Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87622726 EMPIRE(Standard Characters, see http://uspto.report/TM/87622726/mark.png) has been amended as follows:

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

Response to Refusal Under Section 2(d)

 

The Examining Attorney has refused registration of Applicant’s mark EMPIRE for “Metal kitchen bakeware; Metal cake pans" on the ground of likelihood of confusion with Registration No. 4,721,227 for EMPIRE as applied to “Glass canning mason jars; lids and bands for glass canning mason jars; jar tongs; granite cookware, namely, granite pots and pans”.  For the reasons below, Applicant respectfully believes that confusion is unlikely to occur and requests withdrawal of the refusal.

 

In evaluating the likelihood of confusion between two marks, the Examining Attorney must look at the marks themselves for similarities in appearance, sound, connotation, and commercial impression and must compare the goods to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  See In re E.I. DuPongt Denemours & Co., 476 F.2d 1357, 161 (C.C.P.A. 1973).

 

There is no question that the applied-for mark is identical with the cited registration.  In addition, it can be broadly stated that the Applicant’s goods and the Registrant’s goods fall in the “food preparation and kitchen field”.  Even so, because Applicant seeks to register EMPIRE in connection with goods that are distinct from Registrant’s goods, Applicant respectfully submits that there is no likelihood of confusion as to source of origin or sponsorship.

 

Under today’s ever-expanding fields of specialization, a category like “food preparation and kitchen field” is meaningless. In an analogous situation, finding two identical marks confusingly similar in the field of “computer products” just because they relate to computers also would be unrealistic under today’s standards because the computer science field has been specialized so greatly that one must now look to the specific fields and applications of the computer products.  See Elec. Data Sys. Corp. v. Edsa Micro Corp., 23 U.S.P.Q.2d 1460, 1463 (T.T.A.B. 1992) (“[W]hether or not two products are related does not revolve around the question of whether a term can be used that describes them both, or whether both can be classified under the same general category.”). 

 

Clearly, even if two marks are similar or identical, a likelihood of confusion may not occur if the goods are sufficiently distinguishable in nature and channels or marketing of trade. As such, the Trademark Trial and Appeal Board has held that the fact that identical marks may exist in the same general field is insufficient to find a likelihood of confusion. In re Shipp, 4 USPQ2d 1174 (TTAB 1987) (PURITAN for laundry and dry cleaning services and PURITAN for dry cleaning machine filters and parts therefor "while related in the sense that they are all in the laundry and dry cleaning industry, are not so related that they would come to the attention of the same kinds of purchasers and we believe that confusion as to source or sponsorship, while possible, is not likely"); Reynolds & Reynolds Co. v. I.E. Systems Inc., 5 USPQ2d 1749, 1751 (TTAB 1987) ("there must be some similarity between the goods and services at issue herein beyond the fact that each involves the use of computer"); See Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400, 1402 (C.C.P.A. 1970) (finding PEAK PERIOD for deodorant was not confusingly similar to PEAK for oral dentifrice and observing that the goods’ “application and utility serve different objectives” (emphasis added)).

 

The Term “EMPIRE” When Applied-to Goods in the Food Preparation and Kitchen Field In General is Relative Weak Due to the Use and Registration of “EMPIRE” As Applied To Goods in Various Sub-fields of the Food Preparation and Kitchen Field.

 

To assist in showing that a mark has been commonly used in an industry, courts have noted that, “third party registrations may be relevant to show that a mark or a portion of a mark. . . [is] so commonly used that the public will look to other elements to distinguish the source of the goods or services”.  See, e.g., In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1153-54 (TTAB 2012); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Dayco Products-Eaglemotive Inc., 9 USPQ2d 1910, 1911-12 (TTAB 1988); Plus Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983).  Properly used in this limited manner, third-party registrations are similar to dictionaries showing how language is generally used.  See, e.g., Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917, 189 USPQ 693, 694-95 (C.C.P.A. 1976); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d 1172, 1174 (TTAB 1987).  Moreover, the courts have noted that if the evidence shows the consuming public is exposed to third-party use of similar marks on similar goods, the evidence “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection”.  Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F. 3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). 

 

It appears the term EMPIRE when applied to goods within the general “food preparation and kitchen” field is somewhat diluted, as evidenced by the different owners of the cited registration and other trademark registrations and uses of the term EMPIRE as applied to goods that can be classified as being in the “food preparation and kitchen” field.  For example, see the following registrations and application:

 

Attachment	OWNER	MARK	GOODS	REG./APPL. NO.
A	Lifetime Brands, Inc.	IMPERO (Italian for “EMPIRE”)	IC 008: sterling silver flatware, namely, knives forks and spoons	Reg. No. 2,310,145
B	Empire Comfort Systems, Inc.	EMPIRE	IC 011: outdoor cooking products, namely, turkey fryers, stockpots specifically fitted for gas powered burners, and barbecues; etc.	Reg. No. 2,818,100
C	Leslie Banker	EMPIRE DELICIOUS	IC 035: online retail store services featuring paper products and accessories, namely, dishes, bowls, etc.	Reg. No. 4,025,761
D	Empire Bakery Equipment, Inc.	EMPIRE	IC 007: electric mixers, etc.; IC 011: baking ovens, etc.	Reg. No. 4,547,003
E	Timothy McCreery	EMPIRE	IC 021: Glass canning mason jars; lids and bands for glass canning mason jars; jar tongs; granite cookware, namely, granite pots and pans	Reg. No. 4,721,227 (The cited registration)
F	Lifetime Brands, Inc.	EMPIRE SILVER	IC 021: Silver and pewter hollowware, namely, cops, porringers, serving trays, beverage pitchers, mint julep cups, Jefferson cups, goblets, etc.	Reg. No. 4,834,419
G	Liao Wei Ming	DIGOU (Chinese for “EMPIRE”)	IC 021: Coffee cups; coffee pots; non-electric coffee makers; mixing spoons; strainers, etc.	Reg. No. 5,054,493
H	Metal Ware Corporation	EMPIRE	IC 021: Metal kitchen bakeware; Metal cake pans (see amendment to goods listing, above)	Appl. Ser. No. 87/622,726 (The applied-for mark)

 

The co-existence of the above-identified EMPIRE marks on the principal register, although not binding on a likelihood of confusion analysis, is evidence that consumers are able to discern differences between origins of goods in specific sub-fields of the “food preparation and kitchen” field to which the mark “EMPIRE” is applied based on those specific sub-fields of the goods.  Thus, the term EMPIRE is relatively weak when applied to goods in the “food preparation and kitchen” filed and entitled to only a narrow scope of protection.   As a result, it seems a further EMPIRE mark in the food preparation and kitchen field that is restricted to metal kitchen bakeware and metal cake pans can coexist with the cited registration and the other above-noted “EMPIRE” marks without any likelihood of consumer confusion, where the marks are easily distinguishable by consumers based on their differences in goods.  This factor favors a finding that no likelihood of confusion would exist if the respective marks were allowed to coexist

 

The Applied-For Goods Are Distinct In Nature From The Goods Of The Cited Registration, Such That A Likelihood Of Confusion Between The Marks Is Unlikely.

 

The Office Action indicates “[t]he application uses broad wording to describe kitchen bakeware and cake pans, which presumably encompasses all goods of the type described including registrant’s more narrow granite cookware, namely, granite pots and pans”.  Applicant respectfully disagrees.  As the Examining Attorney seems to focus on the granite cookware goods of the cited registration as being the goods of the cited registration that are related to the applied-for goods, Applicant will focus its discussion of the distinctiveness between the respective goods on those granite cookware goods, with the belief that the canning jar related goods are even more distinct from Applicant’s bakeware goods. 

 

Initially, Applicant notes that contrary to TMEP 1207.01(a)(vi) indicating the “examining attorney must provide evidence showing that the goods and services are related to support a finding of likelihood of confusion” (emphasis added), the Examining Attorney did not provide any evidence that the bakeware goods (e.g., including cake pans) of the application are related to or encompass the granite cookware pots and pans of the cited registration.  Instead, the Examining Attorney concludes, without any support, that the applied-for bakeware goods encompass the granite cookware pots and pans of the cited registration.  This is a notable oversight due to consumers seemingly being able to distinguish between sources of goods in sub-fields of food preparation and kitchen goods, as discussed above, and the fact that there is a distinction between “cookware” goods and “bakeware” goods that is recognized in the market.

 

The “cookware” goods of the cited registration and the “bakeware” goods (e.g., encompassing “cake pans”) of the applied-for mark are specific sub-fields of food preparation and kitchen goods. For example, food preparation and kitchen goods are known to be any goods used in food preparation, cooking, baking, or serving of food, whereas cookware is known by consumers to be goods such as saucepans and frying pans intended for use on a stove or range cooktop and bakeware is known by consumers to be goods intended for use inside an oven. The distinction between cookware and bakeware in the eyes of the consumers is evidenced by the fact that retail stores often provide and market cookware separate from bakeware in or at their stores.  See e.g., Attachment I – Printout from Crate&Barrel’s website showing separate categories for “cookware” and “bakeware”; Attachment J – Printout from Williams Sonoma’s website showing separate categories for “cookware” and “bakeware”.  As such, it is believed Applicant and the owner of the cited registration have provided field of use limitation to their listed goods, contrary to what is indicated in the office action, and consumers recognize such field of use limitations as being meaningful due to retailers separately providing and marketing goods in the respective fields of use. 

 

Additionally, Applicant has amended it goods identification to indicate the recited goods are metal kitchen bakeware and metal cake pans.  As the allegedly conflicting goods of the cited registration are cookware “granite pots and pans”, Applicant’s metal bakeware and metal cake pans do not overlap in scope with the cookware granite pots and pans of the cited registration.   For this additional reason, the application and utility of the applied-for goods and the goods of the cited registration “server different objectives”. 

 

Although the respective goods of the application and the cited registration may be categorized together in a general food preparation and kitchen goods category, these goods differ in nature because the applied-for goods are metal and used for baking, while the goods of the cited registration are made out of granite and are used for cooking.  For example, Applicant’s goods are no more related to the goods of the cited registration than the goods of the cited registration are related to stockpots (see Attachment B – U.S. Reg. No. 2,818,100 for EMPIRE) or coffee pots (see Attachment G – U.S. Reg. No. 5,054,493 for DIGUO (Chinese for EMPIRE)).

 

Thus, due to the clear differences between the nature of the applied-for goods and the nature of the registered goods, this factor favors a finding that no likelihood of confusion would exist if the respective marks were allowed to coexist.

 

The Applied-For Goods Travel In Channels Of Trade Distinct From The Channels Of Trade In Which The Goods/Services Of The Cited Registration Travel.

 

As noted above, the Examining Attorney has not provided any evidence of the relatedness of the applied-for goods and the goods of the cited registration, much less evidence regarding the channels of trade of the respective goods.  Here, although cookware and bakeware may be found in the same food preparation and kitchen goods stores (e.g., Crate&Barrel, Williams Sonoma, etc.), such food preparation and kitchen goods stores separate cookware from bakeware and consumers are use to making the distinction between cookware and bakeware when making purchasing distinctions. 

 

Crate&Barrel, a major food preparation and kitchen goods store in the U.S., separates cookware and bakeware on their retail website.  See Attachment I – Printout from Crate&Barrel’s website showing separate categories for “cookware” and “bakeware” (see listings of categories in the upper left of the printout).  Similarly, Williams Sonoma, another major food preparation and kitchen goods store in the U.S., separates cookware from bakeware.  See Attachment J – Printout from Williams Sonoma’s website showing separate categories for “cookware” and “bakeware” (see listings of categories in a bar along the upper portion of the printout).  These are just two examples of retail stores distinguishing between cookware goods and bakeware goods in their marketing of such goods, among many others, and from this, it is believed the consuming public is particularly aware of the distinction between “cookware” and “bakeware”.

 

As a result, although the applied-for goods and the goods of the cited registrations may generally be offered at similar stores, the evidence of record supports the position that cookware and bakeware are marketed to consumers as being separate, distinct types of goods located in different areas of a store.  Moreover, consumers recognize the distinct channels of cookware and bakeware when making purchasing decisions.  Thus, the channels of trade factor tilts the balance against a finding of a likelihood of confusion between the applied-for mark and the registered marks.

 

The Consuming Public of the Respective Marks Make Careful Purchasing Decisions, Such That A Likelihood Of Confusion Between the Marks is Unlikely.

 

The consuming public for metal kitchen bakeware and metal cake pans make careful purchasing decisions, as the type of product and the material from which the product is made can have a material effect on the final baked goods.  As such, consumers of the applied-for goods make careful purchasing decisions.  Moreover, as the purchasing decisions are often prescribed by recipes, consumers are typically unwilling to substitute goods made out of other materials for the prescribed goods.  Similarly, it is believed the consuming public for canning jars and related goods, along with granite cookware goods, particularly granite pots and pans, make careful purchasing decisions based on their cooking needs.  Thus, consumers of such goods as those recited in the cited registration are likely to take great care in purchasing those goods. 

 

As such, purchasing decisions by the consuming public of the Applicant’s and Registrant’s respective goods are carefully made and, particularly of consumers of the Applicant, are made after much consideration and for specific purposes.  As a result of the careful decisions made when purchasing metal bakeware or canning jar related goods or granite cookware pots and pans, the circumstances suggesting care in purchasing the respective goods tends to minimize the likelihood of confusion as to the source of the goods to which the registered mark is applied and the goods to which the applied-for mark is applied.  See TMEP 1207.01(d)(vii).  Thus, this factor favors a finding of no likelihood of confusion between the marks.

 

Conclusion.

 

While goods of the applied-for mark and the goods of the cited registration are both in the general food preparation and kitchen field, a likelihood of confusion as to the source or affiliation of the goods marked with the respective marks is NOT likely in this case given the nature of the goods, channels of trade and marketing of the goods, and careful consideration of purchasers.  Applicant’s metal bakeware goods will not be confused with Registrant’s canning jar related goods and granite cookware pots and pans.  As such, the Examining Attorney is respectfully requested to withdraw the likelihood of confusion refusal.

EVIDENCE
Evidence in the nature of other trademark registrations that use the term EMPIRE has been attached.
Original PDF file:
evi_207174193156-20180709125139267316_._Attachment_A_-_TESS_Printout_Reg._No._2310145.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_207174193156-20180709125139267316_._Attachment_B_-_TESS_Printout_Reg._No._2818100.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_207174193156-20180709125139267316_._Attachment_C_-_TESS_Printout_Reg._No._4025761.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_207174193156-20180709125139267316_._Attachment_D_-_TESS_Printout_Reg._No._4547003.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_207174193156-20180709125139267316_._Attachment_E_-_TESS_Printout_Reg._No._4721227.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_207174193156-20180709125139267316_._Attachment_F_-_TESS_Printout_Reg._No._4834419.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_207174193156-20180709125139267316_._Attachment_G_-_TESS_Printout_Reg._No._5054493.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_207174193156-20180709125139267316_._Attachment_H_-_TESS_Printout_Reg._No._5054493.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_207174193156-20180709125139267316_._Attachment_I_-_Cookware_and_Bakeware___Crate_and_Barrel.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_207174193156-20180709125139267316_._ttachment_J_-_Top-Rated_Bakeware_Favorites___Williams_Sonoma.pdf
Converted PDF file(s) ( 32 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24
Evidence-25
Evidence-26
Evidence-27
Evidence-28
Evidence-29
Evidence-30
Evidence-31
Evidence-32

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 021 for Kitchen bakeware; Cake pans
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Kitchen bakeware; Metal kitchen bakeware; Cake pans; Metal cake pansClass 021 for Metal kitchen bakeware; Metal cake pans
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /michael.t. hess/     Date: 07/09/2018
Signatory's Name: Michael T. Hess
Signatory's Position: Attorney of Record, MN State Bar Member

Signatory's Phone Number: 612-677-9050

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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.

        
Serial Number: 87622726
Internet Transmission Date: Mon Jul 09 13:08:57 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20180709130857
720529-87622726-610d7494c44beb85d19e8f16
0b22439b9d570738d486ec1d8fec2f0f392f4764
237-N/A-N/A-20180709125139267316