BULKY DOCUMENTS
`(exceeds 300 pages)
`
`Proceeding] Serial No: 78429632
`
`Filed: 8-29-O6
`
`Title: Response After Final
`
`Part 1 of 1
`
`

`
`
`
`File J224-009
`
`2006
`
`I hereby certify that this correspondence is being deposited
`with the U.S. Postal Service as First Class Mail in an
`envelope addressed to. Commissioner for Trademarks.
`P.O. ox 1451, Alexandria. VA 2313-1451.
`
`By: Ronda Finelli
`Dated: Augus
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`APPLICANT:
`
`SERIAL NO.:
`
`Jazzman Sportswear Corporation
`
`'
`
`78/429,632
`
`FILING DATE:
`
`June 3, 2004
`
`FOR:
`
`SACRED EARTH
`
`EXAMINING ATTORNEY:
`
`John M. Gartner, Esq.
`
`LAW OFFICE:
`
`102
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`RESPONSE AFTER FINAL
`
`Sir:
`
`I
`
`In response to the final office action mailed on February 27,2006, please take note
`
`of the following remarks.
`
`Applicant respectfully requests reconsideration of the final refusal to register
`
`applicant's mark SACRED EARTH for the following goods:
`
`Clothing, namely, men's and boy's, shirts, trousers, shorts,
`jackets and tops;
`ladies and girl's blouses, pants, shorts,
`jackets, jeans and tops in Class 25.
`
`IIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIII
`
`08-29-2006
`U.S. Patent & TMOWITM Mall Rcpt Dt. I34
`
`

`
`Refusal of registration undersection 2(d) of the Trademark Act, 15 U.S.C. §1052(d),
`
`has been made final on the grounds that SACRED EARTH so resembles the mark
`
`"SACRED PLANET" registered in Registration No. 2,986,723 (the "‘723 trademark
`
`registration") for clothing for men, women and children, namely, shirts, t-shirts, tops,
`
`blouses, sweaters,
`
`turtle neck sweaters, pants,
`
`trousers,
`
`jeans, shorts, overalls,
`
`sweatshirts, sweat pants, baseball caps, hats, hat visors, gloves, mitts, scarves,
`
`suspenders, jackets, vests, socks, shoes, boots, slippers, sneakers, sandals, pajamas,
`
`robes, sleep wear, underwear, boxer shorts, swimwear.
`
`The final official action, in part, states:
`
`But certainly in an age that celebrates “Earth Day" (with
`pictures of the planet Earth, not pictures of soil), SACRED
`EARTH at least as often evokes images of a sacred planet
`Earth. The entire environmental movement, global warming,
`deforestation, greenhouse gases, all of these issues are built
`around the idea that there is only one Earth and that it must
`be, at the very least, respected,
`if not revered. SACRED
`EARTH, therefore, as referring to the planet Earth, fits
`squarely into a mindset that is politically and culturally
`very current. SACRED EARTH as referring to sacred soil,
`however, appears to refer more to an ancient notion that some
`particular piece of ground, such as a burial spot, is sacred.
`This interpretation of SACRED EARTH does not appear to
`resonate with any current popular movement. In any case,
`the distinction that applicant is attempting to draw between
`sacred soil on the one hand and a sacred, unnamed, far away
`planet on the other hand would, in the opinion of the examining
`attorney, be loston the average clothing consumer. (Emphasis
`added).
`
`Applicant respectfully traverses the position of the Office for several reasons.
`
`First, there is no evidence of record that SACRED EARTH conveys any commercial
`
`impression about the “environmental movement”, “global warming”, “deforestation” or
`
`

`
`“greenhouse gases", as suggested by the Office.
`
`Second, assuming, arguendo, that applicant’s mark does suggest any of the
`
`aforementioned environmental issues, the record is devoid of any evidence that “SACRED
`
`_ PLANET” evokes the same impression(s).
`
`Third, as shown by applicant's evidence attached hereto, "SACRED EARTH",
`
`indeed, does convey the impression of holy ground or holy soil.
`
`Fourth, applicant respectfully disagrees that the commercial impression of a mark
`
`must “resonate with .
`
`.
`
`. [a] current popular movement". The Office does not cite to any
`
`legal authority for such proposition.
`
`Fifth, the final official action does not discuss the similarity or dissimilarity of the
`
`appearances andlor sounds of the respective marks.
`
`All relevant facts pertaining to appearance, §o_tfll_, and connotation must be
`
`considered before similarity as to one of those factors may be sufficient to support a finding
`
`that the marks are similar or dissimilar. Packard Press Inc. v. Hewlett-Packard Co., 56
`
`U.S.P.Q.2d 1351, 1353-4 (Fed. Cir. 2000); see also, In re Lamson Oil, Co., 6 U.S.P.Q.2d
`
`1041, 1042 n.4 (T.T.A.B. 1987) (holding that similarity of the marks in one respect— sight,
`
`sound, meaning or commercial impression — does not automatically result in a finding of
`
`a likelihood of confusion even if the goods are identical or closely related. Rather, all of
`
`the relevant facts of a particular case must be taken into account.)
`
`Sixth, the Office does not compare applicant's mark and the cited mark in their
`
`entireties. Colgate-Palmolive Co. v. Carter Wallace, Inc., 167 U.S.P.Q. 529 (C.C.P.A.
`
`1970). Massey Junior College, Inc. v. Fashion Institute of Technology, 181 U.S.P.Q. 272,
`
`273 (C.C.P.A. 1974).
`
`It is well settled that a mark must n_o_t be dissected or split up into its
`
`3
`
`

`
`component parts and each part then compared with corresponding parts of the cited mark
`
`to determine if a likelihood of confusion exists.
`
`Section 2(d) of the Trademark Law, 15 U.S.C. §1052(d), warrants refusal of
`
`registration only where confusion is probable, not possible. See, Witco Chemical Co. v.
`
`Whitfield Chemical Col, Inc., 164 U.S.P.Q 43, 44 (C.C.P.A. 1969) (“We are not concerned
`
`with mere theoretical possibilities of confusion, deception or mistake or with de minimus
`
`situations butwith the practicalities of the commercial world, with which the trademark laws
`
`dea|.”); see also, Triumph Machinery Co. v. Kentmaster Mfg. Co., Inc.. 1 U.S.P.Q.2d 1826,
`
`(T.T.A.B. 1987)("The Trademark Act, however, does not
`
`talk in terms of remote
`
`possibilities of confusion but, rather, the likelihood of such confusion occurring in the
`
`marketplace.")
`
`When applicant's mark is considered in its entirety, it is unlikely to be confused with
`
`the cited mark. As perthe arguments presented in applicant's response dated January 24,
`
`2006, applicant's mark has a significantly different appearance, sound, and commercial
`
`impression from the cited mark.‘
`
`SACRED EARTH CONVEYS A DIFFERENT COMMERCIAL IMPRESSION
`
`The term “earth” is defined as:
`
`“The land surface of the world”;
`
`"The softer, friable part of land’ soil, especially productive soil;
`
`
`‘ Applicant will not repeat its arguments presented in its January 24, 2006
`response. Those arguments remain in the record and applicant respectfully requests the
`Examining Attorney to reconsider them.
`
`

`
`and
`
`“The realm of mortal existence; the temporal world."
`
`The American Heritage Dictionam of the English Language, 1996 3"’ Ed. See
`Exhibit A.
`
`The term “sacred” has the following definitions:
`
`Made or declared holy: sacred bread and wine;
`
`Dedicated to or set apart for the worship of a deity;
`
`Worthy of religious veneration: the sacred teachings of the
`Buddha.
`
`Id.
`
`The SACRED EARTH mark conveys the impression of a holy place and/or a holy
`
`ground which has been blessed or has spiritual or healing powers.
`
`The official action states, in part:
`
`“Applicant's argument [that SACRED EARTH suggests a holy
`place, a holy or hollowed ground or soil that has been blessed
`in some way] is difficult to understand and at the very least
`must be supported by some evidence if it is to have any
`evidentiary value”.
`
`Applicant conducted a search on the Lexis/Nexis "News” database for use of
`
`“Sacred Earth”. The Lexis/Nexis search results reveal third-party use of “sacred earth" in
`
`a religious and/or spiritual context. A copy of the search results is attached hereto as
`
`Exhibit B.
`
`The May 8, 2005 edition of Silver City Sun-News,
`
`in the article, “Brain injury
`
`Motivation for Man’s Trek”, refers to a church, located in Chimayo, New Mexico, “that is
`
`believed to be built on sacred earth with miraculous healing powers." (Emphasis added).
`
`

`
`In the August 25, 2005 edition of J’_r_aiv_el_8LL§is_tJr_e_ magazine, in an article entitled
`
`“A Round Trip From Albuquerque to Taos”, also refers to the same Chimayo church as
`
`follows:
`
`“Built in 1814-1816 on what is believed_to be sacred earth with
`healing powers,,the tiny adobe church is now a National
`Historic Landmark that attracts a stream of pilgrims".
`(Emphasis added).
`
`The November 7, 2004 edition of the Enterprise Record,
`
`in an article entitled
`
`“Flashbacks From Here and There: The Leaning Tower”, states, in part:
`
`“There is the cathedral of colored marble, called the Duomo di
`Santa Maria, begun in 1064 and finished in 1170, with its
`wealth of wood and stone carvings, paintings, mosaics and
`other intricate art work Then the circular baptistery started in
`1152 and finished two hundred years later, harmonizing in
`style with. the cathedral. The style was continued withthe
`Camposanto, a wall-enclosed cemetery where Pisans were
`buried in sacred earth shipped by sea from Holy Land. Then
`of course, there's the fame cylindrical Leaning Tower of Pisa."
`(Emphasis Added).
`
`In addition, the article “Final Serenity at New York's Spas”, which was the subject
`
`of a March 29, 2005 PR Newswire, refers to a spa treatment named “Sacred Earth Healing
`
`Ritual". The article describes the treatment as follows:
`
`Get back to nature with the one of the latest treatments, the
`Sacred Earth Healing Ritual. Based on centuries of old native
`tradition, the treatment uses medicinal herbs, aromatic steam
`and massage. Enjoy deep tissue purification and a healing
`ritual with the stimulating combination of herbs and flower
`essences. (Emphasis added).
`
`The June 12, 2005 edition of The Miami Herald, in the article, "Tibetian Monks On
`
`World Tour", discusses a spiritual world tour by Tibetan monks named “Sacred Earth and
`
`Healing Arts of Tibet World Tour”.
`
`

`
`Similarly, the article “Local Pagans Gatherto Share Faith, Answer Questions”, in the
`
`August 29, 2004 edition of refers to a pagan church named “Our Lady of the
`
`Sacred Earth Temple".
`
`The SACRED PLANET mark conveys no such impression of land or soil which is
`
`holy or having spiritual and/or healing powers.
`
`The term “PLANET” is defined as the following:
`
`“a nonluminous celestial body larger than an asteroid or a
`comet, illuminated by light from a star, such as the sun, around
`which it revolves."
`
`The American Heritage Dictionary of the English Language, 1996 3"‘ Ed. See
`
`Exhibit A.
`
`%
`
`SACRED PLANET suggests something that is galactic or celestial.
`
`Further, as acknowledged by the Office, the tenn “planet” can include Mercury,
`
`Venus, Mars, Jupiter, Saturn, Uranus, Neptune and Pluto. Thus, SACRED PLANET
`
`suggests planets apart from Earth.
`
`In the case of In Re Sears, Roebuck and Company, the Trademark Trial and Appeal
`
`Board, in reversing the refusal to register, found that the applicant’s mark “CROSS-OVER"
`
`for bras was not confusingly similar for the identical mark for “ladies sportswear, namely,
`
`tops, shorts and pants." The Board held:
`
`“We agree with applicant that its mark “CROSS-OVER,” when
`applied to brassieres, is suggestive of the construction of the
`brassieres. Registrant's mark “CROSSOVER,” on the other
`hand, conveys no such meaning when applied to ladies’
`sportswear, namely,
`tops, shorts, and pants. Rather,
`it
`appears to us that registrant's mark is likely to be perceived by
`purchasers either as an entirely arbitrary designation, or as
`being suggestive of sportswear which “crosses over’ the line
`between informal and more formal wear (i.e., is appropriate for
`
`7
`
`

`
`either use), or the line between two seasons. As a result of
`their different meanings when applied to the goods of applicant
`and registrant, the two marks create different commercial
`impressions, notwithstanding the fact that they are legally
`identical in sound and appearance.
`
`Id. (citing In Re Sydel Lingerie Company, Inc., 197 U.S.P.Q.
`629 (T.T.A.B. 1977)
`(holding no likelihood of confusion
`between “BOTTOM’S UP" mark for ladies and children's
`underwear and identical mark for men’s suits, coats and
`trousers);
`In Re British Bulldog, Ltd., 224 U.S.P.Q. 854
`(T.T.A.B. 1984) (holding no likelihood of confusion between
`"PLAYERS" mark for men’s underwear and same mark for
`shoes) (“‘PLAYERS’ for shoes implies a fit, style, color and
`durability adapted to outdoor active wear.
`‘PLAYERS’ for
`men's undenrvear implies something else.")
`
`There is a stronger basis forfinding that there is no likelihood of confusion between
`
`applicant's SACRED EARTH mark and the SACRED PLANET mark since the respective
`
`marks are not identical.
`
`THERE HAS BEEN WIDE PUBLIC USE OF APPLlCANT’S MARK
`WITHOUT ANY KNOWN ACTUAL CONFUSION
`
`Applicant has been using the subject mark on and in connection with the
`
`advertising, marketing and sale of its clothing goods in the United States since as early as
`
`2003. See, accompanying Declaration of Maninder Sethi,1l 5 (hereinafter “Sethi Decl.").
`
`Applicant contends that the consuming public and clothing industry have come to
`
`recognize applicant as the source of clothing that is advertised, marketed and sold, under
`
`applicant's mark.
`
`Applicant has sold more than 40,000 units of clothing bearing the SACRED EARTH
`
`mark. Applicant's sales of SACRED EARTH branded clothing are over $500,000, which
`
`

`
`amounts to over $1.5 million in retail sales when sold by retailers. Sethi Decl. 11 11.
`
`Applicant has displayed and continues to display its SACRED EARTH branded
`
`clothing in its New York City showroom since 2003. Sethi Decl. 11 7. Retail buyers from
`
`throughout the United States visit applicant's showroom each year.
`
`Id. at 11 8.
`
`Applicant's SACRED EARTH clothing is exhibited at clothing trade shows, including
`
`the Magic Show in Las Vegas. Magic Show is one of the largest clothing trade shows in
`
`the world. See Sethi Decl. 11 10. Magic shows are attended by thousands of potential
`
`buyers. Id. Copies of web pages (from the Magic Show website at wvvw.magicon|ine.com)
`
`which provide background information on the Magic Show and lists the applicant as an
`
`exhibitor are attached hereto as Exhibit C.
`
`Despite the long public use of applicant's mark, applicant knows of no actual
`
`confusion between applicant's mark and the cited mark. Sethi Decl. 11 13.
`
`The absence of any actual confusion may be partly attributed to applicant and
`
`registrant's businesses being associated with different industries .
`
`The registrant of the cited mark appears to be a motion picture producer. The
`
`registrant
`
`is
`
`listed as a production company on the LF ‘Examiner website (at
`
`www.lfexaminer.corn) (attached hereto as Exhibit D.) LF Examiner is ajoumal forthe large
`
`format motion picture industry. See Exhibit E.
`
`In fact, the registrant is the producer of a wide screen movie named the “Sacred
`
`Planet" which features exotic places in the world. A search on the Lexis-Nexis “News"
`
`database revealed news articles about the “SACRED PLANET" movie. Copies of the
`
`Lexis-Nexis search results for “sacred planet" are attached hereto as Exhibit F.
`
`Further, the Amazon and |MD6 Internet websites, which sell DVD's of the Sacred
`
`9
`
`

`
`Planet movie, list the registrant as a producer of the movie. Copies of the Amazon and
`
`IMD6 web pages are attached hereto as Exhibit G.
`
`Applicant acknowledges that a showing of a lack of actual confusion is not
`
`dispositive of no likelihood of confusion.
`
`It is respectfully submitted, however, that
`
`evidence of no actual confusion should be considered in a likelihood of confusion analysis,
`
`among other factors.
`
`In In re E./. Du Pont De Nemours & Co., 177 U.S.P.Q. 563,567
`
`(C.C.P.A. 1973), the federal circuit stated:
`
`in the statute or elsewhere, for
`We find no warrant,
`dlscardlng any evidence bearing on the question of
`likelihood of confusion. Reasonable men may differ as to
`the weight to give specific evidentiary elements in a particular
`case.
`In one case it will indicate that confusion is unlikely; in
`the next it will not.
`In neither case is it helpful or necessary to
`inject broad maxims or references to “the public interest" which
`do not aid in deciding. Only the facts can do that.
`In every
`case turning on likelihood of confusion, it is the duty of the
`examiner, the board and this court to find, upon consideration
`of all the evidence, whether or not confusion appears likely.
`That determination ends the decisional process.
`
`Emphasis added. See also, Nabisco Inc. v. PF Brands lnc., 51
`U.S.P.Q.2d 1882, 1887 (2d Cir. 1999) (“if consumers have
`been exposed to two allegedly similar trademarks in the
`marketplace for an adequate period of time and no actual
`confusion is detected either by survey or in actual reported
`instances of confusion, that can be powerful indication that the
`junior trademark does not cause a meaningful likelihood of
`confusion.") (Emphasis added).
`
`“SACRED” IS WEAK FOR CLOTHING
`
`The cited registration is entitled to only a narrow scope of protection because the
`
`term “SACRED” is commonly used by third-parties in connection with clothing. As shown
`
`10
`
`

`
`by the evidence submitted by applicant with its response dated January 24, 2006,
`
`consumers in the market place are faced with a variety of clothing sold under a name
`
`which includes "SACRED". See Exhibit A, Applicant's Response (January 19, 2006).
`
`Applicant conducted a search using the Office's TESS system for marks which
`
`include “SACRED” for goods in International Class 25. The search revealed tvventy-eight
`
`(28) marks which include “SACRED” that are the subject of current or cancelled
`
`registrations and/or pending or abandoned applications. Copies of records for each of
`
`these marks retrieved from the Office TESS system are attached hereto as Exhibit H.
`
`Some of these third-party marks are listed in the chart below.
`
`Registration or
`Application
`
`3041661
`
`SACRED TEEZ
`
`
`
`
`
`
`
`
`
`
`
`
`Clothing; namely, shorts, pants, shirts,
`tank tops, jerseys, sweaters, jackets,
`
`coats, windsuits, warm—up suits,
`pajamas, sleep wear, bath robes,
`socks, unden/vear, boxer shorts,
`headwear, hats, caps, beanies, visors,
`headbands, gloves, unitards, leggings,
`bra tops, neckties, bandannas,
`swimwear
`
`
`
`
`
`
`Clothing; namely, hats, t-shirts,
`sweatshirts, boardshorts, shorts, tank
`
`tops, beanies, jackets and pants
`
`
`
`SACRED
`WARRIOR
`SOCIETY
`
`
`
`SACRED BLUE
`
`
`
`Clothing; namely, belts, blazers,
`blouses, coats, dresses, footwear,
`halter tops, hats, jackets, jeans,
`jerseys, jumpers, jumpsuits, overalls,
`
`
`pullovers, shirts, shorts, skirts, slacks,
`sport coats, sweatshirts, T-shirts and
`
`tank tops
`
`11
`
`78/697,906
`
`78/312,348
`
`
`
`

`
`Registration or
`,AppIication
`
`_
`
`.
`
`Goods
`
`'
`
`I
`
`I
`
`A
`
`‘
`
`.
`
`_
`
`2960508
`
`’
`
`SACRED LOVE
`
`2960508
`
`SACRED SILKS .
`
`
`
`SACRED HEART
`
`78/863,739
`
`Clothing for men and women; namely,
`pajamas, nightgowns, cloth bedroom
`’ slippers, bathrobes, lingerie, tee shirts,
`
`smoking jackets, pants, shirts and
`
`dresses
`'
`
`
`76/102,087
`'
`’ SACRED WATER
`Shirts, T-shirts, jackets and hats A
`_C|othing; namely, men's and'women's
`
`
`
`scarves and ties, and women's
`dresses, jackets and blouses, all made
`
`
`in whole or.in substantial part of silk
`
`
` Clothing and footwear, namely, t-shirts,
`sweatshirts, tank tops, polo.shlrts,
`.
`pants, short pants, sweat pants,
`
`jackets, shoes, sandals, and boots
`
`
`'78/841 ,17o
`Belts; Blouses; Caps; Dresses; Hats;
`S 7 S SACRED
`SEVEN
`Headbands; Headgear, namely, hats,
`
`
`caps, skullies and visors; Hosiery;
`‘
`"Jackets; Pajamas; Pants; Rainwear;
`Scarves; Shirts;'Shoes; Shorts;
`
`Skullies; Sleepwear; Socks; Sweat
`
`pants; Sweat shirts;_ Sweat shorts;
`
`Sweat suits; Sweaters; Swim wear; T-
`shirts; Vests .
`
`
`
`
`
`
`
`-
`
`
`
`Belts; Blouses; Caps; Dresses; Hats;
`Headbands; Headgear, namely, hats,
`caps, skullies and visors; Hosiery;
`‘
`Jackets; Pajamas; Pants; Rainwear;
`Scarves; Shirts; Shoes; Shorts;
`Skullies; Sleepwear; Socks; Sweat
`pants; Sweat shirts; Sweat shorts;
`Sweat suits; Sweaters; Swim wear; T-
`shirts; Vests
`Shirts, jeans, skirts, blouses, shoes,
`hats, boxers, panties
`~
`Shirts, T.-"shirts, jackets and hats
`'
`
`
`
`78/841,152
`
`SACRED SEVEN
`
`
`
`
`
`
`
`_
`
`4
`
`_
`
`
`
`78/811,961
`
`76/102,-808
`
`SA SACRED .
`APPAREL
`-
`'
`SACRED WATER
`INC
`
`
`
`
`
`12
`
`

`
`Registration or
`Application
`
`76/273,289
`
`
`
`SOMETHING
`SACRED
`
`Shirts, sweatshirts, t-shirts, tank-tops,
`jackets, hats and bandanas
`
`
`The presence of a weak term in a mark reduces any possibility of confusion. See,
`
`Tektronix Inc. v. Daktronics, Inc., 189 U.S.P.Q. 693, 694 (C.C.P.A. 1976)
`
`("The mere
`
`presence of a common, highly suggestive portion [in word marks] is usually insufficient to
`
`support a finding of likelihood of confusion.")’
`
`It seems both logical and obvious to us that where a party
`chooses a trademark which is inherently weak, he will not
`enjoy the wide latitude of protection afforded the owners of
`strong trademarks. Where a party has a weak mark, his
`competitors may come closer to his mark than would be the
`case with strong mark without violating his rights. The essence
`of all we have said is that in the former case there is not the
`possibility of confusion that exists in the latter case.
`
`117 U.S.P.Q at 297.
`
`As explained in McCarthy on Trademarks and Unfair Competition,
`
`. a mark that is hemmed in on all sides by similar marks on
`.
`.
`similar goods cannot be very ‘distinctive.’ It is merely one of a
`crowd of marks.
`In such a crowd, customers will not likely be
`confused between any two [marks] of the crowd, and may
`have learned to carefully pick out one from the other.
`
`McCarthy on Trademarks at § 11:85 (emphasis added).
`
`The facts and logic in the case In Re J.C. Penney Co., Inc. 179 U.S.P.Q. 184
`
`(T.T.A.B. 1973), are both analogous and instructive. Thus, the Board reversed the refusal
`
`
`
`See also, Sure-Fit Products Co. v. Saltzman Drapery Co., 117 U.S.P.Q.
`295,297 (C.C.P.A. 1958); In re General Motors Corp., 236 U.S.P.Q.2d 1465 (T.T.A.B.
`1992); In re J.C. Penney C0,, Inc., 179 U.S.P.Q. 184 (T.T.A.B. 1973).
`
`13'
`
`

`
`to register the mark "EL TlGRE" ("Spanish equivalent of ‘THE TIGER‘) for "mag-type
`
`wheels", "vehicles" and "tachometers", among other goods, on the grounds that the
`
`applicant's mark would likely be confused with the marks "TIGER TRAC" for "new and
`
`retreaded tires", "SUNBEAN TIGER" for automobiles" and" "TIGER" and Design for
`
`"bicycles". The applicant submitted publications showing third-party use of the "TIGER"
`
`mark for automobile tires. The Board found that the mark "TIGER" was "weak" in the
`
`automotive parts and accessories field and concluded that marks containing this term for
`
`goods in such field were entitled to a narrow scope of protection. Id. at 186.
`
`It is respectfully submitted that consumers will be able to readily distinguish between
`
`applicant's mark and cited mark and will not likelybe confused. See, Smithkline Beckman
`Corp. v. Proctor& Gamble Co., 223 U.S.P.Q. 1230 (N.D.N.Y. 1984), aff’d withoutop., 755
`
`F.2d 914 (2d Cir. 1985) (no confusion found where consumers are faced with other similar
`
`marks and will be able to distinguish defendant's mark, which was no more confusing than
`
`existing marks).
`
`SUPPLEMENTAL ARGUMENTS REGARDING VISUAL AND PHONETIC
`DIFFERENCES BETWEEN THE MARKS
`
`The marks, SACRED EARTH and SACRED PLANET, viewed in their entirety, are
`
`visually different.
`
`Applicant's mark includes the word “EARTH” afterthe word “SACRED”. In contrast,
`
`in the cited mark, the word “SACRED” is followed by the word “PLANET”. The terms
`
`"EARTH" and “PLANET" share no visual similarities.
`
`The fact that there are two dissimilar appearing words “EARTH” and "PLANET"
`
`which are prefaced by the word “SACRED" does not mean visual confusion will be likely
`
`14
`
`

`
`to result. There are many cases which have held that marks with a common part are not
`
`likely to be confused? The Federal Circuit has held that marks that share a common
`
`element may not be confusingly similar where one of the respective marks incorporates
`
`additional element that serve to distinguish the marks.
`
`In re Eletrolyte Laboratories Inc.,
`
`929 F.2d 645, 647 (Fed. Cir. 1990).
`
`In Calgon Corp. v. John H. Breck, Inc., 160 U.S.P.Q.’ 343 (T.T.A.B. 1968), the
`
`Trademark Trial and Appeal Board ("Board") held that the applicant's "SATIN QUICK" mark
`
`for hair treatment was not confusingly similar to the mark "SUDDENLY SATIN" for
`
`powdered bath oil. The Board held that although both marks suggest the common idea
`
`that using the product will quickly or suddenly give the hair or skin the feel of satin, a
`
`likelihood of confusion did not exist since the marks differed in appearance and sound. Id.
`
`Likewise, in Nutri/System, Inc. v. Con-Stan Industries, 228 U.S.P.Q. 859 (C.C.P.A.
`
`1985), no likelihood of_confusion was found to exist between two marks with the common
`
`first word "NUTRl" — "NUTRI/SYSTEM" and "NUTRI/TRIM" — for diet services.
`
`
`
`2 Compare, In Re Electrolyte Laboratories, Inc., 16 U.S.P.Q.2d 1239 (Fed. Cir.
`1990) (holding that applicant's mark “K +" for dietary potassium supplement was get likely
`to cause confusion with mark “K + EFF" also for dietary potassium supplement); Sleep
`Master Products Co, Inc. v. American Auto-Felt Corp. 113 U.S.P.Q. 63 (C.C.P.A. 1957)
`(affirming that “SLEEPMASTER” mark for mattress was not confusingly similar to
`“RESTMASTER" for same goods); Marshall Field & Co. v. Mrs. Field Cooks, 25
`U.S.P.Q.2d 1320 (T.T.A.B. 1992) (holding that difference in words prevented likelihood of
`confusion between applicant’s mark “MRS. FIELDS" for bakery goods and marks "FlELDS”
`and “MARSHALL FIELDS” for baked goods); Little Caesar Enterprises, Inc. v. Pizza
`Caesar, Inc., 4 U.S.P.Q.2d 1942 (6"‘ Cir. 1987) (holding that mark "PIZZA CAESAR USA”
`was not confusingly similarto “LITTLE CAESAR’S" even though marks were for restaurant
`services; (In Re Sweet Victory Inc., 228 U.S.P.Q. 959,961 (T.T.A.B. 1986) (no likelihood
`of confusion between applicant's mark ‘“GLACE LITE” for ice creams, sherbets, frozen
`yogurt and non-dairy frozen desserts and cited mark “GLACE CONTINENTAL” for frozen
`sherbert having confectionary coating and concentrates for making same) (“when taken
`in their entireties .
`.
`. the two marks are dissimilar in sound, appearance and meaning").
`
`15
`
`

`
`Considered in their entireties, applicant’s mark, SACRED EARTH, and the cited
`
`mark, SACRED PLANET, sound different.
`
`The words “EARTH” and “PLANET" share no phonetic similarities.
`
`The word “EARTH" has one syllable.
`
`In contrast, the word "PLANET" has two syllables.
`
`SACRED PLANET has a cadence or rhythm, and a total overall sound that is
`
`unquestionably different from applicant's SACRED EARTH mark. The overall sounds of
`
`' applicant's mark and the cited mark are distinguishable.
`
`Thus, there are obvious differences in the aural impact of the marks. C.f., In Re
`
`Value Home Centers, Inc., 6 U.S.P.Q.2d 1317 (T.T.A.B. 1988) (reversing refusal to register
`
`mark "VALUE HOME CENTERS" for hardware stores in light of mark "HOME VALUE" for
`
`hand tools) ("The mere fact that it [the applicant's mark] shares the phonetic equivalent of
`
`the word 'value' and the word ‘home’ with the registered mark is not enough to create a
`
`likelihood of confusion when the marks are considered in their entireties.")
`
`The record in this case provides no basis for concluding that phonetic confusion will
`
`occur in view of the differences in the overall marks.
`
`
`
`Accordingly, it is believed that the application is in condition for publication and such -
`
`action is respectfully solicited.
`
`The Examining Attorney is invited to communicate with applicant's counsel at the
`
`telephone number listed below if such will advance the prosecution of the application to
`
`finality.
`
`16
`
`

`
`Favorable action is respecffully requested.
`
`Dated: August :11, 2006
`
`Respectfully submitted,
`
`JogZaccarig
`
`Attorney for Applicant
`(845) 359-7700
`
`NOTARO & MICHALOS P.C.
`
`100 Dutch Hill Road, Suite 110
`Orangeburg, New York 10962
`
`F:\TEXT\TMAMD\J224-OO9.wpd
`
`1 7
`
`

`
`
`
`EXHIBITA
`
`
`
`

`
`

`
`
`
`577
`
`nearly an xulr
`A! an rznrlv \[4'§;:(' V)! g)
`Ifzxziq H.'l. gh--'; mi.-uv:'
`1
`
`..'.’mm-.' sh.‘ mun’ 1/‘ll-'l'I
`.'}:n.'
`tr‘:.'m imtn.-st tint! -'Imu_q ]1Hi.'!l’/ 1. .-.
`~
`
`-..‘sl.u
`fl: lush;
`
`.-.1 =.m.- l)uul::l.Ii".' til
`ttmm ltztsucl
`early warning radar u
`
`xii-lrtttlt-ti arm;
`to <lt'tvx.'l
`int-unizng:
`-*1}-.'l1)_\
`rllE.\'.$i as or ;o:t'cr:il'.
`tzznv tn mliuu‘ (!vp|o_‘y'nwnl ul :1 muntr-rzm-imim
`early warning system It
`‘I. A nolwru-it of .\'l‘!}.N‘lng d--\-in-m
`
`
`smith an s:"t-iltti-3 or l‘II(lttl’,
`l-"Il' dot:
`...i: an um.-m_~: zitlack tn tum-
`'..:
`l,':'p(v :1
`';i\.'(,- 421' t.'0lll]ll‘rl)ll1':"..‘il‘at: mvzxmrcs.
`2. A .\".'S!(‘l'l| nr
`l-.-m
`l>l'u‘I’du.'L‘< dc‘stgn4.-ti
`l-"s \\‘:u'n at Ll potential --r an :iiip«n<lt.-11,4 prnl»—
`ear-mark :2.-vnmrkna n
`I. An ad-:n::!;-any .‘cutur(- nr L"hIl.".’l(‘~
`luri ‘it
`It
`.'ll)t’(‘l it'll’! all
`Ilw uurnmrlxs I1! )‘:t('!‘r'S.€
`2. Ar;
`:«'i:.=
`.
`.i.k an 1111.‘ «ur ul n dnnmstic ansmni.
`-—ean-nark ll’-"
`Wlflfked. -mdilvlfla. -marks.
`1. To rest-rw or $0! ustzlc ll)!’ .1
`-
`qr ptirp-iso. Sec Syn-myrrix at allocate.
`2. To plan‘ an
`M; tar di.s'lm<'lt\'(‘ mark on. 3. Ta mark the our nl la du-
`'
`l) for itlv.-ntilimlion.
`_
`ear-muff t'zrfint1f'l n. Bnhvr of a pair of:-.1: C\'l\’t‘l'ln};.\‘ nit:-z:
`attzic
`-d in an .’ld]U.\'l(lhl1‘ lit.~.adh:.n<l and wm'n 1:; prutuct lhl‘ (.’£I1\
`" zitgninst the cultl.
`.
`‘m 17.1‘
`earned, uarn-ing, earns.
`I. Tu gain -.~.»‘;.u---
`
`the p(*rl->rn\:mt'i.- u! srzn-m l:il.n';:‘. or ivrkt I‘!l.’1l:‘{l mun-
`wy by Him. my lmrns
`2. Tu ;i(:qti:'u- or dl:.\<‘T’x’(' as .3 msull nl r.’lu'rt
`
`(er zictmn. Sin.» carnrcl n rrxputuuon (is (1 hard .*mr1.'a-r. 3. To _vu:lt.l
`as t'«'lurr or profit: rt
`.mt'uig.\-
`_ dun: that m:"x.s'
`l1l.'¢’I'n - mt
`r.’-'1
`
`
`
`,m.~‘I:vI1 I’ As. —Idlom. cam lane's) spurs. T.» gain a
`'
`ad wurk and zh-.- nccun:IIl:aimn n! q:.~<;w:':»:ticL-. when 1:‘.
`
`'.ha- .’:nrv (2! "‘"1ClIllIOS'.Illllplullftll who lit.-5! vurm-:1 h.
`._m:rt as :11.‘
`prime mm: Tr’: ]l(’f.S'lmI1.’ a.\'.n.s:an:.
`l.\lzddl(.* Enqlzsh (’-"ll:.'Yl, from
`‘
`.;l h vurm'an,)
`--auynlgr n,
`
`
`
`
`
`
`ll nwzminq
`5YNONYM5:t-urn, zl<'.n'rrv_ mvn-‘ n::.~, 1.‘.-n Th -<'-~t '
`
`
`lachxxvi-nr ur
`'~ wrl)s is "to ;’,It.'.".
`A 2: r-mil: «i! an .
`
`ll
`:;t.'y-
`iuryv .'itJt'UY_l]. I/t'Sl’I'!'!’S mu (")1l(JI’L’l
`r:.'mu.«-.-
`yr.\:.':.r1u .'h1:.’ zrzvrzlx t:mt.\'nIz>mltr:.vt: cm 1'1’
`(‘III rim.’ di.'ltt't r'l't"1l mm (1
`.'lll4I«'l
`in
`
`
`
`\'up])41J'!. "~<- m'u‘.\‘; I: mruI'zla:e trim ti’
`
`earned, oarming, earns.
`( ..nl.-..
`
`
`lll.‘ Exzglish 1‘/lI(‘!2, vi-run! 0.’ g/uni.-'n. Sm) \
`R.\-'.l
`earned run tiirnd) n.
`1'.iu.w-bat.’ A run scan.-d uzrltaul the aid
`
`
`' yd in t‘nmpul:n_L; u.lrm.=1l
`:'u:'.
`::-.'<, mg:
`earned run average 71
`,ie,».-» ERA 1.+..-mmzr.
`.-\ n~..~:..
`:
`rx ;;<v.'.'nrm.'Inc(- 'Jl)l‘.llYl(‘('l by (ll\‘l(‘linl.{ thr total 0!
`mm-.
`.<
`.x.
`an-..~c, by ll‘.l.’
`tn.-tul ol llifill‘-.}.{€
`§3l!(‘l‘.I:£l
`
`
`our-nest’
`zitrlnlstl ml}.
`1.
`cu ;\' or
`3"./)t:.<nl.~3‘.
`tin intrnl
`:
`.
`'.\'l.‘lj.{lll_\' imttirr;
`yr
`L-rv itilcxtt
`—-Idiom.
`in earnest.
`l. With :i
`
`(.7 (lf1l."t to :9!u(.’g ut (‘urn ‘
`2. St.’l‘tttl:.».
`:71 ryirrtgsr. H J!) ;1u.csiuvis rim!
`.
`' "Both $l(1t’3 rm‘ d|.'("}1_1'j
`
`050 of (‘It'll rm:-" |Cnn«)r CH1 0 tf)‘Br:vni.
`[.\lI(ldl<‘
`I
`{mm Old lciitglisli .'.'r2rti:‘:.m-,
`. me an‘ in Ap_L'n-nclix |
`l‘7n§1li.s'lI 4
`-—-ear'nest-ly adv. -eurmest-ness I1.
`ear-nest? li2u"nlst) n.
`1.
`!\'lum=;.' paid in adx';ttm.- as part pa):-
`mcnt tn bind :1 ctuntmct ur 1::-rgmn. 2. A tukcii wt‘ samuthing tn
`
`
`mmur: Ii pm.-n:.st: or an £|5iUl'(tl v.
`[.\li(ldiI.- l-Ir;gli;~.
`:.'V1l(‘SY, v.'u'tzml
`
`0.’ (’f!l(‘S. alzoratmn of Old Fm-nclt erras, pl. of rm‘. plt‘.-rlge. {mni
`Latzn arm. nltm-utinn ol (n‘rubl3. from Grt»
`arn.'bt'm. c.-.m~.es'.-
`nmttcy, (rt;
`Hc!)t‘L=\\' ‘értittuu,
`f';'0.".'l ‘drab, to p.i:‘dg,c.l
`earn-ings iiarmlngzl 121.11.
`I. Sal:¢r;.‘or wa;zo._<. 2.0. Busznc-.~'<
`pr:
`b. Gains .mm inn-ittrnents.
`
`mlicr law 0fll(‘(7!‘
`‘l‘.
`Earp mi-5;). wyan.
`tx.m—t92sl.‘ Ame
`
`,(tl‘I‘3l 1!‘. Tornhstona;-.
`zttwlvcd in the famous gunlzgltt at the O.K.
`A 2.4
`;a (12381).
`ear-phone u‘r'l()n') rt. A f.lL‘\'l(‘e tiea: c0tt\'et't:; electric signals.
`as from a :9‘ "phone, stereo, ur radio t-c-ceiver. to audible sound and
`his over or n the (ear. Also called earpiece.
`ear-piece l:'rIp€-s’)
`n.
`1. A part. as of a telephone receiver or
`hearing aid. that {its in or is held hex: to 032 car. 2. See ear-
`phone. 3. Either of the two parts of an eyeglasses frame that
`extend at/tr or around the cat‘.
`ear~plug lirIplng') n.
`I. An object made of a soft. pliable ma-
`terial, such as cotton or rubber. and fitted inzo the ear canal to
`that fits into the car.
`block the cntryot‘ twist or sound. 2. An earphtme. especially one
`
`.
`
`
`
`‘
`
`V
`
`
`
`
`..
`:2:
`
`Wyatt Earp
`'
`'-1: 2:: lilxfl
`
`
`
` —.———..—.:..—_—
`
`oi bu)-
`ou out
`il pay
`0?: took
`air can-.
`IT) boot
`ll futhux‘
`