J&J Goudeau, L.L.C.

BLAZIER CHRISTENSEN BROWDER & VIRR
A PROFESSIONAL CORPORATION
ATTORNEYS AND COUNSELORS

BARTON OAKS PLAZA
901 S. MOPAC EXPY., BLDG. V, STE. 200
JOHN C. BLAZIER AUSTIN, TEXAS 78746 TELEPHONE (512) 476-2622
FLEUR A. CHRISTENSEN FACSIMILE (512) 476-8685
THOMAS F. VIRR**
PAUL K. BROWDER WWW.BLAZIERLAW.COM **BOARD CERTIFIED-TAX LAW, TEXAS BOARD
JUSTIN M. WELCH OF LEGAL SPECIALIZATION
JONATHAN S. CONNOR
JOHN P. FERGUSON

writer’s direct e-mail: [email protected]
April 7, 2017
Mr. Daniel Donegan
Trademark Examining Attorney via TEAS
Law Office 104
P.O. Box 1451
Alexandria, Virginia 22313-1451

Re: Response to Office Action letter for Application, serial no. 76 / 720078,
for the Mark OTTER PASS, on behalf of Applicant, J&J Goudeau, L.L.C.

Dear Mr. Donegan:

Pursuant to your Office Action letter for the above Mark, please consider the following in
support of issuing a Notice of Allowance:

Likelihood of Consumer Confusion.

The Office Action letter refused issuance of a notice of allowance letter citing a
likelihood of confusion with the mark in U.S. Registration No. 4,516,743 for OTTER, used for
“luggage, namely, travel bags and trunks.” Applicant respectfully disagrees for the following
reasons:

The Office Action letter downplays the significance of PASS in Applicant’s mark, citing
case law for the proposition that consumers are “generally more inclined to focus on the first
word in any trademark.” The Office Action letter contends “[t]he second word in the
Applicant’s mark, PASS, is not as prominent and does not appear to create a separate
commercial impression when combined to for the applied-for mark, OTTER PASS.”

However, the “first-word rule” is generally applied when the second word is generic or
descriptive, and adds nothing of significance to the first word. For example, in Palm Bay
Imports v. Veuve Clicquot, the Court found the addition of ROYALE in VEUVE ROYALE
insufficient to distinguish the mark because ROYALE was “largely laudatory and hence non-
source identifying.”1 And, in In re Integrated Embedded, the Court found the addition of
GROUP insufficient to distinguish BARR GROUP because GROUP was merely descriptive and
disclaimed.2 Additional examples are plentiful.3

1 See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369,
1373-1374 (Fed.Cir. 2005).
2 In re Integrated Embedded, 120 U.S.P.Q.2d 1504, 1513 (TTAB 2016).
3 E.g. Streamline Production Systems, Inc. v. Streamline Manufacturing, Inc., 2017 WL 1031305 (5th
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Here, PASS in OTTER PASS is not descriptive or generic. Rather, it is intended to
evoke a mythical geographic place. Specifically, according to the National Geographic article at
Exhibit A, a

“pass is a gap, or break, in high, rugged terrain such as a mountain ridge [formed]
when a glacier or stream erodes, or wears away, the land between areas of higher
terrain. Passes often provide the easiest routes for people to travel across steep
mountain ranges. For this reason, they have played an important role throughout
human history in migration, trade, and settlement.”

For example, Donner Pass is renowned as the westward route for pioneers in the 1800’s, and
where the famous Donner Party was prevented from passing west during the winter of 1846.4 A
list of other famous passes is included at Exhibit B.

Given the well-known and recognized meaning of PASS, consumers are likely to view
the mark in its entirety, and not focus on the first word.

Indeed, this is consistent with how marks are to be evaluated. That is, courts “must
consider the overall impression created by the marks.”5 Also, they are to “look at a multi-word
mark as a unitary whole in its given arrangement, and not parse apart the constituent terms.”6
To this end, “a number of courts have rejected the first-word test as one amenable to broad
application,” in favor of a review of all the words in the mark in determining similarity.7

Please do not hesitate to call with questions or comments.

Sincerely,

Justin M. Welch
For the Firm

cc: client via email

Cir. 2017) (finding STREAMLINE MANUFACTURING and STREAMLINE PRODUCTION
SYSTEMS confusingly similar due to descriptive wording); Presto Prods. Inc. v. Nice-Pak Prods.,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (refusing registration of KIDWIPES in favor or registration
of KID STUFF); see Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876 (Fed.
Cir. 1992) (refusing registration of CENTURY LIFE OF AMERICA in favor of registration for
CENTRY 21 where LIFE OF AMERICA descriptive and disclaimed); In re Denisi, 225 USPQ 624,
626 (TTAB 1985) (refusing registration of PERRY’S PIZZA in favor of registration for PERRY’S);
and In re South Bend Toy Mfg. Co., 218 USPQ 479, 480 (TTAB 1983) (refusing registration of LIL’
LADY BUGGY for toy doll carriages in favor of registration for LITTLE LADY for doll clothing).
4 See Wikipedia article at Exh. C.
5 E. Remy Martin & Co., v. Shaw-Ross Intern. Imports, Inc., 756 F.2d 1525, 1531 (11th Cir. 1985).
6 Xtreme Lashes, L.L.C. v. Xtended Beauty, Inc., 576 F.3d 221, 232 (5th Cir. 2009).
7 See Mr. Travel, Inc. v. V.I.P. Travel Service, Inc., 268 F.Supp. 958, 962 (N.D.Ill. 1966) (citing
Glenmore Distilleries Co. v. National Distillers Products Corp., 101 F.2d 479 (4th Cir. 1939) and
finding first word MR. insufficient to create likelihood of consumer confusion between MR. TRAVEL
and MR. V.I.P.).
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