`PTO Form 1957 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 07/31/2017)
`
`Response to Office Action
`
`The table below presents the data as entered.
`
`Input Field
`
`Entered
`
`SERIAL NUMBER
`
`79073546
`
`LAW OFFICE ASSIGNED
`
`LAW OFFICE 109
`
`MARK SECTION
`
`MARK FILE NAME
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`EVIDENCE SECTION
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)EVIDENCE FILE NAME(S)
`
`http://tmng-al.uspto.gov/resting2/api/img/79073546/large
`
`NO
`
`NO
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)ORIGINAL PDF FILE
`
`evi_65175322-20160421231649214963_._Response_to_Office_Action_Re_Design_of_Smiley_Face.pdf
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)CONVERTED PDF FILE(S)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(5 pages)
`
`\\TICRS\EXPORT16\IMAGEOUT16\790\735\79073546\xml4\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\790\735\79073546\xml4\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\790\735\79073546\xml4\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\790\735\79073546\xml4\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\790\735\79073546\xml4\ROA0006.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`Arguments
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`/Steven L. Baron/
`
`Steven L. Baron
`
`SIGNATORY'S POSITION
`
`Attorney of record, Illinois bar member
`
`SIGNATORY'S PHONE NUMBER
`
`312-251-1009
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`04/21/2016
`
`YES
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`Thu Apr 21 23:20:50 EDT 2016
`
`TEAS STAMP
`
`USPTO/ROA-XX.XXX.XX.X-201
`60421232050043399-7907354
`6-550792dc88c4e7274f08e69
`46d5a418f899997a7a8d77a29
`7865d708edf437832-N/A-N/A
`-20160421231649214963
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`
`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1957 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 07/31/2017)
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 79073546(cid:160) (Stylized and/or with Design, see http://tmng-al.uspto.gov/resting2/api/img/79073546/large) has been amended
`as follows:
`
`EVIDENCE
`Evidence in the nature of Arguments has been attached.
`Original PDF file:
`evi_65175322-20160421231649214963_._Response_to_Office_Action_Re_Design_of_Smiley_Face.pdf
`Converted PDF file(s) ( 5 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`
`SIGNATURE(S)
`Response Signature
`Signature: /Steven L. Baron/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 04/21/2016
`Signatory's Name: Steven L. Baron
`Signatory's Position: Attorney of record, Illinois bar member
`
`Signatory's Phone Number: 312-251-1009
`
`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 owner's/holder's attorney
`or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent
`not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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.
`
`Serial Number: 79073546
`Internet Transmission Date: Thu Apr 21 23:20:50 EDT 2016
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-201604212320500433
`99-79073546-550792dc88c4e7274f08e6946d5a
`418f899997a7a8d77a297865d708edf437832-N/
`A-N/A-20160421231649214963
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`
`APPLICATION SERIAL NO. 79073546 FOR DESIGN OF A SMILEY FACE
`
`RESPONSE TO OFFICE ACTION DATED OCTOBER 21, 2015
`
`ARGUMENT
`
`In the Office Action dated October 21, 2015, the Examining Attorney refused registration
`for Application Serial No. 79073546 for Design of a Smiley Face, owned by The Smiley
`Company (“Applicant”), as to Class 25 because of a likelihood of confusion with the marks in
`U.S. Registration Nos. 4727831, 4261640, 4376671, 3842325, 3700179 and 3700178 for designs
`of a smiley face, owned by Harvey Ball Smile Limited (“Registrant”). Applicant respectfully
`contends these marks are not confusingly similar. To evaluate likelihood of confusion, we
`examine each of the du Pont factors in turn. See In re E. 1. dz: Pant de Nemours & Ca, 476 F.2d
`1357, 177 USPQ 563 (C.C.P.A. 1973).
`
`1. Similarig or dissimilarity of the marks in their entireties as to appearance, sound,
`connotation and commercial impression.
`
`When the marks at issue are both design marks, the similarity of the marks must be decided
`primarily on the basis of visual similarity. E. g., In re Vienna Sausage Mfg. Co., 16 USPQ2d
`2044, 2047 (TTAB 1990); Ocean Spray Cranberries, Inc. v. Ocean Garden Prods, Inc, 223
`USPQ 1027 (TTAB 1984) (holding mark consisting of a circle containing three curved lines with
`rounded ends, for seafood, and mark consisting of a stylized breaking wave within an oval, for
`various food items including juices and fruits, not likely to cause confusion).
`
`Registered Mark
`3 7001 78
`
`Argument
`
`Applicant’s mark and Registrants’ marks are not confusingly similar
`in appearance. App1icant’s mark consists of two eyes and a mouth, with no
`outline for a head, as follows:
`
`3700179
`
`4261640
`
`Application Serial No. 79073546
`
`90
`
`By contrast, Registration Nos. 3700178, 3700179, and 4261640 all
`contain a circle outline for a head, which is a significant variation that
`creates a very different commercial impression. In fact, 3700179 and
`4376671 (as well as 4261640 and 4376671) appear to be identical except for
`this distinguishing feature, and the Trademark Office saw fit to issue
`
`
`
`separate registrations for each. The effect of the head outline is particularly
`apparent when the face is not centered, as in 4261640, where the face is
`positioned toward the upper part of the head; the face appears to have a
`small forehead, beady eyes, and a prominent chin and jaw.
`
`3842325
`
`0 0
`
`4376671
`
`.
`
`.
`
`U andmouth are closer together, and the eyes are much bigger in proportion to
`
`Even the marks without head outlines, Registration Nos. 3842325,
`4376671, and 4727831 are dissimilar in appearance. Registration No.
`3842325 in particular bears little resemblance to Applicant’s mark. The eyes
`
`the mouth, which is much smaller. The mouth also forms a narrower arc and
`is more u-shaped than the wide arc of a mouth in Applicant’s mark, which
`suggests a broad smile. In addition, the smile lines in at the corners of the
`mouth in 3842325 only extend down, as opposed to the smile lines in
`Applicant’s mark, which are even. Likewise, the smile lines on 4376671 are
`
`fv] curved and separated from the smile arc, which is more suggestive ofan
`
`T4727831
`
`.
`
`9
`
`actual smile line or wrinkle, than the straight, stylized smile lines in
`Applicant’s mark Indeed, the arc of the smile and the smile lines appear to
`be the only differences between Registration Nos. 3700178 and 3700179,
`which were both allowed to issue in Class 25. In comparison to Applicant’s
`mark, Registration No. 4727831 has beady eyes that are much smaller and
`closer together, and a mouth that is thicker and more prominent. These
`
`V design differences are instantly recognizable and create a very different
`
`commercial impression.
`
`All of these differences in appearance are significant. With faces in particular, even
`symbolic or stylized ones, the human brain is able to instantly distinguish even the most subtle of
`features in order to understand emotions and recognize people.1 Because of this unique
`sensitivity for facial features, the differences between Applicant’s smiley face design mark and
`Registrar1t’s smiley face design marks are sufficient to obviate any likelihood of confusion.
`
`the applications and registration.
`
`and nature of the oods or services as described in
`
`Although there is some overlap between Applicant’s Class 25 goods and the Class 25
`goods in Registrant’s marks, a comparison of the goods shows there are at least six types of
`
`1 Footnote after second sentence: See, e_g_, Elizabeth Norton, Identifying the Brain’s Own Facial Recognition
`System, SCIENCE (Oct. 23, 2012), http://WWW.sciencemagorg/news/2012/10/identifying-‘orains-own-facial-
`recognition-system (“The ability to recognize faces is so important in humans that the brain appears to have an area
`solely devoted to the task”), Eric Jaffe, The Psychological Study of Smiling, OBSERVER (Dec. 2010),
`http://www.psychologicalscience.org/index_php/publications/observer/2010/december—10/the—psychological—study—
`of-smilinghtml (recognizing many variations and types of smiles); Laura Hudson, The Human Brain Now Reacts to
`Emoticons Like Real Faces, WIRED (Feb. 13, 2014), http://www.wired.com/2014/02/brain—smiley—emoticon—
`science/.
`
`
`
`goods that do not overlap. None of Registrant’s marks include dresses, berets, baby cloth bibs,
`slippers, jogging suits, orjackets.
`
`3. The similaritv or dissimilaritv of established, likelv to continue trade channels
`
`Applicant and Registrant primarily offer their goods in different channels of trade to
`different classes of purchasers. For over 40 years, Applicant has been actively i11volved in
`licensing its SMILEY-related marks around the world.2 It owns trademark registrations in over
`l00 countries and l1as over 230 licensees.3 I11 addition, Applicant maintains a website where it
`sells its SMILEY brand clothing directly to consumers.4 I11 contrast, although Registrant also
`appears to engage in licensing deals, it holds itself out to the public principally as a not-for-profit
`organization called the World Smile Foundations Registrant does not appear to maintain a robust
`clothing website available to consumers i11 the United States,6 and the limited clothing it sells
`online is associated with its not-for-profit organization,7 which appeals to a very different
`consumer,
`
`4. The conditions under which and buvers to Whom sales are made i.e. “im ulse” v.
`
`careful, sophisticated purchasing.
`
`Circumstances suggesting care in purchasing may tend to minimize the likelihood of
`confusion. See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 USPQ 969, 971 (Fed. Cir.
`l985) (concluding that, because only sophisticated purchasers exercising great care would
`purchase the releva11t goods, there would be no likelihood of co11fusio11 merely because of the
`similarity between the marks NARCO and NARKOMED); In re Homeland Vinyl Prods., Inc.,
`81 USPQ2d 1378, l380, 1383 (TTAB 2006).
`
`This factor weighs heavily against a likelihood of confusion. As its primary business,
`Applicant lice11ses its brand to sophisticated third parties in arms-length business transactions.
`Applicant’s typical buyers are corporations that spend a great deal of time negotiating and
`deliberating over their decision to enter i11to these relationships.
`
`the clothing sold on the smiley.com website is
`Even at the end-user consumer level,
`fashionable, design-oriented clothing that sells for prices that would cause consumers to exercise
`greater care.8 In addition, the sale of this clothing is closely associated with the SMILEY word
`mark, a strong brand that consumers would seek, and thus it is unlikely that e11d-user consumers
`would be confused in the actual marketplace.
`
`2 See Applicanfs website, hit, :“Vwwxv.smilev.com.-‘.
`3 See id. at http:5‘WWW.s1ni1ev.c0m.-corporatefihistorv.
`4 See id. at https:=‘7'smilev—co1npanv.1nvshopif\'.co1n.".
`5 See Registranfs website. http:."’wwW.worlds111ileorg.
`
`6 The “Purchase Products” link on Registranfs website shows “Design Samples in Japan (clothing)’’ and states
`“Products coming soon.”
`http:
`vmvw-' .worldsmile . or g-‘indexrphp ?option:c om wrapp er&View:wrapp er&Ite1nid: l 3 64.
`7 http : -Iwww.\vorldsn1i1e .org 'index.php'.’option=c om wrapper&view=wrapp er&IIe1nid= l 366.
`8 See https:-‘s smile\'—co1npa11\-'.mVshopifV.come .
`
`
`
`5. The fame of the
`
`rior mark ‘
`
`advertisin
`
`Famous marks are afforded a broad scope of legal protection because they are more likely
`to be remembered and associated in the public mind than a Weaker mark. Palm Bay Imps, Inc. v.
`Veuve C/icqiiof Prmsordin Maison Fondee en I772, 396 F.3d 1369, 1374, 73 USPQ2d 1689,
`1694 (Fed. Cir. 2005); Bose Corp. v. QSC Audio Prods. Inc, 293 F.3d 1367, 1371-76, 63
`USPQ2d 1303, 1305-09 (Fed. Cir. 2002) (finding opposer’s marks, ACOUSTIC WAVE and
`WAVE,
`to be famous and thus entitled to broad protection); Recor, 214 F.3d at 1327, 54
`USPQ2d at "1897 (finding Board erred in limiting the Weight accorded to the fame of opposer’s
`FRITO-LAY mark); Kermer Parker Toys Inc, v, Rose Arr Indirs, Inc., 963 F.2d 350, 353, 22
`USPQ2d "1453, 1456 (Fed. Cir, 1992) (finding Board erred in discounting the significance of the
`fame of opposer’s mark PLAY-DOH); U.MG Recordings, Inc. v. iMarre/, Inc., 100 USPQ2d 1868,
`1883 (TTAB 2011) (finding MOTOVVN very famous in connection with musical recordings and
`musical entertainment, and noting that "a famous mark such as Motown can be expected to cast a
`long shadow and to be used in connection with numerous collateral goods").
`
`Here, this factor also Weighs against a likelihood of confusion. All of the cited registered
`marks were first used in commerce on February 27, 2009, approximately seven years ago. There
`is no evidence these marks have acquired fame or have been widely advertised in any Way other
`than on the Registrant’s website, and even then, the marks are buried within intenial pages of the
`site.9 Although Registrant claims to own over 189 trademarks in the United States, it would be
`hard-pressed to demonstrate that any of those marks has acquired fame as a source identifier.
`
`6. The number and nature of similar marks in use on similar goods
`
`A TESS database search of the smiley face design code, 02.11.16, where the goods
`include shirts reveals 859 records. Registrant claims to own about 189 smiley face design marks,
`all of which are similar to each other. With such a crowded field, protection afforded
`Registrant’s basic smiley face design marks must be narrow and cannot preclude the registration
`of similar but otherwise distinguishable marks.
`
`7. The nature and extent of am‘ actual confusion
`
`This factor is not relevant Where the Applicant has filed an inteiit-to-use application.
`
`8. The length of time during and conditions under which there has been concurrent
`use Without evidence of actual confusion
`
`This factor is not relevant VV'l1€1’€
`
`the Applicant has filed an intent-to-use application.
`
`ma '
`
`,Qroduct mark)
`
`9 http: ‘ "vvvvw_sniilev—inerchandising. C0111‘I1'E1Cl€1‘I1£l1’1(.111lT1l.
`
`4
`
`
`
`Neither Applicant’s mark nor Registrant’s marks are house marks. Applicant’s mark is
`part of a family of marks that Applicant has been licensing worldwide since the 1970s.
`
`10. The market interface between applicant and owner
`
`There is no market interface between Applicant and Registrant.
`
`11. The extent to which applicant has a right to exclude others from use of its mark on
`its goods
`
`Applicant is not aware of any TTAB decisions or decisions of other tribunals related to
`either its right to exclude others from using its mark on its goods.
`
`12. The extent of potential confusion, i.e. whether the minimus or substantial
`
`The extent of potential confusion between Appiicanfs mark and Registrant’s marks is de
`minimus because, as discussed above,
`there is little overlap in the channels of trade and
`Applicant’s business licensees and end-user consumers are both sophisticated buyers.
`
`13. Any other established fact probative of the effect of use
`
`Applicant owns a portfolio of SMILEY-related marks in over 100 countries and has been
`licensing those marks for over 40 years.
`In this increasingly global economy where more
`transactions are over the Internet, consumers in the United States are likely to be familiar with
`and have exposure to the SMILEY brand. That Applicant seeks to register a mark associated
`with its well-established international brand should weigh heavily against any finding of a
`likelihood of confusion.
`
`Respectfully submitted,
`
`THE SMILEY COMPANY (SPRL)
`
`By: /Steven L. Baron
`One of its Attorneys
`
`
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