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. 88445776 CHIP (Stylized and/or with Design, see http://uspto.report/TM/88445776/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: CHIP (Stylized and/or with Design, see http://uspto.report/TM/88445776/mark.png)
Proposed: CHIP (Stylized and/or with Design, see mark)
The applicant is not claiming color as a feature of the mark.
The mark consists of a sitting dog with an oval shadow under him, with his tail wagging, big eyes and eye brows above his head. The dog has a collar around his neck with the word "CHIP" written on the collar.

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

The Examining Attorney has refused registration of the subject mark on the basis of a likelihood of confusion with Registration Numbers 5068882 for Chip?s Chicken Casserole for use of the mark in association with pet food and 5038031 for Chip Clips for use of the mark in association with retail store services featuring pet related products. Applicant respectfully disagrees with the Examiner's position that consumers are likely to be confused by the presence of Applicant?s design mark for use on edible dog treats and the marks above and provides the following argument in support of Applicant's position. The factors that govern the likelihood of confusion analysis in the Patent and Trademark Office are those listed in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). In DuPont, the court listed 13 potentially relevant factors. As stated by the Examining Attorney, the two key considerations are the first two factors: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. Applicant posits that the sixth, seventh, and eighth factors are also relevant in the subject case: (6) The number and nature of similar marks in use on similar goods. (7) The nature and extent of any actual confusion. (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. Id. at 1361. Each relevant factor is addressed below: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In assessing the similarity of marks, the marks are to be construed in their entireties and not based solely on the constituent portions of the mark. TMEP ?1207.01. The three marks at issue are Chip?s Clips, Chip?s Chicken Casserole, and the design mark of a dog with a name tag that says Chip. Other than the term ?Chip?, the marks do not look or sound alike. The first mark gives the impression of a store that provides grooming and retail services for pets (which is in fact the case based on registrant?s website). The second mark gives the impression of a pet food that is similar to a chicken casserole (in other words, more like ?people food?). Applicant?s mark is a picture of a dog used on pet treats upon which the name Chip is quite small in relation to the mark as a whole. While all three terms share the term ?Chip?, they each give distinctly different commercial impressions and the distinguishing terms/design predominate over the similar term. In fact, this must be true since Chip?s Clips and Chip?s Chicken Casserole both received registrations. (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. While all three marks are in the pet field, the products are different ? retail services, a very specific type of pet food, and pet treats. The remaining three factors are necessarily intertwined. They are: (6) The number and nature of similar marks in use on similar goods. (7) The nature and extent of any actual confusion. (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. To the extent the goods among the three marks are similar in that they are all in the pet field, they are easily distinguished by the public as evidenced by the fact that ?Chip? is present in at least these two prior registrations and the three marks have coexisted in the market for several years with no known instances of actual confusion. Applicant?s Chip design has been in use since at least as early as April 2014. The other two marks have been in use since 2012 and 2016, so even for the more recent of the prior registrations, the marks have co-existed without confusion for more than three years and for the older registration, the marks have co-existed for more than five years. In light of the foregoing, particularly the differences in the marks and the co-existence of the marks in the market with no confusion, confusion between the marks is extremely unlikely. As a result, Applicant respectfully requests that the Examining Attorney withdraw the likelihood of confusion objection.

The applicant's current attorney information: Heather Bond Vargas, Esq.. Heather Bond Vargas, Esq. of COBB COLE, is located at

      P.O. BOX 2491
      DAYTONA BEACH, Florida 32115
      US

The phone number is 386-323-9230.

The fax number is 386-944-7964.

The email address is heather.vargas@cobbcole.com

The applicants proposed attorney information: Heather Bond Vargas, Esq.. Heather Bond Vargas, Esq. of COBB COLE, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      P.O. BOX 2491
      DAYTONA BEACH, Florida 32115
      United States

The phone number is 386-323-9230.

The fax number is 386-944-7964.

The email address is heather.vargas@cobbcole.com

Heather Bond Vargas, Esq. 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: HEATHER BOND VARGAS, ESQ.. HEATHER BOND VARGAS, ESQ. of COBB COLE, is located at

      P.O. BOX 2491
      DAYTONA BEACH, Florida 32115
      US

The phone number is 386-323-9230.

The fax number is 386-944-7964.

The email address is heather.vargas@cobbcole.com; trish.flowers@cobbcole.com

The applicants proposed correspondence information: Heather Bond Vargas, Esq.. Heather Bond Vargas, Esq. of COBB COLE, is located at

      P.O. BOX 2491
      DAYTONA BEACH, Florida 32115
      United States

The phone number is 386-323-9230.

The fax number is 386-944-7964.

The email address is heather.vargas@cobbcole.com; trish.flowers@cobbcole.com

SIGNATURE(S)
Response Signature
Signature: /Vicki L. Wagner/     Date: 09/19/2019
Signatory's Name: Vicki L. Wagner
Signatory's Position: President

Signatory's Phone Number: 386-402-7818

The signatory has confirmed that he/she is not represented by an authorized attorney, and that he/she is either: (1) the owner/holder ; or (2) a person or persons with legal authority to bind the owner/holder; and if he/she had previously been represented by an attorney in this matter, either he/she revoked their power of attorney by filing a signed revocation with the USPTO or the USPTO has granted this attorney's withdrawal request.

Mailing Address:    HEATHER BOND VARGAS, ESQ.
   COBB COLE
   
   P.O. BOX 2491
   DAYTONA BEACH, Florida 32115
Mailing Address:    Heather Bond Vargas, Esq.
   COBB COLE
   P.O. BOX 2491
   DAYTONA BEACH, Florida 32115
        
Serial Number: 88445776
Internet Transmission Date: Thu Sep 19 13:12:58 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20190919131258378
148-88445776-610905d64fef1463faaf6ed1af2
088cea2597d679f425fa2b783d729dd6ddf558-N
/A-N/A-20190913092119445912