Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

---

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88357327 EXPLORER(Standard Characters, see http://uspto.report/TM/88357327/mark.png) has been amended as follows:

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

UNITED STATES PATENT AND TRADEMARK OFFICE

Applicant:	Central National Gottesman Inc.
Mark:	EXPLORER Serial No. 88/357,327
Filing Date:	March 26, 2019
Law Office:	115
Examining Attorney:	James Hill

OFFICE ACTION RESPONSE

Applicant Central National Gottesman Inc. (“Applicant”) makes this submission in response to the Office Action with an issue date of March 8, 2021 (the “Office Action”), with respect to, Serial No. 88/357,327 for EXPLORER (the “Mark”), for goods in International Class 16 and International Class 17 (the “Application”).

Informalities

Applicant hereby requests that the identification of goods be amended as follows:

Class 16: paper carton sealing tape; plastic films for packaging; envelopes; paper envelopes for packaging; corrugated boxes; plastic bubble packs for wrapping or packaging; plastic film for wrapping; plastic film for packaging; food wrapping plastic film; poly-olefin shrink film for packaging and wrapping; poly-olefin shrink film used as packaging for food; poly plastic bags for packaging and wrapping; general purpose poly plastic bags; poly-olefin shrink film for industrial wrapping and packaging purposes

Class 17: adhesive tape for sealing cartons for industrial or commercial use; biodegradable plastic film for use in laminating paper; poly-olefin film with a rubber adhesive used to protect surfaces; poly-olefin shrink film for industrial packing purposes

ARGUMENT

The Examining Attorney refused registration of the Application alleging a likelihood of confusion with U.S. Registration Nos. 5718727 for EXPLORERS LET YOUR JOURNEY BEGIN and Design for goods including “packaging materials made of paper” in International Class 16 and 6224827 for “EXPLORER DREAM” for goods including “paper, cardboard and goods made from these materials, namely, boxes of cardboard, boxes of paper; plastic materials for packaging, namely, bags of plastic for packaging, plastic film for packaging” in International Class 16 (the “Cited Registrations”) under Section 2(d) of the Trademark Act. Applicant respectfully requests that the Examining Attorney withdraw the refusal for the reasons stated below.

1. Applicant’s Other Registration for EXPLORER Co-Exists with The Cited Registrations

The Applicant is the owner of Registration No. 3647519 for the mark EXPLORER (the “Prior EXPLORER Registration”), which registered June 30, 2009, a decade or more before the registration dates of the Cited Registrations. A copy of the Prior EXPLORER Registration and the renewal confirmation are attached as Exhibit A. The Prior EXPLORER Registration covers “paper for commercial and digital printing, paper for writing, copying, and printing, bond paper, bristol paper, glassine paper, offset paper, paper board” in International Class 16.

When determining whether the coexistence of the applicant’s prior registration with another party’s registration weighs against citing the latter registration in a §2(d) refusal of the applicant’s applied-for mark, the Board has held that the examining attorney should consider: (1) whether the applicant’s prior registered mark is the same as the applied-for mark or is otherwise not meaningfully different; (2) whether the identifications of goods/services in the application and the applicant’s prior registration are identical or identical in relevant part; and (3) the length of time the applicant’s prior registration has co-existed with the registration being considered as the basis for the §2(d) refusal. See In re Strategic Partners, Inc., 102 USPQ2d 1397, 1400 (TTAB 2012). “Where an applicant owns a prior registration that is over five years old and the mark is substantially the same as in the applied-for application, this can weigh against finding that there is a likelihood of confusion.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (emphasis added), citing In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012). In In re Strategic Partners, Inc., the Board reversed a refusal to register applicant’s application for ANYWHERE (stylized) for “footwear” in Class 25, finding that the applicant’s nearly identical prior registration for ANYWHERES and design for “footwear, namely, men’s, women’s and children’s shoes; hosiery; socks; stockings; insoles, but not including other clothing items” in Class 25 was substantially similar to the applied-for mark. As the applicant’s prior registration was not subject to attack by the owner of the cited registration on a claim of priority and likelihood of confusion, the Board determined that the coexistence of applicant’s existing prior registration with the cited registration for over five years, when applicant’s applied-for mark is substantially similar to its existing registered mark, both for identical goods, outweighed the other du Pont factors and lead to the conclusion that the likelihood of confusion refusal was not appropriate. Id. at 1399-1400.

Importantly, the mark in the Prior EXPLORER Registration is identical to the mark in the Application. The goods in the Prior EXPLORER Registration are closely related to the goods in the Application. And yet the Prior EXPLORER Registration was not cited against either of the other applications in examination. Certainly if the Cited Registrations can co-exist with Applicant’s Prior EXPLORER Registration without any likelihood of confusion, the Mark can equally co-exist with the Cited Registrations without any likelihood of confusion.

2. The Goods in the Prior EXPLORER Registration Are Related to the Cited Registrations

The Examining Attorney has refused registration finding the goods in the Application to be related to the goods covered by the Cited Registrations, attaching evidence from three websites to show that “entities commonly provide and market packaging goods of paper and various packaging and wrapping goods such as applicant’s tapes, films, envelopes, bubble packs, and bags together under the same mark.” If, as the Examining Attorney has found, all of the goods in International Class 16 and 17 included in the current Application are related to the goods in the Cited Registration, so too are the goods in the Applicant’s Prior EXPLORER Registration. This being the case, based on the reasoning articulated above from In re Strategic Partners, Inc. and In re Inn at St. John’s, LLC, the coexistence of the related goods included in the longstanding Prior EXPLORER Registration with the goods in the Cited Registrations weighs against finding a likelihood of confusion in the instant case.

3. Additional Matter in The Cited Registrations Distinguish the Marks from Applicant’s

The dissimilarity between the marks, due in large part to the additional words in the Cited Registrations, support a determination that confusion is unlikely. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); See also, Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Under In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973), the first factor requires examination of “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” The basic principle in determining confusion between marks is that marks must be compared in their entireties. 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. In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985); TMEP §1207.01(b). Similarity of the marks in one respect – sight, sound, or meaning – will not automatically result in a determination that confusion is likely even if the goods are identical or closely related. See In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009); TMEP §1207.01(b)(i).

The Board has held that additions or deletions to marks may be sufficient to avoid a likelihood of confusion if the marks in their entireties convey significantly different commercial impressions. See, e.g., Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); TMEP 1207.01(b)(iii); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004) (reversing TTAB’s finding a likelihood of confusion for THE RITZ KIDS for clothing items and RITZ for various kitchen textiles, because THE RITZ KIDS creates a different commercial impression).

Here, the Cited Registrations contain additional matter. Registration No. 5718727 contains LET YOUR JOURNEY BEGIN and wording in Arabic, as well as a color claim in addition to EXPLORERS. Registration No. 6224827 contains DREAM in addition to EXPLORER. The additional matter contained in the Cited Registrations in their entireties convey significantly different commercial impressions and therefore avoid a likelihood of confusion. Specifically, the additional matter in the Cited Registrations’ generate a more imaginative impression, very much in line with the consumer that the Cited Registrations’ goods are intended to attract – a consumer which is distinctly different from the consumer likely to purchase the Applicant’s goods.

Conclusion

For the reasons stated above, Applicant respectfully requests that the Examining Attorney withdraw the refusal under Section 2(d), and approve the Application for publication.

Dated: New York, New York May, 11 2021

Respectfully submitted,

MOSES & SINGER LLP

By: /Deborah L. Shapiro/

Deborah L. Shapiro 405 Lexington Avenue New York, New York 10174-1299 Tel: 212-554-7800 Attorneys for Central National Gottesman Inc.

EVIDENCE
Evidence has been attached: Registration for No. 3647519 for the mark EXPLORER and the renewal confirmation are attached as Exhibit A.
Original PDF file:
evi_3810820110-2021051112 5100104476_._77647537.pdf
Converted PDF file(s) ( 1 page) Evidence-1
Original PDF file:
evi_3810820110-2021051112 5100104476_._77647537_Ren ewal.pdf
Converted PDF file(s) ( 1 page) Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 016 for Paper carton sealing tape; plastic films for packaging; envelopes; paper envelopes for packaging; corrugated boxes; plastic bubble packs for wrapping or packaging; plastic film for wrapping; plastic film for packaging; food wrapping plastic film; poly-olefin shrink film for packaging and wrapping; poly-olefin shrink film used as packaging for food; poly plastic bags for packaging and wrapping; general purpose poly plastic bags
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: Paper carton sealing tape; plastic films for packaging; envelopes; paper envelopes for packaging; corrugated boxes; plastic bubble packs for wrapping or packaging; plastic film for wrapping; plastic film for packaging; food wrapping plastic film; poly-olefin shrink film for packaging and wrapping; poly-olefin shrink film used as packaging for food; poly plastic bags for packaging and wrapping; general purpose poly plastic bags; poly-olefin shrink film for industrial wrapping and packaging purposesClass 016 for Paper carton sealing tape; plastic films for packaging; envelopes; paper envelopes for packaging; corrugated boxes; plastic bubble packs for wrapping or packaging; plastic film for wrapping; plastic film for packaging; food wrapping plastic film; poly-olefin shrink film for packaging and wrapping; poly-olefin shrink film used as packaging for food; poly plastic bags for packaging and wrapping; general purpose poly plastic bags; poly-olefin shrink film for industrial wrapping and packaging purposes
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 017 for Adhesive tape for sealing cartons for industrial or commercial use; biodegradable plastic film for use in laminating paper; poly-olefin film with a rubber adhesive used to protect surfaces; poly-olefin shrink film for industrial purposes
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: Adhesive tape for sealing cartons for industrial or commercial use; biodegradable plastic film for use in laminating paper; poly-olefin film with a rubber adhesive used to protect surfaces; poly-olefin shrink film for industrial purposes; poly-olefin shrink film for industrial packing purposesClass 017 for Adhesive tape for sealing cartons for industrial or commercial use; biodegradable plastic film for use in laminating paper; poly-olefin film with a rubber adhesive used to protect surfaces; poly-olefin shrink film for industrial packing purposes
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Central National Gottesman Inc., a corporation of New York, having an address of
      Three Manhattanville Road
      New York, New York 10577
      United States

Proposed: Central National Gottesman Inc., a corporation of New York, having an address of
      Three Manhattanville Road
      New York, New York 10577
      United States
      Email Address: XXXX

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 3647519.


The owner's/holder's current attorney information: Debroah L. Shapiro. Debroah L. Shapiro of MOSES & SINGER LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      THE CHRYSLER BUILDING
      405 LEXINGTON AVENUE
      NEW YORK, New York 10174
      United States
The docket/reference number is 003602-0199.
      The phone number is 212-554-7800.
      The fax number is 212-554-7700.
      The email address is trademarks@mosessinger.com

The owner's/holder's proposed attorney information: Debroah L. Shapiro. Debroah L. Shapiro of MOSES & SINGER LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      THE CHRYSLER BUILDING
      405 LEXINGTON AVENUE
      NEW YORK, New York 10174
      United States
The docket/reference number is 003602-0199.
      The phone number is 212-554-7800.
      The fax number is 212-554-7700.
      The email address is trademarks@mosessinger.com

Debroah L. Shapiro 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.Correspondence Information (current):
      Debroah L. Shapiro
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@mosessinger.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 003602-0199.
Correspondence Information (proposed):
      Debroah L. Shapiro
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@mosessinger.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 003602-0199.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Deborah L. Shapiro/     Date: 05/11/2021
Signatory's Name: Deborah L. Shapiro
Signatory's Position: Authorized Attorney, New York Bar Member

Signatory's Phone Number: 212-554-7800 Signature method: Signed directly within the form

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:    Debroah L. Shapiro
   MOSES & SINGER LLP
   THE CHRYSLER BUILDING
   405 LEXINGTON AVENUE
   NEW YORK, New York 10174
Mailing Address:    Debroah L. Shapiro
   MOSES & SINGER LLP
   THE CHRYSLER BUILDING
   405 LEXINGTON AVENUE
   NEW YORK, New York 10174
        
Serial Number: 88357327
Internet Transmission Date: Tue May 11 13:23:13 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2021051113231351
3369-88357327-780323cd34480bbf9fead8a1f7
b582c4ace30ab47b239e88a6633bb3c92f1be889
-N/A-N/A-20210511125100104476