| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 76618309 |
| LAW OFFICE ASSIGNED | LAW OFFICE 103 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
The Examining Attorney refused registration of Standard Pacific Corp.'s (the "Applicant's") pending mark THE ROAD HOME (the "Applicant's Mark"), finding a likelihood of confusion between the ROADHOME mark owned by Tarver Sales Corp. (the "Tarver Mark"). Applicant steadfastly believes that there is no likelihood of confusion between Applicant's Mark and the Tarver Mark. The factors to determine a likelihood of confusion in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) include the similarity of the marks, in their entireties, as to appearance, sound, connotation and commercial impression; dissimilarity of the goods/services; the buyers to whom sales are made; the nature and extent of any actual confusion; and the length of time and conditions under which there has been concurrent use without evidence of actual confusion. Id. at 1361. Marks are Dissimilar in Appearance, Sound, Connotation and Commercial Impression Applicant's Mark and the Tarver Mark are different with respect to appearance, sound, connotation and commercial impression. The Tarver Mark is one word, namely ROADHOME, whereas Applicant's Mark is three words, namely THE ROAD HOME. According to the Court in DuPont, 476 F. 2d at 1361, the similarity or dissimilarity of marks is determined by considering the appearance, sound, connotation and commercial impression created by the marks in their entireties. Although more weight can be given to a particular dominant portion of a mark, it is clear that the general rule is that marks need to be compared in their entireties and not dissected. The Court of Appeals for the Federal Circuit has provided the following guidance with regard to determining likelihood of confusion: "The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used (citations omitted). It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark (footnote omitted). In re National Data Corp., 224 U.S.P.Q. 749, 750-751 (Fed. Cir. 1985). Accordingly, when the Tarver Mark and Applicant's Mark are compared in their entireties, they are not confusingly similar. Specifically, the Tarver Mark combines the words "road" and "home" to create one word with two syllables. Applicant's Mark contains three words with three syllables. The differences in the pronunciation and appearance create phonetically and visually different marks. In addition, the Tarver Mark creates a connotation of a specific location or place whereas Applicant's Mark gives the connotation of the path or road to take to get to your home. In other words, The Road Home is the road you take to get to your new home , as opposed to your specific location being a "roadhome." Thus, both marks contain very distinct and different connotations. Consumers are aware of the use of similar marks in the marketplace when it involves significant financial commitment in the same industry even when they share a dominant term. See e.g., First Savings Bank, F.S.B. v. First Bank System, Inc., 101 F.3d 645 (10th Cir. 1996) (no likelihood of confusion between FIRSTBANK and FIRST BANK SYSTEM); Sun Banks of Florida, Inc. v. Sun Federal Savings and Loan Association, 651 F.2d 311 (5th Cir. 1981) (no likelihood of confusion between SUN FEDERAL SAVINGS AND LOAN ASSOCIATION and SUNBANKS & Design). In the present case, the marks share the words "road" and "home," however, these similarities are not enough to create visual confusion in the marketplace. Dissimilarity of the Goods/Services The second DuPont factor is the "similarity or dissimilarity and nature of the goods or services as described in an application of registration or in connection with which a prior mark is used." See DuPont, 476 F.2d at 1361. As stated in the TMEP, "if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely." TMEP 1207.01(a)(i). In Local Trademarks Inc. v. The Handy Boys, Inc., the identical marks of LITTLE PLUMMER for liquid drain opener, and opposer's mark of advertising services marketed to plumber contractors were found to be unrelated. 16 U.S.P.Q. 2d 1156 (T.T.A.B. 1990). The Trademark Trial and Appeal Board (the "TTAB") explained that although plumbing services and liquid drain cleanser were both related to plumbing, the services and goods were so different that confusion was not likely even with the identical mark. Id. at 1157-58. In the present case, the amended recitation of services for Applicant's Mark is "residential homebuyer program to assist homebuyers with purchasing a new home, namely, providing assistance with paperwork, financial questions, and coordination of the options selection throughout the home buying process" and "residential and commercial building construction; land development services, namely planning and laying out of residential and commercial communities." See U.S. Serial No. 76/618,309. The recitation of goods for the Tarver Mark are "metal modular housing." See U.S. Registration No. 2,336,636. The goods offered under the Tarver Mark specifically relate to modular housing made out of metal which is a much lower cost than standard brick and mortar houses/buildings. In contrast, Applicant provides a homebuyer program and residential and commercial construction, planning and laying out of residential and commercial communities. Standard Pacific is building in 31 metro markets in California, Florida, Arizona, the Carolinas, Texas, Colorado and Nevada. Their broad product range goes from under $100,000 to over $2 million serving first-time, move-up and luxury homebuyers. None of the homes or buildings offered under THE ROAD HOME mark are modular housing, they are all stand alone homes or buildings built with quality craftsmanship according to industry standards. Given the notoriety of the Applicant and the enormous differences in the goods and services offered by Applicant's Mark and the Tarver Mark, there is absolutely no likelihood of confusion. Customer Care and Sophistication The care and sophistication of the purchasers must be considered in a case such as this where expensive goods/services are being offered. Consumers of homes and housing options will use a higher degree of care. Several courts have found that the "reasonably prudent person" standard is elevated to the standard of "discriminating purchaser" when purchasers regarding "expensive" goods are involved. See McCarthy on Trademarks Section 23.96 and L. J. Mueller Furnace Co. v. United Conditioning Corp., 222 F.2d 755, 106 U.S.P.Q. 112 (C.C.P.A. 1955). It is reasonable to assume that when large amounts of money are involved for residential and/or commercial housing arrangements, consumers will use a much higher degree of care than when purchasing low cost goods/services. Typically, the degree of inquiry by consumers is very thorough and would preclude confusion as to the source of the goods/services. In the present case, consumers of the residential and commercial housing market would fall under this category of a higher degree of care and sophistication removing any likelihood of confusion. No Actual Confusion According to the records, the Tarver Mark has been in use since May 4, 1998 and Applicant's Mark has been in use since June 16, 2001. According to DuPont, 476 F.2d at 1361, the determination of whether a likelihood of confusion exists can also consider the nature and extent of any actual confusion between the marks at issue and the length of time and conditions under which there has been concurrent use without evidence of actual confusion. In the present case, there has been no evidence of actual confusion between Applicant's Mark and the Tarver Mark. Applicant's Mark and the Tarver Mark have been in concurrent use for five (5) years without any evidence of actual confusion. Accordingly, this contributes to the evidence that the marks are not confusingly similar. Conclusion In summary, Applicant believes THE ROAD HOME mark is not confusingly similar to the Tarver Mark. Therefore, in light of the above arguments, the Applicant's Mark is meaningfully distinguishable from the Tarver Mark, which negates any likelihood of confusion. |
|
| GOODS AND/OR SERVICES SECTION (036)(current) | |
| INTERNATIONAL CLASS | 036 |
| DESCRIPTION | |
| Residential homebuyer program to assist homebuyers with purchasing a new home | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 06/16/2001 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/16/2001 |
| GOODS AND/OR SERVICES SECTION (036)(proposed) | |
| INTERNATIONAL CLASS | 036 |
| DESCRIPTION | |
| Residential homebuyer program to assist homebuyers with purchasing a new home, namely, providing assistance with paperwork, financial questions, and coordination of the options election throughout the home buying process. | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 06/16/2001 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/16/2001 |
| GOODS AND/OR SERVICES SECTION (037)(current) | |
| INTERNATIONAL CLASS | 037 |
| DESCRIPTION | |
| Residential homebuyer program to assist homebuyers with purchasing a new home; residential and commercial building construction; and land development services, namely planning and laying out of residential and commercial communities | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 06/16/2001 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/16/2001 |
| GOODS AND/OR SERVICES SECTION (037)(proposed) | |
| INTERNATIONAL CLASS | 037 |
| DESCRIPTION | |
| Residential and commercial building construction; and land development services, namely planning and laying out of residential and commercial communities | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 06/16/2001 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/16/2001 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /david a. segal/ |
| SIGNATORY NAME | David A. Segal |
| SIGNATORY POSITION | Attorney |
| SIGNATURE DATE | 05/26/2006 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri May 26 15:01:00 EDT 2006 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0060526150100526884-76618 309-3328e9942c0d1f619294e e0eb2b129f628-N/A-N/A-200 60526144823717236 |
| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
The Examining Attorney refused registration of Standard Pacific Corp.'s (the "Applicant's") pending mark THE ROAD HOME (the "Applicant's Mark"), finding a likelihood of confusion between the ROADHOME mark owned by Tarver Sales Corp. (the "Tarver Mark").
Applicant steadfastly believes that there is no likelihood of confusion between Applicant's Mark and the Tarver Mark. The factors to determine a likelihood of confusion in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) include the similarity of the marks, in their entireties, as to appearance, sound, connotation and commercial impression; dissimilarity of the goods/services; the buyers to whom sales are made; the nature and extent of any actual confusion; and the length of time and conditions under which there has been concurrent use without evidence of actual confusion. Id. at 1361.
Marks are Dissimilar in Appearance, Sound, Connotation and Commercial Impression
Applicant's Mark and the Tarver Mark are different with respect to appearance, sound, connotation and commercial impression. The Tarver Mark is one word, namely ROADHOME, whereas Applicant's Mark is three words, namely THE ROAD HOME. According to the Court in DuPont, 476 F. 2d at 1361, the similarity or dissimilarity of marks is determined by considering the appearance, sound, connotation and commercial impression created by the marks in their entireties. Although more weight can be given to a particular dominant portion of a mark, it is clear that the general rule is that marks need to be compared in their entireties and not dissected. The Court of Appeals for the Federal Circuit has provided the following guidance with regard to determining likelihood of confusion: "The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used (citations omitted). It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark (footnote omitted). In re National Data Corp., 224 U.S.P.Q. 749, 750-751 (Fed. Cir. 1985).
Accordingly, when the Tarver Mark and Applicant's Mark are compared in their entireties, they are not confusingly similar. Specifically, the Tarver Mark combines the words "road" and "home" to create one word with two syllables. Applicant's Mark contains three words with three syllables. The differences in the pronunciation and appearance create phonetically and visually different marks. In addition, the Tarver Mark creates a connotation of a specific location or place whereas Applicant's Mark gives the connotation of the path or road to take to get to your home. In other words, The Road Home is the road you take to get to your new home , as opposed to your specific location being a "roadhome." Thus, both marks contain very distinct and different connotations.
Consumers are aware of the use of similar marks in the marketplace when it involves significant financial commitment in the same industry even when they share a dominant term. See e.g., First Savings Bank, F.S.B. v. First Bank System, Inc., 101 F.3d 645 (10th Cir. 1996) (no likelihood of confusion between FIRSTBANK and FIRST BANK SYSTEM); Sun Banks of Florida, Inc. v. Sun Federal Savings and Loan Association, 651 F.2d 311 (5th Cir. 1981) (no likelihood of confusion between SUN FEDERAL SAVINGS AND LOAN ASSOCIATION and SUNBANKS & Design). In the present case, the marks share the words "road" and "home," however, these similarities are not enough to create visual confusion in the marketplace.
Dissimilarity of the Goods/Services
The second DuPont factor is the "similarity or dissimilarity and nature of the goods or services as described in an application of registration or in connection with which a prior mark is used." See DuPont, 476 F.2d at 1361. As stated in the TMEP, "if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely." TMEP 1207.01(a)(i). In Local Trademarks Inc. v. The Handy Boys, Inc., the identical marks of LITTLE PLUMMER for liquid drain opener, and opposer's mark of advertising services marketed to plumber contractors were found to be unrelated. 16 U.S.P.Q. 2d 1156 (T.T.A.B. 1990). The Trademark Trial and Appeal Board (the "TTAB") explained that although plumbing services and liquid drain cleanser were both related to plumbing, the services and goods were so different that confusion was not likely even with the identical mark. Id. at 1157-58.
In the present case, the amended recitation of services for Applicant's Mark is "residential homebuyer program to assist homebuyers with purchasing a new home, namely, providing assistance with paperwork, financial questions, and coordination of the options selection throughout the home buying process" and "residential and commercial building construction; land development services, namely planning and laying out of residential and commercial communities." See U.S. Serial No. 76/618,309. The recitation of goods for the Tarver Mark are "metal modular housing." See U.S. Registration No. 2,336,636. The goods offered under the Tarver Mark specifically relate to modular housing made out of metal which is a much lower cost than standard brick and mortar houses/buildings. In contrast, Applicant provides a homebuyer program and residential and commercial construction, planning and laying out of residential and commercial communities. Standard Pacific is building in 31 metro markets in California, Florida, Arizona, the Carolinas, Texas, Colorado and Nevada. Their broad product range goes from under $100,000 to over $2 million serving first-time, move-up and luxury homebuyers. None of the homes or buildings offered under THE ROAD HOME mark are modular housing, they are all stand alone homes or buildings built with quality craftsmanship according to industry standards. Given the notoriety of the Applicant and the enormous differences in the goods and services offered by Applicant's Mark and the Tarver Mark, there is absolutely no likelihood of confusion.
Customer Care and Sophistication
The care and sophistication of the purchasers must be considered in a case such as this where expensive goods/services are being offered. Consumers of homes and housing options will use a higher degree of care. Several courts have found that the "reasonably prudent person" standard is elevated to the standard of "discriminating purchaser" when purchasers regarding "expensive" goods are involved. See McCarthy on Trademarks Section 23.96 and L. J. Mueller Furnace Co. v. United Conditioning Corp., 222 F.2d 755, 106 U.S.P.Q. 112 (C.C.P.A. 1955). It is reasonable to assume that when large amounts of money are involved for residential and/or commercial housing arrangements, consumers will use a much higher degree of care than when purchasing low cost goods/services. Typically, the degree of inquiry by consumers is very thorough and would preclude confusion as to the source of the goods/services. In the present case, consumers of the residential and commercial housing market would fall under this category of a higher degree of care and sophistication removing any likelihood of confusion.
No Actual Confusion
According to the records, the Tarver Mark has been in use since May 4, 1998 and Applicant's Mark has been in use since June 16, 2001. According to DuPont, 476 F.2d at 1361, the determination of whether a likelihood of confusion exists can also consider the nature and extent of any actual confusion between the marks at issue and the length of time and conditions under which there has been concurrent use without evidence of actual confusion. In the present case, there has been no evidence of actual confusion between Applicant's Mark and the Tarver Mark. Applicant's Mark and the Tarver Mark have been in concurrent use for five (5) years without any evidence of actual confusion. Accordingly, this contributes to the evidence that the marks are not confusingly similar.
Conclusion
In summary, Applicant believes THE ROAD HOME mark is not confusingly similar to the Tarver Mark. Therefore, in light of the above arguments, the Applicant's Mark is meaningfully distinguishable from the Tarver Mark, which negates any likelihood of confusion.