PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK FILE NAME
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`COLOR(S) CLAIMED
`(If applicable)
`
`DESCRIPTION OF THE MARK
`(and Color Location, if applicable)
`
`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)(10 pages)
`
`The table below presents the data as entered.
`
`Entered
`
`86439326
`
`LAW OFFICE 116
`
`http://tsdr.uspto.gov/img/86439326/large
`
`NOMAD LONGBOARDS
`
`NO
`
`NO
`
`Color is not claimed as a feature of the mark.
`
`The mark consists of the stylized words "Nomad Longboards". A circle with line
`drawing representation of Wind, Mountains and Water.
`
`evi_701095314-20150415142956913449_._NOMAD_LONGBOARDS.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\393\86439326\xml9\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\393\86439326\xml9\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\393\86439326\xml9\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\393\86439326\xml9\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\393\86439326\xml9\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\393\86439326\xml9\ROA0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\393\86439326\xml9\ROA0008.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\393\86439326\xml9\ROA0009.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\393\86439326\xml9\ROA0010.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\393\86439326\xml9\ROA0011.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`a .pdf document containing arguments in response to the office action.
`
`GOODS AND/OR SERVICES SECTION (025)(no change)
`
`GOODS AND/OR SERVICES SECTION (028)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`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
`
`028
`
`Longboards
`
`Section 1(a)
`
`At least as early as 09/01/2014
`
`At least as early as 09/15/2014
`
`(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)
`(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)
`

`

`GOODS AND/OR SERVICES SECTION (028)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`Longboards; Longboards for skateboarding
`
`028
`
`FINAL(cid:160)DESCRIPTION
`
`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
`
`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`NEW ATTORNEY SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`Longboards for skateboarding
`
`Section 1(a)
`
`At least as early as 09/01/2014
`
`At least as early as 09/15/2014
`
`No claim is made to the exclusive right to use LONGBOARDS apart from the mark
`as shown.
`
`Tom Dunlap
`
`Dunlap Bennett & Ludwig, PLLC
`
`211 Church Street, SE
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`703.777.7319
`
`ip@dbllawyers.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`CORRESPONDENCE SECTION
`
`ORIGINAL ADDRESS
`
`NEW CORRESPONDENCE SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`NOMAD LONGBOARDS LLC
`75 Sharon St
`Harrisonburg
`Virginia (VA)
`US
`22801
`
`Tom Dunlap
`
`Dunlap Bennett & Ludwig, PLLC
`
`211 Church Street, SE
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`703.777.7319
`
`ip@dbllawyers.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`

`

`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`/khardley/
`
`KEISHA HARDLEY
`
`ASSOCIATE ATTORNEY, DUNLAP BENNETT & LUDWIG, MD BAR
`MEMBER
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`703.777.7319
`
`04/15/2015
`
`YES
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Wed Apr 15 14:35:42 EDT 2015
`
`USPTO/ROA-XX.XXX.XX.XX-20
`150415143542282913-864393
`26-5305754e61ba143ff30ba7
`6785ae2326361b8db27ed09ec
`e68fa12f79151543-N/A-N/A-
`20150415142956913449
`
`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. 86439326(cid:160)NOMAD LONGBOARDS (Stylized and/or with Design, see http://tsdr.uspto.gov/img/86439326/large) has been
`amended as follows:
`
`EVIDENCE
`Evidence in the nature of a .pdf document containing arguments in response to the office action. has been attached.
`Original PDF file:
`evi_701095314-20150415142956913449_._NOMAD_LONGBOARDS.pdf
`Converted PDF file(s) ( 10 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 028 for Longboards
`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 09/01/2014 and first used in commerce at least as early as 09/15/2014 , and is now in use in such commerce.
`
`Proposed:
`
`

`

`Tracked Text Description: Longboards; Longboards for skateboarding
`
`Class 028 for Longboards for skateboarding
`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 09/01/2014 and first used in commerce at least as early as 09/15/2014 , and is now in use in such commerce.
`ATTORNEY ADDRESS
`Applicant proposes to amend the following:
`Proposed:
`Tom Dunlap of Dunlap Bennett & Ludwig, PLLC, having an address of
`211 Church Street, SE Leesburg, Virginia 20175
`United States
`ip@dbllawyers.com
`703.777.7319
`
`CORRESPONDENCE ADDRESS CHANGE
`Applicant proposes to amend the following:
`Current:
`NOMAD LONGBOARDS LLC
`75 Sharon St
`Harrisonburg
`Virginia (VA)
`US
`22801
`
`Proposed:
`Tom Dunlap of Dunlap Bennett & Ludwig, PLLC, having an address of
`211 Church Street, SE Leesburg, Virginia 20175
`United States
`ip@dbllawyers.com
`703.777.7319
`
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use LONGBOARDS apart from the mark as shown.
`
`SIGNATURE(S)
`Response Signature
`Signature: /khardley/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 04/15/2015
`Signatory's Name: KEISHA HARDLEY
`Signatory's Position: ASSOCIATE ATTORNEY, DUNLAP BENNETT & LUDWIG, MD BAR MEMBER
`
`Signatory's Phone Number: 703.777.7319
`
`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)Tom Dunlap
`(cid:160)(cid:160)(cid:160)Dunlap Bennett & Ludwig, PLLC
`(cid:160)(cid:160)(cid:160)211 Church Street, SE
`(cid:160)(cid:160)(cid:160)Leesburg, Virginia 20175
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`Serial Number: 86439326
`Internet Transmission Date: Wed Apr 15 14:35:42 EDT 2015
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20150415143542282
`913-86439326-5305754e61ba143ff30ba76785a
`e2326361b8db27ed09ece68fa12f79151543-N/A
`-N/A-20150415142956913449
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`Serial No.:
`
`Nomad Longboards LLC
`86439326
`
`Filed:
`Trademark Atty:
`TradeMark:
`
`February 26, 2015
`Tamara Frazier
`NOMAD LONGBOARDS (design)
`
`RESPONSE TO FEBRUARY 26, 2015 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e-mailed on February 26, 2015. The Applicant
`
`respectfully submits the following response. Applicant submits that the above-identified trademark
`
`application for NOMAD LONGBOARDS (design) is in condition for allowance to publication.
`
`AMENDMENT TO THE IDENTIFICATION OF CLASS 028 GOODS
`
`The Applicant amends its class 028 goods to the following:
`
`Class 028: Longboards for skateboarding
`
`DISCLAIMER
`
`The Applicant submits the following disclaimer:
`
`No claim is made to the exclusive right to use “LONGBOARDS” as to Class 028 apart from the
`
`mark as shown.
`
`POTENTIAL SECTION 2(d) 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 Tamara
`
`Frazier raises a Section 2(d) refusal in a subsequent Office Action.
`
`

`

`APPLICANT’S MARK
`
`CITED REGISTERED MARKS
`
`Nomad
`
`LONGBOARDS
`
`Serial No. 86439326
`
`Date of First Use: 09/01/2014
`
`Class 025: T-Shirts
`
`Class 028: Longboards
`
`n oma d kn i t S
`
`Registration. No. 4399344
`
`Date of First Use: 10/31/2011
`
`Class 025: Clothing, namely arm Warmers; Hats
`for infants, babies, toddlers and children; Knitted
`
`caps; Knitted gloves; Scarves; T—shirts
`
`Nomad Yogi
`
`Registration No. 4569028
`
`Date of First Use: 06/30/2011
`
`Class: 025: Athletic apparel related to yoga and
`related activities, namely yoga pants, yoga shirts,
`yoga shorts and yoga tops
`
`NOMAD
`
`Registration No. 3669548
`
`Date of First Use: 02/28/2008
`
`Class 025: Clothing, namely outdoor clothing,
`namely, jackets, pants, skirts, shirts, vests,
`pullovers, sweaters, shorts, ski clothing, namely
`ski jackets, ski trousers, ski sweaters,
`mountaineering boots, climbing boots, hiking
`shoes, caps, hats, gloves, shawls and socks
`
`

`

`Registration No. 3734343
`
`Date of First Use: 02/28/2008
`
`Class 025: Clothing, namely outdoor clothing,
`namely, jackets, pants, skirts, shirts, Vests,
`pullovers, sweaters, shorts, ski clothing, namely
`ski jackets, ski trousers, ski sweaters, caps, hats,
`gloves, shawls
`
`NOMAD
`
`Registration No. 3 5 005 87
`
`Date of First Use: 05/23/1996
`
`Class 025: Footwear for women, men and
`children
`
`

`

`IUOMAD
`
`footwear
`
`Registration No. 2201 102
`
`Date of First Use: 05/23/1998
`
`Class 025: footwear for women, men and children
`
`NOMAD
`
`Registration No. 3300907
`
`Date of First Use: 09/29/2006
`
`Class 028: Skis, snowboards, ski poles, and their
`parts, ski and snowboard bindings and their parts;
`covers, bags and containers for skis, snowboards
`and ski poles, covers for ski bindings
`
`APPLICANT’S MARK HAS ADDITIONAL ELEMENTS GIVING IT A DISTINCT
`COMMERICAL IMPRESSION
`
`The USPTO suggests that it will refitse registration of Applicant’s mark, NOMAD LONGBOARDS
`
`(design) in class 025, because of a likelihood of confiision with six ‘nomad’ related registered marks
`
`also in class 025, namely, Nomad Knits, U.S. Registration No. 4399344, hereinafter “344;” Nomad
`
`Yogi, U.S. Registration No. 4569028, hereinafter “028;” Nomad U.S. Registration No. 3669548,
`
`

`

`hereinafter “548;” Nomad (design) U.S. Registration No. 3734343, hereinafter “343;” Nomad, U.S.
`
`Registration No. 3500587, hereinafter “587;” Nomad Footwear (design) U.S. Registration No.
`
`2201102, hereinafter “l02;” and Nomad U.S. Registration No. 3300907, hereinafier “907”. “[T]he
`
`question of confilsion is related not to the nature of the mark but to its effect ‘when applied to the
`
`[goods] ofthe applicant.” In re E. 1. du Pont 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 respectfiilly asserts that when all
`
`factors are weighed, the majority weigh against the existence of a likelihood of confusion.
`
`WHEN VIEWED IN ITS ENTIRETY APPLICANTS MARK HAS A DISTINCT
`COMMERCIAL IMPRESSION
`
`The Examining Attorney has highlighted the similarity of the marks as one basis for the refusal,
`
`focusing on the premise that the “word portion is ofien considered the dominant feature and is
`
`accorded greater weight in determining whether marks are confusingly similar...” However, when
`
`viewed side by side, the marks do not appear similar. The Applicant’s mark includes additional
`
`elements not shared by the cited registrations, namely, a distinct design element and the descriptive
`
`term “LONGBOARDS” which, although disclaimed, must be considered when viewing the
`
`Applicant’s mark as a whole.
`
`Courts have held that the addition of different terms to common elements appreciably reduces the
`
`likelihood of confusion between two marks, even in cases where the goods are highly similar. See
`
`USTrust V. US. States Trust Co, 210 F. Supp 2d9 27-28 (D. Mass. 2002), (holding that UNITED
`
`

`

`STATES TRUST COMPANY not confilsingly similar to UNITED STATES TRUST COMPANY OF
`
`BOSTON, both for financial services).
`
`Additionally, in In re Electrolyte Labs, 929 F.2d 645, U.S.P.Q. 2d 1239 (Fed. Cir. 1990), the Federal
`
`Circuit reversed the Trademark Trial and Appeal Board, and held that the marks “K+ and Design” and
`
`“K+ EFF” for “competitive dietary supplements” were not likely to be confused even if consumers
`
`would say “K—Plus” and “K—Plus EFF” when calling for products.” Id. The Court held that the “EFF”
`
`in the Registrant’s mark Was a significant difference, and ruled that “No element of a mark is ignored
`
`simply because it is less dominant, or would not have trademark significance if used alone.” Id.
`
`Furthermore, a similar phrase found in two marks is not dispositive of a confusing similarity between
`
`the marks when the marks give off different commercial impressions. See Kellogg Co. 12. Pack ’em
`
`Enterprises, Inc, 951 F.2d 330 (Fed. Cir. 1991).
`
`In the present case, the marks give off different commercial impressions. The term ‘longboards’
`
`immediately relays information about the nature of the Applicants goods, which has a significant
`
`impact on the commercial impression. None of the cited registered marks include terms reflecting a
`
`commercial impression that would connect the marks to longboard-related goods. Similar to Kellogg,
`
`the similar phrase, ‘nomad,’ cannot be dispositive since the marks give off different commercial
`
`impressions.
`
`APPLICANT DOES NOT OFFER THE SAME GOODS
`
`Applicant’s mark NOMAD LONGBOARDS (design) for class 025 is distinct from registrants “344,”
`
`“028,” “S48,” and “344.” Registrant “344” solely sells clothing made entirely of knitting yarn.
`
`Additionally “344” sells items designed for adults as well as infants and toddlers. NOMAD
`
`

`

`LONGBOARDS (design) does not sell clothing made of knitting yarn, nor items geared towards
`
`infants and toddlers. Registrant “028” designs clothing catered towards the practice of yoga. All
`
`clothing items are related to yoga activities, requiring yoga shirts and yoga pants etc. NOMAD
`
`LONGBOARDS (design) is catered towards individuals interested in skateboarding and its associated
`
`lifestyle. There is no overlap between those interested ir1 skateboarding clothing items and those
`
`interested ir1 yoga clothing items. Registrants “548” and “343” design clothing meant for protection in
`
`“all weather” conditions, specifically while hiking and camping. This is different lrom NOMAD
`
`LONGBOARDS (design) whose shirts are designed to be worn while engaged in the skateboarding
`
`lifestyle. NOMAD LONGBOARDS (design) solely sells longboard skate boards and are not engaged
`
`in the selling of skis, snowboards and/or related equipment. Thus, there is no nexus to establish a
`
`likelihood of confusion based on the evidence herein. These facts alone are a sufficient basis to
`
`establish that the marks have different commercial impressions.
`
`CROWDED FIELD DOCTRINE APPLIES
`
`Third- party registrations may be relevant to show that the mark or a portion of the mark is descriptive,
`
`suggestive, or frequently used so that consumers will look to other elements to distinguish the source
`
`of the goods or services. See Plus Products v. Star-Kist Foods, Inc. 220 U.S.P.Q. 541, 544, 1983 WL
`
`51884 (TTAB 1983). This is sometimes referred to as the crowded field doctrine. See In re Unidos
`
`Financial Services, Inc. Serial No. 77126814 [not precedential]. An applicant may be able to
`
`demonstrate that common use of a term by third parties in the same industry could support a claim that
`
`the mark is conceptually weak. See Moose Creek, Inc. v. Abercrombie & Fitch Co, 331 F. Supp. 2d
`
`1214, 73 U.S.P.Q.2d 1287 (C.D. Cal. 2004), aff’d, 114 Fed. Appx. 921 (9th Cir. 2004).
`
`In the present case, the Examining Attorney has cited six ‘nomad-related’ third party registrations that
`
`

`

`are relevant in supporting that nomad is conceptually weak when applied to the class 025 and 028
`
`goods. Furthermore, under the crowded field doctrine, Applicant asserts that consumers will look to
`
`other elements to distinguish the Applicant’s goods from those m the cited registrations. Specifically,
`
`consumers will look to the design element and additional term as distinguishing features of the
`
`Applicant’s mark.
`
`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 Pant de Nemours & C0,, 476 F.2d at 1361, 177 USPQ at 567. This factor heavily weighs
`
`against a finding of a likelihood of conf11sion. The Applicant does not offer its goods through the same
`
`direct channels as the cited registrants. NOMAD LONGBOARDS (design) clothing items, namely t-
`
`shirts will not be sold in the same channels as those looking to buy knitted clothing items; yoga related
`
`items or clothing catered towards hiking, similar to cited registrants. Moreover, registrants “S87” and
`
`“102” operate solely in wholesale distribution, thus the goods are not sold through the same channels
`
`as NOMAD LONGBOARDS (design). With respect to class 028, NOMAD LONGBOARDS (design)
`
`sells their longboard skateboards exclusively through their website. Their longboards are not available
`
`through other avenues except the NOMAD LONGBOARDS (design) Website thus the goods are not in
`
`the same channels as registrant “907.”
`
`THE CONSUMERS INVOLVED WILL MAKE CAREFUL DECISIONS SUFFICENT TO
`AVOID CONFUSION
`
`The next factor is the conditions under which and buyers to whom sales are made (i.e. impulse v.
`
`careful). Id. The customers of NOMAD LONGBOARDS (design) will be able to distinguish among
`
`

`

`clothing designated toward skateboarding Versus those of cited registrants. Further, the cited
`
`registrant’s goods will also rely on personal desires of the consumer not catered towards
`
`skateboarding. These careful choices further support NOMAD LONGBOARDS (design) position that
`
`there is no likelihood of confusion.
`
`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 marks are famous, this factor weighs against a likelihood of confusion.
`
`SIMILAR MARKS FOR SINIILAR GOODS/SERVICES CAN BE REGISTERED
`
`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
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`likelihood of confusion between two marks. See Colgate Palmolive Co. V. Carter-Wallace, Inc., 432
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`F.2d 1400, 1402, 167 U.S. P. Q. 529, 530 (C.C.P.A. 1970) (PEAK PERIOD not confusing similar to
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`PEAK); Servo Corp. Am. V. SerVo—Tek Prod. Co., 289 F. 2d 955, 981 129 U.S.P.Q. 352, 353
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`(C.C.P.A. 1961) (SERVOSPEED not confusingly similar to SERVO); Sweats Fashions, Inc. V. Pannill
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`Knitting Co., 833 F. 2d 1560, 1564, 4 U.S.P.Q. 2d 1793, 1796 (Fed. Cir. 1987) (SWEATS not
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`confiising similar to ULTRA SWEATS), both for sportswear); Gen. Mills Inc. V. Kellog Co., 824 F.
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`2d 622, 627, 3 U.S.P.Q. 2d 1442, 1446 (8th Cir. 1987) (OATMEAL RAISIN CRISP not confusingly
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`similar to APPLE RASIN CRISP, both for breakfast cereal); Consol. Cigar V. RJR Tobacco Co., 491
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`F.2d 1265, 1267, 181 U.S.P.Q. 44, 45 (C.C.P.A. 1974) (DUTCH APPLE for pipe tobacco not
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`confusingly similar to DUTCH MASTERS for cigars.
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`

`

`LIKELIHOOD OF CONFUSION IS NOT SUBSTANTIAL
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`When determining Whether an Applicant’s mark creates a likelihood of confusion, with marks covered
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`by cited registrations " [a] showing of mere possibility of COI1fi.lSl0I1 is not enough; a substantial
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`likelihood that the public will be confiised must be shown." Omaha Natl. Bank, 633 F. Supp. at 234,
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`229 U.S.P.Q. at 52. For at least the reasons cited above, Applicant respectfully asserts that the
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`potential for confusion is not substantial. As such, the 2(d) refusal should be resolved in favor of the
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`Applicant.
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`CONCLUSION
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`Applicant has fillly responded to the Office Action. Majority of the ‘DuPont’ factors weigh in the
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`Applicant’s favor. Furthermore, for at least the above reasons, Applicant asserts that Applicant’s
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`mark, NOMAD LONGBOARDS (design), is sufficiently distinct from the cited registrations, so as not
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`to result in consumer confusion. Applicant respectfully submits in good faith that all potential 2(d)
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`refusals, rejections, and/or objections have been overcome and that the applied for mark is in condition
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`for publication.
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`Respectfully submitted,
`/Keisha M. Hardley /
`Keisha M. Hardley (MD Bar)
`Attorney of Record for the Applicant
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`