Response to Office Action

In view of the foregoing amendment and these remarks, reconsideration of this application is respectfully requested. 

I.          PRIOR PENDING APPLICATION

            In the office action, the examining attorney provided information regarding a prior pending application for HAMILTON MALL, Serial No. 76/512,639, owned by Hamilton Mall, LLC, used with "shopping center services, namely, leasing and management of retail space and promotion of shopping center space," that may be cited against applicant's HAMILTON MARKET mark if it matures into a registration.  Applicant respectfully submits that there is no likelihood of confusion between applicant's mark and the prior pending application because: (a) the consumers who purchase these services are sophisticated, (b) the services travel through separate channels of trade, (c) the marks are sufficiently different, and (d) the services with which the marks are used are sufficiently distinct. 

            In determining whether a likelihood of confusion exists, the examining attorney should consider the factors listed in E.I. Du Pont de Nemours & Co., Inc., 476 F.2d 1357 (C.C.P.A. 1973).  Such factors include the consumers of the respective services and whether such consumers are sophisticated purchasers, the channels of trade through which the services travel, the similarities and differences in the sound and appearance of the marks, and the similarities or dissimilarities of the services with which the marks are used.  Id.  Each factor is to be given its due weight in the likelihood of confusion analysis.  Id.  A proper application of the DuPont factors establishes that there is no likelihood of confusion between applicant's mark and the prior pending application. 

            A.        Sophistication of Consumers

The relevant consumers of the services are sophisticated purchasers who are clearly capable of distinguishing between the respective marks.  Both the Federal Circuit and the Trademark Trial and Appeal Board have recognized that when the relevant consumers are specialized professionals, these consumers are less likely to be confused even in the face of similarities between the marks.  See e.g. Raytheon Co. v. Litton Business Systems, Inc., 169 U.S.P.Q. 438 (T.T.A.B. 1971) (highly experienced and informed business personnel not likely to confuse ROYTRON data processing tape punches and RAYTHEON data processing equipment).  See also Dynamics Research Corp. v. Langenau Mfg. Co., 217 U.S.P.Q. 649 (Fed. Cir. 1983) (knowledgeable corporate purchasing agents not likely to confuse DRC sheet metal fabric and DRC encoders and back gauges for press brakes); Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 U.S.P.Q.2d 1390 (T.T.A.B. 1991) (specialized hospital purchasing agents not likely to confuse HPM medical instruments and HP laboratory and medical instruments).  Similarly, consumers of applicant's leasing services are professionals in the home furnishings industry, and consumers of the Hamilton Mall's shopping center leasing services are experienced shopping center retail merchants.  These sophisticated consumers have expertise leasing space for their needs, and thus, are certainly capable of distinguishing the services provided under the marks.

Moreover, applicant's and Hamilton Mall's leasing services are costly and not purchased on impulse.  See Magnaflux Corp. v. Sonoflux Corp., 109 U.S.P.Q. 313 (C.C.P.A. 1956) ("[O]ther things being equal, confusion is less likely where the [services] are expensive and are purchased after careful consideration than where they are purchased casually.")  Both applicant's and Hamilton Mall's consumers are discriminating, and will choose services only after careful consideration of cost, location, and reputation in the industry.  Based on the sophistication of the consumers and the high cost of the services, confusion between applicant's mark and the prior pending application is greatly reduced. 

            B.        Channels of Trade

            Additionally, the services are provided through distinct channels of trade to distinct consumers.  Both applicant and Hamilton Mall have narrowly restricted the channels of trade through which their services travel, thereby reducing the likelihood of confusion between the marks.  See In re Shoe Works, Inc., 6 U.S.P.Q.2d 1890 (T.T.A.B. 1988) (finding no likelihood of confusion between PALM BAY for women's shoes and PALM BAY for shorts and pants where applicant specified that its shoes would only be sold through its retail shoe stores).  Hamilton Mall has restricted its channels of trade and consumers to retail shopping center merchants.  Retail shopping center merchants, such as shoe, clothing, jewelry, books, accessories, or food stores, seek shopping center space to sell their goods to the general purchasing public.  In contrast, applicant has limited its channels of trade to showrooms for the home furnishings industry.  Those seeking applicant's services sell their goods to home furnishing professionals, not the general public.  As such, there is no likelihood of confusion between the marks.          

            In addition, where the consumers are sophisticated (as here), the Federal Circuit has found no confusion even where the goods or services traveled through the same channels of trade.  See Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713 (Fed. Cir. 1992) (finding no likelihood of confusion between EDS for power supplies and battery chargers and E.D.S. computer services, where goods and services were purchased by same knowledgeable buyers).  The sophistication of the consumers, coupled with the distinct channels of trade through which the services are provided, makes confusion between the marks unlikely. 

            C.        Sound, Appearance, and Commercial of the Marks

            The marks also differ in sound, appearance, and commercial impression.  Under the likelihood of confusion analysis, the examining attorney must examine the marks in their entirety.  See Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400 (C.C.P.A. 1970).  Considered in their entirety, the two marks are different and create a distinct commercial impression.  Both the Federal Circuit and the Trademark Trial and Appeal Board have consistently found that two marks are not confusingly similar if they create different commercial impressions.  See Consolidated Cigar Corp. v. R.J. Reynolds Tobacco Co., 491 F.2d 1265 (C.C.P.A. 1974) (DUTCH MASTERS for cigars, where "masters" conveyed a sophisticated product, not confusingly similar to DUTCH APPLE for pipe tobacco); In re British Bulldog, Ltd., 224 U.S.P.Q. 854 (T.T.A.B. 1984) (PLAYERS shoes, which implies an outdoor durability and style, not confusing to PLAYERS for underwear); see also TMEP § 1207.01 (b)(i).  Similarly, HAMILTON MALL does not convey the same impression as HAMILTON MARKET, based on the distinct impressions created by the words "mall" and "market."  The word "mall" evokes a crowded public place where the general public gathers to shop at retail stores, eat fast food, and attend events like celebrity appearances and book fairs.  In contrast, a "market" gives the impression of an exclusive, sophisticated location with showrooms that are not open to the general public.  Due to the distinct commercial impressions conveyed by the two marks, any likelihood of confusion between the marks is greatly reduced. 

            Also, the marks do not sound the same when spoken.  As discussed above, the words "mall" and "market" are not the same words, nor do they sound the same when spoken.  Applicant's mark contains five syllables, while Hamilton Mall's mark has only four syllables.  The marks are not similar in appearance, thereby reducing confusion between the marks.

            D.        Services Offered under the Marks

            Further reducing any likelihood of confusion between the marks is the fact that the services offered under applicant's mark are sufficiently distinct from the services offered under the cited marks.  Applicant leases showroom space to professionals in the home furnishings industry, while Hamilton Mall promotes, manages, and leases retail space in shopping centers to consumer products stores.  Although these services may seem superficially related, it does not follow that there is a likelihood of confusion between the marks.  See, e.g. Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400 (C.C.P.A. 1970) (although PEAK PERIOD for deodorant and PEAK for dentrifrices were both used with toilet preparations, there was no likelihood of confusion because the goods have different "application and utility;") In re Central Soya Co., Inc., 220 U.S.P.Q. 914 (T.T.A.B. 1984) (holding that POSADA for enchiladas was not likely to be confused with LA POSADA for restaurant services).  As in Colgate, although applicant and Hamilton Mall both provide leasing services, these leasing services do not serve the same purpose or "utility."  The purpose of applicant's services is to lease showroom space so that the home furnishings trade can sell furniture to interior designers and buyers, while the purpose of Hamilton Mall's services is to lease retail space so mass market retailers can sell goods to the general public in a shopping center. 

            Applicant's leasing services are sufficiently dissimilar to Hamilton Mall's services that confusion between the marks is unlikely.             

II.        DISCLAIMER AND CONCLUSION

            Applicant has also amended the description of services.  Considering the amended description of services, the sophisticated purchasers of these expensive services, the appearance, sound, and commercial impression of the marks, and the differences in the services and the channels of trade, confusion is unlikely.  Accordingly, applicant's HAMILTON MARKET mark is registerable.

            The examining attorney also requested a disclaimer of the word "MARKET" apart from the mark as shown.  With the above amendment, applicant has complied with the examining attorney's request.    

            In view of the foregoing, the application is in condition for allowance.  Applicant respectfully requests that the mark be passed to publication.