080619 POWER DONUTS OAR

esponse to Office Actionhttp://teasroa.uspto.gov/roa/xslt.service?xsl=text1 of 16/19/2008 9:52 AM

PTO Form 1957 (Rev 9/2005)OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no.

77313487

(POWERDONUTS , seemark ) has been amended as follows:

ARGUMENT(S)

In response to the substantive refusal(s), please note the following:

Please see the actual argument text attached within the Evidence section.

EVIDENCE

Evidence in the nature of substantive argument and attached exhibits has been attached.Evidence-1[evi_69173798-094953783_._OAR_with_Exhibits.pdf ]

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:

Current:

Class 030 for Donuts; Retail store services featuring pastries, donuts, muffins, and beveragesOriginal Filing Basis:

Filing Basis: Section 1(b), Intent to Use:

The applicant has a bona fide intention to use or use through the applicant's related company orlicensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section1051(b)).

Proposed:

Class 030 for Donuts

Filing Basis: Section 1(b), Intent to Use:

The applicant has a bona fide intention to use or use through the applicant's related company orlicensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section1051(b)).

SIGNATURE(S)

Declaration Signature

I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understandthat the examining attorney could still, upon later review, require a signed declaration.

Response Signature

Signature: /CRS/ Date: 06/19/2008Signatory's Name: Christopher R. ShiplettSignatory's Position: Attorney of RecordThe 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, whichincludes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or anassociate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent notcurrently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filinga signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative towithdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney orCanadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

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Attorneys at Law

PO Box 100637 * NJ DC BarErik M. Pelton* Arlington, VA 22210 ** VA BarChristopher R. Shiplett** T: 703.525.8009 *** VA DC & NY BarBenjamin D. Pelton*** F: 703.997.5349 erikpelton.com

of counsel

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

June 19, 2008Alicia P. CollinsTrademark Examining AttorneyLaw Office 115United States Patent and Trademark OfficeRE: Serial No: 77313487Mark:

POWERDONUTS

Applicant: Kenneth NolanOffice Action Of: February 6, 2008

APPLICANT'S SUBSTANTIVE RESPONSE TO OFFICE ACTION

The following is the substantive response of the Applicant, Kenneth Nolan, by Counsel,to the Office Action sent via email on February 6, 2008, by Examining Attorney Alicia P.Collins. A response to informal issues has been entered herewith via the TEAS onlinesubmission system.

LIKELIHOOD OF CONFUSION REFUSAL

The Examining Attorney has refused registration of the proposed mark pursuant toTrademark Act Section 2(d), 15 U.S.C. § 1052(d), on the grounds that the mark is likely to beconfused with the mark in Registration No. 2460701. For the following reasons, the Applicantrespectfully disagrees with the findings and requests that the Examining Attorney reconsider thestatutory refusal and allow registration of the Applicant’s mark.Likelihood of confusion between two marks at the PTO is determined by a review of allof the relevant factors under the

DuPont

test.

In re E.I. du Pont de Nemours & Co.,

476 F.2d1357, 177 USPQ 563 (CCPA1973). The two key considerations in ex parte likelihood of confusion analysis are the similarity of the marks and the similarity of the goods.

See Federated Foods, Inc. v. Fort Howard Paper Co.,

544 F.2d 1098, 192 USPQ 24 (CCPA 1976).

page 2 Substantive Response to February 6, 2008 Office Action SN 77313487 Ex. Atty.: Alicia P. Collins Law Office 115

Marks may contain elements in common and still not create consumer confusion if either1) the matter common to the marks is merely descriptive or diluted, or 2) the marks as a wholecreate different commercial impressions.

See, e.g. In re Farm Fresh Catfish Co.

, 231 USPQ 495(TTAB 1986) (CATFISH BOBBERS (with "CATFISH" disclaimed) for fish held not likely tobe confused with BOBBER for restaurant services);

In re Shawnee Milling Co.

, 225 USPQ 747(TTAB 1985) (GOLDEN CRUST for flour held not likely to be confused with ADOLPH'SGOLD'N CRUST and design (with "GOLD'N CRUST" disclaimed) for coating and seasoningfor food items). Here, Applicant’s mark POWERDONUTS is not likely to cause confusion withthe Registered mark POWER MUFFIN, in spite of the common material, because that commonmaterial is highly diluted as related to the goods, and additionally because the marks createentirely different commercial impressions.

Dilution of the Common Material

The word POWER, common between the marks, is diluted as applied to donuts, pastries,pastry mixes, and food items likely to be marketed along with these items. Dilution anddescriptiveness of a common element can be shown by the existence of several third-partyregistrations, or by evidence of actual third party use.

AMF Inc. v. American League Products, Inc.

474 F.2d 1403, 1406, 177 USPQ 268, 269-7- (CCPA 1973);

Palm Bay Imports, Inc. v.Veuve Clicquot Ponsardin maison Fondee En 1772

, 396 F.3d 1369, 73 USPQ2d 1689, 1693(Fed. Cir. 2005) (The existence of widespread third-party use under the du Pont factors mayserve to indicate the weakness of a term in the context of its source identifying significance).Here, there are at least forty-five (45) concurrent registrations for bakery products orrelated food products such as coffees or teas that include the word POWER.

See Table of “POWER” Formulation Marks for Bakery Goods

,

(attached as Exhibit A);

and “POWER”Formulation Registrations

, (attached as Exhibit B). Some examples include POWERBAGEL for“bagels and bakery goods,” POWER PRETZELS for “Pretzels,” COOKIE POWER, for variousbakery products including cookies, and PITA POWER for “Bread;” as well as RXPOWER forvarious tea and juice beverages, THE POWER MEAL! for “Bakery products, including bread,muffins, cakes and cookies, that contain added nutritional supplements, vitamins and minerals,”