TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88442931 FUEL YOUR BEST(Standard Characters, see http://uspto.report/TM/88442931/mark.png) has been amended as follows:

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

Applicant files this amendment in reply to the November 22, 2019 Office Action. In this regard, the Office has maintained and made final the refusal to register Applicant's mark under Section 2(d) of the Trademark Act, as well as the requirement for a clarification of the identification of services. Identification of Services The identification is being amended to clarify that Applicant's marketing, advertising, and promotion services are related solely to motor fuel, gasoline, oil, and the like, while the services related to retail convenience stores have been deleted. Further, the format of the descriptors in the identification has been amended, consistent with the suggestions in the Action. The identification of services, as amended, is definite, and Applicant requests acceptance of the amended identification. Refusal under Section 2(d) The amendment to the identification of services resolves any potential for likelihood of confusion between Applicant's mark and the marks covered by the cited Registrations, i.e., U.S. Registration Nos. 4,565,087 and 5,551,598. In this regard, the Office asserted that Applicant's mark is likely to cause confusion with the marks of the cited Registrations based on sight, sound, appearance, and commercial impression because "all suggest striving for the best or optimal result." See, Non-Final Office Action, pg. 2. In the non-final Office Action (and as made final in the present Action), the Office premised the Section 2(d) rejection on the basis that the broad wording for marketing, advertising, and promotional services for retail store and convenience store services presumably encompasses all services including those related to the narrow product scope covered by the cited Registrations. In other words, the Office asserted that nut-based snack foods and dietary and nutritional supplements could fall into the scope of convenience store products, which could be broadly included in Applicant's marketing, advertising, and promotion services for convenience store products, as intended to be identified by Applicant's mark. The amendment eliminates any potential for confusion based on differences between the nature of the goods covered by the cited Registrations and the services covered by Applicant's mark. Applicant's mark now covers services related to motor fuel, gasoline, oil, and the like, and no longer includes retail store or convenience store services. This resolves any conflict in Applicant's favor. Applicant's mark and the marks of the cited Registrations travel in different channels of trade and target different consumers. Applicant's mark is used to identify advertising, marketing, and promotional services for motor fuel, gasoline, and oil. Conversely, the marks of the cited Registrations relate to: (i) "counselling services in fields of health, nutrition and lifestyle wellness" and "nut-based snack food also containing whey or soy protein" (see, U.S. Registration No. 4,565,087), and (ii) "dietary and nutritional supplements not containing whey or soy protein and not containing nuts" (see, U.S. Registration No. 5,551,598). In comparison, the class of consumers of the goods of the cited Registrations are seeking health, wellness, and nutritional/dietary products, while the class of purchasers of the services offered by the applied-for mark are seeking motor fuel, gasoline, and motor oil. The differences between Applicant's services and the goods of the cited Registrations make them such that they travel in different channels of trade and are focused on consumers with largely different needs. Consequently, the marks used to identify them are not likely to be confused by consumers. Indeed, the previously-alleged potential for overlap between the service descriptions asserted by the Office with the goods and/or services of the cited Registrations is no longer present. In summary, a weighing of the relevant du Pont factors, i.e., difference between goods/services, channels of trade, and targeted consumers, tips in Applicant's favor. Applicant's mark is not likely to create a likelihood of confusion with the marks of the cited Registrations. Applicant requests withdrawal of the Section 2(d) refusals to register Applicant's mark. CONCLUSION This reply places the application in condition for acceptance for publication. An early action to this affect is earnestly solicited.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Marketing, advertising and promoting motor fuel and convenience store merchandise excluding nut products and dietary food supplements, and point of purchase goods and displays through all public and private communications means; marketing and promoting gasoline and convenience store goods excluding nut products and dietary food supplements, and services through all public and private communication means; retail store marketing, advertising, and promotions featuring convenience store goods excluding nut products and dietary food supplements, and services and gasoline through all public and private communication means; marketing, advertising, and promoting automobile service station goods and services through all public and private communication means; marketing, advertising, and promoting motor fuel and convenience store goods excluding nut products and dietary food supplements, and services through all public communication means; advertising, marketing, and promotional services; gasoline, fuel, and oil; convenience store products
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: Marketing, advertising and promoting motor fuel and convenience store merchandise excluding nut products and dietary food supplements, and point of purchase goods and displays through all public and private communications means; Advertising, marketing, and promotion services in the field of motor fuel through all public and private communications networks; marketing and promoting gasoline and convenience store goods excluding nut products and dietary food supplements, and services through all public and private communication means; promotion, and marketing services and related consulting in the field of gasoline through all public and private communications networks; retail store marketing, advertising, and promotions featuring convenience store goods excluding nut products and dietary food supplements, and services and gasoline through all public and private communication means; advertising, marketing, and promotion services in the field of automobile service station services through all public and private communication networks; marketing, advertising, and promoting automobile service station goods and services through all public and private communication means; advertising, marketing, and promotion services in the field of motor fuel through all public communications networks; marketing, advertising, and promoting motor fuel and convenience store goods excluding nut products and dietary food supplements, and services through all public communication means; and advertising, marketing, and promotion services in the field of gasoline, fuel, and oil; advertising, marketing, and promotional services; gasoline, fuel, and oil; convenience store productsClass 035 for Advertising, marketing, and promotion services in the field of motor fuel through all public and private communications networks; promotion, and marketing services and related consulting in the field of gasoline through all public and private communications networks; advertising, marketing, and promotion services in the field of automobile service station services through all public and private communication networks; advertising, marketing, and promotion services in the field of motor fuel through all public communications networks; and advertising, marketing, and promotion services in the field of gasoline, fuel, and oil
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.

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Philip J. Foret/     Date: 02/11/2020
Signatory's Name: Philip J. Foret
Signatory's Position: Attorney for Applicant, U.S.P.T.O. Registration No. 51689

Signatory's Phone Number: 610-640-5800

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 88442931
Internet Transmission Date: Tue Feb 11 11:07:48 EST 2020
TEAS Stamp: USPTO/RFR-XX.XXX.XX.X-202002111107481940
26-88442931-700179806b9033f6a99118dd2a1c
c3a46bfb0fac27fd65bb08bdc1e18a55fc196-N/
A-N/A-20200211100654296192