In Response to the March 10, 2009 Office Action for Application Serial No. 77631237

for “SILVERFIN LACROSSE” and design:

Applicant wishes to inform the Examining Attorney that the disclaimer of the term “LACROSSE”

has been entered, as suggested. With respect to the potential 2(d) refusal, Applicant respectfully

requests that the Examining Attorney reconsider and withdraw their determination of a likelihood

of confusion between Applicant’s mark and Application Serial No. 78566629 for “SILVERFIN,”

owned by Ian Fleming Publications Limited and both for use on:

“Toys, games and playthings, namely, toy guns, collectable toy
figures, arcade-type electronic video games, hand held units for
playing electronic games; playing cards; gymnastic and sporting
articles, namely, gymnastic apparatus, sport balls; cricket bats;
baseball mitts, baseball bats, baseballs; hockey sticks, hockey pucks;
bags specially adapted for sports equipment; toy action figures and
accessories therefor; board games; fish hooks; fishing tackle; fishing
rods; fishing reels; lines for fishing; radio-controlled toy vehicles;
rackets for tennis, badminton, racquetball, and squash; skis; and
parts and fittings for all the aforesaid goods.”

Applicant’s mark, when applied to its goods and considered under the totality of the

circumstances, is not apt to cause confusion for consumers as to the source of the goods.

THE MARKS NEED TO BE EXAMINED WITH RESPECT TO THE RELATIONSHIP OF
THE MARKS TO THE GOODS

In making this determination, the First Office Action states that there may be a likelihood
of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).

The “possible confusion” alluded to no doubt stems from the similarity of the marks themselves,

both containing the arbitrary term “silverfin” for use on goods that relate to sporting goods,

though only Applicant’s relates to lacrosse equipment specifically. Though Applicant understands

that an initial determination of possible confusion is not unreasonable, further analysis of the

situation reveals that confusion is in fact unlikely. Upon properly comparing the goods, the

activities surrounding their marketing, and not just considering the marks or their uses on paper,

but considering the marks and their uses within the context of reality, there is no reason to suspect

any likelihood of confusion.

With respect to a 2(d) analysis, it is improper to have “regarded only the marks, without

their significance, and the broad goods descriptions, without the relation of the marks to the

goods.” See In re Ferrero, 479 F.2d. 1395 , 1396, 178 U.S.P.Q. 167 (CCPA 1973). When

attempting to determine how the marks are used in actuality, the Board noted that “it is improper

to consider the identification in a vacuum…” In re Trackmobile Inc., 15 USPQ2d 1152, 1154

(TTAB 1990).

The cited application is owned by Ian Fleming Publications Limited. According to this

company’s official website, it is “best known as the creator of the world’s best known secret

agent, James Bond.” (See Attachment A). Additionally, the term “silverfin” is the title of a

Young Bond novel in the Bond series. (See Attachments B and C). All the aforementioned

goods – the toys, the sports equipment, the playing cards, etc. – are all part of a cross-marketing

campaign to tie the book to its merchandising. In the event the application ever matures into a

registration, and Ian Fleming Publications Limited launches its SilverFin line of toys, the goods

will always be closely associated with the Bond character.
Applicant’s goods on the other hand are exclusively serious lacrosse equipment. (See

Attachment D). Applicant’s website claims “members of the Hollywood Men’s Lacrosse Team,

Los Angeles’ premier men’s lacrosse club, use Silverfin titanium lacrosse handles.” Applicant is

not in the business of providing children’s toys. Applicant provides lacrosse equipment of

sufficient quality to be preferred by competitive adults. Consumers encountering Applicant’s

branded goods are not apt to confuse them with those bearing Fleming Publication’s James

Bond’s SilverFin brand. In fact, as the cited Application does not specifically name “lacrosse

equipment,” it is unlikely consumers would even recall the one brand when encountering the

other, what less confuse the goods as to the source.

When in actuality the goods are not likely to be mistaken, their similarities becomes more

of a “peripheral inquiry.” Interstate Brands Corp. v. Celestial Seasonings. Inc., 576 F.2d 926, 927

(C. C.P.A. 1978) (“RED ZINGER” not confusingly similar with “ZINGERS” for food products;

“‘[t]he means of distribution and sale although certainly relevant, are areas of peripheral inquiry.

The fundamental inquiry mandated by Sec. 2(d) goes to the cumulative effect of differences in the

essential characteristics of the goods and differences in the marks’”). See also EZ Loader Boat

Trailers v. Cox Trailers. Inc., 706 F.2d 1213, 12]4 (Fed. Cir. 1983) (“EZ LOADER” and “MINI

LOADER” marks not confusingly similar with “SUPER LOADER” where all marks were for

boat trailers distributed through the same trade channels to the same customers); Long John

Distilleries. Ltd. v. Sazerac Co., 426 F.2d 1406, 1407 (CCP A 1970) (“FRIAR JOHN” (brandy)

not confusingly similar to “LONG JOHN” (scotch whiskey) Wooster Brush, 231 U.S.P.Q. at 316,

318 (“POLY PRO” not confusingly similar to “EASY FLO” where both marks were used for

paint applicators); Bell Laboratories, 644 F. Supp. at 547 (“FINAL FLIP” and “FLIP” marks both

for pesticides not confusingly similar); Land-O-Nod, 220 U.S.P.Q. at 62, 67 (“CHIRO-MATIC”
not confusingly similar to “CHIROPRACTIC” where both marks were used for mattresses);

Knight Textile Com. v. Jones Investment Co.. Inc., 2005 WL 1787250 (T.T.A.B. Jun. 21, 2005)

In light of this, Applicant kindly wishes to suggest that in the present case, as was the case

in In re Ferrero, the Official Action “made too much” of the common term in marks used for

related goods and services when determining the issue of likelihood of confusion, and made too

little of how the marks were actually used. (from In re Ferrero, 479 F.2d. 1395 , 1396, 178

U.S.P.Q. 167 (CCPA 1973) where the court determined the board made too much of the fact that

TIC TAC for candy is two-thirds of TIC TAC TOE for ice cream and that TIC TAC would

“bring to mind” TIC TAC TOE.) Even if an individual familiar with the SilverFin Bond book and

associated merchandise recalls them while while encountering Applicant’s premier lacrosse

equipment, it still stands that:

“The fact that one mark may bring another mark to mind does not in itself establish
likelihood of confusion as to source. Compare Lever Brothers Co. v. Producers
Chemical Service, 283 F.2d 879, 48 CCPA 744 (1960). The very fact of calling to
mind may indicate that the mind is distinguishing, rather than being confused by,
two marks. In Lever Brothers we unanimously found SHUX registrable over LUX
for like goods (off-the-shelf soap products) while fully conscious of the fact that
purchasers seeing or hearing SHUX would almost certainly think of LUX-and at
the same instant realize the distinction. Seeing a yellow traffic light immediately
“calls to mind” the green that has gone and the red that is to come, or vice versa;
that does not mean that confusion is being caused. As we are conditioned, it means
exactly the opposite.” In re Ferrero, 479 F.2d. 1395 , 1396, 178 U.S.P.Q. 167
(CCPA 1973).

Considering the real significance of the marks stem from their actual use and not merely their

associated International Classes, or even identification of goods, the cited goods are not likely to

confuse consumers into thinking they are manufactured by or affiliated with the company that

brings them Applicant’s, or vice versa. In this respect, there is no likelihood of confusion as to
the source of these goods and the application should proceed towards publication.

CONCLUSION

Based on the foregoing, it is respectfully submitted that the Official Action should not

have found that the cited application so resembles Applicant’s mark so as to be likely to cause

confusion, a mistake or any deception. Applicant’s mark is demonstrably unique and the

applicable authorities dictate that under similar circumstances, registration of the mark is

appropriate. It is respectfully requested that the Official Action be reversed insofar as it denied

registration on the grounds of likelihood of confusion.