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. 88368053 8-BALL(Standard Characters, see http://uspto.report/TM/88368053/mark.png) has been amended as follows:

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

Re:      Response to Office Action dated June 14, 2019

            U.S. Application Serial No. 88368053

            Applicant: Paul Thomas (the “Applicant”)

            Mark: 8-Ball (the “Mark”)

 

            Dear Ms. Caycedo:

 

            Our firm represents Paul Thomas, the Applicant for the above referenced Mark for federal registration with the United States Patent and Trademark Office. The following provides our response to the Section 2(d) Refusal (the “Refusal”) set forth in the Office Action issued on June 14, 2019:

 

Summary

 

            Refusal should be withdrawn because 1) the mark in U.S. Registration No. 4870955 (the “Registrant’s mark”) is abandoned, and 2) such abandonment precludes a likelihood of confusion with the Registered mark under the du Pont factors (as defined below).

 

Registrant’s abandonment of Mark.

 

            The lack of presence of the Registrant’s mark in commerce infers Registrant’s legal abandonment of its mark. The owner of a registered mark does not merely own a mark once registered by the USPTO but must actively and continuously use its mark in commerce and defend it against competing marks. Abandonment may be determined by an actual intent not to resume use of the mark, which may be inferred from the circumstances (Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc., 458 f.3d 931, 80 U.S.P.Q.2d 1161 (9^th Cir. 2006).

 

            From our “Google” searches described herein, and from Applicant’s own active role as an experienced professional in the alcoholic beverages and distilled spirits industry, the Applicant and our team were unable to located Registrant’s mark after extensive searches, and abandonment should be inferred from the circumstances.

           

            The Mark is the only distilled spirits product that appears in the first 10 items of “Google” searches under “Eight Ball distilled spirits” conducted most recently on December 10, 2019 (see Exhibit 1).  In this same search, the Registrant’s mark did not appear in at least the first nine (9) pages of the search. The only reference to Registrant’s mark was to its registration with the USPTO (see Exhibit 2), but with no evidence of such mark’s association with actual goods in commerce.

 

            Given the ubiquity of the internet as a source for marketing exposure and a necessary tool of commerce, a product that purports to be active in interstate commerce would almost certainly appear in the most general of “Google” searches. Given the Registrant’s mark’s notable lack of presence online, it is unlikely the Registrant’s mark is actually in commerce now or even that it was during the last four (4) years since registration on December 15, 2015.

 

            Abandonment of Registrant’s mark may further have occurred by its non-use of its mark for three (3) consecutive years (15 U.S.C. Section 1127 as amended by P.L. 103.465). While at this time we are unable to verify registrant’s history of use of its mark over the last three (3) years, the mark’s failure to appear in the “Google” searches in any form may imply a consistent failure to use its mark in commerce over several years. It is common knowledge that unless actively removed, even deleted our out-of-date material remains in the realm of the internet indefinitely.  As such, a “Google” search should have unearthed at least some reference to the Registrant’s mark in commerce, whereas we were unable to locate single reference to Registrant’s mark in our search.

 

            For the foregoing reasons, Applicant asserts that Registrant’s mark is abandoned and should have been cancelled for or allowed to lapse prior to Applicant’s application for registration of the Mark.  (Toro Co. v. GrassMasters, Inc., 66 U.S.P.Q.2d 1032 (T.T.A.B. 2003). Absent the Registrant’s mark’s existence in interstate commerce, the USPTO’s refusal of registration pursuant to “a likelihood of confusion” with the Registrant’s mark, pursuant to the first (1^st) and second (2^nd) du Pontfactors should not be considered as relevant factors in refusing registration of the Mark.  Further, the analysis of a number of additional du Pont factors do not support a likelihood of confusion given the Registrant’s mark’s virtual non-existence in actual interstate commerce.

 

Section 2(d) Refusal – du Pont Factors Irrelevant

 

            Even if the Registrant’s mark is not abandoned per the factors set forth above, the relevant factors set forth in In re E. I.du Pont de Nemours & Co. do not support a likelihood of confusion with the Registrant’s mark (476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). The factors presented in the office action are not relevant to the du Pont analysis because those factors presume the Registrant’s mark is or can be located in interstate commerce.

 

            After conducting internet searches for reference to the Registrant’s mark as referenced above, Applicant was unable to locate any evidence that Registrant's mark has ever entered interstate commerce, whether in the form of marketing or through the distribution or sale of associated goods. Even if the Mark could cause a likelihood of confusion to a consumer when encountered alongside the Registrant's mark, actual confusion could not occur where the Registrant’s mark is not actively used by its registrant in interstate commerce. Conversely, the Applicant’s Mark remains active in interstate commerce, with shipments throughout the United States, and with active plans to expand distribution internationally.

 

            Given that all thirteen (13) du Pont factors compare the effect of the Applicant’s Mark against the Registrant’s mark in interstate commerce, the arguments in favor of a likelihood of confusion become ineffective because the Registered Mark shows no presence in interstate commerce.  Confusion that could or would result from the effect of the two marks’ dual presence in representing allegedly similar goods cannot occur when one of the marks is unavailable to the consumer.

 

            For the reasons above, the Refusal should be withdrawn from this Application.

EVIDENCE
Evidence in the nature of Exhibit 1 consists of a screen shot of first page of a "Google" search for "eight ball american whiskey". Exhibit 2 consists of a screen shot of page 9 of the above referenced "Google" search. has been attached.
Original PDF file:
evi_6473237246-20191213155318266380_._8-Ball.Respoonse.Exhibit_1.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_6473237246-20191213155318266380_._8-Ball.Response.Exhibit_2.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 033 for Whiskey
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 10/01/2018 and first used in commerce at least as early as 10/01/2018 , and is now in use in such commerce.

Proposed: Class 033 for Whiskey
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 10/01/2018 and first used in commerce at least as early as 10/01/2018 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 033 . The specimen(s) submitted consists of photograph of on-sale licensee consumer of Applicant's product in the form of two bottles of product indicating Applicant's Mark, as well as packaging box holding goods and carrying Applicant's mark. .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1

The applicant's current attorney information: MEGHAN K. DESPAIN. MEGHAN K. DESPAIN of LAW OFFICES OF GORIA, WEBER & JARVIS, is located at

      1011 CAMINO DEL RIO SOUTH STE 210
      SAN DIEGO, California 92108
      US

The phone number is 619-692-9200 x109.

The fax number is 6192965508.

The email address is m.despain@icloud.com

The applicants proposed attorney information: MEGHAN K. DESPAIN. MEGHAN K. DESPAIN of LAW OFFICES OF GORIA, WEBER & JARVIS, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1011 CAMINO DEL RIO SOUTH STE 210
      SAN DIEGO, California 92108
      United States

The phone number is 619-692-9200 x109.

The fax number is 6192965508.

The email address is m.despain@icloud.com

MEGHAN K. DESPAIN 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: MEGHAN K. DESPAIN. MEGHAN K. DESPAIN of LAW OFFICES OF GORIA, WEBER & JARVIS, is located at

      1011 CAMINO DEL RIO SOUTH STE 210
      SAN DIEGO, California 92108
      US

The phone number is 619-692-9200 x109.

The fax number is 6192965508.

The email address is m.despain@icloud.com

The applicants proposed correspondence information: MEGHAN K. DESPAIN. MEGHAN K. DESPAIN of LAW OFFICES OF GORIA, WEBER & JARVIS, is located at

      1011 CAMINO DEL RIO SOUTH STE 210
      SAN DIEGO, California 92108
      United States

The phone number is 619-692-9200 x109.

The fax number is 6192965508.

The email address is m.despain@icloud.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: /Meghan K. DeSpain/      Date: 12/13/2019
Signatory's Name: Meghan K. DeSpain
Signatory's Position: Attorney of record
Signatory's Phone Number: 6196929200


Response Signature
Signature: /Meghan K. DeSpain/     Date: 12/13/2019
Signatory's Name: Meghan K. DeSpain
Signatory's Position: Attorney of record

Signatory's Phone Number: 6196929200

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:    MEGHAN K. DESPAIN
   LAW OFFICES OF GORIA, WEBER & JARVIS
   
   1011 CAMINO DEL RIO SOUTH STE 210
   SAN DIEGO, California 92108
Mailing Address:    MEGHAN K. DESPAIN
   LAW OFFICES OF GORIA, WEBER & JARVIS
   1011 CAMINO DEL RIO SOUTH STE 210
   SAN DIEGO, California 92108
        
Serial Number: 88368053
Internet Transmission Date: Fri Dec 13 16:40:30 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019121316403055
1600-88368053-70017ef42e55fe4ec699bfa412
c7dc86dd86ac8291245a3d63c6b75845a12ea18d
-N/A-N/A-20191213155318266380