PTO Form 1957 (Rev 9/2005)
`
`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
`
`The table below presents the data as entered.
`
`Entered
`
`85963631
`
`LAW OFFICE 109
`
`http://tsdr.uspto.gov/img/85963631/large
`
`F3 OUTDOORS
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`LEGAL ENTITY SECTION (current)
`
`TYPE
`
`sole proprietorship
`
`STATE/COUNTRY WHERE LEGALLY ORGANIZED
`
`Mississippi
`
`LEGAL ENTITY SECTION (proposed)
`
`TYPE
`
`limited liability company
`
`STATE/COUNTRY WHERE LEGALLY ORGANIZED
`
`Mississippi
`
`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)(7 pages)
`
`evi_102001020-215503819_._F3_OUTDOORS-RESPONSE.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\859\636\85963631\xml9\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\859\636\85963631\xml9\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\859\636\85963631\xml9\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\859\636\85963631\xml9\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\859\636\85963631\xml9\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\859\636\85963631\xml9\ROA0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\859\636\85963631\xml9\ROA0008.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`arguments in response to the 2(d) refusal against registration number 3946247 and a
`potential 2(d) refusal against serial number 79107681.
`
`GOODS AND/OR SERVICES SECTION (025)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`025
`
`Clothing: such as, tops, pants, shorts, gloves, fleece pullovers, vests, sweatshirts, jackets, socks headwear and shirts
`
`FILING BASIS
`
`Section 1(b)
`
`(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)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`GOODS AND/OR SERVICES SECTION (025)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`025
`
`Clothing: such as, tops, pants, shorts, gloves, fleece pullovers, vests, sweatshirts, jackets, socks headwear and shirts; Clothing, namely, tops,
`pants, shorts, gloves, fleece pullovers, vests, sweatshirts, jackets, headwear and shirts
`
`FINAL(cid:160)DESCRIPTION
`
`Clothing, namely, tops, pants, shorts, gloves, fleece pullovers, vests, sweatshirts, jackets, headwear and shirts
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (042)(no change)
`
`ADDITIONAL STATEMENTS SECTION
`
`SIGNIFICANCE OF MARK
`
`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
`
`F3 appearing in the mark has no significance nor is it a term of art in the relevant
`trade or industry or as applied to the goods/services listed in the application, or any
`geographical significance.
`
`/avann/
`
`Antonio G. Vann
`
`Attorney of Record, VA Bar Member
`
`7037777319
`
`03/27/2014
`
`YES
`
`Thu Mar 27 22:08:49 EDT 2014
`
`USPTO/ROA-XX.XXX.XX.XX-20
`140327220849008131-859636
`31-50081f8f695ee819a7beaa
`2f8469ccecd082294cde2f64b
`9441de541a6dc3a5f9-N/A-N/
`A-20140327215503819615
`
`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. 85963631(cid:160)F3 OUTDOORS(Standard Characters, see http://tsdr.uspto.gov/img/85963631/large) has been amended as
`follows:
`
`EVIDENCE
`Evidence in the nature of arguments in response to the 2(d) refusal against registration number 3946247 and a potential 2(d) refusal against serial
`number 79107681. has been attached.
`Original PDF file:
`evi_102001020-215503819_._F3_OUTDOORS-RESPONSE.pdf
`Converted PDF file(s) ( 7 pages)
`Evidence-1
`
`

`

`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 025 for Clothing: such as, tops, pants, shorts, gloves, fleece pullovers, vests, sweatshirts, jackets, socks headwear and shirts
`Original Filing Basis:
`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a
`collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with
`the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the
`applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in
`connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the
`mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification
`standards of the applicant.
`
`Proposed:
`Tracked Text Description: Clothing: such as, tops, pants, shorts, gloves, fleece pullovers, vests, sweatshirts, jackets, socks headwear and shirts;
`Clothing, namely, tops, pants, shorts, gloves, fleece pullovers, vests, sweatshirts, jackets, headwear and shirts
`
`Class 025 for Clothing, namely, tops, pants, shorts, gloves, fleece pullovers, vests, sweatshirts, jackets, headwear and shirts
`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a
`collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with
`the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the
`applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in
`connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the
`mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification
`standards of the applicant.
`
`APPLICANT AND/OR ENTITY INFORMATION
`Applicant proposes to amend the following:
`Current: F3 Outdoors, a sole proprietorship having an address of
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)695 Tara Road
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Brandon, Mississippi 39042
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)United States
`
`Proposed: F3 Outdoors, a limited liability company legally organized under the laws of Mississippi, having an address of
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)695 Tara Road
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Brandon, Mississippi 39042
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)United States
`
`ADDITIONAL STATEMENTS
`Significance of wording, letter(s), or numeral(s)
`F3 appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as applied to the goods/services listed in the
`application, or any geographical significance.
`
`SIGNATURE(S)
`Response Signature
`Signature: /avann/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 03/27/2014
`Signatory's Name: Antonio G. Vann
`Signatory's Position: Attorney of Record, VA 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: 85963631
`Internet Transmission Date: Thu Mar 27 22:08:49 EDT 2014
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20140327220849008
`131-85963631-50081f8f695ee819a7beaa2f846
`9ccecd082294cde2f64b9441de541a6dc3a5f9-N
`/A-N/A-20140327215503819615
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`Serial N0.:
`
`Filed:
`Trademark Atty:
`Word Mark:
`
`F3 Outdoors LLC
`85963631
`
`June 19, 2013
`Deborah E. Iobo
`F3 OUTDOORS
`
`RESPONSE TO OFFICE ACTION DATED SEPTEMBER 27, 2013
`
`This Response is filed in reply to the Office Action e-mailed on September 27, 2013. The
`
`Applicant respectfully submits the following response. Applicant submits that the above-identified
`
`trademark application for F3 OUTDOORS is in condition for allowance to publication.
`
`Potential Section 2(d) — Likelihood of Confusion
`
`Applicant submits a preliminary response to the potential section 2(d) refusal; however, Applicant
`
`reserves all rights to provide a detailed and more descriptive response if Examining Attorney Deborah E.
`
`Lobo raises a Section 2(d) refilsal in a subsequent Office Action.
`
`APPLICANT’S WORD MARK
`
`CITED REGISTERED
`STYLIZED MARK
`
`CITED PENDING MARK
`
`(F3 TECH LOGO HERE)
`Registration No. 3946247
`025: Socks
`
`F3
`Serial No. 79107681
`012: motorcycles
`
`F3 OUTDOORS
`Serial No. 85963631
`025: Clothing: such as, tops,
`pants, shorts, gloves, fleece
`pullovers, vests, sweatshirts,
`jackets, socks headwear and shirts
`042: Creating an on-line
`community for registered users
`for the purpose of sharing images
`and stories about outdoor
`
`experiences
`
`Preliminary Response with Reservation ofRights
`
`The USPTO suggests that it will refuse registration of Applicant’s mark, F3 OUTDOORS, because
`
`of a likelihood of confusion with registered mark F3 TECH and pending mark F3. “[T]he question of
`
`

`

`confusion is related not to the nature of the mark but to its effect ‘when applied to the goods of the
`
`applicant.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1360, 177 USPQ 563, 566 (C.C.P.A.
`
`1973). The United States Court of Customs and Patent Appeals listed thirteen factors to weigh ir1 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 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.
`
`(I) 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 de Nemours & C0,, 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 confusing similarity between the marks when the marks give off different commercial
`
`expressions. See Kellogg Co. 11. Pack ’em Enterprises, Inc., 951 F.2d 330 (Fed. Cir. 1991). When
`
`Applicant’s mark (F3 OUTDOORS), and the cited marks are compared the appearance is not similar.
`
`While the cited marks share a common component, the additional terms amongst the marks (or lack
`
`thereof), counteract any confusing similarities. The common element in question is the tenn “F3.”
`
`However, the Applicant’s mark utilizes the additional term “outdoors.” Similar to Kellogg Ca. V. Pack ‘em
`
`Enterprises, Inc., the additional tenn in Applicant’s mark further supports that the mark F3 OUTDOORS
`
`has a different commercial impression from the cited marks. Phonetically the marks differ in sound as the
`
`Applicant’s mark consists of four syllables and the cited registrations consist of three and two syllables.
`
`Visually, the phrase F3 OUTDOORS is easily distinguished from the cited marks because the
`
`largest visual component of the mark is a term that neither cited mark has, namely, the word
`
`

`

`“OUTDOORS.” The commercial impression of the Applicant’s mark is significantly different from the
`
`cited marks because the marks are different and (1) the Applicant has removed “socks” from its description
`
`in support of the position that no COIlfl.1SlOI1 is likely with the F3 TECH mark, and (2) unlike the F3 pending
`
`Application, the Applicant does not sell goods remotely related to motorcycles. For at least these reasons,
`
`Applicant asserts that the mark F3 OUTDOORS is significantly different than the cited marks. This factor
`
`weighs in Applicanfs favor.
`
`(2) Similarity or Dissimilarity and the Nature ofthe 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 & Ca, 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Applicant’s class 025
`
`goods are for “Clothing: such as, tops, pants, shorts, gloves, fleece pullovers, vests, sweatshirts, jackets,
`
`socks headwear and shirts.” The cited registration covers “socks.” To avoid any confusion, Applicant has
`
`amended its goods to remove “socks” from its description. The cited pending application covers,
`
`“motorcycles.” Applicant respectfiilly asserts that there is no similarities between motorcycles and
`
`clothing. Under this factor, Applicant asserts that, while the classification may be the same, the goods are
`
`different.
`
`(3) Similarity or Dissimilarity ofEstablished Likely to Continue Trarle Channels
`
`The third factor is the similarity or dissimilarity of established, likely-to-continue trade channels. In
`
`re E. I. du Pont de Nemours & C0., 476 F.2d at 1361, 177 USPQ at 567. With regard to cited pending
`
`mark, the Applicant’s clothing related goods do not travel in the same trade channels as motorcycles.
`
`However, this factor weighs in favor of a finding of a likelihood of confusion as it relates to the cited
`
`registration because socks and clothing travel in the same trade channels.
`
`

`

`(4) Conditions Upon Sales Are Made
`
`The fourth factor is the condition under which and buyers to whom sales are made (i.e. impulse V.
`
`careful). Id. There can be no question that buyers for motorcycles would make careful decisions sufficient
`
`to prevent confusion from occurring with the cited pending mark. With regard to the cited registration,
`
`buyers make carefiil decisions when it comes to apparel. Additionally, the cited registrant only sells
`
`footwear, namely, socks. It will be difficult for confusion to occur when the goods sought by buyers are not
`
`footwear related. Applicant asserts that this factor weighs heavily against a likelihood of confusion
`
`between these the marks.
`
`(5) Fame of the Prior Mark
`
`The fifth factor is the fame of the prior mark (e.g., sales, advertising, length of use, eIc.). Id. There
`
`is no evidence that the prior marks are famous. Therefore, this factor weighs against a likelihood of
`
`confusion.
`
`(6) Number and Nature ofSimilar Marks 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 assertions as to the number and nature of marks
`
`used in connection with similar goods. Therefore, Applicant asserts that this factor also weighs in its
`
`favor.
`
`(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 marks. Consequently, Applicant asserts that this
`
`factor weighs in its favor.
`
`

`

`(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 confusion. Id. There has been no concurrent use of the marks because
`
`Applicanfs mark is intent to use. Therefore, this factor weighs in the Applicant’s favor, or is at least
`
`neutral .
`
`(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. None of
`
`the marks are house or family marks. Consequently, this factor is neutral.
`
`(10) Market Interface Between Applicant and the Owner of a 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 Registrants. However, Applicant
`
`alleges that any potential interface will be minimal due to the difference in goods. Therefore, this factor is
`
`at least neutral, if not in favor of the Applicant.
`
`(II) Extent to which Applicant has a Right to Exclude Othersfrom Use ofits 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. As Applicant’s mark is intent to use, Applicant makes no assertion as to a right to
`
`exclude others from the ability to use an “F3” related trademark. Therefore, this factor is neutral.
`
`(I2) Extent ofPotential Confusion
`
`The twelfth factor is the extent of potential confusion, i.e. , whether de minimis or substantial. Id.
`
`

`

`Because (1) Applicant’s mark includes different terms and different goods, (2) the cited registrations is
`
`narrowly limited to socks and (3) the cited pending application is for a completely different class of goods,
`
`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 Effect 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) refilsal 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 confusingly 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 US.
`
`P. Q. 529, 530 (C.C.P.A. 1970) (PEAK PERIOD not confusing 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 confusing 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 confusingly similar to DUTCH MASTERS for cigars).
`
`When determining whether an Applicant’s mark creates a likelihood of COI1fi1SlOI1, with marks
`
`

`

`covered by cited registrations " [a] showing of mere possibility of confusion 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 Du Pont, 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. 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 F3 OUTDOORS does not create a
`
`likelihood of confusion with the cited registrations.
`
`CONCLUSION
`
`Applicant has fully responded to the Office Action. Majority of the ‘DuPont’ factors Weigh in the
`
`Applicant’s favor. Furthermore, for at least the above reasons, Applicant asserts that Applicant’s mark, F3
`
`OUTDOORS, is sufficiently distinct to avoid consumer confusion. Applicant respectfully submits in good
`
`faith that all potential 2(d) refusals, rejections, and/or objections have been overcome and that the applied
`
`for mark is in condition for publication.
`
`Respectfully submitted,
`/Antonio G. Vanr1/
`
`Antonio G. Vann (VSB # 79765)
`
`