| 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 | 88255042 |
| LAW OFFICE ASSIGNED | LAW OFFICE 125 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88255042/mark.png |
| LITERAL ELEMENT | TOOLBOX |
| 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. |
| ARGUMENT(S) | |
|
The United States Patent and Trademark Office (the “Office”) has initially refused registration of Applicant’s application to register the mark TOOLBOX for “spirits; wine” in Class 33 (the “Application”) under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), on the grounds that Applicant’s mark is confusingly similar to the registered mark TOOLBOX BREWING COMPANY SAN DIEGO, CALIFORNIA, registered for “Alcohol-free beers; Beer; Beer, ale, lager, stout and porter” in Class 33. Applicant respectfully disagrees and requests that the Office reconsider this statutory refusal and allow Applicant’s mark to proceed towards publication. Likelihood of confusion between two marks is determined in the Office by reviewing the relevant factors identified in In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973); see In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 U.S.P.Q.2d 1201 (Fed. Cir. 2003). Though the weight given to the relevant du Pont factors varies on a case-by-case basis, the two key considerations in any likelihood of confusion analysis are the similarity of the marks and the relatedness or similarity of the goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 U.S.P.Q. 24, 29 (C.C.P.A. 1976). In determining the similarity of the marks, the Office should compare the marks in their entireties as to appearance, sound, connotation, and commercial impression. See du Pont, 476 F.2d at 1361, 177 USPQ at 567. In comparing the marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation and internal quotation marks omitted). Even marks that are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties’ goods or services so that there is no likelihood of confusion.” TMEP § 1207.01(b)(v). The Office must provide evidence showing that Applicant’s goods and the goods offered under the cited registrations are related to support a finding of likelihood of confusion. See, e.g., In re White Rock Distilleries Inc., 92 U.S.P.Q.2d 1282, 1285 (T.T.A.B. 2009). In analyzing a likelihood of confusion, if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 101 U.S.P.Q.2d 1713, 1723, 668 F.3d 1356, 1371 (Fed. Cir. 2012) (emphasis added). The Office argues that “applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark”, and that TOOLBOX is the “more dominant element” of the registered mark. Applicant respectfully disagrees. Applicant’s mark TOOLBOX and the registered mark TOOLBOX BREWING COMPANY SAN DIEGO, CALIFORNIA create different overall commercial impressions such that confusion is unlikely. The registered mark is presented in a highly stylized form, with what are described as “drafting elements” incorporated into it. The mark also includes the wording “BREWING COMPANY, SAN DIEGO, CALIFORNIA”. While these terms are disclaimed, they remain important elements of the mark that cannot be overlooked when comparing it with Applicant’s mark. When properly compared, despite sharing the same initial term, the marks are different enough that consumers will be able to distinguish between them. In light of the foregoing, Applicant respectfully requests that the Office withdraw the refusal and allow the application to proceed toward publication. |
|
| ATTORNEY SECTION (current) | |
| NAME | Matthew Saunders |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | Saunders & Silverstein LLP |
| STREET | 14 Cedar Street Suite 224 |
| CITY | Amesbury |
| STATE | Massachusetts |
| POSTAL CODE | 01913 |
| COUNTRY | US |
| PHONE | 978-463-9100 |
| trademarks@sandsip.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 1257.401.22 |
| ATTORNEY SECTION (proposed) | |
| NAME | Matthew Saunders |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | Saunders & Silverstein LLP |
| STREET | 14 Cedar Street Suite 224 |
| CITY | Amesbury |
| STATE | Massachusetts |
| POSTAL CODE | 01913 |
| COUNTRY | United States |
| PHONE | 978-463-9100 |
| trademarks@sandsip.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 1257.401.22 |
| OTHER APPOINTED ATTORNEY | each of the attorneys of Saunders & Silverstein LLP |
| CORRESPONDENCE SECTION (current) | |
| NAME | Matthew Saunders |
| FIRM NAME | Saunders & Silverstein LLP |
| STREET | 14 Cedar Street Suite 224 |
| CITY | Amesbury |
| STATE | Massachusetts |
| POSTAL CODE | 01913 |
| COUNTRY | US |
| PHONE | 978-463-9100 |
| trademarks@sandsip.com; msaunders@sandsip.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 1257.401.22 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Matthew Saunders |
| FIRM NAME | Saunders & Silverstein LLP |
| STREET | 14 Cedar Street Suite 224 |
| CITY | Amesbury |
| STATE | Massachusetts |
| POSTAL CODE | 01913 |
| COUNTRY | United States |
| PHONE | 978-463-9100 |
| trademarks@sandsip.com; msaunders@sandsip.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 1257.401.22 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /matthew saunders/ |
| SIGNATORY'S NAME | Matthew Saunders |
| SIGNATORY'S POSITION | Attorney of record, MA/NH bar member |
| SIGNATORY'S PHONE NUMBER | 978-463-9100 |
| DATE SIGNED | 09/06/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Sep 06 13:32:01 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.X.XX.XXX-20 190906133201373266-882550 42-610555245acd37d03cbb8c 97eff7bcfe4d1aacc904a895e afb95603d8d86456-N/A-N/A- 20190906132840547212 |
| 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) |
The United States Patent and Trademark Office (the “Office”) has initially refused registration of Applicant’s application to register the mark TOOLBOX for “spirits; wine” in Class 33 (the “Application”) under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), on the grounds that Applicant’s mark is confusingly similar to the registered mark TOOLBOX BREWING COMPANY SAN DIEGO, CALIFORNIA, registered for “Alcohol-free beers; Beer; Beer, ale, lager, stout and porter” in Class 33. Applicant respectfully disagrees and requests that the Office reconsider this statutory refusal and allow Applicant’s mark to proceed towards publication.
Likelihood of confusion between two marks is determined in the Office by reviewing the relevant factors identified in In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973); see In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 U.S.P.Q.2d 1201 (Fed. Cir. 2003). Though the weight given to the relevant du Pont factors varies on a case-by-case basis, the two key considerations in any likelihood of confusion analysis are the similarity of the marks and the relatedness or similarity of the goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 U.S.P.Q. 24, 29 (C.C.P.A. 1976). In determining the similarity of the marks, the Office should compare the marks in their entireties as to appearance, sound, connotation, and commercial impression. See du Pont, 476 F.2d at 1361, 177 USPQ at 567. In comparing the marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation and internal quotation marks omitted).
Even marks that are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties’ goods or services so that there is no likelihood of confusion.” TMEP § 1207.01(b)(v). The Office must provide evidence showing that Applicant’s goods and the goods offered under the cited registrations are related to support a finding of likelihood of confusion. See, e.g., In re White Rock Distilleries Inc., 92 U.S.P.Q.2d 1282, 1285 (T.T.A.B. 2009). In analyzing a likelihood of confusion, if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 101 U.S.P.Q.2d 1713, 1723, 668 F.3d 1356, 1371 (Fed. Cir. 2012) (emphasis added).
The Office argues that “applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark”, and that TOOLBOX is the “more dominant element” of the registered mark. Applicant respectfully disagrees. Applicant’s mark TOOLBOX and the registered mark TOOLBOX BREWING COMPANY SAN DIEGO, CALIFORNIA create different overall commercial impressions such that confusion is unlikely. The registered mark is presented in a highly stylized form, with what are described as “drafting elements” incorporated into it. The mark also includes the wording “BREWING COMPANY, SAN DIEGO, CALIFORNIA”. While these terms are disclaimed, they remain important elements of the mark that cannot be overlooked when comparing it with Applicant’s mark. When properly compared, despite sharing the same initial term, the marks are different enough that consumers will be able to distinguish between them.
In light of the foregoing, Applicant respectfully requests that the Office withdraw the refusal and allow the application to proceed toward publication.