Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA776451
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`ESTTA Tracking number:
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`Filing date:
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`10/13/2016
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`Applicant
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`86728679
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`Jarral, Inc.
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`Applied for Mark
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`WHIFF WIZARD
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`Correspondence
`Address
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`Submission
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`Attachments
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`Filer's Name
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`Filer's e-mail
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`SCOTT R BROWN
`HOVEY WILLIAMS LLP
`10801 MASTIN BLVD, STE 1000
`OVERLAND PARK, KS 66210-1697
`UNITED STATES
`tmdocket-
`ing.brown@hoveywilliams.com,tmdocketing.misemer@hoveywilliams.com,jmas
`hburn@hoveywilliams.com,litigation@hoveywilliams.com
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`Appeal Brief
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`Applicant_s Appeal Brief.pdf(372084 bytes )
`Exh A-M.pdf(1534301 bytes )
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`Dianne M. Smith-Misemer
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`tmdocketing.brown@hoveywilliams.com, tmdocket-
`ing.misemer@hoveywilliams.com, jmashburn@hoveywilliams.com, litiga-
`tion@hoveywilliams.com
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`Signature
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`Date
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`/Dianne M. Smith-Misemer/
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`10/13/2016
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`Jarral, Inc.
`Applicant:
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`Trademark: WHIFF WIZARD
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`Serial No.:
`86/728,679
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`Filed:
`August 18, 2015
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`Trademark Law Office
`No. 121
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`Trademark Attorney:
` Nicholas A. Coleman
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`APPLICANT’S APPEAL BRIEF
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`JARRAL, INC.
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`(Applicant)
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`By: Dianne M. Smith-Misemer
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`HOVEY WILLIAMS LLP
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`10801 Mastin Boulevard, Suite 1000
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`Overland Park, Kansas 66210
`dsmisemer@hoveywilliams.com
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`tmdocketing.misemer@hoveywilliams.com
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`Telephone: (913) 647-9050
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`Attorneys for Applicant
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`TABLE OF CONTENTS
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`INTRODUCTION ..................................................................................................................... 1
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`1.0
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`2.0 RELEVANT FACTS ................................................................................................................. 1
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`3.0 APPLICANT’S ARGUMENT ..................................................................................................... 2
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`3.1 DU PONT FACTORS ............................................................................................................ 3
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`3.1(A) ........................................................................................................................................... 4
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`FAME OF THE CITED MARK ............................................................................................................ 10
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`NUMBER AND NATURE OF SIMILAR MARKS IN USE ON SIMILAR GOODS ....................................... 10
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`4.0 CONCLUSION ....................................................................................................................... 17
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`CERTIFICATE OF SERVICE .............................................................................................................. 18
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`ii
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`TABLE OF AUTHORITIES
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`Cases
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`Champagne Louis Roederer, S.A. v. Delicato Vineyards
` 148 F.3d 1373 (Fed. Cir. 1998)................................................................................................... 9
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`Estate of P.D. Beckwith, Inc. v. Commissioner of Patents
` 252 U.S. 538 (1920) .................................................................................................................... 5
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`Federated Foods, Inc. v. Fort Howard Paper Co.
` 192 USPQ 24 (C.C.P.A. 1976) ................................................................................................... 4
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`In re Bed & Breakfast Registry
` 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) .......................................................................... 6
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`In re Dayco Products-Eaglemotive Inc.
` 9 U.S.P.Q.2d 1910 (T.T.A.B. 1988) ........................................................................................... 6
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`In re Dixie Rests., Inc.
` 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997) .................................................................... 5
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`In re E. I. DuPont de Nemours & Co.
` 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) ........................................................................ 3
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`In re Electrolyte Labs., Inc.
` 929 F.2d 645 (Fed. Cir. 1990)..................................................................................................... 8
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`In re Hearst Corp.
` 25 U.S.P.Q.2d 1238 (Fed. Cir. 1992)...................................................................................... 4, 7
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`In re Istituto Sieroterapico E Vaccinogeno, Toscano "SCLAVO" S.p.A.
` 226 USPQ 1035 (TTAB 1985) ................................................................................................... 6
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`In re National Data Corp.
` 224 U.S.P.Q. 749 (Fed. Cir. 1985).............................................................................................. 5
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`Interstate Brands Corp. v. Celestial Seasonings, Inc.
` 576 F.2d 926 (C.C.P.A. 1978) .................................................................................................... 8
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`Tektronix, Inc. v. Daktronics, Inc.
` 534 F.2d 915 (C.C.P.A. 1976) .................................................................................................... 7
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`iii
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`The U.S. Shoe Corp. v. Chapman
` 229 USPQ 74 (TTAB 1985) ....................................................................................................... 6
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`Other Authorities
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`Section 2(d), Trademark Act ....................................................................................................... 3, 8
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`TBMP § 1207.01(b)(viii) ................................................................................................................ 5
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`TMEP § 1207.01(b)(ii) ................................................................................................................. 10
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`TMEP § 1209.01(a) ...................................................................................................................... 10
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`iv
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`IN THE UNITED STATES TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`Jarral, Inc.
`Applicant:
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`Trademark: WHIFF WIZARD
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`Serial No.:
`86/728,679
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`Filed:
`August 18, 2015
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`Trademark Law Office
`No. 121
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`Trademark Attorney:
` Nicholas A. Coleman
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`APPLICANT’S APPEAL BRIEF
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`1.0
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`Introduction
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`Pursuant to a Notice of Appeal filed August 19, 2016, Applicant Jarral, Inc. (“Applicant”
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`or “Jaral”) appeals the Examining Attorney’s final refusal to register Applicant’s WHIFF
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`WIZARD trademark for preparations for neutralizing odors in the air.
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`2.0
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`Relevant Facts
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`The Examining Attorney has refused registration of Applicant’s WHIFF WIZARD
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`trademark (“Applicant’s Mark”) for “preparations for neutralizing odors in the air” in Class 003
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`(“Applicant’s Goods”). August 21, 2016 Application, TSDR. Specifically, on December 9,
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`2015, the Examining Attorney issued an Office Action refusing registration of Applicant’s
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`WHIFF WIZARD mark under Section 2(d) of the Trademark Act on the basis that Applicant’s
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`Mark was likely to be confused with U.S. Registration No. 1635245 for WHIFF (“Cited Mark”)
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`for “air freshener and room deodorizer” in Class 005 (“Registered Goods”). December 9, 2015,
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`TSDR. Applicant filed a Response to Office Action on March 10, 2016, arguing against the
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`refusal of registration. March 10, 2016 Response to Office Action, TSDR. In Applicant’s
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`March 10, 2016 Response to Office Action, Applicant primarily argued that (i) the WIZARD
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`1
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`element in Applicant’s Mark sufficiently distinguished it from the Cited Mark; (ii) that the term
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`WHIFF is highly suggestive of odor-eliminating products and that the Cited Mark is
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`consequently weak and entitled only to a limited scope of protection; and (iii) the number and
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`nature of similar WHIFF formative marks on the same and related products that further
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`demonstrates the suggestive and weak nature of the term WHIFF for odor-eliminating products.
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`March 10, 2016 Response to Office Action, TSDR.
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`The Examining Attorney issued a Final Refusal of Registration on March 31, 2016.
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`March 31, 2016 Final Refusal of Registration, TSDR. Applicant filed a Request for
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`Reconsideration on May 16, 2016. May 16, 2016 Request for Reconsideration, TSDR.
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`Applicant’s Request for Reconsideration focused primarily on the number and nature of
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`federally registered WHIFF formative marks for odor-eliminating products and particularly, a
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`recently issued registration for a closely analogous mark, WHIFF IT for Class 005 “deodorizers
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`for ashtrays and ash and cigarette receptacles,” U.S. Registration No. 4950969. May 16, 2016
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`Request for Reconsideration, TSDR. The Examining Attorney denied Applicant’s Request for
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`Reconsideration on June 8, 2016. June 8, 2016 denial of Request for Reconsideration, TSDR.
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`Thus, on August 19, 2016, Applicant filed its Notice of Appeal and submitted the appropriate
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`filing fee. August 19, 2016 Notice of Appeal, TSDR.
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`3.0
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`Applicant’s Argument
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`Applicant’s WHIFF WIZARD mark is not confusingly similar to the registered WHIFF
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`mark because the marks have distinct visual, aural and connotative impressions and WHIFF is
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`an unquestionably weak term when used and registered in connection with various deodorizing,
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`odor-elimination and fragrancing products. In fact, the United States Patent and Trademark
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`Office (“USPTO”) just recently issued a registration for WHIFF OUT® for Class 005
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`deodorizers, a mark and goods that are directly analogous to the marks and goods at issue here.
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`In this case, the relevant DuPont factors demonstrate clearly that there is no likelihood of
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`confusion exists between Applicant’s Mark and the Cited Mark. In short, the term WHIFF is
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`so highly suggestive, if not bordering on descriptive, of deodorizing, fragrancing and odor
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`eliminating products that the Cited Mark is only entitled to a very narrow scope of protection.
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`Given the number and nature of third-party WHIFF formative marks for the same and closely
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`related deodorizing, fragrancing and odor-eliminating products that are of record in this case, it
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`is clear that the term WHIFF is highly suggestive of such goods since the term “WHIFF”
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`inarguably connotes “smell.” Indeed, the USPTO has previously published and registered a
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`number of other third-party marks that are either identical to or just as similar to the Cited Mark
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`as Applicant’s Mark is, further demonstrating the weakness of the term WHIFF.
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`3.1
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`Du Pont Factors
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`Likelihood of confusion is a question of fact that turns on several factors. In the
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`preeminent likelihood of confusion case, In re E. I. DuPont de Nemours & Co., 476 F.2d 1357,
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`177 USPQ 563 (C.C.P.A. 1973), the court listed thirteen factors to consider when determining
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`whether a likelihood of confusion exists under Section 2(d) of the Trademark Act. The DuPont
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`factors that are relevant to this analysis all show that Applicant’s WHIFF WIZARD mark is
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`entitled to federal registration:
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`(1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound,
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`connotation and commercial impression;
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`(2) fame of the prior mark; and
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`(3) number and nature of similar marks in use on similar goods.
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`In any trademark case, determining likelihood of confusion ultimately depends on
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`cumulative effect of the differences in the marks and the relevant goods or services. Federated
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`Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24, 29 (C.C.P.A. 1976). Here, the analysis
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`focuses on the visual, aural and connotative differences between the WHIFF and WHIFF
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`WIZARD Marks and the suggestive nature and common use and registration of WHIFF for
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`various deodorizing and odor-elimination products that renders WHIFF inarguably weak.
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`3.1(a)
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`Similarity in the appearance, sound, and commercial impression arises from the overall
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`impression of the elements comprising the mark. In re Hearst Corp., 25 U.S.P.Q.2d 1238, 1239
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`(Fed. Cir. 1992) (emphasis added). “Marks tend to be perceived in their entireties, and all
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`components thereof must be given appropriate weight.” Id. Marks must be compared in their
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`entireties. A mark must not be dissected or split up into its component parts and each part then
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`compared with corresponding parts of the cited mark to justify a finding of a likelihood of
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`confusion. It is the impression that the mark as a whole creates on the average reasonably
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`prudent purchaser and not the parts thereof, that is important. Estate of P.D. Beckwith, Inc. v.
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`Commissioner of Patents, 252 U.S. 538 (1920); see also In re National Data Corp., 224
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`U.S.P.Q. 749 (Fed. Cir. 1985). In the words of the Supreme Court, “[t]he commercial
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`impression of a trademark is derived from it as a whole, not from its elements separated and
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`considered in detail. For this reason it should be considered in its entirety.” Estate of P.D
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`Beckwith, 252 U.S. at 545-46.
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`Applicant’s Mark is comprised of two literal elements WHIFF and WIZARD, whereas
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`the Cited Mark consists merely of the strongly suggestive WHIFF alone. The term WIZARD
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`has an instant, strong and distinct visual appearance, sound and commercial connotation. The
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`word “WIZARD” instantly connotes images of fantasy, fairytales, magic, sorcery and the
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`mystical. Though consumers may typically tend to focus on the first word of a mark, which is
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`not the case when the first term is highly suggestive, if not descriptive, of the goods at issue,
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`just as the term WHIFF is in the present case. WHIFF gives no special meaning or character
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`for the goods apart from its everyday, common meaning, which means a smell (noun) or to
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`smell (verb). “Although there is no mechanical test to select a ‘dominant’ element of a
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`compound word mark, consumers would be more likely to perceive a fanciful or arbitrary
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`term, rather than a descriptive or generic term, as the source-indicating feature of a mark.”
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`TBMP § 1207.01(b)(viii) citing In re Dixie Rests., Inc., 105 F.3d, 1405, 1407, 41 USPQ2d
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`1531, 1533-34 (Fed. Cir. 1997) (emphasis added).
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`The word “WHIFF” means a brief or faint smell and therefore has an obvious and direct
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`association with olfactory products such as deodorizers and odor eliminators. March 16, 2016
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`Response to Office Action, TSDR. The veracity of the foregoing statement is underscored by a
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`legion of USPTO prosecution history of WHIFF formative marks for various deodorizing,
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`fragrancing, odor-eliminating and odor-reducing products. Considering the plain meaning of
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`the word WHIFF, WHIFF cannot be considered fanciful or arbitrary for odor-eliminating
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`products that naturally involve both a smell (verb) and the consumer’s act of smelling (verb).
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`Where the common element of two marks is weak because it is generic, descriptive or
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`highly suggestive of the relevant goods and services, consumers can generally avoid confusion
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`unless the overall marks share other common elements. See, e.g., In re Bed & Breakfast
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`Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) (BED & BREAKFAST REGISTRY
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`for making lodging reservations for others in private homes held not likely to be confused with
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`BED & BREAKFAST INTERNATIONAL for room booking agency services); The U.S. Shoe
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`Corp. v. Chapman, 229 USPQ 74 (TTAB 1985) (COBBLER'S OUTLET for shoes held not
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`likely to be confused with CALIFORNIA COBBLERS (stylized) for shoes); In re Istituto
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`Sieroterapico E Vaccinogeno, Toscano "SCLAVO" S.p.A., 226 USPQ 1035 (TTAB 1985) (ASO
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`QUANTUM (with "ASO" disclaimed) for diagnostic laboratory reagents held not likely to be
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`confused with QUANTUM I for laboratory instrument for analyzing body fluids).
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`In a case that presented a much closer question than here, the Trademark Trial and
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`Appeal Board held IMPERIAL for automobile and structural parts and IMPERIAL for
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`automotive products were not confusingly similar in In re Dayco Products-Eaglemotive Inc., 9
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`U.S.P.Q.2d 1910 (T.T.A.B. 1988). The Dayco case demonstrates clearly that where a term has
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`been used extensively in connection with a particular category of goods and services, there is
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`no likelihood of confusion even where an identical mark is used on highly-related goods.
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`If the two IMPERIAL marks were found to be sufficiently distinguishable, then there remains
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`no doubt that the Applicant’s WHIFF WIZARD Mark is sufficiently distinguishable from the
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`Cited Mark WHIFF.
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`Furthermore, in Tektronix, Inc. v. Daktronics, Inc., the Court of Customs and Patent
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`Appeals considered two marks, DAKTRONIKS and TEKTRONIX. 534 F.2d 915, 917
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`(C.C.P.A. 1976). The suffix “-TRONICS” (or its equivalent “-TRONIX”) is used to convey
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`the ordinary suggestion that the products or services are electronic in nature. The Court noted
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`the “obvious visual prominence” of the stylized letter “D” in applicant Daktroniks’ mark,
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`concluding that element helped distinguish the applicant’s mark sufficiently from the Tektronix
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`mark. Id. Though Applicant’s Mark and the Cited Mark both begin with WHIFF, WHIFF is
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`such a weak term in the context of the relevant goods and WIZARD so distinctive, that there is
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`no serious question that it is WIZARD that constitutes the dominant element of Applicant’s
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`Mark. Consequently, viewed as a whole, Applicant’s WHIFF WIZARD trademark is
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`sufficiently distinguishable from the Cited Mark to negate any likelihood of confusion.
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`It is important to note that Federal Circuit jurisprudence is clear that the inclusion of one
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`or more similar terms between competing marks does not necessitate a likelihood of confusion
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`finding. See, e.g., In re Hearst Corp., 25 U.S.P.Q.2d at 1239. In Hearst, for example, the
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`Federal Circuit held that the marks VARGA GIRL and VARGAS, used in connection with
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`related goods, were sufficiently different to negate any likelihood of confusion. The Hearst case
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`presented a comparable question to the one posed here because the marks at issue in that case
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`were also two word marks without any stylization, color or design elements like WHIFF and
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`WHIFF WIZARD. Moreover, the term WIZARD is clearly just as distinguishing, and likely
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`much more so, than the term GIRL.
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`The Examining Attorney’s diminution of the term WIZARD is wrong and if WIZARD
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`is given its fair weight, it becomes obvious that there is no real likelihood of confusion between
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`these marks. And significantly and certainly, the term WIZARD is entirely arbitrary for
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`Applicant’s Goods. Furthermore, what is common to the Cited Mark and Applicant’s Mark is
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`only the highly suggestive term “WHIFF,” wide used and registered by third parties, which is
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`insufficient to support a refusal of registration under Section 2(d).
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`Well-established USPTO jurisprudence supports that there is no likelihood of confusion
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`between Applicant’s Mark and the Cited Mark. For example, the C.C.P.A held that the mark
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`RED ZINGER was not confusingly similar to the Cited Mark ZINGERS even when both were
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`used on products sold to consumers through similar channels. Interstate Brands Corp. v.
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`Celestial Seasonings, Inc., 576 F.2d 926, 928 (C.C.P.A. 1978). The Court noted that the
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`additional word element RED could not be ignored, in light of the maxim that marks be
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`considered in their entireties. Id. The Interstate Brands case involved two word marks with
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`one of the words being common to both marks, again presenting a perfectly analogous question
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`to the one here. The color adjective RED was enough to distinguish those two marks. Notably,
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`that common word was not highly suggestive as the common term “WHIFF” is in this case.
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`Just like the color RED, the additional literal element WIZARD of Applicant’s Mark is
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`sufficient to distinguish it from the Cited Mark.
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`The Federal Circuit’s decision for In re Electrolyte Labs., Inc., 929 F.2d 645 (Fed. Cir.
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`1990) is also exactly on point and further indicates that there is no likelihood of confusion
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`between Applicant’s Mark and the Cited Mark. In Electrolyte Labs, the applicant sought to
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`register the composite mark K+ (and design). The Board refused to register the mark, citing the
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`Cited Mark K+EFF (and design) as confusingly similar. Id. Like the WHIFF and WHIFF
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`WIZARD Marks at issue here, K+ and K+EFF shared the same identical initial elements and
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`it was on the suffix or second element of the mark that comprised the different element. The
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`Federal Circuit reversed the Board’s refusal of registration and allowed the K+ (and design)
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`mark to proceed to publication. Significantly, the court expressly noted that the respective
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`parties’ goods were similar and traveled similar trade channels--indeed, both parties
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`produced vitamin supplements sold in retail channels, just like odor eliminating products here.
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`Id. at 647 (emphasis added). Yet the Federal Circuit once again emphasized and based its
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`decision on the axiom that the marks must be considered in their entireties.
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`The Federal Circuit has also held that CRYSTAL CREEK for wine was not confusingly
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`similar to CRISTAL for champagne, even though the goods were related, in the same class and
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`traveled in the same commercial channels, because the additional element “CREEK” gave rise
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`to a different commercial connotation than that of the singular “CRISTAL.” Champagne Louis
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`Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 1375 (Fed. Cir. 1998). Once again, the
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`same distinction can be made here and even more since the element common to Applicant’s
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`Mark and the Cited Mark is so highly suggestive of the relevant goods. The differences
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`between the dominant element of Applicant’s Mark – the distinctive literal element WIZARD—
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`readily distinguishes it from the Cited Mark and easily negates any likelihood of confusion.
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`USPTO records, as discussed in further detail below, demonstrate this widespread
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`common use and registration of the term “WHIFF” in connection with various odor-eliminating,
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`odor-reducing, fragranced and deodorizing products in Classes 003 and 005. Consequently,
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`although the Cited Mark is entitled to some protection, the scope of that protection is
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`substantially narrowed. When no other visual or aural similarities exist, the marks’ common
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`inclusion of an inarguably weak term is wholly insufficient to support finding a 2(d) refusal.
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`Specifically, it is well established that when a common element of two marks is suggestive,
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`such elements should not be relied on for a likelihood of confusion refusal. See TMEP §
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`1207.01(b)(ii) (stating “if the common element of two marks is ... highly suggestive of the
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`named goods or services, consumers typically will be able to avoid confusion unless the overall
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`combination have other commonality”). This is true because suggestive terms convey aspects
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`or characteristics of associated goods or services to consumers. TMEP § 1209.01(a). The only
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`element common to Applicant’s Mark and the Cited Mark, WHIFF, is highly suggestive and
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`consequently and correspondingly weak. According, the common element “WHIFF” should
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`not be relied on to form a likelihood of confusion refusal of Applicant’s Mark. TMEP §
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`1207.01(b)(ii).
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`Comparing the marks in the entireties, Applicant’s Mark looks and sounds differently
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`and conveys a different commercial impression than the Cited Mark sufficient to negate any
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`likelihood of confusion. This is particularly true given the relative weakness of the term WHIFF
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`when used in connection with various odor-eliminating, odor-reducing, fragrancing and
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`deodorizing products in Classes 003 and 005. Consequently, this first and most significant
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`DuPont factor weighs strongly in favor of registration of Applicant’s Mark.
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`Fame of the Cited Mark
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`Given the widespread use of the term “WHIFF” as clearly evidenced in the USPTO’s
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`history, there is no evidence that suggests that the Cited Mark has achieved any degree of fame
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`whatsoever. Accordingly, this second relevant factor also weighs in Applicant’s favor.
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`Number and Nature of Similar Marks in Use on Similar Goods
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`Perhaps the strongest evidence that confusion is unlikely is the widespread third-party
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`use and federal registration of the term WHIFF in connection with odor-reducing, fragrancing
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`10
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`and deodorizing products in Classes 003 and 005. It is this widespread use and federal
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`registration that even further demonstrates that the Cited Mark is entitled to only a relatively
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`limited scope of protection. For instance, the USPTO issued U.S. Registration 3461335 for an
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`identical WHIFF® (standard characters) mark covering, in part, “fragrance sprays for pets” and
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`“pet fragrances” in Class 003. There is no doubt that such Class 003 goods are closely related
`
`to the Cited Goods (air fresheners and room deodorizers) and certainly are when the marks are
`
`identical as they are in the case of the Cited Mark and U.S. Registration 3461335. Yet the
`
`USPTO found no likelihood of confusion and issued U.S. Registration 3461335. See Exhibit
`
`A. Similarly, the USPTO has registered U.S. Registration No. 3586834 for TAKE A WHIFF!®
`
`for Class 003 “deodorant for personal use” and also U.S. Registration No. 3053144 (now
`
`cancelled) for Class 003 “liquid odor removers for eliminating pet odors and household odors.”
`
`See Exhibits B and C.
`
`Moreover, the USPTO previously approved and published U.S. Serial No. 77146037 for
`
`the mark WHIFF IT for Class 005 “air deodorizer, air freshener sprays; air fresheners;
`
`deodorizers for automobiles; shoe deodorizers; house deodorizers.” See Exhibit D. Though
`
`the application for WHIFF IT was subsequently abandoned for its owner’s failure to submit a
`
`statement of use, it nonetheless clearly demonstrates the USPTO’s position with respect to the
`
`level of protection accorded to the Cited Mark. Certainly, if WHIFF IT is not confusingly
`
`similar to WHIFF, then there is absolutely no justification to find a likelihood of confusion
`
`between WHIFF and Applicant’s WHIFF WIZARD. The term WIZARD is inarguably more
`
`distinctive and dominant than the word IT.
`
`
`
`11
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`

`

`However, most significant and compelling for Applicant’s case is the USPTO’s May 3,
`
`2016 issuance of U.S. Registration No. 4950969 for the mark WHIFF OUT® for Class 005
`
`“deodorizers for ash trays and ash and cigarette receptacles.” See Exhibit E. Applicant brought
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`U.S. Registration No. 4950969 to the Examining Attorney’s attention in Applicant’s May 16,
`
`2016 Request for Reconsideration, again emphasizing that the Examining Attorney had no
`
`reasonable basis to distinguish the treatment of WHIFF OUT® and Applicant’s WHIFF
`
`WIZARD mark for closely related, if not identical and competitive goods, arguing:
`
`Moreover, WHIFF OUT just recently registered which
`strongly indicates the USPTO’s most current position on the
`scope of protection afforded to the highly suggestive term
`“WHIFF” when
`used
`in
`connection with
`odor
`eliminating/deodorizing products.
`Indeed,
`there
`is no
`justification to register the WHIFF OUT mark and at the same
`time, refuse registration of Applicant’s WHIFF WIZARD
`mark. Accordingly, the USPTO must treat them the same.
`
`
`
`May 16, 2016 Request for Reconsideration. TSDR. It is particularly noteworthy that the
`
`USPTO did not issue any refusal of WHIFF OUT® based on the Cited Mark, WHIFF. Of
`
`course, it is entirely inconsequential that the WHIFF OUT® goods specific use for ash trays
`
`and cigarette receptacles because as deodorizing products, those are clearly subsumed within
`
`the Cited Goods. And once again, like WHIFF IT discussed above, there is no doubt that the
`
`word WIZARD is far more distinguishing a term than the term OUT. If the USPTO found that
`
`both WHIFF IT and WHIFF OUT®, both for closely related if not identical goods to the Cited
`
`Goods, were sufficiently distinct from the Cited Mark, then there is no legitimate reason to
`
`refuse registration of Applicant’s Mark.
`
`
`
`12
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`

`

`Though Applicant appreciates that prior decisions by the USPTO are not binding, they
`
`nonetheless serve as a guidepost for what the USPTO deems acceptable and for what an
`
`applicant can expect in terms of consistency in trademark prosecution. In this case, the
`
`USPTO’s history is quite fresh -- the recent May 2016 registration of WHIFF OUT® -- and
`
`strongly suggests that Applicant’s WHIFF WIZARD Mark is likewise entitled to registration.
`
`In the Final Office Action, the Examining Attorney contends that the third-party
`
`applications and registrations that Applicant previously submitted are not sufficient evidence to
`
`overcome the purported likelihood of confusion between Applicant’s Mark and the Cited Mark.
`
`Applicant respectfully disagrees for two specific reasons. As an initial matter, Applicant
`
`acknowledges that one of the prior applications, U.S. Serial No. 77146037, abandoned in 2008
`
`and that one of the registrations that Applicant cited, U.S. Registration No. 3053144, has been
`
`cancelled. Nevertheless, it is telling that the USPTO previously approved and allowed U.S.
`
`Serial No. 77146037 for WHIFF IF for goods that are identical to those at issue here, namely,
`
`“air deodorizer; Air freshener sprays; Air fresheners; Deodorizers for automobiles; Shoe
`
`deodorizers; Household deodorizer.” The same can be said for the USPTO’s prior registration
`
`of WHIFF WACKER for the same or overlapping goods consisting of “liquid odor removers
`
`for eliminating pet odors and household odors.”1 These prior actions by the USPTO underscore
`
`the weakness of the term WHIFF with an array of odor-reducing, odor-eliminating, fragrancing,
`
`deodorizing and odor eliminating products and the longstanding co-existence of WHIFF
`
`formative marks for such products.
`
`
`1 This cancelled registration also demonstrates the relatedness between household deodorizing products and pet
`odor products.
`
`
`
`13
`
`

`

`The Examining Attorney’s maintained refusal of registration based on the alleged
`
`insufficiency of Applicant’s third-party evidence is incorrect for two primary and significant
`
`reasons. First, after the Examining Attorney issued the Final Refusal, one of the applications
`
`that Applicant cited in its prior Response to Office Action has issued, namely, U.S. Registration
`
`No. 4950969 for the mark WHIFF OUT® for Class 005 “deodorizers for ash trays and ash and
`
`cigarette receptacles. Specifically, Applicant cited the closely analogous WHIFF OUT
`
`application, Serial No. 86761057, for Class 005 “deodorizers for ashtrays and ash and cigarette
`
`receptacles.” Although the WHIFF OUT® registration is but one registration, WHIFF OUT®
`
`is absolutely analogous to WHIFF WIZARD both in terms of sharing the initial “WHIFF”
`
`element with the Cited Mark and covering odor eliminating/deodorizing products. There is no
`
`question that the goods covered by WHIFF®, WHIFF OUT® and WHIFF WIZARD are all
`
`essentially the same or, at a minimum, all very closely related. In addition, there is likewise no
`
`question that the WIZARD element of Applicant’s Mark is far more distinguishing that the
`
`OUT element in the recently registered WHIFF OUT® mark in the context of being compared
`
`to the registered WHIFF® mark.
`
`Moreover, the recent registration of WHIFF OUT® strongly indicates the USPTO’s
`
`most current position on the scope of protection afforded to the highly suggestive term
`
`“WHIFF” when used in connection with odor eliminating/deodorizing products. Indeed, there
`
`is no justification to register the WHIFF OUT® mark and at the same time, refuse registration
`
`of Applicant’s WHIFF WIZARD mark.
`
`Secondly,
`
`the Examining Attorney
`
`incorrectly
`
`insists
`
`that
`
`the pet odor
`
`eliminating/deodorizing products covered by third-party registrations for other WHIFF
`
`
`
`14
`
`

`

`formative marks that Applicant cited are not similar to the goods covered by the Cited Mark
`
`and Applicant’s Mark and therefore those third-party registrations do not evidence the weakness
`
`or dilution of the term WHIFF. Applicant firmly disagrees. In fact, there are scores of active
`
`USPTO registrations that cover both odor eliminating and deodorizing for both pets and the air
`
`an