TRADEMARK
TNW REF. NO.: 2945-167.TM

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

APPLICANT: Alliance Sports Group, L.P.
)
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SERIAL NO.: 76/719,011 )
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FILED: February 19, 2016 )
) RESPONSE TO FIRST
MARK: TWYST ) OFFICE ACTION
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INT’L CLASS: 011 )
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TNW REF. NO.: 2945-167.TM )
________________________________________________)

Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451

Dear Sir:

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.

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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 (“Applicant’s 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 (“Registrant’s Word Mark”) and (2) stylized mark

TWIST, U.S. Trademark Reg. No. 4,895,551 (“Registrant’s Stylized Mark”) (collectively,

“Registrant’s 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).

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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 §

1207.01.

Applicant does not dispute that Applicant’s Mark and Registrant’s 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 Applicant’s Mark and

Registrant’s Marks. Since the marks need to be compared in their entireties, this requires further

examination.

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, Applicant’s Mark is spelled with a “Y” (TWYST) and Registrant’s

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

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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, Applicant’s 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

Applicant’s Mark and Registrant’s 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 mark’s meaning is determined by the mark’s goods description. The

commercial impression is what the average consumer remembers concerning the mark. See In re

Ass’n 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 (Applicant’s) and TWIST (Registrant’s). 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.

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Applicant submits that its mark TWYST connotes the flashlight’s ability to bend and

shape the light beam through various settings of Applicant’s product. Exhibit A. In contrast,

Registrant’s 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 Applicant’s Mark

and Registrant’s Marks.

As stated above, commercial impression is based on the recollection of the average

consumer. See In re Ass’n 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 Applicant’s Mark

and Registrant’s 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 Applicant’s Mark and

Registrant’s 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, Applicant’s Mark TWYST is for “flashlights” in International Class

11. Registrant’s Word Mark is for “lighting apparatus, namely, lighting installations; lighting

fixtures” in International Class 11. Registrant’s Stylized Mark is for “light bulbs; lighting

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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 Registrant’s product is in use, it is only in use in a particular

area, meaning the Registrant’s 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

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bulb.

Based on this evidence, it is clear that the normal meanings of the words in the goods

descriptions of Applicant’s Mark and Registrant’s 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

Registrant’s Marks’ goods are for smart light bulbs in a niche market. Registrant’s 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 sun’s 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 Applicant’s product are also sophisticated consumers. The TWYST

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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 Registrant’s 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 Applicant’s Mark and Registrant’s

Marks. Thus, even if the goods travel in the same trade channels, consumers are sophisticated

enough to not be confused by the marks.

III. CONCLUSION

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

undersigned.

DATED this 6th day of December, 2016.

_/s/Peter M. de Jonge/_________________
Peter M. de Jonge
Attorney for Applicant

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