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. 88461835 ROCKETS(Standard Characters, see http://uspto.report/TM/88461835/mark.png) has been amended as follows:

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

The Examing Attorney has refused the registration of the applied-for mark on the ground that the mark is likely to be confused with U.S. Registration Nos. 4483077 and 4711076 both registered for ROCKET. Trademark Act Section 2(d), 15 U.S.C. ?1052(d); see TMEP ??1207.01 et seq. For the following reasons, the Applicant respectfully disagrees with this finding and requests that the Examining Attorney reconsider their refusal and allow registration of the Applicant?s mark. Likelihood of confusion between two marks at the USPTO is determined by a review of all of the relevant factors under the du Pont test. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Although the issue of likelihood of confusion typically revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or services, ?there is no mechanical test for determining likelihood of confusion and ?each case must be decided on its own facts.?? TMEP ? 1207.01 (citing du Pont, 476 F.2d at 1361, 177 USPQ at 567). Each of the thirteen du Pont factors may be considered in weighing likelihood of confusion if raised, and anyone may be dispositive. See TMEP ? 1207.01. In some cases, a determination that there is no likelihood of confusion may be appropriate, even where the marks share common terms and the goods/services relate to a common industry because these factors are outweighed by other factors, such as differences in the relevant trade channels of the goods/services, the presence in the marketplace of a significant number of similar marks in use on similar goods/services, the existence of a valid consent agreement between the parties, or another established fact probative of the effect of use. Id. The Examing Attorney contends that the Applicant?s mark ROCKETS is nearly identical to the cited registrations in sound appearance and commercial impression. The applicant disagrees and would like to point out that in addition to its applied-for mark, which is ROCKETS in its plural form, there are other registered ?ROCKET? marks coexisting on the US register, marketing similar goods. Therefore, it stands to reason that if these registered marks using the same 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 JOE ROCKET 2834457 18 Storage bags in the nature of gear-carrying travel bags designed for use with motor vehicles such as motorcycles, snowmobiles and atv's, namely, backpacks, helmet bags, map pouches, saddlebags, fuel tank bags, tail bags for use at the tail end of motor vehicles, trunk bags, handlebar pouches, windshield bags and backrest bags; storage bags in the nature of gear-carrying travel bags designed for use with motor vehicles such as motorcycles, snowmobiles and atv's, namely, backpacks, helmet bags, map pouches, saddlebags, fuel tank bags, tail bags for use at the tail end of motor vehicles, trunk bags, handlebar pouches, windshield bags and backrest bags ROCKET DOG 5095679 18 Leather accessories, namely, purses, handbags, tote bags, and backpacks; accessories, namely, backpacks, book bags, sports bags, bum bags, wallets, rucksacks, and luggage ROCKET SHIP 5335609 16, 18, 21, 25, 41 Tote bags in class 18 ROCKET PACK 4864008 18 Back packs RED ROCKET 3375390 28 play toys for pet animals ROCKET & REX 5437442 24 Reusable housebreaking pads of fabric for pets Comparison of the 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, Rocket Ball Ltd. does not sell its products in the same channels of trade as the other registered marks set forth in the response from the trademark examiner. 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). In contrast, Registration no. 4483077 owned by Rocket Europe Ltd, a consumer goods company based in London, filed in multiple classes (08, 14, 16, 20, 21, 27 and 28). While both the registrant for this mark and applicant offer pet items, the registrant makes a distinction in its goods description by specifically offering beds for pets, pet cushions and kennels. This differs from the pet items offered by the Applicant. Registration no. 4711076, owned by Sullivan?s Inc., distributes motorcycle and snowmobile accessories. The Company offers helmets, apparel, luggage, and other accessories for motorcycle and snowmobile as evidenced by Exhibit D. Applicant markets its products to fans of professional basketball and in particular 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. It is therefore unlikely, that there would be a likelihood of confusion between Applicant?s mark and the Cited Registrations since the Registrant?s goods would not be found in any of these venues. SOPHISTICATED CUSTOMERS Applicant?s products are primarily purchased by, or for fans of, the Spurs. Such purchases of league and team- affiliated basketball products are made with great care. Sports enthusiasts tend to be very discerning and specific in their loyalties to individual teams and the related league and seek products featuring a specific league or team mark. Before making such purchases, these fans are extremely familiar with the Spurs trademarks, insignia and logos. Given the nature of Applicant?s products, as well as those buying such products, consumers are not likely to confuse the source of Applicant?s goods with the Cited Marks. The foregoing analysis demonstrates that the overall commercial impressions created by the Applicant?s Mark and the pending Cited Marks are different and that the difference in the type of consumers precludes any likelihood of confusion between the marks. Identification of goods: The applicant amends the application to insert ?all of the foregoing to promote the sport of basketball? in the identification of goods. Prior registration: Applicant claims prior US registration no. 2924354 if the PTO does not permit registration, in light of applicant?s class 18 prior registration for Houston Rockets & Design, a mark whose primary significance is ?Rockets?, such action by the PTO would be inconsistent. CONCLUSION: The applicant submits that the differences between channels of trade, and potential customers preclude any likelihood of confusion between the Applicant?s Mark and the Cited Marks. Accordingly, Applicant respectfully requests the Examining Attorney to withdraw the refusal to register and allow the Applicant?s Mark to proceed to publication.

EVIDENCE
Evidence in the nature of Exhibit A: other Rocket marks on the registrar for similar goods Exhibit B: Article pertaining to the history of the "Rockets" name and Houston Rockets Exhibit C: merchandise page Exhibit D: information obtained on Sullivan's Inc. and the use of their ROCKET mark for bags has been attached.
Original PDF file:
evi_746522731-20200228215817991471_._ROCKETS_marks_for_similar_items.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
Original PDF file:
evi_746522731-20200228215817991471_._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_746522731-20200228215817991471_._Houston_Rockets_merchandise_cl_18.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_746522731-20200228215817991471_._Sullivan_Inc_webapges__002_.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 018 for Athletic bags, shoe bags for travel, overnight bags, umbrellas, backpacks, baby backpacks, knapsacks, duffel bags, tote bags, beach bags, beach tote bags, drawstring pouches, luggage, luggage tags, patio umbrellas, beach umbrellas, valises, attaché cases, billfolds, wallets, briefcases, canes, business card cases, book bags, all purpose sports bags, golf umbrellas, gym bags, purses, coin purses, fanny packs, waist packs, cosmetic cases sold empty, garment bags for travel, handbags, key cases, suitcases, toiletry cases sold empty, trunks for traveling and rucksacks, footlockers, bags for carrying pets, pet clothing, pet leashes, and pet collars
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: Athletic bags, shoe bags for travel, overnight bags, umbrellas, backpacks, baby backpacks, knapsacks, duffel bags, tote bags, beach bags, beach tote bags, drawstring pouches, luggage, luggage tags, patio umbrellas, beach umbrellas, valises, attaché cases, billfolds, wallets, briefcases, canes, business card cases, book bags, all purpose sports bags, golf umbrellas, gym bags, purses, coin purses, fanny packs, waist packs, cosmetic cases sold empty, garment bags for travel, handbags, key cases, suitcases, toiletry cases sold empty, trunks for traveling and rucksacks, footlockers, bags for carrying pets, pet clothing, pet leashes, and pet collars; Athletic bags; shoe bags for travel; overnight bags; umbrellas; backpacks; baby backpacks; knapsacks; duffel bags; tote bags; beach bags; beach tote bags; drawstring pouches; luggage; luggage tags; patio umbrellas; beach umbrellas; valises; attaché cases; billfolds; wallets; briefcases; canes; business card cases; book bags; all-purpose sports bags; golf umbrellas; gym bags; purses; coin purses; fanny packs; waist packs; cosmetic cases sold empty; garment bags for travel; Handbags; Key cases; suitcases; toiletry cases sold empty; trunks for traveling and rucksacks; footlockers; bags for carrying pets; pet clothing; pet leashes; pet collars; all of the foregoing to promote the sport of basketballClass 018 for Athletic bags; shoe bags for travel; overnight bags; umbrellas; backpacks; baby backpacks; knapsacks; duffel bags; tote bags; beach bags; beach tote bags; drawstring pouches; luggage; luggage tags; patio umbrellas; beach umbrellas; valises; attaché cases; billfolds; wallets; briefcases; canes; business card cases; book bags; all-purpose sports bags; golf umbrellas; gym bags; purses; coin purses; fanny packs; waist packs; cosmetic cases sold empty; garment bags for travel; Handbags; Key cases; suitcases; toiletry cases sold empty; trunks for traveling and rucksacks; footlockers; bags for carrying pets; pet clothing; pet leashes; pet collars; all of 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-NF4.
      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-NF4.
      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-NF4.
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-NF4.

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) 2924354.


SIGNATURE(S)
Response Signature
Signature: /Anil V. George/     Date: 02/28/2020
Signatory's Name: Anil V. George
Signatory's Position: Attorney of Record, NY Bar member

Signatory's Phone Number: 2124078330

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: 88461835
Internet Transmission Date: Fri Feb 28 22:19:12 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20200228221912817
832-88461835-7109c97813b978efdd08561b338
46cf6c3e1585f3f79e5187a8664c93e23f74c1-N
/A-N/A-20200228215817991471