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)(3 pages)
`
`The table below presents the data as entered.
`
`Entered
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`86318538
`
`LAW OFFICE 101
`
`http://tsdr.uspto.gov/img/86318538/large
`
`LITTLE ADI + CO.
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`evi_701095314-20141008101900730241_._LITTLE_ADI_CO.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\185\86318538\xml5\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\185\86318538\xml5\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\185\86318538\xml5\ROA0004.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`arguments sufficient to overcome the 2(d) refusal for a likelihood of confusion.
`
`GOODS AND/OR SERVICES SECTION (current)
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`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`025
`
`Babies' pants; Bottoms for children and babies; Children's and infants' cloth bibs; Hats; Headbands; Scarves; Shirts for children and babies;
`Shorts for children and babies; Sweatshirts; T-shirts; Tops for children and babies
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 01/10/2014
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`At least as early as 01/10/2014
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`GOODS AND/OR SERVICES SECTION (proposed)
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`INTERNATIONAL CLASS
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`TRACKED TEXT DESCRIPTION
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`025
`
`Babies' pants; Tops for children and babies not sold in bridal specialty shops or boutiques; Bottoms for children and babies; Babies' pants not
`consisting of hosiery; Bottoms for children and babies not sold in bridal specialty shops or boutiques and not consisting of hosiery; Children's
`and infants' cloth bibs; Hats; Headbands; Shirts for children and babies; Scarves; Shorts for children and babies; Sweatshirts; T-shirts; Tops for
`children and babies
`
`FINAL(cid:160)DESCRIPTION
`
`Tops for children and babies not sold in bridal specialty shops or boutiques; Babies' pants not consisting of hosiery; Bottoms for children and
`
`(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)
`

`

`babies not sold in bridal specialty shops or boutiques and not consisting of hosiery; Children's and infants' cloth bibs; Hats; Headbands;
`Scarves
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE IN COMMERCE DATE
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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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`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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`Section 1(a)
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`At least as early as 01/10/2014
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`At least as early as 01/10/2014
`
`/abetz/
`
`Adrianne Betz
`
`President
`
`10/08/2014
`
`YES
`
`Wed Oct 08 10:24:15 EDT 2014
`
`USPTO/ROA-XX.XXX.XX.XX-20
`141008102415473614-863185
`38-5003276a636a3d4e2aabf5
`7fde4c029f5abdab5729a1ba3
`0deee13f35eca91a31b-N/A-N
`/A-20141008101900730241
`
`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. 86318538(cid:160)LITTLE ADI + CO.(Standard Characters, see http://tsdr.uspto.gov/img/86318538/large) has been amended as
`follows:
`
`EVIDENCE
`Evidence in the nature of arguments sufficient to overcome the 2(d) refusal for a likelihood of confusion. has been attached.
`Original PDF file:
`evi_701095314-20141008101900730241_._LITTLE_ADI_CO.pdf
`Converted PDF file(s) ( 3 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 025 for Babies' pants; Bottoms for children and babies; Children's and infants' cloth bibs; Hats; Headbands; Scarves; Shirts for
`children and babies; Shorts for children and babies; Sweatshirts; T-shirts; Tops for children and babies
`Original Filing Basis:
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 01/10/2014 and first used in commerce at least as early as 01/10/2014 , and is now in use in such commerce.
`
`Proposed:
`Tracked Text Description: Babies' pants; Tops for children and babies not sold in bridal specialty shops or boutiques; Bottoms for children and
`babies; Babies' pants not consisting of hosiery; Bottoms for children and babies not sold in bridal specialty shops or boutiques and not consisting
`
`

`

`of hosiery; Children's and infants' cloth bibs; Hats; Headbands; Shirts for children and babies; Scarves; Shorts for children and babies;
`Sweatshirts; T-shirts; Tops for children and babies
`
`Class 025 for Tops for children and babies not sold in bridal specialty shops or boutiques; Babies' pants not consisting of hosiery; Bottoms for
`children and babies not sold in bridal specialty shops or boutiques and not consisting of hosiery; Children's and infants' cloth bibs; Hats;
`Headbands; Scarves
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 01/10/2014 and first used in commerce at least as early as 01/10/2014 , and is now in use in such commerce.
`SIGNATURE(S)
`Response Signature
`Signature: /abetz/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 10/08/2014
`Signatory's Name: Adrianne Betz
`Signatory's Position: President
`
`The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either
`(1) the applicant or (2) a person(s) with legal authority to bind the applicant; and if an authorized U.S. attorney or Canadian attorney/agent
`previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has
`granted the request of his/her prior representative to withdraw.
`
`Serial Number: 86318538
`Internet Transmission Date: Wed Oct 08 10:24:15 EDT 2014
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20141008102415473
`614-86318538-5003276a636a3d4e2aabf57fde4
`c029f5abdab5729a1ba30deee13f35eca91a31b-
`N/A-N/A-20141008101900730241
`
`(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 No.:
`
`Filed:
`Word Mark:
`
`Little Adi + Co.
`86/318538
`
`June 24, 2014
`LITTLE ADI + CO.
`
`RESPONSE TO SEPTEMBER 30, 2014 OFFICE ACTION
`
`Potential Section 2(d) — Likelihood of Confusion
`Applicant submits a preliminary response to the potential section 2(d) refiisal; however,
`Applicant reserves all rights to provide a detailed and more descriptive response if the Examining
`Attorney raises a Section 2(d) refusal in a subsequent Office Action.
`
`Agglieanfs Ward Mark
`LITTLE ADI + CO.
`
`Cited Registered Mark
`LIL’ LADY
`
`025 : Babies’ pants; Bottoms for children and
`babies; Children‘s and infants‘ cloth bibs; Hats;
`Headbands; Scarves; Shirts for children and
`babies; Shorts for children and babies;
`
`Sweatshirts; T—shirts; Tops for children and
`babies
`
`025: hosiery, namely, socks, panty hose and tights
`not sold in bridal specialty shops or boutiques
`
`LITTLE LADY BY FOREVER YOURS
`
`025: flower girl dresses sold exclusively in bridal
`specialty shops
`
`Preliminary Response with Reservation ofRights
`The USPTO suggests that it will refuse registration of Applicant’s mark, LITTLE ADI + C0.,
`“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. 1. (Ju Pom‘ 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 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
`support the issuance of the 2(d) refusal.
`
`VISUAL DISTINCTIONS
`
`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 is compared to the cited
`
`

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`registrations the appearance is not similar.
`
`LITTLE ADI + CO.
`LIL’ LADY
`LITTLE LADY BY FOREVER YOURS
`
`(Baby clothes)
`(hosiery)
`(flower girl dresses sold in bridal shops)
`
`Visually, the applied for mark includes distinct visual elements, namely, the “+” and “CO.”
`These two elements are distinguishable features of the Applicant’s mark. Furthermore, the cited
`registrations share the term “LADY.” Whereas, the Applicant’s mark is
`The Applicant’s
`marks include a different visual spelling and can be pronounced differently than the elements in the
`cited registrations.
`
`DISTINCTIONS AMONGST THE GOODS
`
`When compared to the cited registrations, Applicant’s goods are sufficiently different to allow
`Applicant’s goods to travel in different channels of trade. While the Applicant’s goods are for infants
`and babies, the goods in the cited registrations are specifically directed towards ‘hosiery’ and ‘bridal
`flower girl dresses.” Different registrants own the cited registrations. If hosiery and bridal dresses can
`exist on the principal register without a likelihood of confusion, certainly the Applicant’s baby related
`clothing can as well, especially considering the fact that the Applicant’s mark is much less similar than
`the cited registrations.
`
`In order to f11rther eliminate a likelihood of confusion, Applicant has amended the goods to the
`following description:
`
`“Topsfor children and babies not sold in bridal specialty shops or boutiques; Babies’ pants not
`consisting ofhosiery; Bottoms for children and babies not sold in bridal specially shops or
`boutiques and not consisting of hosiery; Children ’s and infants’ cloth bibs; Hats; Headbands;
`Scarves”
`
`CHANNELS OF TRADE ARE DIFFERENT
`
`The Channels of Trade are distinctly different. The cited registration for LITTLE LADY BY
`FOREVER YOURS restricts the channels of trade to goods being offered exclusively at bridal
`specialty shops or boutiques. It is highly unlikely that Applicant’s goods will be offered at bridal
`specialty shops. Therefore, a 2(d) refusal analysis of the Channels of Trade would conclude in the
`Applicant’s favor.
`
`SIMILAR MARKS ARE CAPABLE OF REGISTRATION
`
`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).
`
`The cited registrations share more similarities than the Applicant’s mark, and they exist on the
`principal register. Therefore, the Examining Attorney must show by clear evidence why confusion is
`likely to occur in the present case. 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.
`
`Applicant’s mark, with its unique elements, being offered for baby related goods is sufficiently
`different from the cited registrations to eliminate any likelihood of confusion. Under the amended
`description of the goods, Applicant’s mark carries a distinct commercial impression. 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.
`
`