| 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 1960 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88975668 |
| LAW OFFICE ASSIGNED | LAW OFFICE 122 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88975668/mark.png |
| LITERAL ELEMENT | CICADA |
| 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) | |
|
Applicant appreciates the determination by the examining attorney in the Office Action dated September 10, 2019 that the following requirements have been satisfied: Amended Identification and Classification of Services Requirement; Multiple Class Application Requirements; Substitute Specimen Requirement. In the Office Action dated September 10, 2019, the Examiner raised issues summarized as: • Section 2(d) Refusals – Likelihood of Confusion Response to Section 2(d) Refusal – Likelihood of Confusion Applicant seeks registration of the mark “CICADA” in standard characters for night club, dance club, and bar and cocktail lounge services; arranging and conducting nightclub and entertainment events in Class 41. In the Office Action refusal under Section 2(d), the Examiner asserts that Applicant’s “CICADA” mark for the identified goods and services is likely to be confused with the “BURNING CICADA” trademark in U.S. Registration No. 3,949,854 (“Registered Mark”), owned by Burning Cicada, Ltd. Applicant requests reconsideration of this refusal, particularly based on (1) a lack of likelihood of confusion between the “CICADA” mark Applicant seeks to register and the Burning Cicada’s “BURNING CICADA” mark, and (2) the Trademark Agreement between Applicant and Burning Cicada, filed herewith, in which Applicant and Burning Cicada state their agreement that there would be no likelihood of confusion by the concurrent use of Applicant’s “CICADA” mark and Burning Cicada’s Word “BURNING CICADA” mark and their agreement to provide assurance that confusion will not arise in the future. (1) Applicant’s “CICADA” mark is not likely to be confused with Burning Cicada’s “BURNING CICADA” mark The marks are not similar: Applicant’s “CICADA” mark is distinct from Burning Cicada’s “BURNING CICADA” mark in the cited registration - Applicants’ mark does not use “cicada” in conjunction with the word “burning.” As a result, purchasers and prospective purchasers are not likely to be confused by the concurrent use of the word mark CICADA by Cicada and the word mark BURNING CICADA by Burning Cicada. See paragraph 5.0 of the Trademark Agreement filed herewith. The services and channels of trade are not similar: Applicant’s and Burning Cicada’s services are different. Burning Cicada primarily provides live music concerts and audio recording and production and Applicant provides night club, dance club, and bar and cocktail lounge services. Applicant’s services and Burning Cicada’s services are not similar. Consumers will recognize that Applicant’s and Burning Cicada’s marks are not similar, that the services are not similar, and that the channels of trade are not similar. As a result, purchasers and potential purchasers will not be confused by the concurrent use of the registered “BURNING CICADA” mark and Applicant’s “CICADA” mark for the services identified. The differences between Applicant’s and Burning Cicada’s marks, services, and the channels of trade for their services are significant such that there will be no likelihood of confusion. See paragraph 7.5 of the Trademark Agreement. (2) Applicant and Burning Cicada entered into a Trademark Agreement agreeing there would be no likelihood of confusion by the concurrent use of Applicant’s “CICADA” mark and Burning Cicada’s Word “BURNING CICADA” mark the parties agreed to provide assurance that confusion will not arise in the future Applicant and Burning Cicada entered into a Trademark Agreement. In the Agreement, Applicant and Burning Cicada agree that the coexistence of Cicada’s CICADA mark and Burning Cicada’s BURNING CICADA mark will not lead to consumer confusion. Applicant and Burning Cicada further agree to provide assurance that no confusion will arise in the future and to take appropriate steps if any such confusion were to occur. See paragraph 7.5 of the Trademark Agreement. For all of these reasons, Applicant respectfully seeks withdrawal of the Section 2(d) Refusal based on likelihood of confusion. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_5023941206-20191209134757064182_._Trademark_Agreement.pdf |
| CONVERTED PDF FILE(S) (5 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\889\756\88975668\xml3\RFR0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\889\756\88975668\xml3\RFR0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\889\756\88975668\xml3\RFR0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\889\756\88975668\xml3\RFR0005.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\889\756\88975668\xml3\RFR0006.JPG | |
| ATTORNEY SECTION (current) | |
| NAME | Susan G. L. Glovsky |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | Hamilton, Brook, Smith & Reynolds, P.C. |
| STREET | 530 Virginia Road, P.O. Box 9133 |
| CITY | Concord |
| STATE | Massachusetts |
| POSTAL CODE | 01742-9133 |
| COUNTRY | US |
| PHONE | (617) 607-5900 |
| FAX | (978) 341-0136 |
| trademarks@hbsr.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 5673.0001-00 |
| ATTORNEY SECTION (proposed) | |
| NAME | Susan G. L. Glovsky |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | Hamilton, Brook, Smith & Reynolds, P.C. |
| STREET | 530 Virginia Road, P.O. Box 9133 |
| CITY | Concord |
| STATE | Massachusetts |
| POSTAL CODE | 01742-9133 |
| COUNTRY | United States |
| PHONE | (617) 607-5900 |
| FAX | (978) 341-0136 |
| trademarks@hbsr.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 5673.0001-00 |
| OTHER APPOINTED ATTORNEY | David E. Brook, James M. Smith, John L. DuPré, Mary Lou Wakimura, Alice O. Carroll, Timothy J. Meagher, Deirdre E. Sanders, Mark B. Solomon, Brian Moriarty, Lawrence P. Cogswell III, Eric M. Balicky, Christopher K. Albert, Alexander Adam |
| CORRESPONDENCE SECTION (current) | |
| NAME | Susan G. L. Glovsky |
| FIRM NAME | Hamilton, Brook, Smith & Reynolds, P.C. |
| STREET | 530 Virginia Road, P.O. Box 9133 |
| CITY | Concord |
| STATE | Massachusetts |
| POSTAL CODE | 01742-9133 |
| COUNTRY | US |
| PHONE | (617) 607-5900 |
| FAX | (978) 341-0136 |
| trademarks@hbsr.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 5673.0001-00 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Susan G. L. Glovsky |
| FIRM NAME | Hamilton, Brook, Smith & Reynolds, P.C. |
| STREET | 530 Virginia Road, P.O. Box 9133 |
| CITY | Concord |
| STATE | Massachusetts |
| POSTAL CODE | 01742-9133 |
| COUNTRY | United States |
| PHONE | (617) 607-5900 |
| FAX | (978) 341-0136 |
| trademarks@hbsr.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 5673.0001-00 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Susan G. L. Glovsky/ |
| SIGNATORY'S NAME | Susan G. L. Glovsky |
| SIGNATORY'S POSITION | Attorney of Record, Massachusetts Bar Member |
| SIGNATORY'S PHONE NUMBER | (617) 607-5900 |
| DATE SIGNED | 12/09/2019 |
| AUTHORIZED SIGNATORY | YES |
| CONCURRENT APPEAL NOTICE FILED | NO |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Dec 09 15:08:22 EST 2019 |
| TEAS STAMP | USPTO/RFR-XX.XXX.XX.XXX-2 0191209150822902869-88975 668-700ef76ba359d957df74d 2ac7395276f955b2d6bb1f433 926f218d7d8222ace9d6-N/A- N/A-20191209134757064182 |
| 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 1960 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Applicant appreciates the determination by the examining attorney in the Office Action dated September 10, 2019 that the following requirements have been satisfied: Amended Identification and Classification of Services Requirement; Multiple Class Application Requirements; Substitute Specimen Requirement.
In the Office Action dated September 10, 2019, the Examiner raised issues summarized as:
• Section 2(d) Refusals – Likelihood of Confusion
Response to Section 2(d) Refusal – Likelihood of Confusion
Applicant seeks registration of the mark “CICADA” in standard characters for night club, dance club, and bar and cocktail lounge services; arranging and conducting nightclub and entertainment events in Class 41.
In the Office Action refusal under Section 2(d), the Examiner asserts that Applicant’s “CICADA” mark for the identified goods and services is likely to be confused with the “BURNING CICADA” trademark in U.S. Registration No. 3,949,854 (“Registered Mark”), owned by Burning Cicada, Ltd. Applicant requests reconsideration of this refusal, particularly based on (1) a lack of likelihood of confusion between the “CICADA” mark Applicant seeks to register and the Burning Cicada’s “BURNING CICADA” mark, and (2) the Trademark Agreement between Applicant and Burning Cicada, filed herewith, in which Applicant and Burning Cicada state their agreement that there would be no likelihood of confusion by the concurrent use of Applicant’s “CICADA” mark and Burning Cicada’s Word “BURNING CICADA” mark and their agreement to provide assurance that confusion will not arise in the future.
(1) Applicant’s “CICADA” mark is not likely to be confused with Burning Cicada’s “BURNING CICADA” mark
The marks are not similar:
Applicant’s “CICADA” mark is distinct from Burning Cicada’s “BURNING CICADA” mark in the cited registration - Applicants’ mark does not use “cicada” in conjunction with the word “burning.” As a result, purchasers and prospective purchasers are not likely to be confused by the concurrent use of the word mark CICADA by Cicada and the word mark BURNING CICADA by Burning Cicada. See paragraph 5.0 of the Trademark Agreement filed herewith.
The services and channels of trade are not similar:
Applicant’s and Burning Cicada’s services are different. Burning Cicada primarily provides live music concerts and audio recording and production and Applicant provides night club, dance club, and bar and cocktail lounge services. Applicant’s services and Burning Cicada’s services are not similar.
Consumers will recognize that Applicant’s and Burning Cicada’s marks are not similar, that the services are not similar, and that the channels of trade are not similar. As a result, purchasers and potential purchasers will not be confused by the concurrent use of the registered “BURNING CICADA” mark and Applicant’s “CICADA” mark for the services identified. The differences between Applicant’s and Burning Cicada’s marks, services, and the channels of trade for their services are significant such that there will be no likelihood of confusion. See paragraph 7.5 of the Trademark Agreement.
(2) Applicant and Burning Cicada entered into a Trademark Agreement agreeing there would be no likelihood of confusion by the concurrent use of Applicant’s “CICADA” mark and Burning Cicada’s Word “BURNING CICADA” mark the parties agreed to provide assurance that confusion will not arise in the future
Applicant and Burning Cicada entered into a Trademark Agreement. In the Agreement, Applicant and Burning Cicada agree that the coexistence of Cicada’s CICADA mark and Burning Cicada’s BURNING CICADA mark will not lead to consumer confusion. Applicant and Burning Cicada further agree to provide assurance that no confusion will arise in the future and to take appropriate steps if any such confusion were to occur. See paragraph 7.5 of the Trademark Agreement.
For all of these reasons, Applicant respectfully seeks withdrawal of the Section 2(d) Refusal based on likelihood of confusion.
