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. 97177870 AZURE(Standard Characters, see http://uspto.report/TM/97177870/mark.png) has been amended as follows:

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

In the Office Action dated September 16, 2022, the Examining Attorney refused registration of Application Serial No. 97177870 for the mark AZURE (?Applicant?s Mark?) under Section 2(d) of the Lanham Act on the grounds that the mark is likely to be confused with Registration No. 6014722 for the mark ARMAZURE (hereinafter the ?Cited Mark?). The Applicant respectfully submits that the Applicant?s Mark is not confusingly similar to the Cited Mark. Section 1207.01 of the TMEP provides that ?[t]he issue is not whether the respective marks themselves, or the goods or services offered under the marks, are likely to be confused but, rather, whether there is a likelihood of confusion as to the source or sponsorship of the goods or services because of the marks used thereon. [Citing See, e.g., Paula Payne Prods. Co. v. Johnson?s Publ?g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (C.C.P.A. 1973) (" [T]he question is not whether people will confuse the marks, but rather whether the marks will confuse people into believing that the goods they identify emanate from the same source."); In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) ("[T]he . . . mistaken belief that [a good] is manufactured or sponsored by the same entity [as another good] . . . is precisely the mistake that ?2(d) of the Lanham Act seeks to prevent."); In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) ("The degree of ?relatedness? must be viewed in the context of all the factors, in determining whether the services are sufficiently related that a reasonable consumer would be confused as to source or sponsorship."). The test for likelihood of confusion between trademarks is a three-way test, including appearance, sound, and meaning. See e.g., Surfivor Media, Inc. v. Survivor Productions, 406 F.3d 625, 633, 74 U.S. P.Q.2d 1621 (9th Cir. 2005); Kos Pharmaceuticals, Inc. v. Andrx Crp., 369 F.3d 700, 713, 70 U.S.P.Q. 2d 1874 (3d Cir. 2004). It is submitted that the two subject marks do not have similar appearances, sounds, and meanings. The Office Action asserts there is a likelihood of confusion between the two marks ?because a significant portion of the applicant?s proposed mark has an identical sound, appearance, and meaning as that of the registered mark.? In comparing the marks, the Office Action improperly assumes ?In this case, the similar portion of both the applicant?s proposed mark and the registered mark is the identical term AZURE.? There is absolutely no reason to make this assumption. If there was a space between ARM and AZURE in the Cited Mark, that might be true. However, that is not the case. Without the space, there is no reason to assume that the appearance, sound, and meaning of the two marks similar. In fact, the owner of the Cited Mark views its pronunciation as being Arma- Zure. See attached specimen filed in the USPTO application for ARMAZURE on January 27, 2020. For all we know, the ARMA in ARMAZURE is short for Armada, or some other meaning, or no meaning at all. There are various possibilities, and certainly ARM-AZURE does not appear to be one of them. With that evidence from the owner of the Cited mark, we can see that the appearance, sound, and meaning of the marks are not confusingly similar. There is no reason to believe a consumer would be confused. There really are no similarities in appearance, sound, connotation, and commercial impression. That is simply an improper assumption in the Office Action. Marks must be viewed in their entireties, and it is improper to dissect a mark when engaging in the analysis of the similarity or dissimilarity of the marks. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). This is exactly what the Office Action has improperly done. While some confusion is always possible, there must be some threshold quantum that crosses from mere possibility into a likelihood or probability. Custom Mfg. Eng?g, Inc. v. Midway Servs., 508 F.3d 641, 651, 84 U.S.P.Q.2d 2009 (11th Cir. 2007.) Based on the analysis above, it is submitted that there is no likelihood of confusion between Applicant?s Mark and the Cited Mark.

EVIDENCE
Evidence has been attached: a specimen from the USPTO application file for the mark ARMAZURE.
Original PDF file:
evi_7619684185-2023031417 5536093312_._ArmaZure_spe cimen_-_6014722.pdf
Converted PDF file(s) ( 1 page) Evidence-1
Correspondence Information
      RUSSELL F. ROWEN
      PRIMARY EMAIL FOR CORRESPONDENCE: rrowen@twsglaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): alex@twsglaw.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: /Russell F. Rowen/     Date: 03/14/2023
Signatory's Name: Rowen, Russell F.
Signatory's Position: Attorney of Record

Signatory's Phone Number: 14154485000 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:    RUSSELL F. ROWEN
   THOMPSON WELCH SOROKO & GILBERT LLP
   SUITE 300
   3950 CIVIC CENTER DRIVE
   SAN RAFAEL, California 94903
Mailing Address:    Russell F. Rowen
   THOMPSON WELCH SOROKO & GILBERT LLP
   SUITE 300
   3950 CIVIC CENTER DRIVE
   SAN RAFAEL, California 94903
        
Serial Number: 97177870
Internet Transmission Date: Tue Mar 14 18:28:20 ET 2023
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2023031418282086
6910-97177870-850eca0b37a13ea8c82fc95f54
2294e07db66981a7dfe810698aac10c96b17eff-
N/A-N/A-20230314175536093312