`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`EVIDENCE SECTION
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)EVIDENCE FILE NAME(S)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)ORIGINAL PDF FILE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)CONVERTED PDF FILE(S)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(6 pages)
`
`The table below presents the data as entered.
`
`Entered
`
`76715771
`
`LAW OFFICE 111
`
`http://tsdr.uspto.gov/img/76715771/large
`
`GET UP AND GO
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`evi_701095314-132950402_._Get_Up_and_Go__76715771__-_OA_Response.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\767\157\76715771\xml4\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\767\157\76715771\xml4\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\767\157\76715771\xml4\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\767\157\76715771\xml4\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\767\157\76715771\xml4\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\767\157\76715771\xml4\ROA0007.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`Office Action Response for GET UP AND GO (76715771)
`
`GOODS AND/OR SERVICES SECTION (current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`030
`
`THE PREPARATION OF CAFFEINATED BAKED GOODS, namely, MUFFINS, COOKIES, BROWNIES AND GRANOLA
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 07/01/2012
`
`At least as early as 07/01/2012
`
`GOODS AND/OR SERVICES SECTION (proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`030
`
`THE PREPARATION OF CAFFEINATED BAKED GOODS, namely, MUFFINS, COOKIES, BROWNIES AND GRANOLA; Baked
`goods, namely, muffins, cookies, brownies and granola
`
`FINAL(cid:160)DESCRIPTION
`
`Baked goods, namely, muffins, cookies, brownies and granola
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE IN COMMERCE DATE
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Section 1(a)
`
`At least as early as 07/01/2012
`
`At least as early as 07/01/2012
`
`/Seth Willig Chadab/
`
`Seth Willig Chadab
`
`Attorney of record, Maryland bar member
`
`7037777319
`
`05/23/2014
`
`YES
`
`Fri May 23 13:38:05 EDT 2014
`
`USPTO/ROA-XX.XXX.XX.XX-20
`140523133805391541-767157
`71-50042eb18401adaf1b77aa
`ad7851be67bf71c6175238635
`b708f19e290c2fd5ac5-N/A-N
`/A-20140523132950402597
`
`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 76715771(cid:160)GET UP AND GO(Standard Characters, see http://tsdr.uspto.gov/img/76715771/large) has been amended as
`follows:
`
`EVIDENCE
`Evidence in the nature of Office Action Response for GET UP AND GO (76715771) has been attached.
`Original PDF file:
`evi_701095314-132950402_._Get_Up_and_Go__76715771__-_OA_Response.pdf
`Converted PDF file(s) ( 6 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 030 for THE PREPARATION OF CAFFEINATED BAKED GOODS, namely, MUFFINS, COOKIES, BROWNIES AND
`GRANOLA
`Original Filing Basis:
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 07/01/2012 and first used in commerce at least as early as 07/01/2012 , and is now in use in such commerce.
`
`
`
`Proposed:
`Tracked Text Description: THE PREPARATION OF CAFFEINATED BAKED GOODS, namely, MUFFINS, COOKIES, BROWNIES AND
`GRANOLA; Baked goods, namely, muffins, cookies, brownies and granola
`
`Class 030 for Baked goods, namely, muffins, cookies, brownies and granola
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 07/01/2012 and first used in commerce at least as early as 07/01/2012 , and is now in use in such commerce.
`SIGNATURE(S)
`Response Signature
`Signature: /Seth Willig Chadab/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 05/23/2014
`Signatory's Name: Seth Willig Chadab
`Signatory's Position: Attorney of record, Maryland bar member
`
`Signatory's Phone Number: 7037777319
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an
`associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not
`currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently
`filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or
`Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`Serial Number: 76715771
`Internet Transmission Date: Fri May 23 13:38:05 EDT 2014
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20140523133805391
`541-76715771-50042eb18401adaf1b77aaad785
`1be67bf71c6175238635b708f19e290c2fd5ac5-
`N/A-N/A-20140523132950402597
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Serial No.:
`Mark:
`
`76715771
`GET UP AND GO
`
`Get Up and Go Ventures LLC
`Applicant:
`Office Action Date: May 12, 2014
`
`RESPONSE TO MAY 12, 2014 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e—mailed on May 12, 2014. The Applicant
`respectfully submits the following response. Applicant su.bmits that the above—identif1ed
`trademark application for GET UP AND G0 is in condition for allowance to publication.
`
`Potential Section 2 d Refusal: Likelihood of Confusion
`
`Applicant submits a preliminary response to the potential section 2(d) refusal; however,
`Applicant reverses all rights to provide a detailed and more descriptive response if Examining
`Attorney Susan Leslie DuBois raises a Section 2(d) refusal in a subsequent Office Action.
`
`Preliminary Response with Reservation ofRights
`
`The USPTO suggests that it will refuse registration of the Applicant’s mark, GET UP AND GO,
`“because of a likelihood of confusion with the mark in U.S. Registration No. 4223 643.” “[T]he
`question of confusion is related not to the nature of the mark but to its effect ‘When applied to the
`applicant.” In re EI. du Pant de Nemous & Ca, 476 F.2d 1357. 1360-61 (C.C.P.A. 1973). The
`United States Court of Customs and Patent Appeals listed thirteen factors to weigh in the
`likelihood of confusion analysis and stated that all of the factors must be considered “When of
`record.” Id. at 1361. The Examining Attorney has indicated that similarity of the marks,
`similarity of the goods and/or services, and similarity of the trade channels of the goods and/or
`services Weigh against the Applicant’s mark. However, Applicant respectfully asserts that when
`all factors are weighed, the majority weighs against the existence of a likelihood of confusion.
`
`CAFFEINATED
`CHOCOLAIE CHIP COOKIE
`
`
`
`(1) Similarity of Conflicting Designations
`
`The first factor is the similarity of the conflicting designations, including in their appearance,
`sound, meaning or connotation, and commercial impression. In re E. I du Pont ole Nemours &
`Co, 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). A similar phrase found in two
`marks is not dispositive of a confiising similarity between the marks when the marks give off
`different commercial expressions. See Kellogg Co. v. Pack ’em Enterprises, Inc, 951 F.2d 330 (Fed.
`Cir. 1991). When Applicant’s mark (GET UP AND GO), and Registrant’s mark (GET UP & G0!)
`are compared, the appearance is similar but not identical.
`
`Visually, the phrase GET UP AND G0 is distinguished from the phrase GET UP & GO!. The
`structure and format are unique to the commercial impression of the Registrant’s mark. These
`terms further create a distinct commercial impression that is different from the Applicant’s mark.
`For at least these reasons, Applicants asserts that the mark GET UP AND G0 is different than
`the mark GET UP & GO!.
`
`(2) Similarity or Dissimilarity and the Nature of the Goods or Services
`
`The second factor is the similarity or dissimilarity and the nature of the goods or services as
`described in an application or registration or in connection with a prior use of the mark. In re E
`I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).
`
`There is no likelihood of confusion because Applicant’s goods, as amended, are different and
`offered to entirely disparate marketplaces. Applicant is providing baked goods while the
`Registrant’s mark is for energy drinks. Registrant’ s good is presumably an energy drink and
`there is no indication of how the product is marketed.
`
`The similarities between the Applicant’s and Registrant’s trademarks is insufficient to support a
`finding of likelihood of confusion. There is no evidence that the Applicant’ s and Registrant’s
`goods are used together or by the same purchasers. This factor weighs strongly against finding
`likelihood of confusion.
`
`(3) Similarity or Dissimilarity 0fEstablisl1e¢l Likely to Continue Trade Channels
`
`The third factor is the similarity or dissimilarity of established, likely-to-continue trade channels. In
`re E. I. du Pont de Nemours & Co, 476 F.2d at 1361, 177 USPQ at 567. This factor heavily weighs
`against a finding of a likelihood of confusion. Even where two marks are identical, courts and the
`TTAB routinely hold that there is no likelihood of confusion “if the goods or services in question
`are not related in such a way that they would be encountered by the same persons in situations
`that would create the incorrect assumption that they original from the same source.” T.M.E.P. §
`1207.1(a)(1) (citing Local Trademarks, Inc. v. Handy Boys, Inc, 16 U.S.P.Q.2d 1156 (T.T.A.B.
`1990) (LITTLE PLUMBER for drain opener not confusingly similar to LITTLE PLUMBER and
`Design for advertising services).
`
`Here, it is unclear as to the trade channels the Registrant uses. The trade channels for the
`Applicant’s goods are vast because the Applicant’s goods are sold online at the Applicant’s
`
`
`
`website, www.getupandgobaked.com. Applicant is the source of the baked goods and has
`control over the sales and channels of trade by means of their website.
`It being unclear as to the
`Registrant’s trade channels, the Registrant’s location listed on their registration is in
`Pennsylvania, however, Applicant has found no indication that there has been any commercial
`use of the Registranfs energy drink. Therefore, this factor weighs against the existence of a
`likelihood of confusion and in favor of the Applicant.
`
`(4) Conditions Upon Sales Are illade
`
`The fourth factor is the conditions under which and buyers to whom sales are made (i.e. impulse
`v. careful). Id. Consu.mers interested in Applicant’s services will be sophisticated consumers
`searching the inteinet for unique homemade baked goods. Therefore, consumers will carefully
`identify GET UP AND GO when searching for the Applicant’s goods. It is well-settled that the
`likelihood. of confusion is reduced where pu.rchasers and potential purchasers ofthe services at
`issue are sophisticated. See Electronic Design & Sales, Inc. v. Electronic Data Sys. Corp, 954
`P.2d 713, 718 (Fed. Cir. l992) (no confusion between identical marks where, inter alia, both
`parties’ goods and services “are usually purchased after careful consideration by persons who are
`highly knowledgeable about the goods or services and their source”); see also T.M.E.P. §
`l207.0l (d)(vii) (care in purchasing tends to minimize likelihood of confusion). Applicant’s
`customers are likely to exercise a high level of care and are not likely to be confused into
`thinking Registrant’s product originates from, or is sponsored by, Applicant or vice versa. This
`factor weighs heavily against a likelihood of confusion between these two marks.
`
`(5) Fame of the Prior Illark
`
`The fifth factor is the fame of the prior mark (e.g., sales, advertising, length of use, era). Id.
`There is no evidence that the prior mark is famous, in fact there is no evidence that the Registrant
`is even selling a product. This factor weighs against a likelihood of confusion.
`
`(6) Number and Nature ofSimilar II/Iarks in Use on Similar Goods
`
`The sixth factor is the number and nature of similar marks in use in connection with similar
`
`services. Id. In this case, the USPTO has not made any asseitions as to the number and nature of
`marks used in connection with baked goods.
`
`A search of the USPTO records for “GET UP AND GO” related trademarks, reveals ten records.
`
`See Exhibit A. Therefore, Applicant asserts that this factor weighs against finding a likelihood
`of confusion.
`
`(7) Nature and Extent ofAny Actual Confusion
`
`The seventh factor concerns the nature and extent of any actual confusion. Id. No evidence exists
`that any consumer has been confused by the use of these two marks. Further, there no evidence
`can be found online of the Registrant’s use of the mark for the goods claimed. Consequently,
`Applicant asserts that this factor weighs against finding a likelihood of confusion.
`
`
`
`(8) Length of Time During and Conditions under which There Has Been Concurrent Use
`Without Evidence ofActual Confusion
`
`The eighth factor is the length of time during and conditions under which there has been
`concurrent use without evidence of actual COI1fi1Sl0I1. Id Applicant’s mark has been in use since
`July 1, 2012. Registrant’s mark has been in use since November 24, 2009. Therefore, there has
`been concurrent use of the mark since 2012 without evidence of actual confusion. Therefore,
`this factor weighs in the Applicant’s favor.
`
`(9) Variety of Goods on which a Mark Is or Is Not Used
`
`The ninth factor is the variety of goods on which a mark is or is not used (house mark, “family”
`mark, product mark). In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361, 177 USPQ at 567.
`The Cited Registration is not a part of a family of marks. Consequently, this factor weighs
`against a likelihood of confusion.
`
`(10) Market Interface Between Applicant and the Owner ofa Prior Mark
`
`The tenth factor is the market interface between Applicant and the owner of a valid, prior mark.
`Id. In this case, there has been no interface between the Applicant and the Registrant, and
`therefore this factor is also in the Applicant’s favor.
`
`(1I) Extent to which Applicant has a Right to Exclude Others from Use of its Mark on its
`Goods
`
`The eleventh factor is the extent to which Applicant has a right to exclude others from use of its
`mark on its goods. Id. The Applicant cannot claim rights to exclusive use apart from common
`law usage of the mark since 2013. This factor is also in the Applicant’s favor.
`
`(12) Extent ofPotential Confusion
`
`The twelfth factor is the extent of potential confusion, i.e., whether de minimis or substantial. Id.
`Registrant’s use of the trademark does not involve substantial use of the mark in all fifty states.
`Since the Registrant’s mark is used in specific industries for specific clients, the potential for
`conf11sion is not likely to extend across the country through all economic classes. Therefore, the
`potential for confusion is de minimis and Weighs heavily against a likelihood of confusion.
`
`The twelfth factor is the extent of potential confusion, ie., whether de minimis or substantial. Id.
`Because (1) it is unclear as to what trade channels the Registrant uses, (2) there are numerous
`“GET—UP—AND—GO” related marks, and (3) the goods and commercial impression are so
`dissiminar that a potentital buyer would know they are not from the same source, the potential
`for confusion is de minimis and weighs heavily against a likelihood of confusion.
`
`
`
`(13) Whether There Are any Other Established Facts Probative ofthe Eflect of Use
`
`The thirteenth factor looks to whether there are any other established facts probative of the effect
`of use. Applicant reserves all rights to provide a detailed and more descriptive response on this
`factor if the USPTO should raise a Section 2(d) refusal in a subsequent Office Action. Applicant
`further asserts that the USPTO has found a mark capable of registration, even in cases where the
`marks are nearly identical and are covered under the same classification. Furthermore, courts
`have long held that the addition of different terms to a common element appreciably reduces the
`likelihood of confusion between two marks. See US Trust V. U.S. States Trust Co., 210 F. Supp.
`2d 9, 27-28 (D. Mass 2002) (UNITED STATES TRUST COMPANY not confiisingly similar to
`UNITED STATES TRUST COMPANY OF BOSTON, both for financial services); Colgate
`Palmolive Co. V. Carter—Wallace, Inc., 432 F.2d 1400, 1402, 167 U.S. P. Q. 529, 530 (C.C.P.A.
`1970) (PEAK PERIOD not confiising similar to PEAK); Servo Corp. Am. v. Servo-Tek Prod.
`Co., 289 F. 2d 955, 981 129 U.S.P.Q. 352, 353 (C.C.P.A. 1961) (SERVOSPEED not confusingly
`similar to SERVO); Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F. 2d 1560, 1564, 4
`U.S.P.Q. 2d 1793, 1796 (Fed. Cir. 1987) (SWEATS not confiising similar to ULTRA
`SWEATS), both for sportswear); Gen. Mills Inc. V. Kellog Co., 824 F. 2d 622, 627, 3 U.S.P.Q.
`2d 1442, 1446 (8th Cir. 1987) (OATMEAL RAISIN CRISP not confusingly similar to APPLE
`RASIN CRISP, both for breakfast cereal); Consol. Cigar v. RJR Tobacco Co., 491 F.2d 1265,
`1267, 181 U.S.P.Q. 44, 45 (C.C.P.A. 1974) (DUTCH APPLE for pipe tobacco not confiisingly
`similar to DUTCH MASTERS for cigars).
`
`When determining whether an Applicant’s mark creates a likelihood of confusion, with marks
`covered by cited registrations " [a] showing of mere possibility of confiision is not enough; a
`substantial likelihood that the public will be confused must be shown." Omaha Natl. Bank, 633
`F. Supp. at 234, 229 U.S.P.Q. at 52. Applying the factors set forth in DuPont, and absent
`“substantial doubt,” In re Mars, Inc., 741 F. 2d 395, 396 222 U.S.P.Q. 938 (Fed. Cir. 1984),
`registration of Applicant’s mark is appropriate.
`
`Recitation of the Goods
`
`Applicant adopts the following identification:
`
`Baked goods, namely, muffins, cookies, brownies and granola in International Class 30
`
`Conclusion
`
`For these reasons and others, the majority of these factors weigh against a finding of a likelihood
`of confusion. Applicant respectfully submits that the mark for GET UP AND GO does not
`create a likelihood of confusion with Registration Number 4223643 for GET UP & GOL
`
`
`
`Exhibit A
`
`Registration /
`Application
`No
`
`4212973.
`4009868
`
`Hangovei‘ Jaes
`Products. LLC
`
`86258639.
`86258614
`
`Smith. Shalanda
`
`HANGOVER
`JOE'S GET UP &
`GO!
`
`GET UP N GO
`
`GET UP AND GO
`VEGGIE!
`GET UP AND GO
`
`4526419
`
`4507732
`
`GET UP AND GO
`
`3242958
`
`Galaxy Nutriticnal
`Foods, Inc.
`Global Ideas Direct
`LLC
`
`Alexis A. Lawson
`and Michael R.
`Lawson
`
`GET UP AND GO
`
`85864203
`
`Gamble, Bruce
`
`Get Up & G0
`
`4293395
`
`Pacific Casual LLC
`
`4201263
`
`Epstein. Mark D.
`
`GET UP AND GO
`- ONE DAY
`RECOVERY
`BREAST
`AUGMENTATION
`
`GET UP & GOT
`
`2648294
`
`GET UP AND
`GO!
`
`1883532
`
`Fairfield Resnrts.
`Inc.
`UNITED
`ADVERTISING
`
`PUBLICATIONS,
`INC.
`
`