| 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 | 88490571 |
| LAW OFFICE ASSIGNED | LAW OFFICE 123 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88490571/mark.png |
| LITERAL ELEMENT | TRANSFORM |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
In the Office Action dated September 21, 2019, the Examining Attorney refused registration of Applicant's Trademark, "TRANSFORM" (the "Mark"), based upon the following issue: Section 2(d) Refusal - Likelihood of Confusion. Applicant disagrees with the Examining Attorney's assessment and, in further support of its original application (the "Application") and in hopes of moving closer to receiving registration of its Mark, hereby submits this Response and requests that the Examining Attorney reconsider her prior determination concluding that the Application should be refused. I. Section 2(d) Refusal - Likelihood of Confusion The Examining Attorney states registration of the Mark is refused due to likelihood ofconfusion with the mark contained in U.S. Registration No. 5383732 (the "Registration”), whichis TRANS4ORM in standard characters for: Dietary supplement drink mixes; Dietary supplements; Nutritional supplements; Dieting pills and powder preparations to promote fat burning; Pharmaceutical agents affecting metabolism; Powdered nutritional supplement drink mix (“Registration's Goods and Services.") Due to the pertinent factors tending in favor of non-confusion as discussed below, Applicant's Mark and the Registration should be allowed to co-exist in the marketplace. a. Comparison of the Marks The test for determining similarity between marks “is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result," and "[t]he focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks.” In Re Jacquelyn Silberberg and Courtney Silberberg, 2007 WL 2219708, at *2 (TTAB July 24, 2007). While marks must be considered in their entireties for the purpose of determining likelihood of confusion, "it is well-settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark.” See In re National Data Corp., 753 F.2d 1056, 244 USPQ 749 (Fed. Cir. 1985). In this respect, the Examining Attorney must determine whether the total effect conveyed by the marks is confusingly similar, not simply whether the marks are similar in sound or appearance, as similarity of appearance is determined on the basis of the total effect of the mark. See First Savings Bank F.S.B. v. First Bank System, Inc., 101 F.3d 645, 653, 40 USPQ2d 1865, 1870 (10th Cir. 1996); see also General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627 (8th Cir. 1987) (stating the use of identical dominant words does not automatically mean that two marks are similar in determining that OATMEAL RAISIN CRISP and APPLE RAISIN CRISP are not confusingly similar). In furtherance thereof, “[w]hile the dominant portion is given greater weight, each mark still must be considered as a whole.” Id.; see also Sun Banks of Florida, Inc. v. Sun Fed. Sav. & Loan Ass ’n, 651 F.2d 311, 317-18 (5th Cir. 1981) (similarity of appearance is determined "on the basis of the total effect of the designation, rather than on a comparison of individual features."). Thus, so long as the dissimilarities outweigh the similarities, the sharing of a similarity between two marks does not automatically render the marks similar in sound, connotation, or appearance. See The O.M. Scott & Sons Company v. Kellogg Supply Co., Inc., 168 USPQ 122, 1970 WL 9955 (TTAB October 15, 1970) (stating because “GRAM’ is readily distinguishable from the terminal portions of opposer's marks 'N' ‘TURF' and even "GRO' in sound, appearance, and suggestive connotation... it is concluded that PRO-GRAM’ does not so resemble “PRO-N, PRO-TURF,' or “PRO-GRO' as to be likely, when applied to fertilizers, to cause confusion in trade.'). Lastly, additions or deletions to marks may be sufficient to avoid likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as the distinguishing source because it is merely descriptive or diluted. See TMEP §1207.01(b)(iii). Applicant's Mark is visually dissimilar from the Registration in that the Registration contains the added numeral “4,” which is not found in the Mark. According to the Registrant (Registrant's Response to Office Action dated December 27, 2016), this addition gives the Registration a significantly different commercial impression, in that it gives consumers the connotation of having the ability to transform into one's well-being (such as from a letter to a number) from use of the goods. Furthermore, according to the Registrant, the numeral “4” contained in the Registration is symbolic as it relates to the goods and services four claims provided thereunder - (1) burn fat; (2) boost metabolism; (3) increase mind-body energy; and (4) reduce cravings; this connotation is not found within the Mark and further aids to the Registration's commercial impression having a different meaning than the Mark. Additionally, the second portion of the Registration (4ORM) is visually dissimilar than the Mark's (FORM). The Registration presents a childish or immature spelling of the word TRANSFORM in an attempt to convey the convoluted symbolism noted above. In contrast, the Mark is a simple use of the straightforward term TRANSFORM as would appeal to those with an appreciation for numbers being left out of words. No consumer is likely to confuse the two as coming from the same origin. b. Comparison of Services In comparing services for purpose of determining likelihood of confusion, the test is that the "circumstances surrounding [the respective goods and/or services at issue) marketing are such that they would be encountered by the same persons in situations that would give rise, because of the marks, to a mistaken belief that they originate from the same source or that there is association or connection between the sources of the services.” In re James River Capital Corp., 2016 WL 447667, at *5 (TTAB Jan. 19, 2016). The lesser the degree of similarity between the marks, a greater degree of similarity between the services is necessary to support a finding of likelihood of confusion. While Applicant's goods and services and the Registration's Goods and Services are somewhat similar in that they both provide nutritional supplements, such is not the test for likelihood of confusion. When conducting a Google search of the Registration, the vast majority, if not the entirety, of results are either reviews of the Registrant's goods and services or websites offering same for sale, all identifying Registrant as the source of such goods. There is no mention of the Mark within such results, despite the Mark being use by Applicant for years prior to the Registrant's goods. Registrant has gone to great lengths to associate the Registration with its childish use of numbers as letter with its goods and services in the minds of consumers and has extensively advertised and promoted its goods and services while using the Registration. As such, the consuming public has come to identify the Registration with Registrant's goods and services. c. Actual Confusion Finally, applicant acknowledges that it is well settled that the relevant test is likelihood of confusion, not actual confusion; thus, it is unnecessary to show actual confusion to establish likelihood of confusion. See TMEP §1207.01(d)(ii). Nonetheless, a lack of actual confusion is relevant to the DuPont factors and all Dupont factor must be considered, including factor eight: length of time during and conditions under which there has been concurrent use without evidence of actual confusion. In re Guild Mortgage Company, Case No. 2017-2620 (Fed. Cir. Jan. 14, 2019). Applicant first used the Mark by at least December of 2008 and Registrant claims to have first used the Registration by March of 2014. Applicant has about six years of use prior to Registrant, and six years of use concurrent with registrant. Never has Applicant been aware of any actual confusion, nor has Registrant ever complained to Applicant of actual confusion. Exhibit A. Applicant asserts that such a significant amount length of time during which the goods were sold concurrently without evidence of actual confusion is significant and should be considered as determinative that there is no likelihood of confusion where no actual confusion has happened after such a duration of concurrent use. II. Conclusion Based upon the arguments and evidence presented herein, Applicant believes there appears to be no grounds in which registration of the Mark may be refused. Therefore, in light of the foregoing reasons, Applicant requests that the refusal of its Application be overturned. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_9815549154-20200323211615150016_._Transform-Declaration_of_Jesse_Windrix_3-23-2020.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT18\IMAGEOUT18\884\905\88490571\xml1\ROA0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | Declaration of Jesse Windrix |
| ATTORNEY INFORMATION (new) | |
| NAME | Keith E. Taber |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| STREET | 5801 Bent Creek Trail |
| CITY | DALLAS |
| STATE | Texas |
| POSTAL CODE | 75252 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | (214) 354-1428 |
| FAX | 808.498.4570 |
| keithetaber@gmail.com | |
| DOCKET/REFERENCE NUMBER | MEET-T007US |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | MEET HEAD BRANDS, LLC |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | keithetaber@gmail.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | vange@ipparalegals.com |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Keith E. Taber |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | keithetaber@gmail.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | uspto@ipparalegals.com |
| DOCKET/REFERENCE NUMBER | MEET-T007US |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Keith E. Taber/ |
| SIGNATORY'S NAME | Keith E. Taber |
| SIGNATORY'S POSITION | Attorney of record, Texas bar member |
| SIGNATORY'S PHONE NUMBER | 214.354.1428 |
| DATE SIGNED | 03/23/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Mar 23 21:37:09 ET 2020 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0200323213709741100-88490 571-71065f01280847e8a983e 7fee1b0f1b02fe7f8398388f9 4a1da73e06f4c63d66-N/A-N/ A-20200323211615150016 |
| 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) |
In the Office Action dated September 21, 2019, the Examining Attorney refused registration of Applicant's Trademark, "TRANSFORM" (the "Mark"), based upon the following issue: Section 2(d) Refusal - Likelihood of Confusion. Applicant disagrees with the Examining Attorney's assessment and, in further support of its original application (the "Application") and in hopes of moving closer to receiving registration of its Mark, hereby submits this Response and requests that the Examining Attorney reconsider her prior determination concluding that the Application should be refused.
I. Section 2(d) Refusal - Likelihood of Confusion
The Examining Attorney states registration of the Mark is refused due to likelihood ofconfusion with the mark contained in U.S. Registration No. 5383732 (the "Registration”), whichis TRANS4ORM in standard characters for: Dietary supplement drink mixes; Dietary supplements; Nutritional supplements; Dieting pills and powder preparations to promote fat burning; Pharmaceutical agents affecting metabolism; Powdered nutritional supplement drink mix (“Registration's Goods and Services.") Due to the pertinent factors tending in favor of non-confusion as discussed below, Applicant's Mark and the Registration should be allowed to co-exist in the marketplace.
a. Comparison of the Marks
The test for determining similarity between marks “is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result," and "[t]he focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks.” In Re Jacquelyn Silberberg and Courtney Silberberg, 2007 WL 2219708, at *2 (TTAB July 24, 2007).
While marks must be considered in their entireties for the purpose of determining likelihood of confusion, "it is well-settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark.” See In re National Data Corp., 753 F.2d 1056, 244 USPQ 749 (Fed. Cir. 1985). In this respect, the Examining Attorney must determine whether the total effect conveyed by the marks is confusingly similar, not simply whether the marks are similar in sound or appearance, as similarity of appearance is determined on the basis of the total effect of the mark. See First Savings Bank F.S.B. v. First Bank System, Inc., 101 F.3d 645, 653, 40 USPQ2d 1865, 1870 (10th Cir. 1996); see also General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627 (8th Cir. 1987) (stating the use of identical dominant words does not automatically mean that two marks are similar in determining that OATMEAL RAISIN CRISP and APPLE RAISIN CRISP are not confusingly similar). In furtherance thereof, “[w]hile the dominant portion is given greater weight, each mark still must be considered as a whole.” Id.; see also Sun Banks of Florida, Inc. v. Sun Fed. Sav. & Loan Ass ’n, 651 F.2d 311, 317-18 (5th Cir. 1981) (similarity of appearance is determined "on the basis of the total effect of the designation, rather than on a comparison of individual features."). Thus, so long as the dissimilarities outweigh the similarities, the sharing of a similarity between two marks does not automatically render the marks similar in sound, connotation, or appearance. See The O.M. Scott & Sons Company v. Kellogg Supply Co., Inc., 168 USPQ 122, 1970 WL 9955 (TTAB October 15, 1970) (stating because “GRAM’ is readily distinguishable from the terminal portions of opposer's marks 'N' ‘TURF' and even "GRO' in sound, appearance, and suggestive connotation... it is concluded that PRO-GRAM’ does not so resemble “PRO-N, PRO-TURF,' or “PRO-GRO' as to be likely, when applied to fertilizers, to cause confusion in trade.').
Lastly, additions or deletions to marks may be sufficient to avoid likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as the distinguishing source because it is merely descriptive or diluted. See TMEP §1207.01(b)(iii).
Applicant's Mark is visually dissimilar from the Registration in that the Registration contains the added numeral “4,” which is not found in the Mark. According to the Registrant (Registrant's Response to Office Action dated December 27, 2016), this addition gives the Registration a significantly different commercial impression, in that it gives consumers the connotation of having the ability to transform into one's well-being (such as from a letter to a number) from use of the goods. Furthermore, according to the Registrant, the numeral “4” contained in the Registration is symbolic as it relates to the goods and services four claims provided thereunder - (1) burn fat; (2) boost metabolism; (3) increase mind-body energy; and (4) reduce cravings; this connotation is not found within the Mark and further aids to the Registration's commercial impression having a different meaning than the Mark.
Additionally, the second portion of the Registration (4ORM) is visually dissimilar than the Mark's (FORM). The Registration presents a childish or immature spelling of the word TRANSFORM in an attempt to convey the convoluted symbolism noted above. In contrast, the Mark is a simple use of the straightforward term TRANSFORM as would appeal to those with an appreciation for numbers being left out of words. No consumer is likely to confuse the two as coming from the same origin.
b. Comparison of Services
In comparing services for purpose of determining likelihood of confusion, the test is that the "circumstances surrounding [the respective goods and/or services at issue) marketing are such that they would be encountered by the same persons in situations that would give rise, because of the marks, to a mistaken belief that they originate from the same source or that there is association or connection between the sources of the services.” In re James River Capital Corp., 2016 WL 447667, at *5 (TTAB Jan. 19, 2016). The lesser the degree of similarity between the marks, a greater degree of similarity between the services is necessary to support a finding of likelihood of confusion.
While Applicant's goods and services and the Registration's Goods and Services are somewhat similar in that they both provide nutritional supplements, such is not the test for likelihood of confusion. When conducting a Google search of the Registration, the vast majority, if not the entirety, of results are either reviews of the Registrant's goods and services or websites offering same for sale, all identifying Registrant as the source of such goods. There is no mention of the Mark within such results, despite the Mark being use by Applicant for years prior to the Registrant's goods.
Registrant has gone to great lengths to associate the Registration with its childish use of numbers as letter with its goods and services in the minds of consumers and has extensively advertised and promoted its goods and services while using the Registration. As such, the consuming public has come to identify the Registration with Registrant's goods and services.
c. Actual Confusion
Finally, applicant acknowledges that it is well settled that the relevant test is likelihood of confusion, not actual confusion; thus, it is unnecessary to show actual confusion to establish likelihood of confusion. See TMEP §1207.01(d)(ii). Nonetheless, a lack of actual confusion is relevant to the DuPont factors and all Dupont factor must be considered, including factor eight: length of time during and conditions under which there has been concurrent use without evidence of actual confusion. In re Guild Mortgage Company, Case No. 2017-2620 (Fed. Cir. Jan. 14, 2019). Applicant first used the Mark by at least December of 2008 and Registrant claims to have first used the Registration by March of 2014. Applicant has about six years of use prior to Registrant, and six years of use concurrent with registrant. Never has Applicant been aware of any actual confusion, nor has Registrant ever complained to Applicant of actual confusion. Exhibit A. Applicant asserts that such a significant amount length of time during which the goods were sold concurrently without evidence of actual confusion is significant and should be considered as determinative that there is no likelihood of confusion where no actual confusion has happened after such a duration of concurrent use.
II.
Conclusion
Based upon the arguments and evidence presented herein, Applicant believes there appears to be no grounds in which registration of the Mark may be refused. Therefore, in light of the foregoing reasons, Applicant requests that the refusal of its Application be overturned.
