Attorneys at Law 111 Park Place * NJ DC Bar ®

Erik M. Pelton* Suite 1A ** NY Bar

Julie S. Shursky** Falls Church, VA 22046 *** VA DC & NY Bar
Benjamin D. Pelton*** 703.525.8009 erikpelton.com
of counsel

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

September 13, 2018

Geoffrey Fosdick
Trademark Examining Attorney
Law Office 111
United States Patent and Trademark Office

RE: Serial No: 79217173

Mark: BOLIDO
Applicant: Pierre Nobs
Office Action Of: July 13, 2018

APPLICANT'S RESPONSE TO OFFICE ACTION

The following is the response of Applicant, Pierre Nobs, by Counsel, to the Office Action
sent via email on July 13, 2018, by Examining Attorney Geoffrey Fosdick.

IDENTIFICATION OF GOODS AMENDMENT

Applicant hereby amends the identification of goods and services, as follows:
Class 14: Timepieces and chronometric instruments

REQUEST FOR INFORMATION REQUIREMENT

The Examining Attorney requests that Applicant provide the following information and
documentation regarding the nature of Applicant’s goods in connection with the mark. See
Office Action of July 13, 2018, p. 3. Applicant objects to the nature of the question in general.
The meaning of the terms and the nature of the goods in connection with Applicant’s mark are
clear on their face.
1. A written statement explaining whether the goods do or will contain contain/consist
of/comprise meteorites or parts of meteors.
Applicant’s goods are comparable to goods from competitors such as Rolex, Cartier,
Omega, and Longines.
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2. A sample of advertisements or promotional materials featuring the goods and a

photograph of the identified goods, or if such materials are not available, applicant must
submit samples of advertisements or promotional materials and a photograph of similar
goods.
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For more advertisements and promotional materials, see Applicant’s website at

https://www.bolido.rocks/.
3. A written statement describing the nature, purpose, and channels of trade of the goods.
The nature of Applicant’s goods is watches, timepieces, and chronometric instruments.
The vision behind the goods was to create a new breed of watches that have a unique
architectural design and functionality. The goods are manufactured 100% in Switzerland
at a completely un-Swiss price, making the watches more affordable than luxury-priced
Swiss timepieces. Applicant’s goods travel through all ordinary channels of trade. For
more information visit Applicant’s website at https://www.bolido.rocks/.

LIKELIHOOD OF CONFUSION REFUSAL

The Examining Attorney has refused registration of Applicant’s standard character
BOLIDO mark pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground that
the mark is likely to be confused with METEOR in Registration No. 5,109,381. For the
following reasons, Applicant respectfully disagrees with this finding and requests that the
Examining Attorney reconsider the statutory refusal and allow registration of Applicant’s mark.
Likelihood of confusion between two marks at the USPTO is determined by a review of
all of the relevant factors under the du Pont test. In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). Although the issue of likelihood of confusion typically
revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or
services, “there is no mechanical test for determining likelihood of confusion and ‘each case
must be decided on its own facts.’” TMEP § 1207.01 (citing du Pont, 476 F.2d at 1361, 177
USPQ at 567). Each of the thirteen du Pont factors may be considered in weighing likelihood of
confusion, if raised, and any one may be dispositive. See TMEP § 1207.01. In some cases, a
determination that there is no likelihood of confusion may be appropriate, even where the marks
share common terms and the goods/services relate to a common industry, because these factors
are outweighed by other factors, such as differences in the relevant trade channels of the
goods/services, the presence in the marketplace of a significant number of similar marks in use
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on similar goods/services, the existence of a valid consent agreement between the parties, or
another established fact probative of the effect of use. Id.

Table 1: Relevant Marks and Goods

Applicant’s Mark Cited Mark

Class 14: Timepieces and chronometric Class 14: Precious stones; cut diamonds;
instruments jewellery [sic], excluding watches, containing
cut diamonds

Here, Applicant seeks registration of the standard character mark BOLIDO for
“Timepieces and chronometric instruments” in International Class 14. Applicant’s mark has been
refused registration based on an alleged likelihood of confusion with the standard character mark
METEOR for “Precious stones; cut diamonds; jewellery [sic], excluding watches, containing cut
diamonds” in International Class 14. See Table 1, above. There is no likelihood that consumers
will be confused as to the source of the goods in connection with each of these two marks
because Applicant’s mark is different in appearance, sound, and commercial impression. Further,
the goods used in connection with Applicant’s mark and the cited mark are different,
noncompetitive, and marketed toward different consumers. Therefore, Applicant respectfully
requests the Examining Attorney withdraw his refusal and permit Applicant’s mark to be
published on the Principal Register.

The Marks are Different in Sound, Appearance, Meaning, and Commercial Impression
Under du Pont, marks are compared for similarity or dissimilarity in their entireties as to
appearance, sound, connotation, and commercial impression. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973). “Under the doctrine of foreign
equivalents, a foreign word (from a language familiar to an appreciable segment of American
consumers) and the English equivalent may be held to be confusingly similar. See, e.g., In re
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Thomas, 79 USPQ2d 1021 (TTAB 2006) (holding MARCHE NOIR for jewelry, and BLACK
MARKET MINERALS for retail jewelry and mineral store services, likely to cause confusion).

The Examining Attorney contends that under the doctrine of foreign equivalents, the
ordinary purchaser in the United States “would likely stop and translate” the term “BOLIDO”
into its English-language equivalent “because the Spanish language is a common, modern
language spoken by an appreciable number of consumers in the United States.” See Office
Action of July 13, 2018, p. 2. Applicant disagrees with the Examining Attorney. Here, the
doctrine of foreign equivalents will not be applied because it is unlikely that the average
American consumer will translate the foreign mark. See In re Tia Maria Inc., 188 USPQ 524
(TTAB 1975) (finding it unlikely that a person who had purchased AUNT MARY’S canned
fruits and vegetables from a supermarket would, upon dining at the TIA MARIA restaurant
surrounded by Mexican décor and serving Mexican food, translate “Tia Maria” into “Aunt
Mary” and then mistakenly assume that both goods and services originated from the same
source). Similarly, it is unlikely that a consumer purchasing Registrant’s METEOR single cut
diamonds and/or precious stones (who is most likely a manufacturer of fine jewelry, such as
engagement rings, necklaces, diamond rings, and bracelets), would upon purchasing Applicant’s
timepieces that are not raw materials but a complete good sold to consumers of watches
mistakenly assume that the goods originated from the same source. Compare Registrant’s
website http://lilidiamonds.com/our-world/about-lili/ with Applicant’s website
https://www.bolido.rocks/.
In addition, Applicant’s and Registrant’s mark are different in appearance, sound, and
commercial impression. Applicant’s mark is BOLIDO, which is a completely different term from
Registrant’s METEOR mark. Applicant’s mark begins with the letter “B” and ends in the letter
“O” and features a repetitive “O” sound in the beginning and end of the mark, which creates an
alliterative and playful cadence. Registrant’s mark, on the other hand, shares only one common
letter with Applicant’s mark – the letter “O” – which offers no alliterative elements to
Registrant’s mark.
The commercial impressions of the marks also differ. Registrant’s METEOR mark
conveys the idea that Registrant’s single cut diamonds have rounded edges similar to a meteorite.
In contrast, Applicant’s mark alludes to a metaphor about Applicant’s brand and timepieces: “A
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luminary that crosses between the somewhat immovable fixed stars of established brands on the
watch firmament.” See Exhibit A. Alternatively, the term “BOLIDO” translates to “racing car”
as well as “powerboat; speedboat.” See Exhibit B. The alternative definitions convey the idea
that Applicant’s timepieces are luxury watches that exude sophistication and wealth, similar to a
racing car or powerboat. Neither of the commercial impressions of Applicant’s mark expresses a
characteristic about Applicant’s timepieces in terms of shape, size, or composition.
As a result, when the cumulative effect of these significant differences between
Applicant’s BOLIDO mark and the cited METEOR mark is given fair weight, particularly in
light of the differences in sound and appearance as well as the diverse commercial impressions
between the marks, this factor weighs against the likelihood of confusion refusal.

Lack of Overlap of the Goods

Applicant is seeking to register its mark for timepieces and chronometric instruments,
whereas Registrant has its mark registered for precious stones; cut diamonds; jewellery [sic],
excluding watches, containing cut diamonds. On their face, the goods of Applicant appear to be
distinct from the goods of Registrant in terms of their character and use. In addition, Applicant’s
website clearly illustrates that Applicant sells timepieces and chronometric instruments. See
Exhibit C. Registrant, on the other hand, describes itself as “a renowned world leader in the field
of straight edged diamond manufacturers and widely known for its innovative special cuts.” See
Exhibit D. Additionally, Registrant’s diamonds are “perfectly designed to be inlaid into rings,
necklaces, and bracelets.” See id. Neither party manufactures, sells, or markets the other’s
products.
Registrant’s goods are a feature of a consumer jewelry product; the cut diamonds are not
likely to be sold on their own. Diamond cutting is a separate process that companies, such as
Registrant, specialize in and the goods attained from the process are purchased by sophisticated
consumers. Likewise, the consumers purchasing Registrant’s goods have a specific diamond
shape in mind, such as the METEOR® cut. Registrant’s goods are, therefore, generally custom
made to a specific consumer’s preference. See Exhibit D.
Although both goods are found in the jewelry industry, this industry is enormously broad,
so this commonality simply is too tenuous of a connection upon which to find that the goods are
commercially related. The goods are non-competitive and clearly have significant differences in
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utility and essential characteristics. Further, Registrant’s identification specifically excludes

watches, and Applicant produces and sells completed timepieces and chronometric instruments.
Registrant’s and Applicant’s goods are, therefore, not competitive, overlapping, or related
in any way, as Applicant does not manufacture, sell, or market precious stones and cut diamonds.
Accordingly, Applicant’s goods and the cited goods are clearly different and are not similar
enough to create a likelihood of confusion in the minds of the consumers.

Balancing the Factors

In sum, the differences between the commercial impressions created by Applicant’s mark
and the cited mark, as well as the differences in appearance and sound are sufficient to prevent a
likelihood of confusion. Further, Applicant’s goods are separate and distinct from the cited
Registrants’ goods and are not likely to be purchased by the same consumers. Registrant’s
identification specifically excludes “watches containing cut diamonds,” further disassociating
Applicant’s timepieces and chronometric instruments from Registrant’s goods. Accordingly,
Applicant respectfully requests that the statutory refusal be withdrawn and that the application be
permitted to proceed to publication.

MERE DESCRIPTIVENESS REFUSAL

The Examining Attorney has also refused registration of the proposed mark pursuant to
Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on the grounds that the mark merely
describes the Applicant’s goods. For the following reasons, the Applicant respectfully disagrees
with the findings and requests that the Examining Attorney reconsiders the statutory refusal and
allows registration of the Applicant’s mark.
A mark is merely descriptive only if it describes an ingredient, quality, characteristic,
function, feature, purpose, or use of the specified good or service with a “degree of
particularity.” See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); Plus Products
v. Medical Modalities Associates, Inc., 211 USPQ 1199, 1204-1205 (TTAB 1981). By contrast,
if a mark requires imagination, thought, and perception to arrive at the qualities or characteristics
of the goods or services, then the mark is suggestive. In re MBNA America Bank N.A., 340 F.3d
1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003). Therefore,
a mark is suggestive if, when the goods or services are encountered under the
mark, a multi-stage reasoning process, or the utilization of imagination, thought or
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perception, is required in order to determine what attributes of the goods or

services the mark indicates. As has often been stated, there is a thin line of
demarcation between a suggestive mark and a merely descriptive one, with the
determination of which category a mark falls into frequently being a difficult
matter involving a good measure of subjective judgment. The distinction,
furthermore, is often made on an intuitive basis rather than as a result of precisely
logical analysis susceptible of articulation.

Anheuser-Busch Inc. v. Holt, 92 USPQ2d 1101, 1105 (TTAB 2009); see also Plyboo America
Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1640 (TTAB 1999) (citations omitted).
The question of whether a particular mark is descriptive must be reviewed in relation to
the identified goods and/or services, and in view of the meaning of the mark to the relevant
public. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); see
also In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 385 (CCPA 1968). A term
may possess elements of suggestiveness and descriptiveness at the same time. In re Nett Designs,
Inc., 57 U.S.P.Q. 2d 1564, 1566 (Fed. Cir. 2001).
Here, Applicant seeks registration of the mark BOLIDO in standard characters for use in
connection with “Timepieces and chronometric instruments” in Class 14. According to the
Examining Attorney, Applicant’s mark is merely descriptive because several pieces of Internet
evidence illustrate that “[s]ome meteorites are considered gemstones,” and thus the Examining
Attorney concludes that meteorite gemstones are commonly used in jewelry. See Office Action
of July 13, 2018, p. 3. This analysis, however, is flawed as it fails to consider the metaphoric
significance of Applicant’s BOLIDO mark, as well as the fact that the majority of gemstones are
not formed from meteors.
The Examining Attorney bears the burden of demonstrating that a mark is merely
descriptive. See In Re Bel Paese Sales Company, 1 USPQ2d 1233, 1236 (TTAB 1986). "There is
often a thin line of demarcation between a suggestive term and a merely descriptive term, and . . .
any doubt with respect to the issue of descriptiveness should be resolved in Applicant's behalf."
In re Grand Metropolitan Foodservice Inc., 30 USPQ2d 1974, 1976 (TTAB 1994). Here, the
Examiner offers evidence from four different websites to show that meteorites can form
gemstones, which are then used in jewelry and watches. This Internet evidence, however, is not
sufficient to prove that the mark is merely descriptive, and thus the Examiner’s evidence fails to
offer any possible alternative interpretations and commercial impressions of Applicant’s
BOLIDO mark, besides the one supporting the Examiner’s position.
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For example, the Examining Attorney submitted evidence from Arkadia Collection about
a gemstone called the “Moldavite” gemstone, which is found in small areas of the Czech
Republic and a “rare cosmic gem.” See Exhibit E. If anything, this evidence demonstrates that
gemstones “created by the impact of large meteorites on Earth’s surface” extremely is rare and
generally not how gemstones are formed. See id. In fact, the Arkadia Collection evidence further
discusses that “[t]ektites [meteorite formed gemstones] are only found in four strewnfields
(dispersion areas) on our planet.” See id. Likewise, the evidence clearly states that meteorite
gemstones are extremely rare, so it is unlikely a consumer would associate Applicant’s
timepieces and chronometric instruments with gemstones formed from meteorites. It is equally
unlikely that a consumer would perceive Applicant’s timepieces to include meteorite dials.
According to the Examining Attorney’s JTV Internet evidence, the meteorite impact sites
are found in the following regions: Campo Del Cielo Argentina, the Sikhote Alin Mountains in
Primorye Russia and the Sahara Desert region in Morocco. See Exhibit F. In contrast, Applicant
clearly indicates on its website that its timepieces and chronometric instruments are 100% Swiss-
made, and thus none of the components used to manufacture the goods are not from the above-
referenced meteorite impact regions. For example, the Black BOLIDO timepiece is marketed as
a “Swiss mechanical timepiece” made from “[s]urgical grade stainless steel” sapphire crystal,
with an adjustable stainless steel folding buckle and a natural rubber strap. See Exhibit G.
The Examining Attorney also provides evidence of a few other watch companies that sell
timepieces with meteorite dials in an attempt to claim that Applicant’s goods also contain
meteorite components and are therefore descriptive. This argument, however, lacks probative
value, as the majority of the watches manufactured and sold by these companies (i.e., Cartier,
Rolex, Bovet Sergio, and Omega) are watches that do not include any meteorite components, let
alone meteorite dials. The article specifically states that “[w]hile we are seeing about a dozen
brands that turn to meteorite for certain timepieces, make no mistake: this is a rare material.” See
Exhibit H. Further, the article continues these few companies “continue[] to unveil dials made
from meteorites intermittently.” See id. All of these watches, nevertheless, are marketed as
containing meteorite dials, so consumers are aware that they are purchasing timepieces
containing meteorite components and/or parts. As such, consumers would not generally assume
that all, most, or even a majority of timepieces include meteorite dials, but rather would believe
this to be a small percentage, and not instinctively equate meteorites with timepieces.
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In the relevant context, Applicant’s BOLIDO mark is too vague and nebulous to
immediately describe a significant feature or characteristic of timepieces and chronometric
instruments with the required degree of particularity. See In re TMS Corp. of the Americas, 200
USPQ 57, 59 (TTAB 1978) (finding THE MONEY SERVICE not merely descriptive of
financial services providing transfers of funds because the mark “suggests a number of things,
but yet falls short of describing applicant’s services in any one degree of particularity”). In fact,
BOLIDO is neither a common nor sensible way to describe the Applicant’s goods. Consumers
would most likely view BOLIDO as a coined trademark for the relevant goods because the mark
is in a foreign language. Applicant’s mark conveys the idea that Applicant’s products stand out
from the competition, similar to how a meteor stands out in the night sky, because Applicant’s
goods are 100% Swiss-made, without the high cost for consumers. Alternatively, the BOLIDO
mark suggests that Applicant is a luminary in the industry of timepieces, as Applicant’s goods
progress with spectacular speed in creating innovative timepieces. Finally, Applicant’s BOLIDO
mark alludes to an air of sophistication and luxury associated with Applicant’s timepieces, as the
term BOLIDO also means “racing car” or “powerboat.” See Exhibit B. Thus, the term METEOR
has no logical meaning and is an unusual term in connection with timepieces from which no
clear meaning can be immediately discerned in connection with Applicant’s goods.
Applicant directs the Examining Attorney’s attention to Coca-Cola Co. v. 7-Up Co., 182
USPQ, 207, 209 (CCPA 1974), where the CCPA determined that the mark UNCOLA was not
descriptive for non-cola soft drinks. In reaching this conclusion, the CCPA stated that a mark is
registrable on the Principal Register even if it possesses a “descriptive connotation” that conveys
an impression of the goods or services. “The simple presence of that type of descriptive
connotation, like the presence of suggestiveness, will not preclude registration where the mark is
not merely descriptive of the goods.” Id. at 209.
Likewise, Applicant’s BOLIDO mark, like THE MONEY SERVICE mark at issue in In
re TMS Corp. and the UNCOLA mark at issue in Coca-Cola Co. is so nebulous and vague that it
“falls short of describing applicant’s [services] in any one degree of particularity.” In re TMS,
200 USPQ at 59. With the suggestive metaphor, alternative commercial impressions, and
distinctive alliterative rhyming of Applicant’s BOLIDO given fair weight, there is no doubt that
Applicant’s mark is inherently distinctive and not merely descriptive. In addition, the Examining
Attorney has submitted insufficient Internet evidence to establish that Applicant’s mark is merely
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descriptive of its goods. In fact, the evidence does not conclude that BOLIDO is descriptive of
timepieces and chronometric instruments. Instead, the evidence illustrates that (1) very few
companies sell timepieces containing meteorites; (2) those that do sell such goods, market the
watches as containing meteorites; (3) the relevant public would not associate the mark BOLIDO
to be descriptive of timepieces; and (4) meteorites are not a common quality, characteristic,
feature, and/or component of timepieces.
Yet, even when doubts exist as to whether a mark is merely descriptive as applied to the
goods or services for which registration is sought, it is the practice of the USPTO to resolve
those doubts in favor of the applicant and allow the mark to register. In re Grand Metropolitan
Foodservice, Inc., 30 USPQ2d 1974 (TTAB 1994). For the foregoing reasons, Applicant
respectfully requests that the statutory refusal pursuant to Trademark Act §2(e)(1) be withdrawn
and that the application be approved for publication.

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

Respectfully submitted,

Erik M. Pelton, Esq.

Attorney for Applicant
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Exhibits:

Exhibit A: Home page, BOLIDO, https://www.bolido.rocks/ (last visited Aug. 16, 2018).

Exhibit B: Definition of “bolido,” SpanishDict Spanish-English Dictionary,

http://www.spanishdict.com/translate/b%C3%B3lido (last visited Aug. 9, 2018).

Exhibit C: Shop, BOLIDO, https://shop.bolido.rocks/index.php/ (last visited Aug. 14, 2018).

Exhibit D: About Lili Diamonds, LILI DIAMONDS, http://lilidiamonds.com/our-world/about-

lili/ (last visited Aug. 14, 2018).

Exhibit E: Moldavite Gemstone, ARKADIA, https://www.arkadiancollection.com/gemstone-

directory/moldavite (last visited Aug. 16, 2018).

Exhibit F: Meteorite Gemstone & Information, JTV,

https://www.jtv.com/library/gemopedia/meteorite (last visited Aug. 16, 2018).

Exhibit G: Shop – BOLIDO Black, BOLIDO, https://shop.bolido.rocks/index.php/shop/bolido-

black.html (last visited Aug. 16, 2018).

Exhibit H: Robert Naas, Seven Superb Watches with Meteorite Dials, HAUTE TIME (Dec. 13,
2016), https://www.hautetime.com/six-superb-watches-with-meteorite-
dials/80421/ (last visited Aug, 16, 2018).