets, headwear namely caps, dresses, skirts, coats, pajamas, and shoes
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.

The applicant's current attorney information: David Hochman. David Hochman of WOLF, RIFKIN, SHAPIRO, SCHULMAN & RABKIN, LLP, is located at

      11400 W. OLYMPIC BLVD. 9TH FLOOR
      LOS ANGELES, California 90064
      US
The docket/reference number is 21907-002.

The phone number is 310-478-4100.

The fax number is 310-479-1422.

The email address is dhochman@wrslawyers.com

The applicants proposed attorney information: David Hochman. Other appointed attorneys are Joseph Petro, Jay-Jay Lord, Yonah Dror. David Hochman of WOLF, RIFKIN, SHAPIRO, SCHULMAN & RABKIN, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      11400 W. OLYMPIC BLVD. 9TH FLOOR
      LOS ANGELES, California 90064
      United States
The docket/reference number is 21907-002.

The phone number is 310-478-4100.

The fax number is 310-479-1422.

The email address is dhochman@wrslawyers.com

David Hochman 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: DAVID HOCHMAN. DAVID HOCHMAN of WOLF, RIFKIN, SHAPIRO, SCHULMAN & RABKIN, LLP, is located at

      11400 W. OLYMPIC BLVD. 9TH FLOOR
      LOS ANGELES, California 90064
      US
The docket/reference number is 21907-002.

The phone number is 310-478-4100.

The fax number is 310-479-1422.

The email address is dhochman@wrslawyers.com

The applicants proposed correspondence information: David Hochman. David Hochman of WOLF, RIFKIN, SHAPIRO, SCHULMAN & RABKIN, LLP, is located at

      11400 W. OLYMPIC BLVD. 9TH FLOOR
      LOS ANGELES, California 90064
      United States
The docket/reference number is 21907-002.

The phone number is 310-478-4100.

The fax number is 310-479-1422.

The email address is dhochman@wrslawyers.com; patentandtrademarks@wrslawyers.com

SIGNATURE(S)
Response Signature
Signature: /David Hochman/     Date: 09/12/2019
Signatory's Name: David Hochman
Signatory's Position: Attorney of Record, California Bar member

Signatory's Phone Number: 310.478.4100

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:    DAVID HOCHMAN
   WOLF, RIFKIN, SHAPIRO, SCHULMAN & RABKIN, LLP
   
   11400 W. OLYMPIC BLVD. 9TH FLOOR
   LOS ANGELES, California 90064
Mailing Address:    David Hochman
   WOLF, RIFKIN, SHAPIRO, SCHULMAN & RABKIN, LLP
   11400 W. OLYMPIC BLVD. 9TH FLOOR
   LOS ANGELES, California 90064
        
Serial Number: 88215101
Internet Transmission Date: Thu Sep 12 19:19:24 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20190912191924299
017-88215101-610d9f856eb26b0145c533d2062
7abfc6440f737b802f295c9e9e2d0ff79f826-N/
A-N/A-20190912191222053322