| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88451735 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88451735/mark.png |
| LITERAL ELEMENT | YZY |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
This Response is to the Office Action issued by Examiner for Applicant’s pending application, “YZY” and design, serial # 88451735 (“Mark”). This Response addresses the concerns as raised by Examiner. I. Refusal Based on Alleged Confusion, Section 2(d) Examiner asserts that the Mark would cause a likelihood of confusion with U.S. Registration No. 5858558 (“Cited Mark”), for the word mark, “ZYY,” for the services, On-line wholesale and retail store services featuring dietary supplements and nutritional supplements; Wholesale distributorships featuring dietary supplements and nutritional supplements; Wholesale and retail store services featuring dietary supplements and nutritional supplements. Applicant respectfully disagrees with the refusal and submits that there is not a likelihood of confusion with the Cited Mark. The courts have long followed the eight-part Polaroid test in determining the likelihood of confusion between marks. See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). This test requires analysis of several non-exclusive factors, including: (1) the strength of the mark, (2) the degree of similarity between the two marks, (3) the competitive proximity of the products, (4) actual confusion, (5) the likelihood the plaintiff will bridge the gap, (6) the defendant's good faith in adopting its mark, (7) the quality of the defendant's products, and (8) the sophistication of the purchasers. See also, Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 256 (2d Cir. 1987). No single factor set forth above is dispositive, nor is a court limited to consideration of only these factors. See Polaroid, 287 F.2d at 495. Further, "each factor must be evaluated in the context of how it bears on the ultimate question of likelihood of confusion as to the source of the product." Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 872 (2d Cir. 1986). Courts have noted that the eight-factor test is a "pliant" one, in which "some factors are much more important than others." See, Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054 (9th Cir. 1999). Over time the four criteria by which marks have been most typically compared to one another include the appearance, sound, connotation, and commercial impression/trade channel of the marks, regardless of disclaimed material. As such, the Mark and Cited Mark must be compared in their entirety. Applicant provides the following comparisons with regards to these criteria, which clearly show there is no evidence of confusion. Applicant contends that the Mark and the Cited Mark, when compared in their totality, are different in appearance and connotation. A consumer would view the Mark as “YZY” as reading would proceed left to right. The raised Z would not create a pronouncement of “ZYY”. As such, a reasonable consumer would not confuse the Mark with the Cited Mark. When viewing the goods of the Mark with the services of the Cited Mark, there is no foundation for a reasonable consumer to assume that there is any connection between the Mark and the Cited Mark. The difference between the Mark and the Cited Mark is at least as great as in other analogous cases where no likelihood of confusion was found. See Moose Creek, Inc. v. Abercrombie & Fitch Co., 331 F.Supp.2d 1214 (C.D. Cal. 2004) (“Although the words “moose” and “Moose Creek” [for use in connection with clothing] sound similar to the extent that they contain an overlapping word, on the whole they sound different because “Moose Creek” contains an additional word (i.e., “Creek”). Moreover, the words “Moose Creek” connote a particular creek, whereas the word “moose” connotes a type of wild animal.”); see also Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 928 (CCPA 1978) (RED ZINGER for herb tea is distinguishable from ZINGERS for cakes); Pure Gold, Inc. v. Syntex (USA), Inc., 739 F.2d 624 (Fed. Cir. 1984) (FERMODYL PURE GOLD is distinguishable from PURE GOLD). Given the evidence above, Applicant contends that a reasonable consumer would not be confused by the Mark in regards to the Cited Mark, nor would the Cited Mark otherwise be damaged or diluted by registration of the Mark. As such, Applicant asserts that there are insufficient grounds to meet the requirements of a Section 2(d) rejection of the Mark when viewed in the totality of these facts. II. New Drawing Applicant has attached a new drawing in black and white. III. Removal of Color Claim and Change to Mark DescriptionApplicant removes all claims of color and changes the mark description to: The mark consists of a triangular border suggesting an inverted heart shape. Within the border are designs of three trees. The top tree contains the letter “Z” and the bottom trees each contain the letter “Y”. The color white appearing in the mark represents background or transparent areas and is not a feature of the mark. IV. Foreign Certificate and Translation Applicant has attached the foreign certificate and translation. V. Statement of Commercial Presence Applicant has had a bona fide and effective industrial or commercial establishment in China as of the date of issuance of the foreign registration. VI. Conclusion In view of the foregoing arguments and evidence, Applicant respectfully submits that this application is in condition for publication. Favorable reconsideration and prompt publication of the Mark is respectfully requested. If Examiner has anything further that would be required to place this Application in better condition for publication, Examiner is encouraged to contact Applicant's attorney. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) |
\\TICRS\EXPORT18\IMAGEOUT 18\884\517\88451735\xml1\ ROA0002.JPG |
| \\TICRS\EXPORT18\IMAGEOUT 18\884\517\88451735\xml1\ ROA0003.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\884\517\88451735\xml1\ ROA0004.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\884\517\88451735\xml1\ ROA0005.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\884\517\88451735\xml1\ ROA0006.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Black and white logo; Foreign certificate and translation |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | Curt Handley, Esq. |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | curt@intuitlaw.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| DOCKET/REFERENCE NUMBER | YZY Lg |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Curt Handley, Esq. |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | curt@intuitlaw.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| DOCKET/REFERENCE NUMBER | YZY Lg |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Curt Handley, Esq./ |
| SIGNATORY'S NAME | Curt Handley, Esq. |
| SIGNATORY'S POSITION | Attorney of Record, IL Bar Member |
| SIGNATORY'S PHONE NUMBER | 888-932-5291 |
| DATE SIGNED | 02/25/2020 |
| RESPONSE SIGNATURE | /Curt Handley, Esq./ |
| SIGNATORY'S NAME | Curt Handley, Esq. |
| SIGNATORY'S POSITION | Attorney of Record, IL Bar Member |
| SIGNATORY'S PHONE NUMBER | 888-932-5291 |
| DATE SIGNED | 02/25/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Feb 25 23:41:22 ET 2020 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.X-20 200225234122035324-884517 35-7104a1de31561cb64521cb 61fc3a2e52b14dde2f8ce4e89 b37df5496ab7b9d6b27-N/A-N /A-20200225233630797279 |
| 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) |
This Response is to the Office Action issued by Examiner for Applicant’s pending application, “YZY” and design, serial # 88451735 (“Mark”). This Response addresses the concerns as raised by Examiner.
I. Refusal Based on Alleged Confusion, Section 2(d)
Examiner asserts that the Mark would cause a likelihood of confusion with U.S. Registration No. 5858558 (“Cited Mark”), for the word mark, “ZYY,” for the services, On-line wholesale and retail store services featuring dietary supplements and nutritional supplements; Wholesale distributorships featuring dietary supplements and nutritional supplements; Wholesale and retail store services featuring dietary supplements and nutritional supplements. Applicant respectfully disagrees with the refusal and submits that there is not a likelihood of confusion with the Cited Mark.
The courts have long followed the eight-part Polaroid test in determining the likelihood of confusion between marks. See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). This test requires analysis of several non-exclusive factors, including: (1) the strength of the mark, (2) the degree of similarity between the two marks, (3) the competitive proximity of the products, (4) actual confusion, (5) the likelihood the plaintiff will bridge the gap, (6) the defendant's good faith in adopting its mark, (7) the quality of the defendant's products, and (8) the sophistication of the purchasers. See also, Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 256 (2d Cir. 1987).
No single factor set forth above is dispositive, nor is a court limited to consideration of only these factors. See Polaroid, 287 F.2d at 495. Further, "each factor must be evaluated in the context of how it bears on the ultimate question of likelihood of confusion as to the source of the product." Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 872 (2d Cir. 1986).
Courts have noted that the eight-factor test is a "pliant" one, in which "some factors are much more important than others." See, Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054 (9th Cir. 1999). Over time the four criteria by which marks have been most typically compared to one another include the appearance, sound, connotation, and commercial impression/trade channel of the marks, regardless of disclaimed material. As such, the Mark and Cited Mark must be compared in their entirety. Applicant provides the following comparisons with regards to these criteria, which clearly show there is no evidence of confusion.
Applicant contends that the Mark and the Cited Mark, when compared in their totality, are different in appearance and connotation. A consumer would view the Mark as “YZY” as reading would proceed left to right. The raised Z would not create a pronouncement of “ZYY”. As such, a reasonable consumer would not confuse the Mark with the Cited Mark.
When viewing the goods of the Mark with the services of the Cited Mark, there is no foundation for a reasonable consumer to assume that there is any connection between the Mark and the Cited Mark.
The difference between the Mark and the Cited Mark is at least as great as in other analogous cases where no likelihood of confusion was found. See Moose Creek, Inc. v. Abercrombie & Fitch Co., 331 F.Supp.2d 1214 (C.D. Cal. 2004) (“Although the words “moose” and “Moose Creek” [for use in connection with clothing] sound similar to the extent that they contain an overlapping word, on the whole they sound different because “Moose Creek” contains an additional word (i.e., “Creek”). Moreover, the words “Moose Creek” connote a particular creek, whereas the word “moose” connotes a type of wild animal.”); see also Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 928 (CCPA 1978) (RED ZINGER for herb tea is distinguishable from ZINGERS for cakes); Pure Gold, Inc. v. Syntex (USA), Inc., 739 F.2d 624 (Fed. Cir. 1984) (FERMODYL PURE GOLD is distinguishable from PURE GOLD).
Given the evidence above, Applicant contends that a reasonable consumer would not be confused by the Mark in regards to the Cited Mark, nor would the Cited Mark otherwise be damaged or diluted by registration of the Mark. As such, Applicant asserts that there are insufficient grounds to meet the requirements of a Section 2(d) rejection of the Mark when viewed in the totality of these facts.
II. New Drawing
Applicant has attached a new drawing in black and white.
III. Removal of Color Claim and Change to Mark DescriptionApplicant removes all claims of color and changes the mark description to:
The mark consists of a triangular border suggesting an inverted heart shape. Within the border are designs of three trees. The top tree contains the letter “Z” and the bottom trees each contain the letter “Y”. The color white appearing in the mark represents background or transparent areas and is not a feature of the mark.
IV. Foreign Certificate and Translation
Applicant has attached the foreign certificate and translation.
V. Statement of Commercial Presence
Applicant has had a bona fide and effective industrial or commercial establishment in China as of the date of issuance of the foreign registration.
VI. Conclusion
In view of the foregoing arguments and evidence, Applicant respectfully submits that this application is in condition for publication. Favorable reconsideration and prompt publication of the Mark is respectfully requested. If Examiner has anything further that would be required to place this Application in better condition for publication, Examiner is encouraged to contact Applicant's attorney.
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
