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.
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`86159610
`
`LAW OFFICE 110
`
`Entered
`
`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)(4 pages)
`
`http://tsdr.uspto.gov/img/86159610/large
`
`MATTHEW'S CUSTOM CALLS
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`evi_701095314-160309753_._MATTHEWS_CUSTOM_CALLS_-
`_Response_to_OA.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\596\86159610\xml4\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\596\86159610\xml4\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\596\86159610\xml4\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\596\86159610\xml4\ROA0005.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`a .pdf of arguments against the section 2(d) refusal and disclaimer modification.
`
`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`NEW ATTORNEY SECTION
`
`No claim is made to the exclusive right to use CUSTOM CALLS apart from the
`mark as shown.
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`Anotnio Vann
`
`DunlapWeaver, PLLC
`
`Tom Dunlap
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`855.226.9661
`
`ip@dunlapweaver.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`(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)
`

`

`CORRESPONDENCE SECTION
`
`ORIGINAL ADDRESS
`
`NEW CORRESPONDENCE SECTION
`
`MATTHEW'S CUSTOM CALLS
`120 HILLSBORO AVE
`ELMONT
`New York (NY)
`US
`11003-1724
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`AUTHORIZED EMAIL COMMUNICATION
`
`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
`
`Anotnio Vann
`
`DunlapWeaver, PLLC
`
`Tom Dunlap
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`855.226.9661
`
`ip@dunlapweaver.com
`
`Yes
`
`/avann/
`
`Antonio G. Vann
`
`Attoney of Record, VA Bar Member
`
`855.226.9661
`
`05/01/2014
`
`YES
`
`Thu May 01 16:17:05 EDT 2014
`
`USPTO/ROA-XX.XXX.XX.XX-20
`140501161705956761-861596
`10-500f5e825c498d8b2a22f9
`3a877f9dd85dd19410ac6d233
`eff5eb16e07148105f-N/A-N/
`A-20140501160309753945
`
`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. 86159610(cid:160)MATTHEW'S CUSTOM CALLS(Standard Characters, see http://tsdr.uspto.gov/img/86159610/large) has been
`amended as follows:
`
`

`

`EVIDENCE
`Evidence in the nature of a .pdf of arguments against the section 2(d) refusal and disclaimer modification. has been attached.
`Original PDF file:
`evi_701095314-160309753_._MATTHEWS_CUSTOM_CALLS_-_Response_to_OA.pdf
`Converted PDF file(s) ( 4 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`
`ATTORNEY ADDRESS
`Applicant proposes to amend the following:
`Proposed:
`Anotnio Vann of DunlapWeaver, PLLC, having an address of
`Tom Dunlap Leesburg, Virginia 20175
`United States
`ip@dunlapweaver.com
`855.226.9661
`
`CORRESPONDENCE ADDRESS CHANGE
`Applicant proposes to amend the following:
`Current:
`MATTHEW'S CUSTOM CALLS
`120 HILLSBORO AVE
`ELMONT
`New York (NY)
`US
`11003-1724
`
`Proposed:
`Anotnio Vann of DunlapWeaver, PLLC, having an address of
`Tom Dunlap Leesburg, Virginia 20175
`United States
`ip@dunlapweaver.com
`855.226.9661
`
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use CUSTOM CALLS apart from the mark as shown.
`
`SIGNATURE(S)
`Response Signature
`Signature: /avann/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 05/01/2014
`Signatory's Name: Antonio G. Vann
`Signatory's Position: Attoney 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.
`
`Mailing Address: (cid:160)(cid:160)(cid:160)Anotnio Vann
`
`

`

`(cid:160)(cid:160)(cid:160)DunlapWeaver, PLLC
`(cid:160)(cid:160)(cid:160)Tom Dunlap
`(cid:160)(cid:160)(cid:160)Leesburg, Virginia 20175
`
`Serial Number: 86159610
`Internet Transmission Date: Thu May 01 16:17:05 EDT 2014
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20140501161705956
`761-86159610-500f5e825c498d8b2a22f93a877
`f9dd85dd19410ac6d233eff5eb16e07148105f-N
`/A-N/A-20140501160309753945
`
`(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 N0.:
`
`Matthew’s Custom Calls
`86/ 1 59610
`
`Filed:
`Trademark Atty:
`Word Mark:
`
`January 7, 2014
`Daniel F. Capshaw
`MATTHEW’S CUSTOM CALLS
`
`RESPONSE TO APRIL 14, 2014 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e-mailed on April 14, 2014. The Applicant respectfully
`submits the following response. Applicant submits that the above-identified trademark application for
`MATTI-IEW’S CUSTOM CALLS 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 Daniel F. Capshaw
`raises a Section 2(d) refusal in a subsequent Office Action.
`
`APPLICANTS WORD MARK
`
`CITED REGISTERED MARKS
`
`MATTHEW’S CUSTOM CALLS
`
`MATHEWS
`
`MISSION BY MATHEWS
`
`Class 028: Hunting game calls
`
`Reg. No. 2382629
`
`Reg. No. 3655531
`
`Class 028: Archery Bows
`
`Class 028: Archery
`Equipment; namely,
`Bows, bowstrings,
`Arrow rests, and
`quivers
`
`Preliminary Response with Reservation ofRights
`The USPTO suggests that it will refuse registration of Applicant’s mark, MATTI-IEW’S CUSTOM
`CALLS, “because of a likelihood of confusion with the above cited registered marks. “[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 & Ca, 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 weigh 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 Pant de Nemours & Ca, 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
`(MATTHEW’S CUSTOM CALLS), and Registrants’ marks (MATHEW and MISSION BY MATHEWS)
`are compared, the appearance is not similar despite the shared terms. The common term is the word,
`“MATTHEW/ MATHEW.” The applicant’s use of this term incorporates an additional letter “L”
`
`The overall appearance of the marks, as a whole, is dissimilar. In addition to having a different spelling,
`the Applicant’s mark incorporates additional terms, namely, “custom calls.” When viewed as a whole, the
`additional terms create an overall different appearance from the Registrants’ marks. The additional terms
`also result in a phonetic difference among the marks.
`
`The marks give off distinctly different commercial impressions and visual representations. The Applicanfs
`mark includes descriptive language that clearly indentifies that Applicant’s goods are custom made game
`calls. By including “custom calls” in the mark, a different commercial impression is created sufficiently
`distinct from cited registrant’s archery equipment. This factor weighs in Applica.nt’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. du Pont de Nemours &
`Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). The Applicant’s mark covers custom
`made game calls, the Registrant’s mark covers archery equipment. While these goods fall under the same
`class, they are very different products and have different functions. In fact, Applicant’s goods are custom
`hand crafted goods, which would further support no likelihood of confusion. Under this factor, Applicant
`asserts that the marks are not confusingly 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 Nemours & C0,, 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. However,
`Applicant’s goods are custom made and are traded and sold directly through the Applicant. Therefore, it is
`unlikely that the Registrant’s goods will be sold within the same venue or Trade Channel as the Applicant.
`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 make a careful and deliberate decision to
`purchase Applicant’s goods, specifically because Applicant’s game calls are custom made. Therefore,
`consumers will carefully identify the uniquely formatted mark MATTHEW’S CUSTOM CALLS when
`searching for the Applicant’ s goods, and will not make any association with the cited registrant’s goods.
`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 (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 similar products. A search of the USPTO records reveals that “MATHEW” related registrations are
`
`

`

`capable of existing within the same class. For example, the following registrations are in class 025:
`
`Mark: STEPHANIE MATHEWS
`
`Reg. No.: 1660895
`
`Mark: TRAVISMATHEW
`
`Reg. No.: 4248730
`
`Mark: MATHEW & MATHEW
`
`Reg. No.: 3351696
`
`Class 025 serves as an example that multiple “Mathew” related trademarks can exist on similar goods
`without a likelihood of confusion. Therefore, Applicant asserts that this factor also weighs in its 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 confiised by the use of these 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 has enjoyed use of its mark since January 1, 2013
`without any confusion with the cited registrant. Therefore, this factor weighs against the likelihood of
`confusion.
`
`(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 & C0,, 476 F.2d at 1361, 177 USPQ at 567. The marks at
`issue are not used on similar goods. While game calls and archery related goods may be used during the
`same activity, the goods themselves are not similar. 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 is no data to determine the market interface between the marks. Therefore this factor is also
`neutral.
`
`(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. The Applicant claims exclusive rights to use its mark on game call related goods. As the
`goods are custom made, the commercial reputation of the Applicant is tied closely to the craftsmanship of
`the work. Applicant asserts that it has the right to exclude others from using “MATTHEW” on game call
`related goods. Applicant is not asserting that he has the right to exclude use of its mark on all hunting
`related equipment. This factor weighs in Applicant’s favor.
`
`(I2) Extent ofPotential Confusion
`The twelfth factor is the extent of potential confusion, i. e. , whether de minimis or substantial. Id. Because
`(1) the goods are different, (2) the Applicant’s mark includes additional and different terms, and (3)
`consumers will make careful decisions when purchasing Applicant’s custom made 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) 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 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 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. Patmill Knitting Co., 833 F. 2d 1560, 1564, 4
`U.S.P.Q. 2d 1793, 1796 (Fed. Cir. 1987) (SWEATS not confusing similar to ULTRA SVVEATS), 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 determining whether an Applicant’s mark creates a likelihood of confusion, with marks covered
`by cited registrations "[a] showing of mere possibility of COI1filS1OIl 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 MATTHEW’S CUSTOM CALLS 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,
`MATTHEW’S CUSTOM CALLS, is sufficiently distinct from the cited registrations 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.
`
`DISCLAIMER
`
`No claim is made to the exclusive right to use “CUSTOM CALLS” apart from the mark as shown.
`
`Respectfiilly submitted,
`/Antonio G. Vann/
`
`Antonio G. Vann (VSB # 79765)
`Attorney of Record for the Applicant
`
`