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. 88653748 AMAZE(Standard Characters, see http://uspto.report/TM/88653748/mark.png) has been amended as follows:

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

RESPONSE TO OFFICE ACTION DATED JANUARY 18, 2020 The Office Action of January 18, 2020, has been received and its contents carefully noted. In response, Applicant submits that (1) the Section 2(d) refusal should be withdrawn because there is no likelihood of confusion between Applicant?s Mark and the marks in the cited registrations, and (2) the varietal refusal should be withdrawn based on information provided by Applicant and Applicant?s amendment of its identification of goods. I. Prosecution History. On October 14, 2019, Applicant filed an application to register the mark AMAZE (the ?Mark?), Serial No. 88/653748, for use in connection with the following goods (the ?Subject Application?): Class 31: ?Live plants; mulch.? On January 18, 2020, the Examining Attorney issued an initial Office Action preliminarily refusing registration of the Mark pursuant to Section 2(d) of the Lanham Act because of a perceived likelihood of confusion with prior registrations for the marks AMAZEL (Reg. No. 5588186) and AMAZEL BASIL (Reg. No. 5777514), both for use with ?Raw herbs, namely, basil plants? in International Class 31,? and AMAZED MEALWORMS (Reg. No. 5750463) for use with ?Algarovilla for animal consumption; Animal feed; Bird seed; Bran mash for animal consumption; Cattle food; Dog biscuits; Fish meal for animal consumption; Flowers, dried, for decoration; Fodder; Food for animals; Fresh cucumbers; Fresh fruit; Fresh grapes; Fresh potatoes; Fresh spinach; Garden herbs, fresh; Grains for animal consumption; Litter peat; Live bait; Lobsters, live; Marc being unprocessed fruit residue; Pet food; Plant seeds; Poultry, live; Tuna, live; Turf; Watermelon, fresh; By-products of the processing of cereals, for animal consumption; Electrolyte drink mix for pets; Fresh bananas; Fresh cherries; Fresh grapefruits; Fresh loquats; Fresh lychees; Live Christmas trees; Live plants; Raw nuts; Unprocessed oats; Unprocessed rye? in International Class 31 (collectively, the ?Cited Registrations?), and also on the basis that the applied-for mark is a varietal name for the identified goods and, thus, does not function as a trademark to indicate the source of applicant?s good and to identify and distinguish them from others. The Examining Attorney also requested that Applicant provide additional information relating to the applied-for mark. In response, Applicant amends the recitation of goods, and submits that (1) there is no likelihood of confusion between the Mark and the mark in the Cited Registrations, and (2) the applied-for mark should not be refused registration on the basis of being a varietal name for the identified goods given the amendments to the recitation of goods. II. There Is No Likelihood Of Confusion Between Applicant?s Mark and the Mark In The Cited Registrations a. Likelihood of Confusion Legal Standard. Section 2(d) of the Lanham Act blocks the registration of a mark if it is likely to cause confusion with a mark that is already registered. 15 U.S.C. ? 1052(d). Whether there is a likelihood of confusion ?must be analyzed on a case-by-case basis, considering all evidence actually relevant to that inquiry.? See Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 1338 (Fed. Cir. 2015). The likelihood of confusion analysis is based on the relevant factors among the thirteen set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). Three important considerations are the relatedness of the goods or services, and the weakness of the marks in the cited registration. See Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334 (Fed. Cir. 2015) (no likelihood of confusion between PEACE LOVE AND JUICE for juice bar services, and PEACE & LOVE for restaurant services in part because of the weakness of PEACE & LOVE); In re FabFitFun, Inc., Serial No. 86/847,381, slip op., pp. 2-3, (August 23, 2018, TTAB) (no likelihood of confusion between I?M SMOKING HOT for cosmetics and SMOKIN?HOT SHOW TIME for cosmetics). b. Applicant?s and the Registrants? Goods are Dissimilar. The significant differences in Applicant?s goods recited in the Subject Application and Registrants? goods recited in the Cited Registrations demonstrate that registration of the Mark is not likely to cause confusion. Applicant?s goods recited in the Subject Application are, as amended with this response, are limited in scope in that Applicants goods are ?mulch,? whereas Registrants? goods recited in the Cited Registrations are specifically, for the AMAZEL (Reg. No. 5588186) and AMAZEL BASIL (Reg. No. 5777514) registrations, ?Raw herbs, namely, basil plants? and, for the AMAZED MEALWORMS (Reg. No. 5750463) registration, ?Algarovilla for animal consumption; Animal feed; Bird seed; Bran mash for animal consumption; Cattle food; Dog biscuits; Fish meal for animal consumption; Flowers, dried, for decoration; Fodder; Food for animals; Fresh cucumbers; Fresh fruit; Fresh grapes; Fresh potatoes; Fresh spinach; Garden herbs, fresh; Grains for animal consumption; Litter peat; Live bait; Lobsters, live; Marc being unprocessed fruit residue; Pet food; Plant seeds; Poultry, live; Tuna, live; Turf; Watermelon, fresh; By-products of the processing of cereals, for animal consumption; Electrolyte drink mix for pets; Fresh bananas; Fresh cherries; Fresh grapefruits; Fresh loquats; Fresh lychees; Live Christmas trees; Live plants; Raw nuts; Unprocessed oats; Unprocessed rye.? Although Applicant?s goods and Registrants? goods all fall within Class 031, they are distinct products that are used for very different purposes, and they do not overlap in scope or definition. In short, Applicant?s ?mulch? would not be otherwise described as, or encompassed by, any of the items in the Registrants? registrations. Due to the differences in Applicant?s and Registrants? goods, this factor supports a finding of no likelihood of confusion. c. The Existence of Other Registered Marks Shows that Confusion is Unlikely. It is well-settled that the greater the number of identical or similar marks already registered for similar goods or services, the less possibility of confusion between any two specific uses of the marks. See, e.g., In re Dayco Products-Eaglemotive, Inc., 9 U.S.P.Q.2d 1910 (T.T.A.B. 1988) (IMPERIAL as adopted by others in connection with automotive products is a relatively weak mark afforded a narrower scope of protection; weakness of marks is a significant factor that can ?tip the scales? in favor of finding of no likelihood of confusion between a registered mark and Applicant?s mark). Therefore, third-party registrations are relevant to show that a mark or a portion of a mark is ?so commonly used that the public will look to other elements to distinguish the source of the goods.? TMEP ?1207.01(d)(iii). The three registrations cited against the Mark are more similar to each other than, or as similar to each other as, they are to the Mark. AMAZEL and AMAZEL BASIL are owned by the same registrant, but AMAZED MEALWORMS is as similar to AMAZEL or AMAZEL BASIL as those marks are to the applied for mark. Further, a review of the Trademark Office records discloses the existence of numerous coexisting registrations and applications in addition to the Cited Registrations that consist of or incorporate the term AMAZE, or a variation thereof, in Class 31 including, but not limited to, the following: "AMAIZINGLY" GOOD FOR YOU (US 4700368) (Int?l Class: 31) fresh corn; raw corn; unprocessed corn Registrant: Healthy Food Ingredients, LLC AMAZING COACHELLA (Disclaimer: ?COACHELLA?) (US 5320878) (Int?l Class: 31) fresh fruits and vegetables Registrant: Peter Rabbit Farms AMAZING HARVEST (US 4973107) (Int?l Class: 31) unprocessed chia seeds; unprocessed quinoa; unprocessed teff Registrant: Spicemart, Inc. AMAZING HEDGES (US 4064300) (Int?l Class: 31) living plants Registrant: Brow Enterprises, Inc. AMAZON (US 1927235) (Int?l Class: 31) living plants, parts of plants and flowers of roses Registrant: Suntory Water Group Inc. Copies of the Trademark Office electronic records for the above-mentioned marks are attached hereto as Exhibit A for the Examining Attorney?s reference and are made of record. Applicant submits that given the extensive third- party use of the term AMAZE, or variations thereof, consumers will look to other portions of the cited marks to identify and distinguish the source of the goods and services offered under those marks. Accordingly, just as all of these references peacefully coexist with one another and with the Cited Registrations, Applicant?s Mark should likewise be able to coexist. This factor supports a finding that there is no likelihood of confusion. III. Applied-For Mark is Not a Varietal Name Applicant has voluntarily amended the recitation of goods in the Subject Application to remove the wording ?Live plants.? Applicant makes the requested amendments in the electronic response form. As such, the Examining Attorney?s refusal of registration of the mark on the basis that the mark is a varietal should be removed. IV. Information Requested by the Examining Attorney Applicant does not intend to use the Mark as a varietal or cultivar name and has never so used the Mark. Further, the Mark has not, to Applicant?s knowledge, been used in connection with a plant patent, utility patent, or certificate for plant-variety protection, and Applicant has no intention to so use the Mark. V. Conclusion. For the foregoing reasons, Applicant submits that there is no likelihood of confusion between the Mark and the mark in the Cited Registrations, the Mark as proposed with the newly amended recitation of goods does not serve as a cultivar or varietal name, and Applicant has submitted responses to the Examining Attorney?s request for information. Accordingly, Applicant respectfully requests that the Examining Attorney withdraw the refusal to register and pass the Subject Application for publication.

EVIDENCE
Evidence has been attached: TSDR information relating to mark registrations noted in argument.
Original PDF file:
evi_6527152229-2020072008 2834633923_._Exhibit_B.pdf
Converted PDF file(s) ( 6 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 031 for Live plants; mulch
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: Live plants; mulchClass 031 for mulch
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):
      OMS INVESTMENTS, INC.
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@scotts.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      OMS Investments, Inc.
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@scotts.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): robert.morgan@scotts.com

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: /Robert J. Morgan/     Date: 07/20/2020
Signatory's Name: Robert J. Morgan
Signatory's Position: Attorney of record, Ohio bar member

Signatory's Phone Number: 937-578-1561

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:    OMS INVESTMENTS, INC.
   OMS INVESTMENTS, INC.
   
   10250 CONSTELLATION BLVD., SUITE 2800
   LOS ANGELES, California 90067
Mailing Address:    OMS Investments, Inc.
   10250 Constellation Blvd., Suite 2800
   Los Angeles, California 90067
        
Serial Number: 88653748
Internet Transmission Date: Mon Jul 20 08:36:41 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2020072008364114
5626-88653748-7405ce9e6fac54d3ca61745e5b
b736d6105add46a091222b5dd4b0b210c4b6-N/A
-N/A-20200720082834633923