PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`The table below presents the data as entered.
`
`Entered
`
`86034971
`
`LAW OFFICE 107
`
`http://tess2.uspto.gov/ImageAgent/ImageAgentProxy?getImage=86034971
`
`KESHET ACCESSORIES
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`evi_701095314-112254226_._KESHET_ACCESSORIES_-_OFFICE_ACTION.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\349\86034971\xml5\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\349\86034971\xml5\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\349\86034971\xml5\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\349\86034971\xml5\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\349\86034971\xml5\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\349\86034971\xml5\ROA0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\349\86034971\xml5\ROA0008.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\349\86034971\xml5\ROA0009.JPG
`
`a .pdf formatted document laying out arguments to overcome the 2(d) refusal
`emailed on Dec. 1, 2013.
`
`No claim is made to the exclusive right to use ACCESSORIES apart from the mark
`as shown.
`
`/avann/
`
`Antonio G. Vann
`
`Attorney of Record, VA bar member
`
`8552269661
`
`01/31/2014
`
`YES
`
`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)(8 pages)
`
`DESCRIPTION OF EVIDENCE FILE
`
`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`(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)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Fri Jan 31 11:30:32 EST 2014
`
`USPTO/ROA-XX.XXX.XX.XX-20
`140131113032770725-860349
`71-50035be5972ab2e7ae9c53
`ec98ded57836212e4c97155a3
`237418a7843a504142-N/A-N/
`A-20140131112254226578
`
`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. 86034971(cid:160)KESHET ACCESSORIES(Standard Characters, see
`http://tess2.uspto.gov/ImageAgent/ImageAgentProxy?getImage=86034971) has been amended as follows:
`
`EVIDENCE
`Evidence in the nature of a .pdf formatted document laying out arguments to overcome the 2(d) refusal emailed on Dec. 1, 2013. has been
`attached.
`Original PDF file:
`evi_701095314-112254226_._KESHET_ACCESSORIES_-_OFFICE_ACTION.pdf
`Converted PDF file(s) ( 8 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use ACCESSORIES apart from the mark as shown.
`
`SIGNATURE(S)
`Response Signature
`Signature: /avann/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 01/31/2014
`Signatory's Name: Antonio G. Vann
`Signatory's Position: Attorney of Record, VA bar member
`
`Signatory's Phone Number: 8552269661
`
`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: 86034971
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`Internet Transmission Date: Fri Jan 31 11:30:32 EST 2014
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20140131113032770
`725-86034971-50035be5972ab2e7ae9c53ec98d
`ed57836212e4c97155a3237418a7843a504142-N
`/A-N/A-20140131112254226578
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`Serial No.:
`
`Headsup Headcare LLC
`86/034971
`
`Filed:
`Trademark Atty:
`Word Mark:
`
`August 12, 2013
`Elizabeth N. Kajubi
`KESHET ACCESSORIES
`
`RESPONSE TO DECEMBER 1, 2013 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e—mailed on December 1, 2013. The Applicant
`
`respectfully submits the following response. Applicant submits that the above—identif1ed trademark
`
`application for KESHET ACCESSORIES is in condition for allowance to publication.
`
`1.
`
`Potential Section 21d] — 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 Elizabeth N.
`
`Kajubi raises a Section 2(d) refusal in a subsequent Office Action.
`
`Applicant’s Word Mark
`
`KESHET ACCESSORIES
`
`Class 26: Hair accessories, namely, snap clips; Hair
`bands; Hair bows; Hair scrunchies; Ponytail holders
`
`Cited Registered Mark
`
`KESHET DANCE COMPANY
`
`Class 18: duffel bags, handbags
`
`Class 25: Apparel, namely, hats, caps, shirts,
`sweatshirts, sweatpants, jackets, dance costumes;
`dancewear, namely, leotards and socks; and gift
`packages sold as a unit consisting primarily of ballet
`slippers, tights and dance costumes
`
`Class 41: Entertainment services in the nature of live
`
`dance and musical performances
`
`

`

`(specimen)
`
`(specimen)
`
`‘QC
`
`4;‘.
`
`(a\\
`
`AICE§\._'rI1\EL-
`
`1‘
`
`— W6‘
`
`Preliminary Response with Reservation ofRights
`
`The USPTO suggests that it will refuse registration of Applicant°s mark, KESHET
`
`ACCESSORIES, “because ofa likelihood of confusion with registered mark KESHET DANCE
`
`COMPANY, in U.S. Registration No. 38403 72. “[T]he question ofconfusion 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. do Pom de Nemours &
`
`C0., 476 F.2d 1357, 1360, 177 USPQ 563, 566 (C.C.P.A. 1973). The United States Court ofCusto1ns 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 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 ofa 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 & 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 confusing similarity between the marks when the marks give off different commercial
`
`expressions. See Kellogg Ca. V. Pack’em Enterprises, Inc, 951 F.2d 330 (Fed. Cir. 1991). When
`
`

`

`App1icant’s mark (KESHET ACCESSORIES), and Registrant’s mark (KESHET DANCE COMPANY)
`
`are compared, the appearance is not similar because, while the marks may share the term “keshet,” the
`
`Applicant’s mark includes the term “accessories” and the cited registration includes the words “dance
`
`company.” The different terms used in connection with both marks create a significantly different
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`commercial impression. Phonetically, the marks differ because, when pronounced in their entirety, the
`
`marks do not sound the same.
`
`Visually, the phrase KESHET ACCESSORIES is easily distinguished from the cited registration.
`
`Furthermore, both marks having specimens of use on file at the US Patent & Trademark Office, it is clear
`
`that the marks appear different from one another, based upon how they are used in commerce. As the
`
`specimens reflect, both marks use different design elements and include different terms. These differences
`
`create substantially distinct commercial impressions, thus eliminating any likelihood of confusion.
`
`The two marks give distinctly different commercial impressions and visual representations.
`
`Reviewing both marks as a whole, in connection with the different classes offered under each mark, the
`
`commercial impressions of both marks differ significantly. The Applicant’s mark (1) has different words,
`
`namely, KESHET ACCESSORIES, (2) has a specimen that differs from the specimen on file for the cited
`
`registration, and (3) is in class 026 for hair related accessories. The cited registered mark (1) has different
`
`words, namely, KESHET DANCE COMPANY, (2) has a specimen on file that differs from the
`
`Applicant’s specimen, and (3) is in class 18 for bags, class 25 for clothing, and class 41 for dance and
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`musical performances. These differences create a substantially different commercial impression. For at
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`least these reasons, Applicant asserts that the mark KESHET ACCESSORIES is significantly different in
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`appearance, sound and commercial impression than the KESHET DANCE COMPANY mark. This factor
`
`weighs in Applicant’s favor.
`
`

`

`(2) Similarity or Dissimilarity and the Nature ofthe Goods or Services
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`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 & C0., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Applicant’s goods are for
`
`Hair accessories, namely, snap clips; Hair bands; Hair bows; Hair scrunchies; Ponytail holder in class 026. The
`
`cited registration covers apparel, namely, hats, caps, shirts, sweatshirts, sweatpants, jackets, dance costumes;
`
`dancewear, namely, leotards and socks; and gift packages sold as a unit consisting primarily of ballet slippers,
`
`tights and dance costumes in class 025, entertainment services in the nature of live dance and musical
`
`performances in class 041, and duffel bags and handbags in class 018. The goods and services are different.
`
`Therefore, this factor weighs in the Applicant’ s favor.
`
`(3) Similarity or Dissimilarity ofEstablished Likely to Continue Trade Channels
`
`The third factor is the similarity or dissimilarity of established, likely—to—continue trade channels. In
`
`re E. 1. du! Pont de Nemours & C0., 476 F.2d at 1361, 177 USPQ at 567. This factor heavily weighs against
`
`a finding of a likelihood of confusion. The cited registration’s channels of trade are clearly directed
`
`towards and limited to the dance and perfonnance industry. However, Applicant’s goods are accessories
`
`for hair, which indicates Applicants goods relate to the beauty and hair industry. It is unlikely that the
`
`Applicant’s goods will travel within the same industry. Therefore, this factor weighs against the existence
`
`of a likelihood of confusion.
`
`(4) Conditions Upon Sales Are Made
`
`The fourth factor is the conditions under which and buyers to whom sales are made (i.e. impulse v.
`
`careful). Id. Consumers interested in Applicant’s goods will easily be able to distinguish the mark
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`KESHET ACCESSORIES to relate to hair related products without having an association with the goods
`
`and services offered under cited registration. This factor weighs heavily against a likelihood of confusion
`
`

`

`between these two marks.
`
`(5) Fame ofthe Prior Mark
`
`The fifth factor is the fame of the prior mark (eg, sales, advertising, length of use, etc). Id. There
`
`is no evidence that the prior mark is famous, 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 apparel, hair accessories, or dance/ musical performances in connection with a
`
`“keshet” related trademark. However, there are currently five active marks that include the word “keshet”
`
`on file at the USPTO, two of which are under class 025. With the exception of the Applicant’s mark, there
`
`are no “keshet” related marks under class 026. Taking into consideration that “keshet” translates to mean
`
`“rainbow,” there are over 500 “rainbow” related trademarks on file with the USPTO. Therefore, Applicant
`
`asserts that this factor also weighs in its favor.
`
`(7) Nature and Extent ofAny Actual Confusion
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`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. Consequently, Applicant asserts that
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`this factor weighs ir1 its favor or is at least neutral in the likelihood of confusion analysis.
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`(8) Length of Time During and Conditions under which There Has Been Concurrent Use Without
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`Evidence ofActual Confusion
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`The eighth factor is the length of time during and conditions under which there has been concurrent
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`use without evidence of actual confusion. Id. Applicant’s date of first use is June 27, 2013. The cited
`
`

`

`registration reflects a date of first use of January 1, 1995. No evidence of confusion has been reported
`
`while there has been concurrent use of the marks. Therefore, Applicant asserts that this factor also weighs
`
`in its 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 & Ca, 476 F.2d at 1361, 177 USPQ at 567. The cited
`
`registered mark is used in connection with clothing items and bags related goods. The Applicant’s mark is
`
`used on hair accessories. Neither mark is used on a high variety of goods nor is the cited registered mark a
`
`part of a family of marks. Consequently, this factor weighs against a likelihood of confusion, or is at least
`
`neutral.
`
`(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
`
`weighs against a likelihood of confusion, or is at least neutral.
`
`(I1) 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. The Applicant cannot claim rights to exclusive use of the term “keshet” due to
`
`multiple third party uses. However, to the extent “keshet” is being used in connection with hair products,
`
`the Applicant asserts that it has the right to exclude others from using the KESHET ACCESSORIES mark
`
`on hair related goods. Consequently, this factor weighs against a likelihood of confusion.
`
`

`

`(I2) Extent ofPotential Confusion
`
`The twelfth factor is the extent of potential COI‘lfl1S10I1, i.e., whether de minimis or substantial. Id.
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`Because (I) the marks’ trade channels involve different industries, (2) the Applicant’s mark is substantially
`
`different than the Registrant’s mark, and (3) the marks have had concurrent use without evidence of actual
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`confusion, 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) 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 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)
`
`(OATIVIEAL 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 detennining whether an Applicant’s mark creates a likelihood of confusion, 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 KESHET ACCESSORIES does
`
`not create a likelihood of confusion with KESHET DANCE COMPANY.
`
`II. DISCLAIMER
`
`No claim is made to the exclusive right to use “Accessories” apart from the mark shown.
`
`CONCLUSION
`
`Applicant has fully responded to the December 1, 2013 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, KESHET ACCESSORIES, is sufficiently distinct from KESHET DANCE COMPANY
`
`that it will not result in 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. Vann/
`
`Antonio G. Vann (VSB # 79765)
`Attorney of Record for the Applicant
`
`