| 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 | 88303788 |
| LAW OFFICE ASSIGNED | LAW OFFICE 108 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88303788/mark.png |
| LITERAL ELEMENT | STUDIO |
| 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 Examining Attorney (the "Examiner") issued an Office Action, having found a likelihood of confusion between the mark, STUDIO, that is the subject of this application (the "Subject Mark"), used with power operated paint sprayer machines, staplers and sanders, in Class 7, and heat guns in Class 11, and the mark, IWATA STUDIO SERIES, at Reg. No. 4758551 (the "Prior Registered Mark"), owned by Anest Iwata-Medea, Inc., and used in connection with air compressors and power operated blowers. The Examiner determined there could be a likelihood of confusion because: (1) the Subject Mark and the Prior Registered Mark share the term STUDIO; (2) consumers might shorten the Prior Registered Mark to STUDIO; and (3) other parties have offered both "air compressors and power operated blowers," and "power operated staplers and power operated sanders," and "heat guns" in the same trade channels, to the same consumers, in the same fields of use. The Applicant respectfully disagrees with the Examiner's finding. The Subject Mark and the Prior Registered Mark are: (1) readily distinguishable in sight and sound, (2) used with goods offered to different consumers. The Marks Differ in Sight and Sound
The Subject Mark is composed of one single word, STUDIO. In practice, the mark is at all times used with the Applicant's house-mark, WAGNER. See a copy of the specimen filed with the application to register the Subject Mark, at Exhibit 1. By contrast, the Prior Registered Mark is composed of three words, which include the registrant's house mark, IWATA, followed by the words, STUDIO SERIES. In practice, as is shown with the materials at Exhibit 2, the Prior Registered Mark uses the word IWATA in large letters, followed by the phrase STUDIO SERIES, visibly about half the size, to the right of the word IWATA. Thus, the inarguably prominent part of the Prior Registered Mark is the word IWATA. Also, in response to the Examiner's suggestion that consumers might refer to the Prior Registered Mark as STUDIO, it becomes clear when reviewing the manner in which the Prior Registered Mark is actually used (as shown at Exhibit 2), that if a party were to use a shortened term for the Prior Registered Mark, it is likely the party would use the first word and the clearly dominant part of the Subject Mark, namely, the word IWATA, and not STUDIO SERIES. Accordingly, the Subject Mark and the Prior Registered Mark are readily distinguishable from one another in sight and sound.
The Consumers Differ
The Subject Mark is used with/for hobbyists and do-it-yourself crafters. (Again, applicant refers the Examiner's attention to Exhibit 1.) By contrast, the Prior Registered Mark is used with goods for artists as noted in the descriptions of product offered with the Prior Registered Mark as found on Amazon (and once again, applicant refers the Examiner's attention to Exhibit 2). Thus, the Subject Mark is for home use, whereas the Prior Registered Mark is geared to a professional artist. Summary
As shown, there is a not a likelihood of confusion between the Subject Mark and the Prior Registered Mark. Accordingly, applicant respectfully requests that the Examiner approve the Subject Mark for publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_209236102200-20191024113642559078_._417771.105_STUDIO_Exhibit_1.pdf |
| CONVERTED PDF FILE(S) (5 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\037\88303788\xml5\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\883\037\88303788\xml5\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\037\88303788\xml5\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\037\88303788\xml5\ROA0005.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\037\88303788\xml5\ROA0006.JPG | |
| ORIGINAL PDF FILE | evi_209236102200-20191024113642559078_._417771.105_STUDIO_Exhibit_2.pdf |
| CONVERTED PDF FILE(S) (10 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\037\88303788\xml5\ROA0007.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\883\037\88303788\xml5\ROA0008.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\037\88303788\xml5\ROA0009.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\037\88303788\xml5\ROA0010.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\037\88303788\xml5\ROA0011.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\037\88303788\xml5\ROA0012.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\037\88303788\xml5\ROA0013.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\037\88303788\xml5\ROA0014.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\037\88303788\xml5\ROA0015.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\037\88303788\xml5\ROA0016.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibits 1 and 2 |
| ATTORNEY SECTION (current) | |
| NAME | Patricia I. Reding |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | FAEGRE BAKER DANIELS LLP |
| INTERNAL ADDRESS | 2200 WELLS FARGO CENTER |
| STREET | 90 SOUTH SEVENTH STREET |
| CITY | MINNEAPOLIS |
| STATE | Minnesota |
| POSTAL CODE | 55402-3901 |
| COUNTRY | US |
| PHONE | 612-766-6886 |
| FAX | 612 766 1600 |
| trademark@FaegreBD.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 417771.105 |
| ATTORNEY SECTION (proposed) | |
| NAME | Patricia I. Reding |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | FAEGRE BAKER DANIELS LLP |
| INTERNAL ADDRESS | 2200 WELLS FARGO CENTER |
| STREET | 90 SOUTH SEVENTH STREET |
| CITY | MINNEAPOLIS |
| STATE | Minnesota |
| POSTAL CODE | 55402-3901 |
| COUNTRY | United States |
| PHONE | 612-766-6886 |
| FAX | 612 766 1600 |
| trademark@FaegreBD.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 417771.105 |
| OTHER APPOINTED ATTORNEY | Emily A. Bayton, Jared B. Briant, Amie Peele Carter, Jodi A. DeSchane, Dianna L. Gould, Stephanie A. Gumm, Brian D. Lefort, Calvin L. Litsey, David R. Merritt, Louis T. Perry, Peter M. Routhier, James J. Saul, Abrahim J. Shanehsaz, James R. Steffen, and Gary S. Weinstein |
| CORRESPONDENCE SECTION (current) | |
| NAME | PATRICIA I. REDING |
| FIRM NAME | FAEGRE BAKER DANIELS LLP |
| INTERNAL ADDRESS | 2200 WELLS FARGO CENTER |
| STREET | 90 SOUTH SEVENTH STREET |
| CITY | MINNEAPOLIS |
| STATE | Minnesota |
| POSTAL CODE | 55402-3901 |
| COUNTRY | US |
| PHONE | 612-766-6886 |
| FAX | 612 766 1600 |
| trademark@FaegreBD.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 417771.105 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Patricia I. Reding |
| FIRM NAME | FAEGRE BAKER DANIELS LLP |
| INTERNAL ADDRESS | 2200 WELLS FARGO CENTER |
| STREET | 90 SOUTH SEVENTH STREET |
| CITY | MINNEAPOLIS |
| STATE | Minnesota |
| POSTAL CODE | 55402-3901 |
| COUNTRY | United States |
| PHONE | 612-766-6886 |
| FAX | 612 766 1600 |
| trademark@FaegreBD.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 417771.105 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Patricia I. Reding/ |
| SIGNATORY'S NAME | Patricia I. Reding |
| SIGNATORY'S POSITION | Attorney of record, Minnesota bar member |
| SIGNATORY'S PHONE NUMBER | 612-766-6886 |
| DATE SIGNED | 10/24/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Oct 24 12:18:53 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20191024121853452710-883 03788-610f07ef7e0c5ada128 f21261e3010ec9ddf649de3a9 74f77914dbee8f467f8db-N/A -N/A-20191024113642559078 |
| 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 Examining Attorney (the "Examiner") issued an Office Action, having found a likelihood of confusion between the mark, STUDIO, that is the subject of this application (the "Subject Mark"), used with power operated paint sprayer machines, staplers and sanders, in Class 7, and heat guns in Class 11, and the mark, IWATA STUDIO SERIES, at Reg. No. 4758551 (the "Prior Registered Mark"), owned by Anest Iwata-Medea, Inc., and used in connection with air compressors and power operated blowers.
The Examiner determined there could be a likelihood of confusion because: (1) the Subject Mark and the Prior Registered Mark share the term STUDIO; (2) consumers might shorten the Prior Registered Mark to STUDIO; and (3) other parties have offered both "air compressors and power operated blowers," and "power operated staplers and power operated sanders," and "heat guns" in the same trade channels, to the same consumers, in the same fields of use.
The Applicant respectfully disagrees with the Examiner's finding. The Subject Mark and the Prior Registered Mark are: (1) readily distinguishable in sight and sound, (2) used with goods offered to different consumers.
The Marks Differ in Sight and Sound
The Subject Mark is composed of one single word, STUDIO. In practice, the mark is at all times used with the Applicant's house-mark, WAGNER. See a copy of the specimen filed with the application to register the Subject Mark, at Exhibit 1.
By contrast, the Prior Registered Mark is composed of three words, which include the registrant's house mark, IWATA, followed by the words, STUDIO SERIES. In practice, as is shown with the materials at Exhibit 2, the Prior Registered Mark uses the word IWATA in large letters, followed by the phrase STUDIO SERIES, visibly about half the size, to the right of the word IWATA. Thus, the inarguably prominent part of the Prior Registered Mark is the word IWATA.
Also, in response to the Examiner's suggestion that consumers might refer to the Prior Registered Mark as STUDIO, it becomes clear when reviewing the manner in which the Prior Registered Mark is actually used (as shown at Exhibit 2), that if a party were to use a shortened term for the Prior Registered Mark, it is likely the party would use the first word and the clearly dominant part of the Subject Mark, namely, the word IWATA, and not STUDIO SERIES.
Accordingly, the Subject Mark and the Prior Registered Mark are readily distinguishable from one another in sight and sound.
The Consumers Differ
The Subject Mark is used with/for hobbyists and do-it-yourself crafters. (Again, applicant refers the Examiner's attention to Exhibit 1.) By contrast, the Prior Registered Mark is used with goods for artists as noted in the descriptions of product offered with the Prior Registered Mark as found on Amazon (and once again, applicant refers the Examiner's attention to Exhibit 2). Thus, the Subject Mark is for home use, whereas the Prior Registered Mark is geared to a professional artist.
Summary
As shown, there is a not a likelihood of confusion between the Subject Mark and the Prior Registered Mark. Accordingly, applicant respectfully requests that the Examiner approve the Subject Mark for publication.
