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
`
`86393777
`
`LAW OFFICE 115
`
`Entered
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (8 pages)
`
`DESCRIPTION OF EVIDENCE FILE
`
`ADDITIONAL STATEMENTS SECTION
`
`SUPPLEMENTAL REGISTER
`
`NEW ATTORNEY SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`http://tsdr.uspto.gov/img/86393777/large
`
`BLACK BOX
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`evi_701095314-20141110170456749561_._BLACK_BOX__86393777__-
`_OA_Response.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\937\86393777\xml5\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\937\86393777\xml5\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\937\86393777\xml5\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\937\86393777\xml5\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\937\86393777\xml5\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\937\86393777\xml5\ROA0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\937\86393777\xml5\ROA0008.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\937\86393777\xml5\ROA0009.JPG
`
`Arguments in support of registration, namely, the applicant's response to potential
`Section 2(d) refusal and attached exhibits in support thereof have been attached
`
`The applicant seeks registration of the mark on the Supplemental Register (i.e., a
`change of the words 'Principal Register' to 'Supplemental Register').
`
`Tom Dunlap
`
`DunlapWeaver PLLC
`
`211 Church St., SE
`
`Leesburg
`
`Virginia
`
`       
`       
`       
`       
`       
`       
`       
`

`

`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`20175
`
`United States
`
`7037777319
`
`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
`
`MAVSAK INC
`3060 OCEAN AVE
`BROOKLYN
`New York (NY)
`US
`11235-3310
`
`Tom Dunlap
`
`DunlapWeaver PLLC
`
`211 Church St., SE
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`7037777319
`
`ip@dunlapweaver.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`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
`
`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`/Seth Willig Chadab/
`
`Seth Willig Chadab
`
`Associate Attorney, DunlapWeaver PLLC, Maryland Bar Member
`
`7037777319
`
`11/10/2014
`
`YES
`
`Mon Nov 10 17:09:45 EST 2014
`
`USPTO/ROA-XX.XXX.XX.XX-20
`141110170945788546-863937
`77-500a14ea8fce12b5311dd5
`b9a82050d525224b67c897eb5
`bd1ea97a7af1c9-N/A-N/A-20
`141110170456749561
`
`

`

`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 86393777 BLACK BOX(Standard Characters, see http://tsdr.uspto.gov/img/86393777/large) has been amended as follows:
`EVIDENCE
`Evidence in the nature of Arguments in support of registration, namely, the applicant's response to potential Section 2(d) refusal and attached
`exhibits in support thereof have been attached has been attached.
`Original PDF file:
`evi_701095314-20141110170456749561_._BLACK_BOX__86393777__-_OA_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:
`Tom Dunlap of DunlapWeaver PLLC, having an address of
`211 Church St., SE Leesburg, Virginia 20175
`United States
`ip@dunlapweaver.com
`7037777319
`
`CORRESPONDENCE ADDRESS CHANGE
`Applicant proposes to amend the following:
`Current:
`MAVSAK INC
`3060 OCEAN AVE
`BROOKLYN
`New York (NY)
`US
`11235-3310
`
`Proposed:
`Tom Dunlap of DunlapWeaver PLLC, having an address of
`211 Church St., SE Leesburg, Virginia 20175
`United States
`ip@dunlapweaver.com
`7037777319
`
`ADDITIONAL STATEMENTS
`Supplemental Register
`The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental
`Register').
`
`SIGNATURE(S)
`Response Signature
`Signature: /Seth Willig Chadab/     Date: 11/10/2014
`Signatory's Name: Seth Willig Chadab
`Signatory's Position: Associate Attorney, DunlapWeaver PLLC, Maryland Bar Member
`
`

`

`Signatory's Phone Number: 7037777319
`
`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:    Tom Dunlap
`   DunlapWeaver PLLC
`   211 Church St., SE
`   Leesburg, Virginia 20175
`
`Serial Number: 86393777
`Internet Transmission Date: Mon Nov 10 17:09:45 EST 2014
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20141110170945788
`546-86393777-500a14ea8fce12b5311dd5b9a82
`050d525224b67c897eb5bd1ea97a7af1c9-N/A-N
`/A-20141110170456749561
`
`        
`

`

`RESPONSE TO OCTOBER 16, 2014 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e—mailed on October 16, 2014. The Applicant
`respectlully submits the following response. Applicant submits that the above-identified
`trademark application for BLACK BOX is in condition for allowance to publication.
`
`Potential Section 2§eull Refusal: Merely Descriptive
`
`Applicant responds to the refusal by amending the application to seek registration on the
`
`Supplemental Register.
`
`Potential Section 25d) Refusal: 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 Bridgett G. Smith raises a Section 2(d) refusal in a subsequent Office Action.
`
`The USPTO has suggested that the Applicant’s mark, BLACK BOX, may be suspended, because
`of a likelihood of confusion with the pending U.S. Applications Serial Nos. 86114621 and
`86114622 (herein referred as the “BLACKBOXGUARD marks” or “cited marks”).
`
`N0 likelihood of confusion has been foundfor similar marks with similar goods
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Serial N0.:
`Mark:
`
`86393777
`BLACK BOX
`
`MAVSAK INC
`Applicant:
`Office Action Date: October 16, 2014
`
`confusingly similar to APPLE RASIN CRISP, both for breakfast cereal); Consol. Cigar v. RJR
`
`Courts across the country 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.
`US. 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 US. P. Q. 529, 530 (C.C.P.A. 1970) (PEAK PERIOD not confiisingly similar to PEAK);
`Servo Corp. Am. v. Servo-TekProd. Ca, 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
`confilsing similar to ULTRA SWEATS, both for sportswear); Gen. Mills Inc. v. Kellog C0., 824
`F. 2d 622, 627, 3 U.S.P.Q. 2d 1442, 1446 (8th Cir. 1987) (OATMEAL RAISIN CRISP not
`
`

`

`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 confilsingly similar to DUTCH MASTERS for cigars); Wooster Brash Co. v,
`Prager Brush C0,, 231 USPQ 316 (TTAB 1986) (POLY PRO and POLY FLO not confusingly
`similar). 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, 11.
`Pack ’em Enterprises, Inc., 951 F.2d 330 (Fed. Cir. 1991).
`
`It is well established that "likelihood of confusion cannot be predicated on dissection of a mark .
`.
`. the ultimate conclusion rests on consideration of the marks in their entireties." In re National
`
`Here, the USPTO suggests that it will suspend the Applicant’s mark, BLACK BOX, because of
`an alleged likelihood of confusion with the trademark applications for the BLACKBOXGUARD
`marks. However, the marks are not identical and have distinct and separate commercial
`impressions. The Examining Attorney has not established that when the marks are compared in
`their entireties, they are confusingly similar.
`
`Data Corp, 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(iv). The Examining
`Attorney must look to the overall impression that the marks create, rather than comparing
`individual parts. See Mead Data Cent, Inc. v. Toyota Motor Sales, USA, Inc, 875 F.2d 1026,
`1029, 10 USPQ2d 1961 (2d Cir. 1989). When the marks are compared in their entireties, they
`are significantly different in visual and aural impression and in overall commercial impression.
`Similarities and differences must both be considered in the analysis. In re Electrolyte
`Laboratories Inc, 929 F.2d 645, 647, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990) (K+ and design
`for dietary potassium supplement held not likely to be confiised with K+EFF (stylized) for
`dietary potassium supplement). See also Lugino ’s Inc, v. Stoufler Corp, 50 USPQ2d 1047, 1051
`(8th Cir. 1999) (“Lean Cuisine” not confusingly similar to “Michelina’s Lean ‘N Tasty” despite
`both marks use of the word “Lean” for low-fat frozen foods).
`
`letter ‘O’ in BOX is replaced by a stylized shutter design.
`
`The cited marks and the applicant’s mark have separate and distinct commercial impressions
`
`Visually, BLACK BOX is easily distinguished from the BLACKBOXGUARD marks because
`they include the additional term “GUARD.” The BLACKBOXGUARD word mark includes a
`composite of three words without spacing between the words. The BLACKBOXGUARD design
`mark is even more visually distinct. The design mark has an image of a three dimensional box
`enclosing the face of animal with the accompanying wording, BLACKBOX and GUARD.
`Aurally, the BLACKBOXGUARD marks are distinctive because the addition of the word
`GUARD adds an extra syllable to the pronunciation of the marks. Because the cited marks use
`additional wording and a have a unique design, the marks have a distinct commercial impression
`that is different from the Applicant’s mark. See Exhibit A.
`
`In contrast, the Applicant uses the words, BLACK and BOX separately. The product packaging
`employs a unique design that helps further distinguish it from the cited marks. The words
`BLACK and BOX are separated by an oval sensor to the right of the word BLACK. Also, the
`
`

`

`A licant’s Commercial Im ression
`
`Cited Marks” Commercial Im ression
`
`Q
`
`low potential for confusion weighs against finding likelihood of confusion.
`
`In the present case, it is not enough to suggest that the products are related because they both
`utilize video recording devices for automobiles. The Examining Attorney must show that the
`public will be confused as to the source of the Applicant’s services. See Pan/a Payne Prods. Co.
`v. Johnson ’5‘ Pub’g (70., 473 F.2d 901, 902, 177 USPQ 76, 77 (C.C.P.A. 1973) (“[T]he question
`is not whether people will confuse the marks, but rather whether the marks will confuse people
`into believing that the goods they identify emanate from the same source”), In re White Rock
`Dis'ril/eries Inc, 92 USPQ2d 1282, 1285 (TTAB 2009) (failing to establish that wine and vodka
`infused with caffeine are related goods because there was no evidence that vodka and wine
`emanate from a single source under a single mark or that such goods are complementary
`products that would be bought and used together).
`
`Under a likelihood of confusion analysis, marks are to be compared in their entireties. To ignore
`the presence and impact that a design and additional word adds the cited marks would be a
`failure to review the marks in their entireties. Similar to Kellogg (70., despite the shared terms,
`the marks have different commercial impressions. In conclusion, when comparing the marks
`side-by—side, they do not appear confusingly similar for purposes of a likelihood of confusion
`analysis. Therefore, the marks unique commercial impression weighs against finding likelihood
`of confusion.
`
`Consumers are not likely to be confused as to the source of the respective goods
`
`The similarities between the Applicant’s mark and the cited marks are insufficient to support a
`finding of likelihood of confusion. Applicant respectfully asserts that its goods are not related
`nor marketed in a way that would suggest they emanate from the same source. Therefore, the
`
`

`

`The Applicant of the cited marks maintains exclusive control over the dissemination ofits
`goods
`
`The BLACKBOXGUARD video recorders are solely disseminated by the company’s own online
`retail website. Consumers would likely identify the cited marks from the website,
`wwwblackboxguard.com. and would undoubtedly recognize this mark among other similar
`products.
`
`The Applicant sells its BLACK BOX video recorders on a third party retail website. The
`potential for confusion is significantly reduced due to the fact that consumers of either product
`will not encounter them on the same retail website.
`
`across the country through all economic classes.
`
`Applicant is aware of another registered trademark for similar goods. The mark SECURITY
`BLACKBOX (Reg. No. 3478422) shares the cited marks use of the term “BLACKBOX” and is
`for nearly identical goods. See Exhibit C. Therefore. Registrant’s mark is entitled to only a
`narrow scope ofprotection. Applicant asserts that the narrow scope ofprotection for the cited
`marks weighs against finding a likelihood of confusion.
`
`The Applicant asserts consumers are not likely to encounter both products on the same retail
`website. Therefore. this weighs against the existence of likelihood of confusion and in favor of
`the Applicant.
`
`The cited marks should receive a narrow scope ofprotection because of the registration of a
`similar mark for similar goods
`
`If the Applicant’s provides evidence that establishes that the consuming public is exposed to
`third-party use of similar marks on similar goods. this evidence "is relevant to show that a mark
`is relatively weak and entitled to only a narrow scope ofprotection. ” See Palm 3601177190719. Inc,
`v. Veuve Clicquot Ponsardin iMaison Fondee en 1 772. 396 F.3d 1369. 1373. 73 USPQ2d 1689.
`1693 (Fed. Cir. 2005).
`
`There has been no confusion or interface among the goods in one year of concurrent use
`
`There has also been concurrent use of the marks without evidence of actual confusion.
`
`Applicant’s mark has been in use since October 7. 2013. Registrant’s mark has been in use since
`Febmaiy 28. 2013. During this period of concurrent use. no evidence exists that any consumer
`has been confused by the use of these marks. Therefore. there has been concurrent use of the
`marks more than one year without evidence of actual confusion.
`
`Further. the potential for confusion is de minimis. The BLACKBOXGUARD goods are sold
`through their own company’s website. and the potential for confusion is not likely to extend
`
`

`

`Conclusion
`
`For these reasons and others, Applicant respectfully submits that the mark for BLACK BOX
`does not create a likelihood of confusion with the pending U.S. Applications Serial Nos.
`
`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 confiJsed must be shown." Omaha Natl. Bank, 633
`F. Supp. at 234, 229 U.S.P.Q. at 52. Applicant’s trademark is dissimilar to the cited marks
`Visually, in sound, and in commercial impression. Product packaging clearly distinguishes the
`Applicant’s marks from the cited marks. The Examining Attorney has not shown that there is a
`substantial likelihood that the public will be confilsed by the concurrent use of the marks.
`
`86114621 and 86114622.
`
`

`

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`Exhibit C
`
`
`STATUS
`
`‘
`
`DOCUMENTS
`Generated on: This page was generated by TSDR on 2014—1105 09:20:52 EST
`Mark: SECURITY BLACKBOX
`
`SECURITY BLACKBOX
`
`U5 Serial Number: 77283876
`
`US Registration Number: 3478422
`
`Register: Supplemental
`
`Ilarlr Type: Trademark
`
`Amended to Principal No
`Reister:
`
`Application Filing Date: Sept 19. 200?
`
`Registration Date: Jul, 29, 2003
`
`Date Amended to Current Jun. 20, 2005
`Register:
`
`Status: Registered. The registration date is used to determine when post—registration maintenance documents are due.
`
`Status Date: Jul. 29, 2003
`
`v Mark Information
`Marti Literal Elements: SECURITY BLACKBOX
`
`v Expand All
`
`Standard Character Claim: Yes. The mark consists ofstandard characters without claim to any particularfont style. size, or color.
`
`Hark Drawing Type: 4 — STANDARD CHARACTER MARK
`Disclainer: "SECURITY"
`
`a TM staff and Location Information
`
`v Goods and Services
`Note:
`The following symbols indicate that the registrant/owner has amnded the goodslservices:
`. Brackets [e] indicate deleted goodstsem'ces;
`- Double parenthesis (LI) identify any goodyservices not claimed in a Section 15 affidavitof lncontestability; and
`- Asterisks ’2' identify additional (new) wording in the goodsiservices.
`For: VIDEO SURVEILLANCE EQUIPMENTS. NAMELY. VIDEO CAMERAS. VIDEO MONITORS. DIGITAL VIDEO RECORDERS. MOTION
`SENSITIVE SECURITY LIGHTS. SCANNERS
`
`mternatinnaiClasslesl: one - Primary Class
`Class status: ACTIVE
`
`Basis: 1:3)
`First Use: Oct. 21:05
`
`- Basis Information (Case Level]
`
`a- Current Own-erls) Infomation
`
`a- Attomeleorrespondence Information
`
`A Prosecution History
`
`u.s Classics): 021.023, 026, 036, 033
`
`Use in Commerce: Jan. 21:07
`
`