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. 88257353 HUNTRESS(Standard Characters, see http://uspto.report/TM/88257353/mark.png) has been amended as follows:

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

1. INTRODUCTION

                Examining Attorney has found a likelihood of confusion of Applicant’s mark for “shotguns and parts thereof” with Registration No. 5313964 for “archery bows for big game hunting sold at archery specialty stores.”  The Examining Attorney has also found the applied-for mark to be merely descriptive of the intended audience of Applicant’s goods.  Applicant respectfully traverses both grounds for refusal. 

2. ARGUMENTS AND EVIDENCE—2(d) REFUSAL FOR LIKELIHOOD OF CONFUSION

                In determining whether a likelihood of confusion exists, the fundamental inquiry goes to the cumulative effect of the differences between the marks and the goods at issue.  See Federated Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24, 29 (CCPA 1976).  In comparing the marks, they should not be dissected, but rather the total commercial impression of each mark in relation to the goods or services to which it is applied should be considered.  See Franklin Mint Corp. v. Master Mfg. Co., 212 USPQ 233 (CCPA 1981).  As discussed in more detail below, the HUNTRESS mark cited by the Examining Attorney is distinguishable from the Applicant’s HUNTRESS mark as set forth below.  

                1.         Similarity of the Marks.

                Applicant does not dispute that the applied for mark HUNTRESS is similar in appearance, sound, and commercial impression to the registered mark HUNTRESS. 

                2.         The Cited Marks Cover Appreciably Different Goods and Services.

                 The goods and services identified for the Registrant’s mark, “archery bows for big game hunting sold at archery specialty stores,” are appreciably different from those identified in the Applicant’s application, “shotguns and parts thereof.”  This difference in goods and services described in the application and registration are critical to the likelihood of confusion analysis.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307 (Fed. Cir. 2018) (“The relevant inquiry in an ex parte proceeding focuses on the goods and services described in the application and registration.”) (emphasis omitted).  The specificity with which the good and services are described in the registration relied upon by the Examining Attorney for her Section 2(d) refusal demonstrates that no likelihood of confusion exists between the Registrant’s mark and the Applicant’s mark.

                The Examining Attorney has cited websites that sell both firearms (including firearms other than shotguns) and archery bows as evidence that Applicant’s and Registrant’s goods have complementary uses and are related.  However, when goods are sold on the same website, and may be classified generally as weapons used for hunting game, that does not create a sufficient basis to conclude that the goods are related.  See In re White Rock Distilleries, Inc., 92 USPQ2d 1282, 2009 WL 3401827, at *3 (TTAB 2009) (recognizing that while wine and vodka may be generally described as alcoholic beverages, and both may be sold to those of legal drinking age, those similarities are not enough to establish the applicant’s and registrant’s goods are related); TMEP 1207.01(a)(iv).  In addition, the authority relied upon by the Examining Attorney in support of her complementary use argument is distinguishable. The Federal Circuit’s decision in In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567 (Fed. Cir. 1984) relied upon the fact that bread and cheese are often consumed together to support its finding of likelihood of confusion.  Similarly, the Trademark Trial and Appeal Board found that MRI devices and ultrasound devices may be used by the same personnel on the same patient to treat the same case in In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 2009 WL 18960509, at *5 (TTAB 2009).  While archery bows and shotguns may be used to hunt game, they are typically not used simultaneously, and in several jurisdictions, the practice of carrying firearms during archery season is prohibited.  See e.g. Exhibit A (4 Va. Admin. Code § 15-90-70(D)) and Exhibit B (Wash. Admin. Code § 220-414-070(1)(a)).    

                Further, there are several considerations that a consumer makes when purchasing a bow versus a firearm.  As illustrated in the evidence submitted by the Examining Attorney from modern-hunter.com, dnr.wi.gov, and police-one.com, hunters must consider the state and local laws on hunting, and this may determine what type of firearm can be used when.  In addition, the distance from which the hunter wants to shoot his prey, the ammunition used, the ability to make follow-up shots, and the type of prey being hunted are considerations when a hunter is choosing his weapon.  These considerations are also illustrated in the evidence cited by the Examining Attorney. This establishes that purchases of firearms and bows are made with care and deliberation and weighs against a likelihood of confusion between Applicant’s and Registrant’s goods.  See In re Thor Tech, Inc., 113 USPQ2d 1546, 2015 WL 496133, at *5 (TTAB 2015); TMEP 1207.01(d)(vii).    

                It is also critical to note that the Applicant’s goods pertain to shotguns, specifically, and that Registrant’s description of goods is limited to “big game hunting” as these two descriptions substantially limit the overlap seen between hunting with bows versus firearms.  Big game typically includes larger animals such as deer, elk, bears, and bighorn sheep. See Exhibits C (Nebraska Games and Parks definition of big game) and D (Idaho Fish and Game definition of big game). Shotguns are “designed to fire a number of pellets, or shot, that spread in a diverging pattern after they leave the muzzle.” See Exhibit E.  As a result, it is more likely to be used for hunting small game, like birds. See id. These characteristics of a shotgun also mean that the aim required for a shotgun is different from those weapons that fire a single shot, like a rifle or bow, and it is less likely to be used for big game like deer. See Exhibits F (article from www.americanhunter.org titled Shotgunning 101), and G (article from www.americanhunter.org titled How to Shoot a Bow).  Many examples of third-party evidence addressing the bow versus firearm debate focus on use of a bow versus a rifle, rather than a shotgun.  See e.g., Exhibit H (article from www.gunnewsdaily.com); Exhibit I (article from www.huntingintheusa.com); and Exhibit J (article from forgottenarchery.com).   This emphasis on rifles, rather than shotguns, is also evident in the articles cited by the Examining Attorney.  As between a rifle and a shotgun, a rifle is typically recommended for hunting big game.  See Exhibit K (article from www.dailyshooting.com).  Therefore, it is unlikely that a purchaser of the Registrant’s goods, which are specific to big game hunting, would be confused as to the source of the Applicant’s goods as they are more likely to be directed to smaller game, like birds. 

                Moreover, Registrant’s goods travel in different market channels than the Applicant’s goods.  Registrant’s mark is owned by Arcus Hunting, LLC, which is the parent company to Obsession Bows, the manufacturer of bow on which the HUNTRESS mark is used.  See Exhibits L (Arcus Hunting overview), M (Arcus Hunting description of Obsession Bows), and N (Obsession Bows webpage for Huntress bow).  Both Arcus Hunting, LLC and Obsession Bows make clear that their products are exclusive to bow hunting and archery equipment.  See id.; Exhibit O (Obsession Bows Facebook page).  The Registration is also limited to archery specialty stores.  Applicant, on the other hand, only sells firearms, and is not engaged in the manufacture and sale of bow hunting and archery equipment.  See Exhibit P (Taylor’s & Co. homepage) and Q (Taylor’s & Co. About Us).  Because the Registrant does not sell firearms, and the Applicant does not sell bow hunting and archery equipment, a reasonable consumer should not be confused as the source or sponsorship of Applicant’s and Registrant’s goods.  See TMEP 1207.01. 

                It is clear that an appreciable number of consumers are not likely to be confused, mistaken, or deceived into believing that goods sold under Applicant’s mark originate from the same source as, are associated with, or are sponsored by the products or services identified in the cited registration.  See Bottega Veneta v. Volume Shoe, 226 USPQ 964, 967 (TTAB 1985), citing McGregor-Doniger v. Drizzle, 202 USPQ 81, 86 (2d Cir. 1979).  Therefore, the refusal of Applicant’s mark should be withdrawn. 

3. ARGUMENTS AND EVIDENCE—SECTION 2(e)(1) REFUSAL FOR MERE DESCRIPTIVENESS

                Pursuant to TMEP 1209.01(b), “a mark is considered merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services.” Suggestive marks, on the other hand, “require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services” described.  See TMEP 1209.01(a).  Imagination, thought, or perception is required to reach a conclusion as to Applicant’s products. 

                The Examining Attorney argues that because “huntress” may be defined as a woman who hunts, the Applicant’s mark immediately conveys that the Applicant’s products “are intended for use by female hunters.”  The Examining Attorney reached this conclusion despite the fact that the shotgun products described in the application are not specific to female hunters, and when making a determination as to a mark’s descriptiveness, the mark must be considered “in relation to the particular goods or services for which the registration is sought.”  In re Planalytics, 70 USPQ2d 1453, 2004 WL 715031, at *1 (TTAB 2004). 

                Applicant is seeking registration of the mark HUNTRESS for “shotguns and parts thereof.”  Since filing its application, Applicant has started selling shotguns under the HUNTRESS mark. The promotion of its products under this mark indicate that the Applicant is not targeting females specifically for the product, and this evidence, as further described below, should be considered for purposes of a reversal of the Examining Attorney’s initial refusal for mere descriptiveness.  See In re Planalytics, 2004 WL 715031, at * 6 (“Information as to the exact nature of applicant’s services and how it promotes its services is often very helpful in evaluating whether the mark describes a feature or characteristic of the identified services.”). 

                The web page for the Huntress shotgun advertised by the Applicant makes no reference to gender-specific use of the product.  See Exhibit R (Taylor’s & Co. web page for Huntress shotgun).  In fact, the product description emphasizes that it is a product for “every shooter,” representing that “it’s a shotgun with the manageable shooting experience every shooter is on the hunt for,” and it “has every shooter falling in love when they handle it.”  See id.  Advertisements for the product on social media platforms such as Facebook and Instagram similarly do not promote that the product is only for women and the comments to these postings appear to be authored by men more than women.  See Exhibit S (Taylor’s & Co. June 24 Facebook post), T (Taylor’s & Co. June 27 Facebook post), and U (Taylor’s & Co. June 28 Instagram post).  

                The applied-for mark describes a person, and not the product itself.  Because the Applicant is selling its product to all persons, not just those who identify as female, it cannot be assumed that the use of term “huntress” in the mark illustrates that it is only intended for female hunters. In addition, the definition of “huntress” does not describe a firearm, let alone a shotgun.  See Levi Strauss and Co. v. The H.D. Lee Company, Inc., 130 USPQ 46, 1961 WL 7945, at *2 (TTAB 1961) (“The term ‘Westerner’ describes a person and not a product and purchasers of goods of the type manufactured by the parties will not assume because of the inclusion of such term as part of a composite mark that the clothes are intended for use only by a Westerner.”).  Because Applicant does not intend for its product to be sold only to females, but rather to all consumers looking to purchase a shotgun, the applied-for mark is not merely descriptive. 

                In addition, the applied-for mark “requires that one exercise imagination, thought or perception to reach a conclusion as to the product.” In re the Noble Co., 225 USPQ 749, 1985 WL 72017, at *1 (TTAB 1985); TMEP 1209.01(a).  Female hunters may use any number of products for hunting, not just shotguns.  In addition, searches for the term “huntress” on Google first populate with entries such as the DC Universe character Huntress, and this is also seen with searches for the term “huntress” on eBay.  See Exhibit V (Google search results), W (DC Universe profile for Huntress), and X (eBay search results).  Therefore, a reasonable consumer must exercise thought and perception from the Applicant’s mark to determine that the mark applies to shotguns for every shooter.  

4. CONCLUSION

                In view of the foregoing, Applicant submits that the Section 2(d) refusal and Section 2(e)(1) are inappropriate and should be withdrawn.  Applicant further submits that the application should be approved for publication of the mark. 

EVIDENCE
Evidence in the nature of Exhibits A-X cited in Arguments. has been attached.
Original PDF file:
evi_644114106-20191002155827687055_._Ex._A_-_4VAC15-90-70._Archery_Hunting_.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_644114106-20191002155827687055_._Ex._B_-_Washington_archery_rules.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._C_-_Nebraska_big_game_species.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._D_-_Idaho_game_species.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._E_-_Encyclopedia_britannica_shotgun.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_644114106-20191002155827687055_._Ex._F_-_American_Hunter_shotgunning_101.pdf
Converted PDF file(s) ( 5 pages)
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._G_-_American_hunter_how_to_shoot_a_bow.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._H_-_Gun_news_daily_new_hunters_rifle_or_bow.pdf
Converted PDF file(s) ( 10 pages)
Evidence-1
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._I_-_Hunting_in_the_USA_rifle_vs_bow.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._J_-_All_things_archery_archery_vs_rifle.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._K_-_Daily_shooting_shotguns_vs_rifles.pdf
Converted PDF file(s) ( 7 pages)
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._L_-_Arcus_hunting_about.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_644114106-20191002155827687055_._Ex._M_-_Arcus_obsession_bows.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_644114106-20191002155827687055_._Ex._N_-_Obsession_Huntress_combined.pdf
Converted PDF file(s) ( 12 pages)
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._O_-_Obsession_bows_facebook_about.pdf
Converted PDF file(s) ( 2 pages)
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._P_-_Taylors_homepage_combined.pdf
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._Q_-_Taylors_about.pdf
Converted PDF file(s) ( 2 pages)
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._R_-_Taylors_Huntress_combined.pdf
Converted PDF file(s) ( 3 pages)
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._S_-_June_24_Facebook_all_comments.pdf
Converted PDF file(s) ( 1 page)
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._T_-_June_27_Facebook.pdf
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._U_-_June_28_Instagram.pdf
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._V_-_Google_huntress.pdf
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._W_-_Dc_universe_huntress.pdf
Converted PDF file(s) ( 3 pages)
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Original PDF file:
evi_644114106-20191002155827687055_._Ex._X_-_ebay_huntress.pdf
Converted PDF file(s) ( 17 pages)
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The applicant's current attorney information: Daniel L. Fitch. Daniel L. Fitch of WHARTON ALDHIZER & WEAVER PLC, is located at

      100 S. MASON STREET
      HARRISONBURG, Virginia 22801
      US

The phone number is 540-434-0316.

The fax number is 549-434-5502.

The email address is dfitch@wawlaw.com

The applicants proposed attorney information: Daniel L. Fitch. Daniel L. Fitch of WHARTON ALDHIZER & WEAVER PLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      100 S. MASON STREET
      HARRISONBURG, Virginia 22801
      United States
The docket/reference number is 56814-15.

The phone number is 540-434-0316.

The fax number is 540-434-5502.

The email address is dfitch@wawlaw.com

Daniel L. Fitch 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: DANIEL L. FITCH. DANIEL L. FITCH of WHARTON ALDHIZER & WEAVER PLC, is located at

      100 S. MASON STREET
      HARRISONBURG, Virginia 22801
      US

The phone number is 540-434-0316.

The fax number is 549-434-5502.

The email address is dfitch@wawlaw.com

The applicants proposed correspondence information: Daniel L. Fitch. Daniel L. Fitch of WHARTON ALDHIZER & WEAVER PLC, is located at

      100 S. MASON STREET
      HARRISONBURG, Virginia 22801
      United States
The docket/reference number is 56814-15.

The phone number is 540-434-0316.

The fax number is 540-434-5502.

The email address is dfitch@wawlaw.com; mjohnson@wawlaw.com

SIGNATURE(S)
Response Signature
Signature: /Daniel L. Fitch/     Date: 10/02/2019
Signatory's Name: Daniel L. Fitch
Signatory's Position: Attorney of Record, Member of VA State Bar

Signatory's Phone Number: 540-434-0316

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:    DANIEL L. FITCH
   WHARTON ALDHIZER & WEAVER PLC
   
   100 S. MASON STREET
   HARRISONBURG, Virginia 22801
Mailing Address:    Daniel L. Fitch
   WHARTON ALDHIZER & WEAVER PLC
   100 S. MASON STREET
   HARRISONBURG, Virginia 22801
        
Serial Number: 88257353
Internet Transmission Date: Wed Oct 02 16:14:07 EDT 2019
TEAS Stamp: USPTO/ROA-XX.X.XXX.XXX-20191002161407530
454-88257353-610d751b7128c9c6c145535c073
48f448cab859fe5c2ae7f4bd87af47e85f57fc-N
/A-N/A-20191002155827687055