PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
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`Input Field
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`SERIAL NUMBER
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`LAW OFFICE ASSIGNED
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`MARK SECTION
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`MARK
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`LITERAL ELEMENT
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`STANDARD CHARACTERS
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`USPTO-GENERATED IMAGE
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`MARK STATEMENT
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`EVIDENCE SECTION
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`(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)(4 pages)
`
`The table below presents the data as entered.
`
`Entered
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`86058968
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`LAW OFFICE 116
`
`http://tess2.uspto.gov/ImageAgent/ImageAgentProxy?getImage=86058968
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`I LOVE PIZZA! U.S.A.
`
`YES
`
`YES
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`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`evi_701095314-162731423_._ILOVEPIZZA_-_Response_to_OA.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\589\86058968\xml5\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\589\86058968\xml5\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\860\589\86058968\xml5\ROA0004.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\860\589\86058968\xml5\ROA0005.JPG
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`DESCRIPTION OF EVIDENCE FILE
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`Arguments in response to the 2(d) refusal
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`ADDITIONAL STATEMENTS SECTION
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`DISCLAIMER
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`SIGNATURE SECTION
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`RESPONSE SIGNATURE
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`SIGNATORY'S NAME
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`SIGNATORY'S POSITION
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`SIGNATORY'S PHONE NUMBER
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`DATE SIGNED
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`AUTHORIZED SIGNATORY
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`FILING INFORMATION SECTION
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`SUBMIT DATE
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`TEAS STAMP
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`No claim is made to the exclusive right to use PIZZA U.S.A. apart from the mark as
`shown.
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`/avann/
`
`Antonio Vann
`
`Attonrey of record, VA bar member
`
`855.226.9661
`
`02/18/2014
`
`YES
`
`Tue Feb 18 16:31:44 EST 2014
`
`USPTO/ROA-XX.XXX.XX.XX-20
`140218163144083164-860589
`68-5002b37b0d0a48db04b8e3
`6d4da9cffdf55177df0cc3fef
`
`(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)
`

`

`e75d1ae44393b634bf7e-N/A-
`N/A-20140218162731423605
`
`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. 86058968(cid:160)I LOVE PIZZA! U.S.A.(Standard Characters, see
`http://tess2.uspto.gov/ImageAgent/ImageAgentProxy?getImage=86058968) has been amended as follows:
`
`EVIDENCE
`Evidence in the nature of Arguments in response to the 2(d) refusal has been attached.
`Original PDF file:
`evi_701095314-162731423_._ILOVEPIZZA_-_Response_to_OA.pdf
`Converted PDF file(s) ( 4 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use PIZZA U.S.A. apart from the mark as shown.
`
`SIGNATURE(S)
`Response Signature
`Signature: /avann/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 02/18/2014
`Signatory's Name: Antonio Vann
`Signatory's Position: Attonrey of record, VA bar member
`
`Signatory's Phone Number: 855.226.9661
`
`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: 86058968
`Internet Transmission Date: Tue Feb 18 16:31:44 EST 2014
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20140218163144083
`164-86058968-5002b37b0d0a48db04b8e36d4da
`9cffdf55177df0cc3fefe75d1ae44393b634bf7e
`-N/A-N/A-20140218162731423605
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`[N THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`Serial No.:
`
`1 Love Pizza!
`86/058968
`
`Filed:
`Trademark Atty:
`Word Mark:
`
`September 9, 2013
`Alice Benmaman
`I LOVE PIZZA! U.S.A.
`
`RESPONSE TO DECEMBER 23, 2013 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e-mailed on December 23, 2013. The Applicant
`respectfully submits the following response. Applicant submits that the above-identified trademark
`application for I LOVE PIZZA! U.S.A. 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 Alice Benmaman
`raises a Section 2(d) refusal in a subsequent Office Action.
`
`APPLICANTS WORD MARK
`
`CITED REGISTERED MARK
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`I LOVE PIZZA! U.S.A.
`
`Class 043: Restaurant Services
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`an authentic :'.>‘::' pizzeria
`
`Class 043: Restaurant; Take-out restaurant services
`
`Preliminary Response with Reservation ofRights
`The USPTO suggests that it will refuse registration of Applicant’s mark, I LOVE PIZZA! U.S.A.,
`“because of a likelihood of confusion with registered mark I PIZZA AN AUTHENTIC NY PIZZERIA &
`design, in U.S. Registration No. 3967125.” “[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 Pom‘ de Nemours & C0.,
`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 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 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 Nemoars & 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. v. Pack ‘em Enterprises, Inc., 951 F.2d 330 (Fed. Cir. 1991). When Applicant’s mark (I LOVE
`PIZZA! USA.), and Registrant’s mark (I [HEART DESIGN] PIZZA AN AUTHENTIC NY PIZZERIA)
`are compared, the appearance is not similar despite the shared terms. The only shared terms are “I” and
`“PIZZA.” It is important to note that the cited registration has disclairned the term “PIZZA.”
`
`The overall appearance of the marks, as a whole, is dissimilar. The Applicant uses the term “U.S.A.,”
`while the cited registration uses “AN AUTHENTIC NY PIZZERIA.” Phonetically the marks differ in
`sound, as the Applicant’s mark consists of six syllables and the Registrants mark consists of twelve or
`thirteen syllables.
`
`Visually, the phrase I LOVE PIZZA! U.S.A. is easily distinguished from the designs and phrase
`incorporated in the Registrant’s I [HEART DESIGN] PIZZA AN AUTHENTIC NY PIZZERIA mark.
`The structure, format, and design elements are unique to the commercial impression of the Registrant’s
`mark. These elements create a distinct commercial impression that is different from the Applicant’s mark.
`
`The two marks give distinctly different commercial impressions and visual representations. The
`Applicant’s mark incorporates no design elements. The dominant portion of the Registrant’s mark is a
`heart design. The marks also include different terms, which further supports a difference in commercial
`impression. For at least these reasons, Applicant asserts that the mark I LOVE PIZZA! U.S.A. is
`significantly different than the mark I PIZZA AN AUTHENTIC NY PIZZERIA & design. This factor
`weighs in Applicant’s 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. da Pant de Nemoars &
`Ca, 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Both marks cover restaurant services.
`Under this factor, Applicant agrees that the nature of the services are similar.
`
`(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. I.
`du Pont de Nemoars & Co., 476 F.2d at 1361, 177 USPQ at 567. This factor heavily weighs against a
`finding of a likelihood of confusion. It is unclear as to the trade channels the Registrant uses. The trade
`Channels for the pizza industry are vast because the trade channels could be limited narrowly to a
`neighborhood region or it could be nation-wide. Applicant intends to initially use its mark within the state
`of New York. It being unclear as to the Registrant’s trade channels, this factor neither weighs in favor or
`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 services will be local consumers of the city of New York.
`Therefore, consumers will carefully identify the uniquely formatted mark I LOVE PIZZA! U.S.A. when
`searching for the Applicant’s services. This factor weighs heavily against a likelihood of confusion
`between these two marks.
`
`

`

`(5) Fame of the Prior Mark
`The fifth factor is the fame of the prior mark (e. g., 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 restaurant services. A search of the USPTO records for “I LOVE” related trademarks for restaurant
`
`services, reveals thirty-nine records. Therefore, Applicant asserts that this factor also weighs in his favor.
`
`(7) Nature and Extent ofA ny 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. Consequently, Applicant asserts that this factor
`weighs in his favor or is at least neutral in the likelihood of confusion analysis.
`
`(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. Applicant’s mark is an intent-to-use mark. Therefore, there is no
`concurrent use of the marks. Therefore, this factor is also 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. da Pont de Nemours & Co., 476 F.2d at 1361, 177 USPQ at 567. Both marks at
`issue here are used in connection with restaurant services. 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
`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 carmot claim rights to exclusive use of the mark because Applicant’s has not
`yet started using the mark. This factor is also neutral.
`
`(I2) Extent ofPotential Confusion
`The twelfth factor is the extent of potential confusion, i. e., whether de minimis or substantial. Id. Because
`(1) it is unclear as to what trade channels the Registrant uses, (2) the Applicant’s mark is substantially
`different than the Registrant’s mark, and (3) there are numerous “I LOVE” related marks m the restaurant
`services industry, 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 m 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, Ir1c., 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 I11c. 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 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 I LOVE PIZZA! U.S.A. does not create a
`likelihood of confusion with Registration Number 3967125 for I PIZZA AN AUTHENTIC NY PIZZERIA
`& design.
`
`CONCLUSION
`
`Applicant has fully responded to the December 23, 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, I LOVE PIZZA! U.S.A., is sufficiently distinct from I PIZZA AN AUTHENTIC NY
`PIZZERIA & design 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.
`
`Respectfillly submitted,
`/Antonio G. Vann/
`
`Antonio G. Vann (VSB # 79765)
`Attorney of Record for the Applicant
`
`