Request for Reconsideration after Final Action
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`Page 1 of 7
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`PTO Form 1930 (Rev 9/2007)
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`OMB No. 0651-0050 (Exp. 4/30/2009)
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`Request for Reconsideration after Final Action
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`
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`The table below presents the data as entered.
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`Likelihood of Confusion
`
`
`The mark R ROGERS ATHLETIC COMPANY was rejected under Trademark Act §2
`(d), 15 U.S.C. §10S2(d), because the Examiner held the mark, when used on or in connection with the
`
`identified goods, so resembles the mark in United States Registration No. 1277533 be likely to cause
`confusion, to cause mistake, or to deceive. Applicant respectfully disagrees and maintains that its mark
`as used in association with apparel (namely, shirts, shorts, workout clothing), athletic equipment
`(namely, football equipment), athletic training equipment (namely, football training equipment) and
`storage units (namely, storage racks) is not likely to be confused with the mark in the ‘S33 registration.
`
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`
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`
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`
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`
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`There is no likelihood of confusion because the Applicant’s goods are clearly distinct from the
`goods in the ‘S33 registration. The ‘S33 registration relates to bases, anchor systems for bases and
`plugs, and base anchor systems.
`In particular, the goods in the ‘S33 registration are directed toward
`break away bases for baseball or sofiball, as shown in the company website: www.rogersusainc.com.
`Incorporating the break away feature into the base helps limit injury when a baseball or softball player
`slides into the base. The Applicant’s goods relate to football and associated athletic training, not
`baseball or softball. As known, bases are not used in football competitions.
`
`
`
`
`
`The rejection states in part that the “goods and/or services of the parties need not be identical or
`directly competitive to find a likelihood of confusion,” and fiirther that the goods “need only to be
`related in some manner” or have conditions surrounding their marketing such that they would be
`
`
`encountered by the “same purchasers” having the mistaken belief that the goods and/or services come
`from a “common source.” In support of this position, the rejection cites, inter alia, On-line Careline
`
`
`Inc. v. America Online Inc., 229 F-.3d 1080, (Fed. Cir. 2000); In re Melville Corp., 18 USPQ2d 1386,
`
`
`(TTAB 1991); and In re Martin ’s Famous Pastry Shoppe, Inc. 748 F. 2d 1565 (Fed. Cir. 1984). These
`cases, however, are clearly distinguishable from the instant case.
`
`
`
`As an example, the court in 0n—line noted that the parties, which were intemet users, were no
`
`more knowledgeable or sophisticated that the general public. Similarly,
`in Melville Corp.
`the
`consumers were noted as ordinary average consumers.
`In Martin '5', the court noted that, due to the
`
`staple, relatively inexpensive products involved (bread and cheese), purchasers of such products are
`
`
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`

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`Request for Reconsideration alter Final Action
`
`Page 2 of 7
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`held to a lesser standard of purchasing care. Thus, each of these cases involved purchasers that
`were general members of the public or purchasers held to an even lesser standard of care.
`
`By contrast, the parties in the instant case certainly more sophisticated that the general public
`and have the have the knowledge to distinguish between the provided goods. Football coaches and
`football trainers are likely purchasers of the goods associated with the Applicant’s mark. Conversely,
`the likely purchasers of the goods described in the ‘S33 registration are baseball coaches, softball
`coaches, or persons interested in preventing injuries to a sliding baseball players. The purchasers of the
`goods described in the ‘533 registration would not look to football training equipment to help bases
`break away when impacted by a sliding baseball player. Similarly, football coaches would not purchase
`break-away bases to train football players. Careful selection and examination of the goods is critical
`for both types of goods, especially given the element of safety involved.
`
`There is thus no likelihood of confusion because the goods are marketed to different types of
`sophisticated consumers. Confusion is in fact highly unlikely, at least because of the sophistication of
`the consumers who purchase Applicant’s goods.
`
`There is also no likelihood of confusion at least because the marks have been used concurrently
`without any evidence of actual confusion. The ‘533 registration asserts that the mark has been used
`since 1982. Furthermore, the Applicant’s mark has been continually used since 1989. Accordingly,
`there has been almost two decades of concurrent use of the ‘533 registration and App1icant’s mark, and
`the Applicant is not aware of any actual confusion among consumers. The previously submitted
`declaration from the Applicant’s General Manager states that there has been no actual confusion.
`Concurrent use with no confusion is just one factor establishing that there is no likelihood of confusion
`between the Applicant’s mark and the ‘533 registration.
`
`GOODS AND/OR SERVICES SECTION (025)(cuI‘I‘ent)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`FILING BASIS
`
`Apparel. namely, shirts, shorts, workout clothing
`
`Section 1(a)
`
`FIRST USE ANYWHERE DATE
`
`At least as early as 01/31/1983
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`FIRST USE IN COMMERCE DATE
`
`At least as early as 01/31/1983
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`GOODS AND/OR SERVICES SECTION (025)(pr0posed)
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`INTERNATIONAL CLASS
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`025
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`DESCRIPTION
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`Apparel, namely, shirts, shorts, workout clothing in the nature of T-shirts, athletic shorts, sweatshirts,
`sweatpants.
`
`Section 16>
`At was was 01/31/1983
`At was was 01/31/1983
`GOODS AND/OR SERVICES SECTION (028)(curI'ent)
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`

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`Request for Reconsideration afier Final Action
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`Page 3 of 7
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`
` INTERNATIONAL CLASS
`
`028
`
`
`
`DESCRIPTION
`
`
`
`
`
`
`Athletic equipment, namely, football equipment; athletic training equipment namely, football training
`equipment, weight training equipment; storage units, namely, storage racks for athletic equipment,
`storage racks for athletic training equipment
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`
`
`
`
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`
`
`
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`
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`
`
`msrmm
`mm usrzm common mm:
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`Athletic equipment, namely, football equipment in the nature of goal posts, field pads, down-markers,
`boundary markers, ofiicials' vests, stencils, tarps; athletic training equipment, namely, football training
`equipment in the nature of sleds, tackling simulators, chutes, blocking dummies, tackling dummies,
`tackling shields, agility apparatus, nets, mats, treadmills, footballs, hydration stations, weight training
`equipment in the nature of dumbbells, barbells, free weights, weight plates, benches, adjustable
`benches, bars, weight trees, dumbbell stands, barbell stands, resistance bands; storage units, namely,
`storage racks for athletic equipment, storage racks for athletic training equipment
`
`FILING BASIS
`
`Section 1(a)
`
`FIRST USE ANYVVHERE DATE
`
`At least as early as 01/31/1983
`
`FIRST USE IN COM.)/[ERCE DATE
`
`At least as early as 01/31/1983
`
`SIGNATURE SECTION
`
`DECLARATION SIGNATURE
`
`./Benjamin J. Coon’
`
`SIGNATORY'S NAME
`
`Benjamin J. Coon
`
`SIGNATORY'S POSITION
`
`Attorney of Record
`
`DATE SIGNED
`
`08/11/2008
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`RESPONSE SIGNATURE
`
`/Benjamin J. Coonf
`
`SIGNATORY'S NAME
`
`Benjamin J, Coon
`
`SIGNATORY'S POSITION
`
`Attorney of Record
`
`DATE SIGNED
`
`08/11/2008
`
`AUTHORIZED SIGNATORY
`
`CONCURRENT APPEAL NOTICE FILED YES
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`Mon Aug 11 13:43:38 EDT 2008
`
`
`
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`
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`
`
`
`
`
`file://\\ticrs-ais-O1\ticrsexport\HtmlToTiffInput\RFR00Ol2008_10_17_09_21_06_TTAB...
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`

`
`Request for Reconsideration afier Final Action
`
`Page 4 of 7
`
`TEAS STAMP
`
`0811 125703194067
`
`USPTO/RFR—75.46.35.249—20
`080811134338570162-771383
`40-4305c10855a6 574376b671
`87753ebee0e7-N/A-N/A-2008
`
`.cane»...-u...-.4.-.o-mm...wenu—uu..-.--u..-.-.-...u-.uuuwowaw-no-wuuu~-«nu--.--uuuuuwe--u.u..-uum.u-.uuu-u.uu-unnu--;u-.--.ou-wo.-oneuwe-..-wuwuuuuuuuuwuuo-mow»uuuwooowuouuoouauuouawuuut
`
`PTO Form 1930 (Rev 9/2007)
`
`OMB No. 0651-0050 (Exp. 4/30/2009)
`
`Request for Reconsideration after Final Action
`
`To the Commissioner for Trademarks:
`
`Application serial no. 77138340 has been amended as follows:
`
`ARGUMENT(S)In response to the substantive refusal(s), please note the following:
`
`Likelihood of Confusion
`
`The mark R ROGERS ATHLETIC COMPANY was rejected under Trademark Act §2(d),
`15 U.S.C. §lO52(d), because the Examiner held the mark, when used on or in connection with the
`identified goods, so resembles the mark in United States Registration No. 1277533 be likely to cause
`confusion, to cause mistake, or to deceive. Applicant respectfully disagrees and maintains that its mark
`as used inassociation with apparel (namely, shirts, shorts, workout clothing), athletic equipment (namely,
`football equipment), athletic training equipment (namely, football training equipment) and storage units
`(namely, storage racks) is not likely to be confused with the mark in the ‘S33 registration.
`
`There is no likelihood of confusion because the Applicant’s goods are clearly distinct from the
`goods in the ‘533 registration. The ‘533 registration relates to bases, anchor systems for bases and plugs,
`and base anchor systems.
`In particular, the goods in the ‘533 registration are directed toward break away
`bases for baseball or sofiball, as shown in the company website: www.rogersusainc.com.
`Incorporating
`the break away feature into the base helps limit injury when a baseball or softball player slides into the
`base. The Applicant’s goods relate to football and associated athletic training, not baseball or softball. As
`known, bases are not used in football competitions.
`
`The rejection states in part that the “goods and/or services of the parties need not be identical or
`directly competitive to find a likelihood of confusion,” and further that the goods “need only to be related
`in some manner” or have conditions surrounding their marketing such that they would be encountered by
`9a
`the “same purchasers” having the mistaken belief that the goods and/or services come from a “common
`source.
`In support of this position, the rejection cites, inter alia, On-line Careline Inc. v. America
`Online Inc., 229 F.3d 1080, (Fed. Cir. 2000); In re Melville Corp., 18 USPQ2d 1386, (TTAB 1991); and
`In re Martin's Famous Pastry Shoppe, Inc. 748 F. 2d 1565 (Fed. Cir. 1984). These cases, however, are
`clearly distinguishable from the instant case.
`
`As an example, the court in On-line noted that the parties, which were intemet users, were no
`more knowledgeable or sophisticated that the general public. Similarly, in Melville Corp. the consumers
`
`file:/A\ticrs-ais-01\ticrsexport\HtmlToTifiInput\RFR00Ol2008_10_17_09_2l_06_TTAB...
`
`10/17/2008
`
`

`
`Request for Reconsideration afier Final Action
`
`Page 5 of 7
`
`In Martin ’s, the court noted that, due to the staple,
`were noted as ordinary average consumers.
`relatively inexpensive products involved (bread and cheese), purchasers of such products are held to a
`lesser standard of purchasing care. Thus, each of these cases involved purchasers that were general
`members of the public or purchasers held to an even lesser standard of care.
`
`By contrast, the parties in the instant case certainly more sophisticated that the general public and
`have the have the knowledge to distinguish between the provided goods. Football coaches and football
`trainers are likely purchasers of the goods associated with the Applicant’s mark. Conversely, the likely
`purchasers of the goods described in the ‘S33 registration are baseball coaches, sofiball coaches, or
`persons interested in preventing injuries to a sliding baseball players. The purchasers of the goods
`described in the ‘S33 registration would not look to football training equipment to help bases break away
`when impacted by a sliding baseball player. Similarly, football coaches would not purchase break-away
`bases to train football players. Careful selection and examination of the goods is critical for both types of
`goods, especially given the element of safety involved.
`
`There is thus no likelihood of confusion because the goods are marketed to different types of
`sophisticated consumers. Confusion is in fact highly unlikely, at least because ofthe sophistication of the
`consumers who purchase Applicant’s goods.
`
`There is also no likelihood of confusion at least because the marks have been used concurrently
`without any evidence of actual confusion. The ‘S33 registration asserts that the mark has been used since
`1982. Furthermore, the Applicant’s mark has been continually used since 1989. Accordingly, there has
`been almost two decades of concurrent use of the ‘S33 registration and Applicant’s mark, and the
`Applicant is not aware of any actual confusion among consumers. The previously submitted declaration
`from the Applicant’s General Manager states that there has been no actual confusion. Concurrent use
`with no confusion is just one factor establishing that there is no likelihood of confusion between the
`Applicant’s mark and the ‘S33 registration.
`
`1 CLASSIFICATION AND LISTING OF GOODS/SERVICES
`
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 025 for Apparel, namely, shirts, shorts, workout clothing
`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 l0S1(a), as amended. The mark was first used at least
`as early as 01/3 1/ 1983 and first used in commerce at least as early as 01/31/1983, and is now in use in
`such commerce.
`
`Proposed: Class 025 for Apparel, namely, shirts, shorts, workout clothing in the nature of T-shirts,
`athletic shorts, sweatshirts, sweatpants.
`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 l0S1(a), as amended. The mark was first used at least
`as early as 01/31/1983 and first used in commerce at least as early as 01/31/1983, and is now in use in
`such commerce.
`
`Applicant proposes to amend the following class of goods/services in the application:
`Chrrent: Class 028 for Athletic equipment, namely, football equipment; athletic training equipment
`namely, football training equipment, weight training equipment; storage units, namely, storage racks for
`athletic equipment, storage racks for athletic training equipment
`
`file://\\ticrs-ais—01\ticrsexport\HtmlToTifi‘lnput\RFROOOl2008_10_l7_O9_2l_06_TTAB...
`
`10/17/2008
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`

`
`Request for Reconsideration after Final Action
`
`Page 6 of 7
`
`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 l051(a), as amended. The mark was first used at least
`as early as 01/31/1983 and first used in commerce at least as early as 01/31/1983, and is now in use in
`such commerce.
`
`Proposed: Class 028 for Athletic equipment, namely, football equipment in the nature of goal posts, field
`pads, down-markers, boundary markers, ofiicials’ vests, stencils, tarps,‘ athletic training equipment,
`namely, football training equipment in the nature of sleds, tackling simulators, chutes, blocking dummies,
`tackling dummies, tackling shields, agility apparatus, nets, mats, treadmills, footballs, hydration stations,
`weight training equipment in the nature of dumbbells, barbells, free weights, weight plates, benches,
`adjustable benches, bars, weight trees, dumbbell stands, barbell stands, resistance bands; storage units,
`namely, storage racks for athletic equipment, storage racks for athletic training equipment
`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 01/31/1983 and first used in commerce at least as early as 01/31/1983, and is now in use in
`such commerce.
`
`SIGNATURE(S)
`Declaration Signature
`Ifthe applicant is seeking registration under Section l(b) and/or Section 44 of the Trademark Act, the
`applicant had 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. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i)', and 2.34(a)(4)(ii). If the applicant is seeking
`registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in
`connection with the goods or services listed in the application as of the application filing date. 37 C.F.R.
`Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so
`made are punishable by fine or imprisonment, or both, under 18 U.S.C. §100l, and that such willful false
`statements may jeopardize the validity of the application or any resulting registration, declares that he/she
`is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant
`to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed
`under 15 U.S.C. §105l(b), he/she believes applicant to be entitled to use such mark in commerce; to the
`best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use
`the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be
`likely, when used on or in connection with the goods/services of such other person, to cause confusion, or
`to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements
`in the original application and this submission made of the declaration signer’s knowledge are true; and
`all statements in the original application and this submission made on information and belief are believed
`to be true.
`
`Date: 08/11/2008
`Signature: /Benjamin J. Coon!
`Signatory's Name: Benjamin J. Coon
`Signatory‘s Position: Attorney of Record
`
`Request for Reconsideration Signature
`Signature: /Benjamin J. Coonl Date: 08/ 1 1/2008
`Signatory’s Name: Benjamin J. Coon
`. Signatory’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
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTifflnput\RFRO0O12008;10_17_09_21_06_TTAB...
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`

`
`Request for Reconsideration afier Final Action
`
`Page 7 of 7
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`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
`attomey/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 attomey/agent has filed a power of attorney appointing
`him/her as an associate attorney in this matter.
`
`The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.
`
`Serial Number: 77138340
`
`Internet Transmission Date: Mon Aug 11 13:43:38 EDT 2008
`TEAS Stamp: USPTO/RFR-75.4635.249-20080811 134338570
`162-77138340-4305c10855a6574376b67l 87753
`ebee0e7-N/A-N/A—20080811125703194067
`
`file://\\ticrs-ais—O1\ticrsexport\HtmlToTifi'Input\RFR00012008_10_17_09__2l_06_TTAB...
`
`10/17/2008