| 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 | 88328232 |
| LAW OFFICE ASSIGNED | LAW OFFICE 120 |
| MARK SECTION | |
| MARK | mark |
| LITERAL ELEMENT | EL GALLO |
| 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) | |
|
Pursuant to the Office Action issued on November 19, 2019, the Examining Attorney believes that there is a likelihood of confusion between the Applicant's mark (El Gallo; Serial Number 88328232) as it relates to category 005 and GALLO GLOBAL NUTRITION with design (U.S. Registration No. 4844031 (the "031 Mark"). The Applicant respectfully disagrees and asks that the Examining Attorney reconsider based upon the following analysis. 1. Likelihood of Confusion Pursuant to In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), thirteen (13) factors are to be considered when testing for likelihood for confusion. (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration in connection with which a prior mark is in use. (3) The similarity or dissimilarity of established, likely-to-continue trade channels (4) The conditions under which and buyers whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing. (5) The fame of the prior mark (sales, advertising, length of use) (6) The number and nature of similar marks in use on similar goods (7) The nature and extent of any actual confusion (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion (9) The variety of goods on which a mark is or is not used (10) The market interface between applicant and the owner of a prior mark: a. A Mere “consent” to register or use b. Agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party c. Assignment of mark, application, registration and good will of the related business d. Laches and estoppel attributable to owner of prior mark and indicative of lack of confusion (11) The extent to which applicant has a right to exclude others from use of its mark on its goods (12) The extent of potential confusion, i.e. whether de minimis or substantial (13) Any other established fact probative of the effect of use While the similarity of the marks is an important consideration, “[t]he evidentiary elements are not listed above in order of merit". Id. at 1361. While some of these factors may weigh more than others, it is inappropriate to cherry pick factors without examining all of the factors. For this reason, the Applicant addresses all 13 factors. ONE: The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In evaluating the degree of similarity between marks, we consider the marks as they are encountered by the consumer in the marketplace and examine them on three levels: sight, sound and meaning. First Sav. Bank v. First Bank Sys., Inc. 101 F.3d 645, 653 (10th Cir 1996). Each mark must be considered as a whole. Universal Money Ctrs., Inc. v. American Tel. & Tel. CO. 22 F.3d 1527, 1530 (10th Cir. 1994). Even if the trade names are similar, the likelihood of confusion is reduced if the two trademarks, taken as a whole, are visually distinct. Id; First Sav. Bank, 101 F.3d. at 643. Additionally, the disclaimer of any portion of a mark does not remove the disclaimed matter from the mark. TMEP 1213.10. The mark must still be regarded as a whole, including the disclaimed matter, in evaluating similarity to other marks. See In re Nat'l Data Corp., 753 F.2d 1056, 1059, 224 USPQ 749, 751 (Fed. Cir. 1985); Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570, 218 USPQ 390, 395 (Fed. Cir. 1983); Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 144 USPQ 433 (C.C.P.A. 1965); In re MCI Commc'ns Corp., 21 USPQ2d 1534, 1538-39 (Comm’r Pats. 1991). Typically, disclaimed matter will not be regarded as the dominant, or most significant, feature of a mark. However, since the Trademark Act permits an applicant to voluntarily disclaim registrable matter (see TMEP §1213.01(c)), disclaimed matter may be dominant or significant in some cases. As noted in MCI Commc'ns Corp., 21 USPQ2d at 1539, "Examining Attorneys will continue to consider the question of likelihood of confusion, under Section 2(d) of the statute, in relation to the marks as a whole, including any voluntarily disclaimed matter." See TMEP 1213.10. In this case, the applied for mark consists of two words, one of which is an article. The 031 Mark consists of three words. And while "Global Nutrition" has been disclaimed from the 031 Mark, as noted in TMEP 1213.10, the entirety of a mark, including the disclaimed portions, must be regarded as a whole. Taking this into consideration, EL GALLO and GALLO GLOBAL NUTRITION are distinct on this basis alone. Average consumers certainly make a distinction between a two word trademark and compound or conjoined trademarks, and do not disregard words because they are articles or considered generic. The sound element of both marks are distinct. EL GALLO, as noted by the Examining Attorney’s translation, is Spanish for “the Rooster.” Due to the use of "El" (Spanish for "the"), it is evident that the Applicant's mark is intended to be pronounced in Spanish. Therefore, “GALLO” is phonetically pronounced “guy-yo”. In contrast, GALLO GLOBAL NUTRITION is a brand under Joseph Gallo Farms. This “GALLO” is pronounced in a way that rhymes with "shallow". Thus, the auditory portion of the marks is totally distinct and distinguishable by an average consumer. The additional words in GALLO GLOBAL NUTRITION give the marks a different appearance and auditory presentation. GALLO GLOBAL NUTRITION is a compound mark composed of three words with a total of 7 syllables whereas the Applicant’s mark is two words totaling three syllables. Due to the uniqueness in the sound and connotation, there is likely no confusion between the marks. Based on an analysis of the two marks in their entirety, this supports that there is not a likelihood of confusion. TWO: The similarity or dissimilarity and nature of the goods or services as described in an application or registration in connection with which a prior mark is in use. GALLO GLOBAL NUTRITION makes nutritional supplements for animal feed and serves as a wholesaler for protein supplements for human consumption. Conversely, EL GALLO’s supplements are intended for human consumption and direct to consumer. Thus, while the goods are similar in that they are both nutritionally related, the owner of the 031 Mark uses it in connection, in part, with products for animal feed whereas the applicant intends to use its mark for products for human consumption. Moreover, those products sold by the owner of the 031 Mark that are intended for human consumption appear to be sold in bulk and incorporated into products produced and sold by third parties. Therefore, while the basic essence of the products are similar, the products themselves are intended for use in differing markets.. Based on these facts, the similarity of the goods, on its face, would be neutral in terms of lending support for or against a likelihood of confusion. THREE: The similarity or dissimilarity of established, likely-to-continue trade channels. As noted above, based on the website for the owner of the 031 Mark , the 031 Mark is used by its owner in connection with wholesale sales of nutritional supplements for human consumption and also animal feed supplements. Therefore, as a distributor, the goods under the 031 Mark are sold to manufacturers who then produce end products that are sold to the consumer. As such, the individual consumer is likely unaware that any product sold under the 031 Mark is used in connection with the ultimate end product. Conversely, EL GALLO will be used on products that are sold direct to consumer. Therefore, these two marks will be used in differing channels of trade. Based on this analysis this factor supports that there is not a likelihood of confusion.. . FOUR The conditions under which and buyers whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing. Nutritional supplements are not impulse buys. Consumers who are going to ingest a commodity that is for the purpose of providing an additional nutritional boost are generally looking for nutritional supplements that serve a particular need or are looking for a general nutritional supplement to provide overall nutritional support. Due to the purpose for which nutritional supplements are sought, consumers typically carefully research the supplements that will be ingested. As noted above, the 031 Mark is not sold directly to the end consumer but rather to manufacturers for use in producing end products. Due to this, the end consumer will not see the 031 Mark as the consumer makes its careful decision. As a product that is carefully purchased, consumers are likely to make the distinction between marks. For this reason, this factor weights in the applicant’s favor to show that there is not a likelihood of confusion. . FIVE The fame of the prior mark (sales, advertising, length of use) The 031 Mark has been in use for a period of time. As such, it has achieved some degree of fame, however minor, due to the narrow market that its serves. That said, while it may have a de minimus amount of fame in a very narrow market sector, it is not the market section that will be served by the Applicant's mark. As such, due to the de minimus fame, this factor weighs in favor of finding that there is not a likelihood of confusion, . SIX The number and nature of similar marks in use on similar goods Third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services. TMEP 1207.01(d)(iii). If the evidence establishes that the consuming public is exposed to third-party use of similar marks on similar goods, it “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” A U.S. Trademark database search of the term “El Gallo” and “Gallo reveals three live, registered trademarks in IC 005. A search for the term “Rooster” reveals 5 additional live, registered trademarks in IC 005. The numerous filings for both Gallo and Rooster trademarks show the diluted nature of the known registrations and thus making confusion less likely. SEVEN The nature and extent of any actual confusion Applicant’s filing is 1(b), so this factor is not ripe and therefore should not weigh towards a finding of likelihood of confusion. EIGHT The length of time during and conditions under which there has been concurrent use without evidence of actual confusion Applicant’s filing is 1(b), so this factor is not ripe and therefore should not weigh towards a finding of likelihood of confusion. NINE The variety of goods on which a mark is or is not used Applicant’s filing is 1(b), so this factor is not ripe and therefore should not weigh towards a finding of likelihood of confusion. TEN The market interface between applicant and the owner of a prior mark: a. A Mere “consent” to register or use b. Agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party c. Assignment of mark, application, registration and good will of the related business d. Laches and estoppel attributable to owner of prior mark and indicative of lack of confusion This factor does not apply to the current case and therefore should not weight towards a finding of likelihood of confusion ELEVEN The extent to which applicant has a right to exclude others from use of its mark on its goods Applicant would have a limited right to exclude others from using its mark. As shown by the various filings for El Gallo and Gallo, many marks contain these terms as part of a phrase, which as addressed above makes them distinct from applicant's mark. Therefore, this factor weighs against a finding of confusion. TWELVE The extent of potential confusion, i.e. whether de minimis or substantial Given the fact that applicants are targeting a different customer base, there is likely de minimis potential confusion. Therefore, this factor weighs against a finding of confusion. THIRTEEN Any other established fact probative of the effect of use None known at this time. Based upon the foregoing analysis, the majority of the DuPont factors lean in favor of no likelihood of confusion, and the Applicant respectfully requests that the Examining Attorney withdraw this objection. 2. Request for Information Applicant’s products will at all times be complaint with Federal law. 1.Do or will applicant’s identified goods include any oils, extracts, ingredients or derivatives from the plant Cannabis sativa L (also known as cannabis, marijuana or hemp)? NO 2.If the answer to Question 1 is “yes,” does the cannabis used or to be used in applicant’s goods contain more than 0.3 percent delta-9 tetrahydrocannabinol (THC) on a dry weight basis? NO 3.If applicant has any documentation relative to the THC content of the oils, extracts or derivatives used or to be used in the goods, please submit them with the response. N/A 4.If applicant’s goods do or will contain oils, extracts, ingredients or derivatives from the plant Cannabis sativa L which has more than 0.3 percent delta-9 tetrahydrocannabinol on a dry weight basis, identify the part or parts of the plant used in obtaining the oils, extracts, ingredients or derivatives. NO 5.Do or will the goods include cannabidiol (CBD)? NO 6.If so, will there be more than a trace amount of CBD in the goods, e.g., more than 50 parts per million (PPM)? N/A 7.Do or will applicant’s identified goods include CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L? N/A 3. Translation Applicant agrees with the Examining Attorney’s suggested translation of El Gallo meaning the Rooster. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) |
\\TICRS\EXPORT18\IMAGEOUT 18\883\282\88328232\xml3 \ ROA0002.JPG |
| \\TICRS\EXPORT18\IMAGEOUT 18\883\282\88328232\xml3 \ ROA0003.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Attached evidence includes descriptions from Gallo Global Nutrition of its product lines. |
| ADDITIONAL STATEMENTS SECTION | |
| TRANSLATION | The English translation of El Gallo in the mark is Spanish for the Rooster. |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | Thomas A. Zeigler |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | tzeigler@alvaradosmith.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | ipdocket@alvaradosmith.com; ajones@alvaradosmith.com |
| DOCKET/REFERENCE NUMBER | L823.10 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Thomas A. Zeigler |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | tzeigler@alvaradosmith.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | ipdocket@alvaradosmith.com; ajones@alvaradosmith.com |
| DOCKET/REFERENCE NUMBER | L823.10 |
| PAYMENT SECTION | |
| APPLICATION FOR REGISTRATION PER CLASS | 225 |
| NUMBER OF CLASSES | 2 |
| TOTAL FEES DUE | 450 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /AMJ/ |
| SIGNATORY'S NAME | Andrew M. Jones |
| SIGNATORY'S POSITION | Attorney of record, Californa Bar member |
| SIGNATORY'S PHONE NUMBER | 714-852-6800 |
| DATE SIGNED | 05/19/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue May 19 19:48:45 ET 2020 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0200519194845728453-88328 232-710d138ba2232b15fa28f d35adfbd86782afc2a58af9d1 5e2494fb7183441ab6f5-CC-4 8442603-20200519192325521 793 |
| 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) |
Pursuant to the Office Action issued on November 19, 2019, the Examining Attorney believes that there is a likelihood of confusion between the Applicant's mark (El Gallo; Serial Number 88328232) as it relates to category 005 and GALLO GLOBAL NUTRITION with design (U.S. Registration No. 4844031 (the "031 Mark").
The Applicant respectfully disagrees and asks that the Examining Attorney reconsider based upon the following analysis.
1. Likelihood of Confusion
Pursuant to In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), thirteen (13) factors are to be considered when testing for likelihood for confusion.
(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration in connection with which a prior mark is in use.
(3) The similarity or dissimilarity of established, likely-to-continue trade channels
(4) The conditions under which and buyers whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.
(5) The fame of the prior mark (sales, advertising, length of use)
(6) The number and nature of similar marks in use on similar goods
(7) The nature and extent of any actual confusion
(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion
(9) The variety of goods on which a mark is or is not used
(10) The market interface between applicant and the owner of a prior mark:
a. A Mere “consent” to register or use
b. Agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party
c. Assignment of mark, application, registration and good will of the related business
d. Laches and estoppel attributable to owner of prior mark and indicative of lack of confusion
(11) The extent to which applicant has a right to exclude others from use of its mark on its goods
(12) The extent of potential confusion, i.e. whether de minimis or substantial
(13) Any other established fact probative of the effect of use
While the similarity of the marks is an important consideration, “[t]he evidentiary elements are not listed above in order of merit". Id. at 1361. While some of these factors may weigh more than others, it is inappropriate to cherry pick factors without examining all of the factors. For this reason, the Applicant addresses all 13 factors.
ONE: The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
In evaluating the degree of similarity between marks, we consider the marks as they are encountered by the consumer in the marketplace and examine them on three levels: sight, sound and meaning. First Sav. Bank v. First Bank Sys., Inc. 101 F.3d 645, 653 (10th Cir 1996). Each mark must be considered as a whole. Universal Money Ctrs., Inc. v. American Tel. & Tel. CO. 22 F.3d 1527, 1530 (10th Cir. 1994). Even if the trade names are similar, the likelihood of confusion is reduced if the two trademarks, taken as a whole, are visually distinct. Id; First Sav. Bank, 101 F.3d. at 643.
Additionally, the disclaimer of any portion of a mark does not remove the disclaimed matter from the mark. TMEP 1213.10. The mark must still be regarded as a whole, including the disclaimed matter, in evaluating similarity to other marks. See In re Nat'l Data Corp., 753 F.2d 1056, 1059, 224 USPQ 749, 751 (Fed. Cir. 1985); Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570, 218 USPQ 390, 395 (Fed. Cir. 1983); Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 144 USPQ 433 (C.C.P.A. 1965); In re MCI Commc'ns Corp., 21 USPQ2d 1534, 1538-39 (Comm’r Pats. 1991).
Typically, disclaimed matter will not be regarded as the dominant, or most significant, feature of a mark. However, since the Trademark Act permits an applicant to voluntarily disclaim registrable matter (see TMEP §1213.01(c)), disclaimed matter may be dominant or significant in some cases. As noted in MCI Commc'ns Corp., 21 USPQ2d at 1539, "Examining Attorneys will continue to consider the question of likelihood of confusion, under Section 2(d) of the statute, in relation to the marks as a whole, including any voluntarily disclaimed matter." See TMEP 1213.10.
In this case, the applied for mark consists of two words, one of which is an article. The 031 Mark consists of three words. And while "Global Nutrition" has been disclaimed from the 031 Mark, as noted in TMEP 1213.10, the entirety of a mark, including the disclaimed portions, must be regarded as a whole. Taking this into consideration, EL GALLO and GALLO GLOBAL NUTRITION are distinct on this basis alone. Average consumers certainly make a distinction between a two word trademark and compound or conjoined trademarks, and do not disregard words because they are articles or considered generic. The sound element of both marks are distinct. EL GALLO, as noted by the Examining Attorney’s translation, is Spanish for “the Rooster.” Due to the use of "El" (Spanish for "the"), it is evident that the Applicant's mark is intended to be pronounced in Spanish. Therefore, “GALLO” is phonetically pronounced “guy-yo”. In contrast, GALLO GLOBAL NUTRITION is a brand under Joseph Gallo Farms. This “GALLO” is pronounced in a way that rhymes with "shallow". Thus, the auditory portion of the marks is totally distinct and distinguishable by an average consumer. The additional words in GALLO GLOBAL NUTRITION give the marks a different appearance and auditory presentation. GALLO GLOBAL NUTRITION is a compound mark composed of three words with a total of 7 syllables whereas the Applicant’s mark is two words totaling three syllables. Due to the uniqueness in the sound and connotation, there is likely no confusion between the marks.
Based on an analysis of the two marks in their entirety, this supports that there is not a likelihood of confusion.
TWO: The similarity or dissimilarity and nature of the goods or services as described in an application or registration in connection with which a prior mark is in use.
GALLO GLOBAL NUTRITION makes nutritional supplements for animal feed and serves as a wholesaler for protein supplements for human consumption. Conversely, EL GALLO’s supplements are intended for human consumption and direct to consumer. Thus, while the goods are similar in that they are both nutritionally related, the owner of the 031 Mark uses it in connection, in part, with products for animal feed whereas the applicant intends to use its mark for products for human consumption. Moreover, those products sold by the owner of the 031 Mark that are intended for human consumption appear to be sold in bulk and incorporated into products produced and sold by third parties. Therefore, while the basic essence of the products are similar, the products themselves are intended for use in differing markets..
Based on these facts, the similarity of the goods, on its face, would be neutral in terms of lending support for or against a likelihood of confusion.
THREE: The similarity or dissimilarity of established, likely-to-continue trade channels.
As noted above, based on the website for the owner of the 031 Mark , the 031 Mark is used by its owner in connection with wholesale sales of nutritional supplements for human consumption and also animal feed supplements. Therefore, as a distributor, the goods under the 031 Mark are sold to manufacturers who then produce end products that are sold to the consumer. As such, the individual consumer is likely unaware that any product sold under the 031 Mark is used in connection with the ultimate end product. Conversely, EL GALLO will be used on products that are sold direct to consumer. Therefore, these two marks will be used in differing channels of trade.
Based on this analysis this factor supports that there is not a likelihood of confusion..
.
FOUR The conditions under which and buyers whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.
Nutritional supplements are not impulse buys. Consumers who are going to ingest a commodity that is for the purpose of providing an additional nutritional boost are generally looking for nutritional supplements that serve a particular need or are looking for a general nutritional supplement to provide overall nutritional support. Due to the purpose for which nutritional supplements are sought, consumers typically carefully research the supplements that will be ingested. As noted above, the 031 Mark is not sold directly to the end consumer but rather to manufacturers for use in producing end products. Due to this, the end consumer will not see the 031 Mark as the consumer makes its careful decision. As a product that is carefully purchased, consumers are likely to make the distinction between marks. For this reason, this factor weights in the applicant’s favor to show that there is not a likelihood of confusion. .
FIVE The fame of the prior mark (sales, advertising, length of use)
The 031 Mark has been in use for a period of time. As such, it has achieved some degree of fame, however minor, due to the narrow market that its serves. That said, while it may have a de minimus amount of fame in a very narrow market sector, it is not the market section that will be served by the Applicant's mark. As such, due to the de minimus fame, this factor weighs in favor of finding that there is not a likelihood of confusion, .
SIX The number and nature of similar marks in use on similar goods
Third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services. TMEP 1207.01(d)(iii). If the evidence establishes that the consuming public is exposed to third-party use of similar marks on similar goods, it “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”
A U.S. Trademark database search of the term “El Gallo” and “Gallo reveals three live, registered trademarks in IC 005. A search for the term “Rooster” reveals 5 additional live, registered trademarks in IC 005. The numerous filings for both Gallo and Rooster trademarks show the diluted nature of the known registrations and thus making confusion less likely.
SEVEN The nature and extent of any actual confusion
Applicant’s filing is 1(b), so this factor is not ripe and therefore should not weigh towards a finding of likelihood of confusion.
EIGHT The length of time during and conditions under which there has been concurrent use without evidence of actual confusion
Applicant’s filing is 1(b), so this factor is not ripe and therefore should not weigh towards a finding of likelihood of confusion.
NINE The variety of goods on which a mark is or is not used
Applicant’s filing is 1(b), so this factor is not ripe and therefore should not weigh towards a finding of likelihood of confusion.
TEN The market interface between applicant and the owner of a prior mark:
a. A Mere “consent” to register or use
b. Agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party
c. Assignment of mark, application, registration and good will of the related business
d. Laches and estoppel attributable to owner of prior mark and indicative of lack of confusion
This factor does not apply to the current case and therefore should not weight towards a finding of likelihood of confusion
ELEVEN The extent to which applicant has a right to exclude others from use of its mark on its goods
Applicant would have a limited right to exclude others from using its mark. As shown by the various filings for El Gallo and Gallo, many marks contain these terms as part of a phrase, which as addressed above makes them distinct from applicant's mark. Therefore, this factor weighs against a finding of confusion.
TWELVE The extent of potential confusion, i.e. whether de minimis or substantial
Given the fact that applicants are targeting a different customer base, there is likely de minimis potential confusion. Therefore, this factor weighs against a finding of confusion.
THIRTEEN Any other established fact probative of the effect of use
None known at this time.
Based upon the foregoing analysis, the majority of the DuPont factors lean in favor of no likelihood of confusion, and the Applicant respectfully requests that the Examining Attorney withdraw this objection.
2. Request for Information
Applicant’s products will at all times be complaint with Federal law.
1.Do or will applicant’s identified goods include any oils, extracts, ingredients or derivatives from the plant Cannabis sativa L (also known as cannabis, marijuana or hemp)?
NO
2.If the answer to Question 1 is “yes,” does the cannabis used or to be used in applicant’s goods contain more than 0.3 percent delta-9 tetrahydrocannabinol (THC) on a dry weight basis?
NO
3.If applicant has any documentation relative to the THC content of the oils, extracts or derivatives used or to be used in the goods, please submit them with the response.
N/A
4.If applicant’s goods do or will contain oils, extracts, ingredients or derivatives from the plant Cannabis sativa L which has more than 0.3 percent delta-9 tetrahydrocannabinol on a dry weight basis, identify the part or parts of the plant used in obtaining the oils, extracts, ingredients or derivatives.
NO
5.Do or will the goods include cannabidiol (CBD)?
NO
6.If so, will there be more than a trace amount of CBD in the goods, e.g., more than 50 parts per million (PPM)?
N/A
7.Do or will applicant’s identified goods include CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L?
N/A
3. Translation
Applicant agrees with the Examining Attorney’s suggested translation of El Gallo meaning the Rooster.
