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. 88186425 NOVA(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/88186425/large) has been amended as follows:

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

APPLICANT'S RESPONSE TO OFFICE ACTION

Applicant hereby timely responds to the August 24, 2019 office action (the “Office Action”) regarding Applicant’s NOVA standard character mark (“Applicant’s Mark”).

Request to Divide Application

Applicant herewith requests to divide the current application into two applications in compliance with 37 C.F.R. § 2.87 and TMEP 1110.01. Applicant requests to divide the Classes 9, 16, and 42 goods and services identifications, and the Class 44 services identification as amended by this Office Action Response, into a child application. Applicant requests to retain the Classes 32, 34, 35, and 41 goods and services identifications in this application. Applicant submits along with this Response a Request to Divide Application, a new application processing fee of $100.00, and an application filing fee of $275.00.

Amendment to Identification of Goods and Services

Applicant respectfully asks the Examining Attorney to amend the goods and services description of Applicant’s Mark as follows (with deletions indicated with strikethrough):

Class 44: Online cannabis resources, namely, providing information pertaining to the benefits of medicinal use of cannabis; Providing medical information in the field of medical marijuana, and regarding indications and effects of particular cannabis strains; Consultation services in the field of palliative care regarding the use of medical cannabis in connection with holistic health

None of the Office Action partial refusals, requests for information, or requests for identification and classification of services pertain to Applicant’s identifications of goods and services in Classes 9, 16, 42, or 44 as amended herein. Applicant therefore respectfully requests that the Examining Attorney approve the divided application containing the Classes 9, 16, 42, and 44 goods and services identifications for publication. Applicant directs the following Office Action Response arguments to the divided application containing the Classes 32, 34, 35, and 41 goods and services identifications.

The 2(d) Likelihood of Confusion Refusal

The Office Action refused registration of Applicant’s Mark due to an alleged likelihood of confusion with the marks in U.S. Registration Nos. 3940654 (TRIPEL NOVA), 2084881 (NOVA BLUE), 3625307 (AQUANOVA), 5800919 (PLATINUM NOVA CIGAR CIGAR RINGS), 5800881 (PLATINUM NOVA CIGARS), and 5218066 (NOVA) (collectively, the “Registered Trademarks”). Applicant respectfully disagrees with this conclusion and submits that no consumer would confuse Applicant’s Mark with any of the Registered Trademarks, for the reasons stated below.

Likelihood of confusion between two marks is determined by a review of all of the relevant factors under the DuPont test. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In the present case, the Office Action focused on a comparison of the marks themselves and the relatedness of the goods and services. Office Action, pp. 5-6. For the reasons stated below, the Examining Attorney has respectfully failed to meet his burden that Applicant’s Mark is confusingly similar to any of the Registered Trademarks on the basis of similarities between the marks or similarities of goods and services.

The Marks Are Dissimilar.

Under DuPont, the marks are compared for similarity or dissimilarity in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 at 1361. Marks must not be dissected for comparison purposes. In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985). Marks must be considered and compared in their entirety, and cannot be split up into component parts to be compared with corresponding parts of conflicting marks to determine likelihood of confusion. Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 1402, (C.C.P.A. 1974); see Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 1007 (C.C.P.A. 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion”). Furthermore, if the marks in their entireties convey significantly different commercial impressions, then there is no likelihood of confusion. See, e.g., In re S.D. Fabrics, Inc., 223 U.S.P.Q. 54 (T.T.A.B. 1984) (DESIGNERS/FABRIC (stylized) for retail fabric store services held not likely to be confused with DAN RIVER DESIGNER FABRICS and design for textile fabrics). In determining whether a likelihood of confusion exists, it is inappropriate to disregard one element of a mark, as “marks must be considered in the way they are used and perceived.” In re the Hearst Corp., 982 F.2d 493, 494 (Fed. Cir. 1992). Because “marks tend to be perceived in their entireties,” all components of these marks must be considered. See Id.

Applicant’s Mark comprises the single word “NOVA.” The Registered Trademarks comprise, respectively, TRIPLE NOVA (Reg. No. 3940654 as a word and design mark), NOVA BLUE (Reg. No. 2084881 as a typed drawing mark), AQUANOVA (Reg. No. 3625307 as a standard character mark), PLATINUM NOVA CIGAR CIGAR RINGS (Reg. No. 5800919 as a word and design mark), PLATINUM NOVA CIGAR (Reg. No. 5800881 as a standard character mark), and NOVA (Reg. No. 5218066 as a standard character mark). With the exception of Reg. No. 5218066, none of the Registered Trademarks comprise the single word “NOVA,” as Applicant’s Mark does. TRIPEL NOVA, for example, adds the prominent and distinctive word “TRIPEL” before the word “NOVA.” Strong, distinctive words that appear first in a mark may constitute the “dominant feature” in creating a specific commercial impression. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1372 (Fed. Cir. 2005). TRIPEL NOVA accordingly creates a distinctly different commercial impression than does NOVA, an effect which is further amplified by the distinctive design element of TRIPEL NOVA. Nor does NOVA BLUE, clearly associated with the color blue and further differentiated by its own typed drawing, create a commercial impression that is in any way similar to NOVA alone.

Similarly, the unexpected and unusual addition of the word “AQUA” to create “AQUANOVA” creates a non-dictionary-standard compound word that triggers a completely different commercial impression than does the word “NOVA” alone. “NOVA” by itself connotes astronomy and an association with stars, whereas “AQUANOVA” connotes water and associated water activities.

PLATINUM NOVA CIGAR CIGAR RINGS and PLATINUM NOVA CIGARS both feature many additional words (including the specific and highly-distinctive words PLATINUM, CIGAR, and RINGS) and, in the case of the former mark, additional unique design elements, that completely differentiate the marks from Applicant’s Mark. Finally, with respect to “NOVA” (Reg. No. 5218066), the differences in goods and services associated with Applicant’s Mark and the “NOVA” 5218066 mark will prevent any consumer confusion between Applicant’s Mark and the “NOVA” 5218066 mark. No consumers will confuse Applicant’s Mark with any of the Registered Trademarks on the basis of the marks themselves.

The Goods and Services Are Dissimilar.

Applicant’s Mark claims the following goods and services in Classes 32, 34, 35, and 41:

Class 32: Energy drinks; Bottled water; bottled drinking water; Soft drinks, namely, carbonated soft drinks

Class 34: Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges

Class 35: Smoke shops; Providing consumer information in the field of medical marijuana dispensary inventories and locations; Promoting the goods and services of others by providing hypertext links to web sites of others featuring medical marijuana inventories and locations; providing a web site featuring the ratings, reviews and recommendations on products and services for commercial purposes posted by users; Public advocacy in support of the legalization of cannabis; Providing a website featuring the ratings, reviews and recommendations on medical marijuana products of others for commercial purposes posted by users

Class 41: Educational services, namely, providing non-downloadable webinars relating to cannabis as part of a healthy lifestyle; Educational services and patient educational services, namely, providing seminars, workshops, classes and training sessions all in the field of medical marijuana and cannabis

The Office Action has not established that Applicant’s aforementioned goods and services are confusingly similar to the goods and services associated with any of the Registered Trademarks. The “NOVA” 5218066 mark, for example, is associated with “electronic cigarette lighters” in Class 34. Electronic cigarette lighters have no connection in the minds of consumers with energy drinks, non-downloadable webinars relating to cannabis as part of a healthy lifestyle, providing consumer information in the field of medical marijuana dispensary inventories and locations, e-cigarette liquids, or the other goods and services claimed by Applicant’s Mark. Nor has the Office Action sufficiently established a risk of consumer confusion between Applicant’s goods and services in Classes 32, 34, 35, and 41 with the goods and services associated with the other Registered Trademarks. Consumers will not confuse Applicant’s Mark with the Registered Trademarks, or Applicant’s goods and services with the goods and services associated with the Registered Trademarks. Applicant respectfully requests that the Examining Attorney withdraw the 2(d) refusal on this basis.

Partial Sections 1 and 45 Refusals, Partial Requirement for Information and Identification of Services Request

With respect to the Office Action’s Partial Sections 1 and 45 Refusals, Request for Information, and Identification and Classification of Services Request, Applicant respectfully submits that Applicant’s goods and services identifications are sufficiently definite as to obviate the Partial Sections 1 and 45 Refusals, Request for Information, and Identification and Classification of Services Request. Applicant respectfully asks the Examining attorney to withdraw the Partial Sections 1 and 45 Refusals, Request for Information, and Identification and Classification of Services Request on this basis.

Conclusion

For the reasons stated above, Applicant respectfully requests that the Examining Attorney divide the current application into two subsequent applications (one application comprising the original Class 9, 16, and 42 identifications and the Class 44 identifications as amended herein, and the other application comprising the Class 32, 34, 35, and 41 identifications), withdraw the Office Action refusals, the request for information, and the identification and classification of services request, and approve the two subsequent applications for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 044 for Online cannabis resources, namely, providing information pertaining to the benefits of medicinal use of cannabis; Providing medical information in the field of medical marijuana, and regarding indications and effects of particular cannabis strains; Consultation services in the field of palliative care regarding the use of medical cannabis in connection with holistic health
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: Online cannabis resources, namely, providing information pertaining to the benefits of medicinal use of cannabis; Providing medical information in the field of medical marijuana, and regarding indications and effects of particular cannabis strains; Consultation services in the field of palliative care regarding the use of medical cannabis in connection with holistic healthClass 044 for Online cannabis resources, namely, providing information pertaining to the benefits of medicinal use of cannabis; Providing medical information in the field of medical marijuana, and regarding indications and effects of particular cannabis strains
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: NAZ Holdings, LLC, a limited liability company legally organized under the laws of Arizona, having an address of
      1225 West Main Street #101-272
      Mesa, Arizona 85201
      United States

Proposed: NAZ Holdings, LLC, a limited liability company legally organized under the laws of Arizona, having an address of
      1225 West Main Street #101-272
      Mesa, Arizona 85201
      United States
      Email Address: XXXX

The owner's/holder's current attorney information: Steven J. Laureanti. Steven J. Laureanti of SPENCER FANE LLP, is located at

      2415 E. CAMELBACK ROAD, SUITE 600
      PHOENIX, Arizona 85016
      United States
The docket/reference number is 5029046-0049.
      The phone number is 602-333-5440.
      The fax number is 6023334251.
      The email address is slaureanti@spencerfane.com

The owner's/holder's proposed attorney information: Steven J. Laureanti. Steven J. Laureanti of SPENCER FANE LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      2415 E. CAMELBACK ROAD, SUITE 600
      PHOENIX, Arizona 85016
      United States
The docket/reference number is 5029046-0049.
      The phone number is 602-333-5440.
      The fax number is 6023334251.
      The email address is slaureanti@spencerfane.com

Steven J. Laureanti submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      STEVEN J. LAUREANTI
      PRIMARY EMAIL FOR CORRESPONDENCE: slaureanti@spencerfane.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 5029046-0049.
Correspondence Information (proposed):
      Steven J. Laureanti
      PRIMARY EMAIL FOR CORRESPONDENCE: slaureanti@spencerfane.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 5029046-0049.

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: /Steven J. Laureanti/     Date: 02/24/2020
Signatory's Name: Steven J. Laureanti
Signatory's Position: Attorney of Record, Arizona Bar Member

Signatory's Phone Number: 602-333-5440

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:    STEVEN J. LAUREANTI
   SPENCER FANE LLP
   
   2415 E. CAMELBACK ROAD, SUITE 600
   PHOENIX, Arizona 85016
Mailing Address:    Steven J. Laureanti
   SPENCER FANE LLP
   2415 E. CAMELBACK ROAD, SUITE 600
   PHOENIX, Arizona 85016
        
Serial Number: 88186425
Internet Transmission Date: Mon Feb 24 17:57:21 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202002241757217
35734-88186425-71068ad1cb575f5b5f53adcd3
63d3bce9ed33025a2fb635e14bc14cd2cbfb8e-N
/A-N/A-20200224174458079112