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 Applicant’s 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 Applicant’s mark JEWCIER and Registration No.

2,846,648 for the mark JEWCY (the “Cited Mark”) are so similar that registration of

Applicant’s mark would give rise to a likelihood of confusion, mistake, or deception among

consumers. Applicant maintains that significant differences in appearance between

Applicant’s 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

Applicant’s 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 Applicant’s 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, Applicant’s 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,

Applicant’s 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 Applicant’s mark consists of three (3) syllables. Finally, whereas the

Cited Mark ends with the letter “y,” Applicant’s mark ends with the suffix “ier.” While

“ier” could be read to give Applicant’s 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 Applicant’s 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 Applicant’s mark to suggest that Applicant’s services are related to Judaica

and Jewish culture. Therefore, it cannot be conclusively said that “Applicant’s mark

would sound like JUICIER,” and so the Examiner should find that Applicant’s 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 Applicant’s mark are distinct from those offered under

the Cited Mark. Although the Examiner contends that Applicant’s services (“providing on-

line social networking services by means of a global computer network”) and Registrant’s

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 Examiner’s 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 Examiner’s contention that Applicant’s and

Registrant’s services are related.

In support of the Examiner’s initial determination that the services offered under

Applicant’s 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 USPTO’s 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 PTO’s 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 [Applicant’s and Registrant’s respective
goods/services] … The difficulty with the examiner’s 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. Roundy’s, 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

Int’l Hotel P’ship, 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

Applicant’s and Registrant’s 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 Examiner’s contention that Applicant’s

and Registrant’s services are related for purposes of likelihood of confusion.

For the foregoing reasons, the Examiner should find that the services offered

under Applicant’s 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 court’s 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
WHERE’S 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 USPTO’s 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

Registrant’s and Applicant’s 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 Applicant’s 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).

Applicant’s services have been offered since August 2010. Registrant’s 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 Applicant’s products and Registrant’s 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).

Applicant’s 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 Applicant’s 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 registrant’s 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

Applicant’s 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 Examiner’s initial determination that Applicant’s 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

Applicant’s mark. In addition, because there is no likelihood of confusion between

Applicant’s mark and Registration No. 2,843,648, the latter should not serve as a basis for

the Examiner’s refusal to register Applicant’s 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 Applicant’s 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