| 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 | 88305806 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88305806/mark.png |
| LITERAL ELEMENT | X5 |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
Dear Ms. Smith: In response to the Examining Attorney’s Action, XTEND5 LLC (“Applicant”) submits the following information: LIKELIHOOD OF CONFUSION REFUSAL The Examining Attorney has refused registration under Lanham Act Section 2(d) by stating that Applicant’s X5 (Stylized) trademark, when used in connection with Class 005: Dietary supplements, so resembles the PAN 5X trademark in U.S. Registration No. 3,896,914 for Class 005: Dietary and nutritional supplements; Dietary supplements; Dietary supplements for human consumption; Mineral nutritional supplements; Mineral supplements such that it is likely to cause confusion, or to cause mistake, or to deceive. Applicant respectfully disagrees. The Examining Attorney generally must consider a two part test to determine whether a likelihood of confusion exists. First, the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Second, the Examining Attorney must compare the goods and services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978). Applicant concedes that the trademarks are used in relation to similar goods. However, Applicant submits that the obvious differences between the trademarks avoid any likelihood of confusion.
The Trademarks are Dissimilar If the trademarks at issue are not similar as to appearance, sound, connotation, and commercial impression, then no confusion in likely. Kellogg Company v. Pack’em Enterprises, 951 F.2d 330, 21 USPQ 2d 1142 (Fed. Cir. 1991). The mere fact that two trademarks contain a common element does not in itself create a likelihood of confusion. This is true even if the trademarks at issue are used in relation to identical goods and services. For example, the following trademarks with common elements were held not to be confusingly similar despite the fact that the marks are used in relation to the same goods and services: (1) CRISTAL (alcoholic beverage) and CRYSTAL CREEK (alcoholic beverage); (2) WIZZ (garden tool) and GEE WHIZ (garden tool); (3) FLIP (rodenticide) and FINAL FLIP (rodenticide); (4) BOBBERS (for fish) CATFISH BOBBERS (restaurant services); (5) RITZ (bath linens) and PUTTING ON THE RITZ (bath linens); and (6) VARGAS (calendars) and VARGA GIRL (calendars). Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 4714 U.S.P.Q.2d 59 (Fed. Cir. 1998); J. Wiss & Sons Co. v. Gee Whiz Tool Corp., 364 F.2d 910, 150 U.S.P.Q. 583 (6th Cir. 1966); Bell Laboratories, Inc. v. Colonial Products, Inc., 644 F. Supp. 542, 231 U.S.P.Q. 569 (S.D. Fla. 1986); In re Farm Fresh Catfish Co., 231 U.S.P.Q. 495 (T.T.A.B. 1986); Shen Mfg. Co., Inc. v. Ritz Hotel, Ltd., 393 F.3d 1238, 73 U.S.P.Q.2d 1350 (Fed. Cir. 2004); and In re Hearst Corp., 982 F.2d 494, 25 U.S.P.Q. 2d (BNA) 1238 (Fed. Cir. 1992). In the present case, the examiner mistakenly states that “The applicant has applied to register the mark X5 in standard character form”. In fact, Applicant has applied for a stylized letter X with the number 5 overlapping the X and appearing in a stylized font. Next, the examiner also mistakenly states that: “In the present case, the marks are identical in part. The only difference in the literal portions of the mark is the deletion of the term PAN from the cited mark.” This also is not true because Applicant’s trademark is not identical in any respect to Registrant’s trademark. In fact, apart from the word PAN, Applicant’s trademark contains a stylized X5 which begins with the letter X whereas Registrant’s 5X portion of the trademark begins with the number 5. While both trademarks contain the number “5” and the letter “X”, this alone is not enough to overcome the differences between the trademarks in appearance, sound, connotation and commercial impression. First, the appearance and sound of the trademarks are very different. X5 (stylized) and PAN 5X do not look alike because X5 (stylized) is the letter X with the number 5 overlapping it, whereas PAN 5X begins with the word “PAN”, is 2 words, and contains a 5 and then an X. Similarly, the trademarks do not sound the same because X5 contains 2 syllables, while PAN 5X contains 3 syllables. Most importantly, the connotation and commercial impression of the trademarks are also very different. The commercial impression of X5 (stylized) is a fanciful letter-number combination. By contrast, the commercial impression of PAN 5X is the word “pan” which is short for pancreas and 5X, the commercial impression of which is a multiple of 5. (See Exhibit “A”) The appearance, sound, connotation and commercial impression of the trademarks are different. Therefore, there is no likelihood of confusion in the present case.
Whether a trademark is classified as “strong” or “weak” is an important element in deciding whether a likelihood of confusion exists. Independent Grocers’ Alliance Distributing Co. v. Potter-McCune Co., 404 F.2d 622, 160 U.S.P.Q. 46 (C.C.P.A. 1968). Elements of a trademark may be “weak” if the elements are laudatory, descriptive, or if the elements are in common use by many other sellers in the market. Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400, 167 U.S.P.Q. 529 (C.C.P.A. 1970). In the present case, at least 141 applications using 5X or X5 have been filed with the USPTO, with 60 of those live. See Exhibit “B”. By approving for registration the many 5X and X5 trademarks and specifically those listed below, the USPTO has determined that many of these similar trademarks are able to coexist. 1) X5, Reg. No. 5,601,244 by Inkcups Now Corporation for Class 007: Industrial inkjet printing machines; and 2) X5, Reg. No. 5,540,309 by Bestorq, Inc. for Class 007: Power transmission belts for machines. -And-
A. X5, Reg. No. 5,257,109 by Limitless Innovations, Inc. for Class 009: Battery charge devices; electronic docking stations; charging appliances for rechargeable equipment, namely, multiple port charge stations; and B. HONOR 5X, Reg. No. 5,538,088 by Huawei Technologies Co., Ltd. for Class 009 Mobile phones. See Exhibit “C”. Since X5 and 5X are so commonly used, any one Registrant or applicant has very little right to exclude others from using the word. Thus, the prior applications are entitled to only a narrow scope of legal protection and Applicant’s trademark should also be allowed registration. SUMMARY Applicant requests that the Examining Attorney: (i) withdraw the 2(d) refusal; and (ii) approve the Application for publication. We welcome an opportunity to discuss this matter further with the Examining Attorney. Please advise us if we can provide any further information that will facilitate the publication and registration of the mark. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_1721152449-20190702135733268445_._Exhibit_A.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\058\88305806\xml4\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\883\058\88305806\xml4\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\058\88305806\xml4\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\058\88305806\xml4\ROA0005.JPG | |
| ORIGINAL PDF FILE | evi_1721152449-20190702135733268445_._Exhibit_B.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\058\88305806\xml4\ROA0006.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\883\058\88305806\xml4\ROA0007.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\058\88305806\xml4\ROA0008.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\058\88305806\xml4\ROA0009.JPG | |
| ORIGINAL PDF FILE | evi_1721152449-20190702135733268445_._Exhibit_C.pdf |
| CONVERTED PDF FILE(S) (8 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\058\88305806\xml4\ROA0010.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\883\058\88305806\xml4\ROA0011.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\058\88305806\xml4\ROA0012.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\058\88305806\xml4\ROA0013.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\058\88305806\xml4\ROA0014.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\058\88305806\xml4\ROA0015.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\058\88305806\xml4\ROA0016.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\058\88305806\xml4\ROA0017.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A - PAN 5X product detail, Exhibit B - TESS examples of prior filed 5X or X5 applications, Exhibit C - TESS examples of prior approved similar X5 and 5X applications |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /lod/ |
| SIGNATORY'S NAME | Lindsey Olson Diefenbach, Esq. |
| SIGNATORY'S POSITION | Attorney of Record, CA Bar Member |
| DATE SIGNED | 07/02/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Jul 02 14:11:51 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.X-2 0190702141151882405-88305 806-620905d493e99aa95c3cc ef1d8a8a5efc874df0b4f08a1 4fc72b113d65e4d6634f-N/A- N/A-20190702135733268445 |
| 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) |
Dear Ms. Smith:
In response to the Examining Attorney’s Action, XTEND5 LLC (“Applicant”) submits the following information:
LIKELIHOOD OF CONFUSION REFUSAL
The Examining Attorney has refused registration under Lanham Act Section 2(d) by stating that Applicant’s X5 (Stylized) trademark, when used in connection with Class 005: Dietary supplements, so resembles the PAN 5X trademark in U.S. Registration No. 3,896,914 for Class 005: Dietary and nutritional supplements; Dietary supplements; Dietary supplements for human consumption; Mineral nutritional supplements; Mineral supplements such that it is likely to cause confusion, or to cause mistake, or to deceive. Applicant respectfully disagrees.
The Examining Attorney generally must consider a two part test to determine whether a likelihood of confusion exists. First, the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Second, the Examining Attorney must compare the goods and services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).
Applicant concedes that the trademarks are used in relation to similar goods. However, Applicant submits that the obvious differences between the trademarks avoid any likelihood of confusion.
The Trademarks are Dissimilar
If the trademarks at issue are not similar as to appearance, sound, connotation, and commercial impression, then no confusion in likely. Kellogg Company v. Pack’em Enterprises, 951 F.2d 330, 21 USPQ 2d 1142 (Fed. Cir. 1991). The mere fact that two trademarks contain a common element does not in itself create a likelihood of confusion. This is true even if the trademarks at issue are used in relation to identical goods and services. For example, the following trademarks with common elements were held not to be confusingly similar despite the fact that the marks are used in relation to the same goods and services:
(1) CRISTAL (alcoholic beverage) and CRYSTAL CREEK (alcoholic beverage);
(2) WIZZ (garden tool) and GEE WHIZ (garden tool);
(3) FLIP (rodenticide) and FINAL FLIP (rodenticide);
(4) BOBBERS (for fish) CATFISH BOBBERS (restaurant services);
(5) RITZ (bath linens) and PUTTING ON THE RITZ (bath linens); and
(6) VARGAS (calendars) and VARGA GIRL (calendars).
Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 4714 U.S.P.Q.2d 59 (Fed. Cir. 1998); J. Wiss & Sons Co. v. Gee Whiz Tool Corp., 364 F.2d 910, 150 U.S.P.Q. 583 (6th Cir. 1966); Bell Laboratories, Inc. v. Colonial Products, Inc., 644 F. Supp. 542, 231 U.S.P.Q. 569 (S.D. Fla. 1986); In re Farm Fresh Catfish Co., 231 U.S.P.Q. 495 (T.T.A.B. 1986); Shen Mfg. Co., Inc. v. Ritz Hotel, Ltd., 393 F.3d 1238, 73 U.S.P.Q.2d 1350 (Fed. Cir. 2004); and In re Hearst Corp., 982 F.2d 494, 25 U.S.P.Q. 2d (BNA) 1238 (Fed. Cir. 1992).
In the present case, the examiner mistakenly states that “The applicant has applied to register the mark X5 in standard character form”. In fact, Applicant has applied for a stylized letter X with the number 5 overlapping the X and appearing in a stylized font.
Next, the examiner also mistakenly states that: “In the present case, the marks are identical in part. The only difference in the literal portions of the mark is the
deletion of the term PAN from the cited mark.” This also is not true because Applicant’s trademark is not identical in any respect to Registrant’s trademark. In fact, apart from the word PAN, Applicant’s trademark contains a stylized X5 which begins with the letter X whereas Registrant’s 5X portion of the trademark begins with the number 5.
While both trademarks contain the number “5” and the letter “X”, this alone is not enough to overcome the differences between the trademarks in appearance, sound, connotation and commercial impression. First, the appearance and sound of the trademarks are very different. X5 (stylized) and PAN 5X do not look alike because X5 (stylized) is the letter X with the number 5 overlapping it, whereas PAN 5X begins with the word “PAN”, is 2 words, and contains a 5 and then an X. Similarly, the trademarks do not sound the same because X5 contains 2 syllables, while PAN 5X contains 3 syllables.
Most importantly, the connotation and commercial impression of the trademarks are also very different. The commercial impression of X5 (stylized) is a fanciful letter-number combination. By contrast, the commercial impression of PAN 5X is the word “pan” which is short for pancreas and 5X, the commercial impression of which is a multiple of 5. (See Exhibit “A”)
The appearance, sound, connotation and commercial impression of the trademarks are different. Therefore, there is no likelihood of confusion in the present case.
Whether a trademark is classified as “strong” or “weak” is an important element in deciding whether a likelihood of confusion exists. Independent Grocers’ Alliance Distributing Co. v. Potter-McCune Co., 404 F.2d 622, 160 U.S.P.Q. 46 (C.C.P.A. 1968). Elements of a trademark may be “weak” if the elements are laudatory, descriptive, or if the elements are in common use by many other sellers in the market. Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400, 167 U.S.P.Q. 529 (C.C.P.A. 1970).
In the present case, at least 141 applications using 5X or X5 have been filed with the USPTO, with 60 of those live. See Exhibit “B”. By approving for registration the many 5X and X5 trademarks and specifically those listed below, the USPTO has determined that many of these similar trademarks are able to coexist.
1) X5, Reg. No. 5,601,244 by Inkcups Now Corporation for Class 007: Industrial inkjet printing machines; and
2) X5, Reg. No. 5,540,309 by Bestorq, Inc. for Class 007: Power transmission belts for machines.
-And-
A. X5, Reg. No. 5,257,109 by Limitless Innovations, Inc. for Class 009: Battery charge devices; electronic docking stations; charging appliances for rechargeable equipment, namely, multiple port charge stations; and
B. HONOR 5X, Reg. No. 5,538,088 by Huawei Technologies Co., Ltd. for Class 009 Mobile phones.
See Exhibit “C”.
Since X5 and 5X are so commonly used, any one Registrant or applicant has very little right to exclude others from using the word. Thus, the prior applications are entitled to only a narrow scope of legal protection and Applicant’s trademark should also be allowed registration.
SUMMARY
Applicant requests that the Examining Attorney: (i) withdraw the 2(d) refusal; and (ii) approve the Application for publication.
We welcome an opportunity to discuss this matter further with the Examining Attorney. Please advise us if we can provide any further information that will facilitate the publication and registration of the mark.
