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)

---

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. 88848026 DOUBLE EDGE(Standard Characters, see http://uspto.report/TM/88848026/mark.png) has been amended as follows:

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

In a likelihood of confusion analysis, the marks are compared in their entireties, rather than dissected and evaluated based on their component parts. In re Nat'l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985). "[L]ikelihood of confusion cannot be predicated on dissection of a mark, that is, only part of a mark." Id. Mutual inclusion of an allegedly similar word in two marks without regard to any unshared term is insufficient to conclude that a likelihood of confusion exists. Clairol, Inc. v. Cosmair, Inc., 529 F. Supp. 811, 815 (S.D.N.Y 1984). "In assessing likelihood of confusion, the mere fact that two marks may share words in common is not determinative." Id citing McGregor-Doniger, Inc. v. Drizzle, Inc., supra, 599 F.2d at 1133. The overall commercial impressions conveyed by two marks may be distinctive, even in instances where the marks share common wording. TMEP 1207.01(b)(v). Applicant's DOUBLE EDGE and Registrant's DOUBLE EDGED POKER mark look and sound different. Notably, Applicant's mark is not a real phrase. DOUBLE EDGE, on its own, does not have a meaning. Exhibits 1-3. In contrast, Registrant's mark uses the proper phrase DOUBLE EDGED and it is used there as an adjective--directly describing POKER. DOUBLE EDGE, if it was a proper word, would more properly be considered a noun--an edge that is double--describing the edge itself rather than a separate object with two edges. Consumers, familiar with the common adjective DOUBLED EDGED would recognize the difference in the overall mark DOUBLE EDGED POKER, where DOUBLE EDGED leads directly to POKER as an adjective, and the vague term DOUBLE EDGE that is not used. Accordingly, consumers would not be confused between the unitary term DOUBLE EDGED POKER and the made up phrase DOUBLE EDGE.

EVIDENCE
Evidence has been attached: screenshots of dictionaries showing "double edge" is not a word
Original PDF file:
evi_216522495-20200826132 135797949_._Exhibit_1.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
Original PDF file:
evi_216522495-20200826132 135797949_._Exhibit_2.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4
Original PDF file:
evi_216522495-20200826132 135797949_._Exhibit_3.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Jakeem Wahliq, a citizen of United States, having an address of
      4123 Broadway #302
      Oakland, California 94611
      United States
      Email Address: XXXX

Proposed: Jakeem Wahliq, a citizen of United States, having an address of
      2000 100th Ave
      Oakland, California 94603
      United States
      Email Address: XXXX
Correspondence Information (current):
      MARY GARNER
      PRIMARY EMAIL FOR CORRESPONDENCE: tm@lzlegalservices.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is L536784848.
Correspondence Information (proposed):
      Mary Garner
      PRIMARY EMAIL FOR CORRESPONDENCE: tm@lzlegalservices.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is L536784848.

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: /Mary Garner/     Date: 08/26/2020
Signatory's Name: Mary Garner
Signatory's Position: Attorney of record, Texas bar member

Signatory's Phone Number: 737-220-0666

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:    MARY GARNER
   LEGALZOOM LEGAL SERVICES, LTD.
   
   9900 SPECTRUM DRIVE
   AUSTIN, Texas 78717
Mailing Address:    Mary Garner
   LEGALZOOM LEGAL SERVICES, LTD.
   9900 SPECTRUM DRIVE
   AUSTIN, Texas 78717
        
Serial Number: 88848026
Internet Transmission Date: Wed Aug 26 13:32:14 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.X-20200826133214694
640-88848026-740107f6659ba33d2cc83e29ec4
839331d416c9b45603c3784e84ecccb576bf9cb-
N/A-N/A-20200826132135797949