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. 88383832 BOLD (Stylized and/or with Design, see http://uspto.report/TM/88383832/mark.png) has been amended as follows:

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

Attorney Docket: 1548-3

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Applicant: SIELEGAR, Nigel

Appl. Ser. No.: 88/383,832

Filing Date: April 6, 2019

Mark: BOLD (Stylized Form Design)

 

Examining Attorney: Bridgett G. Smith, Esq.

Law Office: 115

 

RESPONSE TO OFFICE ACTION

            This communication is in response to the Office Action transmitted by electronic mail on July 3, 2019 regarding the above-referenced application.

 

REMARKS

Section 2(d) Refusal: Likelihood of Confusion

The Examining Attorney has refused registration of Applicant’s mark BOLD (Stylized Form Design) (“BOLD”) in International Class 005 alleging a likelihood of confusion with U.S. Reg. No. 5,708,628 (“BOLD KETO”) in International Class 005 and U.S. Reg. No. 5,708,647 (“BOLD KETO (Stylized Form Design)”) in International Class 005 (collectively the “BOLD KETO marks”).  The Examining Attorney has further advised that a potential refusal may issue in view of pending application U.S. App. Serial No. 88/110,674 (“BOLD RISE”). Applicant respectfully traverses the refusals in view of the remarks submitted.

There is No Likelihood of Confusion

There is no likelihood of confusion between Applicant’s mark and the cited marks.  The courts teach that in order to determine whether there is a likelihood of confusion, each case must be adjudicated on its own set of facts and will apply a two-part analysis in making this determination.  In testing for likelihood of confusion under Section 2(d) of the Trademark Act, courts will review the marks in view of the thirteen factors developed in DuPont (the “DuPont Factors”).  In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  Here, it is respectfully asserted that the most relevant DuPont Factors which weigh in favor of Applicant, in no particular order of relevance, are the (1) differences in sight, sound, and commercial impression; (2) conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing; (3) similarity or dissimilarity of established, likely-to-continue trade channels.

 

I.               There is no likelihood of confusion between Registrant’s marks, the Prior Filed Application, and Applicant’s mark because the marks are different in sight, sound, and commercial impression

In comparing the similarity or dissimilarity of marks, it is paradigmatic that they be viewed in their entireties; where there are differences in sight, sound, and meaning (commercial impression) between the marks, then no likelihood of confusion will be found.  See Champagne Luis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 1374-5 (Fed. Cir. 1998).  Moreover, to determine “whether the similarity of the marks is likely to provoke confusion among perspective purchasers . . . a court should look at the general impression created by the marks, taking into account all factors that potential purchasers will likely perceive and remember.”  Lang v. Retirement Living Publ’g Co., Inc., 949 F.2d 576, 581 (2d Cir. 1991); TMEP § 1207.01(b).  The Board has, on multiple occasions in the past, relied solely upon the dissimilarity of the marks with respect to appearance and sound or meaning (commercial impression) as the deciding DuPont Factor in determining that a likelihood of confusion does not exist between opposing marks.  On those occasions, this dissimilarity alone using the precluded any reasonable likelihood of confusion.  Kellogg Co. v. Pack‘em Enters., 951 F.2d 330, 333 (Fed. Cir. 1991) (“The only remaining question is whether the Board correctly held that here a single DuPont factor – the dissimilarity of the marks – was dispositive of the likelihood of confusion issue . . . [t]he Board correctly so ruled.”).  A composite mark, a mark that consists of a design element combined with words and/or letters, must also be viewed in its entirety when determining a likelihood of confusion.  TMEP §1207.01(c)(ii).

It is respectfully asserted that the BOLD KETO marks and BOLD RISE bear differing sights, sounds, and commercial impressions when compared to Applicant’s mark BOLD. This is especially true when the Marks are viewed in their entireties. The cited BOLD KETO (Stylized Form Design) mark contains specific design elements namely, a broken square box with the stylized term “Bold” within a rectangular box and stylized term “Keto” underneath with a portion of the letter “O” in “Keto” being formed with a stylized leaf design.  The cited BOLD KETO and BOLD RISE marks are standard character word marks.  In contrast, Applicant’s BOLD mark is comprised of the stylized term letters “BO” stacked above the stylized term letters “LD”.  Such design elements create a very different commercial impressions from that in the cited BOLD KETO marks and BOLD RISE mark, notably, the artistically minimalistic block like nature of the stylized letters.  Copies of the marks at issue are annexed hereto as Exhibit A.  It is respectfully asserted that the differences in sight, sound, and commercial impression between the BOLD KETO marks, the BOLD RISE mark, and Applicant’s mark obviate any likelihood of confusion.

II.            There is no likelihood of confusion between Registrant’s marks, the Prior Filed Application and Applicant’s mark because consumers of goods associated with Applicant’s mark are sophisticated consumers.

It is well settled that when testing for likelihood of confusion, one of the factors that must be considered is “the conditions under which and buyers to whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.”  476 F.2d at 1361.  Courts generally hold that sophisticated consumers are less likely to be confused because they purchase with a high degree of care and deliberation.  See Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 975 (10th Cir. 2002). A sophisticated consumer acts on “a careful consideration of the reliability and dependability of the manufacturer and seller of the product.”  Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206 (1st Cir. 1983).  However, circumstances suggesting care in purchasing may tend to minimize the likelihood of confusion.  TMEP § 12-7.01(d)(vii).  It has been held that “heightened awareness of health … raises the standard of care which the reasonable purchaser” of health products would exercise.  Worthington Foods, Inc. v. Kellogg Co., 732 F. Supp. 1417, 1448 (S.D. Ohio 1990).

It is respectfully asserted that consumers of Applicant’s BOLD goods are sophisticated consumers who understand the differences between Applicant’s pre-made ketogenic dietary and nutritional health food substitutes and Registrant’s organic oils and oil capsules that, upon information and belief, are intended to be used as vitamins and fitness supplements meant to boost physical performance.  Applicant’s brand and associated food supplements are specifically designed to provide their consumers with a way to “live healthier” without having their “tastebuds … suffer because of it.” Bold, http://www.grabbold.com/(last visited December 30, 2019); Exhibit B.  It is further respectfully asserted that consumers of the goods associated with Applicant’s mark are encouraged to become sophisticated consumers, understanding the nature, character and taste associated the products sold by Applicant.

In contrast, Registrant’s goods organic oils and oil capsules are advertised as vitamin/fitness products meant to “boost the result of your ketogenic diet or get back into ketosis faster after a higher carb meal” and “boost natural metabolic function and physical performance … pre workout or post workout.” Amazon, http://www.amazon.com/MCT-Oil-Organic-derived-sustained/dp/B07QGY4897?ref_=ast_bbp_dp&th=1&psc=1 (last visited December 30, 2019); Exhibit B.  Because of such associations, it is respectfully asserted that consumers of Applicant’s goods are seeking healthy ketogenic food supplements as part of a ketogenic diet geared towards weight loss and are sophisticated enough to understand the differences between Applicant’s ketogenic food supplements and Registrant’s oil vitamins which are meant to boost the mental and physical results of a ketogenic fitness lifestyle.

By reason thereof, it is respectfully asserted that there is no genuine likelihood of confusion between the goods sold under Applicant’s mark and those sold in association with the cited marks.

III.          There is no likelihood of confusion between Registrant’s marks, the Prior Filed Application, and Applicant’s mark because their respective goods travel in different channels of trade

When analyzing whether a likelihood of confusion exists between two marks, it is necessary to determine whether the goods travel in the same trade channels.  See TMEP § 1207.01.  The mere fact that two products may move in the same channels of trade to the same class of purchaser is not, by itself dispositive that there is a definite relationship between the two types of goods.  Champion Int’l Corp. v. Genova, Inc., 199 USPQ 301, 305 (TTAB 1978).  The courts have found that products should not be deemed related solely because they are sold in the same kind of establishments.  Recot, Inc. v. Becton, 214 F.3d 1322, 1327, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000).  Merely because parties operate in the same broad industry does not, by itself, establish that their goods and services are related.  Saks & Co. v. Snack Food Assoc., 12 USPQ2d 1833, 1835 (TTAB 1989).

In the present matter, the Examining Attorney has stated that the cited BOLD KETO marks and BOLD RISE prior application are similar and virtually identical due to the goods listed in the BOLD KETO marks, BOLD RISE, and Applicant’s goods being categorized as dietary and nutritional supplements.  It is respectfully asserted that there are many forms in which dietary and nutritional supplements are sold including “traditional tablets, capsules, and powders, as well as drinks and energy bars.” Dietary Supplements: What You Need to Know, National Institutes of Health, Office of dietary supplements, http://ods.od.nih.gov/HealthInformation/DS_WhatYouNeedToKnow.aspx (last visited December 30, 2019).  Due to the variety of goods categorized as dietary and nutritional supplements, it is respectfully asserted that such categorization (dietary supplements) on its own does not conclusively demonstrate that the BOLD KETO marks, BOLD RISE, and Applicant’s goods travel in the same trade channels.

Applicant’s goods are intended to be sold and distributed by way of Applicant’s ecommerce website. In contrast, the BOLD KETO marks’ goods can be found available for purchase on multiple third-party ecommerce vendors including Amazon.com, Ebay.com, and Storkz.com. Showing of which can be found in Exhibit C. All of the aforementioned third-party vendors sell a vast array of products from varying manufacturers including dietary vitamins, powders, food supplements, oils, electronics, sports equipment, children’s toys and more. Exhibit C.  The exclusive nature of where Applicant’s goods will be available purchase contrasted with the multiple vendors in which BOLD KETO marks’ goods are sold and the large variety of products sold by those vendors, strongly indicates that Registrant’s goods and Applicant’s goods are not sold or intended to be sold in the same channels of trade.

It is also of note that as of this date, no Statement of Use has been filed exhibiting BOLD RISE’s use in commerce. Exhibit C. The Applicant respectfully asserts that the previously mentioned exclusive manner in which Applicant intends to distribute their products shall preclude the goods from being sold in the same channels of trade as the BOLD RISE’s goods.

By reason thereof, it is respectfully asserted that there is no likelihood of confusion between Registrant’s and Applicant’s marks because the goods travel in different channels of trade.

IV.          Conclusion

In conclusion, it is respectfully asserted that there is no likelihood of confusion between Registrant’s marks BOLD KETO and BOLD KETO (Stylized Form Design), and Applicant’s mark BOLD (Stylized Form Design).  It is also respectfully asserted that there is no likelihood of confusion between the cited pending application for BOLD RISE and Applicant’s mark BOLD (Stylized Form Design). 

BOLD KETO marks’, BOLD RISE’s and Applicant’s goods are inherently different, are purchased by sophisticated consumer with a heightened awareness of health products and exist in different trade channels. Such differences preclude any likelihood of confusion between Registrant’s BOLD KETO marks, the prior filed application BOLD RISE, and Applicant’s mark.  Applicant respectfully requests that the refusal be withdrawn in light of the above evidence.

            A good faith effort has been made to place the present mark in condition for publication and such action is earnestly solicited.  If there are any questions prior to publication, the Examining Attorney is respectfully requested to contact the undersigned.

Dated: December 31 , 2019

 

Respectfully submitted,

THE MARTINEZ GROUP PLLC

 

By: /Frank J. Martinez, Esq./

Attorney of Record, New York State Bar Member

For Applicant: SIELEGAR, Nigel

THE MARTINEZ GROUP PLLC

55 Poplar Street, Suite 1-D

Brooklyn, New York 11201

718.797.2341

FM@martinezgroup.com

EVIDENCE
Evidence in the nature of Exhibit A consists of showings of the cited marks and Applicant's mark. Exhibit B consists of showings of Registrant's Facebook webpage, Registrant's Amazon ecommerce webpage, and Applicant's website whereupon the description of their product's intended uses are listed respectively. Exhibit C consists of showings of Registrant's goods for sale on various third-party ecommerce websites, showings of the different types of goods that the mentioned third-party vendors also sell, and a showing of the USPTO website displaying the status of the cited prior filed application. has been attached.
Original PDF file:
evi_66108104199-20191231141531147930_._1548-3_BOLD_ROA_Exhibit_A.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_66108104199-20191231141531147930_._1548-3_BOLD_ROA_Exhibit_B.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_66108104199-20191231141531147930_._1548-3_BOLD_ROA_Exhibit_C.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7

The applicant's current attorney information: Frank J. Martinez, Esq.. Frank J. Martinez, Esq. of THE MARTINEZ GROUP PLLC, is located at

      55 POPLAR STREET, 1-D
      BROOKLYN, New York 11201
      US
The docket/reference number is 1548-3.

The phone number is 718-797-2341.

The email address is FM@martinezgroup.com

The applicants proposed attorney information: Frank J. Martinez, Esq.. Frank J. Martinez, Esq. of THE MARTINEZ GROUP PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      55 POPLAR STREET, SUITE 1-D
      BROOKLYN, New York 11201
      United States
The docket/reference number is 1548-3.

The phone number is 718-797-2341.

The email address is FM@martinezgroup.com

Frank J. Martinez, Esq. 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: FRANK J. MARTINEZ, ESQ.. FRANK J. MARTINEZ, ESQ. of THE MARTINEZ GROUP PLLC, is located at

      55 POPLAR STREET, 1-D
      BROOKLYN, New York 11201
      US
The docket/reference number is 1548-3.

The phone number is 718-797-2341.

The email address is FM@martinezgroup.com; docket@martinezgroup.com

The applicants proposed correspondence information: Frank J. Martinez, Esq.. Frank J. Martinez, Esq. of THE MARTINEZ GROUP PLLC, is located at

      55 POPLAR STREET, SUITE 1-D
      BROOKLYN, New York 11201
      United States
The docket/reference number is 1548-3.

The phone number is 718-797-2341.

The email address is FM@martinezgroup.com; docket@martinezgroup.com

SIGNATURE(S)
Response Signature
Signature: /Frank J. Martinez, Esq./     Date: 12/31/2019
Signatory's Name: Frank J. Martinez
Signatory's Position: Attorney of Record, New York Bar member

Signatory's Phone Number: 718-797-2341

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:    FRANK J. MARTINEZ, ESQ.
   THE MARTINEZ GROUP PLLC
   
   55 POPLAR STREET, 1-D
   BROOKLYN, New York 11201
Mailing Address:    Frank J. Martinez, Esq.
   THE MARTINEZ GROUP PLLC
   55 POPLAR STREET, SUITE 1-D
   BROOKLYN, New York 11201
        
Serial Number: 88383832
Internet Transmission Date: Tue Dec 31 14:53:57 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201912311453573
17848-88383832-700736a29a7b0fce68612cda4
0a757325c1936b0611042d7157734cb87fe596e9
-N/A-N/A-20191231141531147930