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. 88404103 BISON (Stylized and/or with Design, see http://uspto.report/TM/88404103/mark.png) has been amended as follows:

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

RESPONSE TO EXAMINING ATTORNEY’S REFUSAL TO REGISTER

To the Trademark Examining Attorney and/or Commissioner for Trademarks:

The Examining Attorney has refused registration of Applicant's mark “BISON,” for goods in International Class 13, based on the assertion that there exists “a likelihood of confusion with the mark in U.S. Registration No. 5180326.” 

Applicant, Bison Systems, LLC, is seeking registration for its design mark consisting of a padlock shaped object with a the contours of a fingerprint inside the body of the said padlock shaped object and the silhouette of a handgun centered inside the body of the said padlock shaped object with the characters "BISON" centered below the said padlock shaped object.  Applicant is currently selling firearm trigger locks which employ fingerprint scanner technology. 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

The Examining Attorney made his decision based largely on three of the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  Those factors being the similarity and nature of the services, and similarity of the trade channels of the services, and the similarity of the marks.

With all due respect to the Examining Attorney, Applicant asserts that there is no likelihood of confusion between Applicant's mark and the registered mark.  Applicant’s mark distinguishes itself from the registered mark in the nature of goods provided.  Furthermore, Applicant's mark is clearly distinguishable from the BISON TACTICAL mark, which creates a wholly different commercial impression.  Finally, the consuming public is able to distinguish Applicant's use of the BISON mark from the BISON TACTICAL mark due to the existence of a crowded field. 

I.       Similarity of the Goods and/or Services

Applicant does not offer a similar good or service as BISON TACTICAL.  Whereas the BISON TACTICAL standard character mark is used for “Retail stores featuring firearms, ammunition, shooting equipment and accessories, audiovisual media and books; On-line retail store services featuring firearms, ammunition, shooting equipment and accessories, audiovisual media and books,” the BISON design mark is being used for gun locks. 

Applicant’s goods are currently sold online and on various secondary online marketplaces such as Amazon.com, and are marketed to a discerning clientele.  This is an important distinction to draw between Applicant’s goods and the BISON TACTICAL’s services, as the less similar the goods and services each mark represents, the more distinguishable the marks are from one another.

II.     Similarity of Trade Channels 

Applicant does not operate in a similar trade channel as BISON TACTICAL.   The Examining Attorney points out that “gun locks are typically provided at retail stores focusing on firearms and their accessories.  Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes.”

Applicant does not contest the possibility that applicant’s goods may be provided at retail stores.  However, at present, Applicant’s goods are not currently being advertised on the BISON TACTICAL website.  Moreover, other du Pont factors, namely the similarity of the marks, substantially outweigh this one coincidence. 

III.   Similarity of the Marks 

The Examining Attorney’s refusal to register Applicant’s mark hinges largely on this factor.  This du Pont factor requires examination of "the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." du Pont, 476 F.2d at 1361.  Applicant respectfully asserts that the Examining Attorney has not examined the two marks in their entirety, “as is apparent from the plain language of this factor, marks must be viewed "in their entireties," and it is improper to dissect a mark when engaging in this analysis, including when a mark contains both words and a design.” In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (citing In re Shell Oil Co., 992 F.2d 1204, 1206 (Fed.Cir. 1993)) ("The marks are considered in their entireties, words and design.").

In general, when a mark comprises both words and a design, the words are normally accorded greater weight because they are more likely to be impressed upon a purchaser’s memory and would typically be used by purchasers to request the goods or services.  See, e.g., In re Viterra, 671 F3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012); In re Covalinski, 113 USPQ2d 1166, 1168 (TTAB 2014).  However, there is an exception to this rule and, in appropriate cases you should give greater weight to a prominent design feature. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KDAA v. Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135 (Fed. Cir. 2015).  While marks must be considered in their entireties, “it is entirely appropriate to accord greater importance to the more distinctive elements in the marks.”  Covalinski, 113 USPQ2d at 1170 citing In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). 

In this particular case, Examiner has not fully examined the elements associated with the two marks.

The words in the parties’ marks are not similar in appearance in their entirety as to appearance, sound, connotation and commercial impression.  There are crucial differences between the marks.  In the July 9 office action refusing registration, the Examining Attorney argues that the marks are “similar in sound, appearance, meaning and overall commercial impression to registrant’s mark, BISON TACTICAL.”  The examining attorney correctly pointed out that “both marks contain the identical wording BISON.”   Because of this, the examining attorney asserted that “the Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.” 

Applicant respectfully disagrees with Examining Attorney for the following reasons: 

First, Applicant's mark is drastically different in its visual appearance from the mark cited by the Examining Attorney.  The BISON mark is “a padlock shaped object with a the contours of a fingerprint inside the body of the said padlock shaped object and the silhouette of a handgun centered inside the body of the said padlock shaped object with the characters "BISON" centered below the said padlock shaped object.”  The dominant feature of the BISON mark is clearly the padlock and the handgun silhouette.  The BISON mark differs significantly from the BISON TACTICAL standard character mark. This design creates a markedly different visual appearance from the BISON TACTICAL mark.  While the marks contain the word "BISON,” the visual appearance between the marks do not share any other visual similarities.  This makes consumer confusion highly unlikely.

Second, BISON does not sound similar to BISON TACTICAL.   It is important to recognize that BISON is comprised of two syllables whereas BISON TACTICAL is comprised of five.  Such an imposition creates an entirely different commercial impression.   Due to the lack of aural similarity between the cited mark and Applicant's mark, there is no likelihood of confusion among consumers who hear the cited mark and Applicant's mark.

Finally, the BISON design mark takes on an entirely different meaning and overall commercial impression than BISON TACTICAL.  By definition, the word “TACTICAL” implies that the services related to or constituting actions carefully planned to gain a specific military end.  The use of a word such as “TACTICAL” creates a wholly different commercial impression than the design mark of Applicant’s.  In contrast, the BISON design mark draws a consumer’s eye to the design element first.  The padlock element is larger than, and is positioned superior to, the text element.  Because the mark is related to gun locks, the consumer impression is far more likely to be associated with the padlock, fingerprint and firearm elements of the mark than the BISON characters below.

Taken together with the visual and aural differences between the marks, it is clear that the marks are not likely to be confused in the marketplace.  The dominant element of Applicant’s design is a padlock shaped object with the contours of a fingerprint inside the body of the said padlock shaped object and the silhouette of a handgun centered inside the body of the said padlock shaped object.  The cited BISON TACTICAL mark is completely different from Applicant's BISON mark in sight, sound, meaning, as well in overall commercial impression.  For these reasons, the Examining Attorney should withdraw his refusal based on likelihood of confusion and publish the BISON mark for opposition.

IV.       The Public is Able to Distinguish Marks Due to a Crowded Field

The sixth du Pont factor requires an examining attorney to consider the “number and nature of similar marks in use on similar goods.” du Pont 476 F.2d 1357, 1361 (CCPA 1973).  Whenthere are many similar marks in use on similar goods or services, the mark is considered weak and “merely one of a crowd of marks.” One Industries, LLC v. Jim O’Neal Distributing, Inc., 578 F.3d 1154, 1164 (9th Cir. 2009).  This has become to be known as a crowded field. Id.   When a mark exists in a crowded field, the public is presumedto be able to distinguish the mark from other marks that may have only minor differences. King Candy Co. v. Eunice King’s Kitchen Inc.,182 U.S.P.Q. 108 (C.C.P.A. 1974) (“confusion is unlikely becausethe marks are… so widely used that the public easily distinguishes slight differences in the marks as well as differences in the goods…”); Jupiter Hosting Inc. v. Jupitermedia Corp., 76 U.S.P.Q.2d 1042 (N.D. Cal. 2004);In re Hamilton Bank, 222 U.S.P.Q. 174, 179 (T.T.A.B. 1984).

Recently, the United States Court of Appeals for the Federal Circuit clarified that an examining attorney may not simplyignore evidence of a crowdedfield and must give due consideration and weight to the significance of such evidence. Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334 (2015); Wolfskin,797 F.3d 1363.  In JuiceGeneration, the FederalCircuit reversed the Trademark Trial and Appeal Board’s decision sustaining an opposition because the Board failed to properly consider Juice Generation’s crowded field evidence.Juice Generation, 794 F.3d at 1340.  Indoing so, theFederal Circuit heldthat evidence of many similar registered marks is “powerful on its face” and the Board, and therefore Examining Attorneys, may not simply disregard evidence of third-party registrations just because there may not be additional evidence regarding the use, sales, and promotional efforts of the registered marks in the marketplace.

In the present case, there is ample evidence to support the conclusion that there are a number of similar marks in use on similar goods.  Applicant presents the following exhibits as support.

Exhibit Aillustrates that there are currently 551 returns on the Trademark Electronic Search System associated with a “BISON” basic word mark search query. 

Exhibit Billustrates that there are currently 113 returns on the Trademark Electronic Search System associated with a “BISON” basic word mark search query in International Class 13.

Exhibit Cillustrates that there are over 144 million returns associated with the search term “BISON” on a popular internet search engine.

Exhibit D illustrates that there are over 2.8 million returns associated with the search term “BISON MERCHANDISE” on a popular internet search engine.

Exhibit E illustrates that there are over 90 million returns associated with the search term “BISON STORE” on another popular internet search engine.

This evidence clearly indicates that the “BISON” portion of BISON TACTICAL mark is a profoundly popular name, and thus a relatively weak mark.  Therefore, more emphasis should be placed on the differences between the “TACTICAL” portion of the BISON TACTICAL mark and the design features of Applicant’s design mark.  It is overwhelmingly clear that there are multiple, both registered and common-law alike, uses of the word “BISON” both in and out of both the international classes of gun locks and retail stores.  As such, Applicant’s mark exists in a crowded field, and the consuming public is able to distinguish the BISON mark from the BISON TACTICAL mark.

CONCLUSION

Based on the demonstrated differences between the nature of goods and services, the overwhelmingly clear differences between the marks, and the crowded field of "BISON" marks for gun locks and retail stores featuring firearms, ammunition, shooting equipment and accessories, Applicant hereby submits that confusion is not likely between its mark and the cited mark, especially since Applicant has already established itself in the niche market of gun locks. Having now fully responded to the Office Action, Applicant respectfully requests that, with consideration of the foregoing, the refusal to register be withdrawn and the application passed to publication for opposition in the Official Gazette.

 

EVIDENCE
Evidence in the nature of Exhibit A illustrates that there are currently 551 returns on the Trademark Electronic Search System associated with a "BISON" basic word mark search query. Exhibit B illustrates that there are currently 113 returns on the Trademark Electronic Search System associated with a "BISON" basic word mark search query in International Class 13. Exhibit C illustrates that there are over 144 million returns associated with the search term "BISON" on a popular internet search engine. Exhibit D illustrates that there are over 2.8 million returns associated with the search term "BISON MERCHANDISE" on a popular internet search engine. Exhibit E illustrates that there are over 90 million returns associated with the search term "BISON STORE" on another popular internet search engine. has been attached.
Original PDF file:
evi_20715985194-20190809144358848870_._BISONSYS001_Exhibit_A.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_20715985194-20190809144358848870_._BISONSYS001_Exhibit_B.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_20715985194-20190809144358848870_._BISONSYS001_Exhibit_C.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_20715985194-20190809144358848870_._BISONSYS001_Exhibit_D.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_20715985194-20190809144358848870_._BISONSYS001_Exhibit_E.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

The applicant's current attorney information: Scott D. Thornton, Esq.. Scott D. Thornton, Esq. of THE THORNTON FIRM, LLC, is located at

      7455 ARROYO CROSSING PKWY, SUITE 220
      LAS VEGAS, Nevada 89113
      US
The docket/reference number is BISONSYS001.

The phone number is 702-761-6584.

The email address is scott@thethorntonfirm.com

The applicants proposed attorney information: Scott D. Thornton, Esq.. Scott D. Thornton, Esq. of THE THORNTON FIRM, LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      7455 ARROYO CROSSING PKWY, SUITE 220
      LAS VEGAS, Nevada 89113
      United States
The docket/reference number is BISONSYS001.

The phone number is 702-761-6584.

The email address is scott@thethorntonfirm.com

Scott D. Thornton, Esq. submitted the following statement: I attest that I am an 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).
The applicant's current correspondence information: SCOTT D. THORNTON, ESQ.. SCOTT D. THORNTON, ESQ. of THE THORNTON FIRM, LLC, is located at

      7455 ARROYO CROSSING PKWY, SUITE 220
      LAS VEGAS, Nevada 89113
      US
The docket/reference number is BISONSYS001.

The phone number is 702-761-6584.

The email address is scott@thethorntonfirm.com

The applicants proposed correspondence information: Scott D. Thornton, Esq.. Scott D. Thornton, Esq. of THE THORNTON FIRM, LLC, is located at

      7455 ARROYO CROSSING PKWY, SUITE 220
      LAS VEGAS, Nevada 89113
      United States
The docket/reference number is BISONSYS001.

The phone number is 702-761-6584.

The email address is scott@thethorntonfirm.com

SIGNATURE(S)
Response Signature
Signature: /Scott Thornton/     Date: 08/09/2019
Signatory's Name: Scott D. Thornton, Esq.
Signatory's Position: Attorney of record, New York Bar member

Signatory's Phone Number: 702-761-6584

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:    SCOTT D. THORNTON, ESQ.
   THE THORNTON FIRM, LLC
   
   7455 ARROYO CROSSING PKWY, SUITE 220
   LAS VEGAS, Nevada 89113
Mailing Address:    Scott D. Thornton, Esq.
   THE THORNTON FIRM, LLC
   7455 ARROYO CROSSING PKWY, SUITE 220
   LAS VEGAS, Nevada 89113
        
Serial Number: 88404103
Internet Transmission Date: Fri Aug 09 15:04:06 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201908091504063
58326-88404103-6106cdce139ca901d96db3232
310559bad6cc2ec2be7311e692119e201640c82f
-N/A-N/A-20190809144358848870