Response to Office Action

MARK:  CENTRAL & Design

SERIAL NUMBER:  76/247458

OUR FILE NO.:  1703-J

AMENDMENT "B"

Applicant, by and through counsel, hereby responds to the Office action dated October 14, 2004, as follows:

The Examining Attorney has refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the Examining Attorney believes that Applicant's mark CENTRAL & Design, when used on or in connection with the identified services, so resembles the mark in U.S. Registration No. 2673822 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP Section 1207. 

Applicant has applied to register CENTRAL & Design for rental of cranes, booms and lifts.  Registrant's mark, EQUIPMENT CENTRAL is for maintenance and/or repair of construction equipment.  Applicant respectfully disagrees with the Examining Attorney's conclusion that there may be a likelihood of confusion between the respective marks.

Initially, Applicant notes that the pending application was filed on April 30, 2001 as an actual use application with a date of first use and use in commerce dates back to as early as1946.  Registrant's mark EQUIPMENT CENTRAL was filed on October 2, 2000 having a Registration date of January 14, 2003.  Found in the prosecution history of Registrant's mark, Applicant has discovered that Registrant first began using the mark EQUIPMENT CENTRAL in 1999.  Applicant respectfully requests Examining Attorney to consider Applicant's use of the mark CENTRAL & Design with respect to having a much earlier date of first use than Registrant's date of first use.  And to take into consideration there has been no evidence of a likelihood of confusion during the time in which Registrant began using the mark in 1999 until present time when in fact, Applicant' mark was in use fifty-three (53) years prior to Registrant's use.

Applicant agrees that the Examining Attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the Examining Attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E.I. DuPont de Nemours & Co., 177 U.S.P.Q. 563 (CCPA 1973).  Second, the Examining Attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 U.S.P.Q. 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 U.S.P.Q. 910 (TTAB 1978); Guardian Products Co. v. Scott Paper Co., 200 U.S.P.Q. 738 (TTAB 1978).  Applicant respectfully asserts that after review of the first and second prongs of the likelihood of confusion analysis, there is minimal, if any, likelihood of confusion between the respective marks.

As to the first prong of the likelihood of confusion analysis, Applicant asserts that the sound, appearance, connotation and commercial impression of the respective marks is such that the likelihood of confusion, if any, is minimal at best.

First, the sound and appearance of the respective marks is substantially different from one another.  Applicant's mark is CENTRAL with a design element.  The cited mark is EQUIPMENT CENTRAL with no design element.  Applicant's mark CENTRAL is written in a stylized form with a thick, solid slanted line beneath the wording.  Registrant's mark contains no such design appearance.  The design element of Applicant's mark does create a difference in appearance of the marks.  Further, Applicant's word portion of the mark is simply CENTRAL.  In contrast, the Registrant's mark contains the words EQUIPMENT CENTRAL.  The Registrant's mark contains the additional word EQUIPMENT.  The Applicant's mark has no additional words.  Applicant's mark begins with the word CENTRAL whereas Registrant's mark begins with the word EQUIPMENT.  The additional word in Registrant's mark adds three syllables to the mark.  Therefore, the additional word simply creates a different sound and appearance between the marks. 

Second, the connotation and commercial impression of the respective marks are distinctly different from one another. Applicant's mark is CENTRAL & Design which has no mention of the word "equipment" as in Registrant's mark.  The mark EQUIPMENT CENTRAL implies that there is equipment involved.  Such a connotation is absent from Applicant's mark.  The addition of the word EQUIPMENT in Registrant's mark creates a distinctively different commercial impression of the marks.

Thus, Applicant believes that Applicant has successfully overcome the first prong of the likelihood of confusion analysis.

As to the second prong of the likelihood of confusion analysis, Applicant asserts that the services themselves are substantially different from one another, and the conditions under which services are sold are such that the likelihood of confusion, if any, is minimal at best.

First, the services themselves are substantially different from one another.  Applicant's services are rental of cranes, booms and lifts.  Registrant's services are maintenance and/or repair of construction equipment.  As you can see, Applicant's services do not involve the maintenance and/or repair of construction equipment.  Applicant's services are directly related only to the rental of cranes, booms and lifts.  Registrant's services are related to the maintenance and/or repair of any and all types of construction equipment, not specifically limited to cranes, booms and lifts.  Further, Applicant's consumers are of a unique specialized field.  As such, there would be no confusion to the consumer as to the marketplace where they would rent cranes, booms and lifts as opposed to the marketplace where they are in need of repair and/or maintenance of construction equipment.  Such specialized consumers are likely to be quite knowledgeable about the markets and the options available to them.  In addition, a consumer that owns construction equipment that is in need of maintenance and/or repair of their construction equipment would not contact a company that has equipment for rent.  Therefore, it is believed that the consumer would be expected to differentiate between the two types of services offered being one is for the rental of equipment and the other for maintenance and/or repair of equipment.

Registrant's mark is strictly limited to the construction business in that the description includes the maintenance and/or repair of construction equipment.  Applicant's services provided under the mark are not restricted solely to the construction business and are used for numerous jobs unrelated to the construction business.  Several examples consist of;  lifts and/or booms are used for changing light bulbs in factories or at stadiums for athletic games, cutting down or topping trees, electrical work performed on power lines, utility companies repair and or new-service work, window washing on buildings, etc.  As provided, there are many areas in which a lift or a boom can be used other than being limited to the construction field.  Typically, one who needs to rent a bulldozer or a backhoe for work on a construction site is unlikely to get confused and ask for a lift or a crane instead.  Additionally, a consumer needing to install a portable television camera at a sporting event would not likely contact a company that offers maintenance and/or repair for a backhoe and would likely contact a company that offers rental of such equipment.

Finally, the conditions under which and to whom services are offered serve to lessen any chance of a likelihood of confusion.

Thus, Applicant believes that Applicant has successfully overcome the second prong of the likelihood of confusion analysis.

Having fully addressed the Examining Attorney's concerns, Applicant believes that this application is presently in condition for publication forthwith.  Action to this effect is hereby earnestly requested.