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. 88340458 HAUS(Standard Characters, see http://uspto.report/TM/88340458/mark.png) has been amended as follows:

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

The Examiner has refused Applicant's mark HAUS as to non-alcoholic beverages in class 32 (incorrectly filed as class 31) based on a prior registration for THE HOUSE for non-alcoholic beverages in class 32. Applicant respectfully disagrees. The crux of the Examiner's finding of likelihood of confusion is based on the doctrine of foreign equivalents and the fact that Applicant's mark translates from German to English as "HOUSE." It is well- settled that although words from modern languages are generally translated into English, the doctrine of foreign equivalents is not an absolute rule and should be viewed merely as a guideline. In re Spirits Int'l, N.V., 563 F.3d 1347, 1351-52 (Fed. Cir. 2009). Furthermore, under the doctrine of foreign equivalents foreign words from common languages are translated into English only to determine similarity of meaning or connotation, which must be "weighed against the dissimilarities in sound and appearance of the marks." In re Thomas, 79 U.S.P.Q.2d 1021, 2006 WL 1258862 (T.T.A.B. 2006). Under this test, a conclusion as to the likelihood of confusion can only be reached after a weighing of similarity in sight and sound of the untranslated foreign mark as well as the similarity in meaning of the translated foreign mark. In re Ness & Co., 18 U.S.P.Q.2d 1815 (T.T.A.B. 1991). In comparing the marks at issue, it must be acknowledged that the cited mark begins with the term "THE" and the terms HOUSE and HAUS have clear differences in sound and appearance. While the term HOUSE in the cited mark ends in a very clear "s" sound, i.e., howss, Applicant?s mark ends in a hard "z" sound, i.e., howz. Furthermore, the marks are different in appearance with the cited mark, in addition to beginning with the word THE, having a silent "e" at the end of HOUSE, with the letters "OU" in the middle of the word. Applicant's HAUS mark appears truncated in comparison with the "A" in the middle "AU" creating a very distinctive difference from the "O" in HOUSE. In fact, the appearance of the two terms creates a distinct connotation in each word with Applicant's mark being distinctly German and the cited mark being distinctly English. Applicant acknowledges that these are small differences, however, such small differences must be considered in the context of the overall prevalence of use of the term "HOUSE" in association with non-alcoholic beverage products. Applicant attaches hereto TSDR records for over 25 other registered marks for non-alcoholic beverages that encompass the term "HOUSE." These include marks such as HOUSE FOODS, HOUSE KOMBUCHA, HOUSE OF LEMONADE, HOUSE OF POP, and HOUSE PRESS, among others. As the Board held in the seminal case of In re Broadway Chicken, Inc., 38 USPQ2d 1559, 1565-66 (TTAB 1996), where numerous marks for the same goods share a common term, such term is considered to be weak and consumers will distinguish composite marks sharing such common term based on small differences between the composite marks. Id. (applicant's mark BROADWAY CHICKEN would be distinguishable from BROADWAY PIZZA and BROADWAY BAR & PIZZA). Here, the cited mark peacefully co-exists with other "HOUSE" marks combined with generic terms for the same goods, such as HOUSE FOODS, HOUSE KOMBUCHA, HOUSE OF LEMONADE and HOUSE OF POP. Accordingly, Applicant's mark, which is distinct in sound and appearance from the cited mark THE HOUSE mark should also be allowed to peacefully co- exist as consumers surely will distinguish it from the cited mark based on such differences. On such basis, Applicant respectfully requests that the 2(d) refusal be withdrawn and that Applicant's application be passed through to publication.

EVIDENCE
Evidence in the nature of TSDR print outs of records has been attached.
Original PDF file:
evi_10715466-20191119155646138328_._HOUSE_marks.pdf
Converted PDF file(s) ( 94 pages)
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CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 031 for soft drinks, namely, soda, fruit flavored soft drinks, coffee-flavored soft drinks, soft drinks flavored with tea, fruit drinks, fruit-flavored drinks; fruit juices; vegetable juices; still water; carbonated waters; water beverages; non-alcoholic bitters; drinking vinegar; relaxation drinks in the nature of carbonated and non-carbonated soft drinks containing calming agents; energy drinks and sports drinks; isotonic drinks; syrups for making soft drinks and fruit drinks; concentrates, syrups and powders used in the preparation of soft drinks, sports drinks, energy drinks and fruit-flavored beverages; essences for use in making soft drinks, sports drinks, energy drinks and fruit-flavored beverages; preparations for making soft drinks, sports drinks, energy drinks and fruit drinks; guarana drinks; fruit nectars and fruit punch; juice base concentrates; carbonated non-alcoholic beverages

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 030 for coffee; coffee drinks
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: coffee; coffee drinks; drinking vinegarClass 030 for coffee; coffee drinks; drinking vinegar
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant hereby adds the following class of goods/services to the application:
New: Class 032 (Original Class: 031 ) for soft drinks, namely, soda, fruit flavored soft drinks, coffee-flavored soft drinks, soft drinks flavored with tea, fruit drinks, fruit-flavored drinks; fruit juices; vegetable juices; still water; carbonated waters; water beverages; non-alcoholic bitters; relaxation drinks in the nature of carbonated and non-carbonated soft drinks containing calming agents; energy drinks and sports drinks; isotonic drinks; syrups for making soft drinks and fruit drinks; concentrates, syrups and powders used in the preparation of soft drinks, sports drinks, energy drinks and fruit-flavored beverages; essences for use in making soft drinks, sports drinks, energy drinks and fruit-flavored beverages; preparations for making soft drinks, sports drinks, energy drinks and fruit drinks, namely, concentrates used in the preparation of soft drinks, sports drinks, energy drinks and fruit drinks; guarana drinks; fruit nectars and fruit punch; juice base concentrates; carbonated non-alcoholic beverages
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

The applicant's current attorney information: J. Scott Gerien. J. Scott Gerien of DICKENSON, PEATMAN & FOGARTY, is located at

      1455 FIRST STREET, SUITE 301
      NAPA, California 94559
      US
The docket/reference number is HAMF1-009.

The phone number is 707-252-7122.

The fax number is 707-255-6876.

The email address is tmdept@dpf-law.com

The applicants proposed attorney information: J. Scott Gerien. Other appointed attorneys are Katja Loeffelholz, Christopher Passarelli, Joy Durand. J. Scott Gerien of Dickenson, Peatman & Fogarty, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1455 First Street, Suite 301
      Napa, California 94559
      United States
The docket/reference number is HAMF1-009.

The phone number is 707-252-7122.

The fax number is 707-255-6876.

The email address is tmdept@dpf-law.com

J. Scott Gerien 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: J. SCOTT GERIEN. J. SCOTT GERIEN of DICKENSON, PEATMAN & FOGARTY, is located at

      1455 FIRST STREET, SUITE 301
      NAPA, California 94559
      US
The docket/reference number is HAMF1-009.

The phone number is 707-252-7122.

The fax number is 707-255-6876.

The email address is tmdept@dpf-law.com

The applicants proposed correspondence information: J. Scott Gerien. J. Scott Gerien of Dickenson, Peatman & Fogarty, is located at

      1455 First Street, Suite 301
      Napa, California 94559
      United States
The docket/reference number is HAMF1-009.

The phone number is 707-252-7122.

The fax number is 707-255-6876.

The email address is tmdept@dpf-law.com

SIGNATURE(S)
Response Signature
Signature: /J. Scott Gerien/     Date: 11/19/2019
Signatory's Name: J. Scott Gerien
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 7072527122

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:    J. SCOTT GERIEN
   DICKENSON, PEATMAN & FOGARTY
   
   1455 FIRST STREET, SUITE 301
   NAPA, California 94559
Mailing Address:    J. Scott Gerien
   Dickenson, Peatman & Fogarty
   1455 First Street, Suite 301
   Napa, California 94559
        
Serial Number: 88340458
Internet Transmission Date: Tue Nov 19 16:31:01 EST 2019
TEAS Stamp: USPTO/ROA-XXX.X.XX.XX-201911191631010789
67-88340458-7003f53a7522bf22852debcb550a
1d98c169ffcc83ccdabcc5c79c8ac93e2-N/A-N/
A-20191119155646138328