Request for Reconsideration afier Final Action
`
`Page 1 of 11
`
`PTO Foml 1930 (Rev 9/2007)
`
`OMB No. 0651-0050 (Exp. 4/30/2009)
`
`Request for Reconsideration after Final Action
`
`The table below presents the data as entered.
`
`
`‘"1"-* ‘W
`SERIAL NUMBER
`
`77149567
`
`
`
`LAW OFFICE ASSIGNED
`
`LAW OFFICE 108
`
`MARK SECTION (no change)
`ARGUMENT(S)
`
`
`
`A
`
`The Examiner has issued a Final Office Action, refiising to register the subject mark based on
`a likelihood of confusion with the word mark SANTANA, found at U.S. registration no. 2211379.
`
`
`In its response of January 23, 2008 to the Examiner’s previous Office Action, Applicant
`argued that (a) the Applicant’s mark and the mark at U.S. registration no. 2211379 (“Registrant’s
`Mark”), when properly viewed as a whole and not dissected, are not confusingly similar in
`appearance, sound, or meaning; and (b) the Applicant’s and Registrant’s goods are not related and are
`purchased after careful consideration.
`
`
`
`
`
`The Applicant would like to further address the Examiner’s position that the goods covered by
`the application and registration at issue are related.
`
`
`
`
`
`
`The Registrant’s Mark covers “yam,” in class 23. In connection with this Request for
`Reconsideration, the Applicant is amending its application to delete all of the goods in class 23, which
`are “yarn; textile materials, namely, threads and yarn for textile use.” Applicant submits that this
`deletion obviates any likelihood of confusion — yarn and textile fabrics are two entirely different
`goods that fall into different international classes. However, for the sake of completeness, Applicant
`will address the Exa.miner’s objection based on the goods remaining in the application, which are
`“textile fabrics for the manufacture of clothing, in the indigo denim color, and in other colors.”
`
`
`
`
`Goods are related when buyers are likely to believe that the goods come from a common
`source or are otherwise sponsored by or connected with a common company. AMF Inc. v. Sleekcraft
`
`Boats, 599 F.2d 341, 348 (9th Cir. 1979). However, there can be no rule that certain goods are per se
`related “such that there must be a likelihood of confusion.” TRADEMARK MANUAL OF
`
`EXAMINING PROCEDURE l207.0l(a)(iv). For example, in M2 Sofiware Inc. v. M2
`
`
`Communications Inc., the court found that the relatedness of soflware-related goods cannot be
`presumed just because the goods are delivered in the same media format. 450 F.3d 1378 (Fed. Cir.
`2006) See also Hi-Country Foods Corp. v. Hi Count_r_'y Beef Jerky, 4 U.S.Q.P.2d 1169 (T.T.A.B. 1987)
`(where the Board held that all food products are not related goods simply because they are sold in the
`modern supermarket “with its enormous variety of food, cleaning, paper, and other products”),
`Beneficial Corp. v. Beneficial Capital Corp., 529 F.Supp. 445 (S.D.N.Y. l982)(where BENEFICIAL
`
`
`
`
`
`
`file2//\\ticrs-ais-01\ticrsexport\HtmlTOTifiInput\RFR00012008_08_13_12_00_33_TTABO . ..
`
`8/ 1 3./2008
`
`
`
`

`
`Request for Reconsideration afier Final Action
`
`Page 2 of 11
`
`for consumer loans and BENEFICIAL CAPITAL for business loans where held not to be confusingly
`similar.), and Fossil Inc. V. Fossil Group, 49 U.S.P.Q.2d 1451 (T.T.A.B.)(fmding that FOSSIL for
`watches and THE FOSSIL GROUP for clocks are not confusingly similar).
`
`The goods are unrelated. As supported by the cases cited above, relatedness carmot be
`presumed simply because the Applicant’s goods and the Registrant’s goods may have a connection to
`wearing apparel. Indeed, courts dealing with the issue of relatedness within the apparel industry have
`held that marks may co—exist without likely confusion, where the goods are encountered by different
`classes of consumers, at different points along the manufacturing chain. In Exguisite Form Industries,
`Inc. v. Exquisite Fabrics of London, 378 F.Supp. 403 (D.C.N.Y. 1974), a New York court found that
`use of the identical mark on fabrics and ladies’ undergarments did not support a finding of a
`likelihood of confusion and stated: “There is little, if any overlap between those who buy plaintiff’s
`products and those who buy defendant’s. Plaintiff’s sole argument. .
`. is that both it and the defendant
`sell “knitwear,” if the term is defined expansively. Although both do admittedly market knit goods,
`the resemblance ends there: plaintiff’s goods are finished products, defendant’s nothing but uncut
`
`fabric.” See also Oxford Industries Inc. v. IBJ Fabrics Inc,. 6 U.S.P.Q.2d l756(S.D.N.Y. 1988)
`(where, although plaintiff’s apparel and defendant’s fabrics “are sufficiently close to raise the
`possibility of confusion,” they are not close enough to establish enough of a likelihood of confusion to
`be of “controlling significance” because the parties’ products “have dissimilar physical attributes”)
`and Tom Manufacturing Corp. v. The Gleason Works, 474 F.2d 1401 (C.C.P.A. l973)(where court
`was not persuaded to find a likelihood of confusion between TOROID for gears, gear cutters, and
`blades and TORO for grass cutting machinery, automotive vehicles, and snow blows even though the
`goods sold under TORO contain gears).
`
`Like those in Exguisite and the other cases cited above, the goods at issue in this case have
`different purposes and uses and are encountered by different groups of consumers: yarn is sold at
`retail for knitting into finished goods, while fabrics are finished goods. What is more, Exquisite and
`Tom dealt with identical marks. In this case, there are pronounced differences between the
`appearance, sound, and commercial impression of the two marks, rendering confusion even less
`likely. Accordingly, under the reasoning applied in the cited decisions, the goods may not be deemed
`“related,” and there is no likelihood of confusion.
`
`The Applicant’s goods consist primarily of denim fabrics, and it is a leading producer of denim
`worldwide. (See attached print-outs from Applicant’s Web site and articles from Edinburg Times and
`Texas Insider.) The Applicant’s customers consist of manufacturers and distributors — not the general
`public. Upon information and belief, the Registrant’s goods are not sold through the same channels or
`to the same consumers. Furthermore, as the art of knitting has become more and more mainstream and
`popular in the United States, entire stores devoted to the sale of yarn and knitting equipment have
`cropped up around the country. (See attached articles discussing knitting’s popularity and listing
`numerous yarn stores in major metropolitan areas.) The goods of the Applicant and Registrant will not
`be encountered by the same purchasers under circumstances that would give rise to the mistaken
`belief that the goods come from a common source because the purchasers are vastly different, i.e. the
`average American knitter shopping at his or her local yam shop versus large manufacturing and
`distributing concerns purchasing fabric from the Applicant. See Oxford Industries, Inc. v. JBJ Fabrics
`Inc,. 6 U.S.P.Q.2d l756(S.D.N.Y. l988)(where “no competitive proximity between plaintifl"s apparel
`and defendant’s fabric” was found “because of the disparity in the parties’ products which are
`marketed through distinctly different channels of commerce”). The goods at issue are approached by
`entirely different consumers at different points along the manufacturing chain. Accordingly, there is
`no likelihood of confusion.
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTifiInput\RFR00012008_08_l3_12_00_33_TTABO...
`
`8/13/2008
`
`

`
`Request for Reconsideration after Final Action
`
`Page 3 of 11
`
`
`
`
`It is respectfially submitted that confiision is unlikely because the marks are not confusingly
`
`similar in appearance, sound, or meaning; the goods are not related and will not be encountered by the
`same purchasers or under circumstances that would give rise to the mistaken belief that the goods
`
`come from a common source; and the goods are purchased afier carefill consideration. Applicant
`requests that that the Examiner accept its Request for Reconsideration, withdraw the refusal to register
`
`its mark based on a likelihood of confusion with the Registrant’s Mark, and allow its mark to proceed
`to publication.
`
`
`
`
`
`EVIDENCE SECTION
`
`EVIDENCE FILE NAME(S)
`
`
`
`http://tgate/PDF/RFR/2008/08/ 12/20080812160909620054-
`77149567-01 1_001/evi_2091496098-
`155636615_.__BlackMtnNews_article_-knitting.pdf
`
`ORIGINAL
`PDF FILE
`
`
`
`CONVERTED
`
`PDF FILMS)
`
`(4 Pages)
`
`
`
`
`
`8ETF
`
`'
`
`
`
`\\TICRS\EXPORT3\IMAGEOUT3\771\495\77149567\xm11
`\RFR0003.JPG
`
`\\TICRS\EXPORT3\IMAGEOUT3\771\495\77149567\xm11
`\RF R0004. JPG
`
`\\TICRS\EXPORT3\IMAGEOUT3\771\49 5\77149567\xml1
`\RFR0005.JPG
`
`http://tgate/PDF/RFR/2008/08/12/20080812160909620054-
`77149567-01 1_002/evi_209 1496098-
`
`
`
`ORIGINAL
`PDF FILE
`
`
`
`
`
`
`
`155636615_._CBSnews__article_on_knitting.pdf
`
`
`
`\\TICRS\EXPORT3\IMAGEOUT3\771\495\77149567\xml1
`\RFR0008.JPG
`\\ TICRS\EXPORT3\IMAGEOUT3\771\495\77149567\xml1
`\RFRO0O9.JPG
`
`
`
`\\TICRS\EXPORT3\IMAGEOUT3\771\49 5\77149567\xm11
`\RFR00 1 0. JPG
`
`§§§‘;IEL1;T§D
`(6 pages)
`‘ ’
`
`
`
`
`
`
`
`
`
`\\TICRS\EXPORT3\IMAGEOUT3\771\49 5\77149 5 67\xml1
`\RFR00 1 1 . JPG
`
`
`file ://\\ticrs- ais-01\ticrsexport\HtmlToTifiInput\RFR0001200 8_08__1 3_12_00_3 3_TTABO . ..
`
`8/ 13/2008
`
`
`
`
`]‘j1‘)’§’VEHL1§T§-D
`(2 pages)
`‘ ’
`
`ORIGINAL
`PDF FILE
`
`\\TICRS\EXPORT3\IMAGEOUT3\771\495\77149567\xm11
`\I<&0gaJI>_G
`
`\\TICRS\EXPORT3\IMAGEOUT3\771\495\77149567\xm11
`\RFR0007.JPG
`
`http://tgate/PDF/RFR/2008/08/12/20080812160909620054-
`77149567-011_003/evi_2091496098-
`15 5636615_._Edinburg_article-_Santana_p1ant.pdf
`
`
`
`
`
`
`
`

`
`Request for Reconsideration after Final Action
`
`Page 4 of 11
`
`
`
`
`\\TIC RS\EXPORT3\IM AGEOUT3\771\49 5\77149 5 67\xml1
`\RFRO0 1 2.JPG
`
`
`
`
`
`\\TICRS\EXPORT3\IMAGEOUT3\771\495\77149567\xm11
`\RFR00 1 3.JPG
`
`http://tgate/PDF/RFR/2008/08/12/20080812160909620054-
`77149567-01 1_004/eVi_209 1496098-
`15 5636615_._Knit_shops_- Chicago.pdf
`
`
`
`
`
`——-‘-—
`
`
`
`ORIGINAL
`PDF FILE
`
`CONVERTED
`
`(2 pages)
`
`\\TIC RS \EXPORT3\IM AGEOUT3\771 \49 5\77149 5 67\xml1
`\RF R00 1 5. JPG
`
`
`
`PDF FILE(S)
`:;1"1I(F3l§()Sl\14*3)J{11’C(})R'I‘3\I1\/IAGEOUT3\771\495\77149567\xm11
`
`
`
`§I‘)’§‘]‘F’EIL1;'f§)D
`\\TICRS\EXPOR'I‘3\IMAGEOUT3\771\495\77149567\xml1
`(2 pages)
`EF_
`
`http://tgate/PDF/RFR/2008/08/ 12/20080812 160909620054-
`77149567-011_005/evi_2091496098-
`155636615_._Knit_shops_- Los__Angeles.pdf
`
`ORIGINAL
`PDF FILE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ORIGINAL
`PDF FILE
`
`l§§§VFI1i1};SE)D
`(zpages)
`
`
`
`\\TICRS\EXPOR’I‘3\IMAGEOUT3\771\495\77l49567\xm11
`\RFR0017.JPG
`
`http://tgate/PDF/RFR/2008/08/12/20080812160909620054-
`77149567-011_006/evi_2091496098-
`155636615_._Knit_shops_-_New_York.pdf
`
`\\TICRS\EXPORT3\IMAGEOUT3\771\495\77149567\xml1
`L
`
`
`
`ORIGINAL
`PDF FILE
`
`l‘§1‘)’§’;’,IELII“3"(-‘$1’
`(2 Pages)
`
`ORIGINAL
`PDF FEE
`
`CONVERTED
`
`PDF mm)
`
`(2 pages)
`
`
`
`
`http://tgate/PDF/RFR/2008/08/12/20080812160909620054-
`77149567-011_008/evi_209l496098-
`155636615_._Love_to_Know_-_knitting_popula1ity.pdf
`
`:}{Tl1§§()s;g;)J<I1>(c})R13\1MAGE0U13\7711495\77149567\xm11
`
`——=--—
`
`
`
`
`
`
`
`
`\\TICRS\EXPORT3\IMAGEOUT3\771\495\77149567\xml1
`\RFR00l9.JPG
`
`http://tgate/PDF/RFR/2008/O8/ 12/20080812 160909620054-
`77149567-01 1_007/evi_2091496098-
`
`155636615_._Knit_shops_-_San__Francisco.pdf
`\\TICRS\EXPOR'I‘3\IMAGEOUT3\771\495\77149567\xml1
`\£F_
`
`
`
`\\TICRS\EXPOR'I‘3\IMAGEOU'I‘3\771\495\77149567\xm11
`\RFR0021.JPG
`
`
`
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTifiInput\RFRO0012008_08_13_12_00_33_TTABO
`
`8/13/2008
`
`

`
`Request for Reconsideration afier Final Action
`
`Page 5 of 11
`
`\\TICRS\EXPORT3\IMAGEOUT3\771\49 5\771495 67\xml1
`\RFR0023. JPG
`
`ORIGINAL
`
`PDF FILE
`
`http://tgate/PDF/RFR/2008/08/12/20080812160909620054-
`77149567-011_009/evi_2091496098-
`155636615_._Registration_no._1992324.pdf
`
`\\TICRS\EXPORT3\IMAGEOUT3\771\495\77149567\xml1
`1§1‘)’B£“F,’IEL1}§§)D
`(3 pages)
`
`
`
`
`
`
`
`
`
`
`\\TICRS\EXPOR’I‘3\IMAGEOU'I‘3\771\495\77149567\xml1
`\RFR0025.JPG
`
`\\TICRS\EXPORT3\IMAGEOUT3\771\495\77149567\xml1
`\RFR0026. JPG
`
`http://tgate/PDF/RFR/2008/08/12/20080812160909620054-
`77149567-01 1_0 10/evi_2091496098-
`15 5636615_._Santana_-_Texas_Insider_article.pdf
`
`\\TICRS\EXPORT3\IMAGEOUT3\771\495\77 1 49567\xm11
`\RFR0027.JPG
`
`http://tgate/PDF/RFR/2008/08/12/20080812160909620054-
`77149567-01 1_o1 1/evi_2091496098-
`15 5636615_._Santana_Texti1es_Web_site.pdf
`
`\\TICRS\EXPORT3\IMAGEOUT3\771\495\77l49567\xm11
`\RFR0028.JPG
`—————————
`
`\\TICRS\EXPORT3\IMAGEOUT3\771\495\77149 5 67\xml1
`\RFR0029.JPG
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`
`
`;,’§;‘:.II1:’;L
`
`1E§§fL1§fSE)D
`(1 page)
`
`ORIGINAL
`PDF FILE
`
`COWERTED
`PDF mm’
`(2 pages)
`
`articles, print-out of TARR information about registration
`no. 1992324, print-out of Applicant's Web site, lists of yam
`
`shops in the metropolitan areas of New York, Chicago, Los
`DESCRIPTION OF EVIDENCE FILE
`Angeles and San Francisco
`
`
`
`
`
`
`
`GOODS AND/OR SERVICES SECTION (023)(class deleted)
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`
`
`Yam; textile materials, namely, threads and yarns for textile use
`
`FILING BASIS
`
`Section 1(a)
`
`FIRST UsE ANYWHERE DATE
`
`At least as early as 08/03/2001
`
`
`
`
`
`FIRST USE IN COMMERCE DATE
`
`At least as early as 08/03/2001
`
`GOODS AND/OR SERVICES SECTION (024)(n0 change)
`
`SIGNATURE SECTION
`
`
`
`file ://\\ticrs-ais-0 1 \ticrsexport\HtmlToTiff[nput\RFR000 1 200 8_0 8_13_12_00_3 3_TTABO . ..
`
`8/ 13/200 8
`
`

`
`Request for Reconsideration afier Final Action
`
`Page 6 of 11
`
`
`
`/Haverly A. Rauenf
`
`
`
`DECLARATION SIGNATURE
`
`
`
`
`
`
`
`
`
`
`
`CONCURRENT APPEAL NOTICE FILED
`FILING INFORMATION SECTION
`
`
`
`
`
`
`
`
`
`TEAS STAMP
`
`PTO Fonn 1930 (Rev 9/2007)
`
`OMB No. 0651-0050 (Exp. 4l30Q009)
`
`USPTO/RFR-209.149.6098-2
`00808 1 2160909620054-771 49
`567-430637aaa25f0ca953bb2
`bc4d12ae61e1ac-N/A-N/A-20
`08081215 5636615223
`
`
`
`
`
`Request for Reconsideration after Final Action
`
`To the Commissioner for Trademarks:
`
`Application serial no. 77149567 has been amended as follows:
`
`ARGUMENT(S)In response to the substantive refusal(s), please note the following:
`
`The Examiner has issued a Final Office Action, refusing to register the subject mark based on a
`likelihood of confusion with the word mark SANTANA, found at U.S. registration no. 2211379.
`
`In its response of January 23, 2008 to the Examiner’s previous Office Action, Applicant argued
`that (a) the Applicant’s mark and the mark at U.S. registration no. 2211379 (“Registrant’s Mark”), when
`properly viewed as a whole and not dissected, are not confusingly similar in appearance, sound, or
`meaning; and (b) the Applicant’s and Registrant’s goods are not related and are purchased after careful
`consideration.
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTifiInput\RFR00012008_08_l3_12_00_33_TTABO...
`
`8/13/2008
`
`

`
`Request for Reconsideration afier Final Action
`
`Page 7 of 11
`
`The Applicant would like to further address the Examiner’s position that the goods covered by
`the application and registration at issue are related.
`
`In connection with this Request for
`The Registrant’s Mark covers “yarn,” in class 23.
`Reconsideration, the Applicant is amending its application to delete all of the goods in class 23, which
`are “yarn; textile materials, namely, threads and yarn for textile use.” Applicant submits that this
`deletion obviates any likelihood of confusion — yam and textile fabrics are two entirely different goods
`that fall into different international classes. However, for the sake of completeness, Applicant will
`address the Examiner’s objection based on the goods remaining in the application, which are “textile
`fabrics for the manufacture of clothing, in the indigo denim color, and in other colors.”
`
`Goods are related when buyers are likely to believe that the goods come from a common source
`
`or are otherwise sponsored by or connected with a common company. AMF Inc. v. Sleekcraft Boats
`599 F.2d 341, 348 (9th Cir. 1979). However, there can be no rule that certain goods are per se related
`“such that there must be a likelihood of confusion.” TRADEMARK MANUAL OF EXAMINING
`
`PROCEDURE 1207.01(a)(iv). For example, in M2 Sofiware Inc. v. M2 Communications Inc., the
`court found that the relatedness of software-related goods cannot be presumed just because the goods are
`delivered in the same media format. 450 F.3d 1378 (Fed. Cir. 2006) See also Hi-Counm Foods Corp. v.
`Hi Countgg Beef Jerky, 4 U.S.Q.P.2d 1169 (T.T.A.B. 1987)(where the Board held that all food products
`are not related goods simply because they are sold in the modern supermarket “with its enormous variety
`of food, cleaning, paper, and other products”), Beneficial Com. v. Beneficial Capital Corp, 529 F. Supp.
`445 (S.D.N.Y. l982)(where BENEFICIAL for consumer loans and BENEFICIAL CAPITAL for
`business loans where held not to be confiisingly similar.), and Fossil Inc. v. Fossil Group, 49 U.S.P.Q.2d
`1451 (T.T.A.B.)(f1nding that FOSSIL for watches and THE FOSSIL GROUP for clocks are not
`confusingly similar).
`
`The goods are unrelated. As supported by the cases cited above, relatedness cannot be presumed
`simply because the Applicant’s goods and the Registrant’s goods may have a connection to wearing
`apparel. Indeed, courts dealing with the issue of relatedness within the apparel industry have held that
`marks may co-exist without likely confusion, where the goods are encountered by different classes of
`consumers, at different points along the manufacturing chain. In Exquisite Form Industries, Inc. v.
`Exguisite Fabrics of London, 378 F.Supp. 403 (D.C.N.Y. 1974), a New York court found that use of the
`identical mark on fabrics and ladies ’ undergarments did not support a finding of a likelihood of
`confusion and stated: “There is little, if any overlap between those who buy plaintiffs products and
`those who buy defendant’s. Plaintiff’ s sole argument .
`.
`. is that both it and the defendant sell
`“knitwear,” if the term is defined expansively. Although both do admittedly market knit goods, the
`resemblance ends there: plaintiff’s goods are finished products, defendant’s nothing but uncut fabric.”
`
`See also Oxford Industries Inc. V. JBJ Fabrics Inc,. 6 U.S.P.Q.2d 1756(S.D.N.Y. l988)(where, although
`plaintiffs apparel and defendant’s fabrics “are sufficiently close to raise the possibility of confusion,”
`they are not close enough to establish enough of a likelihood of confusion to be of “controlling
`significance” because the parties’ products “have dissimilar physical attributes”) and fig
`Manufacturing Corp. v. The Gleason Works, 474 F.2d 1401 (C.C.P.A. 1973)(where court was not
`persuaded to find a likelihood of confiision between TOROID for gears, gear cutters, and blades and
`TORO for grass cutting machinery, automotive vehicles, and snow blows even though the goods sold
`under TORO contain gears).
`
`Like those in Exguisite and the other cases cited above, the goods at issue in this case have
`different purposes and uses and are encountered by different groups of consumers: yam is sold at retail
`for knitting into finished goods, while fabrics are finished goods. What is more, Exguisite and E
`dealt with identical marks. In this case, there are pronounced differences between the appearance,
`sound, and commercial impression of the two marks, rendering confusion even less likely. Accordingly,
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTifiInput\RFR00012008_O8_l3_12_0O_33__TTABO...
`
`8/13/2008
`
`
`
`

`
`Request for Reconsideration after Final Action
`
`Page 8 of 11
`
`under the reasoning applied in the cited decisions, the goods may not be deemed “related,” and
`there is no likelihood of confusion.
`
`The Applicant’s goods consist primarily of denim fabrics, and it is a leading producer of denim
`worldwide. (See attached print-outs from Applica.nt’s Web site and articles from Edinburg Times and
`Texas Insider.) The Applicant’s customers consist of manufacturers and distributors — not the general
`public. Upon information and belief, the Registrant’s goods are not sold through the same charmels or to
`the same consumers. Furthermore, as the art of knitting has become more and more mainstream and
`popular in the United States, entire stores devoted to the sale of yarn and knitting equipment have
`cropped up around the country. (See attached articles discussing knitting’s popularity and listing
`numerous yarn stores in major metropolitan areas.) The goods of the Applicant and Registrant will not
`be encountered by the same purchasers under circumstances that would give rise to the mistaken belief
`that the goods come from a common source because the purchasers are vastly different, i.e. the average
`American knitter shopping at his or her local yam shop versus large manufacturing and distributing
`concerns purchasing fabric from the Applicant. See Oxford Industries, Inc. v. IBJ Fabrics Inc,. 6
`U.S.P.Q.2d 1756(S.D.N.Y. 1988)(where “no competitive proximity between plaintiff’ s apparel and
`defendant’s fabric” was found “because of the disparity in the parties’ products which are marketed
`through distinctly different channels of commerce.”). The goods at issue are approached by entirely
`different consumers at different points along the manufacturing chain. Accordingly, there is no
`likelihood of confusion.
`
`It is respectfully submitted that confusion is unlikely because the marks are not confitsingly
`similar in appearance, sound, or meaning; the goods are not related and will not be encountered by the
`same purchasers or under circumstances that would give rise to the mistaken belief that the goods come
`from a common source; and the goods are purchased after careful consideration. Applicant requests that
`that the Examiner accept its Request for Reconsideration, withdraw the refusal to register its mark based
`on a likelihood of confusion with the Registrant’s Mark, and allow its mark to proceed to publication.
`
`EVIDENCE
`Evidence in the nature of articles, print-out of TARR information about registration no. 1992324, print-
`out of Applicant's Web site, lists of yarn shops in the metropolitan areas of New York, Chicago, Los
`Angeles and San Francisco has been attached.
`Original PDF file:
`http://tgate/PDF/RFR/2008/08/12/20080812160909620054-77149567-01 1_001/evi_209l496098-
`15563661 5_._BlackMtnNews_article_-knitting.pdf
`Converted PDF file(s) (4 pages)
`Evidence- 1
`Evidence-2
`Evidence-3
`Evidence-4
`
`Original PDF file:
`http://tgate/PDF/RFR/2008/08/12/20080812160909620054-77149567-01 1_OO2/evi_209 1496098-
`155636615_._CBSnews_article_on_knitting.pdf
`Converted PDF file(s) (2 pages)
`Evidenc e- 1
`Evidence-2
`
`Original PDF file:
`http://tgate/PDF/RFR/200 8/08/ 12/20080812 160909620054-77 1 495 67-01l_0O3/eVi_209l496098-
`155636615_._Edinburg_article-_Santana_p1a.nt.pdf
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`file ://\\ticrs- ai s-O1\ticrsexport\HtmlToTiffInput\R_FR00012008_08_13_12_0O_33__TTABO...
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`Request for Reconsideration afier Final Action
`
`Page 9 of 11
`
`Converted PDF fi1e(s) (6 pages)
`Evidence-1
`Evidence-2
`Evidence—3
`Evidence-4
`Evidence-5
`Evidence-6
`
`Original PDF file:
`http://tgate/PDF/RFR/2008/08/12/20080812160909620054-77149567-01 1_O04/evi_2091496098-
`15 5636615_._Knit_shops_-_Chicago.pdf
`Converted PDF file(s) (2 pages)
`Evidence-1
`Evidence—2
`
`Original PDF file:
`http://tgate/PDF/RFR/2008/O8/12/20080812160909620054-77149567-01 1_005/evi_2091496098-
`15563661 5_._Knit_shops_-__Los_Ange1es.pdf
`Converted PDF fle(s) (2 pages)
`Evidence-1
`Evidence-2
`
`Original PDF file:
`http://tgate/PDF/RFR/2008/08/12/20080812160909620054-77149567-011_0O6/eVi_2091496O98-
`155636615_._Knit_shops_-~New_York.pdf
`Converted PDF file(s) (2 pages)
`Evidence-1
`Evidence-2
`
`Original PDF file:
`http://tgate/PDF/RFR/2008/08/12/20080812160909620054-77149567-011_007/evi_2091496098-
`155636615_._Knit_shops_-_San_Francisco.pdf
`Converted PDF file(s) (2 pages)
`Evidence-1
`Evidence-2
`
`Original PDF file:
`http://tgate/PDF/RFR/2008/08/12/20080812160909620054-77149567-01 1_0O8/evi_2091496098-
`155636615_._Love_to_Know_-_knitting_popu1arity.pdf
`Converted PDF file(s) (2 pages)
`Evidence-1
`Evidence-2
`
`Original PDF file:
`http://tgate/PDF/RFR/2008/08/12/20080812160909620054-77149567-011_O09/eVi_2O91496098-
`155636615_._Registration_no.__1992324.pdf
`Converted PDF file(s) (3 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`
`Original PDF file:
`http://tgate/PDF/RFR/2008/08/12/20080812160909620054-77149567-011_O10/evi_2091496098-
`15 5 63 6615_._S antana_-_Texas_Insider_artic1e.pdf
`Converted PDF file(s) (1 page)
`Evidence-1
`
`Original PDF file:
`http://tgate/PDF/RFR/2008/08/12/20080812160909620054-77149567-011_011/evi_2091496098-
`
`file://\\ticrs—ais-01\ticrsexport\HtmlTOTiffInput\RFRO0O12008_08_13_12_00_33_TTABO...
`
`8/13/2008
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`Request for Reconsideration afier Final Action
`
`Page 10 of 11
`
`155636615_._Santana_Textiles_Web_site.pdf
`Converted PDF file(s) (2 pages)
`Evidence-l
`Evidence-2
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`
`Applicant hereby deletes the following class of goods/services from the application.
`Class 023 for Yam; textile materials, namely, threads and yams for textile use
`
`SIGNATURE(S)
`Declaration Signature
`Ifthe applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark ACL 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)(l)(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. §l001, and that such willful
`false statements may jeopardize the validity ofthe 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 ofthe trademark/service mark sought to be registered, or, if the application is
`being filed under 15 U.S.C. §1051(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: 08/12/2008
`Signature: /Haverly A. Rauenl
`Signatory's Name: Haverly A. Rauen
`Signatory's Position: Attorney of record
`
`Request for Reconsideration Signature
`Signature: /Haverly A. Rauenl Date: 08/ 12/2008
`Signatory's Name: Haverly A. Rauen
`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 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 attorney/agent has filed a power of attorney appointing
`him/her as an associate attorney in this matter.
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTifi'Input\RFR00O12008_08_13_12_00_33_TTABO...
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`8/13/2008
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`1
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`T
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`Request for Reconsideration afier Final Action
`
`Page 11 of 11
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`The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.
`
`Serial Number: 77149567
`
`Internet Transmission Date: Tue Aug 12 16:09:09 EDT 2008
`TEAS Stamp: USPTO/RFR—209.149.60.98-2008081216090962
`0054-77149567-430637aaa25fl)ca9S3bb2bc4d1
`2ae61e1ac-N/A-N/A-20080812155636615223
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`file ://\\ticrs-ais-0 1\ticrs export\HtmlToTifiInput\RFR0001200 8_0 8_13_12_00_33_TTABO...
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`B1ackMountainNews.com — Old fashioned knitting is enjoying a surge of popularity
`
`Page 1 of 4
`
`
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`3:?
`a
`i
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`Wednesday, May 17. 2006 - Updated every Wednesday
`
`Old fashioned knitting is enjoying
`a surge of popularity
`
`By Barbara Hootman
`
`Wednesday January 26, 2005
`
`By Barbara Hootman
`
`Staff Writer
`
`.
`it seems that just about everyone from
`kindergarten to senior citizen is knitting.
`The art—craft is enjoying a surge of
`popularity that it hasn't seen in the past 25
`years.
`
`‘(l-r) Charlotte Anenaen, Cathy Vandenberg,
`and Ne" geed<sha,e ideas and ooyepsafion
`as they Work on pmiects at the W~N~C-
`,
`§",'$'§;‘n’§’fa?,f2ete”f°' °‘h°'5 '"°°'"‘9
`2
`
`From high school and college students to
`teachers attending knitting classes,
`knitters are clicking their needles with
`enthusiasm. With the re-emergence of a
`hobby that was popular in grandmother's
`day, a new generations of knitters seem to -
`be having fun, are creative, and admit
`'
`they need an outlet to de-stress.
`(I-r) Althea Shaeter, Ann Carlson, and
`Marilyn Kaylor meet with a knitting circle to
`_
`share ideas and to get to know eeach other
`Former knit shop owner and veteran
`knitter, LuAnn Wilks feels knitting is a way
`of life. She knits with her kindergarten
`classes at Black Mountain Primary.
`
`"l’ve been knitting for some 17 years
`now," she said. "l have knitted with last
`year's class, and will do so with my
`current class. We made our own knitting
`needles last year. it is a wonderful craft
`that l have also shared with my daughter
`who is in high school. Now she wants to
`have her friends over who knit for an in-
`home group. I think it is a wonderful
`opportunity to share with these kids, and
`.-
`»
`am looking forward to it."
`(r—I) Allison Wilde, owner of Wilde and Wooly
`in Black Mountain, gives Debbie Roberts
`.
`.
`.
`.
`.
`.
`indmduai instruction in basic knitting at her
`The once utilitarian craft IS one of tactile
`Shop’
`art today that has literally become the
`latest craze. Most knitters hope the craze will linger, maybe slowing down a
`too fast and impersonal world.
`
`-
`
`.
`
`.
`
`Sally Heath, a Black Mountain resident, meets with a knitting group twice a
`month. Knitting is a family affair for her, since her husband Dave also knits.
`
`‘'I find it very meditative, when you knit alone," she said. "I like knitting in a
`group, because you get to talk to people you don't get to talk to very often.
`You may see them, but you don't get to have a conversation with them. i
`began knitting when l was pregnant with my daughter, who is now six years
`old."
`
`httpilfcifiizen-timesnetlblackmountainnewsl?modu1e=disp1aystory&story_id=21 15&format... 8/ 12/2008
`
`.
`
`l
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`L
`'
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`B1ackMountainNews.com — Old fashioned knitting is enjoying a surge of popularity
`
`Page 2 of 4
`
`Althea Shaefer agrees with her friend, Sally, with whom she knits in a
`group.
`
`"A knitting group is a great idea, because it gives you a good excuse to get
`together," she said. "I began knitting with a group in a knitting circle in
`Portland, Oregon a few years ago. l like it, because although you see the
`women in the circle often, you don't get to hangout with them. A circle
`gives you a reason to both knit and hangout."
`
`Sarah Leamy, a high/school student who helps beginning knitters at Wilde
`and Wooly in Black Mountain, has knitted for five years.
`
`"l help out here, and my mother taught me to knit," she said. ''It is
`something to do, and I enjoy it. I knit scarves, hats and gloves mainly. Also,
`I made a lot of my Christmas presents- i think knitting is so popular right
`now, because the world has gotten so fast that it gives people a chance to
`do something from the past that isn‘t‘so fast. "
`
`Jill Frozer from Asheville drives to Black Mountain to participate in a
`beginners knitting class at Wilde and Wooly.
`
`"l have been knitting since I was a child," she said. "1 used to. knit baby
`blankets for my dolls when l was little, and now I am working on a sweater. i
`am always on my feet and I am doing something for myself to relax. I make
`myself coffee and go knit. it is one of my favorite times of the day. It is my
`time. Also, I