Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

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- 1957

Approved for use through 11/30/2023. OMB 0651-0050

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90534837 PLAYSTORMING(Standard Characters, see http://uspto.report/TM/90534837/mark.png) has been amended as follows:

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

The Examining Attorney has refused registration of Applicant?s standard character PLAYSTORMING mark pursuant to Trademark Act Section 2(d), 15 U.S.C. ?1052(d) on the grounds that the mark is likely to be confused with PLAYSTORM TOYS in Registration No. 3133762. For the following reasons, Applicant respectfully disagrees with this finding and requests that the Examining Attorney reconsider the statutory refusal and allow registration of Applicant?s mark. Pursuant to Section 2 of the Lanham Act, 15 U.S.C.A. ? 1052, No trademark by which the goods of an applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it ? (d) consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office . . . as to be likely, when applied to the good of the applicant to cause confusion, or to cause mistake or to deceive . . . . 15 U.S.C.A. ? 1052. Likelihood of confusion is determined on a case-by-case basis by application of the factors identified in In re E.I. duPont DeNemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). Here, the differences in the parties? respective goods and services and the different commercial impressions created by the parties? respective marks confirm a lack of potential confusion. 1) The Differences in the Parties? Respective Goods and Services Obviate Any Confusion Applicant is seeking to register its mark for ?Educational services for adults, namely, developing, arranging, and conducting educational conferences, productions, and programs in the fields of brainstorming, decision-making enhancement, and experiential learning; Educational services for adults, namely, providing courses of instruction in the fields of brainstorming, decision-making enhancement, and experiential learning; Educational services for adults, namely, providing on-line digital products in the nature of non-downloadable webcasts, online non- downloadable videos, and virtual training programs in the fields of brainstorming and decision-making enhancement; Educational services for adults, namely, providing a learning and innovation center featuring fully customized leadership, motivational, educational, idea development and brainstorming training; Educational services for adults, namely, providing training programs, workshops, educational events in the nature of educational conferences, and online non-downloadable video productions in the fields of brainstorming, decision-making enhancement collaboration and experiential learning.? On their face, the services of Applicant are distinct from the goods of Registrant in terms of their intended consumers. Registrant?s range of toys are clearly intended for children. On the contrary, Applicant?s goods are specifically designed for and targeted to adults. In fact, they would be inappropriate for children. As such, there is little proximity between the parties? respective goods and services, and the parties can safely co-exist without a hint of possible consumer confusion. In Sunenblick v. Harrell, 895 F. Supp. 616, 628 (S.D.N.Y. 1995), aff?d without op., 101 F.3d 684 (2d Cir. 1996), the court found no likelihood of confusion between the senior user?s mark UPTOWN RECORDS, used as a label for jazz recordings, and the junior user?s mark MCA/UPTOWN RECORDS, used as a label for rap recordings, primarily based upon the differences in proximity between the two products: Although the products are sold in the same channels of trade, they are not sold side-by-side; rather, they are featured in different sections of the stores in which they are sold, according to genre and not by label name. Hence, absent any evidence that consumers of one will be potential consumers of the other, it is most likely that the consumer entering a record store with the intention of purchasing one of [plaintiff?s] products would not even see defendants? products, much less the trademarks appearing thereon. Id. at 629-30 (emphasis added). See also Inc. Pub. Corp. v. Manhattan Magazine, 227 U.S.P.Q. 257 (S.D.N.Y. 1985) (lack of product proximity and audience appeal reduced likelihood of confusion between two competing business publications). Second, in Inc. Pub Corp., the publisher of ?Inc.? magazine, a business-oriented publication, was denied a preliminary injunction against defendant?s publication of ?Manhattan inc.? magazine, a regional business publication, because: The magazines are the same size. Both appear monthly. Both deal in a general sense with the world of ?business?; at least ?Manhattan, inc.? does so in part. Both appeal to a sophisticated readership. The demographic studies in evidence show that readers of both magazines tend to be well educated, affluent, and commercially successful. The parties contend for shadings of difference, but the demographics show more similarities than differences. Both magazines attract upscale advertisers. ?Inc.? sells for $3.00 at the newsstands, and ?Manhattan, inc.? for $2.95. But the differences in editorial content, style, geographical distribution and audience appeal, which we may collect under the caption ?Product Proximity,? are significant and readily apparent, and reduce the likelihood of confusion as to the source of these competing publications. 616 F. Supp. at 384-85 (emphasis added). Finally, in Information Clearing House, the court found no likelihood of confusion between the senior user?s mark ?Find/SVP,? used as the title for specialized business and industrial publications, and the junior user?s mark ?Find Magazine,? used as the title of a family-oriented publication, based on, inter alia, the difference in the proximity of the products. 492 F. Supp. at 164. According to the court: After considering the topics covered by the parties? respective publications, their prices, methods of distribution and intended and actual readerships, the Court concludes that they appeal to different customers, are sold in entirely different markets, exist for distinct purposes, and thus, are in no sense proximate products. Id. Such is the case here. Moreover, Applicant has decided not to sell, and has deleted from the identification of services, the ?educational workbooks? that the Examiner contends are sold by entities that also sell ?educational toys.? To the extent that some entities sell both ?educational toys? and ?educational videos,? Applicant?s services are easily distinguished by their subject matter which focuses on the fields of brainstorming and decision-making enhancement, skills which are not offered by any of the entities identified by the Examiner. 2) The Parties? Marks are Sufficiently Different This DuPont factor examines ?the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.? In re duPont, 177 U.S.P.Q. at 567 (emphasis added). The vast difference in commercial impression of the marks is a significant factor. The Examiner notes that Applicant?s mark is ?a take on the term BRAINSTORMING.? However, the use of the term ?toys? in Registrant?s marks creates a commercial impression that is not likely to be confused with the impression created by Applicant?s mark, particularly when used in connection with Applicant?s intended services. When considering a likelihood of confusion, even descriptive or disclaimed matter cannot be ignored. Tektronix, Inc. v. Daktronics, Inc., 189 U.S.P.Q. 693 (C.C.P.A. 1976); In re El Torito Restaurants Inc., 9 U.S.P.Q.2d 2002 (T.T.A.B. 1988); In re Equitable Bancorporation, 229 U.S.P.Q. 709 (T.T.A.B. 1986). Applicant?s services?focused as they are on brainstorming and decision-making enhancement?could not be considered ?toys? in any sense of that word. Moreover, the inclusion of the term ?toys? in Registrant?s mark creates a connotation of the term ?playstorm? that is more akin to a tempestuous manner of play than the open- minded creativity connoted by the term ?brainstorm.? Accordingly, the marks are sufficiently different in commercial impression such that confusion is not likely. For the reasons stated above, Applicant respectfully requests that the Examining Attorney reconsider his Section 2(d) refusal.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 041 for Educational services, namely, developing, arranging, and conducting educational conferences and programs and providing courses of instruction in the field of brainstorming, decision-making enhancement and experiential learning; Educational services, namely, providing on-line digital products, webcasts, videos, and virtual training programs in the field of brainstorming and decision-making enhancement; Educational services, namely, providing a learning and innovation center featuring fully customized leadership, motivational, educational, and brainstorming training; Educational services, namely, providing training programs, workshops, events, workbooks, and videos in the fields of brainstorming, decision-making enhancement and experiential learning
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date. For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: 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: Educational services, namely, developing, arranging, and conducting educational conferences and programs and providing courses of instruction in the field of brainstorming, decision-making enhancement and experiential learning; Educational services for adults, namely, developing, arranging, and conducting educational conferences, productions, and programs in the fields of brainstorming, decision-making enhancement and experiential learning; Educational services, namely, providing on-line digital products, webcasts, videos, and virtual training programs in the field of brainstorming and decision-making enhancement; educational services for adults, namely, providing courses of instruction in the fields of brainstorming, decision-making enhancement and experiential learning; Educational services, namely, providing a learning and innovation center featuring fully customized leadership, motivational, educational, and brainstorming training; Educational services for adults, namely, providing on-line digital products in the nature of non-downloadable webcasts, online non-downloadable videos, and virtual training programs in the fields of brainstorming and decision-making enhancement; Educational services, namely, providing training programs, workshops, events, workbooks, and videos in the fields of brainstorming, decision-making enhancement and experiential learning; Educational services for adults, namely, providing a learning and innovation center featuring fully customized leadership, motivational, educational, idea development, and brainstorming training; Educational services for adults, namely, providing training programs, workshops, educational events in the nature of educational conferences, and online non-downloadable video productions in the fields of brainstorming, decision-making enhancement, and experiential learningClass 041 for Educational services for adults, namely, developing, arranging, and conducting educational conferences, productions, and programs in the fields of brainstorming, decision-making enhancement and experiential learning; educational services for adults, namely, providing courses of instruction in the fields of brainstorming, decision-making enhancement and experiential learning; Educational services for adults, namely, providing on-line digital products in the nature of non-downloadable webcasts, online non-downloadable videos, and virtual training programs in the fields of brainstorming and decision-making enhancement; Educational services for adults, namely, providing a learning and innovation center featuring fully customized leadership, motivational, educational, idea development, and brainstorming training; Educational services for adults, namely, providing training programs, workshops, educational events in the nature of educational conferences, and online non-downloadable video productions in the fields of brainstorming, decision-making enhancement, and experiential learning
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date. For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: 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


OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Daniela Plattner, a citizen of United States, having an address of
      c/o Palm Ventures: 19 W Elm St
      Greenwich, Connecticut 06830
      United States
      Email Address: XXXX
      203-302-7000
      203-302-7001
Proposed: Daniela Plattner, a citizen of United States, having an address of
      19 W Elm Street
      Greenwich, Connecticut 06830
      United States
      Email Address: XXXX
      203-302-7000
      203-302-7001

The owner's/holder's proposed attorney information: Jessica S. Rutherford. Jessica S. Rutherford of Ferdinand IP, LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1221 Post Road East
      Westport, Connecticut 06880
      United States
is appointed to submit this Response to Office Action Form on behalf of the applicant.
      The phone number is 2035574224.
      The email address is jrutherford@fiplawgroup.com

Jessica S. Rutherford 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):
      DANIELA PLATTNER
      PRIMARY EMAIL FOR CORRESPONDENCE: mwiant@snet.net
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): daniela@danielaplattner.com
Correspondence Information (proposed):
      Jessica S. Rutherford
      PRIMARY EMAIL FOR CORRESPONDENCE: jrutherford@fiplawgroup.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): daniela@danielaplattner.com; betha@fiplawgroup.com

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: /Jessica S. Rutherford/     Date: 03/28/2022
Signatory's Name: Jessica S. Rutherford
Signatory's Position: Attorney of Record, Connecticut bar member

Signatory's Phone Number: 2035574224 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:    DANIELA PLATTNER
   
   
   C/O PALM VENTURES: 19 W ELM ST
   GREENWICH, Connecticut 06830
Mailing Address:    Jessica S. Rutherford
   Ferdinand IP, LLC
   1221 Post Road East
   Westport, Connecticut 06880
        
Serial Number: 90534837
Internet Transmission Date: Mon Mar 28 20:38:48 ET 2022
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20220328203848149
149-90534837-800613658472cf5774ac4dcd241
b434a7472676e392abbe9131fe12076214f85aa-
N/A-N/A-20220328201849877698