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. 88355603 TURNSTYLE UNDERGROUND MARKET(Standard Characters, see http://uspto.report/TM/88355603/mark.png) has been amended as follows:

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

I. INTRODUCTION This communication is in response to the final Office Action, dated June 12, 2019, wherein the Examining Attorney refused the registration of the mark TURNSTYLE UNDERGROUND MARKET in class 35 for ?Promoting the goods and services of others by means of operating a shopping mall comprised of a wide variety of stores and restaurants; Real estate marketing services in the field of commercial properties and shopping malls; Business management of shopping centers; Promotional and advertising services for lessees of shopping centers; Commercial business operation and management of shopping centers and malls; Shopping center services, namely, business management services for shopping malls and promoting the goods and services of others by means of operating a shopping mall? in Class 35 and ?Shopping center services, namely, rental of shopping center space; Operating a shopping mall for sellers of goods and services? in Class 36 (?Applicant?s Mark?) on the ground that Applicant's mark is likely to be confused with Registration No. 3076744 for TURN STYLE for ?Retail consignment stores featuring women's, men's, and children's clothing and related accessories, home furnishings and decorating accessories, dining linens, dishes, drinking glasses, and table knives, forks and spoons? in Class 35, owned by Consignment Ventures, Inc. (the ?Consignment Mark?). The Examining Attorney has also cited a prior filed application as a potential bar to Applicant?s Mark, namely the application for TURNSTILE, Serial No. 79/240,523 for ?Business management; Business administration services; Advisory and consultancy services relating to business management; Talent agency services; Business management of celebrities, artists, models, professional athletes, broadcasters, authors, designers, actors, performing artists, photographers and writers; Management of the business affairs of others; Consultancy services relating to business management; Professional business management and professional business consultancy for performing artists, teams of performing artists, performing artist organizations, performing artist businesses, sports people, sports teams, sports organizations, and sports businesses; Management of personnel; Assistance in management of business activities and business events; Business negotiation of business contracts, licenses, and endorsements for others; Business project management services; Organization of trade exhibitions, trade fairs, trade demonstrations, and business competitions for commercial or advertising purposes; Promotional management for sports competitions, sports personalities, and celebrities; Commercial consultancy; Consulting services in the field of promotional sponsorship; Planning and conducting special events, exhibitions, and presentations for commercial, promotional, and advertising purposes? in Class 35 and ?Advisory services in relation to the organization, arrangement, and management of sporting events, sporting competitions, musical entertainment events, social entertainment events, concerts, and educational colloquiums, conferences, congresses, seminars, and symposiums in the field of the arts; Exhibitions for entertainment purposes; Organization, arrangement, and management of sporting events, sporting competitions, musical entertainment events, social entertainment events, concerts, and educational colloquiums, conferences, congresses, seminars, and symposiums in the field of the arts; Exhibitions for entertainment purposes; Organization of concerts, social entertainment events, and sporting events? in Class 41, owned by Turnstile Group Limited (the ?Turnstile Group Mark?), which mark has now proceeded to registration. The Consignment Mark and the Turnstile Group Mark are collectively referred to herein as the ?Cited Marks?), and Applicant will deal with both marks herein since the Turnstile Group Mark has no passed to registration. For the reasons stated herein, Applicant requests that the refusals be withdrawn and Applicant's mark be allowed to pass to publication. II. THERE IS NO LIKELIHOOD OF CONFUSION WITH THE CITED MARKS There is no likelihood of confusion between Applicant?s Mark and the Cited Marks. In determining whether there is a likelihood of confusion, it has long been held that a mere possibility of confusion will not create a likelihood of confusion, and it must be shown that confusion is probable. See, e.g. Bongrain International (American) Corporation v. Delice de France, Inc., 1 USPPQ2d 1775 (Fed. Cir. 1987). The long-standing test for likelihood of confusion used by the United States Patent and Trademark Office is set forth in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The DuPont case lists a number of factors to be considered when undertaking a likelihood of confusion analysis, namely: 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 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 condition under which and buyers to whom sales are made, i.e., impulse vs. careful, sophisticated shopping; 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 have 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; 11) the extent to which prior user 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; and 13) any other probative factors. A likelihood of confusion analysis should consider all of the DuPont factors for which there is evidence, but "may focus ...on dispositive factors, such as similarity of the marks and relatedness of the goods." Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); Herbko International Inc. v. Kappa Books Inc., 64 USPQ2d 1375 (Fed. Cir. 2002). In this matter, an analysis of all the DuPont factors is not necessary, but Applicant will address the pertinent factors below. A. THE SERVICES AND THE TRADE CHANNELS ARE DIFFERENT Applicant?s services are significantly different than the services covered in the registrations for both of the Cited Marks, and the services do not have the same trade channels. Thus, consumers will not be confused. First, Applicant?s services, as amended herein, are ?Promoting the goods and services of others by means of operating a shopping mall comprised of a wide variety of stores and restaurants; Real estate marketing services in the field of commercial properties and shopping malls; Business management of shopping centers; Promotional and advertising services for lessees of shopping centers; Commercial business operation and management of shopping centers and malls; Shopping center services, namely, business management services for shopping malls and promoting the goods and services of others by means of operating a shopping mall? in Class 35 and ?Shopping center services, namely, rental of shopping center space; Operating a shopping mall for sellers of goods and services, namely, rental, brokerage, leasing and management of commercial properties within a shopping mall? in Class 36. Attached hereto as Exhibit A are true and correct copies of pages from Applicant?s website showing uses of the trademark in connection with an underground mall, which can be found at http://www.turn-style.com/. As detailed on the website, the underground market includes 39 unique eateries, shops and pop-ups, including 19 vendors, 10 retail stores and 10 kiosks. The underground market is connected to the 59th St-Columbus Circle subway station and is a fully city block. Attached hereto as Exhibit B are various press articles about the underground market. The underground market caters to New York City commuters. Applicant?s services and channels of trade are entirely different than those of either of the Cited Marks. The Consignment Mark is for ?Retail consignment stores featuring women's, men's, and children's clothing and related accessories, home furnishings and decorating accessories, dining linens, dishes, drinking glasses, and table knives, forks and spoons.? Attached hereto as Exhibit C are true and correct copies of pages from the website for the Consignment Mark, located at http://www.turnstyleconsign.com/. As evidenced by the website for the Consignment Mark, this is store that is dedicated to allowing consumers to sell used goods (primarily apparel and furniture) on consignment. The company has an online presence, but the only retail locations are in Arizona, Colorado and Minnesota. Consumers who are looking for the Consignment Mark would not be confused by Applicant?s underground market in the New York City subway system, which features unique eateries, shops and pop-ups. There can be no confusion between the two as the services and the trade channels are entirely different. Furthermore, Applicant?s services and channels of trade are entirely different than those of the Turnstile Group Mark. The Turnstile Group Mark is for ?Business management; Business administration services; Advisory and consultancy services relating to business management; Talent agency services; Business management of celebrities, artists, models, professional athletes, broadcasters, authors, designers, actors, performing artists, photographers and writers; Management of the business affairs of others; Consultancy services relating to business management; Professional business management and professional business consultancy for performing artists, teams of performing artists, performing artist organizations, performing artist businesses, sports people, sports teams, sports organizations, and sports businesses; Management of personnel; Assistance in management of business activities and business events; Business negotiation of business contracts, licenses, and endorsements for others; Business project management services; Organization of trade exhibitions, trade fairs, trade demonstrations, and business competitions for commercial or advertising purposes; Promotional management for sports competitions, sports personalities, and celebrities; Commercial consultancy; Consulting services in the field of promotional sponsorship; Planning and conducting special events, exhibitions, and presentations for commercial, promotional, and advertising purposes? in Class 35 and ?Advisory services in relation to the organization, arrangement, and management of sporting events, sporting competitions, musical entertainment events, social entertainment events, concerts, and educational colloquiums, conferences, congresses, seminars, and symposiums in the field of the arts; Exhibitions for entertainment purposes; Organization, arrangement, and management of sporting events, sporting competitions, musical entertainment events, social entertainment events, concerts, and educational colloquiums, conferences, congresses, seminars, and symposiums in the field of the arts; Exhibitions for entertainment purposes; Organization of concerts, social entertainment events, and sporting events? in Class 41. Attached hereto as Exhibit D are true and correct copies of pages from the website for the Turnstile Group Mark, located at www.turnstilegroup.com. As evidenced by the website for the Turnstile Group Mark, this is a high-end consulting agency providing insight and strategy to the global sport and entertainment industry. Neither the services set forth in the registration, nor the services offered on their website, are similar to Applicant?s services. Moreover, the Turnstile Group Mark caters to companies who are looking to value their businesses in the sports and entertainment industry. Consumers who are looking for the Turnstile Group Mark would not be confused by Applicant?s underground market in the New York City subway system, which features unique eateries, shops and pop-ups. There can be no confusion between the two as the services and the trade channels are entirely different. Based on a review of the goods and services detailed in the various marks and a review of how each mark is actually used in the marketplace, it is clear that Applicant?s services are very different from the services of the Cited Marks and the channels of trade for Applicant?s services do not overlap with those of the Cited Marks (just as the Cited Marks do not overlap with one another). Consumers will not be confused between Applicant?s Mark and the Cited Marks, and Applicant?s Mark can coexist with the Cited Marks, just as the Cited Marks have been allowed to coexist on the register and in the marketplace with each other without confusion. B. THE MARKS ARE DISSIMILAR An analysis of the Applicant?s Mark and the Cited Marks for similarities in appearance, sound, connotation and commercial impression clearly illustrate that there is no likelihood of confusion. It is well settled that marks must be examined as a whole as they are encountered by the public. The TTAB stated in Genesco, Inc. v. Martz, 66 USPQ2d 1260 (TTAB 2003): It is well settled that marks must be considered in their entities, not dissected or split into component parts and each part compared with other parts. This is so because it is the entire mark which is perceived by the purchasing public, and therefore, it is the entire mark that must be compared to any other mark. It is the impression created by the involved marks, each considered as a whole that is important. Id. at 1269; see also, In re Hearst Corp., 25 U.S.P.Q.2d 1238, 1239 (Fed.Cir. 1992). Here, the public will encounter Applicant?s Mark ? TURNSTYLE UNDERGROUND MARKET ? and the Cited Marks ? TURN STYLE and TURNSTILE entirely differently. While all three marks include some form of the word TURNSTYLE, Applicant?s Mark includes the words UNDERGROUND MARKET, which gives the mark an entirely different commercial impression. Even though Applicant is disclaiming the words UNDERGROUND MARKET, it does not change the fact that 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, 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); TMEP ? 1213.10. In addition, Applicant?s Mark presents TURNSTYLE as one word, whereas the Consignment Mark presents TURN STYLE as two words, and the Turnstile Group Mark presents the word TURNSTILE with a different spelling. When viewed in their entirety, Applicant?s Mark has a completely different appearance, sound, connotation and commercial impression than the Cited Marks (indeed the Cited Marks are more similar to one another than the Cited Mark is to either of them). See, e.g. Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004) (use of THE RITZ KIDS for clothing items (including gloves) and RITZ for various kitchen textiles (including barbeque mitts) is not likely to cause confusion because THE RITZ KIDS creates a different commercial impression). Thus, Applicant?s Mark should be able to co-exist on the register with the Cited Marks, just as they have been allowed to co-exist with one another. C. CONSUMERS WILL TAKE CARE IN CHOOSING THE SERVICES OFFERED AND ANY CONFUSION WOULD BE DE MINIMIS Consumers will take care in choosing the services offered by Applicant?s Mark, as well as the Cited Marks; thus any confusion would be de minimis. Consumers visiting Applicant?s underground market will take care before visiting the market and purchasing food and other products from the unique eateries, shops and pop-ups located therein. Likewise, consumers looking to sell apparel and furniture on consignment, will be careful in deciding what company to use and would not believe a consignment store was operating an underground marketplace featuring numerous restaurants and boutiques. Companies looking for consulting and valuation services in the entertainment and sports industry will also take time and carefully consider the company they choose. Thus, consumers for all of the marks will carefully consider what they are purchasing and will not be confused between Applicant?s Mark and the Cited Marks. Any confusion would be de minimis if it even existed at all. D. THE MARKS HAVE CO-EXISTED WITHOUT CONFUSION Applicant?s Mark has coexisted with the Cited Marks in the marketplace since at least as early as December 2017 without confusion; thus, Applicant?s Mark should be able to continue to co-exist on the register and in the marketplace. To date there has been no confusion, and any confusion that could happen would be de minimis, if at all. Based on the foregoing, it is clear that confusion between Applicant?s Mark and the Cited Marks is highly unlikely and Applicant?s Mark should be able to co-exist with the Cited Marks on the register, just as they are allowed to co-exist with one another. III. CONCLUSION Applicant respectfully requests that the Examining Attorney withdraw the rejection of the registration of the Applicant?s Mark on the ground of likelihood of confusion and allow the application to pass to publication.

EVIDENCE
Evidence in the nature of Exhibits A-D as referenced in the office action response has been attached.
Original PDF file:
evi_3812512210-20191210130149380539_._Exhibits_A-D.pdf
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CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Shopping center services, namely, rental of shopping center space; Operating a shopping mall for sellers of goods and services
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/25/2017 and first used in commerce at least as early as 12/25/2017 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Shopping center services, namely, rental of shopping center space; Operating a shopping mall for sellers of goods and services; Operating a shopping mall for sellers of goods and services, namely, rental, brokerage, leasing and management of commercial properties within a shopping mallClass 036 for Shopping center services, namely, rental of shopping center space; Operating a shopping mall for sellers of goods and services, namely, rental, brokerage, leasing and management of commercial properties within a shopping mall
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/25/2017 and first used in commerce at least as early as 12/25/2017 , and is now in use in such commerce.
The applicant's current attorney information: Mary L. Grieco, Safia A. Anand, Steven R. Gursky. Mary L. Grieco, Safia A. Anand, Steven R. Gursky of OLSHAN FROME WOLOSKY LLP, is located at

      1325 AVENUE OF THE AMERICAS
      NEW YORK, New York 10019
      US
The docket/reference number is 9471.001 ean.

The phone number is 212-451-2300.

The fax number is 212.451.2222.

The email address is mgrieco@olshanlaw.com

The applicants proposed attorney information: Mary L. Grieco, Safia A. Anand, Steven R. Gursky. Other appointed attorneys are Safia Anand. Mary L. Grieco, Safia A. Anand, Steven R. Gursky of OLSHAN FROME WOLOSKY LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1325 AVENUE OF THE AMERICAS
      NEW YORK, New York 10019
      United States
The docket/reference number is 9471.001 ean.

The phone number is 212-451-2300.

The fax number is 212.451.2222.

The email address is mgrieco@olshanlaw.com

Mary L. Grieco, Safia A. Anand, Steven R. Gursky 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: MARY L. GRIECO, SAFIA A. ANAND, STEVEN R. GURSKY. MARY L. GRIECO, SAFIA A. ANAND, STEVEN R. GURSKY of OLSHAN FROME WOLOSKY LLP, is located at

      1325 AVENUE OF THE AMERICAS
      NEW YORK, New York 10019
      US
The docket/reference number is 9471.001 ean.

The phone number is 212-451-2300.

The fax number is 212.451.2222.

The email address is mgrieco@olshanlaw.com

The applicants proposed correspondence information: Mary L. Grieco, Safia A. Anand, Steven R. Gursky. Mary L. Grieco, Safia A. Anand, Steven R. Gursky of OLSHAN FROME WOLOSKY LLP, is located at

      1325 AVENUE OF THE AMERICAS
      NEW YORK, New York 10019
      United States
The docket/reference number is 9471.001 ean.

The phone number is 212-451-2300.

The fax number is 212.451.2222.

The email address is mgrieco@olshanlaw.com; sanand@olshanlaw.com; enunn@olshanlaw.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use UNDERGROUND MARKET apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /marylgrieco/     Date: 12/10/2019
Signatory's Name: Mary L. Grieco
Signatory's Position: Attorney of Record, NY state bar member

Signatory's Phone Number: 212-451-2300

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:    MARY L. GRIECO, SAFIA A. ANAND, STEVEN R. GURSKY
   OLSHAN FROME WOLOSKY LLP
   
   1325 AVENUE OF THE AMERICAS
   NEW YORK, New York 10019
Mailing Address:    Mary L. Grieco, Safia A. Anand, Steven R. Gursky
   OLSHAN FROME WOLOSKY LLP
   1325 AVENUE OF THE AMERICAS
   NEW YORK, New York 10019
        
Serial Number: 88355603
Internet Transmission Date: Tue Dec 10 13:05:53 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019121013055307
3409-88355603-70084cf4ac2e6a0ad917851781
a12fe3e1f4eed5e3c642ce7f433c5cba312ed83e
-N/A-N/A-20191210130149380539