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)

---

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. 88421296 COVERALLS(Standard Characters, see http://uspto.report/TM/88421296/mark.png) has been amended as follows:

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

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

-----------------------------------

In the Matter of the Application of:  Wiesman Holdings, LLC

Serial No.:  88/421296

Filed:  05/08/2019                  

Mark:  COVERALLS

Attorney Docket No.:  56125-973

-----------------------------------

 

 

 

RESPONSE

 

            This Response is to the Office Action issued July 24, 2019, with respect to the above-referenced trademark application that has a statutory period for response set to expire on January 24, 2020.  The Applicant wishes to respond to the issues set forth in the Office Action and, where appropriate, seeks to amend the application as follows:

 

I.          GOODS AND/OR SERVICES AND BASIS INFORMATION

The Applicant hereby amends its description of goods and services, to read as follows:

Class 10: Fitted covers for medical equipment, namely, c-Arms, laser arms, cameras, microscopes, fluoroscopes, light handles, lights, tables, and stands, and not including face shields.

 

II.        LIKELIHOOD OF CONFUSION

The Examining Attorney has refused registration of Applicant’s Mark COVERALLS (Word Mark) under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), because Applicant’s Mark so resembles U.S. Registration Nos. 1908303 (hereinafter referred to, collectively, as the “Cited Mark”), when used on or in connection with the identified goods and services, as to be likely to cause confusion or to cause mistake or to deceive. 

A.  Legal Standard

The Court of Customs and Patent Appeals (“C.C.P.A”) has set forth thirteen factors for the Patent and Trademark Office to consider in determining a likelihood of confusion under Trademark Act Section 2(d).  In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1360-2 (C.C.P.A. 1973).  These factors include: the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; the similarity or dissimilarity and nature of the goods or services; the similarity or dissimilarity of established trade channels; the conditions under which and the buyers to whom sales are made; the number and nature of similar marks in use on similar goods or services; the length of time during which there has been concurrent use without actual confusion; and whether a house mark is used.  Id. at 1361.  Using these factors as a guide, each case must be decided on its own facts.  Id.  Although the amount of weight given to each factor may vary, all the evidence must be considered in determining whether there is a likelihood of confusion.  Id. at 1362.

B.  APPLICANT’S MARK AND THE CITED MARK ARE NOT SIMILAR

The first DuPont factor requires that the marks be compared in their entireties as to appearance, sound, connotation, and commercial impression.  Id. at 1361.  The marks are to be compared in their entireties, because the marks must be considered “in the way in which they are perceived by the relevant public.”  In re Shell Oil Co., 26 U.S.P.Q.2d 1687, 1689 (Fed. Cir. 1993).  A difference in only one element of the marks can preclude a finding of likelihood of confusion.  See Safeway Stores, Inc. v. Bel Canto Fancy Foods, Ltd., 5 U.S.P.Q.2d 1980, 1982 (T.T.A.B. 1987).  The C.C.P.A. and the Trademark Trial and Appeal Board (“T.T.A.B.”) have consistently found no likelihood of confusion notwithstanding the fact that a mark incorporates a portion of or the entirety of another mark even though the marks are used in connection with related goods or services when the marks do not look or sound alike.  See, e.g., Lever Bros. Co. v. Barcolene Co., 463 F.2d 1107, 1109 (C.C.P.A. 1972) (finding applicant’s ALL CLEAR! used in connection with household cleaner not to be confusingly similar to registrant’s ALL used with household cleansing products even though the two marks shared the common term ALL and were used on virtually identical products); In re P. Ferrero, 479 F.2d 1395, 1397 (C.C.P.A. 1973) (finding applicant’s TIC TAC used in connection with candy not to be confusingly similar to registrant’s TIC TAC TOE used in connection with ice cream and sherbet even though one mark incorporated two-thirds of the other and both marks were used in connection with similar goods); Bell Lab., Inc. v. Colonial Prod., Inc. 644 F. Supp. 542, 550 (S.D. Fla. 1986) (finding applicant’s FINAL used in connection with rat poison not to be confusingly similar to registrant’s FINAL FLIP also used with rat poison even though both marks shared the common term FINAL and were used on identical products).

The marks must also be compared in their entireties as to connotation and commercial impression.  In re E.I. DuPont DeNemours & Co., 476 F.2d at 361.  The meaning or connotation of a mark must be determined in relation to the named goods or services, because the average purchaser normally retains a general, rather than specific, impression of the mark.  TMEP § 1207.01(b)(v).  “Even marks that are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties’ goods or services so that there is no likelihood of confusion.”  Id.  The C.C.P.A. and the T.T.A.B. have consistently found no likelihood of confusion even though two marks had a similar appearance or sound because they conveyed a different commercial impression when applied to the goods or services.  See, e.g., In re British Bulldog, Ltd., 224 U.S.P.Q. 854 (T.T.A.B. 1984) (holding PLAYERS for men’s underwear not likely to be confused with PLAYERS for shoes, because the term PLAYERS implies a fit, style, color and durability adapted to outdoor activities when applied to shoes, but “implies something else, primarily indoors in nature” when applied to men’s underwear); In re Sydel Lingerie Co., Inc., 197 U.S.P.Q. 629 (T.T.A.B. 1977) (finding BOTTOMS UP for ladies’ and children’s underwear not likely to be confused with BOTTOMS UP for men’s clothing, because the term connotes the drinking phrase “Drink Up” when applied to men’s suits, coats and trousers, but does not have this connotation when applied to ladies’ and children’s underwear).

The Applicant’s Mark is COVERALLS, while the Cited Mark is COVERALL.  When the Applicant’s Mark is compared in its entirety to the Cited Mark, it is evident that the marks have a different appearance.  As is clearly evident by the above cited examples, a difference in only one element (i.e. letter) of the marks can preclude a finding of likelihood of confusion.  When compared as a whole, the Applicant’s Mark and the Cited Mark not only have a different appearance, but also the Applicant’s Mark and the Cited Mark have a different sound and connotation.  The marks look and sound different to the extent that Applicant’s Mark includes the letter “S”, while the Cited Mark does not.

Considering the aforementioned differences, the Examining Attorney should find that fundamental difference between each mark, such that the Cited Mark should not be a basis for finding of a likelihood of confusion.  Because both the C.C.P.A. and the T.T.A.B. have consistently found no likelihood of confusion when marks taken in their entireties do not look alike, the Applicant’s Mark and the Cited Mark are clearly not likely to cause confusion.

C.  APPLICANT’S MARK AND THE CITED MARKS ARE USED ON DIFFERENT GOODS AND ARE SOLD IN DIFFERENT TRADE CHANNELS TO DIFFERENT TYPES OF CONSUMERS

Other DuPont factors require the Examining Attorney to compare the similarity or dissimilarity of the goods or services, their established channels of trade, and the degree of sophistication of their purchasers.  In re E.I. DuPont DeNemours & Co., 476 F.2d at 1361. “If the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely.” TMEP § 1207.01(a)(i); see, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field).  The comparison of the goods or services is limited to those listed in the Cited Marks.  In re E.I. DuPont DeNemours & Co., 476 F.2d at 1361.    

The Applicant’s Mark designates that through an amended description that the goods and services are associated with:

Class 10 - Fitted covers for medical equipment, namely, c-Arms, laser arms, cameras, microscopes, fluoroscopes, light handles, lights, tables, and stands, and not including face shields.

Based solely on the respective amended identifications, it is evident that Applicant’s goods and services in class 10 are clearly different from the goods and services of the Cited Marks, especially since the Cited Marks are directed and sold in different trade channels and some have been categorized in different international classes used for authoritative classification between differing goods and services. 

Based solely on the respective identifications, it is evident that Applicant’s goods and services are clearly different from the goods and services of the Cited Marks, especially when viewed in light of the marks, and are directed and sold in different trade channels. 

As such, Applicant’s goods and the services of the Applicant’s Mark neither flow in the same channels of trade nor are directed toward the same purchasers.  Furthermore, the USPTO did not find a likelihood of confusion between any registered mark of the Cited Marks that are associated in similar classes of goods and services. Therefore the USPTO should arrive at the same result for the applied for mark. 

When used in conjunction with Applicant’s amended goods and services, the Applicant’s Mark therefore conveys the commercial impression that Applicant’s amended goods and services are associated with a specific class of medical equipment that clearly differ from the Cited Mark.  Specifically, the Applicant wants to market specific goods to medical personnel looking to protect valuable medical equipment, namely, c-Arms, laser arms, cameras, microscopes, fluoroscopes, light handles, lights, tables, and stands.  In contrast, the Cited Mark is associated with human wearing face shields, which are clearly different than the Applicant’s amended goods and services, which further exclude face shields.  A sophisticated consumer would know the differences between the goods under the Cited Mark, considering these amended goods and services are not the type of goods and services that would be offered off the shelf per se.   Based solely on the respective identifications, it is evident that Applicant’s amended goods and services are clearly different from than the services of the Cited Mark.  Since the Cited Mark is directed and sold in different trade channels to different types of consumers, namely equipment versus clothing, a consumer would readily distinguish between goods offered under the Cited Mark and Applicant’s Mark without any possibility of confusion. 

It is unlikely that the Applicant’s services would be marketed in such a way that either the Applicant’s mark or the Cited Marks would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source.  Therefore, the Applicant’s Mark and the Cited Marks would not cause a likelihood of confusion.

C.  Conclusion

In order to determine whether a likelihood of confusion exists under Trademark Act Section 2(d), the Examining Attorney is required to consider all relevant evidence.  In re E.I. DuPont DeNemours & Co., 476 F.2d. at 1362.  Specifically, in a very crowded field, the goods and services of Applicant’s Mark and the Cited Marks are different and would not be marketed in such a way to create a likelihood of confusion.  Removal of the refusal to register Applicant’s Mark in view of the Cited Marks is therefore respectfully requested.

The Applicant submits that this application is in condition for publication.  Prompt notification of the same is respectfully requested.

Please charge any additional fees associated with this application to Deposit Order Account No. 501581.

                                                                        Respectfully submitted,

 

           

 

Date:   January 23, 2020                                 By:      /Joseph Falcon/                      

Joseph R. Falcon III, Esq.

Barley Snyder

2 Great Valley Parkway

Suite 110

Malvern, PA 19355

Patent Bar No: 55,166

PA Bar ID No: 94658

 

 

 

 

 

 

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Surgical drapes; surgical shoe coverings; Fitted covers for medical equipment; Fitted coverings for medical exam tables; Draw-sheets for sick beds; Patient examination gowns; surgical cap; bibs for dental use
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: Surgical drapes; Fitted covers for medical equipment, namely, c-Arms, laser arms, cameras, microscopes, fluoroscopes, light handles, lights, tables, and stands, and not including face shields; surgical shoe coverings; Fitted covers for medical equipment; Fitted coverings for medical exam tables; Draw-sheets for sick beds; Patient examination gowns; surgical cap; bibs for dental useClass 010 for Fitted covers for medical equipment, namely, c-Arms, laser arms, cameras, microscopes, fluoroscopes, light handles, lights, tables, and stands, and not including face shields
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: Joseph R. Falcon III. Joseph R. Falcon III of BARLEY SNYDER, is located at

      SUITE 110
      2 GREAT VALLEY PARKWAY
      MALVERN, Pennsylvania 19355
      US
The docket/reference number is 56125-973.

The phone number is 610-889-3699.

The fax number is 610-889-3699.

The email address is berwynipdocket@barley.com

The applicants proposed attorney information: Joseph R. Falcon III. Joseph R. Falcon III of BARLEY SNYDER, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 110
      2 GREAT VALLEY PARKWAY
      MALVERN, Pennsylvania 19355
      United States
The docket/reference number is 56125-973.

The phone number is 610-889-3699.

The fax number is 610-889-3699.

The email address is berwynipdocket@barley.com

Joseph R. Falcon III 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: JOSEPH R. FALCON III. JOSEPH R. FALCON III of BARLEY SNYDER, is located at

      SUITE 110
      2 GREAT VALLEY PARKWAY
      MALVERN, Pennsylvania 19355
      US
The docket/reference number is 56125-973.

The phone number is 610-889-3699.

The fax number is 610-889-3699.

The email address is berwynipdocket@barley.com

The applicants proposed correspondence information: Joseph R. Falcon III. Joseph R. Falcon III of BARLEY SNYDER, is located at

      SUITE 110
      2 GREAT VALLEY PARKWAY
      MALVERN, Pennsylvania 19355
      United States
The docket/reference number is 56125-973.

The phone number is 610-889-3699.

The fax number is 610-889-3699.

The email address is berwynipdocket@barley.com

SIGNATURE(S)
Response Signature
Signature: /JOSEPH FALCON/     Date: 01/23/2020
Signatory's Name: Joseph R Falcon
Signatory's Position: Patent Attorney - PA Bar Member

Signatory's Phone Number: 610-889-3699

The signatory has confirmed that an authorized U.S. licensed attorney has been appointed to represent the owner/holder; that he/she has been granted reciprocal recognition under 37 C.F.R. §11.14(c)(1) by the USPTO's Office of Enrollment and Discipline; and, that he/she is an authorized signatory based on 37 C.F.R. §11.14(c)(2).

Mailing Address:    JOSEPH R. FALCON III
   BARLEY SNYDER
   SUITE 110
   2 GREAT VALLEY PARKWAY
   MALVERN, Pennsylvania 19355
Mailing Address:    Joseph R. Falcon III
   BARLEY SNYDER
   SUITE 110
   2 GREAT VALLEY PARKWAY
   MALVERN, Pennsylvania 19355
        
Serial Number: 88421296
Internet Transmission Date: Thu Jan 23 16:37:01 EST 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20200123163701585
819-88421296-700131925fb2be025f91e7ae54e
e425f86569a7bc245d6429d57d6a736c3d9f5410
-N/A-N/A-20200123163540332674