TEAS Petition to Revive Abandon Applic

PTO- 2194

Approved for use through 03/31/2024. OMB 0651-0054

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 2194

Approved for use through 03/31/2024. OMB 0651-0054

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action

To the Commissioner for Trademarks:

Application serial no. 90116606 SAGE (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9011660 6/large) has been amended as follows: PETITION
Petition Statement
Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application.RESPONSE TO OFFICE ACTION

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

Madam: In response to the above referenced application to the First Office Action of the Patent and Trademark Office (the ?PTO?) dated November 5, 2020, please consider the following remarks. The Examiner has indicated that she believes that there may be a likelihood of confusion between the Applicant?s mark and the mark shown in Registration No. 4122204. Reconsideration of this position is respectfully requested. In the Office Action, the Examiner points out that trademarks are compared for similar traits in appearance, sound, connotation, and commercial impression and that similarity in any one of these elements may be sufficient to find a likelihood of confusion. She points out that she believes that in this case, there may be confusion between (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. It is Applicant?s contention that the Examiner has given the Registrant extremely broad protection in both the appearance of the Registrant?s trademark as well as the goods it protects. In this case, there is virtually no likelihood of confusion. The goods/services are much different, the marks differ, the channels of trade differ, the price point differ? There is no likelihood of confusion between the marks. I. COMPARISON OF THE MARKS: The Marks are not identical or confusingly similar: In order to find a likelihood of confusion between the marks, the marks must create the same overall impression. Visual information Institute v. Vicon Industries, Inc., 209 USPQ 179 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general, rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). It is Applicant?s contention that there is sufficient difference between the Applicant?s mark and the cited registration so that confusion is not likely. Applicant?s trademark is presented in logo form. That means that the words in the Registration form a part of the trademark, but are not, in or of themselves, the protected trademark. Further, Registrant?s protection extends to the combination of two words, SAGE and SPOONFULS. The addition of the word SPOONFULS in the Registrant?s trademark cannot be discounted or dismissed as merely ornamental. In Applicant?s trademark, the color purple is a significant element of the trademark as well. The only similarity is that both trademarks include the term SAGE, which is also the element of many other trademarks adopted by many others. Accordingly, Applicant?s trademark has a commercial impression that is distinctive from the cited registered mark. The fact that the Registrant?s mark is comprised of two words, SAGE and SPOONFULS cannot be dismissed as being merely commercially non-relevant added to Registrant?s mark. See ConAgra, Inc. v. Saavedra, 4 U.S.P.Q.2d 1245 (TTAB 1987) (stating that PATIO for Mexican foods does not create the same commercial impression as TAPATIO for sauce). Indeed, the marks must be analyzed in their entirety before a determination is made that the two marks could be confusingly similar. Opryland U.S.A Inc. v. Great American Music Show, Inc., 970 F.2d 847, 851, 23 U.S.P.Q.2d 1471 (Fed. Cir. 1992); In re Bed & Breakfast Registry, 791 F.2d 157, 159, 229 U.S.P.Q.2d. 1471 (Fed. Cir. 1992); In re Broadway Chicken, Inc., 38 U.S.P.Q.2d 1559 (TTAB 1996). The courts and the Trademark Trial and Appeal Board (the ?TTAB?) have found consistently that where the common portion of the mark is not particularly distinct, overall differences between the mark are sufficient to distinguish the marks in the minds of consumers. See, e.g., Malaro v. Pfizer, Inc., 214 U.S.P.Q. 645, 648 (TTAB 1982) (finding marks SILK and SILKSTICK, both for cosmetic, beauty care and related products, distinguishable); Standard Barnds, Inc. v. Peters, 191 U.S.P.Q 168, 172 (finding marks CORN-ROYAL and ROYAL, both for butter and margarine, distinguishable); Industrial Adhesive Co. v. Borden, Inc., 218 U.S.P.Q. 945, 951-52 (TTAB 1983) (finding marks BOND-PLUS and WONDER BOND PLUS, both for adhesives, distinguishable); Alpha Industries v. Alpha Steel Tubes and Shapes, Inc., 616 F.2d. 440, 205 U.S.P.Q. 981 (9th Cir. 1980) (finding marks ALPHA for steel tube making and cutting equipment, and ALPHA STEEL or ALPHA STEEL TUBE, for steel tubes and shapes, distinguishable); Plus Prods. v. Star-Kist foods, Inc., 220 U.S.P.Q. 541, 544 (TTAB 1983) (finding marks PLUS, for dietary supplements, and MEAT PLUS for animal dietary supplements, distinguishable); Basic Vegetable Prods., Inc. v. General Foods Corp., 165 U.S.P.Q. 781, 784 (TTAB 1970) (finding marks MAGIC and SOUR MAGIC, both for food products, distinguishable); and Murray Corp. of America v. Red Spot Paint and Varnish Co., 280 F.2d 158, 126 U.S.P.Q. 390 (CCPA 1960) (finding marks EASY and EASYTINT, both for paint, distinguishable). Furthermore, the long standing practice of the PTO has been to permit the co-existence of similar marks for similar goods or services ?where the remaining portions of the marks are sufficient to distinguish between the mark. See In re Hamilton Bank, 222 U.S.P.Q. 174, 177 (TTAB 1984). In the instant case, the addition of the word ALPINE and the logo and colors of the Registrant?s mark makes the marks so distinctive from one another so that there is no likelihood of confusion. II. COMPARISON OF THE GOODS AND/OR CHANNELS OF TRADE: The Examiner has rejected the Application because the list of goods intersect. Applicant has amended the list of goods to specifically exclude hand held blenders. Realizing that the issue is not what the goods are actually used on, but rather what they are filed for, in the market, there is no confusion as to the source of goods as the Applicant, Breville, is in the market of selling high end kitchen appliances which are large, expensive and robust, while the Registrant is selling a product specifically intended to mix baby food. The market is not the same and there is virtually no confusion as to the source of the goods. Further, the price point is significantly different. Applicant?s products sell for hundreds (and in some cases, thousands) of dollars while registrant?s goods sell for $45.00. One cannot find any of Applicant?s products at that price point. Finally, Registrant?s products are found in baby stores and through baby goods outlets online while Applicant?s goods are sold through kitchen appliance retail outlets and through its own website. There is no possibility that a consumer would be looking for baby supplies and accidentally purchase Applicant?s very expensive kitchen products. Applicant?s goods cost a lot and therefore, there is an additional element of the sophisticated consumer. One does not make the purchase of Applicant?s goods without spending significant energy researching and comparing products. There would be no mistaken purchases between Registrant?s baby food mixers and Applicant?s kitchen appliances. As the customer is sophisticated, the threshold for a likelihood of confusion is raised. Accordingly, reconsideration of the application is respectfully requested. In light of the foregoing, it is submitted that this application is in condition for publication and such action is requested. Respectfully submitted.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 007 for Aerators being machines; Apparatus for aerating beverages; Apparatus for aerating water; Automatic industrial labeling machines for applying labels to containers and bottles; Automatic packing machines for food; Bagging machines; Beverage processing machines; Bottle capping machines for food and beverages; Bread cutting machines; Can openers, electric; Coffee extracting machines; Coffee grinders, other than hand-operated; Compressors for air conditioners; Cordless vacuum cleaners; Dough kneading machines for household purposes; Electric brooms; Electric can openers; Electric cherry pit removing machines; Electric coffee grinders; Electric compressors; Electric cordless sweepers; Electric egg beaters; Electric floor polishing machines and apparatus; Electric flour sifters; Electric flour sifters for household use; Electric food blenders; Electric food blenders; Electric food choppers; Electric food grinders; Electric food grinders for commercial, industrial, and household use; Electric food preparation apparatus, namely, tumblers for marinating food; Electric food processors; Electric food slicers; Electric fruit peelers; Electric fruit presses; Electric fruit presses for household use; Electric fruit presses for industrial purposes; Electric fruit squeezers for household purposes; Electric garlic peeling machines; Electric graters; Electric hand-held mixers for household purposes; Electric ice crushing machines; Electric infant formula mixers for household use; Electric juice extractors; Electric juicers; Electric knife sharpeners; Electric knives; Electric meat grinders; Electric mixers; Electric noodle making machines; Electric pasta makers for domestic use; Electric pasta makers for household purposes; Electric pasta making machines; Electric pepper mills; Electric pizza cutters; Electric salt mills; Electric scissors; Electric steam mops for household purposes; Electric vacuum food sealers for household purposes; Electric vegetable peelers; Electric whisks for household purposes; Electrical coffee grinders; Electrical juice extractors for fruit; Electrical squeezers for fruit and vegetable; Electrically-powered kitchen appliance for dicing, mincing, slicing and chopping food; Food processors, electric; Food waste disposers; Fruit core removing machines; Fruit presses, electric, for household purposes; Fruit washing machines; Garbage disposal machines; Garbage disposals; Grating machines for vegetables; Hand-held electric-powered food processors; Juice machines; Kitchen grinders, electric; Kitchen machines, namely, electric standing mixers; Knife grinding machines; Knives, electric; Meat and food grinder attachments for electric mixers for household use; Motors and pumps for refrigerators and freezers; Multi-purpose, electric countertop food preparation apparatus, namely, a combination meat tenderizer and marinator, for household use; Non-aerated beverage making machines; Packaging machines for food; Power-operated coffee grinders; Power-operated meat grinders; Pulping machines; Reverse osmosis pumps; Robotic vacuum cleaners; Sifting machines; Soda-pop making machines; Tea processing machines; Tin openers, electric; Vacuum cleaners; Vacuum cleaners for household purposes; Vegetable core removing machines; Vegetable grating machines; Vegetable spiralizers, electric; Wet-dry vacuums; Whisks, electric, for household purposes
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: Aerators being machines; Apparatus for aerating beverages; Apparatus for aerating water; Automatic industrial labeling machines for applying labels to containers and bottles; Automatic packing machines for food; Bagging machines; Beverage processing machines; Bottle capping machines for food and beverages; Bread cutting machines; Can openers, electric; Coffee extracting machines; Coffee grinders, other than hand-operated; Compressors for air conditioners; Cordless vacuum cleaners; Dough kneading machines for household purposes; Electric brooms; Electric can openers; Electric cherry pit removing machines; Electric coffee grinders; Electric compressors; Electric cordless sweepers; Electric egg beaters; Electric floor polishing machines and apparatus; Electric flour sifters; Electric flour sifters for household use; Electric food blenders, not handheld; Electric food blenders; Electric food choppers; Electric food blenders; Electric food grinders; Electric food preparation apparatus, namely, tumblers for marinating food; Electric food processors; Electric food grinders for commercial, industrial, and household use; Electric food slicers; Electric fruit peelers; Electric fruit presses; Electric fruit squeezers for household purposes; Electric garlic peeling machines; Electric graters; Electric fruit presses for household use; Electric ice crushing machines; Electric fruit presses for industrial purposes; Electric juice extractors; Electric juicers; Electric knife sharpeners; Electric knives; Electric hand-held mixers for household purposes; Electric meat grinders; Electric mixers; Electric infant formula mixers for household use; Electric noodle making machines; Electric pasta making machines; Electric pepper mills; Electric pizza cutters; Electric salt mills; Electric scissors; Electric steam mops for household purposes; Electric vacuum food sealers for household purposes; Electric pasta makers for domestic use; Electric vegetable peelers; Electric pasta makers for household purposes; Electric whisks for household purposes; Electrical coffee grinders; Electrical juice extractors for fruit; Electrical squeezers for fruit and vegetable; Electrically-powered kitchen appliance for dicing, mincing, slicing and chopping food; Food processors, electric; Food waste disposers; Fruit core removing machines; Fruit presses, electric, for household purposes; Fruit washing machines; Garbage disposal machines; Garbage disposals; Grating machines for vegetables; Juice machines; Kitchen grinders, electric; Kitchen machines, namely, electric standing mixers; Knife grinding machines; Knives, electric; Meat and food grinder attachments for electric mixers for household use; Motors and pumps for refrigerators and freezers; Multi-purpose, electric countertop food preparation apparatus, namely, a combination meat tenderizer and marinator, for household use; Non-aerated beverage making machines; Hand-held electric-powered food processors; Packaging machines for food; Power-operated coffee grinders; Power-operated meat grinders; Pulping machines; Reverse osmosis pumps; Robotic vacuum cleaners; Sifting machines; Soda-pop making machines; Tea processing machines; Tin openers, electric; Vacuum cleaners; Vacuum cleaners for household purposes; Vegetable core removing machines; Vegetable grating machines; Vegetable spiralizers, electric; Wet-dry vacuums; Whisks, electric, for household purposesClass 007 for Aerators being machines; Apparatus for aerating beverages; Apparatus for aerating water; Automatic industrial labeling machines for applying labels to containers and bottles; Automatic packing machines for food; Bagging machines; Beverage processing machines; Bottle capping machines for food and beverages; Bread cutting machines; Can openers, electric; Coffee extracting machines; Coffee grinders, other than hand-operated; Compressors for air conditioners; Cordless vacuum cleaners; Dough kneading machines for household purposes; Electric brooms; Electric can openers; Electric cherry pit removing machines; Electric coffee grinders; Electric compressors; Electric cordless sweepers; Electric egg beaters; Electric floor polishing machines and apparatus; Electric flour sifters; Electric food blenders, not handheld; Electric food choppers; Electric food grinders; Electric food preparation apparatus, namely, tumblers for marinating food; Electric food processors; Electric food slicers; Electric fruit peelers; Electric fruit presses; Electric fruit squeezers for household purposes; Electric garlic peeling machines; Electric graters; Electric ice crushing machines; Electric juice extractors; Electric juicers; Electric knife sharpeners; Electric knives; Electric meat grinders; Electric mixers; Electric noodle making machines; Electric pasta making machines; Electric pepper mills; Electric pizza cutters; Electric salt mills; Electric scissors; Electric steam mops for household purposes; Electric vacuum food sealers for household purposes; Electric vegetable peelers; Electric whisks for household purposes; Electrical coffee grinders; Electrical juice extractors for fruit; Electrical squeezers for fruit and vegetable; Electrically-powered kitchen appliance for dicing, mincing, slicing and chopping food; Food processors, electric; Food waste disposers; Fruit core removing machines; Fruit presses, electric, for household purposes; Fruit washing machines; Garbage disposal machines; Garbage disposals; Grating machines for vegetables; Juice machines; Kitchen grinders, electric; Kitchen machines, namely, electric standing mixers; Knife grinding machines; Knives, electric; Meat and food grinder attachments for electric mixers for household use; Motors and pumps for refrigerators and freezers; Multi-purpose, electric countertop food preparation apparatus, namely, a combination meat tenderizer and marinator, for household use; Non-aerated beverage making machines; Packaging machines for food; Power-operated coffee grinders; Power-operated meat grinders; Pulping machines; Reverse osmosis pumps; Robotic vacuum cleaners; Sifting machines; Soda-pop making machines; Tea processing machines; Tin openers, electric; Vacuum cleaners; Vacuum cleaners for household purposes; Vegetable core removing machines; Vegetable grating machines; Vegetable spiralizers, electric; Wet-dry vacuums; Whisks, electric, for household purposes
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided

Correspondence Information (current):
      GWENN ROOS
      PRIMARY EMAIL FOR CORRESPONDENCE: grooslaw@hotmail.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Gwenn Roos
      PRIMARY EMAIL FOR CORRESPONDENCE: grooslaw@hotmail.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

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).

FEE(S)
Fee(s) in the amount of $150 is being submitted.

SIGNATURE(S)

Signature: /geroos/      Date: 05/31/2021
Signatory's Name: Gwenn Roos
Signatory's Position: Attorney Of Record (MA)
Signatory's Phone Number: 7818880424


Response Signature
Signature: /geroos/     Date: 05/31/2021
Signatory's Name: Gwenn Roos
Signatory's Position: Attorney of Record (MA)

Signatory's Phone Number: 7818880424 Signature method: Signed directly within the form

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:    GWENN ROOS
   ONSIDECOUNSEL/LAW OFFICE OF GWENN ROOS
   
   26 BROOKDALE AVENUE
   WELLESLEY, Massachusetts 02482
Mailing Address:    Gwenn Roos
   ONSIDECOUNSEL/LAW OFFICE OF GWENN ROOS
   26 BROOKDALE AVENUE
   WELLESLEY, Massachusetts 02482
        
PAYMENT: 90116606
PAYMENT DATE: 05/31/2021
        
Serial Number: 90116606
Internet Transmission Date: Mon May 31 10:38:20 ET 2021
TEAS Stamp: USPTO/POA-XXX.X.XXX.XXX-2021053110382051
4741-90116606-7802cd771d2dd151c631c889f8
55de132f5eb771a47e4c9dc2e9476e3473d45f4-
CC-38173271-20210531102818216757