IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
________________________________________________________________________
Applicant: Brooks, Alisha Quiona

Serial No.: 77621743 Filed: November 25,, 2008

Trademark Atty: Jeffrey J. Look

Word Mark: DREAM LITTLE
TTLE DREAMER
________________________________________________________________________

37 C.F.R. § 1.8 CERTIFICATE OF TRANSMISSION

I hereby certify that this correspondence is being electronically submitted via Trademark Electronic
Application System (TEAS): August 26, 2009 (date of transmission).

Bambi Faivre Walters
Name of Person Faxing This Paper

Signature

August 26, 2009
Date of Transmission
________________________________________________________________________
_______________________________________________________________________

AMENDMENT AND RESPONSE
TO FEBRUARY 226, 2009, OFFICE ACTION
________________________________________________________________________

This Amendment and Response (“Response”) is filed in reply to the Office Action
mailed on February 26,, 2009
2009. The Applicant respectfully submits the following
Response. Applicant submits that the above-identified trademark application for
DREAM LITTLE DREAMER is in condition for allowance.

Applicant responds as follows:

Potential Section 2(d) Refusal – Likelihood of Confusion

Applicant submits a preliminary response to the potential section 2(d) refusal;
however, Applicant reserves all rights to provide a detailed and more descriptive
response if Trademark Attorney Jeffrey J. Look raises a Section 2(d) refusal in a
subsequent Office Action.

Preliminary Response with Reservation of Rights

Attorney Look asserts that there is a likelihood of confusion between Applicant’s
mark DREAM LITTLE DREAMER and the mark LIL’ DREAMERZ, U.S. Registration
No. 3470489. “[T]he question of confusion is related not to the nature of the mark but to
its effect ‘when applied to the goods of the applicant.’” In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 1360, 177 USPQ 563, 566 (C.C.P.A. 1973). The United States
Court of Customs and Patent Appeals listed thirteen factors to weigh in the likelihood of
confusion analysis and stated that all of the factors must be considered “when of record.”
Id. at 1361. Of the thirteen factors, the Examining Attorney mentioned only three:
similarity of the marks, similarity of the goods and/or services, and similarity of trade
channels of the goods and/or services, and analyzed only two of these thirteen factors.
When all factors are weighed, however, at least ten of the thirteen factors weigh against
the existence of a likelihood of confusion in this case, and the other factors are neutral.
Applicant asserts that registration of mark DREAM LITTLE DREAMER will not result
in consumer confusion based on the following factors.
(1) Similarity of Conflicting Designations

As noted by Attorney Look, “[i]n a likelihood of confusion determination, the
marks are compared for similarities in their appearance, sound, meaning or connotation
and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361,
177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b).” Applicant contends that the
appearance, sound, meaning, and commercial impression differ between the marks, and
thus do not result in a likelihood of consumer confusion.

Notable differences exist between DREAM LITTLE DREAMER and LIL’
DREAMERZ. The “Z” stands out in the Registrant’s mark as seemingly out of place
because it is a misspelling of the word “dreamers” and will immediately visually jump
out at readers of the mark. The “Z” also differentiates the sounds of the two marks by
pluralizing the word “dreamer” in Registrant’s mark, giving the impression of a group of
little dreamers, whereas Applicant’s mark evokes the impression that it is directed at an
individual. Applicant’s mark is further differentiated from Registrant’s mark by the use
of the term “LITTLE” as opposed to Registrant’s use of the abbreviated form of
“LITTLE,” namely, “LIL.”

The addition of the word “dream” in Applicant’s mark also differentiates
DREAM LITTLE DREAMER from LIL’ DREAMERZ. Attorney Look concedes that
“‘Dream’ in front of ‘LITTLE DREAMER’ emphasizes the meaning of the dominant
element, namely, it is a command for the Little Dreamer to do exactly that, dream.” In
Applicant’s mark the dominant word is “dream” as used as an intransitive verb in an
imperative sentence. Consumers will read the dominant word in the mark as a command
to “have a dream or dreams,” “have a deep aspiration,” or “have a daydream.” See
Exhibit A. The mark LIL’ DREAMERZ, by contrast, solely uses the noun form of the
word “dream.” As such, the dominant word in Applicant’s mark is not used in the same
form in Registrant’s mark. Applicant’s mark is a command, telling the subject, “LITTLE
DREAMER” to “DREAM.” Registrant’s mark is comprised of an adjective-noun pair
that refers to children who dream. Because consumers will easily identify that
Applicant’s mark is a command, and not a subject, they will perceive a different meaning
and commercial impression from Applicant’s and Registrant’s marks.

For the above reasons, this factor weighs against a finding of a likelihood of
confusion.

(2) Similarity or Dissimilarity and the Nature of the Goods or Services

The second factor is the similarity or dissimilarity and the nature of the goods or
services as described in an application or registration or in connection with a prior use of
the mark. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563,
567 (C.C.P.A. 1973). As amended (see below), Applicant has applied for use of its mark
in connection with “[h]ard copy media and promotional products namely children’s
books, coloring books, posters, calendars, activity books, note cards, educational cards,
packaging and other materials namely, paper bags and sacks, paper party bags, paper gift
bags, gift boxes, stationery boxes, and paper boxes.” Registrant has applied for its mark
to use in connection with “paper goods and printed materials, namely, bumper stickers,
game entry tickets, decals, memo pads, note paper, baseball cards, event programs,
magazines featuring baseball and sports, coloring books, post cards, paper pennants, and
calendars.” The only item that is the same on these two lists is coloring books, which is a
minimal and inconsequential overlap. Moreover, the Registrant’s identification makes
clear that the products on which it uses its mark are specifically sports related.

For these reasons and others, this factor weighs against a finding of a likelihood
of confusion.

(3) Similarity or Dissimilarity of Established Likely to Continue Trade
Channels

The third factor is the similarity or dissimilarity of established likely to continue
trade channels. In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361, 177 USPQ at
567. Applicant operates under the mark DREAM LITTLE DREAMER on the internet,
which currently is the primary trade channel for the goods. Registrant’s mark does not
come up in the results of the major search engines, including Google, Yahoo, and Bing,
and does not appear to operate on the internet or sell or promote its goods on the internet.
See Exhibit B. Because the two parties do not appear to use similar trade channels, this
factor weighs against a finding of a likelihood of confusion.

(4) Conditions under which and Buyers to Whom Sales Are Made

The fourth factor is the conditions under which and buyers to whom sales are
made (i.e., impulse v. careful). Id. Both the Applicant’s and the Registrant’s goods are
smaller, less expensive items, therefore it is likely that less care is generally shown by the
consumer in purchasing. The goods sold by Applicant, however, are targeted toward
young children, and the purchaser is most likely to be the parents. When choosing goods
to buy for their children, parents tend to take great care in evaluating the quality and
source of the goods. Additionally, the Applicant’s products are sold over the internet,
and consumers generally scrutinize their purchases more closely because of the threat of
identity theft or scams. Applicant does not have information regarding the conditions
under which Registrant’s products are sold or to whom, but reserves the right to address
this issue at a later time if the information becomes available. Considering the care that
consumers likely would take in evaluating Applicant’s goods, however, this factor
weighs against a finding of a likelihood of confusion.

(5) Fame of the Prior Mark

The fifth factor is the fame of the prior mark (e.g., sales, advertising, length of
use, etc.). Id. A web search on several of the major search engines for LIL’
DREAMERZ does not yield a result for Registrant’s mark, see Exhibit B, leading to the
conclusion that the mark is not famous. Applicant reserves the right to produce more
evidence on fame of the mark if it becomes available at a later time. This factor weighs
against a finding of a likelihood of confusion.
(6) Number and Nature of Similar Marks in Use on Similar Goods

The sixth factor is the number and nature of similar marks in use on similar
goods. Id. The dominant term in Registrant’s mark “DREAMERZ” is a term used
frequently in relation to children’s books, coloring books, posters, calendars, activity
books, note cards, educational cards, gift boxes, stationary boxes and other hardcopy
media and promotional products. See federally registered marks EVERDREAMER!,
THE DREAMER & THE MOON, I’M A DREAMER, AMERICAN DREAMER, BE A
DREAMER, BE A DREAMER TEAM, and BABY DREAMER in Exhibit C.
Moreover, a search of the Internet reveals a result for “dreamer” in relation to an
unregistered mark and similar products. See Exhibit D. As a result of the widespread use
of the term “dreamer” in connection with these goods consumers have been conditioned
to look at other elements of the mark to determine the source.

While Applicant’s mark, Registrant’s mark, and all of the above cited marks use
the noun form of the word “dreamer” indicating “one who dreams,” Applicant’s mark is
distinctive because of its use of the imperative form of the word “dream.” As a result of
the widespread use of the word “dreamer” in connection with related goods, emphasis
should be put on the term “DREAM” in Applicant’s mark, and this factor weighs against
a likelihood of confusion.

(7) Nature and Extent of Any Actual Confusion

The seventh factor concerns the nature and extent of any actual confusion. In re
E. I. du Pont de Nemours & Co., 476 F.2d at 1361, 177 USPQ at 567. Applicant is not
aware of any evidence of actual confusion, but Applicant has filed an intent to use
application, and as such, has not used the mark in commerce until recently.
Consequently, Applicant asserts that this factor is neutral in the likelihood of confusion
analysis.
(8) Length of Time During and Conditions under which There Has Been
Concurrent Use Without Evidence of Actual Confusion

The eighth factor is the length of time during and conditions under which there
has been concurrent use without evidence of actual confusion. Id. As stated above, the
two marks have not operated concurrently yet, so this factor is also neutral.

(9) Variety of Goods on which a Mark Is or Is Not Used

The ninth factor is the variety of goods on which a mark is or is not used (house
mark, “family” mark, product mark). In re E. I. du Pont de Nemours & Co., 476 F.2d at
1361, 177 USPQ at 567. Registrant’s mark is used on a selected group of sports-related
items within two international classes, not on a large variety of goods. This factor weighs
against a finding of a likelihood of confusion.

(10) Market Interface Between Applicant and the Owner of a Prior Mark

The tenth factor is the market interface between Applicant and the owner of a
valid, prior mark. Id. In this case, there has been no interface between the Applicant and
the Registrant, and therefore this factor is also neutral.

(11) Extent to which Applicant has a Right to Exclude Others from Use of its
Mark on its Goods

The eleventh factor is the extent to which Applicant has a right to exclude others
from use of its mark on its goods. Id. Because Applicant’s mark is so distinctive from
the Registrant’s mark and the Applicant was the first to apply for registration of its mark
in connection with its type of goods, Applicant should be considered the senior user and
has a right to exclude others from use of its mark. This factor weighs against a likelihood
of confusion.
(12) Extent of Potential Confusion

The twelfth factor is the extent of potential confusion, i.e., whether de minimis or
substantial. Id. Because (1) the Applicant and the Registrant operate and market their
businesses in completely different ways, and (2) the goods are selective and
distinguishable, the potential for confusion is de minimis and weighs heavily against a
likelihood of confusion.

(13) Any Other Established Facts Probative of the Effect of Use

The thirteenth factor looks to whether there are any other established facts
probative of the effect of use. Applicant’s use of its goods is to inspire young people to
pursue their dreams, and they include a strong and important message. A quote from the
poem appearing on one of Applicant’s posters, see Exhibit E, sums up to intent of
Applicant’s products and is highly probative of the effect of use:

Just dream little Dreamer
That’s what Dreamers do
Dream little Dreamer
Of going to school
And all of the learning
You’ll learn how to do
Like reading and writing
And words to a song
Dream little Dreamer
And sing, sing along

Applicant reserves all rights to provide a detailed and more descriptive response
on this factor if Examining Attorney Look again raises a Section 2(d) refusal in a
subsequent Office Action.

Factors one, two, three, four, five, six, nine, eleven, twelve, and thirteen weigh
against a finding of a likelihood of confusion. Factors seven, eight, and ten are neutral in
this case. The Examining Attorney merely analyzed two of the thirteen factors, but when
a comprehensive analysis is undertaken, no likelihood of confusion exists.
Amendment of Identification of Goods

Applicant would like to amend her identification of the goods in connection with
her mark as follows:

International Class 016: Hard copy media and promotional products
namely children’s books, coloring books, posters, calendars, activity
books, note cards, s, educational cards, packaging and other materials
namely, paper bags and sacks, paper party bags, paper gift bags, gift
boxes, stationery boxes, and paper boxes.

Specimen and Declaration of Use

Applicant submits a specimen, attached as Exhibit E, and notes that at the same
time she submits her Response to the Office Action, she is filing a separate Amendment
to Allege Use containing the following information:
Applicant submits a specimen showing the mark used in commerce and a signed
declaration under 37 C.F.R. §2.20 that the specimen was in use in commerce at least as
early as March 2009.

Signature
August 26, 2009

CONCLUSION

Applicant respectfully submits in good faith that all refusals, rejections, and/or
objections have been overcome and that the applied for mark is in condition for
allowance.
If the Office has any questions, the Office is invited to contact the undersigned at
(757) 253-5729 (office), (757) 784
784-1978 (cellular), or [email protected]

Respectfully submitted,

Bambi F. Walters, Reg. No. 45,197
Attorney for Applicant
PO Box 5743
Williamsburg, VA 23188
Telephone: 757-253-5729
Date: August 26, 2009