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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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Attorneys at Law PO Box 100637 * NJ DC Bar
Erik M. Pelton* Arlington, VA 22210 ** VA Bar
Christopher R. Shiplett** T: 703.525.8009 *** VA DC & NY Bar
Benjamin D. Pelton*** F: 703.997.5349 erikpelton.com
of counsel

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: 77313487

Mark: POWERDONUTS
Applicant: Kenneth Nolan
Office 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 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).
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 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,”
page 3 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
page 4 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 Mark Goods and Services

No.
90977 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 Mark Goods and Services

No.
3148562 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; coffee-
based 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
3010419 non-alcoholic prepared beverages predominantly
comprised of coffee for consumption on and off the
premises

3002538 POWER PASTA pasta products, namely, macaroni and cheese, dry pasta,
canned pasta and pasta sauce
2968232 POWER BALLS Candy and cookies
2912631 PITA POWER BREAD
2900773 POWER IT 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 Mark Goods and Services

No.
2878255 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
2825580 PANCAKES, WAFFLES AND FRENCH TOAST

2789701 POWERMIL cereal-derived food and dessert bars; candy bars; cereal-
based snacks; processed cereal and processed grains;
grain bars; herb based snack bars and blends of processed
herbs
2767699 coffee
 Office Action Response SN 77313487, Exhibit A Page 4 of 4

TABLE OF “POWER” FORMULATION REGISTRATIONS FOR BAKERY GOODS

Registration Mark Goods and Services

No.
2727048 Tortilla chips, tortillas, bakery products, namely bread,
buns, rolls, sweet goods, pastries and cookies

2709667 RXPOWER HERBAL FOOD BEVERAGES AND TEA

BEVERAGES FRUIT JUICE BEVERAGES,
VEGETABLE JUICE BEVERAGES, CARBONATED
SOFT DRINKS, NON-CARBONATED SOFT DRINKS,
AND DRINKING WATER
2690520 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
2690519 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
2619232 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 bakery products, namely cakes, cookies, pastries, breads,
brownies, blondies and muffins; confectioneries, namely
fudge
2553180 BIG O POWER processed cereal used as a breakfast or snack food
 Office Action Response SN 77313487, Exhibit A Page 5 of 5

TABLE OF “POWER” FORMULATION REGISTRATIONS FOR BAKERY GOODS

Registration Mark Goods and Services

No.
2552575 FLOUR

2290357 oatmeal, instant oatmeal, quick oatmeal, and processed

oats

2272315 POWERCAFE coffee and flavored coffee beans

2251934 POWERBAR HARVEST cereal-based snack foods; ready to eat cereal derived food
bars; grain-based food bars; bakery goods
2243169 PASTA POWER modified wheat gluten for use by manufacturers of pasta
products
2222908 POWER FLOUR
2175643 POWER PROTEIN high protein pasta and breadsticks
2149952 POWER SPORT 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
2104689 ULTRA POWER bakery products, namely, muffins, cookies and donuts
2062021 POWER PRETZELS pretzels
2010377 ready-to-eat, cereal-derived food bar

2002226 MVP POWER nutritionally fortified donuts

1991466 FLOWER POWER herbal teas
 Office Action Response SN 77313487, Exhibit A Page 6 of 6

TABLE OF “POWER” FORMULATION REGISTRATIONS FOR BAKERY GOODS

Registration Mark Goods and Services

No.
1987020 POWERBAGELS bagels and bakery goods
1768177 POWER BREAK ready to eat cereal based and fruit juice sweetened food
bars
1726721 POWER KIDS enriched white bread
1551174 PUDDING

1447798 POWERBAR GRAIN BASED FOOD BAR

1317207 FULL POWER Bakery Flour
 APPLICATION NO. 77313487
RESPONSE TO OFFICE ACTION OF February 6, 2008

EXHIBIT B:
“POWER” Formulation Registrations
TEAS Submit Service ver 2.50 http://teasroa.uspto.gov/roa/teas.service?page=12&form.ackMail=info%...

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
"info@tm4smallbiz.com", 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: teas@USPTO.gov

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