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. 88346667 PRIMAL(Standard Characters, see http://uspto.report/TM/88346667/mark.png) has been amended as follows:

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

The Examiner?s report indicates that the trademark examining attorney has refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between Applicant?s mark and U.S Registration Nos. 4249017, 4131172 and 4619478. The Examiner also cites pending U.S. Trademark Application Nos. 88258731, 88159078, and 87959932. Applicant respectfully traverses. Applicant disagrees with the Examiner?s assertion. While it is true that both Applicant?s mark ?PRIMAL? and the marks cited by the Examiner apply to goods under international class 031, there is little likelihood that a consumer would be confused as to the source of the goods associated with each of the above marks due to the clearly dissimilar nature of the marks and the goods associated with those marks. The Court of Appeals for the Federal Circuit has provided the following guidance with regard to determining and articulating likelihood of confusion: The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used (citations omitted). It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark (footnote omitted). On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties (footnote omitted). Indeed, this type of analysis appears to be unavoidable. In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985). There is no mechanical test for determining likelihood of confusion. The issue is not whether the actual goods are likely to be confused but, rather, whether there is a likelihood of confusion as to the source of the goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein. Each case must be decided on its own facts. TMEP 1207.01 discloses the case of ?In re du Pont de Nemours & Co.? 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) in which the Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion. The ?du Pont? factors are as follows: 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 . . . described in an application or registration or 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 to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing. 5. The fame of the prior mark 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 the 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 the applicant and the owner of a prior mark . . . 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 . . . . 13. Any other established fact probative of the effect of use. Looking to the second factor, the dissimilarity and nature of the goods is paramount in this instance. As filed, the instant application described its goods as ?wildlife seed mixtures? due to the limited options available under the TEAS application. As discussed with the Examiner in a telephonic interview on Wednesday, August 21, 2019, the mark in the instant application applies to: ? upland game feed (i.e., pheasant, quail, grouse, partridge, chukar, snipe, prairie chicken, doves, pigeons, ptarmigan, and wild turkey); wildlife seed mixtures; seeds for wildlife plantings used by hunters to develop forage stands ? seed mixtures for food plots to feed and attract game animals (i.e., deer, bear, moose, rabbit, and woodchuck) ? seeds for wildlife plantings used by hunters to develop forage stands The goods are intended for non-domesticated animals which are game animals as either a food source or to grow food which serves as an attractant for those game animals. Looking to the first factor, the marks are clearly similar as to appearance and sound. However, there are significant differences in connotation and commercial impression. Regarding connotation, there is simply no reason for a consumer looking to purchase pet food to have any desire to purchase upland game feed, seed mixtures for food plots, or seeds for wildlife plantings used by hunters to feed their domesticated dog, cat, hamster or canary. The same can be said for consumers looking to attract song-birds such as finch, sparrow, or blue-jay into their yard. The three comparison products cited by the Examiner, Kaytee, Drs. Foster and Smith, and Purina, actually help to drive the applicant?s point home. All three of these products apply to domesticated animals or non-game animals and are in no way related to applicant?s goods. Looking specifically to Purina is not a reasonable comparison due to the brand being one of the most ubiquitous pet food brands in the US market. Similar pet food titans include Premium brands such as Hill?s Pet Nutrition (Science Diet), Iams, and Eukanuba, each of which cater to domesticated animals or non-game animals. The six marks cited by the Examiner also apply solely to pet foods and include: ? 4249017 - Pet food ? 4131172 - Pet food; Pet treats. ? 4619478 - Pet food. ? 88258731 - Pet food specifically to dogs and cats ? 88159078 - Pet food; Pet treats ? 87959932 - Dog food; Pet treats The six marks cited by the Examiner DO NOT IN ANY WAY apply to goods intended for non-domesticated animals which are game animals as either a food source or to grow food which serves as an attractant for those game animals. Looking now to the third factor, the trade channels for these goods are very different. The goods sold under Applicant?s PRIMAL mark will be sold in sporting goods and hunting stores and outlets such as Bass Pro Shops, Cabela?s, and other seed outlets which cater to hunters. (See the attached Exhibits A, B, C and D) Applicant?s goods will not be sold in pet stores or veterinarian?s offices, as is the case with all of the marks cited by the Examiner. Looking now to the fourth factor, consumers (almost exclusively hunters) who are purchasing upland game feed, seed mixtures for food plots to feed and attract game animals, and seeds for wildlife plantings used by hunters to develop forage stands are very well informed and will not be making impulsive purchases in the hope that this year?s hunting season will be more successful than last years. This means that consumers looking to purchase a product under the ?PRIMAL? mark for upland game feed, seed mixtures for food plots to feed and attract game animals, and seeds for wildlife plantings used by hunters to develop forage stands will do so as a careful, sophisticated purchasers, and not on impulse. Based on the arguments and evidence cited above, it is clear that there is no likelihood that a consumer would be confused as to the origin of goods (for upland game feed, seed mixtures for food plots to feed and attract game animals, and seeds for wildlife plantings used by hunters to develop forage stands) from the Applicant bearing the ?PRIMAL? mark when compared to alternate ?PRIMAL? marks. Hence, the Examiner?s rejection should be removed, and the mark should be allowed to register on the principal register.

EVIDENCE
Evidence in the nature of Screen shots from retailers selling similar goods. has been attached.
JPG file(s):
Evidence-1
Evidence-2
Original PDF file:
evi_84676116-20190828100739220334_._Exhibit_C_Pennington_Seed_Mixes_for_Food_Plots.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_84676116-20190828100739220334_._Exhibit_D_HANCOCK_Seed_Mixes.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 031 for Wildlife seed mixtures
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: upland game feed; wildlife seed mixtures; seeds for wildlife plantings used by hunters to develop forage stands; seed mixtures for food plots to feed and attract game animals; seeds for wildlife plantings used by hunters to develop forage standsClass 031 for upland game feed; wildlife seed mixtures; seeds for wildlife plantings used by hunters to develop forage stands; seed mixtures for food plots to feed and attract game animals; seeds for wildlife plantings used by hunters to develop forage stands
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: Blake E. Vande Garde. Blake E. Vande Garde of ERICKSON KERNELL, IP, is located at

      8900 STATE LINE ROAD, SUITE 500
      LEAWOOD, Kansas 66206
      US
The docket/reference number is 3105.2.

The phone number is 704-607-6507.

The email address is bvg@kcpatentlaw.com

The applicants proposed attorney information: Blake E. Vande Garde. Blake E. Vande Garde of ERICKSON KERNELL, IP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      8900 STATE LINE ROAD, SUITE 500
      LEAWOOD, Kansas 66206
      United States
The docket/reference number is 3105.2.

The phone number is 704-607-6507.

The email address is bvg@kcpatentlaw.com

Blake E. Vande Garde 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: BLAKE E. VANDE GARDE. BLAKE E. VANDE GARDE of ERICKSON KERNELL, IP, is located at

      8900 STATE LINE ROAD, SUITE 500
      LEAWOOD, Kansas 66206
      US
The docket/reference number is 3105.2.

The phone number is 704-607-6507.

The email address is bvg@kcpatentlaw.com; ekdkdocket@kcpatentlaw.com

The applicants proposed correspondence information: Blake E. Vande Garde. Blake E. Vande Garde of ERICKSON KERNELL, IP, is located at

      8900 STATE LINE ROAD, SUITE 500
      LEAWOOD, Kansas 66206
      United States
The docket/reference number is 3105.2.

The phone number is 704-607-6507.

The email address is bvg@kcpatentlaw.com; ekdk@kcpatentlaw.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Examiner has made a Varietal Name Information request. Specifically: (1) Whether PRIMAL has ever been used or will be used as a varietal or cultivar name; and (2) Whether PRIMAL has ever been used or will be used in connection with a plant patent, utility patent, or certificate for plant-variety protection. The answer to both questions is "NO"


SIGNATURE(S)
Response Signature
Signature: /blake e vande garde/     Date: 08/28/2019
Signatory's Name: Blake Vande Garde
Signatory's Position: Attorney of record, Kansas bar member

Signatory's Phone Number: 7046076507

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:    BLAKE E. VANDE GARDE
   ERICKSON KERNELL, IP
   
   8900 STATE LINE ROAD, SUITE 500
   LEAWOOD, Kansas 66206
Mailing Address:    Blake E. Vande Garde
   ERICKSON KERNELL, IP
   8900 STATE LINE ROAD, SUITE 500
   LEAWOOD, Kansas 66206
        
Serial Number: 88346667
Internet Transmission Date: Wed Aug 28 10:36:01 EDT 2019
TEAS Stamp: USPTO/ROA-X.XX.XX.XXX-201908281036012898
32-88346667-610ddfd6354da9c2aedfb99df1d9
9ecb99261ae6f93a5e67347dad162a82dbfd86-N
/A-N/A-20190828100739220334