| PTO- 1822 |
| 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 |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 90688767 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/90688767/mark.png |
| LITERAL ELEMENT | ICON |
| 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. |
| PENDING SERIAL NUMBER(S) | |
| Serial number(s) 90/433,340 and 90/432,963 should not be used as a citation(s) under Section 2(d), in the event that said serial number(s) mature(s) into a registration(s). The applicant hereby requests removal of this application from suspension, based on the following arguments. If the examining attorney is not persuaded by these arguments, the applicant hereby requests that this application be returned to suspended status, awaiting ultimate disposition of the referenced serial number(s). | |
| ARGUMENT(S) | |
|
NOTICE OF SUSPENSION RESPONSE: ICON (Ser. No. 90/688,767) In the Suspension Notice dated January 6, 2022 (the “Office Action”), the application filed by First Choice Sourcing Solutions, LLC (the “Applicant”) to register the mark ICON (the “Mark”) for use in connection with “tires” (the “Applicant’s Goods”) was suspended until prior pending Application Serial Nos. 90/433,340 and 90/432,963 (the “Prior Pending Applications”) filed by Icon Vehicle Dynamics LLC (the “Cited Applicant”) either register or abandon. As set out below, Applicant requests the suspension be lifted and the application be approved for publication. I. THE MARK AND THE CITED APPLICANT’S MARKS ARE NOT LIKELY TO BE CONFUSED. The test for a likelihood of confusion evaluates thirteen separate factors. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (C.C.P.A. 1973). One such factor is the existence of a consent agreement. In fact: When those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won’t. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not. In re E. I. du Pont de Nemours & Co., 476 F.2d at 1363. The Applicant and the Cited Applicant have entered into a Consent Agreement whereby the Cited Applicant consents to Applicant's use and registration of the Mark. A copy of the Consent Agreement is attached to this Response to Letter of Suspension. In the Consent Agreement, the parties have undertaken arrangements to avoid confusing the public and to cooperate to avoid any actual or likely confusion in the future. The parties will continue monitoring use of the respective trademarks for modification in usage and evidence of actual confusion. These express acknowledgements should be given great weight pursuant to TMEP 1207.01(d)(viii) and weigh strongly in favor of a finding that there is no likelihood of confusion. Further, the Court of Appeals for the Federal Circuit has made it clear that consent agreements should be given great weight, and that the Office should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other factors clearly dictate a finding of likelihood of confusion. Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270 (Fed. Cir. 1988); Bongrain International (American) Corp. v. Delice de France Inc., 811 F.2d 1479 (Fed. Cir. 1987); and In re N.A.D. Inc., 754 F.2d 996 (Fed. Cir. 1985). Such reasons do not exist here. II. CONCLUSION For all of the reasons set forth above, Applicant respectfully requests that the Office withdraw the current suspension on review and approve the Mark and its application for publication. |
|
| ARGUMENT FILE NAME(S) | |
| ORIGINAL PDF FILE | PE_7316895168-112743076_. _ICON_CONSENT_AGREEMENT.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\906\887\90688767\xml4\ RSI0002.JPG |
| \\TICRS\EXPORT18\IMAGEOUT 18\906\887\90688767\xml4\ RSI0003.JPG | |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | LOUIS T. PERRY |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | trademark@faegredrinker.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | louis.perry@faegredrinker.com; abe.shanehsaz@faegredrinker.com; patricia.odonoghue@faegredrinker.com |
| DOCKET/REFERENCE NUMBER | 385628 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Louis T. Perry |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | trademark@faegredrinker.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | louis.perry@faegredrinker.com; abe.shanehsaz@faegredrinker.com; linda.prainito@faegredrinker.com |
| DOCKET/REFERENCE NUMBER | 385628 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Abe J. Shanehsaz/ |
| SIGNATORY'S NAME | Abe Jentry Shanehsaz |
| SIGNATORY'S POSITION | Attorney of Record, Indiana bar member |
| SIGNATORY'S PHONE NUMBER | 317-237-1029 |
| DATE SIGNED | 10/20/2022 |
| ROLE OF AUTHORIZED SIGNATORY | Authorized U.S.-Licensed Attorney |
| SIGNATURE METHOD | Sent to third party for signature |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Oct 20 12:30:21 ET 2022 |
| TEAS STAMP | USPTO/RSI-XX.XXX.XX.XXX-2 0221020123021806786-90688 767-80051ca49aa373a86d45a 7d784667229248c9117a1b8bc f25a3d3ac3bdfe5d26-N/A-N/ A-20221020112743076565 |
| PTO- 1822 |
| 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 |
NOTICE OF SUSPENSION RESPONSE: ICON
(Ser. No. 90/688,767)
In the Suspension Notice dated January 6, 2022 (the “Office Action”), the application filed by First Choice Sourcing Solutions, LLC (the “Applicant”) to register the mark ICON (the “Mark”) for use in connection with “tires” (the “Applicant’s Goods”) was suspended until prior pending Application Serial Nos. 90/433,340 and 90/432,963 (the “Prior Pending Applications”) filed by Icon Vehicle Dynamics LLC (the “Cited Applicant”) either register or abandon. As set out below, Applicant requests the suspension be lifted and the application be approved for publication.
I. THE MARK AND THE CITED APPLICANT’S MARKS ARE NOT LIKELY TO BE CONFUSED.
The test for a likelihood of confusion evaluates thirteen separate factors. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (C.C.P.A. 1973). One such factor is the existence of a consent agreement. In fact:
When those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won’t. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not.
In re E. I. du Pont de Nemours & Co., 476 F.2d at 1363. The Applicant and the Cited Applicant have entered into a Consent Agreement whereby the Cited Applicant consents to Applicant's use and registration of the Mark. A copy of the Consent Agreement is attached to this Response to Letter of Suspension. In the Consent Agreement, the parties have undertaken arrangements to avoid confusing the public and to cooperate to avoid any actual or likely confusion in the future.
The parties will continue monitoring use of the respective trademarks for modification in usage and evidence of actual confusion. These express acknowledgements should be given great weight pursuant to TMEP 1207.01(d)(viii) and weigh strongly in favor of a finding that there is no likelihood of confusion.
Further, the Court of Appeals for the Federal Circuit has made it clear that consent agreements should be given great weight, and that the Office should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other factors clearly dictate a finding of likelihood of confusion. Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270 (Fed. Cir. 1988); Bongrain International (American) Corp. v. Delice de France Inc., 811 F.2d 1479 (Fed. Cir. 1987); and In re N.A.D. Inc., 754 F.2d 996 (Fed. Cir. 1985). Such reasons do not exist here.
II. CONCLUSION
For all of the reasons set forth above, Applicant respectfully requests that the Office withdraw the current suspension on review and approve the Mark and its application for publication.
