| 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 |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 97612446 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/97612446/mark.png |
| LITERAL ELEMENT | T PORTAL |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
The color(s) red, black, and green is/are claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of a stylized figure having a body comprising a "t" like shape, with circles surrounding the lower half of the figure's body, and the head having a crown-like appearance, and having a single eye. The body and rings are colored red, and the eye is colored green. The background of the mark is transparent. Underneath the stylized figure is the stylized word PORTAL with a stylized coil design for the letter "A". |
| ARGUMENT(S) | |
|
This responds to the office action dated March 21, 2023. Likelihood of Confusion Refusal The Examining Attorney has refused registration of the mark PORTAL and Design for likelihood of confusion under Section 2(d). The Examining Attorney cites the following third party registration:
Applicant respectfully submits that there should be no likelihood of confusion between Applicant’s mark and the cited registered mark, in view of the arguments and case law set forth below. Analysis of Likelihood of Confusion Factors Various factors should be considered under a likelihood of confusion analysis, if relevant evidence material to such factors is available. TMEP §1207.01. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Applicant presents arguments and case law in establishing that there should be no likelihood of confusion of Applicant’s mark with the cited registration. Applicant’s mark consists most prominently of a highly stylized design consisting of a mythical figure comprising an essentially stick figure body having concentric rings around its lower body with a crown-like head whose face forms a single eye. The design is colored prominently in red. While Applicant’s mark does include the word “Portal”, even that has a unique stylized design in which the letters “PORT” appear spaced apart from the letter “L” by a stylized letter “A”. It is this collection of features forming the appearance of Applicant’s mark that distinguishes substantially from the cited registration. The Federal Circuit has stated that in the analysis of likelihood of confusion, when considering compared marks “…in their entireties, it is entirely appropriate to accord greater importance to the more distinctive elements in the marks”. In re Nat’l Data Corp., 224 USPQ 749, 751 (Fed. Cir. 1985). In In re Covalinski, 113 USPQ2d 1166 (TTAB 2014), the Board reversed an examiner’s likelihood of confusion refusal for the mark REDNECK RACEGIRL over the third party registration for RACEGIRL for overlapping identical goods, finding that the overall commercial impression of the mark REDNECK RACEGIRL was dominated by its design features. As in the Covalinski case, Applicant’s highly stylized design provides a dominant and distinguishing aspect of the overall mark giving it an appearance that is substantially different from the plain wording PORTAL COCKTAILS of the cited mark. In comparing similarity between marks, each mark should be perceived in its entirety, and “all components thereof must be given appropriate weight.” In re
Hearst Corp., 25 USPQ2d 1238 (Fed. Cir. 1992). An appropriate analysis of Applicant’s mark should therefore consider the stylized design elements in the context of the overall mark and how they
help distinguish Applicant’s mark from the cited registration rather than just focusing on the coincidental usage of the word “Portal” in the respective marks. Accordingly, Applicant’s mark is
dissimilar in its overall appearance and commercial impression from the mark of the cited registration.
|
|
| ADDITIONAL STATEMENTS SECTION | |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of a stylized figure having a body comprising a "t" like shape, with circles surrounding the lower half of the figure's body, and the head having a crown-like appearance, and having a single eye. The body and rings are colored red and outlined in black, and the eye is colored green with a black pupil. The white background of the mark is a transparent area that is not part of the mark. Underneath the stylized figure is the stylized word PORTAL with a stylized coil design for the letter "A", all in black. |
| CORRESPONDENCE INFORMATION | |
| NAME | GLENN K. ROBBINS II |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | sfaction@spencerfane.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | grobbins@spencerfane.com |
| DOCKET/REFERENCE NUMBER | 5025815-34 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /glenn k robbins ii/ |
| SIGNATORY'S NAME | Glenn K. Robbins II |
| SIGNATORY'S POSITION | Attorney of Record, Missouri Bar Member |
| SIGNATORY'S PHONE NUMBER | 314-333-3932 |
| DATE SIGNED | 05/22/2023 |
| ROLE OF AUTHORIZED SIGNATORY | Authorized U.S.-Licensed Attorney |
| SIGNATURE METHOD | Sent to third party for signature |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon May 22 15:57:39 ET 2023 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20230522155739813668-976 12446-850b2d48d737f33b472 14e55615d35f8873992934691 b4da9e06394144a86115f-N/A -N/A-20230522151312816409 |
| 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 |
This responds to the office action dated March 21, 2023.
Likelihood of Confusion Refusal
The Examining Attorney has refused registration of the mark PORTAL and Design for likelihood of confusion under Section 2(d). The Examining Attorney cites the following third party registration:
PORTAL COCKTAILS (Reg. No. 6,076,583)
Services: Bar services; Taproom services featuring beer, wine, and specialty cocktails
Applicant respectfully submits that there should be no likelihood of confusion between Applicant’s mark and the cited registered mark, in view of the arguments and case law set forth below.
Analysis of Likelihood of Confusion Factors
Various factors should be considered under a likelihood of confusion analysis, if relevant evidence material to such factors is available. TMEP §1207.01. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Applicant presents arguments and case law in establishing that there should be no likelihood of confusion of Applicant’s mark with the cited registration.
Applicant’s mark consists most prominently of a highly stylized design consisting of a mythical figure comprising an essentially stick figure body having concentric rings around its lower body with a crown-like head whose face forms a single eye. The design is colored prominently in red. While Applicant’s mark does include the word “Portal”, even that has a unique stylized design in which the letters “PORT” appear spaced apart from the letter “L” by a stylized letter “A”. It is this collection of features forming the appearance of Applicant’s mark that distinguishes substantially from the cited registration.
The Federal Circuit has stated that in the analysis of likelihood of confusion, when considering compared marks “…in their entireties, it is entirely appropriate to accord greater importance to the more distinctive elements in the marks”. In re Nat’l Data Corp., 224 USPQ 749, 751 (Fed. Cir. 1985). In In re Covalinski, 113 USPQ2d 1166 (TTAB 2014), the Board reversed an examiner’s likelihood of confusion refusal for the mark REDNECK RACEGIRL over the third party registration for RACEGIRL for overlapping identical goods, finding that the overall commercial impression of the mark REDNECK RACEGIRL was dominated by its design features. As in the Covalinski case, Applicant’s highly stylized design provides a dominant and distinguishing aspect of the overall mark giving it an appearance that is substantially different from the plain wording PORTAL COCKTAILS of the cited mark.