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. 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:

This amendment responds to the July 30, 2019 non-final Office Action. In this regard, the Office raises Section 2(d) Refusals for alleged likelihood of confusion based on two federally-registered marks. Furthermore, the Office requires clarification of the services to address indefiniteness issues. The foregoing issues are addressed by the amended identification of services, as well as the following arguments in support of finding that the applied-for mark does not create a likelihood of confusion with the cited marks. Section 2(d) Rejection - Alleged Likelihood of Confusion The Office refuses registration of Applicant's mark under Section 2(d) for alleged likelihood of confusion with the marks: Fueling Your Best and Fuel Your Best, of: (i) U.S. Registration No. 4,565,087 covering "counselling services in fields of health, nutrition and lifestyle wellness," and "nut-based snack food also containing whey or soy protein" owned by J. Ragan; and (ii) U.S. Registration No. 5,551,598 covering "dietary and nutritional supplements not containing whey or soy protein and not containing nuts" owned by Ketologic, LLC. In support of this refusal to register, the Office asserts that the most relevant of the du Pont factors are: (1) similarity of the marks, and (2) relatedness of the compared goods and/or services. See In re E.I. du Pont de Nemours & Co., 177 U.S.P.Q 563 (C.C.P.A. 1973); TMEP Section 1207.01. The Office then asserts that the applied-for mark is similar to the cited marks based on sound and appearance, as well as commercial impression because "all suggest striving for the best or optimal result." (see, Office Action, pg. 2). In this regard, the Office places particular emphasis on the similarities of the goods and/or services listed in the subject application, as well as those of the cited marks. In general, the applied-for mark covers services relating generally to the marketing and advertising services for retail gasoline and convenience store services. In the Office Action, the Office takes a broad interpretation of the goods and/or services of the applied-for mark and the cited marks and concludes that no mark includes restrictions as the nature of the goods or service, the type of channels of trade, or the classes of purchasers. Accordingly, Applicant is amending the services to clarify the general nature of its services, while expressly restricting the services to exclude "nut products and dietary food supplements." Accordingly, this restriction clearly eliminates any potential for confusion based on differences between the nature of the goods covered by the cited marks and the services covered by the applied-for mark. Further, the applied-for mark travels in the channels of trade relating to marketing and advertising for retails gasoline sales and convenience store services. Conversely, the cited marks 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). Consequently, the class of purchasers of the goods of the cited marks are seeking health, wellness, and nutritional/dietary products, while the class of purchasers of the services offered by the applied for mark are seeking services related to retail gasoline sales and convenience store services. In view of the differences between the services identified by the applied-for mark and the goods of the cited marks, there is no likelihood of confusion created by Applicant's mark with the cited marks, particularly in view of the restrictions set forth in the amended identification of services. Accordingly, the alleged overlap between the service descriptions cited by the Office with the goods and/or services of the cited marks is no longer relevant. Here, the differences between Applicant's services and that of the cited marks make them such that they travel in different channels of trade, and, consequently, are not likely to be confused by consumers. Weighing the relevant du Pont factors tips in Applicant's favor. Applicant's mark is not likely to create confusion with the cited marks. Accordingly, Applicant requests withdrawal of the Section 2(d) refusals to register the applied-for mark. Identification of the Services The identification of services, as amended, are definite and properly classified. The proposals made in the Office Action are appreciated, and, where relevant, were adopted in the amended identification. Acceptance of the identification of services, as amended, is requested. CONCLUSION In view of this amendment, Applicant asserts that the application is in condition for acceptance for publication. An early action to this effect 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 promotional communications for motor fuel and convenience store merchandise/collateral; Promotional communications related to gasoline and convenience store products and services; Retail store marketing communications featuring convenience store items and gasoline; Automobile service station services communication; Communication for motor fuel and convenience store products and services; and related goods and services
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 promotional communications for motor fuel and convenience store merchandise/collateral; 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; Promotional communications related to gasoline and convenience store products and services; 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 communications featuring convenience store items and gasoline; 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; Automobile service station services communication; marketing, advertising, and promoting automobile service station goods and services through all public and private communication means; Communication for motor fuel and convenience store products and services; 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 related goods and services; advertising, marketing, and promotional services; gasoline, fuel, and oil; convenience store productsClass 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
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: Philip J. Foret. Philip J. Foret of STRADLEY RONON STEVENS & YOUNG, LLP, is located at

      30 VALLEY STREAM PARKWAY
      MALVERN, Pennsylvania 19355
      US
The docket/reference number is 184753-5776.

The phone number is 610-640-5800.

The fax number is 610-640-1965.

The email address is trademarks@stradley.com

The applicants proposed attorney information: Philip J. Foret. Other appointed attorneys are David P. Fitzgibbon. Philip J. Foret of Stradley Ronon Stevens & Young, 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

      30 Valley Stream Parkway
      Malvern, Pennsylvania 19355
      United States
The docket/reference number is 184753-5776.

The phone number is 610-640-5800.

The fax number is 610-640-1965.

The email address is trademarks@stradley.com

Philip J. Foret 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: PHILIP J. FORET. PHILIP J. FORET of STRADLEY RONON STEVENS & YOUNG, LLP, is located at

      30 VALLEY STREAM PARKWAY
      MALVERN, Pennsylvania 19355
      US
The docket/reference number is 184753-5776.

The phone number is 610-640-5800.

The fax number is 610-640-1965.

The email address is trademarks@stradley.com

The applicants proposed correspondence information: Philip J. Foret. Philip J. Foret of Stradley Ronon Stevens & Young, LLP, is located at

      30 Valley Stream Parkway
      Malvern, Pennsylvania 19355
      United States
The docket/reference number is 184753-5776.

The phone number is 610-640-5800.

The fax number is 610-640-1965.

The email address is trademarks@stradley.com

SIGNATURE(S)
Response Signature
Signature: /Philip J. Foret/     Date: 11/04/2019
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.

Mailing Address:    PHILIP J. FORET
   STRADLEY RONON STEVENS & YOUNG, LLP
   
   30 VALLEY STREAM PARKWAY
   MALVERN, Pennsylvania 19355
Mailing Address:    Philip J. Foret
   Stradley Ronon Stevens & Young, LLP
   30 Valley Stream Parkway
   Malvern, Pennsylvania 19355
        
Serial Number: 88442931
Internet Transmission Date: Mon Nov 04 12:59:56 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-201911041259561118
25-88442931-700b8535aea14fd55a92ff55990f
d58dbe9573edd98c193b49c8ce7422842d9335-N
/A-N/A-20191104124056008455