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. 88369216 PRODIGY(Standard Characters, see http://uspto.report/TM/88369216/mark.png) has been amended as follows:

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

Section 2(d) Refusal: The application stands refused under Section 2(d) as being confusingly similar to Registration No. 4,510,780. The Applicant respectfully disagrees. The subject mark is for "Pet food" in Int'l Class 031. The cited Registration is in Int'l Class 018, which is reserved for "(Leather goods)," including "Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and traveling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery." The pet food of the subject application is made from natural agricultural products, which is why it is classified in Int'l Class 031. Int'l Class 031 is reserved for "Natural Agricultural Products," including "Grains and agriculture, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt." In the cited Registration, the list of goods includes 25 items, 23 of which are sports bags and other types of bags and cases. Only two of the items have anything to do with animals: "clothing for pets; collars for animals." That is why the cited Registration has been classified in Int'l Class 018. The Applicant submits that none of the goods of Int'l Class 031 are similar to the goods of Int'l Class 018. In this case, the diversity between Int'l Classes 018 and 031 are enough to establish that there is no likelihood of confusion between the subject mark and the cited Registration. The Examiner mentions the du Pont factors, but does not conduct a proper analysis of the factors. Indeed, the only du Pont factor that really comes into play in the current case is the Comparison of the Marks. Although, the marks are identical; the goods are completely diverse. The Examiner's analysis gets away from the two marks in question and brings in marks that are completely different, in order to show that some merchants sell both pet food in Int'l Class 031 and pet products in Int'l Class 018. Indeed, if that were the only part of the confusingly-similar analysis that had to be performed, no two products would ever be considered different. For example, Walmart sells thousands of products under thousands of brands from thousands of merchants, but that does not mean that all of those product and brands are confusingly similar. The Applicant points out that in every one of the non-related Registrations cited by the Examiner, the pet food is always in Int'l Class 031 and the other pet products are in other classes. The diversity between classes is a primary purpose of the classification system. The Applicant submits that there is no likelihood of confusion between the subject mark and the cited Registration. Consumers spend millions (if not billions) of dollars each year on pet food. Most pet food these days is specialized for different types of animals at different stages of life. As a result, a single bag of pet food can be quite expensive. These consumers are brand loyal and they know what they are buying. People who buy pet food are concerned about the quality of the pet food. Often times, pet food buyers do considerable research before they decide on a particular type of pet food. Thus, consumers who buy pet food have a certain level of sophistication. On the other hand, although there are many pet collars and sweaters sold each year, when people buy a collar or a sweater for their pet, it is usually an impulse buy. These things are usually for decorative purposes, and do not generally effect the health or welfare of the pet. They are not consumed by the pet. Thus, there is little or no research or time spent of such purchases. The cost of a collar or sweater is usually quite a bit lower than a bag of pet food. For all of these reasons, the Applicant submits that there is no likelihood of confusion between the subject mark and the cited Registration, and respectfully requests that the subject application be approved.

The applicant's current attorney information: James E. Walton. James E. Walton of LAW OFFICES OF JAMES E. WALTON, P.L.L.C., is located at

      1169 N. BURLESON BLVD., SUITE 107-328
      BURLESON, Texas 76028
      US
The docket/reference number is 1490JW-62413.

The phone number is 817-447-9955.

The fax number is 817-447-9954.

The email address is jim@waltonpllc.com

The applicants proposed attorney information: James E. Walton. James E. Walton of LAW OFFICES OF JAMES E. WALTON, P.L.L.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1169 N. BURLESON BLVD., SUITE 107-328
      BURLESON, Texas 76028
      United States
The docket/reference number is 1490JW-62413.

The phone number is 817-447-9955.

The fax number is 817-447-9954.

The email address is jim@waltonpllc.com

James E. Walton 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: JAMES E. WALTON. JAMES E. WALTON of LAW OFFICES OF JAMES E. WALTON, P.L.L.C., is located at

      1169 N. BURLESON BLVD., SUITE 107-328
      BURLESON, Texas 76028
      US
The docket/reference number is 1490JW-62413.

The phone number is 817-447-9955.

The fax number is 817-447-9954.

The email address is jim@waltonpllc.com

The applicants proposed correspondence information: James E. Walton. James E. Walton of LAW OFFICES OF JAMES E. WALTON, P.L.L.C., is located at

      1169 N. BURLESON BLVD., SUITE 107-328
      BURLESON, Texas 76028
      United States
The docket/reference number is 1490JW-62413.

The phone number is 817-447-9955.

The fax number is 817-447-9954.

The email address is jim@waltonpllc.com

SIGNATURE(S)
Response Signature
Signature: /jamesewaltontm/     Date: 09/17/2019
Signatory's Name: Jaems E. Walton
Signatory's Position: Attorney of Record, Texas Bar Member

Signatory's Phone Number: 817-447-9955

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:    JAMES E. WALTON
   LAW OFFICES OF JAMES E. WALTON, P.L.L.C.
   
   1169 N. BURLESON BLVD., SUITE 107-328
   BURLESON, Texas 76028
Mailing Address:    James E. Walton
   LAW OFFICES OF JAMES E. WALTON, P.L.L.C.
   1169 N. BURLESON BLVD., SUITE 107-328
   BURLESON, Texas 76028
        
Serial Number: 88369216
Internet Transmission Date: Tue Sep 17 16:21:41 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20190917162141
112589-88369216-61094ba9422885b8dba0f4d1
59951859d63bd7c877477f48c049307b6fb97281
-N/A-N/A-20190917152235380587