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)

---

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. 88221583 GOO GOO(Standard Characters, see http://uspto.report/TM/88221583/mark.png) has been amended as follows:

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

The Office Action has rejected the applied-for mark under section 2(d) because of an alleged likelihood of confusion. Furthermore, the applicant respectfully disagrees and submits that the applied for mark would not cause confusion with the cited mark. Likelihood of confusion under Section 2(d) is analyzed using the Du Pont factors, including the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; the purchasers of the goods i.e. impulse vs. careful, sophisticated purchasing; and the number and nature of similar marks in use on similar goods. In re E.I. du Pont de Nemours &Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). The test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks in their entireties create the same overall impression such that confusion is likely to result (see, for example, In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65 (Fed. Cir. 1988)). Applicant has a long history and has been using the mark on its candy since 1912. Applicant owns several registrations for the applied for mark in other classes, the earliest of which dates back to 1947: US 508,699 for ?GOO GOO? in class 30; US 4,943,491 for ?GOO GOO CLUSTER? in class 30; US 4,470,005 for ?GOO GOO? in class 30; US 4,470,005 for ?GOO GOO? in class 25; and US 5,735,020 for ?GOO GOO? in class 30. The subject mark, taken as a whole, is different phonetically and in appearance from the cited mark. Applicant?s long history and the registrations for its mark lend weight to the fact that the subject mark will not cause confusion for another mark, particularly considering the differences in both sound and appearance. For at least the reasons set forth above, Applicant respectfully requests withdrawal of the likelihood of confusion rejection.

EVIDENCE
Evidence has been attached: History of GOO GOO
Original PDF file:
evi_685315475-20201111193 041319149_._Goo_Goo_histo ry_cute.pdf
Converted PDF file(s) ( 12 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Standard Candy Company, LLC, a limited liability company legally organized under the laws of Tennessee, having an address of
      116 3rd Avenue South
      Nashville, Tennessee 37201
      United States

Proposed: Standard Candy Company, LLC, a limited liability company legally organized under the laws of Tennessee, having an address of
      116 3rd Avenue South
      Nashville, Tennessee 37201
      United States
      Email Address: XXXX

The owner's/holder's current attorney information: Emily A. Shouse. Emily A. Shouse of PATTERSON INTELLECTUAL PROPERTY LAW, PC, is located at

      1600 DIVISION STREET, SUITE 500
      NASHVILLE, Tennessee 37203
      United States
The docket/reference number is 11545-019981.
      The phone number is 615-242-2400.
      The fax number is 6152422221.
      The email address is docket@iplawgroup.com

The owner's/holder's proposed attorney information: Emily A. Shouse. Other appointed attorneys are Mark J. Patterson, Edward D. Lanquist, Jr., Lucian Wayne Beavers, John F. Triggs, Ryan D. Levy, Gary L. Montle, Scott M. Douglass, Jerry Turner Sewell, Grant M. Ford, Seth R. Ogden, William E. Sekyi, Mark A. Kilgore. Emily A. Shouse of PATTERSON INTELLECTUAL PROPERTY LAW, PC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1600 DIVISION STREET, SUITE 500
      NASHVILLE, Tennessee 37203
      United States
The docket/reference number is 11545-019981.
      The phone number is 615-242-2400.
      The fax number is 6152422221.
      The email address is docket@iplawgroup.com

Emily A. Shouse 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.Correspondence Information (current):
      EMILY A. SHOUSE
      PRIMARY EMAIL FOR CORRESPONDENCE: docket@iplawgroup.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): eas@iplawgroup.com

The docket/reference number is 11545-019981.
Correspondence Information (proposed):
      Emily A. Shouse
      PRIMARY EMAIL FOR CORRESPONDENCE: docket@iplawgroup.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): eas@iplawgroup.com

The docket/reference number is 11545-019981.

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: /emily a. shouse/     Date: 11/11/2020
Signatory's Name: Emily A. Shouse
Signatory's Position: Attorney of record

Signatory's Phone Number: 6152422400

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:    EMILY A. SHOUSE
   PATTERSON INTELLECTUAL PROPERTY LAW, PC
   
   1600 DIVISION STREET, SUITE 500
   NASHVILLE, Tennessee 37203
Mailing Address:    Emily A. Shouse
   PATTERSON INTELLECTUAL PROPERTY LAW, PC
   1600 DIVISION STREET, SUITE 500
   NASHVILLE, Tennessee 37203
        
Serial Number: 88221583
Internet Transmission Date: Wed Nov 11 19:45:22 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20201111194522841
068-88221583-7505299268eec0d33f3adcb995b
cf24c72dec21b78ce4acd329fd64b7c39674162-
N/A-N/A-20201111193041319149