| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88218408 |
| LAW OFFICE ASSIGNED | LAW OFFICE 116 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88218408/mark.png |
| LITERAL ELEMENT | SPG |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
At the outset, Applicant notes that Reg. No. 4,213,461 appears to have been cancelled by the office on April 26, 2019, for failure of the registrant to timely file a § 8 affidavit or declaration. As such, Applicant respectfully submits that no further response is required with respect to this cited registration, and Applicant further respectfully requests reconsideration and withdrawal of the refusal to extent that the same is supported by the cancelled registration. In light of this position, the remainder of Applicant’s argument in response will be directed to Reg. No. 2,421,383 as the “cited registration,” “registrant’s mark,” or the like. Turning to the remaining cited registration, it is first noted that registrant’s mark presents the literal element SPG in a highly stylized format and incorporated in a distinctive design wherein the stylized SPG lettering is shown embossed atop a square block casting a prominent shadow. Applicant’s mark, on the other hand, presents the literal element SPG in a block style spanning over the front of a very prominent globe design. The marks, taken in their respective entireties, are clearly quite distinctive one to the other, and would be readily distinguishable by the relevant consuming public. The marks each create a memorable, and very different, commercial impression. To be sure, the highly stylized and contrasting nature of the respective letter-design logos clearly precludes any likelihood of confusion, as has been recognized for decades as the general case for such marks. See, e.g. Diamond Alkali Co. v. Dundee Cement Co., 343 F.2d 781 (C.C.P.A. 1965), and progeny. Reconsideration and withdrawal of the refusal is therefore respectfully requested. |
|
| ATTORNEY SECTION (current) | |
| NAME | Wayne J. Colton |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | WAYNE J. COLTON, INC. |
| STREET | 405 N SAINT MARYS ST STE 900 |
| CITY | SAN ANTONIO |
| STATE | Texas |
| POSTAL CODE | 78205-2326 |
| COUNTRY | US |
| PHONE | 210-222-8455 |
| FAX | (210) 222-8445 |
| colton@wjci.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 1488.2140 |
| ATTORNEY SECTION (proposed) | |
| NAME | Wayne J. Colton |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | WAYNE J. COLTON, INC. |
| STREET | 405 N SAINT MARYS ST STE 900 |
| CITY | SAN ANTONIO |
| STATE | Texas |
| POSTAL CODE | 78205-2326 |
| COUNTRY | United States |
| PHONE | 210-222-8455 |
| FAX | (210) 222-8445 |
| colton@wjci.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 1488.2140 |
| CORRESPONDENCE SECTION (current) | |
| NAME | WAYNE J. COLTON |
| FIRM NAME | WAYNE J. COLTON, INC. |
| STREET | 405 N SAINT MARYS ST STE 900 |
| CITY | SAN ANTONIO |
| STATE | Texas |
| POSTAL CODE | 78205-2326 |
| COUNTRY | US |
| PHONE | 210-222-8455 |
| FAX | (210) 222-8445 |
| colton@wjci.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 1488.2140 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Wayne J. Colton |
| FIRM NAME | WAYNE J. COLTON, INC. |
| STREET | 405 N SAINT MARYS ST STE 900 |
| CITY | SAN ANTONIO |
| STATE | Texas |
| POSTAL CODE | 78205-2326 |
| COUNTRY | United States |
| PHONE | 210-222-8455 |
| FAX | (210) 222-8445 |
| colton@wjci.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 1488.2140 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Wayne J. Colton, Attorney for Applicant/ |
| SIGNATORY'S NAME | Wayne J. Colton |
| SIGNATORY'S POSITION | Attorney for Applicant |
| SIGNATORY'S PHONE NUMBER | (210) 222-8455 |
| DATE SIGNED | 09/11/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Sep 11 23:55:26 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XX.XX-20 190911235526162192-882184 08-610c610565fda59624e6e4 279775d6260433c51ff826b3b 967ae1521c27fd4d9-N/A-N/A -20190911235125123057 |
| 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) |
At the outset, Applicant notes that Reg. No. 4,213,461 appears to have been cancelled by the office on April 26, 2019, for failure of the registrant to timely file a § 8 affidavit or declaration. As such, Applicant respectfully submits that no further response is required with respect to this cited registration, and Applicant further respectfully requests reconsideration and withdrawal of the refusal to extent that the same is supported by the cancelled registration. In light of this position, the remainder of Applicant’s argument in response will be directed to Reg. No. 2,421,383 as the “cited registration,” “registrant’s mark,” or the like.
Turning to the remaining cited registration, it is first noted that registrant’s mark presents the literal element SPG in a highly stylized format and incorporated in a distinctive design wherein the stylized SPG lettering is shown embossed atop a square block casting a prominent shadow. Applicant’s mark, on the other hand, presents the literal element SPG in a block style spanning over the front of a very prominent globe design. The marks, taken in their respective entireties, are clearly quite distinctive one to the other, and would be readily distinguishable by the relevant consuming public.
The marks each create a memorable, and very different, commercial impression. To be sure, the highly stylized and contrasting nature of the respective letter-design logos clearly precludes any likelihood of confusion, as has been recognized for decades as the general case for such marks. See, e.g. Diamond Alkali Co. v. Dundee Cement Co., 343 F.2d 781 (C.C.P.A. 1965), and progeny. Reconsideration and withdrawal of the refusal is therefore respectfully requested.