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)

---

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. 88359142 THE WALL (Stylized and/or with Design, see http://uspto.report/TM/88359142/mark.png) has been amended as follows:

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

The requested trademark contains elements of sufficient novelty and distinctiveness regarding the trademarks that are cited as prior, so I have requested the registration of the mixed trademark THE WALL in class 33, in full compliance with the law, so that the The trademark contains elements of form and background attached to the provisions of the Law, which are sufficient for the requested registration to be granted. However, the trademark applied for IS NOT IDENTICAL, NOR DOES IT SIMILAR AT THE DEGREE OF CONFUSION WITH THE TRADEMARKS CITED AS PRIORITY; since although it is true that the mentioned brands protect products included in the same class, however the products are completely different, on the other hand in their visual and graphic scope, it differs in substantial degree with respect to the brand requested. (We must remember that the criterion supported by this H. authority, refers to the comparison of the consuming public at first glance.) Therefore, the mark applied for is in accordance with the Law and it is appropriate that it be granted the corresponding registration title, since it contains elements of novelty and distinctiveness. The application for trademark registration filed is in accordance with the law because this H. authority did not carry out a global study of the trademark that concerns us, as in its case it should have been done. Regarding the above, I would like to point out the following: I.- There is no similarity in degree of confusion with the trademarks cited as prior, with respect to the trademark applied for by virtue of the following differences and assessments: BRAND REQUESTED: PREVIOUS: Serial No .: 88359142 THE WALL Reg. 4273174 TIMOTHY'S THE WALL Reg. 473891 THE WALLS ? PHONICALLY and AUDITIVELY: As it is maintained by the criterion that sustains this H. authority, at first glance, it is transcendent to emphasize that the consuming public can pronounce or relate the mark that is seeing, with the product to which it is applied, of such luck the denomination of the mark applied for, consists of 2 words THE WALL, which is pronounced in 2 strokes of voice, with 7 letters; meanwhile, the marks mentioned above with registration number 4273174 TIMOTHY'S THE WALL, is pronounced in 5 strokes of voice TI-MO-THY'S THE WALL, same that has more hits of voice than the mark with serial number 88359142, on the other hand the other previous mention is the record 4973891 THE WALLS same that is also pronounced in two strokes of voice, however, has a letter "S" itself that implies that it refers to many walls and the brand of my property only to a single wall. The marks described above have an excessive phonetic difference, since they contain letters that generate a distinction so that the consuming public at first glance can appreciate that there are phonetic and auditory differences. Therefore, there should be no impediment in granting the registration corresponding to the requested trademark. ? GRAPHICALLY and VISUALLY: As held by the criterion that sustains this H. authority, at first glance and reviewing the marks in an alternative way according to the other, the mark that works under the serial number 88359142, consists of a denomination and a design, which has original features that differentiate it from the brands mentioned above, so we proceed to show this design: ? First point: there is an agave in the upper central part ? In the second point: below point one, a blue line can be seen and after that, the name WALL in blue letters can be seen. ? In third point: below point number two, there is a blue line split by the center, in this space there are 5 red stars. ? Fourth point: the entire brand name includes 7 letters. On the other hand, carrying out a descriptive analysis of the trademarks cited improperly as precedents with registration number 4273174 TIMOTHY'S THE WALL and 4973891 THE WALLS, are formed as shown below: ? 4273174 TIMOTHY'S THE WALL, is a nominative brand that includes 15 letters. ? 4973891 THE WALLS, is a nominative mark that includes 8 letters. So the consumer audience at the time of observing the brands will realize that the differences are notorious, because the mark in process contains a sufficiently distinctive design. his H. authority must carry out a complete comparison study taking into account the phonetic and visual difference, since there is no relevance that the priorities are nominative and since the mark in process is Mixed, therefore it includes a Design that generates distinction . As the mark being processed to be a "visible sign" must be studied with respect to all elements that visibly integrate the brand as relevant, it is as a whole is how it acquires distinctiveness compared to other brands. Likewise, all the elements of a brand are especially relevant when it comes to a brand that involves a combination of design, typography and letters in particular, since its use is conditioned by its protection, as requested. For all the above, at first glance, which is the way in which this H. Authority claims to make the comparisons of the marks, it is easy to conclude that the trademark with serial number 88359142 is not equal or similar in degree of confusion, with the marks that are improperly cited as precedents and that in the present writing are rejected, in such a way there should not be any impediment in granting the corresponding registration. So that the consuming public will not be induced in the error, since the marks are completely different.  IDEOLOGICALLY: The trademark requested, in its ideological scope, is different from the trademarks mentioned above, since the trademark requested, serial number 88359142 THE WALL and DESIGN in class 33, exclusively protects the following products: DISTILLED BLUE AGAVE LIQUEUR . In contrast, the trademarks cited as precedents protect the following: ? 4273174 TIMOTHY'S WALLS: PREPARED ALCOHOLIC COCKTAIL ? 4973891 THE WALLS: GRAPE WINE So it is worth noting the differences of each of the brands, since the pending trademark only protects the liquor of distilled blue agave and the previous ones cover completely different products such as the prepared alcoholic cocktail and the grape wine, so that the consuming public will be able to realize that the products are different. In this understanding, it is important to take into account the Specialty principle, which provides that a brand must be registered and used only and exclusively for the services / products for which it was granted, also granting greater protection to the requested would mean a universal control about said sign and it would be a violation. So we must conclude that, when requesting registration under the argument that "ONLY AND EXCLUSIVELY", the mark applied for will be used for the products expressly referred and not others, in this way, tacit waiver is being made to try to use the mark for diverse products that the class that occupies us protects, reason enough so that H. Authority understands and understands that it is not desired to invade any market, nor to generate confusion, where there is none.

SIGNATURE(S)
Response Signature
Signature: /ONL/     Date: 07/17/2019
Signatory's Name: OSCAR NAVARRO LEAÑO
Signatory's Position: OWNER

Signatory's Phone Number: 52 3336304170

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either: (1) the owner/holder ; or (2) a person(s) with legal authority to bind the owner/holder; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.

        
Serial Number: 88359142
Internet Transmission Date: Wed Jul 17 12:01:46 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2019071712014691
9342-88359142-6207d972ce48526884dfecc4d9
86818fc27245a59daeb99f98436da7c348df9759
-N/A-N/A-20190717115610151378