Alliance Sports Group, L.P.
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
TNW REF. NO.: 2945-167.TM
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
APPLICANT: Alliance Sports Group, L.P.
SERIAL NO.: 76/719,011 )
FILED: February 19, 2016 )
) RESPONSE TO FIRST
MARK: TWYST ) OFFICE ACTION
INTL CLASS: 011 )
TNW REF. NO.: 2945-167.TM )
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
In response to the Office Action mailed June 6, 2016, please reconsider the above-
identified trademark application in view of the amendments provided below.
I. IDENTIFICATION OF GOODS
Alliance Sports Group, L.P. (Applicant) appreciates the suggestions made by the
Examining Attorney which Applicant has incorporated into its amendment. Please delete the
identification of goods in the application as filed and substitute therefor:
Flashlights in International Class 011.
Accordingly, Applicant believes the amended identification of goods is now acceptable.
II. LIKELIHOOD OF CONFUSION
The Examining Attorney raised a Section 2(d) objection against the applied-for-mark,
TWYST, U.S. Trademark Serial No. 76/719,011 (Applicants Mark), for likelihood of
confusion with two marks owned by Astro, Inc. (Registrant): (1) standard character mark
TWIST, U.S. Trademark Reg. No. 4,848,066 (Registrants Word Mark) and (2) stylized mark
TWIST, U.S. Trademark Reg. No. 4,895,551 (Registrants Stylized Mark) (collectively,
Registrants Marks). Applicant respectfully disagrees with the Section 2(d) objection for the
reasons set out below.
A. The Standard to Determine Likelihood of Confusion
Likelihood of confusion is evaluated case-by-case and by factors from In re E.I. duPont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Of the numerous duPont
Factors, those most relevant to this inquiry are: (1) the similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connotation and commercial impression; (2) the
similarity or dissimilarity and nature of the goods as described in the application or registration;
and (3) the similarity or dissimilarity of trade channels. Id.
In applying Section 2(d), the Trademark Trial and Appeal Board has observed that any of
the duPont Factors may play a dominant role from case to case. In re du Pont, at 567. In fact, a
single factor may be dispositive. Kellogg Co. v. Packed Enterprises Inc., 951 F.2d 330, 21
USPQ2d 1142 (Fed. Cir. 1991). It is, therefore, not improper to decide there is no likelihood of
confusion based solely on the dissimilarity of the marks or goods. Champagne Louis Roederer,
S.A. v. Delicato Vineyards, 148 F.3d 1373 (Fed. Cir. 1998).
1. Dissimilarity of the Marks
When marks are compared for similarity, [a]ll relevant facts pertaining to appearance,
sound, and connotation must be considered before similarity as to one or more of those factors
may be sufficient to support a finding that the marks are similar or dissimilar. TMEP §
1207.01(b) (quoting Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899
(Fed. Cir. 2000)). Similarity of the marks in only appearance, sound or connotation does not
automatically determine that the marks are confusingly similar. See In re Thor Tech, Inc., 90
USPQ2d 1634, 1635 (TTAB 2009); see also TMEP § 1207.01(b)(i). Rather, the determination is
made when marks are compared in their entireties, considering all relevant facts. TMEP §
Applicant does not dispute that Applicants Mark and Registrants Marks are
phonetically similar in sound. The Examining Attorney stopped her analysis of the similarity or
dissimilarity of the marks after noting this. However, Applicant submits that the appearance,
connotation and commercial impression are distinguishable between Applicants Mark and
Registrants Marks. Since the marks need to be compared in their entireties, this requires further
a) Dissimilarity in Appearance
The general rule is that marks may be similar even if one letter is substituted for another.
See TMEP § 1207.01(b)(ii); Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14 USPQ2d
1840 (Fed. Cir. 1990). Here, Applicants Mark is spelled with a Y (TWYST) and Registrants
Marks are spelled with an I (TWIST). Ordinarily this could make the marks similar in
appearance. However, TWYST seems quite different from TWIST, different enough so as to not
cause a likelihood of consumer confusion based on appearance.
The Y of TWYST stands out, almost jumps out, from the mark, whereas the I of
TWIST is more subtle and subdued. Additionally, TWYST does not contain a normal vowel,
merely the Y which is sometimes used as a vowel. In essence, Applicants Mark TWYST is a
mark without a vowel. This forces the consumer to think about how to pronounce the mark and
whether the mark has other connotations. Based on the foregoing, Applicant submits that
Applicants Mark and Registrants Marks are not similar in appearance and that there is no
likelihood of confusion.
b) Dissimilarity of Connotation and Commercial Impression
Connotation is the meaning of the mark. See In re duPont, at 567; TMEP §
1207.01(b)(v). A marks meaning is determined by the marks goods description. The
commercial impression is what the average consumer remembers concerning the mark. See In re
Assn of the U.S. Army, 85 USPQ2d 1264, 1267-68 (TTAB 2007); TMEP § 1207.01(b)(v).
Significantly, even marks that are identical in sound and/or appearance may create sufficiently
different commercial impressions when applied to the respective parties goods or services so
that there is no likelihood of confusion. TMEP § 1207.01(b)(v) (citing In re Sears, Roebuck &
Co., 2 USPQ2d 1312, 1314 (TTAB 1987)) (emphasis added).
Here the marks are TWYST (Applicants) and TWIST (Registrants). Applicant
concedes that the marks are similar in sound. Although Applicant believes the marks are not
similar in appearance, even if the Examining Attorney ultimately decides that they are, Applicant
contends that the connotations and commercial impressions are sufficiently different from each
other so that there is no likelihood of confusion.
Applicant submits that its mark TWYST connotes the flashlights ability to bend and
shape the light beam through various settings of Applicants product. Exhibit A. In contrast,
Registrants TWIST used with a light bulb connotes the twisting motion that is required to
secure a light bulb into a powered lighting socket. Applicant contends that these connotations
are distinct and different enough as to not cause a likelihood of confusion of Applicants Mark
and Registrants Marks.
As stated above, commercial impression is based on the recollection of the average
consumer. See In re Assn of the U.S. Army, 85 USPQ2d 1264, 1267-68 (TTAB 2007); TMEP §
1207.01(b)(v). As explained later in this response, the average consumer of Applicants Mark
and Registrants Marks is sophisticated. Sophisticated consumers are less likely to be confused
by marks that are somewhat similar.
Based on this argument and evidence, Applicant submits that Applicants Mark and
Registrants Marks are not so similar as to cause a likelihood of consumer confusion.
2. Dissimilarity of the Goods
Likelihood of confusion of goods is determined by the goods description as stated in the
application and registration at issue, not by how the marks are actually used. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed.
Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990)).
As amended above, Applicants Mark TWYST is for flashlights in International Class
11. Registrants Word Mark is for lighting apparatus, namely, lighting installations; lighting
fixtures in International Class 11. Registrants Stylized Mark is for light bulbs; lighting
apparatus, namely, lighting installations; lighting fixtures in International Class 11. Applicant
submits the following evidence in support of the contention that a flashlight is very different
from a lighting apparatus, installation, fixture, or light bulb.
The differences in the nature of the goods is paramount as well.
Goods description narrowed by namely, meaning that lighting apparatus is narrowed
to just lighting installations.
As defined in the Merriam Webster dictionary, a flashlight is a small electric light that
can be carried in your hand and that runs on batteries and a small battery-operated portable
electric light. Exhibit B. In contrast, an apparatus is a tool or piece of equipment used for
specific activities. Exhibit C. While it may be possible that this broad definition of apparatus
might include flashlight, Registrant purposely qualified apparatus with namely, lighting
installations. This narrowed the definition of apparatus. It therefore seems unlikely that a
flashlight is a lighting installation, since an installation is the act or process of making a
machine, a service, etc., ready to be used in a certain place. Exhibit D (emphasis added). This
definition connotes that the when Registrants product is in use, it is only in use in a particular
area, meaning the Registrants product is not portable. As previously stated, a flashlight is
portable, which a lighting installation is not. Further, the definition of fixture is something
(such as a light, toilet, sink, etc.) that is attached to a house or building and that is not removed
when the house or building is sold. Exhibit E (emphasis added). Again, fixture does not
connote portability, the antithesis of a portable flashlight.
While a light bulb may be able to be carried in your hand or be portable, a light bulb is
not, in and of itself, an electric light that runs on batteries. Therefore, a flashlight is not a light
Based on this evidence, it is clear that the normal meanings of the words in the goods
descriptions of Applicants Mark and Registrants Marks show the goods as distinct and
different. Therefore, Applicant submits that the goods are distinguishable and that no likelihood
of confusion exists.
3. Dissimilarity of the Trade Channels
Applicant contends that the goods are limited as to trade channels based on the
sophistication of the consumer. The Examining Attorney asserts that the goods descriptions do
not have any language denoting the consumer, so that all consumers are presumed the same for
all the marks.
a) Sophisticated Consumers
Registrants Marks goods are for smart light bulbs in a niche market. Registrants goods
are expensive, far more expensive than the normal light bulb. The Twist Light is an adaptive
LED light bulb that changes color with the suns natural patterns and retails $149 for two bulbs
and $449 for six bulbs. Exhibit F. At Walmart, buying two dimmable LED light bulbs would
cost around $10. Exhibit G. The Twist Speaker is an adaptive LED light bulb with a high-
quality AirPlay speaker built in and retails $149 for one bulb and $449 for three bulbs. Exhibit
H. Other LED speaker light bulbs sell for $149 for two bulbs. Exhibit I. Clearly this is a high-
end item in which a consumer would not mistake for a flashlight. A consumer looking for a light
bulb of this type would need to intend to buy this kind of light bulb, as it requires other
technology to operated, namely a smartphone application.
Consumers buying Applicants product are also sophisticated consumers. The TWYST
flashlight retails for $49.99. Exhibit A. Flashlights often range in price from $2 to $29. Exhibit
J. A consumer who is willing to pay $49.99 for a flashlight is unlikely to be confused as to the
origin of an LED light bulb using the Registrants Marks.
Based on the price differentials of the two types of goods compared to the standard
prices, it appears the consumers are sophisticated for both Applicants Mark and Registrants
Marks. Thus, even if the goods travel in the same trade channels, consumers are sophisticated
enough to not be confused by the marks.
In view of the foregoing, the applicant respectfully submits that the mark TWYST is
registrable on the Principal Register and respectfully requests same. If any impediment to
passing this mark onto publication remains after entry of these Amendments and consideration of
these remarks the Examining Attorney is invited to initiate a telephone interview with the
DATED this 6th day of December, 2016.
_/s/Peter M. de Jonge/_________________
Peter M. de Jonge
Attorney for Applicant