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. 88427141 TRIBE(Standard Characters, see http://uspto.report/TM/88427141/mark.png) has been amended as follows:

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

ARGUMENT IN RESPONSE TO OFFICE ACTION

In the outstanding Office Action, the Examining Attorney has presented three issues: (1) a refusal to register the present mark under Section 2(d), based on a proposed likelihood of confusion with six (6) registered TRIBE marks; (2) a notation of possible refusal(s) based on four (4) earlier-filed and still pending applications for TRIBE marks; and (3) an objection to the recitation of goods, requiring further specification and proper classification. 

REFUSAL – LIKELIHOOD OF CONFUSION

The Examining Attorney has issued a refusal, based on a likelihood of consumer confusion with the following registered marks:

•  “TRIBE” (U.S. Registration No. 3042140) for “hummus.”
• “TRIBE” (U.S. Registration No. 4525331) for “hummus.”
• “THE TRIBE” (U.S. Registration No. 4530131 for “red wine; red wines; white wine; wine; wines; wines and sparkling wines.”
• “TRIBES” (U.S. Registration No. 4878691) for “beers and ales.”
• “TRIBE” (U.S. Registration No. 5407726) for “shampoo, body wash, liquid hand soap, all intended for distribution to mass market retailers, drugstores or internet retailers, … excluding beauty salons and spas.”
• “TRIBE” (U.S. Registration No. 5706545) for “cosmetic body care preparations, namely, spa muds and clays.”

 

The refusal is based upon the Examining Attorney’s assertions that the marks are all similar to applicant’s mark, and that all of the goods of the cited marks are closely related to applicant’s – all being sufficient to establish a likelihood of consumer confusion.  Applicant respectfully disagrees with the Examining Attorney’s reasoning.  Applicant submits that the coexistence of such multiple TRIBE marks in the USPTO demonstrates the relative weakness of the term TRIBE.  A mark is determined to be either weak or strong based on the mark's distinctiveness. J. Thomas McCarthy, MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION §11.75 (4th ed. 2001). The less distinctive, and therefore weaker, the mark, the less likely that a junior use will engender a likelihood of confusion. Id. at § 11.76 (citing Steve's Ice Cream v. Steve's Famous Hot Dogs, 3 U.S.P.Q.2d 1477 (T.T.A.B. 1987)). See also, Sure-Fit Products Co. v. Saltzson Drapery Co., 117 U.S.P.Q. 295, 297 (C.C.P.A. 1958) ("where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owners of stronger trademarks [and] his competitors may come closer to his mark than would be the case with a strong mark without violating his rights").  Further, in a field “crowded” with similar marks, “each member of the crowd is relatively ‘weak’ in its ability to prevent use by others in the crowd.” MCCARTHY  at §11.85 at 11-163.  See also, Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d 1271 (TTAB 20009), aff’d 415 Fed. Appx. 222 (Fed. Cir. 2010);Moose Creek, Inc. v. Abercrombie & Fitch Co., 331 F. Supp.2d 1214, 73 USPQ2d 1287. 

Accordingly, in view of applicant’s amended recitation of goods, with all its goods now falling within Class 5, as being or including supplements, vitamins, and/or otherwise fortified for medical or nutritional purposes, the cited marks no longer rise to the level of relevance for establishing a likelihood of confusion.  Applicant’s goods, as amended, are now sufficiently distinct from those of the cited marks.  Indeed, the cited TRIBE marks fall arguably closer to each other than as compared to the intended use of applicant’s TRIBE mark, yet the USPTO has clearly deemed them distinct from each other.  Applicant submits that its goods are at least as distinct from the goods of each of the cited marks; and, therefore, that its TRIBE mark should likewise be considered distinct and capable of coexisting amongst the other TRIBE marks, without a likelihood of consumer confusion.

POSSIBLE LIKELIHOOD OF CONFUSION

The Examining Attorney has also cited prior pending marks which could potentially be cited as basis for refusal, if those marks were to proceed to registration.  Applicant understands that its election not to submits responsive arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) were to issue in the future.  Applicant further understands, upon the USPTO’s receipt of this Response, that this application will likely be placed on suspension, pending the resolution of the following cited, prior-pending applications:

• “TRIBE BEAUTY” (U.S. App. Ser. No. 87341322) for “fruit and vegetable juices …”
• “WHISKEY TRIBE” (U.S. App. Ser. No. 87862782) for “whiskey; distilled spirits”
• “TRIBE ORGANICS” (U.S. App. Ser. No. 88170538) for “dietary/herbal/natural supplements”
• “TRIBE SKINCARE” (U.S. App. Ser. No. 79246470) for “skincare cosmetics; non-medicated products for skin care …”

 

CLASSIFICATION/IDENTIFICATION OF GOODS

In response to the Examining Attorney’s objections, applicant has herein amended its recitation of goods as follows:

Cosmetics; Cosmetics enhanced with vitamins, essential oils, nutritional oils, and/or plant or herb extracts; Medicated cosmetics; Cosmetics for medical purposes; Creams, lotions and oils; Creams and lotions enhanced with vitamins, essential oils, nutritional oils, and/or plant or herb extracts; Medicated creams and lotions; Creams and lotions for medical purposes; Oils enhanced with vitamins and/or plant or herb extracts; Aromatherapy oils; Nutritional oils; Medicated oils; Oils for medical purposes; Nutritional supplements; Nutritionally fortified beverages; Beverages containing supplements; Nutritional beverages; Beverages, namely, non-alcoholic shots; Beverages containing fruits, vegetables, vitamins and/or plant or herb extracts; Nutritionally fortified candy; Candy, namely, candied gummies; Candy containing supplements; Nutritional candy; Candy enhanced with vitamins and/or plant or herb extracts; candy for medical purposes.

Respectfully submitted,

Lisa B. Lane

Attorney for applicant

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Nutritional supplements, beverages, fortified beverages, candy, fortified candy, cosmetics, creams, lotions, oils
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: Nutritional supplements, beverages, fortified beverages, candy, fortified candy, cosmetics, creams, lotions, oils; Cosmetics; Cosmetics enhanced with vitamins, essential oils, nutritional oils, and/or plant or herb extracts; Medicated cosmetics; Cosmetics for medical purposes; Creams, lotions and oils; Creams and lotions enhanced with vitamins, essential oils, nutritional oils, and/or plant or herb extracts; Medicated creams and lotions; Creams and lotions for medical purposes; Oils enhanced with vitamins and/or plant or herb extracts; Aromatherapy oils; Nutritional oils; Medicated oils; Oils for medical purposes; Nutritional supplements; Nutritionally fortified beverages; Beverages containing supplements; Nutritional beverages; Beverages, namely, non-alcoholic shots; Beverages containing fruits, vegetables, vitamins and/or plant or herb extracts; Nutritionally fortified candy; Candy, namely, candied gummies; Candy containing supplements; Nutritional candy; Candy enhanced with vitamins and/or plant or herb extracts; candy for medical purposesClass 005 for Cosmetics; Cosmetics enhanced with vitamins, essential oils, nutritional oils, and/or plant or herb extracts; Medicated cosmetics; Cosmetics for medical purposes; Creams, lotions and oils; Creams and lotions enhanced with vitamins, essential oils, nutritional oils, and/or plant or herb extracts; Medicated creams and lotions; Creams and lotions for medical purposes; Oils enhanced with vitamins and/or plant or herb extracts; Aromatherapy oils; Nutritional oils; Medicated oils; Oils for medical purposes; Nutritional supplements; Nutritionally fortified beverages; Beverages containing supplements; Nutritional beverages; Beverages, namely, non-alcoholic shots; Beverages containing fruits, vegetables, vitamins and/or plant or herb extracts; Nutritionally fortified candy; Candy, namely, candied gummies; Candy containing supplements; Nutritional candy; Candy enhanced with vitamins and/or plant or herb extracts; candy for medical purposes
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: Shahnam Sharareh. Shahnam Sharareh of FOX ROTHSCHILD LLP, is located at

      P.O. BOX 5231
      PRINCETON, New Jersey 08543-5231
      US
The docket/reference number is 182560.00007.

The phone number is 609-896-3600.

The fax number is 609-896-1469.

The applicants proposed attorney information: Shahnam Sharareh. Other appointed attorneys are Lisa B. Lane. Shahnam Sharareh of FOX ROTHSCHILD LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      P.O. BOX 5231
      PRINCETON, New Jersey 08543-5231
      United States
The docket/reference number is 182560.00007.

The phone number is 609-896-3600.

The fax number is 609-896-1469.

The email address is ipdocket@foxrothschild.com

Shahnam Sharareh 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: SHAHNAM SHARAREH. SHAHNAM SHARAREH of FOX ROTHSCHILD LLP, is located at

      P.O. BOX 5231
      PRINCETON, New Jersey 08543-5231
      US
The docket/reference number is 182560.00007.

The phone number is 609-896-3600.

The fax number is 609-896-1469.

The email address is ipdocket@foxrothschild.com

The applicants proposed correspondence information: Shahnam Sharareh. Shahnam Sharareh of FOX ROTHSCHILD LLP, is located at

      P.O. BOX 5231
      PRINCETON, New Jersey 08543-5231
      United States
The docket/reference number is 182560.00007.

The phone number is 609-896-3600.

The fax number is 609-896-1469.

The email address is ipdocket@foxrothschild.com

SIGNATURE(S)
Response Signature
Signature: /lisa b lane/     Date: 02/07/2020
Signatory's Name: Lisa B Lane
Signatory's Position: Attorney for applicant, member of PA bar

Signatory's Phone Number: 215.299.2900

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:    SHAHNAM SHARAREH
   FOX ROTHSCHILD LLP
   
   P.O. BOX 5231
   PRINCETON, New Jersey 08543-5231
Mailing Address:    Shahnam Sharareh
   FOX ROTHSCHILD LLP
   P.O. BOX 5231
   PRINCETON, New Jersey 08543-5231
        
Serial Number: 88427141
Internet Transmission Date: Fri Feb 07 19:09:21 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202002071909213
41961-88427141-700a716f7fe6b1559768fb5a0
abceaf9e5741bbd444402218f5704a5bd029293d
-N/A-N/A-20200207190137818422