Avalanche, LLC
Providing on-line social networking services by means of a global computer network
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Applicant: Avalanche, LLC
Mark: JEWCIER
Serial No.: 76/711,757
Filed: June 15, 2012
Trademark
Examining
Attorney: Suzanne Blane
Law Office: 114
RESPONSE TO OFFICE ACTION
This is in response to an Office Action mailed February 28, 2013.
RESPONSE
I. INTRODUCTION
Pursuant to 15 U.S.C. § 1052(d), the Examining Attorney (Examiner) has
issued an Office Action refusing registration of Applicants mark on the basis that it is
likely to cause confusion with United States Trademark Registration Nos. 2,843,648 and
3,228,371. Applicant respectfully requests withdrawal of the refusal in connection with
Registration No. 2,843,648 and suspension of prosecution of the present application pending
disposition of Cancellation Proceeding No. 92057757 in connection with Registration No.
3,228,371. In support thereof, Applicant responds as follows to the Office Action.
1
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
II. ARGUMENT
A. JEWCY Registration No. 2,843,648
The Examiner contends that Applicants mark JEWCIER and Registration No.
2,846,648 for the mark JEWCY (the Cited Mark) are so similar that registration of
Applicants mark would give rise to a likelihood of confusion, mistake, or deception among
consumers. Applicant maintains that significant differences in appearance between
Applicants mark and the Cited Mark, differences between the services offered under the
marks, the existence of numerous third-party registrations for similar marks referencing
social networking and entertainment services, and the lack of any actual confusion between
Applicants mark and the Cited Mark, dictates a finding of no likelihood of confusion,
mistake, or deception.
In determining whether there is a likelihood of confusion between two marks, the
Examiner must weigh the non-exclusive factors set forth in In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357 (CCPA 1973). The Examiner need not consider all of the factors
listed therein. Rather, she need only consider those factors that are most relevant to the
case at hand. See In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406 (Fed. Cir. 1997);
Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., 774 F.2d 1144, 1146 (Fed. Cir.
1985). The complete list of DuPont factors includes:
o The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
o The similarity or dissimilarity and nature of the goods or services as
described in an application or registration or in connection with which a
prior mark is in use.
2
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
o The similarity or dissimilarity of established, likely-to-continue trade
channels.
o The conditions under which and buyers to whom sales are made, i.e.
impulse vs. careful, sophisticated purchasing.
o The fame of the prior mark (sales, advertising, length of use).
o The number and nature of similar marks in use on similar goods.
o The nature and extent of any actual confusion.
o The length of time during and conditions under which there has been
concurrent use without evidence of actual confusion.
o The variety of goods on which a mark is or is not used (house mark,
family mark, product mark).
o The market interface between applicant and the owner of a prior mark:
? a mere consent to register or use.
? agreement provisions designed to preclude confusion, i.e. limitations on
continued use of the marks by each party.
? assignment of mark, application, registration and good will of the related
business.
? laches and estoppel attributable to owner of prior mark and indicative of
lack of confusion.
o The extent to which applicant has a right to exclude others from use of its
mark on its goods.
o The extent of potential confusion, i.e., whether de minimis or substantial.
o Any other established fact probative of the effect of use.
DuPont, 476 F.2d at 1361, 177 U.S.P.Q. at 567.
The DuPont factors relevant to this case include: (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 or services offered
3
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
under the marks and the applicable channels of trade; (3) the number and nature of third-
party registrations (and approved applications) for similar marks on similar goods and
services; (4) the nature and extent of any actual confusion; (5) the length of time during
and conditions under which there has been concurrent use without evidence of actual
confusion; and (6) the extent of potential confusion. Applicant submits that these factors
strongly weigh in favor of registration of Applicants mark. The remaining DuPont
factors are either neutral or do not apply to the circumstances in the case at hand.
1. The Marks are Dissimilar in Their Entireties
It is the impression that the mark as a whole creates on the average reasonably
prudent buyer and not the parts thereof that is important. J. THOMAS MCCARTHY,
MCCARTHY ON TRADEMARK AND UNFAIR COMPETITION § 23:41. Marks may be found not
confusingly similar on the basis that they look and sound different. Indeed, if two marks
differ in any substantial way, either lexical or graphic, then confusion may be found to be
unlikely despite other superficial similarities. See e.g., Citigroup Inc. v. Capital City
Bank Group, Inc., 94 U.S.P.Q.2D 1645, 64 (TTAB 2010) (finding no likelihood of
confusion between CAPITAL CITY BANK and CITIBANK). In other words,
superficial similarity in wording or design may be sufficiently offset by actual differences
in wording or design so as to make confusion unlikely.
In this case, Applicants mark and the Cited Mark are sufficiently different in
several important respects. First, regarding the literal elements of the marks, the marks
consist of different words. Whereas the Cited Mark consists of the word JEWCY,
Applicants mark consists of the word JEWCIER. The Cited Mark consists of two (2)
4
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
syllables, while Applicants mark consists of three (3) syllables. Finally, whereas the
Cited Mark ends with the letter y, Applicants mark ends with the suffix ier. While
ier could be read to give Applicants mark a sound equivalent to juicier, JEWCIER
is also pronounced joo-see-?, in the same way that consumers pronounce the marks
PERRIER (pear-ee-? ) and GRAND MARNIER (Grän Märn-ee-?). In other words,
purchasers are likely to read and pronounce Applicants mark as they do with a number
of French words with the suffix ier that have been adopted into English parlance. See
e.g., Godefroy Manufacturing Company v. Gold Medal Hair Products, Inc., 120 U.S.P.Q.
346, 2 (TTAB 1959) (finding that the mark TRESEMME gives the impression of being
a French term and the term tres would more than likely be given a French pronunciation
and meaning.).
When appended to the end of a word, the French-derived suffix ier denotes an
occupation or interest.1 For example, the French-derived word hotelier refers to a
proprietor or manager of a hotel.2 Similarly, a sommelier is a waiter in a restaurant
who has charge of wines and their service.3 Accordingly, purchasers will correctly
understand Applicants mark to suggest that Applicants services are related to Judaica
and Jewish culture. Therefore, it cannot be conclusively said that Applicants mark
would sound like JUICIER, and so the Examiner should find that Applicants mark and
the Cited Mark are dissimilar in appearance, sound, and commercial impression.
1
Oxford Dictionaries, at http://oxforddictionaries.com/us/definition/american_english/–ier (a copy of which is
attached hereto as Exhibit A).
2
Merriam-Webster Online Dictionary, at http://www.merriam-webster.com/dictionary/hotelier (a copy of which is
attached hereto as Exhibit B).
3
Merriam-Webster Online Dictionary, at http://www.merriam-webster.com/dictionary/sommelier (a copy of which
is attached hereto as Exhibit C).
5
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
2. The Marks Are Used in Respect of Dissimilar Goods and There Is No
Evidence That They Are used in Similar Channels of Trade.
The services offered under Applicants mark are distinct from those offered under
the Cited Mark. Although the Examiner contends that Applicants services (providing on-
line social networking services by means of a global computer network) and Registrants
services (entertainment, namely live variety, drama and comedy performances featuring
live and recorded music) are considered related for likelihood of confusion purposes,
Applicant respectfully maintains that such is not the case and that the Examiner has not
provided sufficient evidence to support her conclusion.
The Trademark Manual of Examining Procedure provides in relevant part:
If the goods or services in question are not related or marketed in such a way
that they would be encountered by the same persons in situations that would
create the incorrect assumption that they originate from the same source,
then, even if the marks are identical, confusion is not likely.
TMEP § 1207.01(a)(i). Whereas a social network is defined as a dedicated website or
other application that enables users to communicate with each other by posting information,
comments, messages, images, etc.,4 a performance is defined as an act of staging or
presenting a play, concert, or other form of entertainment.5 Given these substantial
differences in plain meaning, the Examiners conclusion that [t]here is no question then,
that social networking websites and live musical entertainment are related services without
more, does not provide the required evidence to support a finding of relatedness. The same
merchant may sell motor oil and lollipops, but that does not necessarily mean that the two
4
Oxford Dictionaries, at http://oxforddictionaries.com/us/definition/american_english/social-network (a copy of
which is attached hereto as Exhibit D).
5
Oxford Dictionaries, at http://oxforddictionaries.com/us/definition/american_english/performance (a copy of which
is attached hereto as Exhibit E).
6
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
goods are related for likelihood of confusion purposes. Similarly, in this case, there simply
is not sufficient evidence to support the Examiners contention that Applicants and
Registrants services are related.
In support of the Examiners initial determination that the services offered under
Applicants mark and the Cited Mark are similar, the Examiner merely references a number
of third-party registrations, some of which include both social networking and live
performances in their identifications of goods/services. Citing to the Albert Trostel and
Mucky Duck TTAB decisions6, the Examiner concludes that [t]his evidence shows that the
goods and/or services listed therein, namely social networking sites and live
performances featuring live and recorded music, are of a kind that may emanate from a
single source under a single mark. However, simply because the two disparate types of
services may be offered by the same source, it is not reasonable or proper to conclude that
they are likely to be offered by the same source or that consumers would expect them to be
offered by the same source.
Many of the third-party registrations offered as evidence by the Examiner include
extensive goods/services descriptions that are not reflective of how the marks are actually
used in commerce. It is well-documented that the USPTO trademark registry is replete
with so-called deadwood registrations that contain descriptions containing hundreds of
goods and services which registrants are not actually using. These registrations are the
product of the USPTOs policy of requiring only one specimen of use per class. As
stated by a well-known trademark commentator:
6
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d
1467(TTAB 1988).
7
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
Concerning the third-party registrations cited by the Examining Attorney
under the Albert Trostel and Mucky Duck approach, the following thought
has come into my head. The PTO is concerned, as are practitioners, about
so-called deadwood on the Register: registrations that cover a number of
goods, not all of which goods are actually sold (or ever were sold) under
the mark. Part of this deadwood problem stems from the fact that the PTO
requires only one specimen per class of goods, not a specimen for each
item in the class. So if there are many deadwood registrations, what is the
evidentiary value of the PTOs citing a third-party registration to show
that item A is related to item B?7
The ubiquity of third-party registrations that include large numbers of goods and service
descriptions, which do not reflect their real-world use, means that third-party registrations
are particularly unreliable as evidence to demonstrate relatedness.
Professor McCarthy has also expressed skepticism about the probative value of
third-party registrations to show that certain goods/services are related:
The logical syllogism of the relevance of such registrations is based on the
assumption that the third party registrations prove that buyers are used to
seeing the same mark on both [Applicants and Registrants respective
goods/services]
The difficulty with the examiners syllogism is that the
Federal Circuit has often criticized the evidentiary weight of registrations
as evidence of buyer perceptions.
MCCARTHY § 24:63 (citing Olde Tyme Foods, Inc. v. Roundys, Inc., 961 F.2d 200 (Fed.
Cir. 1992)); See also In re Amerope Enters., No. 01-1155, 2001 U.S. App. LEXIS 27644,
at *12 (Fed. Cir. Dec. 13, 2001) (finding that the DuPont analysis considers similar
marks in use on similar goods, not similar marks registered for similar goods. Third-party
registrations alone carry little weight as evidence of use in a likelihood of confusion
determination.).
7
The TTABlog, at http://thettablog.blogspot.com/2012/12/purchaser-sophistication-yieds-ttab.html (a copy of which
is attached hereto as Exhibit F).
8
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
In other words, the existence of a third-party registration that covers social
networking, live performances, and a laundry list of other goods and services, is the
weakest evidence, if it is evidence at all, that social networking and live
performances are actually related services for purposes of likelihood of confusion. If the
contrary were true, then according to the registrations cited by the Examiner, social
networking services would also be related to rental of musical instruments, and live
performances would be related to baby-sitting services, as evidenced by the
registration for THE BASEMENT (Reg. No. 3,755, 138) (cited on p. 99 of the Office
Action). Such a conclusion, of course, would be preposterous. See e.g., CNL Tampa
Intl Hotel Pship, LP v. Palazzolo, 2007 TTAB LEXIS 100, at *14 (TTAB 2007)
(Taken to its absurd extreme, if third-party registrations alone are considered sufficient
to prove that goods and services are related, then virtually all consumer products and
services would be related.).
The Examiner also points to the third-party registrations as evidence that the
relevant goods and/or services are sold or provided through the same trade channels and
used by the same classes of consumers in the same fields of use. However, here again, the
third-party registrations cited by the Examiner provide no evidence whatsoever that
Applicants and Registrants services have similar trade channels and similar consumers.
This is because the overwhelming majority of trademark registrations provide no indication
as to the channels of trade they relate to or the nature of the consumers they target.
Finally, the Examiner notes that dating sites such as JDate and Match.com feature
live music productions. Applicant respectfully notes that none of the JDate or
9
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
Match.com screenshots referenced by the Examiner says anything about live music
productions. The cocktail parties hosted by JDate cannot be accurately portrayed as
live performances. Likewise, the live events referenced in the screenshot for
Match.com are not described as performances and, as far as can be surmised from the
screenshot, merely reference the same type of parties as in the JDate reference.
Accordingly, these references do not support the Examiners contention that Applicants
and Registrants services are related for purposes of likelihood of confusion.
For the foregoing reasons, the Examiner should find that the services offered
under Applicants mark and the Cited Mark, and the channels of trade through which
they are offered to consumers, are dissimilar.
3. Matter Shared by the Marks Has Been Registered by Numerous
Entities
The large number of registrations and approved applications making use of the
word JEW, including those used in connection with social networking and
entertainment services, further reduces the likelihood of confusion. As the Eighth Circuit
has explained, the existence of third-party registrations for similar marks on similar
goods and services is relevant to show that [a] mark is relatively weak and entitled to a
narrower scope of protection. General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627
(8th Cir. 1987) (affirming district courts finding that third-party use rendered a mark
relatively weak); See also TMEP § 1207.01(d)(iii) (noting that third-party registrations
may be relevant to show that a mark or a portion of a mark is . . . so commonly used that
the public will look to other elements to distinguish the source of the goods or services.).
10
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
In this case, there are over 2,000 live registrations and pending applications for
marks that include the term JEW.8 Of these, nearly 100 are used in connection with
social networking or entertainment services. They include the following:
Mark Registration Owner Goods/Services
/Serial No.
Entertainment services in the nature of live musical
JEWEL 3,295,971 Jewel Kilcher
performances, etc., in International Class 41.
Entertainment services, namely, conducting parties;
JEWELTIDE 3,651,894 JDub Music, Inc. entertainment, namely, live performances by musical
bands, etc., in International Class 41.
Musical and comedy entertainment in the nature of
JEWNATRA 4,323,144 Marc E. Klar visual and audio performances, in International Class
41.
Social networking services in the field of Jewish-
4,269,862 Ad Envy, Inc. themed events and information provided via a
website, in International Class 45.
Online social networking services in the field of
WHERES YOUR JEW 4,153,982 Jessica Moreno Jewish cultural and religious activities provided via a
CREW? website, in International Class 45
Computer services, namely, providing a website for
WHERE COOL JEWS 718 Chai Street,
85/725,540 an on-line dating community for registered users, in
MEET Inc.
International Class 45
Alberto Sapoznik Entertainment in the nature of live performances by a
THE MOODY JEWS 3,491,965
et al. rock band, in International Class 41
Entertainment in the nature of providing live
Jews for Jesus,
JEWS FOR JESUS 3,226,872
Inc.
performances of musical and dramatic works, in
International Class 41
Entertainment in the nature of on-going live theatrical
WHAT I LIKE ABOUT What I Like
3,313,889 performances and television programs in the fields of
JEW About Jew LLC
comedy, variety, and music, in International Class 41
8
The query *JEW*[MI] and live[LD] on the USPTOs Trademark Electronic Search System (TESS) locates
2,163 records as of August 22, 2013.
11
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
Mark Registration Owner Goods/Services
/Serial No.
Entertainment services, namely, the production and
Spitting Cobra
85/743,044 presentation of theatrical and musical performances
Films, Inc.
before live audiences, in International Class 41
Entertainment services, namely, the production and
Spitting Cobra
85/743,028 presentation of theatrical and musical performances
Films, Inc.
before live audiences, in International Class 41
Entertainment in the nature of live stage performances
OLD JEWS TELLING Spitting Cobra
85/763,516 in the nature of plays in the field of comedy by an
JOKES Films, Inc.
individual, in International Class 41
Entertainment services, namely, providing
Jews for Judaism
85/698,141 motivational and educational speakers, in
International, Inc.
International Class 41.
Meggan E. Arranging and conducting special events for social
GIN AND JEWS 86/028,135
Levene entertainment purposes, in International Class 41.
Entertainment and educational services in the nature
of musical group performances, lectures and children
JEWS ON THE and adult workshops in the field of genealogy;
3,736,545 Renee T. Sokolski
FRONTIER organizing community festivals featuring a variety of
activities, namely, art exhibitions, heritage markets,
ethnic dances, and the like, in International Class 41.
Entertainment in the nature of providing live
Jews for Jesus,
3,712,533 performances of musical works, in International Class
Inc.
41.
12
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
Mark Registration Owner Goods/Services
/Serial No.
Feivel Music Entertainment services in the nature of live musical
3,563,801
Productions, LLC performances, in International Class 41.
THE RAGING JEWS OF Presentation of live comedy shows, in International
3,632,744 Marks Interests
COMEDY Class 41.
Bay Harbor Med Internet-based dating, social introduction and social
DATE MY JEWISH KID 4,111,611
Spa, LLC networking services , in International Class 45.
JEWISHAMERICANSI JewishAmericanS On line dating and social networking services, in
3,520,619
NGLES.COM ingles.com, Inc. International Class 45.
The Cited Mark, JEWCY, has not been deemed by the USPTO to be confusingly
similar to any the above marks, thereby permitting the marks to coexist on the principal
register. The extensive use of the term JEW in over two thousand live applications and
registrations, including its use in connection with social networking and entertainment
services, is evidence that consumers have learned to carefully pick out one from the
other. MCCARTHY § 11:85 (4th ed.); In re Hamilton Bank, 222 U.S.P.Q. 174 (TTAB
1984) (extensive third-party use of the term key negated any likelihood of confusion
between a mark, KEY, for banking services, and other marks for banking containing the
word key.). Consumers, therefore, are not likely to be confused about the sources of
Registrants and Applicants respective goods.
13
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
4. After More Than Three Years of Coexistence, There Has Been No
Actual Confusion and the Extent of Potential Confusion is De Minimis
Both the Cited Mark and Applicants mark have been in concurrent use in
commerce for at least the last three (3) years and Applicant is unaware of any instances of
actual consumer confusion.
If consumers have been exposed to two allegedly similar trademarks in the
marketplace for an adequate period of time and no actual confusion is detected either by
survey or in actual reported instances of confusion, then that can be a powerful indication
that the junior trademark does not cause a meaningful likelihood of confusion. Nabisco, Inc.
v. PF Brands, Inc., 191 F.3d 208, 228, 51 U.S.P.Q.2d 1882, 1897 (2d Cir. 1999).
Applicants services have been offered since August 2010. Registrants first date of use, as
reflected in its U.S. trademark registration, was June 2002. Therefore, both services have
been offered in the marketplace contemporaneously for three (3) years. Applicant is not
aware of any actual confusion between Applicants products and Registrants products.
As the duration of non-confusing co-existence stretches into years, the force of the
inference strengthens. As the Ninth Circuit noted: We cannot think of more persuasive
evidence that there is no likelihood of confusion between these two marks than the fact that
they have been simultaneously used for five years without causing any consumers to be
confused as to who makes what. Brookfield Communications, Inc. v. West Coast
Entertainment Corp., 174 F.3d 1036, 1050, 50 U.S.P.Q.2d 1545, 1555-54 (9th Cir. 1999).
Applicants mark and the Cited Mark have co-existed in the marketplace for several years
without any evidence that there has been actual confusion. Accordingly, there is no
likelihood of confusion between the Applicants mark and the Cited Mark.
14
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
B. JEWCY Registration No. 3,228,371
Applicant notes that it has filed a Petition to Cancel Registration No. 3,228,371
with the Trademark Trial and Appeal Board (Cancellation No. 92057757) based on
abandonment through registrants non-use of the mark in connection with dating and
matchmaking services. Thus, pursuant to 37 CFR § 2.67 and TMEP § 716.02(a),
Applicant respectfully requests that its application be suspended pending the final
disposition of the cancellation proceeding, since cancellation of Registration No.
3,228,371 would eliminate the registration as a potential barrier to publication of
Applicants mark. Applicant reserves the right to present arguments against a finding of
likelihood of confusion with Registration No. 3,228,371 in the event the aforementioned
cancellation is refused.
III. CONCLUSION
The Examiner has refused registration under Trademark Act § 2(d), 15 U.S.C. §
1052(d) based on the Examiners initial determination that Applicants JEWCIER mark so
resembles Registration Nos. 3,228,371 and 2,843,648 as to be likely to cause confusion,
mistake, or deception as to the source of the services of the Applicant and Registrant. As
discussed above, if Registration No. 3,228,371 is cancelled, it should not bar registration of
Applicants mark. In addition, because there is no likelihood of confusion between
Applicants mark and Registration No. 2,843,648, the latter should not serve as a basis for
the Examiners refusal to register Applicants mark. Therefore, Applicant respectfully
requests that the Examiner withdraw the Section 2(d) refusal as to Registration No.
15
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
2,843,648, and suspend Applicants application pending the final disposition of
Cancellation No. 92057757.
Date: August 27, 2013 Respectfully submitted,
LOTT & FISCHER, PL
s/_Stephen D. Lott______
Ury Fischer
Stephen D. Lott
P.O. Drawer 141098
Coral Gables, FL 33114-1098
(305) 448-7089
Attorneys for Applicant
Our File No. 01177-1-8010 Avalanche, LLC
16
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Applicant: Avalanche, LLC
Mark: JEWCIER
Serial No.: 76/711,757
Filed: June 15, 2012
Trademark
Examining
Attorney: Suzanne Blane
Law Office: 114
RESPONSE TO OFFICE ACTION
This is in response to an Office Action mailed February 28, 2013.
RESPONSE
I. INTRODUCTION
Pursuant to 15 U.S.C. § 1052(d), the Examining Attorney (Examiner) has
issued an Office Action refusing registration of Applicants mark on the basis that it is
likely to cause confusion with United States Trademark Registration Nos. 2,843,648 and
3,228,371. Applicant respectfully requests withdrawal of the refusal in connection with
Registration No. 2,843,648 and suspension of prosecution of the present application pending
disposition of Cancellation Proceeding No. 92057757 in connection with Registration No.
3,228,371. In support thereof, Applicant responds as follows to the Office Action.
1
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
II. ARGUMENT
A. JEWCY Registration No. 2,843,648
The Examiner contends that Applicants mark JEWCIER and Registration No.
2,846,648 for the mark JEWCY (the Cited Mark) are so similar that registration of
Applicants mark would give rise to a likelihood of confusion, mistake, or deception among
consumers. Applicant maintains that significant differences in appearance between
Applicants mark and the Cited Mark, differences between the services offered under the
marks, the existence of numerous third-party registrations for similar marks referencing
social networking and entertainment services, and the lack of any actual confusion between
Applicants mark and the Cited Mark, dictates a finding of no likelihood of confusion,
mistake, or deception.
In determining whether there is a likelihood of confusion between two marks, the
Examiner must weigh the non-exclusive factors set forth in In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357 (CCPA 1973). The Examiner need not consider all of the factors
listed therein. Rather, she need only consider those factors that are most relevant to the
case at hand. See In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406 (Fed. Cir. 1997);
Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., 774 F.2d 1144, 1146 (Fed. Cir.
1985). The complete list of DuPont factors includes:
o The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
o The similarity or dissimilarity and nature of the goods or services as
described in an application or registration or in connection with which a
prior mark is in use.
2
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
o The similarity or dissimilarity of established, likely-to-continue trade
channels.
o The conditions under which and buyers to whom sales are made, i.e.
impulse vs. careful, sophisticated purchasing.
o The fame of the prior mark (sales, advertising, length of use).
o The number and nature of similar marks in use on similar goods.
o The nature and extent of any actual confusion.
o The length of time during and conditions under which there has been
concurrent use without evidence of actual confusion.
o The variety of goods on which a mark is or is not used (house mark,
family mark, product mark).
o The market interface between applicant and the owner of a prior mark:
? a mere consent to register or use.
? agreement provisions designed to preclude confusion, i.e. limitations on
continued use of the marks by each party.
? assignment of mark, application, registration and good will of the related
business.
? laches and estoppel attributable to owner of prior mark and indicative of
lack of confusion.
o The extent to which applicant has a right to exclude others from use of its
mark on its goods.
o The extent of potential confusion, i.e., whether de minimis or substantial.
o Any other established fact probative of the effect of use.
DuPont, 476 F.2d at 1361, 177 U.S.P.Q. at 567.
The DuPont factors relevant to this case include: (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 or services offered
3
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
under the marks and the applicable channels of trade; (3) the number and nature of third-
party registrations (and approved applications) for similar marks on similar goods and
services; (4) the nature and extent of any actual confusion; (5) the length of time during
and conditions under which there has been concurrent use without evidence of actual
confusion; and (6) the extent of potential confusion. Applicant submits that these factors
strongly weigh in favor of registration of Applicants mark. The remaining DuPont
factors are either neutral or do not apply to the circumstances in the case at hand.
1. The Marks are Dissimilar in Their Entireties
It is the impression that the mark as a whole creates on the average reasonably
prudent buyer and not the parts thereof that is important. J. THOMAS MCCARTHY,
MCCARTHY ON TRADEMARK AND UNFAIR COMPETITION § 23:41. Marks may be found not
confusingly similar on the basis that they look and sound different. Indeed, if two marks
differ in any substantial way, either lexical or graphic, then confusion may be found to be
unlikely despite other superficial similarities. See e.g., Citigroup Inc. v. Capital City
Bank Group, Inc., 94 U.S.P.Q.2D 1645, 64 (TTAB 2010) (finding no likelihood of
confusion between CAPITAL CITY BANK and CITIBANK). In other words,
superficial similarity in wording or design may be sufficiently offset by actual differences
in wording or design so as to make confusion unlikely.
In this case, Applicants mark and the Cited Mark are sufficiently different in
several important respects. First, regarding the literal elements of the marks, the marks
consist of different words. Whereas the Cited Mark consists of the word JEWCY,
Applicants mark consists of the word JEWCIER. The Cited Mark consists of two (2)
4
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
syllables, while Applicants mark consists of three (3) syllables. Finally, whereas the
Cited Mark ends with the letter y, Applicants mark ends with the suffix ier. While
ier could be read to give Applicants mark a sound equivalent to juicier, JEWCIER
is also pronounced joo-see-?, in the same way that consumers pronounce the marks
PERRIER (pear-ee-? ) and GRAND MARNIER (Grän Märn-ee-?). In other words,
purchasers are likely to read and pronounce Applicants mark as they do with a number
of French words with the suffix ier that have been adopted into English parlance. See
e.g., Godefroy Manufacturing Company v. Gold Medal Hair Products, Inc., 120 U.S.P.Q.
346, 2 (TTAB 1959) (finding that the mark TRESEMME gives the impression of being
a French term and the term tres would more than likely be given a French pronunciation
and meaning.).
When appended to the end of a word, the French-derived suffix ier denotes an
occupation or interest.1 For example, the French-derived word hotelier refers to a
proprietor or manager of a hotel.2 Similarly, a sommelier is a waiter in a restaurant
who has charge of wines and their service.3 Accordingly, purchasers will correctly
understand Applicants mark to suggest that Applicants services are related to Judaica
and Jewish culture. Therefore, it cannot be conclusively said that Applicants mark
would sound like JUICIER, and so the Examiner should find that Applicants mark and
the Cited Mark are dissimilar in appearance, sound, and commercial impression.
1
Oxford Dictionaries, at http://oxforddictionaries.com/us/definition/american_english/–ier (a copy of which is
attached hereto as Exhibit A).
2
Merriam-Webster Online Dictionary, at http://www.merriam-webster.com/dictionary/hotelier (a copy of which is
attached hereto as Exhibit B).
3
Merriam-Webster Online Dictionary, at http://www.merriam-webster.com/dictionary/sommelier (a copy of which
is attached hereto as Exhibit C).
5
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
2. The Marks Are Used in Respect of Dissimilar Goods and There Is No
Evidence That They Are used in Similar Channels of Trade.
The services offered under Applicants mark are distinct from those offered under
the Cited Mark. Although the Examiner contends that Applicants services (providing on-
line social networking services by means of a global computer network) and Registrants
services (entertainment, namely live variety, drama and comedy performances featuring
live and recorded music) are considered related for likelihood of confusion purposes,
Applicant respectfully maintains that such is not the case and that the Examiner has not
provided sufficient evidence to support her conclusion.
The Trademark Manual of Examining Procedure provides in relevant part:
If the goods or services in question are not related or marketed in such a way
that they would be encountered by the same persons in situations that would
create the incorrect assumption that they originate from the same source,
then, even if the marks are identical, confusion is not likely.
TMEP § 1207.01(a)(i). Whereas a social network is defined as a dedicated website or
other application that enables users to communicate with each other by posting information,
comments, messages, images, etc.,4 a performance is defined as an act of staging or
presenting a play, concert, or other form of entertainment.5 Given these substantial
differences in plain meaning, the Examiners conclusion that [t]here is no question then,
that social networking websites and live musical entertainment are related services without
more, does not provide the required evidence to support a finding of relatedness. The same
merchant may sell motor oil and lollipops, but that does not necessarily mean that the two
4
Oxford Dictionaries, at http://oxforddictionaries.com/us/definition/american_english/social-network (a copy of
which is attached hereto as Exhibit D).
5
Oxford Dictionaries, at http://oxforddictionaries.com/us/definition/american_english/performance (a copy of which
is attached hereto as Exhibit E).
6
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
goods are related for likelihood of confusion purposes. Similarly, in this case, there simply
is not sufficient evidence to support the Examiners contention that Applicants and
Registrants services are related.
In support of the Examiners initial determination that the services offered under
Applicants mark and the Cited Mark are similar, the Examiner merely references a number
of third-party registrations, some of which include both social networking and live
performances in their identifications of goods/services. Citing to the Albert Trostel and
Mucky Duck TTAB decisions6, the Examiner concludes that [t]his evidence shows that the
goods and/or services listed therein, namely social networking sites and live
performances featuring live and recorded music, are of a kind that may emanate from a
single source under a single mark. However, simply because the two disparate types of
services may be offered by the same source, it is not reasonable or proper to conclude that
they are likely to be offered by the same source or that consumers would expect them to be
offered by the same source.
Many of the third-party registrations offered as evidence by the Examiner include
extensive goods/services descriptions that are not reflective of how the marks are actually
used in commerce. It is well-documented that the USPTO trademark registry is replete
with so-called deadwood registrations that contain descriptions containing hundreds of
goods and services which registrants are not actually using. These registrations are the
product of the USPTOs policy of requiring only one specimen of use per class. As
stated by a well-known trademark commentator:
6
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d
1467(TTAB 1988).
7
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
Concerning the third-party registrations cited by the Examining Attorney
under the Albert Trostel and Mucky Duck approach, the following thought
has come into my head. The PTO is concerned, as are practitioners, about
so-called deadwood on the Register: registrations that cover a number of
goods, not all of which goods are actually sold (or ever were sold) under
the mark. Part of this deadwood problem stems from the fact that the PTO
requires only one specimen per class of goods, not a specimen for each
item in the class. So if there are many deadwood registrations, what is the
evidentiary value of the PTOs citing a third-party registration to show
that item A is related to item B?7
The ubiquity of third-party registrations that include large numbers of goods and service
descriptions, which do not reflect their real-world use, means that third-party registrations
are particularly unreliable as evidence to demonstrate relatedness.
Professor McCarthy has also expressed skepticism about the probative value of
third-party registrations to show that certain goods/services are related:
The logical syllogism of the relevance of such registrations is based on the
assumption that the third party registrations prove that buyers are used to
seeing the same mark on both [Applicants and Registrants respective
goods/services]
The difficulty with the examiners syllogism is that the
Federal Circuit has often criticized the evidentiary weight of registrations
as evidence of buyer perceptions.
MCCARTHY § 24:63 (citing Olde Tyme Foods, Inc. v. Roundys, Inc., 961 F.2d 200 (Fed.
Cir. 1992)); See also In re Amerope Enters., No. 01-1155, 2001 U.S. App. LEXIS 27644,
at *12 (Fed. Cir. Dec. 13, 2001) (finding that the DuPont analysis considers similar
marks in use on similar goods, not similar marks registered for similar goods. Third-party
registrations alone carry little weight as evidence of use in a likelihood of confusion
determination.).
7
The TTABlog, at http://thettablog.blogspot.com/2012/12/purchaser-sophistication-yieds-ttab.html (a copy of which
is attached hereto as Exhibit F).
8
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
In other words, the existence of a third-party registration that covers social
networking, live performances, and a laundry list of other goods and services, is the
weakest evidence, if it is evidence at all, that social networking and live
performances are actually related services for purposes of likelihood of confusion. If the
contrary were true, then according to the registrations cited by the Examiner, social
networking services would also be related to rental of musical instruments, and live
performances would be related to baby-sitting services, as evidenced by the
registration for THE BASEMENT (Reg. No. 3,755, 138) (cited on p. 99 of the Office
Action). Such a conclusion, of course, would be preposterous. See e.g., CNL Tampa
Intl Hotel Pship, LP v. Palazzolo, 2007 TTAB LEXIS 100, at *14 (TTAB 2007)
(Taken to its absurd extreme, if third-party registrations alone are considered sufficient
to prove that goods and services are related, then virtually all consumer products and
services would be related.).
The Examiner also points to the third-party registrations as evidence that the
relevant goods and/or services are sold or provided through the same trade channels and
used by the same classes of consumers in the same fields of use. However, here again, the
third-party registrations cited by the Examiner provide no evidence whatsoever that
Applicants and Registrants services have similar trade channels and similar consumers.
This is because the overwhelming majority of trademark registrations provide no indication
as to the channels of trade they relate to or the nature of the consumers they target.
Finally, the Examiner notes that dating sites such as JDate and Match.com feature
live music productions. Applicant respectfully notes that none of the JDate or
9
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
Match.com screenshots referenced by the Examiner says anything about live music
productions. The cocktail parties hosted by JDate cannot be accurately portrayed as
live performances. Likewise, the live events referenced in the screenshot for
Match.com are not described as performances and, as far as can be surmised from the
screenshot, merely reference the same type of parties as in the JDate reference.
Accordingly, these references do not support the Examiners contention that Applicants
and Registrants services are related for purposes of likelihood of confusion.
For the foregoing reasons, the Examiner should find that the services offered
under Applicants mark and the Cited Mark, and the channels of trade through which
they are offered to consumers, are dissimilar.
3. Matter Shared by the Marks Has Been Registered by Numerous
Entities
The large number of registrations and approved applications making use of the
word JEW, including those used in connection with social networking and
entertainment services, further reduces the likelihood of confusion. As the Eighth Circuit
has explained, the existence of third-party registrations for similar marks on similar
goods and services is relevant to show that [a] mark is relatively weak and entitled to a
narrower scope of protection. General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627
(8th Cir. 1987) (affirming district courts finding that third-party use rendered a mark
relatively weak); See also TMEP § 1207.01(d)(iii) (noting that third-party registrations
may be relevant to show that a mark or a portion of a mark is . . . so commonly used that
the public will look to other elements to distinguish the source of the goods or services.).
10
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
In this case, there are over 2,000 live registrations and pending applications for
marks that include the term JEW.8 Of these, nearly 100 are used in connection with
social networking or entertainment services. They include the following:
Mark Registration Owner Goods/Services
/Serial No.
Entertainment services in the nature of live musical
JEWEL 3,295,971 Jewel Kilcher
performances, etc., in International Class 41.
Entertainment services, namely, conducting parties;
JEWELTIDE 3,651,894 JDub Music, Inc. entertainment, namely, live performances by musical
bands, etc., in International Class 41.
Musical and comedy entertainment in the nature of
JEWNATRA 4,323,144 Marc E. Klar visual and audio performances, in International Class
41.
Social networking services in the field of Jewish-
4,269,862 Ad Envy, Inc. themed events and information provided via a
website, in International Class 45.
Online social networking services in the field of
WHERES YOUR JEW 4,153,982 Jessica Moreno Jewish cultural and religious activities provided via a
CREW? website, in International Class 45
Computer services, namely, providing a website for
WHERE COOL JEWS 718 Chai Street,
85/725,540 an on-line dating community for registered users, in
MEET Inc.
International Class 45
Alberto Sapoznik Entertainment in the nature of live performances by a
THE MOODY JEWS 3,491,965
et al. rock band, in International Class 41
Entertainment in the nature of providing live
Jews for Jesus,
JEWS FOR JESUS 3,226,872
Inc.
performances of musical and dramatic works, in
International Class 41
Entertainment in the nature of on-going live theatrical
WHAT I LIKE ABOUT What I Like
3,313,889 performances and television programs in the fields of
JEW About Jew LLC
comedy, variety, and music, in International Class 41
8
The query *JEW*[MI] and live[LD] on the USPTOs Trademark Electronic Search System (TESS) locates
2,163 records as of August 22, 2013.
11
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
Mark Registration Owner Goods/Services
/Serial No.
Entertainment services, namely, the production and
Spitting Cobra
85/743,044 presentation of theatrical and musical performances
Films, Inc.
before live audiences, in International Class 41
Entertainment services, namely, the production and
Spitting Cobra
85/743,028 presentation of theatrical and musical performances
Films, Inc.
before live audiences, in International Class 41
Entertainment in the nature of live stage performances
OLD JEWS TELLING Spitting Cobra
85/763,516 in the nature of plays in the field of comedy by an
JOKES Films, Inc.
individual, in International Class 41
Entertainment services, namely, providing
Jews for Judaism
85/698,141 motivational and educational speakers, in
International, Inc.
International Class 41.
Meggan E. Arranging and conducting special events for social
GIN AND JEWS 86/028,135
Levene entertainment purposes, in International Class 41.
Entertainment and educational services in the nature
of musical group performances, lectures and children
JEWS ON THE and adult workshops in the field of genealogy;
3,736,545 Renee T. Sokolski
FRONTIER organizing community festivals featuring a variety of
activities, namely, art exhibitions, heritage markets,
ethnic dances, and the like, in International Class 41.
Entertainment in the nature of providing live
Jews for Jesus,
3,712,533 performances of musical works, in International Class
Inc.
41.
12
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
Mark Registration Owner Goods/Services
/Serial No.
Feivel Music Entertainment services in the nature of live musical
3,563,801
Productions, LLC performances, in International Class 41.
THE RAGING JEWS OF Presentation of live comedy shows, in International
3,632,744 Marks Interests
COMEDY Class 41.
Bay Harbor Med Internet-based dating, social introduction and social
DATE MY JEWISH KID 4,111,611
Spa, LLC networking services , in International Class 45.
JEWISHAMERICANSI JewishAmericanS On line dating and social networking services, in
3,520,619
NGLES.COM ingles.com, Inc. International Class 45.
The Cited Mark, JEWCY, has not been deemed by the USPTO to be confusingly
similar to any the above marks, thereby permitting the marks to coexist on the principal
register. The extensive use of the term JEW in over two thousand live applications and
registrations, including its use in connection with social networking and entertainment
services, is evidence that consumers have learned to carefully pick out one from the
other. MCCARTHY § 11:85 (4th ed.); In re Hamilton Bank, 222 U.S.P.Q. 174 (TTAB
1984) (extensive third-party use of the term key negated any likelihood of confusion
between a mark, KEY, for banking services, and other marks for banking containing the
word key.). Consumers, therefore, are not likely to be confused about the sources of
Registrants and Applicants respective goods.
13
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
4. After More Than Three Years of Coexistence, There Has Been No
Actual Confusion and the Extent of Potential Confusion is De Minimis
Both the Cited Mark and Applicants mark have been in concurrent use in
commerce for at least the last three (3) years and Applicant is unaware of any instances of
actual consumer confusion.
If consumers have been exposed to two allegedly similar trademarks in the
marketplace for an adequate period of time and no actual confusion is detected either by
survey or in actual reported instances of confusion, then that can be a powerful indication
that the junior trademark does not cause a meaningful likelihood of confusion. Nabisco, Inc.
v. PF Brands, Inc., 191 F.3d 208, 228, 51 U.S.P.Q.2d 1882, 1897 (2d Cir. 1999).
Applicants services have been offered since August 2010. Registrants first date of use, as
reflected in its U.S. trademark registration, was June 2002. Therefore, both services have
been offered in the marketplace contemporaneously for three (3) years. Applicant is not
aware of any actual confusion between Applicants products and Registrants products.
As the duration of non-confusing co-existence stretches into years, the force of the
inference strengthens. As the Ninth Circuit noted: We cannot think of more persuasive
evidence that there is no likelihood of confusion between these two marks than the fact that
they have been simultaneously used for five years without causing any consumers to be
confused as to who makes what. Brookfield Communications, Inc. v. West Coast
Entertainment Corp., 174 F.3d 1036, 1050, 50 U.S.P.Q.2d 1545, 1555-54 (9th Cir. 1999).
Applicants mark and the Cited Mark have co-existed in the marketplace for several years
without any evidence that there has been actual confusion. Accordingly, there is no
likelihood of confusion between the Applicants mark and the Cited Mark.
14
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
B. JEWCY Registration No. 3,228,371
Applicant notes that it has filed a Petition to Cancel Registration No. 3,228,371
with the Trademark Trial and Appeal Board (Cancellation No. 92057757) based on
abandonment through registrants non-use of the mark in connection with dating and
matchmaking services. Thus, pursuant to 37 CFR § 2.67 and TMEP § 716.02(a),
Applicant respectfully requests that its application be suspended pending the final
disposition of the cancellation proceeding, since cancellation of Registration No.
3,228,371 would eliminate the registration as a potential barrier to publication of
Applicants mark. Applicant reserves the right to present arguments against a finding of
likelihood of confusion with Registration No. 3,228,371 in the event the aforementioned
cancellation is refused.
III. CONCLUSION
The Examiner has refused registration under Trademark Act § 2(d), 15 U.S.C. §
1052(d) based on the Examiners initial determination that Applicants JEWCIER mark so
resembles Registration Nos. 3,228,371 and 2,843,648 as to be likely to cause confusion,
mistake, or deception as to the source of the services of the Applicant and Registrant. As
discussed above, if Registration No. 3,228,371 is cancelled, it should not bar registration of
Applicants mark. In addition, because there is no likelihood of confusion between
Applicants mark and Registration No. 2,843,648, the latter should not serve as a basis for
the Examiners refusal to register Applicants mark. Therefore, Applicant respectfully
requests that the Examiner withdraw the Section 2(d) refusal as to Registration No.
15
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Mark: JEWCIER
Serial No. 76/711,757
Law Office: 114
2,843,648, and suspend Applicants application pending the final disposition of
Cancellation No. 92057757.
Date: August 27, 2013 Respectfully submitted,
LOTT & FISCHER, PL
s/_Stephen D. Lott______
Ury Fischer
Stephen D. Lott
P.O. Drawer 141098
Coral Gables, FL 33114-1098
(305) 448-7089
Attorneys for Applicant
Our File No. 01177-1-8010 Avalanche, LLC
16
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098
Telephone: (305) 448-7089 Facsimile: (305) 446-6191