| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88414435 |
| LAW OFFICE ASSIGNED | LAW OFFICE 121 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88414435/mark.png |
| LITERAL ELEMENT | U UNDERWOOD |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
Color is not claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the letter U with two swords crossed through a globe at the center of the U, with a Bible above it and an eternal flame above that. At the top of the swords is the head of a lion and the head of a horse, each with an olive branch in its mouth. The wording UNDERWOOD appears at the bottom of the mark in a ribbon. |
| ARGUMENT(S) | |
|
The Examining Attorney has refused registration of Applicant’s mark in Class 14 under Trademark Act Section 2(d), 15 U.S.C. 1052(d) on the basis of likelihood of confusion with U.S. Registration No. 5226631. Applicant respectfully requests that the refusal to register be withdrawn.
The Examining Attorney has refused registration of a highly distinctive Design Logo that features two swords crossed through a globe within a letter U with a stylized Bible and eternal flame, head of a lion and head of a horse with a small ribbon at the bottom with the term UNDERWOOD in it for cuff links and jewelry, alleging a likelihood of confusion with UNDERWOOD for wholesale and retail store services featuring jewelry. Applicant respectfully submits that no likelihood of confusion exists due to the differences in the marks and the commercial impression they each convey.
In making the determination as to whether there is a likelihood of confusion or not, important factors to be considered are the similarity or dissimilarity of the respective marks as to appearance, sound, commercial impression and connotation. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). Here, Applicant seeks registration of a very unique Design Logo in which the dominant features are the stylized design elements such as the sword and global and the head of a lion and the head of a horse, each holding an olive brand in its mouth. The term UNDERWOOD is a very small component of the overall design, proportionally very small and at the very bottom of the design. Applicant respectfully submits that, in light of the complexity and uniqueness of the design, the design elements are the dominant parts of the mark, which will function primarily as a fanciful design logo. To the extent that the word “Underwood” is noticed by consumers, it will be directly associated with the Applicant, a company that is owned by the well-known actor and director Blair Underwood (who signed the subject application) and is unlikely to be confused with any other mark. See also Applicant’s companion Application Serial No. 88414430 and its previously registered U.S. Reg. No. 4500317.
By stark contrast, the cited mark is simply the word UNDERWOOD. Applicant notes that the cited mark was granted registration over, and despite the existence of, Applicant’s prior Reg. No. 4500317 for BLAIR UNDERWOOD. Applicant also notes that the cited mark consists of a word that is primarily merely a surname. See, e.g., http://www.underwoods.com/the-underwoods/, which is owned and operated by Craig Underwood, Laura Underwood and Bill Underwood, aka “The Underwoods.” Applicant respectfully submits that the mark should not have been granted registration on the Principal Register without a claim of acquired distinctiveness, and is entitled to only limited protection in light of the fact that it is primarily merely a surname. Public policy dictates that one entity cannot and should not own a surname and prevent every other individual with that surname from using their own name
Applicant respectfully submits that the Registrant does not even use the cited mark as a trademark for the services for which it is registered in the form in which the mark registered. The specimens of record with the USPTO in the cited registration file make it clear that the mark used for retail and wholesale services was UNDERWOOD’S. The Registrant now appears use the mark as UNDERWOODS with no apostrophe (see www.underwoods.com, which has the same address as the registrant), which only reinforces the family surname meaning and commercial impression. In any event, however one considers the cited mark, it is clearly very different in sound, appearance, meaning and commercial impression from the Applicant’s unique and distinctive Design Logo.
Accordingly, Applicant respectfully requests that the Examining Attorney withdraw her refusal to register, and pass the mark to publication in the Official Gazette at her earliest convenience. |
|
| ADDITIONAL STATEMENTS SECTION | |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the letter "U" with two swords crossed through a globe at the center of the "U". There is a four point star superimposed over the front of the globe and an open Bible above it. Above the letter "U" on the left is presented the head of a lion and on the right, the head of a horse, each animal head holding an olive branch in its mouth; there is a torch with an eternal flame between the animal heads. The wording "UNDERWOOD" appears at the bottom of the mark in a ribbon. |
| ATTORNEY SECTION (current) | |
| NAME | Lori S. Kozak |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | FOX ROTHSCHILD LLP |
| STREET | 997 LENOX DRIVE, BUILDING 3 |
| CITY | LAWRENCEVILLE |
| STATE | New Jersey |
| POSTAL CODE | 08648-2311 |
| COUNTRY | US |
| PHONE | 310-598-4156 |
| FAX | 310.556.9828 |
| ipdocket@foxrothschild.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 099714.00013 |
| ATTORNEY SECTION (proposed) | |
| NAME | Lori S. Kozak |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | FOX ROTHSCHILD LLP |
| STREET | 997 LENOX DRIVE, BUILDING 3 |
| CITY | LAWRENCEVILLE |
| STATE | New Jersey |
| POSTAL CODE | 08648-2311 |
| COUNTRY | United States |
| PHONE | 310-598-4156 |
| FAX | 310.556.9828 |
| ipdocket@foxrothschild.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 099714.00013 |
| OTHER APPOINTED ATTORNEY | Michael Leonard, Barbara Grahn and other firm attorneys |
| CORRESPONDENCE SECTION (current) | |
| NAME | LORI S. KOZAK |
| FIRM NAME | FOX ROTHSCHILD LLP |
| STREET | 997 LENOX DRIVE, BUILDING 3 |
| CITY | LAWRENCEVILLE |
| STATE | New Jersey |
| POSTAL CODE | 08648-2311 |
| COUNTRY | US |
| PHONE | 310-598-4156 |
| FAX | 310.556.9828 |
| ipdocket@foxrothschild.com; lkozak@foxrothschild.com; gtat@foxrothschild.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 099714.00013 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Lori S. Kozak |
| FIRM NAME | FOX ROTHSCHILD LLP |
| STREET | 997 LENOX DRIVE, BUILDING 3 |
| CITY | LAWRENCEVILLE |
| STATE | New Jersey |
| POSTAL CODE | 08648-2311 |
| COUNTRY | United States |
| PHONE | 310-598-4156 |
| FAX | 310.556.9828 |
| ipdocket@foxrothschild.com; lkozak@foxrothschild.com; gtat@foxrothschild.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 099714.00013 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Lori S. Kozak/ |
| SIGNATORY'S NAME | Lori S. Kozak |
| SIGNATORY'S POSITION | Attorney of Record, CA Bar member |
| SIGNATORY'S PHONE NUMBER | 310.598.4156 |
| DATE SIGNED | 01/17/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Jan 17 20:50:24 EST 2020 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20200117205024121608-884 14435-700f1fdbe71e58bbea9 31d88f7c59cd9c0beae1ce232 fac3c22454c5d77e37bfa1-N/ A-N/A-2020011720455575092 5 |
| 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) |
The Examining Attorney has refused registration of Applicant’s mark in Class 14 under Trademark Act Section 2(d), 15 U.S.C. 1052(d) on the basis of likelihood of confusion with U.S. Registration No. 5226631. Applicant respectfully requests that the refusal to register be withdrawn.
The Examining Attorney has refused registration of a highly distinctive Design Logo that features two swords crossed through a globe within a letter U with a stylized Bible and eternal flame, head of a lion and head of a horse with a small ribbon at the bottom with the term UNDERWOOD in it for cuff links and jewelry, alleging a likelihood of confusion with UNDERWOOD for wholesale and retail store services featuring jewelry. Applicant respectfully submits that no likelihood of confusion exists due to the differences in the marks and the commercial impression they each convey.
In making the determination as to whether there is a likelihood of confusion or not, important factors to be considered are the similarity or dissimilarity of the respective marks as to appearance, sound, commercial impression and connotation. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). Here, Applicant seeks registration of a very unique Design Logo in which the dominant features are the stylized design elements such as the sword and global and the head of a lion and the head of a horse, each holding an olive brand in its mouth. The term UNDERWOOD is a very small component of the overall design, proportionally very small and at the very bottom of the design. Applicant respectfully submits that, in light of the complexity and uniqueness of the design, the design elements are the dominant parts of the mark, which will function primarily as a fanciful design logo. To the extent that the word “Underwood” is noticed by consumers, it will be directly associated with the Applicant, a company that is owned by the well-known actor and director Blair Underwood (who signed the subject application) and is unlikely to be confused with any other mark. See also Applicant’s companion Application Serial No. 88414430 and its previously registered U.S. Reg. No. 4500317.
By stark contrast, the cited mark is simply the word UNDERWOOD. Applicant notes that the cited mark was granted registration over, and despite the existence of, Applicant’s prior Reg. No. 4500317 for BLAIR UNDERWOOD. Applicant also notes that the cited mark consists of a word that is primarily merely a surname. See, e.g., http://www.underwoods.com/the-underwoods/, which is owned and operated by Craig Underwood, Laura Underwood and Bill Underwood, aka “The Underwoods.” Applicant respectfully submits that the mark should not have been granted registration on the Principal Register without a claim of acquired distinctiveness, and is entitled to only limited protection in light of the fact that it is primarily merely a surname. Public policy dictates that one entity cannot and should not own a surname and prevent every other individual with that surname from using their own name
Applicant respectfully submits that the Registrant does not even use the cited mark as a trademark for the services for which it is registered in the form in which the mark registered. The specimens of record with the USPTO in the cited registration file make it clear that the mark used for retail and wholesale services was UNDERWOOD’S. The Registrant now appears use the mark as UNDERWOODS with no apostrophe (see www.underwoods.com, which has the same address as the registrant), which only reinforces the family surname meaning and commercial impression. In any event, however one considers the cited mark, it is clearly very different in sound, appearance, meaning and commercial impression from the Applicant’s unique and distinctive Design Logo.
Accordingly, Applicant respectfully requests that the Examining Attorney withdraw her refusal to register, and pass the mark to publication in the Official Gazette at her earliest convenience.