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 09/30/2020)

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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 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88961801 SAFESEAL(Standard Characters, see http://uspto.report/TM/88961801/mark.png) has been amended as follows:

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

This paper responds to the Office Action sent on September 16, 2020. Kindly amend the application by substituting the following identification of goods in Class 21 for that contained in the application as originally filed: Class 21: Plastic containers for serving and storing food products. REMARKS A. IDENTIFICATION OF GOODS In the Office Action, the Examining Attorney determined that the identification of goods was unacceptable as indefinite. The Examining Attorney required Applicant to amend the identification of goods. In compliance with this requirement, Applicant has now amended the identification of goods contained in the application. It is noted that the amended identification is identical to the goods in Applicant's U.S. Registration No. 2596838 for the mark STAYLOCK. B. LIKELIHOOD OF CONFUSION In the Office Action, the Examining Attorney suggested that registration of Applicant's mark may be refused under Section 2(d) on the basis of a prior-pending application for the mark SAFE SEAL and design, U.S. Serial No. 88245967, for silicone storage bags for household use, owned by Jericho Trostmann of La Marque, Texas if the application matures to registration. For the reasons that follow, Applicant respectfully submits that no likelihood of confusion will exist in this case and requests that the Examining Attorney not enter a refusal regardless of whether the pending application ever registers. It is well recognized that In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) provides the litmus test for determining whether a likelihood of confusion exists under Section 2(d). In DuPont, the Court enunciated several factors relevant to determining likelihood of confusion, including the similarity between the marks, and the similarities between the goods and services provided under the respective marks, the respective trade channels, and the degree of purchaser care. These factors are applicable to the instant case and support a conclusion that no likelihood of confusion would exist in this case. A. Similarity Between the Marks The mere similarity or even identity between two marks can never alone be decisive of likelihood of confusion. McGregor-Donniger Inc. v. Drizzle Inc., 202 U.S.P.Q. 81 (2d Cir. 1979). In holding that the mark "DRIZZLE" for women's overcoats was not likely to cause confusion with the mark "DRIZZLER" for golf jackets, the Court of Appeals for the Second Circuit stated: First, even close similarity between the marks is not dispositive on the issue of likelihood of confusion. Similarity in and of itself it not the acid test. Whether the similarity is likely to provoke confusion is the crucial question. Id. at 89 (citations omitted). In this case, Applicant concedes that the strongest argument in support of likelihood of confusion is the similarity of the marks, both containing the terms SAFE and SEAL. But the marks are not identical; unlike Applicant's mark, the pending application is for a highly stylized mark where the term SEAL is disclaimed. However, this is the only factor in favor of such a finding. The remaining factors weigh heavily against any likelihood of confusion. B. Similarity Between the Goods As stated in TMEP Section 1207.01(a)(iv), "[t]he facts in each case vary and the weight to be given each factor may be different in light of the differing circumstances; thus, there can be no rule that certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto." See, e.g., Information Resources, Inc. v. X*Press Information Services, 6 U.S.P.Q. 2d 1034, 1038 (TTAB 1988) (regarding computer hardware and software); Hi-Country Foods Corp. v. Hi Country Beef Jerky, 4 U.S.P.Q. 2d 1169, 1171 (TTAB 1987) (regarding food products); In re Quadram Corp. 228 U.S.P.Q. 863, 865 (TTAB 1985) (regarding computer hardware and software); In re British Bulldog Limited, 224 U.S.P.Q. 854, 855-56 (TTAB 1984), and cases cited therein (regarding clothing). The Board has routinely held that simply because the goods and services are similar does not dictate a finding that likelihood of confusion will occur. For example, in Electronic Data Systems Corp. v. EDSA Micro Corp., 23 U.S.P.Q. 2d 1460 (TTAB 1992), EDS opposed EDSA's application to register EDSA for computer programs when EDS held a registration for computer programming services. The Board in this case found no likelihood of confusion between the marks "EDS" and "EDSA" despite the similarities between the marks, and despite the fact that both companies had several of the same customers. The Board stated that "the fact that a large company, which by its myriad of different products and services, may purchase Opposer's and Applicant's services and goods, does neither make the services and goods related or demonstrate that confusion is likely to occur because of the use of similar marks." Id., at 1465. Likewise, in Computer Associates International, Inc. v. AJF Computerized Data Management, Inc., 26 U.S.P.Q. 2d 1430 (E.D.N.Y. 1995), CAI sought a declaratory judgment that its use of the name "Simply Tax" did not infringe AJF's registration for TAX $IMPLE. Both parties produced computer software designed to assist in the preparation of tax returns. However, the court noted that the proximity ended there. The Court determined that the purchase prices were different, and the products were advertised in different publications with different readerships. Therefore, the Court concluded that "the products do not compete with each other." Id., at 1434. In this case, Applicant?s goods and those associated with the cited mark are quite different. Applicant?s goods are plastic container for serving and storing food as would be used in the food service industry, e.g., the type of containers that a restaurant might use for take-out orders or for left overs. In contrast, the goods associated with Serial No. 88/245,967 are silicone storage bags for household use, e.g., the type of bags a consumer might use to store leftovers in a home refrigerator. The only similarity is one use to which the respective goods may be put, i.e., storing food. But clearly, plastic containers are not silicone bags, and silicone bags are not plastic containers. The Examining Attorney offers no evidence that a purchaser of plastic containers would have any reason to think that a supplier of silicone storage bags has any relationship to the supplier of plastic containers, or vice versa. Any alleged similarity between plastic containers and silicone storage bags is inadequate to support a finding that such purchasers are likely to be confused as to the source of the goods. Moreover, even if there is a modicum amount of overlap between the respective goods, the cases described above involve instances in which the goods and services were much more closely related than they are in the instant case. For all of these reasons, Applicant respectfully submits that there is no likelihood of confusion between its mark and the cited mark. In the event that the Examining Attorney believes that a modification of Applicant's identification of goods would help further differentiate Applicant's goods from those associated with the cited mark, Applicant is willing to make an appropriate modification. In the event that the Examining Attorney wishes to discuss this in more detail, Applicant respectfully requests that the Examining Attorney contact the undersigned attorney of record. C. Channels of Trade The channels of trade into which the respective goods are sold are likewise very different. Applicant's goods are sold wholesale in the food service industry to purchasers who are sophisticated about bulk purchases of products used in the food service industry. Mr. Trostmann's products in the pending application are sold at retail for household use, such as a grocery store. The respective trade channels are not only distinctly different, they do not even overlap. The commercial realities of the marketplace evince strong evidence that it is highly unlikely that the goods associated with the respective marks will ever be sold in the same channels of trade. They will not likely be sold in the same product catalogs. They will not be marketed in the same retail channels. They will not be purchased by the same types of consumers. This factor alone adequatly supports a finding of no likelihood of confusion between Applicant's mark and the cited mark. D. Conditions under which and to whom sales are made It will be apparent that the purchasers of Applicant's goods are highly sophisticated bulk purchasers at wholesale who are familiar with the sellers of such goods in the food service industry. In contrast, the purchasers of Mr. Trostmann's goods are more likely to be home consumers who have little to no familiarity with the sellers to the food service industry. It is highly unlikely that one would be confused for the other. This factor further supports a finding of no likelihood of confusion between Applicant's mark and the cited mark. E. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion. Applicant's mark has been used since May 4, 2012. The cited mark claims a date of first use of July 23, 2018. Assuming the truth of both means that there has been concurrent use of both marks for over six years. And in that time there is no evidence of actual confusion. This factor further supports a finding of no likelihood of confusion between Applicant's mark and the cited mark. F. The market interface between the applicant and the owner of a prior mark. Clearly, there is no market interface between Applicant and Mr. Trostmann, inasmuch as the respective goods are sold through different trade channels, to different markets, concurrently with no evidence of confusion, and who have never crossed paths in industry events. This factor further supports a finding of no likelihood of confusion between Applicant's mark and the cited mark. G. The extent to which applicant has a right to exclude others from use of its mark on its goods. Applicant has used its mark extensively since May 4, 2012 throughout the entire United States. Applicant is the leading supplier of products to the food service industry. Its long and extensive use of the mark for over eight years establishes its right to exclude others from confusing uses throughout the range of its use, i.e., the entire United States. And that includes Mr. Trostmann's later uses of the cited mark if such uses are, in fact, confusing. This factor further supports a finding of no likelihood of confusion between Applicant's mark and the cited mark. In sum, Applicant's goods are different from the goods of the cited mark, Applicant's goods are not marketed and sold in the same channels of trade as the goods associated with the cited mark, Applicant's goods are sold to sophisticated purchasers who are not likely to be confused, Applicant's mark and the cited mark have been used concurrently for over 6 years with no evidence of actual confusion, there is no market interface between Applicant and the owner of the cited mark, and Applicant is in position to exclude the uses of the cited mark if, in fact, there is confusion. For all of the reasons stated above, there is no likelihood of confusion between the cited mark and Applicant's mark. Moreover, under the Lanham Act, a refusal to register based on the likelihood of confusion requires that such confusion as to the source of the goods must not merely be possible, but likely. A mere possibility of confusion is an insufficient basis for rejection under Section 2(d). In re Macy-Ferguson, Inc., 222 U.S.P.Q. 367, 368 (C.C.P.A. 1974). Based on all of the above, Applicant respectfully submits that no likelihood of confusion exists between Applicant's mark and the cited application, and Applicant respectfully requests that the Examining Attorney agree not to enter a refusal to register the mark on the basis of the cited application. Inasmuch as there are no other outstanding issues, Applicant submits that the application is now in a condition for publication. Please address any additional questions about this matter to the undersigned attorney of record.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 021 for bowls; containers
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/04/2012 and first used in commerce at least as early as 05/04/2012 , and is now in use in such commerce.


Proposed:

Tracked Text Description: bowls; Plastic containers for serving and storing food products; containersClass 021 for Plastic containers for serving and storing food products
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 05/04/2012 and first used in commerce at least as early as 05/04/2012 , and is now in use in such commerce. Correspondence Information (current):
      JOEL E. BAIR
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@mcgarrybair.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jeb@mcgarrybair.com

The docket/reference number is 70254-1403.
Correspondence Information (proposed):
      Joel E. Bair
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@mcgarrybair.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jeb@mcgarrybair.com

The docket/reference number is 70254-1403.

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: /Joel E. Bair/     Date: 10/19/2020
Signatory's Name: Joel E. Bair
Signatory's Position: Attorney of Record, Michigan Bar Member

Signatory's Phone Number: 616-742-3500

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:    JOEL E. BAIR
   MCGARRY BAIR PC
   
   45 OTTAWA AVE. SW, SUITE 700
   GRAND RAPIDS, Michigan 49503
Mailing Address:    Joel E. Bair
   MCGARRY BAIR PC
   45 OTTAWA AVE. SW, SUITE 700
   GRAND RAPIDS, Michigan 49503
        
Serial Number: 88961801
Internet Transmission Date: Mon Oct 19 17:33:47 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20201019173347734
862-88961801-7506764955bc1a5fd98b2994bf0
8528752b925235de7cffdb6a4c629b734e06e27-
N/A-N/A-20201019172327289505