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. 88345247 KOR (Stylized and/or with Design, see http://uspto.report/TM/88345247/mark.png) has been amended as follows:

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

In the Office Action having a mailing date of May 29, 2019, the Examining Attorney (i) advised of a potential refusal on the basis of likelihood of confusion with the prior filed U.S. Application Serial No. 88/240,410 for “KOR KAFE” in Class 43 covering “café services” (the “Cited Application”), (ii) required Applicant amend the identification of services in Classes 41 and 43 to further clarify the services and (iii) advised of Applicant’s option to delete the Section 1(b) filing basis and rely on the Section 44(e) filing basis.  In response to the advisory of the potential refusal on the basis of likelihood of confusion with the Cited Application, Applicant submits the arguments against any such likelihood of confusion set forth below.  With respect to the requirement to amend the identification of services in Classes 41 and 43 and the advisory of the option to delete Section 1(b) filing basis, Applicant amends the identification of services and the filing basis as contained in the applicable portion of the form herein.

                Applicant respectfully requests the Examining Attorney reconsider the potential refusal on the basis of likelihood of confusion and allow the present application to proceed to publication because, as a consideration of the relevant Du Pont factor of the differences in the marks shows, there is no likelihood of confusion between the mark of the Cited Application and Applicant’s mark.  See In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973). 

The likelihood of confusion analysis cannot be based on only one portion of the mark.  In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).  Rather, the marks should be considered in their entireties.  See Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“…[A mark] must be considered as a whole in determining likelihood of confusion.”).  In the present case, the mark of the Cited Application is comprised of the elements “KOR” and “KAFE” while Applicant’s mark is comprised of the elements “KOR” in stylized font and a chevron and tear drop design element appearing above the stylized wording.  Accordingly, the sight, sound and meaning of the marks is entirely different.  The mark “KOR KAFE” used in connection with café services conveys the meaning to consumers of café services featuring staple foods or “core diet” foods.  Applicant’s mark, on the other hand, in connection with the design element of the downward-oriented chevron with the tear drop appearing above the chevron creates the impression of a cup being filled with a drink or beverage.  Accordingly, consumers viewing the marks are left with an entirely different commercial impression for each mark as used in connection with café services, on the one hand, and as used with entertainment and restaurant and bar services, on the other hand. 

The present case is similar to that of Steve’s Ice Cream, Inc. v. Steve’s Famous Hot Dogs 3 U.S.P.Q.2d 1477, 1479 (TTAB 1987) in which the Board determined that there is no likelihood of confusion between the marks of “STEVE’S & Design” featuring a design of humanized hot dogs and used in connection with restaurant services, on the one hand, and “STEVE’S” used in connection with ice cream, on the other hand, when the marks were considered in their entireties because the marks were different due to the additional design element appearing in the first mark. 

Also similar to the present case is that of In re Don’t Run Out, Inc., Serial No. 87344127 (October 31, 2019) in which the Board determined that there was no likelihood of confusion between the marks “PUBLIC GOODS” covering personal hygiene items, on the one hand, and “PUBLIX” also covering personal hygiene items including soap, dental floss and toilet paper because the marks had different commercial impressions where the mark “PUBLIX” was a coined term with no recognized meaning and the mark “PUBLIC GOODS” gave consumers the commercial impression that the personal hygiene items labeled with the mark were available and affordable. 

Turning back to the present case, Applicant’s mark incorporating the stylized wording “KOR” and the design element of the downward-pointed chevron and tear drop is different in sight, sound and meaning from that of the Cited Application where Applicant’s KOR & Design mark creates a distinctly different commercial impression when used in connection with Applicant’s entertainment, restaurant and beverage services than that of the “KOR KAFE” mark when used in connection with café services.  Accordingly, there is no likelihood of confusion between Applicant’s mark and that of the Cited Application and Applicant respectfully requests the Examining Attorney withdraw the advisory of a potential refusal on the basis of likelihood of confusion.  It is now believed that the case is in condition for publication.  Should the Examining Attorney have any questions regarding the foregoing, please contact the undersigned at (303) 863-9700. 

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment services; nightclub services, entertainment; ballrooms; discotheque services; planning recreation activities; party planning, entertainment; organization of balls; arranging and conducting of concerts; organization of shows, impresario services; organize entertainment, sports, and cultural activities and events
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.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Taiwan registration number 01855741 registered 07/16/2017 with a renewal date of __________ and an expiration date of 07/15/2027 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Entertainment services; Entertainment services, namely, planning recreation activities in the nature of live musical performances, arranging social entertainment events, hosting social entertainment events, conducting parties, after-hours night club services, arranging and conducting special events for social entertainment purposes; nightclub services, entertainment; ballrooms; discotheque services; party planning, entertainment; planning recreation activities; organization of balls; arranging and conducting of concerts; organization of shows, impresario services; organize entertainment, sports, and cultural activities and eventsClass 041 for Entertainment services, namely, planning recreation activities in the nature of live musical performances, arranging social entertainment events, hosting social entertainment events, conducting parties, after-hours night club services, arranging and conducting special events for social entertainment purposes; nightclub services, entertainment; discotheque services; party planning, entertainment; organization of balls
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Taiwan registration number 01855741 registered 07/16/2017 with a renewal date of __________ and an expiration date of 07/15/2027 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 043 for Shops for providing hot and cold beverages in the nature of a restaurant; restaurants; brasserie services; bar services; cocktail catering services; pubs; food and drink catering; catering services; rental of exhibition venues; rental of venues
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.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Taiwan registration number 01855985 registered 07/16/2017 with a renewal date of __________ and an expiration date of 07/15/2027 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Shops for providing hot and cold beverages in the nature of a restaurant; restaurants; brasserie services; bar services; cocktail catering services; pubs; food and drink catering; catering services; rental of exhibition venues; rental of venues; rental of venues, namely, for private events, corporate buy-outs, special holiday eventsClass 043 for Shops for providing hot and cold beverages in the nature of a restaurant; restaurants; brasserie services; bar services; cocktail catering services; pubs; food and drink catering; catering services; rental of exhibition venues; rental of venues, namely, for private events, corporate buy-outs, special holiday events
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Taiwan registration number 01855985 registered 07/16/2017 with a renewal date of __________ and an expiration date of 07/15/2027 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The applicant's current attorney information: Miriam D. Trudell. Miriam D. Trudell of SHERIDAN ROSS P.C., is located at

      1560 BROADWAY, SUITE 1200
      DENVER, Colorado 80202
      US
The docket/reference number is 3559KOR-2.

The phone number is 303-863-9700.

The fax number is 303-863-0223.

The email address is mtrudell@sheridanross.com

The applicants proposed attorney information: Miriam D. Trudell. Other appointed attorneys are Sabrina C. Stavish, Lew Hansen, Sarah J. Schneider, Pamela N. Hirschman, Caroline E. Bryce, Jeanette E. Sinclare, Autumn R. Hartman, Susan K. Miller and all other attorneys of Sheridan Ross P.C.. Miriam D. Trudell of SHERIDAN ROSS P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1560 BROADWAY, SUITE 1200
      DENVER, Colorado 80202
      United States
The docket/reference number is 3559KOR-2.

The phone number is 303-863-9700.

The fax number is 303-863-0223.

The email address is mtrudell@sheridanross.com

Miriam D. Trudell 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: MIRIAM D. TRUDELL. MIRIAM D. TRUDELL of SHERIDAN ROSS P.C., is located at

      1560 BROADWAY, SUITE 1200
      DENVER, Colorado 80202
      US
The docket/reference number is 3559KOR-2.

The phone number is 303-863-9700.

The fax number is 303-863-0223.

The email address is mtrudell@sheridanross.com

The applicants proposed correspondence information: Miriam D. Trudell. Miriam D. Trudell of SHERIDAN ROSS P.C., is located at

      1560 BROADWAY, SUITE 1200
      DENVER, Colorado 80202
      United States
The docket/reference number is 3559KOR-2.

The phone number is 303-863-9700.

The fax number is 303-863-0223.

The email address is mtrudell@sheridanross.com; jsinclare@sheridanross.com

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /miriam trudell/      Date: 11/27/2019
Signatory's Name: Miriam D. Trudell
Signatory's Position: Attorney of Record, Colorado bar member

Response Signature
Signature: /jeanette sinclare/     Date: 11/27/2019
Signatory's Name: Jeanette E. Sinclare
Signatory's Position: Associate Attorney, Sheridan Ross P.C., Colorado bar member

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:    MIRIAM D. TRUDELL
   SHERIDAN ROSS P.C.
   
   1560 BROADWAY, SUITE 1200
   DENVER, Colorado 80202
Mailing Address:    Miriam D. Trudell
   SHERIDAN ROSS P.C.
   1560 BROADWAY, SUITE 1200
   DENVER, Colorado 80202
        
Serial Number: 88345247
Internet Transmission Date: Wed Nov 27 13:08:01 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019112713080122
3065-88345247-700dd889feabd0697c1325fe08
b4d1261f0e7b38d22f4f86a21a62cfc2cd324d3-
N/A-N/A-20191127124558791313