Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA774403 Filing date: 10/03/2016 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 86310904 Applicant L.A. Brands, LLC Applied for Mark 1776 Correspondence JOSHUA A SCHAUL Address SHERMAN IP LLP 1519 26TH ST SANTA MONICA, CA 90404-3507 UNITED STATES [email protected], [email protected], [email protected] Submission Reply Brief Attachments PDFsam_merge.pdf(1164140 bytes ) Filer's Name Joshua A. Schaul Filer's e-mail [email protected], [email protected] Signature /jas/ Date 10/03/2016 LAB4-T.e03 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the matter of Trademark Application App. No.: 86/310,904 Filed: June 16, 2014 By: L.A. Brands, LLC For the Trademark: 1776 EX PARTE APPEAL FROM FINAL OFFICE ACTION DATED DECEMBER 4, 2015 Appellant L.A. Brands, LLC (‘Appellant”) hereby submits the following reply brief in support of registration of its mark. Sherman IP LLP 1519 26th Street Santa Monica, CA 90404 LAB4-T.e03 TABLE OF AUTHORITIES Cases Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012) .......................................................................................................... 5 Grotrian, Hel erich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 523 F.2d 1.331, 186 U.S.P.Q. 436 (2d Cir. 1975). .............................................................................................. 3 Harlem Wizards Entm't Basketball, Inc. v. NBA Props., 952 F. Supp. 1084, 1096 (D.N.J. 1997) ..................................................................................................................................... 2 Lebow Bros., Inc. v. Lebole Euroconf S.p.A., 503 F. Supp. 209, 212 U.S.P.Q. 693 (E.D. Pa. 1980) ..................................................................................................................................... 3 Sherman IP LLP 1519 26th Street Santa Monica, CA 90404 LAB4-T.e03 I. INTRODUCTION Appellant has appealed to the Trademark Trial and Appeal Board from the final refusal dated December 4, 2015, for the mark “1776” in the above-identified trademark application. Appellant noticed its appeal from that final rejection on May 19, 2016. The Examining Attorney has refused registration, contending that Appellant’s applied-for 1776 mark is confusingly similar to the stylized mark “1776 UNITED” (U.S. Registration No. 4,612,829) under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). As set forth in the following sections of this Reply in support of Appeal Brief, Appellant respectfully submits that the Examining Attorney’s contention is in error and requests that this Board reverse the Examining Attorney’s refusal to register Appellant’s 1776 mark under Trademark Act Section 2(d) and pass the 1776 mark to publication. II. ARGUMENT A. The Marks are Unmistakably Visually Distinct In the opposition, the Examining Attorney asserts that “[w]hether the marks are visually distinct is difficult to establish because applicant has applied for a standard character mark.” This is simply not the case. Registrant’s mark contains “the stylized literal element “UNITED” in antiqued script font with a dis-jointed snake design appearing between the literal elements, below “76” and above “ITED.” These features are not present in Appellant’s 1776 mark, in any way, shape or form. The fact that Appellant can display it’s 1776 in any font, style or format does not detract from the unequivocal truth that Appellant’s mark does not contain the term UNITED nor does it comprise a disjointed snake design. Sherman IP LLP 1 1519 26th Street Santa Monica, CA 90404 LAB4-T.e03 The Examining Attorney asserts that “only literal element in the registered mark different from the applicant's mark is the word UNITED,” but somehow dismisses this obvious distinction by asserting that because UNITED appears smaller than 1776, “this manner of display creates an emphasis for the numbering 1776.” The Examining Attorney provides no citation to authority supportive of this position and the Board should disregard as having little merit. The instant case is akin to Harlem Wizards Entm't Basketball, Inc. v. NBA Props., 952 F. Supp. 1084, 1096 (D.N.J. 1997), where a Federal District Court held that “use of a design as part of a mark minimizes any likelihood of confusion.” In Harlem, the Court held “plaintiff lacks a consistent logo and distinctive colors. Therefore, it is highly unlikely that merchandise offered by the parties will result in the likelihood of confusion among consumers.” Here we have the same issue, Appellant’s 1776 lacks any color or design distinction in comparison to Registrant’s mark which clearly contains disjointed serpent iconography. The Board here should rule in similar fashion as the New Jersey Federal Court did in Harlem, that given the obvious lack of similar logo/designs, it is highly unlikely Appellant and Registrant’s clothing will result in a likelihood of confusion. Thus, the Board should conclude the marks are visually distinct. B. The Marks are Audibly Distinct In the opposition, the Examining Attorneys asserts that “[a]lthough the registered mark does contain an additional word [UNITED], that addition, as noted above, does not significantly distinguish the marks because of the common dominant element, Sherman IP LLP 2 1519 26th Street Santa Monica, CA 90404 LAB4-T.e03 1776.” No case law supports the position presented by the Examining Attorney, that two marks’ audible similarities must only be compared to dominant portions of each mark. Moreover, this theory flies in the face of actual case law. “Trademarks, like small children, are not only seen but heard” Grotrian, Hel erich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 523 F.2d 1.331, 186 U.S.P.Q. 436 (2d Cir. 1975). However, phonetic similarity is merely one element to consider in laying out a mosaic of pieces which may or may not add up to a likelihood of confusion as to overall impression. Even if the marks are phonetically similar, for example, V-8 and VA, other elements of di erence may lead to a final finding of no likely confusion. Lebow Bros., Inc. v. Lebole Euroconf S.p.A., 503 F. Supp. 209, 212 U.S.P.Q. 693 (E.D. Pa. 1980) (similar pronunciation does not prove likely confusion if other factors weigh more heavily). Here, the additional term UNITED is unambiguously a heavy factor which weighs against finding an audible similarity between 1776 and 1776 UNITED. C. The Marks’ Commercial Impressions are Distinct The Examining Attorney asserts that “applicant's mark is in standard characters, which, if registered, would give the applicant the right to display its mark in the script of the Constitution of the United States and beside Ben Franklin's snake, a picture of Thomas Jefferson, and/or the tagline ‘the most patriotic clothes on the face of the planet.’” The record reflects that Appellant has not and likely will not invoke any patriotic iconography with its 1776 mark. Appellant’s 1776 marked goods typically contains two branches of leaves reminiscent of a laurel wreath; see Appellant’s specimens provided with the application filed June 16, 2014. The fact that Appellant could use patriotic iconography should not preclude for all time Appellant’s ability to register its 1776 mark when the evidence provided demonstrates that no such patriotic connection has been sought or will likely be sought in the figure. Sherman IP LLP 3 1519 26th Street Santa Monica, CA 90404 LAB4-T.e03 Finally, the Examining Attorney asserts “the term 1776 is imbued with patriotic meaning because it is the date the Declaration of Independence was adopted and it is integral to one of our most patriotic holiday celebrations, the Fourth of July.” The Examining Attorney cites no case law or other authority supportive of this self- serving conclusion. 1776 is just as easily be imbued with the publication of The History of the Decline and Fall of the Roman Empire, the publication of The Wealth of Nations, the settling of what is present-day San Francisco, a hurricane killing over 6,000 people in Guadeloupe, the marriage of the Crown Prince of Russia or the founding of the Phi Beta Kappa Society, all of which occurred in 17761. It is simply a stretch to imbue any patriotic impression in Appellant’s 1776 marked goods. By contrast, Registrant unequivocally wants the link its goods and the founding of this Country. Registrant “created 1776 United [….] to evoke a sense of patriotism found in our forefathers. [….] Our dream is to inspire a new wave of patriotism that might lead to the next Greatest Generation. We aim for the clothing we create to embody the many chapters of American history. Each shirt is a cotton reminder of who we are, where we live, and where we're going.” See Exhibit A to Appellant’s Appeal Brief and/or Exhibit A to Appellant’s November 12, 2015, Response to Office Action. Appellant and Registrant’s goods are not marketed in the same manner and thus it is hard to imagine a scenario where the goods would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012). 1 See Exhibit C, attached hereto and incorporated by reference herein. Appellant merely requests judicial notice that the events identified above merely occurred in the year 1776. Sherman IP LLP 4 1519 26th Street Santa Monica, CA 90404 LAB4-T.e03 III. CONCLUSION For all the forgoing reasons, Appellant respectfully requests overturning the Examining Attorney’s refusal to refusal to the 1776 mark. Dated: October 3, 2016 SHERMAN IP LLP By: Joshua A.