080619 power donuts oar

Response to Office Action http://teasroa.uspto.gov/roa/xslt.service?xsl=text

1 of 1 6/19/2008 9:52 AM

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77313487 (POWERDONUTS , see mark) has been amended as follows:

ARGUMENT(S) In response to the substantive refusal(s), please note the following: Please see the actual argument text attached within the Evidence section.

EVIDENCE Evidence in the nature of substantive argument and attached exhibits has been attached. Evidence-1 [evi_69173798-094953783_._OAR_with_Exhibits.pdf ]

CLASSIFICATION AND LISTING OF GOODS/SERVICES Applicant proposes to amend the following class of goods/services in the application: Current: Class 030 for Donuts; Retail store services featuring pastries, donuts, muffins, and beveragesOriginal Filing Basis: Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section1051(b)).

Proposed: Class 030 for DonutsFiling Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section1051(b)).

SIGNATURE(S) Declaration Signature I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.Response Signature Signature: /CRS/ Date: 06/19/2008Signatory's Name: Christopher R. ShiplettSignatory's Position: Attorney of Record

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.

Back

Attorneys at Law PO Box 100637 * NJ DC Bar Erik M. Pelton* Arlington, VA 22210 ** VA Bar Christopher R. Shiplett** T: 703.525.8009 *** VA DC & NY Bar Benjamin D. Pelton*** F: 703.997.5349 erikpelton.com of counsel

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

June 19, 2008 Alicia P. Collins Trademark Examining Attorney Law Office 115 United States Patent and Trademark Office RE: Serial No: 77313487 Mark: POWERDONUTS Applicant: Kenneth Nolan Office Action Of: February 6, 2008

APPLICANT'S SUBSTANTIVE RESPONSE TO OFFICE ACTION

The following is the substantive response of the Applicant, Kenneth Nolan, by Counsel,

to the Office Action sent via email on February 6, 2008, by Examining Attorney Alicia P.

Collins. A response to informal issues has been entered herewith via the TEAS online

submission system.

LIKELIHOOD OF CONFUSION REFUSAL

The Examining Attorney has refused registration of the proposed mark pursuant to

Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the grounds that the mark is likely to be

confused with the mark in Registration No. 2460701. For the following reasons, the Applicant

respectfully disagrees with the findings and requests that the Examining Attorney reconsider the

statutory refusal and allow registration of the Applicant’s mark.

Likelihood of confusion between two marks at the PTO is determined by a review of all

of the relevant factors under the DuPont test. In re E.I. du Pont de Nemours & Co., 476 F.2d

1357, 177 USPQ 563 (CCPA1973). The two key considerations in ex parte likelihood of

confusion analysis are the similarity of the marks and the similarity of the goods. See Federated

Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).

Substantive Response to February 6, 2008 Office Action SN 77313487 Ex. Atty.: Alicia P. Collins Law Office 115

Marks may contain elements in common and still not create consumer confusion if either

1) the matter common to the marks is merely descriptive or diluted, or 2) the marks as a whole

create different commercial impressions. See, e.g. In re Farm Fresh Catfish Co., 231 USPQ 495

(TTAB 1986) (CATFISH BOBBERS (with "CATFISH" disclaimed) for fish held not likely to

be confused with BOBBER for restaurant services); In re Shawnee Milling Co., 225 USPQ 747

(TTAB 1985) (GOLDEN CRUST for flour held not likely to be confused with ADOLPH'S

GOLD'N CRUST and design (with "GOLD'N CRUST" disclaimed) for coating and seasoning

for food items). Here, Applicant’s mark POWERDONUTS is not likely to cause confusion with

the Registered mark POWER MUFFIN, in spite of the common material, because that common

material is highly diluted as related to the goods, and additionally because the marks create

entirely different commercial impressions.

Dilution of the Common Material

The word POWER, common between the marks, is diluted as applied to donuts, pastries,

pastry mixes, and food items likely to be marketed along with these items. Dilution and

descriptiveness of a common element can be shown by the existence of several third-party

registrations, or by evidence of actual third party use. AMF Inc. v. American League Products,

Inc. 474 F.2d 1403, 1406, 177 USPQ 268, 269-7- (CCPA 1973); Palm Bay Imports, Inc. v.

Veuve Clicquot Ponsardin maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693

(Fed. Cir. 2005) (The existence of widespread third-party use under the du Pont factors may

serve to indicate the weakness of a term in the context of its source identifying significance).

Here, there are at least forty-five (45) concurrent registrations for bakery products or

related food products such as coffees or teas that include the word POWER. See Table of

“POWER” Formulation Marks for Bakery Goods, (attached as Exhibit A); and “POWER”

Formulation Registrations, (attached as Exhibit B). Some examples include POWERBAGEL for

“bagels and bakery goods,” POWER PRETZELS for “Pretzels,” COOKIE POWER, for various

bakery products including cookies, and PITA POWER for “Bread;” as well as RXPOWER for

various tea and juice beverages, THE POWER MEAL! for “Bakery products, including bread,

muffins, cakes and cookies, that contain added nutritional supplements, vitamins and minerals,”

Substantive Response to February 6, 2008 Office Action SN 77313487 Ex. Atty.: Alicia P. Collins Law Office 115 POWERCAFE for “coffee and flavored coffee beans,” and POWER PROTEIN for “high protein

pasta and breadsticks,” among others. Exhibits A and B.

Registrant’s mark POWER MUFFIN combines a highly diluted term with a generic term.

The mark is therefore subject to a narrow scope of protection. It is particularly unlikely that

consumers will confuse Applicant’s POWERDONUTS mark with Registrant’s POWER

MUFFIN mark given the concurrent existence without confusion of such marks as

POWERBAGEL for bagels, POWER PRETZELS for pretzels, and COOKIE POWER for

cookies.

Differences in Commercial Impression

Applicant’s mark POWERDONUTS contains both a double entendre and an incongruity

in the mark itself. The double entendre occurs between the word POWER in Applicant’s mark

and the word “Powder” commonly applied to donuts. Applicant’s mark plays on the fact that a

“Powder Donut,” or “Powdered Donut” is a common type of donut, but a POWERDONUT is

not a common type of donut, but rather is Applicant’s brand of donuts. The incongruity occurs

between the word POWER, which connotes energy, activity, and healthy living, as in the well

known POWER BAR, the very unhealthy connotation of the word DONUTS, the common name

of a well known unhealthy snack. Because of the incongruity and the double entendre, customers

encountering Applicant’s mark would see a coy, playful, self-referential brand of donuts, that

intentionally keeps hidden whether the products are health food, are an energy snack, or are

merely a variation of the classic powdered donut.

By contrast, Registrant’s mark POWER MUFFIN creates the commercial impression of a

health food. Muffins are healthy breakfast pastries, and POWER in that context suggests a

product that will give the purchaser energy. When combined, the mark creates the commercial

impression of a healthy donut for active purchasers.

Because of the double entendre on the word POWER, and the incongruity of the

placement of the word POWER with the word DONUTS, Applicant’s mark leaves a unique

Substantive Response to February 6, 2008 Office Action SN 77313487 Ex. Atty.: Alicia P. Collins Law Office 115 commercial impression in the consumers mind. That commercial impression is distinct and

different from the impression left by the mark POWER MUFFINS, which suggests a health food.

Conclusion

Because the material common between the marks is highly diluted, the differences in the

marks, when they are viewed as a whole, become dominant in indicating source. On the basis of

those differences, Applicant’s mark creates a different commercial impression from Registrant’s

mark. When viewing the marks as a whole, in light of the crowded marketplace of similar marks

and the differences in commercial impression, consumers are not likely to confuse the source of

Applicant’s and Registrant’s respective goods. For that reason, Applicant respectfully requests

that the Examining Attorney reconsider the statutory refusal and allow Applicant’s mark to

proceed to publication.

The Applicant has responded to all issues raised in the Office Action. If any further

information or response is required, please contact Applicant's attorney. The attorney may be

reached by telephone at 703-525-8009.

Exhibits

Exhibit A – Table of “POWER” Formulation Marks for Bakery Goods

Exhibit B – “POWER” Formulation Registrations - Federal Trademark Registrations No. 90977,

1317207, 1447798, 1551174, 1768177, 1726721, 1991466, 2010377, 2149952, 2002226,

2062021, 1987020, 2104689, 2290357, 2243169, 2175643, 2251934, 2222908, 2619232,

2556407, 2272315, 2553180, 2709667, 2825580, 2845368, 2552575, 2878255, 2767699,

2690519, 2690520, 2727048, 2873523, 3039340, 3010419, 2789701, 2912631, 3002538,

2968232, 2900773, 3095192, 3326302, 3303940, 3186280, 3148562, and 3198823

APPLICATION NO. 77313487RESPONSE TO OFFICE ACTION OF February 6, 2008

EXHIBIT A:Table of “POWER” Formulation Marks for Bakery Goods

Office Action Response SN 77313487, Exhibit A Page 1 of 1

TABLE OF “POWER” FORMULATION REGISTRATIONS FOR BAKERY GOODS

Registration No.

Mark Goods and Services

90977 WHEAT-FLOUR

3326302 whole bean, ground roasted and brewed coffee

3303940 Bakery goods, namely tortillas and bread

3198823 DUMPLINGS

3186280 Bagels and bakery goods


REGISTRATIONS FOR BAKERY GOODSTABLE OF “POWER” FORMULATION

Registration No.


3148562 Breakfast cereals

3095192 breakfast cereals, oatmeal

3039340

Bases for making milk shakes; cappuccino; chicory based coffee substitute; chocolate; chocolate food beverages not being dairy-based or vegetable based; chocolate powder; chocolate syrup; cocoa; cocoa mixes; coffee; coffee beans; coffee substitute; coffee-based beverage; coffee-based beverage containing milk; espresso; extracts used as flavoring which are not essential oils; food flavoring made of non-essential oils; flavored ices; fruit ice; flavoring additives for non-nutritional purposes; flavoring syrup; herbal tea for food purposes; herbal food beverages; herbal infusions; hot chocolate; ice cream; ice cream drinks; ice cream substitute; ice milk; iced tea; milk shakes; shakes; tea; tea for infusions; tea-based beverages; grain-based beverages; and, grain-based food beverages

3010419 non-alcoholic prepared beverages predominantly comprised of coffee for consumption on and off the premises

3002538 POWER PASTA pasta products, namely, macaroni and cheese, dry pasta, canned pasta and pasta sauce

2968232 POWER BALLS Candy and cookies 2912631 PITA POWER BREAD 2900773 POWER IT Tea-based beverages with fruit flavoring



Registration No.


2878255 cocoa drinks, coffees, teas and chocolate drinks lemonade, isotonic drinks, sport drinks, mineral water, carbonated water, beer and syrups for beverages

2873523 ICED TEA; HERBAL ICED TEA FRUIT JUICE DRINKS WITH HERBAL FLAVORING; FRUIT JUICES; FRUIT DRINKS; BLENDED NUTRITIONAL FRUIT JUICES AND FRUIT DRINKS; FRUIT DRINKS AND FRUIT JUICES WITH HERBS; FRUIT DRINKS AND FRUIT JUICES WITH HERBS AND MINERALS; ENERGY FRUIT DRINKS AND FRUIT JUICES

2845368 PREPACKAGED MIDDLE EASTERN AND MEDITERRANEAN FOODS, NAMELY, FALAFEL MIX, HUMMUS MIX, TAHINI DIP, BABAGANOUSH, SOUPS, AND VEGETABLE BURGERS RICE PILAFS, PASTA PILAFS, PITA BREAD, TABBOULEH, AND VEGETARIAN GYRO SANDWICHES, COUSCOUS, AND DESERTS CONSISTING OF WHOLE GRAINS, SEEDS, SPICES, AND HONEY

2825580 PANCAKES, WAFFLES AND FRENCH TOAST

2789701 POWERMIL cereal-derived food and dessert bars; candy bars; cereal-based snacks; processed cereal and processed grains; grain bars; herb based snack bars and blends of processed herbs

2767699 coffee



Registration No.


2727048 Tortilla chips, tortillas, bakery products, namely bread, buns, rolls, sweet goods, pastries and cookies

2709667 RXPOWER HERBAL FOOD BEVERAGES AND TEA BEVERAGES FRUIT JUICE BEVERAGES, VEGETABLE JUICE BEVERAGES, CARBONATED SOFT DRINKS, NON-CARBONATED SOFT DRINKS, AND DRINKING WATER

2690520

Soft drinks used as nutritional supplements and vitamin and mineral supplements Coffee-based and tea-based beverages; confectionery products used as dietetic products for non-medical purposes using sugar substitutes, namely, tablets, chewing sweets with liquid filling, peppermint pastilles, peppermint candy; chocolates, chocolate goods, namely, chocolate candies; pralines also with liquid filling made of wines, spirits or fruit preparations; chewing gum for non-medical purposes made from sugar substitutes Non-alcoholic and caffeine-containing beverages, namely, energy soft drinks

2690519

Soft drinks used as nutritional supplements and vitamin and mineral supplements Coffee-based and tea-based beverages; confectionery products used as dietetic products for non-medical purposes using sugar substitutes, namely, tablets, chewing sweets with liquid filling, peppermint pastilles, peppermint candy; chocolates, chocolate goods, namely, chocolate candies; pralines also with liquid filling made of wines, spirits or fruit preparations; chewing gum for non-medical purposes made from sugar substitutes Non-alcoholic and caffeine-containing beverages, namely, energy soft drinks

2619232 Bakery products, including bread, muffins, cakes and cookies, that contain added nutritional supplements, vitamins and minerals Fruit and vegetable juice-based smoothies

2556407 COOKIE POWER bakery products, namely cakes, cookies, pastries, breads, brownies, blondies and muffins; confectioneries, namely fudge

2553180 BIG O POWER processed cereal used as a breakfast or snack food



Registration No.


2552575 FLOUR

2290357 oatmeal, instant oatmeal, quick oatmeal, and processed oats

2272315 POWERCAFE coffee and flavored coffee beans 2251934 POWERBAR HARVEST cereal-based snack foods; ready to eat cereal derived food

bars; grain-based food bars; bakery goods 2243169 PASTA POWER modified wheat gluten for use by manufacturers of pasta

products 2222908 POWER FLOUR 2175643 POWER PROTEIN high protein pasta and breadsticks 2149952 POWER SPORT dietary food supplements for restoring energy to

sportsmen and sick persons coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitute, flour, cereal-based snack food, bread, pastry and confectionery, namely, candies, chewing gum, pralines and chocolates; flavored ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, condiments, namely, tomato sauce, ketchup (sauce) and mayonnaise; spices and ice beers; mineral and aerated waters, non-alcoholic drinks, namely, isotonic beverages, fruit drinks and fruit juices; syrups and other preparations for making beverages

2104689 ULTRA POWER bakery products, namely, muffins, cookies and donuts 2062021 POWER PRETZELS pretzels 2010377 ready-to-eat, cereal-derived food bar

2002226 MVP POWER nutritionally fortified donuts 1991466 FLOWER POWER herbal teas


TABLE OF “POWER” FORMULATION REGISTRATIONS FOR BAKERY GOODS

Registration No.


1987020 POWERBAGELS bagels and bakery goods 1768177 POWER BREAK ready to eat cereal based and fruit juice sweetened food

bars 1726721 POWER KIDS enriched white bread 1551174 PUDDING

1447798 POWERBAR GRAIN BASED FOOD BAR 1317207 FULL POWER Bakery Flour

APPLICATION NO. 77313487RESPONSE TO OFFICE ACTION OF February 6, 2008

EXHIBIT B:“POWER” Formulation Registrations

TEAS Submit Service ver 2.50 http://teasroa.uspto.gov/roa/teas.service?page=12&form.ackMail=info%...

1 of 1 6/19/2008 9:53 AM

Received Your Response To Office Action and Your Response To OfficeSubmitted Successfully

Success!We have received your form for serial number 77313487. We will send an Email summary of the form to"[email protected]", which will be your official confirmation of receipt. For electronically-submitted formswill not mail any additional paper confirmation.

NOTE: Do NOT send a duplicate paper copy of this filing to the USPTO, as it will interfere with the proper procelectronic submission.

Thank you.

TEAS Support Team

STAMP:USPTO/ROA-69.17.37.98-20080619095341186444-77313487-420e774464bedca76 0cb4fa0c7db731db7-N/A-N/A-200

Trademark Electronic Application System (TEAS) service U.S. Patent and Trademark Office Please refer questions or comments to: [email protected]

080619 power donuts oar

Documents