Goodson, James A.

Mark: TEXPORT standard character mark
Serial No.: 77100095
Filing Date: February 6, 2007
Int’l Class(es): 025

Response to Office Action dated May 24, 2007
Trademark Examining Attorney: Gretta Yao, Law Office 105

Introduction. The Office Action raises the following substantive matters, which are addressed in this
Response:

1. Refusal of registration because of a likelihood of confusion under Section 2(d) of the Trademark
Act with one (1) cited registered mark; and

2. Asserted indefinite identification of goods.

List of Attachments. Integral to the discussion that follows are the attachments, identified in the following
list, to which reference will be made throughout the discussion in this Response To Office Action:

(a) TEKSPORT – Source Information & Identity

A1 – SoExchCoTXcorpinf.pdf
A2 – texsport-superpages-houstonTX.pdf
A3 – MessKitRecall-CPFC-SoExchCo-TEXSPORT.pdf
A4 – TEXPORT TM Apps [comb-ow].pdf

(b) TEKSPORT – Products, Markets, Channels of Trade

B1 – texsport.com-home.pdf
B2 – texsport.com-welcome.pdf
B3 – texsport.com-products.pdf
B4 – texsport.com-etail.pdf
B5 – texsport.com-contact.pdf
B6 – texsport.net.pdf
B7 – texsport-sportsmansguide.com.pdf
B8 – texsport-avidoutdoors.com.pdf
B9 – texsport-amazon.com.pdf
B10 – googlesearch-texsport.pdf (first 40 hits)
B11 – googlesearch-texsport clothing.pdf (first 40 hits)
B12 – googlesearch-texsport radio.pdf (first 40 hits)
B13 – googlesearch-texsport television.pdf (first 40 hits)
B14 – googlesearch-texsport broadcast.pdf (first 40 hits)

(c) TEXPORT – Products, Markets, Channels of Trade

C1 – texportusa.com-home.pdf
C2 – texportusa.com-contact.pdf
C3 – TEXPORT USA catalogue.pdf (several parts because of size)

Likelihood of Confusion Under Section 2(d) of the Trademark Act.

Registration has been refused because of asserted likelihood of confusion with the mark in U.S.
Registration No. 1279033. In view of Applicant’s proposed changes to the description of goods (see

Argument Text – TEXPORT SN77100095 RTOA Page 1 of 5
below), and for the other reasons stated in this Response To Office Action, Applicant believes there is not
a likelihood of confusion between Applicant’s mark and the cited mark (which has been canceled) or with
another mark registered by the same owner in U.S. Registration No. 2843198, registered May 18, 2004,
which Applicant believes was meant to be cited. Applicant therefore requests the Examiner to withdraw
the refusal to register, and to permit registration.

Cited Mark Has Been CANCELED. As a preliminary matter, Applicant notes that the mark in
U.S. Registration No. 1279033 was canceled as of February 26, 2005. Therefore, regardless of the
substantive determination on the merits, the cited mark should not stand as an impediment to the
registration of Applicant’s mark in S/N 77100095.

Incorrect Mark Cited. The Office Action identifies the allegedly confusingly similar goods as
“apparel, namely ponchos, raincoats, wader suspenders, parkas, rainsuits,” in IC 025. These are not the
goods described in the cited mark in canceled U.S. Registration No. 1279033. Rather, these goods are
described in U.S. Registration No. 2843198, registered May 18, 2004, by the same owner as the cited
canceled registration.

Based on the incorrect citation, Applicant requests that the Office Action be withdrawn
and that Applicant’s TEXPORT Mark be approved for registration.

Notwithstanding the incorrect citation, Applicant in the remainder of this Response To Office
Action addresses the issues raised as if the TEXSPORT mark in U.S. Registration No. 2843198 (referred
to hereinafter as the “TEXSPORT 2843198 Mark”) had been cited.

Dupont Factors – Comparing the Marks. As stated in the Office Action, under Dupont’s first
stage of analysis, the marks are compared for similarities in sound, appearance, meaning or connotation.

Sound. Applicant concedes that the word “TEXPORT” in Applicant’s TEXPORT Word
Mark and the word “TEXSPORT” in the TEXSPORT 2843198 Mark are essentially phonetically
equivalent and thus similar sounding. These marks, however, are not used predominantly in an
aural context, in which sound is a significant element. Applicant does not use broadcast
advertising. Applicant’s research has not uncovered any evidence of – and the Office Action does
not cite to – any such verbal/aural usage by the owner of the TEXSPORT 2843198 Mark. See
Attachments B12, B13 and B14, which show the results of on-line searches to discover
associations between the word “TEXSPORT” and the words “radio”, “television” or “broadcast”.
No such associations were discovered. The evidence shows that the TEXSPORT 2843198 Mark
is used exclusively in a visual context – in catalogs, on the Internet and on the goods themselves.
This extensive use in print and other visual media far outweighs and has far greater impact than
any perhaps incidental verbal use. In these circumstances, therefore, the phonetic similarity
between the two marks does not create a likelihood of confusion.

Appearance. Applicant seeks to register TEXPORT as a standard character mark. By
contrast, design elements are an integral part of the TEXSPORT 2843198 Mark. The design is
evocative of mountains and the outdoors. Furthermore, the TEXSPORT 2843198 Mark is used all
or most of the time in conjunction with the owner’s other registered mark AUTHENTIC
ADVENTURE GEAR, U.S. Registration No. 2091866. For examples of actual use in commerce of
the TEXSPORT 2843198 Mark, please see Attachments B1, B2, B3, B4, B5, B6 and B8. In these
ways, the appearance of the TEXSPORT 2843198 Mark is substantially different than the
appearance of the mere word TEXPORT in Applicant’s TEXPORT Word Mark. Because of the
lack of similarity in appearance, there is no likelihood of confusion based on the appearance of
the marks.

Meaning. “Meaning” is not an element of the comparison of Applicant’s TEXPORT Word
Mark and the TEXSPORT 2843198 Mark, because both are coined words.

Argument Text – TEXPORT SN77100095 RTOA Page 2 of 5
Connotation. The word element of the TEXSPORT 2843198 Mark connotes in actual
use the State of Texas and sports, while the shape and outline of the design connotes mountains
and the outdoors. The outdoors and mountain connotation is amplified by the simultaneous use of
the AUTHENTIC ADVENTURE GEAR Mark. These connotations are made even more clear from
examining information obtained about the source of the goods described in the TEXSPORT
2843198 Mark. According to U.S. Registration No. 2843198, the owner is Southern Exchange
Co., located in Houston, Texas. A review of Texas business entity records turns up Southern
Exchange Management LLC, but no Southern Exchange Co. or other variant using the words
“Southern Exchange”. It is clear, however, upon inspection of the information in Attachments A1,
A2, A3 and A4, that Southern Exchange Co. and Southern Exchange Management LLC, as well
as Southern Exchange, Inc. (the owner named in U.S. Registration No. 2091866) are all one and
the same entity or at the very least closely affiliated. Southern Exchange/Texsport is an
enterprise that has been in business in Texas for more than 20 years, in the field of camping gear
and related products, under a variety of names, as suggested by the trademark application
history set forth in Attachment A4. The contents of the on-line search results set forth in Exhibits
B10, B11, B12, B13 and B14 buttress the conclusion that the TEXSPORT 2843198 Mark and its
owner overwhelmingly are associated with camping activities and equipment. The overriding point
is that this enterprise from Texas that has been doing business from Texas under the name
Texsport is known for camping gear, and this has become part of the connotation of the
TEXSPORT 2843198 Mark.

Applicant’s TEXPORT Mark is used in connection with an entirely different type of goods,
sold through different market channels and to different customer bases. The details of the
description of goods, etc. are developed in detail below. As applicable to the subject of
connotations, it will be clear that Applicant’s TEXPORT Mark and the TEXSPORT 2843198 Mark
are associated (i.e., have connotations) with distinct and different product lines, sold to different
customers through different channels of trade.

Because of the different associations and connotations of Applicant’s TEXPORT Mark
and the TEXSPORT 2843198 Mark, there is no likelihood of confusion based on that aspect of
the marks.

The above discussion assumes that the types of products and the markets and channels of trade
in which owners of trademarks operate have a bearing on the “connotations” of a trademark. These
factors are even more strongly relevant to the second stage of the Dupont analysis; see the next section.

Dupont Factors – Comparing the Goods. In this part of the Response To Office Action,
Applicant compares the goods associated with the TEXSPORT 2843198 Mark on one hand, and with
Applicant’s TEXPORT Mark on the other. Applicant believes it will become clear in from what follows that
Applicant’s TEXPORT Mark and the TEXSPORT 2843198 Mark are used in connection with very distinct
product lines sold through different channels of trade to different customer bases, with the result that
there is not any likelihood of confusion created by similarity of products.

We have already reviewed information about this subject under the sub-heading Connotation
above, insofar as it was relevant to comparing the connotations associated with Applicant’s TEXPORT
Mark and the TEXSPORT 2843198 Mark. That information will not be repeated here, but is incorporated
by reference in this discussion comparing the goods associated with the respective trademarks at issue.

Goods Under TEXSPORT 2843198 Mark. The TEXSPORT 2843198 Mark is for goods
in International Class 25, described as “Apparel, namely, ponchos, raincoats, wader suspenders,
parkas, and rainsuits.” It is expressly limited to ponchos, raincoats, wader suspenders, parkas,
and rainsuits. It is not a broad class of apparel. Rather, with reference to Attachments B1 through
B14 establishing context, these are ponchos, raincoats, wader suspenders, parkas, and rainsuits
marketed and sold as camping gear. It becomes quickly apparent upon review that the

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TEXSPORT product line is not apparel as such and TEXSPORT is not known for apparel. Rather,
the name and mark TEXSPORT has a market presence and association with camping and
related outdoor activities. See in particular in Attachment B1, the statement, “For over 40 years
Texsport has been supplying your local sporting goods dealer with camping and outdoor
recreational equipment”. See also the list of products in Attachment B3 and the list of retailers
selling these products in Attachment B4. The goods covered by the TEXSPORT 2843198 Mark
as actually used in commerce are only a very small part of the TEXSPORT market presence and
reputation.

Goods Under Applicant’s TEXPORT Mark. The Application for the TEXPORT standard
character mark, SN 77100095, is for goods in International Class 25, described as “Leather
and/or nylon chaps, jackets, pants, gloves, boots and suits”. Further explanation of the nature of
these goods is necessary to demonstrate that Applicant’s goods and the TEXSPORT goods (rain
gear, etc.) are not at all confusingly similar.

Applicant’s goods are what is often known as “motorcycle leathers,” although they also
are used with other unenclosed motorized vehicles such as ATV’s and snowmobiles. They are
indeed chaps, jackets, pants, gloves and suits (Applicant will remove boots from the description
of goods; they once were but no longer are part of Applicant’s product line.), but they can be
described more technically and accurately as:

Chaps, jackets, pants, gloves and suits made for use in riding and operating motorcycles
and other unenclosed motorized vehicles; having a heavy protective outer layer made of
one or more of the following materials: leather, nylon and 500 denier or better synthetic
textile; and incorporating one or more of the following technical features: Kevlar fabric,
body armor, ventilation systems and reflective systems.

In short, Applicant’s products may be apparel for purposes of International Classification,
but they are not apparel or clothing as commonly understood. See Attachments C1, C2 and C3
for more detailed information about Applicant’s TEXPORT products.

Applicant sells its products only through certain specialized channels, which are
motorcycle, ATV and snowmobile dealers, and after-market parts suppliers for these types of
motorized vehicles. The customers for Applicant’s products are people who use these types of
motorized vehicles.

The information presented in this Response To Office Action conclusively rebuts the assumption
stated in the Office Action that the normal marketplace for these goods are clothing and department
stores. It is not. It is sporting and camping goods stores in the case of the TEXSPORT 2843198 Mark and
motorcycle and other outdoor vehicle dealers and parts dealers in the case of Applicant’s TEXPORT
mark.

Applicant believes it has been sufficiently demonstrated by the evidence presented and
discussed herein that the Applicant’s TEXPORT Mark and the TEXSPORT 2843198 Mark are not used
on similar goods, are not sold to the same customers, and do not reach market through the same
channels of trade. Neither party’s goods are apparel or clothing in the ordinary sense, sold through
ordinary apparel or clothing outlets. Each party’s goods are a specialized product sold in connection with
particular activities – riding motorcycles and similar vehicles in the case of Applicant’s TEXPORT Mark,
and camping and related outdoor recreational activities in the case of the TEXSPORT 2843198 Mark.

For the reasons stated and based on the evidence taken as a whole, Applicant contends that it
cannot be stated realistically that the marks in question are confusingly similar, and requests that
Applicant’s TEXPORT Mark be approved for registration.

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Identification and Classification of Goods and Services. The Examiner has suggested several
possible limiting amendments. Applicant proposes, however, to change the description of good to be as
previously discussed, and now read:

(IC 025) Chaps, jackets, pants, gloves and suits made for use in riding and operating motorcycles
and other unenclosed motorized vehicles; having a heavy protective outer layer made of one or
more of the following materials: leather, nylon and 500 denier or better synthetic textile; and
incorporating one or more of the following technical features: Kevlar fabric, body armor,
ventilation systems and reflective systems

These proposed change in description are permissible because they are do not change or enlarge the
categories or types of goods but instead limit the description and more narrowly define the goods than
was the case with the original description.

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