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. 88501906 ROUTE 66(Standard Characters, see http://uspto.report/TM/88501906/mark.png) has been amended as follows:

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

Partial Refusal Under Section 2(d)

Registration of Applicant’s Mark, ROUTE 66, (“Applicant’s Mark”) has been refused as to “Coffee bar services, namely, bars serving coffee, tea, cocoa or hot beverages in offices, hotels, or convenience stores” under Trademark Act Section 2(d), 15 U.S.C. §1052(d), citing a registration for ROUTE 66 CASINO HOTEL and two registrations for ROUTE 66 CASINO HOTEL & Design (the “Cited Marks”). For the reasons below, Applicant respectfully disagrees and requests that the Examiner withdraw the refusal.

Differences in the Services and Amendment of Applicant’s Identification of Services

Applicant sells coffee and coffee vending services under the ROUTE 66 mark and is the owner of a registration for ROUTE 66 for coffee and tea (U.S. Reg. No. 4,641,893) and for vending services in the field of food (U.S. Reg. No. 4,653,649). The current application for coffee bar services is a natural expansion of Applicant’s coffee and coffee vending services and these services will not be confused with the Cited Mark’s services, which are primarily casino and hotel services. The office action states that the Cited Marks’ “’bar and cocktail lounge services provided at a casino’ partially encompasses applicant’s ‘coffee bar services.’” However, the phrase “bar and cocktail lounge” refers to a bar where primarily alcoholic beverages are sold (Exhibit A). This is a very different service than the provision of “coffee, tea, cocoa or hot beverages.” Alcoholic and non-alcoholic beverages differ in the way they are sold and marketed, the set of consumers that buy them, and their function in our culture. See Best Flavors, Inc. v. Mystic River Brewing Co., 886 F. Supp. 908, 912 (D. Me. 1995) (finding that MYSTIC SEAPORT for alcoholic beverages was not confusingly similar to MISTIC for spring water, iced teas, flavored sparkling water and fruit drinks).

To avoid any possible confusion, Applicant has amended its identification of services to the following:

Coffee bar services, namely, bars serving coffee, tea, cocoa or hot beverages in offices, hotels, or convenience stores but not casinos; Coffee supply services for offices

The Term “Route 66” is a Commonly Used Component of Trademarks

One of the factors to be considered in determining whether a likelihood of confusion exists is the “number and nature of similar marks in use on similar goods.” In re E.I. DuPont deNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). Where a term is commonly used, consumers rely on other cues to distinguish the marks. The term “ROUTE 66” is a commonly used component of trademarks, including trademarks in the food and beverage sector. A search of the USPTO database reveals 95 pending applications and active registrations for marks containing the term “ROUTE 66.” (Exhibit B). Furthermore, at least eight of these registrations are owned by separate entities and are registered for food, beverages and related services. These registrations are summarized below and printouts from TSDR showing the status of these registrations are attached as Exhibit C.

Mark	Goods/Services
66 BREWS ON ROUTE 66 (Reg. No. 5826982)	(Class 43) Pubs; Restaurant services
THE FLAVORS OF ROUTE 66 (Reg. No. 4989548)	(Class 43) Restaurant services
HEALTHY ROUTE 66 & Design (Reg. No. 5039014)	(Class 35) Restaurant franchising, namely, offering business management assistance in the establishment and/or operation of restaurants (Class 43) Restaurant services
ROUTE 66 (Reg. No. 4446707)	(class 32) beers, non-alcoholic beers, preparations for making beers, preparations for making non-alcoholic beers; soft drinks, namely, carbonated soft drinks, low calorie soft drinks, non-carbonated soft drinks; energy drinks; fruit flavoured soft drinks; fruit based soft drinks; drinking water; flavoured bottled water; mineral and carbonated waters
ROUTE 66 SAUCES GET YOUR LICKS! & Design (Reg. No. 4397294)	(Class 30) sauces
ROUTE 66 & Design (Reg. No. 4792572)	(Class 33) Alcoholic beverages except beers; aperitifs; prepared alcoholic cocktails; distilled beverages, namely, distilled spirits; alcoholic beverages containing fruit; liqueurs; spirits; wines; whisky; vodka Also class 3 goods
ROUTE 66 (Reg. No. 2896160)	(Class 29) Frozen processed potatoes
GET YOUR KICKS ON ROUTE 66 (Reg. No. 2665214)	(Class 42) Restaurant services

Finally, the owner of the Cited Marks has pointed to these same factors in arguing against a 2(d) refusal issued for one of the Cited Marks, Reg. No. 5,139,338. The Cited Mark was refused based on several others marks containing the term “ROUTE 66.” In its July 22, 2008 response, attached as Exhibit D, the owner of the Cited Mark made the following argument:

Here, in addition to 519 uses in business names and forty-five registered trademarks, consumers are used to seeing ROUTE 66 in other contexts as well. In fact, the term is so common that a Google search for the term returned 20,800,000 hits. (See attached evidence.) Consumers are thus accustomed to taking an extra moment to determine differences between the numerous uses of this phrase in the marketplace. Given the widespread fame and notoriety of the term ROUTE 66 in western American lore, consumers will not be confused by Applicant’s use of the term.

Thus even the owner of the Cited Mark has conceded that the term ROUTE 66 is commonly used and that consumers are accustomed to distinguishing the different uses of these terms. In this case the marks and services are sufficiently different to avoid any confusion. Accordingly, the refusal should be withdrawn and the application approved for publication.

EVIDENCE
Evidence in the nature of Exhibit A is the definition of Cocktail Lounge; Exhibit B is a USPTO search for ROUTE 66; Exhibit C are printouts of ROUTE 66 registrations; and Exhibit D is a response to office action from the applicant of the cited mark. has been attached.
Original PDF file:
evi_66573106-20200320114414671239_._Exhibit_A_Cocktail_Lounge_Definition.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_66573106-20200320114414671239_._Exhibit_B_USPTO_Search_Route_66.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_66573106-20200320114414671239_._Exhibit_C.pdf
Converted PDF file(s) ( 21 pages)
Evidence-1
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Original PDF file:
evi_66573106-20200320114414671239_._Exhibit_D.pdf
Converted PDF file(s) ( 26 pages)
Evidence-1
Evidence-2
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Evidence-26

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 043 for Coffee bar services, namely, bars serving coffee, tea, cocoa or hot beverages in offices, hotels, or convenience stores; Coffee supply services for offices
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: Coffee bar services, namely, bars serving coffee, tea, cocoa or hot beverages in offices, hotels, or convenience stores; Coffee bar services, namely, bars serving coffee, tea, cocoa or hot beverages in offices, hotels, or convenience stores but not casinos; Coffee supply services for officesClass 043 for Coffee bar services, namely, bars serving coffee, tea, cocoa or hot beverages in offices, hotels, or convenience stores but not casinos; Coffee supply services for offices
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.
Correspondence Information (current):
      Jack B. Hicks
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocketing@wbd-us.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): kristin.webb@wbd-us.com

The docket/reference number is U100682 3038.
Correspondence Information (proposed):
      Jack B. Hicks
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocketing@wbd-us.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): kristin.webb@wbd-us.com

The docket/reference number is U100682 3038.

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).

SIGNATURE(S)
Response Signature
Signature: /acf/     Date: 03/20/2020
Signatory's Name: Anne Fleeson
Signatory's Position: Associate of Attorney of Record, NC Bar Member

Signatory's Phone Number: 336-747-6604

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:    Jack B. Hicks
   WOMBLE BOND DICKINSON (US) LLP
   
   300 N. Greene Street
   Greensboro, North Carolina 27401
Mailing Address:    Jack B. Hicks
   WOMBLE BOND DICKINSON (US) LLP
   300 N. Greene Street
   Greensboro, North Carolina 27401
        
Serial Number: 88501906
Internet Transmission Date: Fri Mar 20 14:30:23 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.X.XXX-202003201430237414
59-88501906-710a7d22d10dcd719cc97e27ba1b
1eaa0dc63e2b63fe1fefa8cd811f990a81466-N/
A-N/A-20200320114414671239