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. 88436213 EXPLORA(Standard Characters, see http://uspto.report/TM/88436213/mark.png) has been amended as follows:

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

The Examining Attorney has refused registration under Section 2 (d) of the Act based on a citation to a registration of XPLore.  Applicant respectfully disagrees.

In determining the similarity of two marks, the Examining Attorney must consider their overall commercial impression.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372 (Fed. Cir. 2005).  This is typically examined by comparing their sight, sound and meaning.  Hewlett-Packard Co. v. Packard Press, Inc., 281 F. 3d 1261, 1265-1266 (Fed. Cir. 2002).  The terms must be considered in their entireties.  Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1357 (Fed.Cir.2000).

The Examining Attorney erred by not considering the cited mark as a whole.  He assumed that the cited mark was XPLORE, but it is not.  As made clear by TESS and the registration certificate (attached), the mark is XPlore.  This dramatically changes the commercial impression of the mark from that assumed by the Examining Attorney.

XPLore, is a coined term.  Even without the capital letters, it has no dictionary meaning.  (See attached evidence.)  Because the first two letters are capitalized, the consumer is likely to emphasize the first two letters and not view the mark as a unitary word.  A consumer is likely to pronounce them as the letters “XP” (“Ex- Pea”).  The abbreviation “XP” has many different meanings: as in the well-known mark “Windows XP;” as the Christian “Chi-Ro” symbol (with “x” being “chi” and “P” being “rho.”)(which is how the undersigned interpreted it); as in the term “experience point” term in gaming; as a text symbol denoting something funny to a texter; etc. (See attached evidence.)   None of these connote “explore” as claimed by the Examining Attorney.

In any event, by putting the emphasis on “XP,” the mark means something very different than “explore.”  The addition of the term “lore” would be pronounced as a one-syllable term “loar.”  That term means “traditional knowledge.”  Thus, the cited mark connotes something having to do with the traditional knowledge of “XP”, whether that is a software system, Chi-Rho symbol, funny texting, gaming experience, etc.  It is a mystery term.  If the registrant had intended for it to mean “explore”, it would have applied-for that mark that way.  The fact that it did not speaks volumes about the overall consumer perception of the term.

By contrast, Applicant’s mark creates a totally different commercial impression.  The term “EXPLORA” is the present form in the third person singular of the Spanish verb for “explorer,” which means “to explore.”  (See attached evidence.)  The applied-for term thus means “he or she explores.  (See attached evidence.)  It will be perceived as such by the many Spanish-speakers in the United states, and non-Spanish-speakers will view it as a variation of “explore,” which means “to investigate, study, look into, travel to a new place, etc.”  (See attached evidence.)  There is nothing to suggest that the “EXP” would be perceived as XP or pronounced as “EX-PEA,” is likely to be emphasized separate and apart from the entire mark, or is likely to evoke any of the meanings of the abbreviation “XP.”   

Given these differences in structure, pronunciation and connotation, consumers are highly unlikely to see Applicant’s mark and think of someone “lore related to XP.”  The marks are simply too different. See Coach Services, Inc.  v. Triumph Learning LLC, 668 F.3d 1356 (Fed Cir. 2012)(holding that even identical marks can create different commercial impressions.

EVIDENCE
Evidence in the nature of Dictionary and other definitions; TESS information concerning the cited mark has been attached.
Original PDF file:
evi_7315158139-20190820153329402510_._1__1_.pdf
Converted PDF file(s) ( 2 pages)
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evi_7315158139-20190820153329402510_._1__2_.pdf
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evi_7315158139-20190820153329402510_._2.pdf
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Original PDF file:
evi_7315158139-20190820153329402510_._3__1_.pdf
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evi_7315158139-20190820153329402510_._3__2_.pdf
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Original PDF file:
evi_7315158139-20190820153329402510_._3__3_.pdf
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evi_7315158139-20190820153329402510_._3__4_.pdf
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Original PDF file:
evi_7315158139-20190820153329402510_._3__5_.pdf
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evi_7315158139-20190820153329402510_._3__6_.pdf
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Original PDF file:
evi_7315158139-20190820153329402510_._4.pdf
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The applicant hereby appoints Paul W. Reidl. Paul W. Reidl of Law Office of Paul W. Reidl, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      Second Floor
      25 Pinehurst Lane
      Half Moon Bay, California 94019
      United States
to submit this Response to Office Action Form on behalf of the applicant.

The phone number is 6505608530.

The email address is paul@reidllaw.com

Paul W. Reidl 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: DIJANA KRISTO. DIJANA KRISTO of THE WINE GROUP LLC, is located at

      4596 S. TRACY BLVD.
      TRACY, California 95377
      US

The email address is DIJANA.KRISTO@THEWINEGROUP.COM; LAURIE.HALL@THEWINEGROUP.COM

The applicants proposed correspondence information: Paul W. Reidl. Paul W. Reidl of Law Office of Paul W. Reidl, is located at

      Second Floor
      25 Pinehurst Lane
      Half Moon Bay, California 94019
      United States

The phone number is 6505608530.

The email address is paul@reidllaw.com

ADDITIONAL STATEMENTS
Translation
The English translation of Exlpora in the mark is he or she explores.


FEE(S)
Fee(s) in the amount of $125 is being submitted.

SIGNATURE(S)
Response Signature
Signature: /pwr/     Date: 08/20/2019
Signatory's Name: Paul W. Reidl
Signatory's Position: Attorney of Record, Member CA bar

Signatory's Phone Number: 6505608530

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:    DIJANA KRISTO
   THE WINE GROUP LLC
   
   4596 S. TRACY BLVD.
   TRACY, California 95377
Mailing Address:    Paul W. Reidl
   Law Office of Paul W. Reidl
   Second Floor
   25 Pinehurst Lane
   Half Moon Bay, California 94019
        
RAM Sale Number: 88436213
RAM Accounting Date: 08/20/2019
        
Serial Number: 88436213
Internet Transmission Date: Tue Aug 20 15:40:34 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019082015403488
3026-88436213-610d360449ed167a61f8958a71
389cdcf8fd5880b5383f79cfd0cb36aadaa77d3-
CC-40347671-20190820153329402510