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. 88416567 PROTERRA(Standard Characters, see http://uspto.report/TM/88416567/mark.png) has been amended as follows:

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

Applicant has amended the description of goods as suggested by the Examining Attorney and has added class 1 to the application.  The fee for the new class is submitted herewith.

 

The Examining Attorney has indicated there may be a likelihood of confusion between pending application serial numbers 87/562,369 and 87/562,384 for the mark TERRA PROTEIN and the subject PROTERRA mark.  Applicant respectfully disagrees.

 

With respect to the marks, the sight, sound and commercial impression created by Applicant's PROTERRA mark is sufficiently different from the cited TERRA PROTEIN mark to prevent consumer confusion.  The common portions of the marks are in reverse order, and the terms sound very different.  Applicant's mark is a singular fanciful word, whereas the cited application incudes two terms, one of which is the real word PROTEIN.  Consumers will not perceive products sold under the fanciful mark PROTERRA to be related to or emanate from the same source as those sold under the TERRA PROTEIN mark.

 

With respect to the goods, the goods covered by the cited applications are sufficiently different from those covered by the present application that consumers will not be confused as to the source of the goods, particularly when combined with the differences in the marks discussed above. Customers will understand a textured vegetable protein to be different from a protein enriched powdered starch or protein supplement powder.  The products themselves are different in structure, with the TERRA PROTEIN products existing in powder form whereas PROTERRA products are textured plant-based proteins, for example granules, chips/flakes or shreds.

 

Further, the products are used for different purposes and sold in different channels of trade. Applicant's textured proteins are sold as meat extenders or substitutes, and Applicant's proteins in class 1 are for the food industry (e.g. companies producing food on an industrial scale).  Applicant's products will be sold as products for further processing into food and pet food and will be branded again by Applicant's customers for retail or food service end user markets.

 

In contrast, the TERRA PROTEIN applications cover protein supplement powders in class 5 and powdered starch in class 30, which covers products ready for consumption or conserving/improving the flavor of food.  Such products are used for very different purposes than Applicant's products discussed above and are sold in different trade channels. The TERRA PROTEIN powders would be sold at retail and possibly to food service customers, but not to industrial food producers. 

 

Applicant's customers are highly sophisticated and will utilize Applicant's PROTERRA protein products to produce final food products.  It is unlikely retail purchasers of the TERRA PROETIN powders would encounter Applicant's PROTERRA products because of the different intended uses and channels of trade.  To the extent there is any overlap with Applicant's food industry customers and customers of the cited TERRA PROTEIN products, such customers will be sophisticated and not likely to be confused by the use of the dissimilar marks in connection with their respective products for different uses.  

 

In view of the foregoing, Applicant respectfully submits that there is no likelihood of confusion between Applicant's marks and the cited marks.  Applicant requests that its Application not be suspended and requests that the present application be allowed.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 029 for protein for industrial preparation of food; formed textured vegetable protein for use as a meat substitute; textured vegetable protein for use as a meat substitute; textured vegetable protein for use as a meat extender
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: protein for industrial preparation of food; Formed textured vegetable protein for use as a meat substitute; textured vegetable protein for use as a meat extender; textured vegetable protein for use as a meat substituteClass 029 for Formed textured vegetable protein for use as a meat substitute; textured vegetable protein for use as a meat extender
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant hereby adds the following class of goods/services to the application:
New: Class 001 for Proteins for the food industry
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

The applicant's current attorney information: ANDREA F. SELLERS. ANDREA F. SELLERS of STINSON LLP, is located at

      1201 WALNUT, SUITE 2900
      KANSAS CITY, Missouri 64106-2150
      US
The docket/reference number is 3001926-0118.

The phone number is 816-691-3426.

The fax number is 816-691-3495.

The email address is trademark@stinson.com

The applicants proposed attorney information: ANDREA F. SELLERS. ANDREA F. SELLERS of STINSON LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1201 WALNUT, SUITE 2900
      KANSAS CITY, Missouri 64106-2150
      United States
The docket/reference number is 3001926-0118.

The phone number is 816-691-3426.

The fax number is 816-691-3495.

The email address is trademark@stinson.com

ANDREA F. SELLERS 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: ANDREA F. SELLERS. ANDREA F. SELLERS of STINSON LLP, is located at

      1201 WALNUT, SUITE 2900
      KANSAS CITY, Missouri 64106-2150
      US
The docket/reference number is 3001926-0118.

The phone number is 816-691-3426.

The fax number is 816-691-3495.

The email address is trademark@stinson.com

The applicants proposed correspondence information: ANDREA F. SELLERS. ANDREA F. SELLERS of STINSON LLP, is located at

      1201 WALNUT, SUITE 2900
      KANSAS CITY, Missouri 64106-2150
      United States
The docket/reference number is 3001926-0118.

The phone number is 816-691-3426.

The fax number is 816-691-3495.

The email address is trademark@stinson.com

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Andrea F. Sellers/      Date: 09/23/2019
Signatory's Name: Andrea F. Sellers
Signatory's Position: Attorney of record, Missouri bar member
Signatory's Phone Number: 816-691-3426


Response Signature
Signature: /Andrea F. Sellers/     Date: 09/23/2019
Signatory's Name: Andrea F. Sellers
Signatory's Position: Attorney of record

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:    ANDREA F. SELLERS
   STINSON LLP
   
   1201 WALNUT, SUITE 2900
   KANSAS CITY, Missouri 64106-2150
Mailing Address:    ANDREA F. SELLERS
   STINSON LLP
   1201 WALNUT, SUITE 2900
   KANSAS CITY, Missouri 64106-2150
        
RAM Sale Number: 88416567
RAM Accounting Date: 09/23/2019
        
Serial Number: 88416567
Internet Transmission Date: Mon Sep 23 11:49:24 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20190923114924452
252-88416567-6103fab11d59b98e4ab48285950
f6ddd81ea833d6ccd4622c60414b898ccc32087-
DA-49240383-20190923112637012525