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. 88461826 ROCKETS(Standard Characters, see http://uspto.report/TM/88461826/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 the registration of the Applicant?s mark ROCKET based on a likelihood of confusion with the marks in U.S. Registration Nos. 5041535 and 4483077. Trademark Act Section 2(d), 15 U.S.C. ?1052(d); see TMEP ??1207.01 et seq. Applicant respectfully disagrees with the Examiner?s assessment for the reasons set forth: Applicant?s mark and Registration No 4483077: The Examining Attorney asserts that the word ?ROCKET? is the dominant element in the Applicant?s mark making it identical to Registration No. 4483077. The applicant is the owner of record for US Reg. Nos. 0976164 and 1004459 for HOUSTON ROCKETS. The term ?Houston? is disclaimed in both registrations, thus the primary element of both registrations is the term ROCKET. Based on the Examing Attorney?s assertion above, Applicant, therefore, has the prior claim to the term ROCKETS in Class 14, and the cited mark should not function as a bar to publication and/or registration. Applicant hereby amends its application to claim ownership of prior registrations 0976164 and 1004459. Further, records of the Patent and Trademark Office (USPTO) demonstrate that other entities have used ROCKET in relation to the Registrants? goods, making it unlikely that consumers would give significant weight to this term in ascertaining the source of such goods. Therefore, it stands to reason that if these registered marks using a variation of the term ?ROCKET? can coexist without a likelihood of confusion then the applied-for mark should be permitted to register as well (Exhibit A). Table 1: Relevant Marks and Goods: Mark US Registration Class Goods ROCHET 2998439 14 Timepieces and other chronometric instruments, watchstraps, jewelry ROCKETTES 5418530 14 jewelry Applicant?s mark and Registration No. 5041535: The Examining Attorney cites to the doctrine of foreign equivalents indicating that Registration No. 5041535 for RAZZI in Italian, directly translates to the Applicant?s mark ROCKETS thus making the marks confusingly similar. Under the doctrine of foreign equivalents, a mark in a common, modern foreign language and a mark that is its English equivalent may be held confusingly similar. TMEP ?1207.01(b)(vi); see, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1127-28 (TTAB 2015); In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006). The doctrine of foreign equivalents, however, is not an absolute rule and should be viewed merely as a guideline. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1377 (Fed. Cir. 2005). Despite this directive, the Examining Attorney has refused to register Applicant?s Mark based on a rigid application of the doctrine of foreign equivalents to find an alleged likelihood of confusion between Applicant?s Mark and Registration No. 5041535. The doctrine should be applied only when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). In this instance, the term ?ordinary American purchaser? refers to one who is knowledgeable in, presumably, Italian. See In re Thomas, 79 U.S.P.Q.2d 1021, 1024 (TTAB 2006) (?ordinary American purchaser . . . refers to the ordinary American purchaser who is knowledgeable in the foreign language?). There is no basis even to presume, let alone deem it ?likely?, that the ordinary American purchaser who is knowledgeable in Italian would stop and translate the word RAZZI. Indeed, it is recognized that ?there are foreign expressions that even those familiar with the language will not translate, accepting the term as it is.? In re Tia Maria, Inc., 188 U.S.P.Q. 524, 525 (TTAB 1975) (finding that consumers will not translate TIA MARIA as the name of a Mexican restaurant because the marketplace makes it unfeasible for them to do so). See also In re Pan Tex Hotel Corp., 190 U.S.P.Q. 109, 110 (TTAB 1976) (finding that consumers are unlikely to translate LA POSADA when used as the name of a motor hotel into its English equivalent of ?the inn,? because ?la posada? creates a different commercial impression in English than it does in Spanish). Thus, Applicant respectfully suggests that the Examining Attorney?s determination is incorrect and that no likelihood of confusion exists between the RAZZI mark and the Applicant?s Mark. Comparison of Goods: The applicant is the owner of the Houston Rockets basketball team, a member team of the National Basketball Association (NBA) of the league's Western Conference Southwest Division. The team has been using the nickname ?The Rockets? since 1967 at the time, the team was based in San Diego and the name reflected San Diego?s motto, ?A City in Motion,? and the NASA Atlas rockets manufactured in San Diego. The nickname has remained with the team when it moved to Houston. Information on the origin of the nickname can be found in the following excerpt: http://books.google.com/books?id=YcoExgitXTYC&lpg=PA70&pg=PA70#v=onepage&q&f=false and article, which is attached as Exhibit B. Applicant sells its merchandise to promote its basketball team at team stores, sporting goods stores, the NBA Store, via mail order catalog, and online at www.store.nba.com/houston-rockets and www.rocketsshop.com. Additionally, products bearing Applicant?s Mark are marketed and sold in basketball venues and arenas where basketball games are played. Applicant?s products can also be purchased by NBA fans at sporting goods stores and the sporting goods sections of department stores. In such stores, Applicant?s products are generally sold alongside other NBA licensed products bearing the marks and logos of the NBA and other NBA member teams. Further, all merchandise depicting the ROCKETS mark bears an NBA Official Licensed Product hologram hangtag or sticker. Such labeling shows that the merchandise is officially licensed by the league. Sports fans tend to be very discerning and specific in their loyalties to sports teams, and very familiar with team trademarks, insignias, and logos. These fans seek products featuring specific team marks. As a result, these goods are closely associated with the Applicant, its basketball team and the NBA (Exhibit C). Applicant markets its products to fans of professional basketball and to fans of the Houston Rockets basketball team. The goodwill associated with Applicant?s Mark is directly derived from the reputation and goodwill of the Applicant?s association of professional basketball teams. Consumers such as season ticket holders, single-game ticket holders, and other NBA fans who purchase products bearing the Applicant?s mark do so to show loyalty to, or affection for, the NBA and the Houston Rockets. In contrast, the owner for registration No. 50415353 markets its goods for RAZZI through its website: http://shop.hardrock.com/en-us/category/jewelry_us/accessories/jewelry/1.html. Previously submitted specimens of the mark confirm that the merchandise on sale for RAZZI is specifically targeted to children (Exhibit D). Applicant amends the application to insert ?all of the foregoing to promote the sport of basketball? in the identification of goods. Applicant disagrees that the cited mark, Registration No. 4483077, is confusingly similar and asserts that in light of the above amendment to the identification of goods, the Trademark Examining Attorney should withdraw the refusal.

EVIDENCE
Evidence in the nature of Exhibit A: registered marks using a variation of the term "ROCKET" Exhibit B: History of the Rockets name Exhibit C: Pages from Applicant's website Exhibit D: Page showing the use of the RAZZI mark (Registration no. 50415353) has been attached.
Original PDF file:
evi_6662268-20200304114744202369_._Exhibit_A.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_6662268-20200304114744202369_._Exhibit_B_Rockets_name.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_6662268-20200304114744202369_._Exhibit_C_Rockets_merch.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_6662268-20200304114744202369_._Exhibit_D_RAZZI_jewelry.pdf
Converted PDF file(s) ( 10 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 014 for Jewelry; costume jewelry; beaded jewelry; rubber or silicon wristbands in the nature of a bracelet, beaded necklaces; earrings, necklaces being jewelry, rings being jewelry, bracelets, cuff links, pendants, ornamental lapel pins, charms for collar jewelry and bracelets; clocks; watches; watch bands and watch straps, watch cases being parts of watches, watch fobs; jewelry boxes, tie clips; medallions; non-monetary coins of precious metal; precious metals; key chains; key rings; decorative key fobs; figures and figurines of precious metal; trophies of precious metals
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: Jewelry; costume jewelry; beaded jewelry; rubber or silicon wristbands in the nature of a bracelet, beaded necklaces; earrings, necklaces being jewelry, rings being jewelry, bracelets, cuff links, pendants, ornamental lapel pins, charms for collar jewelry and bracelets; clocks; watches; watch bands and watch straps, watch cases being parts of watches, watch fobs; jewelry boxes, tie clips; medallions; non-monetary coins of precious metal; precious metals; key chains; key rings; decorative key fobs; figures and figurines of precious metal; trophies of precious metals; all the foregoing to promote the sport of basketballClass 014 for Jewelry; costume jewelry; beaded jewelry; rubber or silicon wristbands in the nature of a bracelet, beaded necklaces; earrings, necklaces being jewelry, rings being jewelry, bracelets, cuff links, pendants, ornamental lapel pins, charms for collar jewelry and bracelets; clocks; watches; watch bands and watch straps, watch cases being parts of watches, watch fobs; jewelry boxes, tie clips; medallions; non-monetary coins of precious metal; precious metals; key chains; key rings; decorative key fobs; figures and figurines of precious metal; trophies of precious metals; all the foregoing to promote the sport of basketball
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 owner's/holder's current attorney information: Anil V. George. Anil V. George of NBA PROPERTIES, INC., is located at

      OLYMPIC TOWER 645 FIFTH AVENUE
      NEW YORK, New York 10022
      United States
The docket/reference number is 5336-US-NF2.
      The phone number is 212-407-8330.
      The fax number is 646-264-4145.
      The email address is ipgroup@nba.com

The owner's/holder's proposed attorney information: Anil V. George. Anil V. George of NBA PROPERTIES, INC., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      OLYMPIC TOWER 645 FIFTH AVENUE
      NEW YORK, New York 10022
      United States
The docket/reference number is 5336-US-NF2.
      The phone number is 212-407-8330.
      The fax number is 646-264-4145.
      The email address is rocketsip@nba.com

Anil V. George 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.Correspondence Information (current):
      ANIL V. GEORGE
      PRIMARY EMAIL FOR CORRESPONDENCE: ipgroup@nba.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ipgroup@nba.com; avgeorge@nba.com; pmorales@nba.com

The docket/reference number is 5336-US-NF2.
Correspondence Information (proposed):
      Anil V. George
      PRIMARY EMAIL FOR CORRESPONDENCE: rocketsip@nba.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ipgroup@nba.com; avgeorge@nba.com; pmorales@nba.com

The docket/reference number is 5336-US-NF2.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 0976164 and 1004459.


SIGNATURE(S)
Response Signature
Signature: /Anil V. George/     Date: 03/04/2020
Signatory's Name: Anil V. George
Signatory's Position: Attorney of Record, NY Bar member

Signatory's Phone Number: 212-407-8330

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:    ANIL V. GEORGE
   NBA PROPERTIES, INC.
   
   OLYMPIC TOWER 645 FIFTH AVENUE
   NEW YORK, New York 10022
Mailing Address:    Anil V. George
   NBA PROPERTIES, INC.
   OLYMPIC TOWER 645 FIFTH AVENUE
   NEW YORK, New York 10022
        
Serial Number: 88461826
Internet Transmission Date: Wed Mar 04 11:55:01 ET 2020
TEAS Stamp: USPTO/ROA-XX.X.XXX.X-2020030411550164210
4-88461826-710f9ef3a22c364ef46c4946679d2
6cb7a66fc5757b4d3c0291082868ee0b0f6c1-N/
A-N/A-20200304114744202369