080619 Power Donuts Oar

Response to Office Action

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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 , see mark) 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 beverages Original 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 or licensee 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. Section 1051(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 or licensee 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. Section 1051(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 understand that the examining attorney could still, upon later review, require a signed declaration. Response Signature Signature: /CRS/ Date: 06/19/2008 Signatory's Name: Christopher R. Shiplett Signatory's Position: Attorney of Record 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 applicant'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 applicant in this matter: (1) the applicant 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 applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant'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.

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6/19/2008 9:52 AM

Attorneys at Law Erik M. Pelton* Christopher R. Shiplett** Benjamin D. Pelton*** of counsel

PO Box 100637 Arlington, VA 22210 T: 703.525.8009 F: 703.997.5349

* NJ DC Bar ** VA Bar *** VA DC & NY Bar erikpelton.com

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE June 19, 2008 Alicia P. Collins Trademark Examining Attorney Law Office 115 United States Patent and Trademark Office RE:

Serial No: Mark: Applicant: Office Action Of:

77313487 POWERDONUTS Kenneth Nolan 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 online submission system. LIKELIHOOD OF CONFUSION REFUSAL The Examining Attorney has refused registration of the proposed mark pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the grounds that the mark is likely to be confused with the mark in Registration No. 2460701. For the following reasons, the Applicant respectfully disagrees with the findings and requests that the Examining Attorney reconsider the statutory refusal and allow registration of the Applicant’s mark.

Likelihood of confusion between two marks at the PTO is determined by a review of all of the relevant factors under the DuPont test. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 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).

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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 either 1) the matter common to the marks is merely descriptive or diluted, or 2) the marks as a whole create 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 to be 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'S GOLD'N CRUST and design (with "GOLD'N CRUST" disclaimed) for coating and seasoning for food items). Here, Applicant’s mark POWERDONUTS is not likely to cause confusion with the Registered mark POWER MUFFIN, in spite of the common material, because that common material is highly diluted as related to the goods, and additionally because the marks create entirely 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 and descriptiveness of a common element can be shown by the existence of several third-party registrations, 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 may serve 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 or related 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 various bakery products including cookies, and PITA POWER for “Bread;” as well as RXPOWER for various tea and juice beverages, THE POWER MEAL! for “Bakery products, including bread, muffins, cakes and cookies, that contain added nutritional supplements, vitamins and minerals,”

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Substantive Response to February 6, 2008 Office Action

SN 77313487 Ex. Atty.: Alicia P. Collins Law Office 115

POWERCAFE for “coffee and flavored coffee beans,” and POWER PROTEIN for “high protein pasta and breadsticks,” among others. Exhibits A and B.

Registrant’s mark POWER MUFFIN combines a highly diluted term with a generic term. The mark is therefore subject to a narrow scope of protection. It is particularly unlikely that consumers will confuse Applicant’s POWERDONUTS mark with Registrant’s POWER MUFFIN mark given the concurrent existence without confusion of such marks as POWERBAGEL for bagels, POWER PRETZELS for pretzels, and COOKIE POWER for cookies.

Differences in Commercial Impression Applicant’s mark POWERDONUTS contains both a double entendre and an incongruity in the mark itself. The double entendre occurs between the word POWER in Applicant’s mark and the word “Powder” commonly applied to donuts. Applicant’s mark plays on the fact that a “Powder Donut,” or “Powdered Donut” is a common type of donut, but a POWERDONUT is not a common type of donut, but rather is Applicant’s brand of donuts. The incongruity occurs between the word POWER, which connotes energy, activity, and healthy living, as in the well known POWER BAR, the very unhealthy connotation of the word DONUTS, the common name of a well known unhealthy snack. Because of the incongruity and the double entendre, customers encountering Applicant’s mark would see a coy, playful, self-referential brand of donuts, that intentionally keeps hidden whether the products are health food, are an energy snack, or are merely a variation of the classic powdered donut.

By contrast, Registrant’s mark POWER MUFFIN creates the commercial impression of a health food. Muffins are healthy breakfast pastries, and POWER in that context suggests a product that will give the purchaser energy. When combined, the mark creates the commercial impression of a healthy donut for active purchasers.

Because of the double entendre on the word POWER, and the incongruity of the placement of the word POWER with the word DONUTS, Applicant’s mark leaves a unique

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Substantive Response to February 6, 2008 Office Action

SN 77313487 Ex. Atty.: Alicia P. Collins Law Office 115

commercial impression in the consumers mind. That commercial impression is distinct and different from the impression left by the mark POWER MUFFINS, which suggests a health food.

Conclusion Because the material common between the marks is highly diluted, the differences in the marks, when they are viewed as a whole, become dominant in indicating source. On the basis of those differences, Applicant’s mark creates a different commercial impression from Registrant’s mark. When viewing the marks as a whole, in light of the crowded marketplace of similar marks and the differences in commercial impression, consumers are not likely to confuse the source of Applicant’s and Registrant’s respective goods. For that reason, Applicant respectfully requests that the Examining Attorney reconsider the statutory refusal and allow Applicant’s mark to proceed to publication.

The Applicant has responded to all issues raised in the Office Action. If any further information or response is required, please contact Applicant's attorney. The attorney may be reached by telephone at 703-525-8009.

Exhibits Exhibit A – Table of “POWER” Formulation Marks for Bakery Goods Exhibit B – “POWER” Formulation Registrations - Federal Trademark Registrations No. 90977, 1317207, 1447798, 1551174, 1768177, 1726721, 1991466, 2010377, 2149952, 2002226, 2062021, 1987020, 2104689, 2290357, 2243169, 2175643, 2251934, 2222908, 2619232, 2556407, 2272315, 2553180, 2709667, 2825580, 2845368, 2552575, 2878255, 2767699, 2690519, 2690520, 2727048, 2873523, 3039340, 3010419, 2789701, 2912631, 3002538, 2968232, 2900773, 3095192, 3326302, 3303940, 3186280, 3148562, and 3198823

APPLICATION NO. 77313487 RESPONSE TO OFFICE ACTION OF February 6, 2008 EXHIBIT A: Table of “POWER” Formulation Marks for Bakery Goods

Office Action Response SN 77313487, Exhibit A Page 1 of 1

TABLE OF “POWER” FORMULATION REGISTRATIONS FOR BAKERY GOODS Registration No. 90977

Mark

Goods and Services WHEAT-FLOUR

3326302

whole bean, ground roasted and brewed coffee

3303940

Bakery goods, namely tortillas and bread

3198823

DUMPLINGS

3186280

Bagels and bakery goods

Office Action Response SN 77313487, Exhibit A Page 2 of 2

TABLE OF “POWER” FORMULATION REGISTRATIONS FOR BAKERY GOODS Registration No. 3148562

Mark

Goods and Services Breakfast cereals

3095192

breakfast cereals, oatmeal

3039340

Bases for making milk shakes; cappuccino; chicory based coffee substitute; chocolate; chocolate food beverages not being dairy-based or vegetable based; chocolate powder; chocolate syrup; cocoa; cocoa mixes; coffee; coffee beans; coffee substitute; coffee-based beverage; coffeebased beverage containing milk; espresso; extracts used as flavoring which are not essential oils; food flavoring made of non-essential oils; flavored ices; fruit ice; flavoring additives for non-nutritional purposes; flavoring syrup; herbal tea for food purposes; herbal food beverages; herbal infusions; hot chocolate; ice cream; ice cream drinks; ice cream substitute; ice milk; iced tea; milk shakes; shakes; tea; tea for infusions; tea-based beverages; grain-based beverages; and, grain-based food beverages non-alcoholic prepared beverages predominantly comprised of coffee for consumption on and off the premises

3010419

3002538

POWER PASTA

2968232 2912631 2900773

POWER BALLS PITA POWER POWER IT

pasta products, namely, macaroni and cheese, dry pasta, canned pasta and pasta sauce Candy and cookies BREAD Tea-based beverages with fruit flavoring

Office Action Response SN 77313487, Exhibit A Page 3 of 3

TABLE OF “POWER” FORMULATION REGISTRATIONS FOR BAKERY GOODS Registration No. 2878255

Mark

Goods and Services cocoa drinks, coffees, teas and chocolate drinks lemonade, isotonic drinks, sport drinks, mineral water, carbonated water, beer and syrups for beverages

2873523

ICED TEA; HERBAL ICED TEA FRUIT JUICE DRINKS WITH HERBAL FLAVORING; FRUIT JUICES; FRUIT DRINKS; BLENDED NUTRITIONAL FRUIT JUICES AND FRUIT DRINKS; FRUIT DRINKS AND FRUIT JUICES WITH HERBS; FRUIT DRINKS AND FRUIT JUICES WITH HERBS AND MINERALS; ENERGY FRUIT DRINKS AND FRUIT JUICES

2845368

PREPACKAGED MIDDLE EASTERN AND MEDITERRANEAN FOODS, NAMELY, FALAFEL MIX, HUMMUS MIX, TAHINI DIP, BABAGANOUSH, SOUPS, AND VEGETABLE BURGERS RICE PILAFS, PASTA PILAFS, PITA BREAD, TABBOULEH, AND VEGETARIAN GYRO SANDWICHES, COUSCOUS, AND DESERTS CONSISTING OF WHOLE GRAINS, SEEDS, SPICES, AND HONEY PANCAKES, WAFFLES AND FRENCH TOAST

2825580

2789701

2767699

POWERMIL

cereal-derived food and dessert bars; candy bars; cerealbased snacks; processed cereal and processed grains; grain bars; herb based snack bars and blends of processed herbs coffee

Office Action Response SN 77313487, Exhibit A Page 4 of 4

TABLE OF “POWER” FORMULATION REGISTRATIONS FOR BAKERY GOODS Registration No. 2727048

2709667

Mark

Goods and Services Tortilla chips, tortillas, bakery products, namely bread, buns, rolls, sweet goods, pastries and cookies

RXPOWER

HERBAL FOOD BEVERAGES AND TEA BEVERAGES FRUIT JUICE BEVERAGES, VEGETABLE JUICE BEVERAGES, CARBONATED SOFT DRINKS, NON-CARBONATED SOFT DRINKS, AND DRINKING WATER Soft drinks used as nutritional supplements and vitamin and mineral supplements Coffee-based and tea-based beverages; confectionery products used as dietetic products for non-medical purposes using sugar substitutes, namely, tablets, chewing sweets with liquid filling, peppermint pastilles, peppermint candy; chocolates, chocolate goods, namely, chocolate candies; pralines also with liquid filling made of wines, spirits or fruit preparations; chewing gum for non-medical purposes made from sugar substitutes Non-alcoholic and caffeine-containing beverages, namely, energy soft drinks Soft drinks used as nutritional supplements and vitamin and mineral supplements Coffee-based and tea-based beverages; confectionery products used as dietetic products for non-medical purposes using sugar substitutes, namely, tablets, chewing sweets with liquid filling, peppermint pastilles, peppermint candy; chocolates, chocolate goods, namely, chocolate candies; pralines also with liquid filling made of wines, spirits or fruit preparations; chewing gum for non-medical purposes made from sugar substitutes Non-alcoholic and caffeine-containing beverages, namely, energy soft drinks Bakery products, including bread, muffins, cakes and cookies, that contain added nutritional supplements, vitamins and minerals Fruit and vegetable juice-based smoothies

2556407

COOKIE POWER

2553180

BIG O POWER

bakery products, namely cakes, cookies, pastries, breads, brownies, blondies and muffins; confectioneries, namely fudge processed cereal used as a breakfast or snack food

2690520

2690519

2619232

Office Action Response SN 77313487, Exhibit A Page 5 of 5

TABLE OF “POWER” FORMULATION REGISTRATIONS FOR BAKERY GOODS Registration No. 2552575

Mark

Goods and Services FLOUR

2290357

oatmeal, instant oatmeal, quick oatmeal, and processed oats

2272315 2251934

POWERCAFE POWERBAR HARVEST

2243169

PASTA POWER

2222908 2175643 2149952

POWER POWER PROTEIN POWER SPORT

2104689 2062021 2010377

ULTRA POWER POWER PRETZELS

2002226 1991466

MVP POWER FLOWER POWER

coffee and flavored coffee beans cereal-based snack foods; ready to eat cereal derived food bars; grain-based food bars; bakery goods modified wheat gluten for use by manufacturers of pasta products FLOUR high protein pasta and breadsticks dietary food supplements for restoring energy to sportsmen and sick persons coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitute, flour, cereal-based snack food, bread, pastry and confectionery, namely, candies, chewing gum, pralines and chocolates; flavored ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, condiments, namely, tomato sauce, ketchup (sauce) and mayonnaise; spices and ice beers; mineral and aerated waters, non-alcoholic drinks, namely, isotonic beverages, fruit drinks and fruit juices; syrups and other preparations for making beverages bakery products, namely, muffins, cookies and donuts pretzels ready-to-eat, cereal-derived food bar

nutritionally fortified donuts herbal teas

Office Action Response SN 77313487, Exhibit A Page 6 of 6

TABLE OF “POWER” FORMULATION REGISTRATIONS FOR BAKERY GOODS Registration No. 1987020 1768177

Mark POWERBAGELS POWER BREAK

1726721 1551174

POWER KIDS

1447798 1317207

POWERBAR FULL POWER

Goods and Services bagels and bakery goods ready to eat cereal based and fruit juice sweetened food bars enriched white bread PUDDING

GRAIN BASED FOOD BAR Bakery Flour

APPLICATION NO. 77313487 RESPONSE TO OFFICE ACTION OF February 6, 2008 EXHIBIT B: “POWER” Formulation Registrations

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Received Your Response To Office Action and Your Response To Office Submitted Successfully Success! We have received your form for serial number 77313487. We will send an Email summary of the form to "[email protected]", which will be your official confirmation of receipt. For electronically-submitted forms will not mail any additional paper confirmation. NOTE: Do NOT send a duplicate paper copy of this filing to the USPTO, as it will interfere with the proper proc electronic submission. Thank you. TEAS Support Team STAMP: USPTO/ROA-69.17.37.98-20080619095341186444-77313487-420e774464bedca76 0cb4fa0c7db731db7-N/A-N/A-200 Trademark Electronic Application System (TEAS) service U.S. Patent and Trademark Office Please refer questions or comments to: [email protected]

6/19/2008 9:53 AM