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
`
`86277447
`
`LAW OFFICE 114
`
`http://tsdr.uspto.gov/img/86277447/large
`
`AU REBELLE
`
`YES
`
`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
`
`TRANSLATION
`
`NEW ATTORNEY SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`evi_701095314-20141202162920690558_._AU_REBELLE_-_RESPONSE.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\774\86277447\xml4\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\774\86277447\xml4\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\774\86277447\xml4\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\774\86277447\xml4\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\774\86277447\xml4\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\774\86277447\xml4\ROA0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\774\86277447\xml4\ROA0008.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\774\86277447\xml4\ROA0009.JPG
`
`a .pdf containing a comprehensive response to each refusal stated in the Office
`Action.
`
`The English translation of AU REBELLE in the mark is the rebel.
`
`Antonio Vann
`
`DunlapWeaver, PLLC
`
`211 Church Street, SE
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`(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)
`

`

`PHONE
`
`EMAIL
`
`8552269661
`
`ip@dunlapweaver.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`CORRESPONDENCE SECTION
`
`ORIGINAL ADDRESS
`
`NEW CORRESPONDENCE SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`AUTHORIZED EMAIL COMMUNICATION
`
`PAYMENT SECTION
`
`NUMBER OF CLASSES
`
`FEE FOR FAILURE TO SATISFY TEAS PLUS OR TEAS RF
`REQUIREMENTS
`
`TOTAL FEES DUE
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`DORISCA, UNA
`2921 HALSEY DR
`SCHENECTADY
`New York (NY)
`US
`12304-3640
`
`Antonio Vann
`
`DunlapWeaver, PLLC
`
`211 Church Street, SE
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`8552269661
`
`ip@dunlapweaver.com
`
`Yes
`
`1
`
`50
`
`50
`
`/avann/
`
`Antonio G. Vann
`
`Attorney of Record, VA Bar Member
`
`855.226.9661
`
`12/02/2014
`
`YES
`
`/avann/
`
`Antonio G. Vann
`
`Attorney of Record, VA Bar Member
`
`855.226.9661
`
`12/02/2014
`
`YES
`
`

`

`SUBMIT DATE
`
`TEAS STAMP
`
`Tue Dec 02 16:47:57 EST 2014
`
`USPTO/ROA-XX.XXX.XX.XX-20
`141202164757439534-862774
`47-500786ab12991f26a76343
`743174d31a77c70862d48db95
`371b2ab2ee9333d26695-CC-3
`558-20141202162920690558
`
`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. 86277447(cid:160)AU REBELLE(Standard Characters, see http://tsdr.uspto.gov/img/86277447/large) has been amended as
`follows:
`
`EVIDENCE
`Evidence in the nature of a .pdf containing a comprehensive response to each refusal stated in the Office Action. has been attached.
`Original PDF file:
`evi_701095314-20141202162920690558_._AU_REBELLE_-_RESPONSE.pdf
`Converted PDF file(s) ( 8 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`
`ATTORNEY ADDRESS
`Applicant proposes to amend the following:
`Proposed:
`Antonio Vann of DunlapWeaver, PLLC, having an address of
`211 Church Street, SE Leesburg, Virginia 20175
`United States
`ip@dunlapweaver.com
`8552269661
`
`CORRESPONDENCE ADDRESS CHANGE
`Applicant proposes to amend the following:
`Current:
`DORISCA, UNA
`2921 HALSEY DR
`SCHENECTADY
`New York (NY)
`US
`12304-3640
`
`Proposed:
`Antonio Vann of DunlapWeaver, PLLC, having an address of
`211 Church Street, SE Leesburg, Virginia 20175
`United States
`ip@dunlapweaver.com
`
`

`

`8552269661
`
`ADDITIONAL STATEMENTS
`Translation
`The English translation of AU REBELLE in the mark is the rebel.
`
`FEE(S)
`Fee(s) in the amount of $50 is being submitted.
`
`SIGNATURE(S)
`Response Signature
`Signature: /avann/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 12/02/2014
`Signatory's Name: Antonio G. Vann
`Signatory's Position: Attorney of Record, VA Bar Member
`
`Signatory's Phone Number: 855.226.9661
`
`Response Signature
`Signature: /avann/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 12/02/2014
`Signatory's Name: Antonio G. Vann
`Signatory's Position: Attorney 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)Antonio Vann
`(cid:160)(cid:160)(cid:160)DunlapWeaver, PLLC
`(cid:160)(cid:160)(cid:160)211 Church Street, SE
`(cid:160)(cid:160)(cid:160)Leesburg, Virginia 20175
`
`RAM Sale Number: 86277447
`RAM Accounting Date: 12/03/2014
`
`Serial Number: 86277447
`Internet Transmission Date: Tue Dec 02 16:47:57 EST 2014
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20141202164757439
`534-86277447-500786ab12991f26a7634374317
`4d31a77c70862d48db95371b2ab2ee9333d26695
`-CC-3558-20141202162920690558
`
`(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)
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`Serial N0.:
`
`Kevin Dorisca, Una Dorisca
`86277447
`
`Filed:
`Trademark Atty:
`Word Mark:
`
`May 9, 2014
`William T. Verho sek
`Au Rebelle
`
`RESPONSE TO AUGUST 26, 2014 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e-mailed on August 26, 2014. The Applicant
`
`respectfully submits the following response. Applicant submits that the above-identified trademark
`
`application for AU REBELLE is in condition for allowance to publication.
`
`AMENDMENT OF IDENTICATION
`
`Applicants request to amend the identification of goods to the following:
`
`hair moisturizers, hair conditioners, hair lotions, hair oils
`
`TRANSLATION
`
`The English translation of the word “AU REBELLE” in the mark is “the rebel.”
`
`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 William T. Verhosek
`
`raises a Section 2(d) refusal in a subsequent Office Action.
`
`

`

`APPLICANT’S WORD MARK
`
`CITED REGISTERED MARK
`
`AU REBELLE
`
`Class 003: Hair care preparations
`
`REBELLE BY RIHANNA
`
`Reg. No. 4313910
`Class 003: Shower and bath Gel
`
`REBELLE BY RIHANNA
`
`Reg. No. 4179584
`Class 003: Perfume
`
`APPLICANTS’ MARK IS NOT CONFUSINGLY SHVIILAR
`
`The USPTO suggests that it will refuse registration of App1icant’s mark, AU REBELLE, because of a
`
`likelihood of confusion with registered mark REBELLE BY RIHANNA, in U.S. Registration Nos.
`
`4343910 & 4179584. “[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 Nemaurs & 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 respectfiilly asserts that when all factors
`
`are weighed, the majority weigh against the existence of a likelihood of confusion.
`
`THE SHARED TERM DOES NOT IDENTIFY SOURCE IN REGISTRANT’S MARK
`
`One of the 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 Ca. 12. Pack ’em Enterprises, Inc, 951 F.2d 330 (Fed. Cir. 1991). When Applicant’s mark (AU
`
`

`

`REBELLE), and Registrant’s marks (REBELLE BY RIHANNA) are compared, the appearance is not
`
`similar despite the shared term. The only shared term is “REBELLE.”
`
`Section 1207.0] (b)(iii) of the TMEP states in pertinent part that, when a shared term is at issue, additions
`
`or deletions may prevent a likelihood of confusion if “(D the marks in their entireties convey significantly
`
`different commercial impressions, or (2) the matter common to the marks is not likely to be perceived by
`
`purchasers as distinguishing source. .
`
`hi the present case, the matter common to the marks is not likely to be perceived by purchasers as the
`
`portion that distinguishes source. In fact, the source identifying feature of the registrants mark is direct and
`
`clear, namely, the segment “BY RIHANNA.” The source identifying feature of the registrations mark is
`
`not shared with applicant’s mark, a fact weighing in Applicant’s favor.
`
`The overall appearance of the marks, as a whole, is dissimilar. The Applicant uses the term “Au Rebelle,”
`
`is clearly distinguishable from “REBELLE BY RIHANNA” Phonetically the marks differ in sound, as the
`
`Applicant’s mark consists of three syllables and the Registrants mark consists of six syllables.
`
`Ir1 summary, the terms do not share the same source identifying feature, the marks, as a whole, have
`
`distinguishable elements, and the marks differ phonetically. These differences create a distinct commercial
`
`impression among the marks in question. This factor weighs ir1 Applicant’s favor.
`
`APPLICANTS HAVE NARROVVED THE IDENTIFICATION IN SUPPORT OF NO CONFUSION
`
`Another 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 Pant de Nemaurs &
`
`

`

`Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Section 1207.01(a)(i) states in pertinent
`
`part that, a likelihood of confusion inquiry is focused on whether the public will be confused as to the
`
`source of goods.
`
`In the present case, the Applicants initially filed their mark for “hair care preparations,” and the registrant’s
`
`marks cover “shower and bath gel” and “perfume.” The Examining Attorney has determined that hair care
`
`preparations is broad, so as to encompass all “shower and bath gels.” In response, Applicant has amended
`
`its application with a more narrow identification, namely, “hair moisturizers, hair conditioners, hair lotions,
`
`hair oils.” This should remove Applicant’s goods from the “bathing” or “shower” category of goods,
`
`creating a distinction between goods related to shower and bath gels. As such, Applicant believes that this
`
`factor weighs against a likelihood of confusion in connection with registration no. 4313910.
`
`In connection with registration no. 4179584, consumers are easily able to distinguish fragrance products,
`
`namely, “perfume,” from products made for hair care, namely, “hair moisturizers, hair lotions, and hair
`
`oils.”
`
`As amended, the Applicant asserts that the identification of goods under the Applicants’ mark is
`
`sufficiently distinct to avoid a likelihood of confusion.
`
`THE GOODS ARE NOT SOLD THROUGH THE SAME CHANNELS
`
`Another 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 COI1fl1SlOI1. The Registrant has two registrations covering “shower and bath gels”
`
`and “perfiime.” The goods covered under both registrations travel in the same channels of trade because
`
`

`

`they are sold in the same packaging (See below an image of the perfume, shower gel gift set).
`
`Registrant sells its shower and bath gels with its fragrance as part of a gift set sold specifically in the
`
`“fragrance” section of department retail and online retail stores. Applicants do not intend for their goods to
`
`be sold as a fragrance, as a part of a fragrance gift set, nor do Applicants intend to market their product in
`
`the fragrance section. Applicant’s goods will be sold through channels specifically marketed for hair care
`
`supplies. Therefore, Applicants assert that this factor weighs in their favor.
`
`REGISTRANTS CONSUMERS MAKE CAREFUL DECISIONS
`
`The next factor is the conditions under which and buyers to whom sales are- made (i.e. impulse V. careful).
`
`Id. Registrant’s goods are tied to a mainstream R&B/ pop singer. Therefore, Registrants consumers will
`
`likely make Very careful decisions when purchasing the gift sets branded, “REBELLE BY RIHANNA,”
`
`because of the endorsement! association with the R&B/ pop singer. Applicant intends for its products to be
`
`sold to commercial establishments, such as hair salons. The buyers and conditions upon which buyers
`
`would purchase the goods of the Applicants’ and Registrant, are distinct enough to avoid the likelihood of
`
`confusion. This factor weighs heavily against a likelihood 0fCOI1fL1Sl0I1 between these two marks.
`
`

`

`THE PRIOR MARK IS NOT FAMOUS
`
`Another 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.
`
`NO ACTUAL CONFUSION
`
`Another factor concerns the nature and extent of any actual confusion. Id. No actual confusion has
`
`occurred, due to the fact that Applicant’s mark is not in use. Consequently, Applicant asserts that this
`
`factor weighs in his favor or is at least neutral in the likelihood of confusion analysis.
`
`NO MARKET INTERFACE BETWEEN THE MARKS
`
`The next factor is the market interface between Applicant and the owner of a valid, prior mark. Id. In this
`
`case, the potential for market interface is unlikely because the goods are marketed to different consumers
`
`under different circumstances. Therefore this factor weighs against a likelihood of confusion, or is at least
`
`neutral .
`
`EXTENT OF POTENTIAL CONFUSION IS DE l\/[INIMIS
`
`An important factor focuses on the extent of potential confusion, i.e., whether de minimis or substantial. Id.
`
`Because (1) the Registrant’s mark expressly communicates source, namely, the term “Rihanna,” (2) the
`
`Applicant’s goods are not marketed under the same conditions as the Registrants, and (3) Applicants have
`
`narrowed the goods to clarify that its products do not relate to those of the Registrants, the potential for
`
`confusion is de minimis and weighs heavily against a likelihood of confusion.
`
`SIMILAR MARKS WITH SIMILAR GOODS CAPABLE OF REGISTRATION
`
`Another 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. 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).
`
`EVIDENTIARY BURDEN: MUST SHOW A SUBSTANTIAL LIKELIHOOD OF CONFUSION
`
`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.
`
`

`

`The evidence does not establish that there is a substantial likelihood of confusion. The marks are not
`
`identical and the goods have been modified to create a greater separation between Applicants’ and
`
`Registrant’s goods. While it is true that some producers of hair care products also produce shower gels and
`
`perfumes, there are also those that do not. This premise alone is not enough to support a likelihood of
`
`confusion analysis. Applicants respectfully submit that the mark for AU REBELLE does not create a
`
`substantial likelihood of confusion with the Registrant’s marks.
`
`CONCLUSION
`
`Applicant has fully responded to the August 26, 2014 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, AU REBELLE, is sufficiently distinct from the REBELLE BY RIHANNA registrations,
`
`so as not to 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
`
`

`

`RAM SALE NUMBER: 86277447
`
`RAM ACCOUNTING DATE: 20141203
`
`INTERNET TRANSMISSION DATE:
`
`SERIAL NUMBER:
`
`2014/12/02
`
`86/277447
`
`Description
`
`Fee
`Code
`
`Transaction
`Date
`
`Number Of
`Classes
`
`Total Fees
`Paid
`
`7008
`
`2014/] 2/02
`
`I
`
`50
`
`