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
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
88375794 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 106 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/88375794/mark.png |
| LITERAL ELEMENT |
THE YARD |
| STANDARD CHARACTERS |
YES |
| USPTO-GENERATED IMAGE |
YES |
| MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) |
| In an Office Action dated May 21, 2019, the Office requested a revision of the description of goods and expressed concern that confusion may arise
if pending Application Serial Nos. 86/978,897 or 87/213,784 were to register. The Applicant?s application, as amended, is for the mark THE YARD for: Cigar rolling papers, namely, cigar wraps. The
cited application for THE YARDS (Serial No. 86/978,897) is for: IC 035 -- Retail store services featuring a wide variety of consumer goods of others; online arranging and conducting of exhibitions
for business and advertising purposes; promoting the goods and services of others by means of operating a retail shopping facility; and providing facilities for retail activities IC041 -- Providing
facilities for movies, shows, plays, and musical performances The cited application for THE YARDS (Serial No. 87/213,784) is for: IC021 -- Cups and mugs; coffee mugs; tea mugs; glass mugs;
dinnerware; glass beverageware; aluminum water bottles sold empty; reusable plastic water bottles sold empty; water bottles sold empty; shot glasses IC025 -- Clothing, namely, men?s, women?s and
children?s t-shirts, sweatshirts, tops, aprons, jackets, and headgear, namely, hats and caps IC035 -- Retail store services and online retail store services featuring posters, postcards, calendars
and like paper goods, watches, lapel pins, jewelry, clothing, tote bags, umbrellas, mouse pads, and magnets, stationery, toys; online retail store services featuring a wide variety of consumer goods;
mail order catalog services featuring a wide variety of consumer goods; promotional services, namely, promoting the goods by providing online gift cards, gift certificates, coupons and restaurant
menus Both registrations are owned by the same party. The Applicant respectfully submits that it does not deal in the types of goods covered by this prior registrant?s registrations, nor are its
goods related in any way to this prior registrant?s goods and services. The Applicant?s goods are not the type that are sold in retail stores featuring a wide variety of consumer goods, but rather in
specialty stores for smokers. Furthermore, there are many registrations of marks that are the same as or very similar to these registered marks such that consumers would not automatically assume that
the Applicant?s cigar rolling papers or wraps originate with this prior registrant simply because they are sold under the mark THE YARD. Finally, the Applicant?s mark is not THE YARDS, but rather THE
YARD. Given the dissimilarities in the Applicant?s goods and the prior registrant?s goods and services, coupled with the wide use of marks that are comprised of the term YARD, this subtle distinction
is a huge difference. The Applicant requests that the Office approve its mark for publication. First, looking the prior registrant?s goods and services listings, although portions are very broadly
stated, the more specific goods covered by them are important: Cups Mugs Coffee mugs Tea mugs Glass mugs Dinnerware Glass beverageware Aluminum water bottles sold empty Reusable plastic water bottles
sold empty Water bottles sold empty Shot glasses Clothing for men, women, and children T-shirts Sweatshirts Tops Aprons Jackets Headgear Hats Caps Posters Postcards Calendars Watches Lapel pins
Jewelry Clothing Tote bags Umbrellas Mouse pads Magnets Stationery Toys None of these goods are remotely related to cigar rolling papers or wraps. Furthermore, the Applicant?s goods are very limited
to cigar rolling papers or wraps. The Applicant does not deal in any of the foregoing goods, nor is it seeking to register any other goods under the mark THE YARD. Additionally, the Applicant does
not offer retail store services at all or market, promote, or sell the goods of others under the mark THE YARD. The Applicant?s goods are cigar rolling papers or wraps, which products are for use by
those who want to roll their own cigars. These are very specialized goods for cigar enthusiasts that one would expect to find in a smoke shop, not a variety store. Even though this prior registrant
has registered its mark THE YARDS for retail stores that feature a wide variety of goods of others, the very nature of the Applicant?s goods is such that no one would see the Applicant?s THE YARD
cigar rolling papers or wraps and assume that they might originate with this prior registrant. In addition, a search of the USPTO database for the term YARD resulted in 2,635 hits. See Attachment 1.
Among those are a number of registrations by third parties for various goods and services that are simply YARD or YARDS. See Attachment 2. This includes: Registration No. Mark 5,678,128 YARD
5,646,658 THE YARD 5,592,087 YARD 5,384,631 THE YARD 5,491,894 YARD 5,062,651 YARD 4,745,878 THE YARD 3,397,895 THE YARD 2,200,071 YARDS These registrations include things such as inflatable toys,
floats, pools, and slides, cookie dough, ice cream, alcoholic beverages, and caf? and coffee bar services. Given this widespread use, consumers seeing THE YARD cigar rolling papers or wraps would not
automatically assume that they are associated with this prior registrant?s THE YARDS products or stores. All of these registrations coexist with this prior registrant?s registrations. Consumers are
used to seeing a wide variety of goods and services that include the term YARD, with and without other verbiage. Finally, this prior registrant?s marks are THE YARDS, while the Applicant?s mark is
THE YARD. While the 1- letter difference between the marks is minor, where goods and services are entirely unrelated, and terms such as YARD are somewhat diluted, such a minor difference can be
significant. In this case, the difference is very important and serves to completely erase the possibility of any assumed connection between the Applicant?s goods and this prior registrant?s goods
and services. There is simply no likelihood that anyone will be confused by the concurrent use and registration of THE YARD by the Applicant and THE YARDS by this prior registrant. Accordingly, the
Applicant respectfully requests that its application, as amended, be approved for publication. |
| EVIDENCE SECTION |
| EVIDENCE FILE NAME(S) |
| ORIGINAL PDF FILE |
evi_3810116184-20190723121645760492_._exh_1.PDF |
CONVERTED PDF FILE(S)
(2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0002.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0003.JPG |
| ORIGINAL PDF FILE |
evi_3810116184-20190723121645760492_._exh_2.PDF |
CONVERTED PDF FILE(S)
(18 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0004.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0005.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0006.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0007.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0008.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0009.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0010.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0011.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0012.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0013.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0014.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0015.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0016.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0017.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0018.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0019.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0020.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\757\88375794\xml5\ROA0021.JPG |
| DESCRIPTION OF EVIDENCE FILE |
Exhibits 1 and 2, which are printouts from Trademark Office records |
| GOODS AND/OR SERVICES SECTION (current) |
| INTERNATIONAL CLASS |
034 |
| DESCRIPTION |
cigar rolling papers |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 03/18/2019 |
| FIRST USE IN COMMERCE DATE |
At least as early as 03/18/2019 |
| GOODS AND/OR SERVICES SECTION (proposed) |
| INTERNATIONAL CLASS |
034 |
| TRACKED TEXT DESCRIPTION |
cigar rolling papers; cigar rolling papers, namely cigar
wraps |
| FINAL DESCRIPTION |
cigar rolling papers, namely cigar wraps |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 03/18/2019 |
| FIRST USE IN COMMERCE DATE |
At least as early as 03/18/2019 |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/Mindi M. Richter/ |
| SIGNATORY'S NAME |
Mindi M. Richter |
| SIGNATORY'S POSITION |
Attorney of record, IL & FL bar member |
| SIGNATORY'S PHONE NUMBER |
8132297600 |
| DATE SIGNED |
07/23/2019 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Tue Jul 23 12:28:10 EDT 2019 |
| TEAS STAMP |
USPTO/ROA-XX.XXX.XX.XXX-2
0190723122810411938-88375
794-620c3365f23c73f531fc4
521c7575832e5c841191b4486
b936b37433def5b683a21-N/A
-N/A-20190723121645760492 |
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.
88375794 THE YARD(Standard Characters, see http://uspto.report/TM/88375794/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
In an Office Action dated May 21, 2019, the Office requested a revision of the description of goods and expressed concern that confusion may arise if pending Application Serial Nos. 86/978,897 or
87/213,784 were to register. The Applicant?s application, as amended, is for the mark THE YARD for: Cigar rolling papers, namely, cigar wraps. The cited application for THE YARDS (Serial No.
86/978,897) is for: IC 035 -- Retail store services featuring a wide variety of consumer goods of others; online arranging and conducting of exhibitions for business and advertising purposes;
promoting the goods and services of others by means of operating a retail shopping facility; and providing facilities for retail activities IC041 -- Providing facilities for movies, shows, plays, and
musical performances The cited application for THE YARDS (Serial No. 87/213,784) is for: IC021 -- Cups and mugs; coffee mugs; tea mugs; glass mugs; dinnerware; glass beverageware; aluminum water
bottles sold empty; reusable plastic water bottles sold empty; water bottles sold empty; shot glasses IC025 -- Clothing, namely, men?s, women?s and children?s t-shirts, sweatshirts, tops, aprons,
jackets, and headgear, namely, hats and caps IC035 -- Retail store services and online retail store services featuring posters, postcards, calendars and like paper goods, watches, lapel pins,
jewelry, clothing, tote bags, umbrellas, mouse pads, and magnets, stationery, toys; online retail store services featuring a wide variety of consumer goods; mail order catalog services featuring a
wide variety of consumer goods; promotional services, namely, promoting the goods by providing online gift cards, gift certificates, coupons and restaurant menus Both registrations are owned by the
same party. The Applicant respectfully submits that it does not deal in the types of goods covered by this prior registrant?s registrations, nor are its goods related in any way to this prior
registrant?s goods and services. The Applicant?s goods are not the type that are sold in retail stores featuring a wide variety of consumer goods, but rather in specialty stores for smokers.
Furthermore, there are many registrations of marks that are the same as or very similar to these registered marks such that consumers would not automatically assume that the Applicant?s cigar rolling
papers or wraps originate with this prior registrant simply because they are sold under the mark THE YARD. Finally, the Applicant?s mark is not THE YARDS, but rather THE YARD. Given the
dissimilarities in the Applicant?s goods and the prior registrant?s goods and services, coupled with the wide use of marks that are comprised of the term YARD, this subtle distinction is a huge
difference. The Applicant requests that the Office approve its mark for publication. First, looking the prior registrant?s goods and services listings, although portions are very broadly stated, the
more specific goods covered by them are important: Cups Mugs Coffee mugs Tea mugs Glass mugs Dinnerware Glass beverageware Aluminum water bottles sold empty Reusable plastic water bottles sold empty
Water bottles sold empty Shot glasses Clothing for men, women, and children T-shirts Sweatshirts Tops Aprons Jackets Headgear Hats Caps Posters Postcards Calendars Watches Lapel pins Jewelry Clothing
Tote bags Umbrellas Mouse pads Magnets Stationery Toys None of these goods are remotely related to cigar rolling papers or wraps. Furthermore, the Applicant?s goods are very limited to cigar rolling
papers or wraps. The Applicant does not deal in any of the foregoing goods, nor is it seeking to register any other goods under the mark THE YARD. Additionally, the Applicant does not offer retail
store services at all or market, promote, or sell the goods of others under the mark THE YARD. The Applicant?s goods are cigar rolling papers or wraps, which products are for use by those who want to
roll their own cigars. These are very specialized goods for cigar enthusiasts that one would expect to find in a smoke shop, not a variety store. Even though this prior registrant has registered its
mark THE YARDS for retail stores that feature a wide variety of goods of others, the very nature of the Applicant?s goods is such that no one would see the Applicant?s THE YARD cigar rolling papers
or wraps and assume that they might originate with this prior registrant. In addition, a search of the USPTO database for the term YARD resulted in 2,635 hits. See Attachment 1. Among those are a
number of registrations by third parties for various goods and services that are simply YARD or YARDS. See Attachment 2. This includes: Registration No. Mark 5,678,128 YARD 5,646,658 THE YARD
5,592,087 YARD 5,384,631 THE YARD 5,491,894 YARD 5,062,651 YARD 4,745,878 THE YARD 3,397,895 THE YARD 2,200,071 YARDS These registrations include things such as inflatable toys, floats, pools, and
slides, cookie dough, ice cream, alcoholic beverages, and caf? and coffee bar services. Given this widespread use, consumers seeing THE YARD cigar rolling papers or wraps would not automatically
assume that they are associated with this prior registrant?s THE YARDS products or stores. All of these registrations coexist with this prior registrant?s registrations. Consumers are used to seeing
a wide variety of goods and services that include the term YARD, with and without other verbiage. Finally, this prior registrant?s marks are THE YARDS, while the Applicant?s mark is THE YARD. While
the 1- letter difference between the marks is minor, where goods and services are entirely unrelated, and terms such as YARD are somewhat diluted, such a minor difference can be significant. In this
case, the difference is very important and serves to completely erase the possibility of any assumed connection between the Applicant?s goods and this prior registrant?s goods and services. There is
simply no likelihood that anyone will be confused by the concurrent use and registration of THE YARD by the Applicant and THE YARDS by this prior registrant. Accordingly, the Applicant respectfully
requests that its application, as amended, be approved for publication.
EVIDENCE
Evidence in the nature of Exhibits 1 and 2, which are printouts from Trademark Office records has been attached.
Original PDF file:
evi_3810116184-20190723121645760492_._exh_1.PDF
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_3810116184-20190723121645760492_._exh_2.PDF
Converted PDF file(s) ( 18 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 034 for cigar rolling papers
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 03/18/2019 and first used in commerce at least as early as 03/18/2019 , and
is now in use in such commerce.
Proposed:
Tracked Text Description: cigar rolling papers;
cigar rolling papers, namely cigar wrapsClass 034 for cigar rolling
papers, namely cigar wraps
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 03/18/2019 and first used in commerce at least as early as 03/18/2019 , and
is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /Mindi M. Richter/ Date: 07/23/2019
Signatory's Name: Mindi M. Richter
Signatory's Position: Attorney of record, IL & FL bar member
Signatory's Phone Number: 8132297600
The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and
other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently
filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of
attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in
this matter.
Serial Number: 88375794
Internet Transmission Date: Tue Jul 23 12:28:10 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019072312281041
1938-88375794-620c3365f23c73f531fc4521c7
575832e5c841191b4486b936b37433def5b683a2
1-N/A-N/A-20190723121645760492
