| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77008821 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
OFFICE ACTION RESPONSE FOR EMBASSY (App. No. 77008821)
LIKELIHOOD OF CONFUSION The Examining Attorney has refused registration of the present application under Section 2(d) of the Trademark Act contending that, when used in connection with the goods identified in the application, Applicant’s mark EMBASSY, Application No. 77008821 (App. ‘821), is likely to be confused with Registrant’s mark EMBASSY, U.S. Registration No. 2,856,934 (Reg. ‘934). For the reasons set forth below, the Applicant respectfully requests that the examining attorney withdraw the Section 2(d) refusal, as there is no likelihood of confusion between App. ‘821 and Reg. ‘934. The factors that are relevant to an Examining Attorney’s determination of likelihood of confusion are set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973); TMEP 1207.01. Reserving all rights to make additional arguments in the future, Applicant asserts that the following factors strongly lead to the conclusion that there is no likelihood of confusion between its mark and Registrant’s:
1) Applicant’s and Registrant’s goods are dissimilar; and
2) The ordinary trade channels in which the respective goods are sold are dissimilar.
The Applicant’s and Registrant’s Goods are Dissimilar. The Examining Attorney has refused registration, in part, because he has determined that the Applicant’s goods are closely related to the Registrant’s goods. Applicant asserts that a likelihood of confusion is not present between App. ‘821 and Reg. ‘934 because the goods for Applicant’s mark and Registrant’s mark are not closely related. Registrant’s mark relates to the organization of clothing, namely, tie racks, belt racks, valet rods and closet organizers. In contrast, Applicant’s mark is not related to the organization and storage of clothing. Rather, Applicant’s mark is used solely in connection with kitchen and bathroom cabinets. Therefore, in order to further clarify Applicant’s goods and distinguish them from Registrant’s, Applicant has amended its identification of goods from “Cabinets” to “Kitchen and bathroom cabinets”. Many of the registrations and webpages the Examining Attorney has cited involve goods related to the organization of clothing (i.e., closet organization and furniture for clothing storage). The amendment of the identification for App. ‘821 distinguishes these goods. Applicant contends that clothing storage accessories and clothing storage furniture are not closely related to kitchen and bathroom cabinetry and therefore a likelihood of confusion is not present between Applicant’s and Registrant’s marks.
The Ordinary Trade Channels in Which the Respective Goods are Sold are Dissimilar. The Examining Attorney has refused registration, in part, because he has determined that the conditions surrounding the marketing of App. ‘821 and Reg. ‘934 are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In light of the amended identification for App. ‘821, Applicant contends that both marks would not ordinarily be encountered by the same purchasers. 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. See, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field). TMEP § 1207.01(a)(i) The clarifying amendment to the identification in App. ‘821 significantly lessens the “relatedness” of the goods perceived by the Examining Attorney. Separate retail outlets exist for closet organization items, such as California Closets and The Closet Factory (See Evidence A for attached list of retail locations for The Closet Factory.) Conversely, kitchen and bathroom cabinets are typically sold through networks of authorized Dealers (See Evidence B for attached printouts of dealer locator pages from two cabinet manufacturers.) While Applicant acknowledges that its goods and one or more of Registrant’s goods may be sold in home improvement stores, the mere fact that goods are sold in the same store does not establish that there is a likelihood of confusion. Federated Foods, Inc., d.b.a. Hy-Top Products Division v. Fort Howard Paper Company., 544 F.2d 1098, 192 USPQ (BNA) 24 (C.C.P.A. 1976). (“A wide variety of products, not only from different manufacturers within an industry but also from diverse industries, have been brought together in the modern supermarket for the convenience of the customer. The mere existence of such an environment should not foreclose further inquiry into the likelihood of confusion arising from the use of similar marks on any goods so displayed.”). By examining the websites of home improvement stores, it is clear that Applicant’s goods are indexed and categorized separately from Registrant’s goods. Kitchen cabinets are located in the “Cabinets and Countertops” section of the Lowe’s website, www.lowes.com, and Bath cabinets are located in the “Bath” section of the same website. In contrast, closet organization accessories are located in a separate area of the website entitled “Home Organization”. Similarly, the Home Depot Website, www.homedepot.com, indexes kitchen cabinets in the “Kitchen” section of the website, bathroom cabinets in the “Bath” section of the website, and clothing storage accessories in the “Storage” section of a website. (See Evidence C for attached printouts of Lowes and Home Depot websites.) Given that Applicant’s and Registrant’s goods are located in separate areas of home improvement websites, Applicant asserts that it is not likely that a consumer interested in purchasing clothing storage accessories would encounter kitchen and bathroom cabinetry, and vice versa. Therefore, the relevant public would not expect that clothing storage accessories bearing the EMBASSY mark originate from the same source as kitchen and bathroom cabinetry bearing the EMBASSY mark, or otherwise be confused as the origin of such goods.
Conclusion. The relevant du Pont factors all show that confusion is not likely between the Applicant’s mark and the Registrant’s mark. Thus, Applicant’s EMBASSY mark should be registered and Applicant respectfully requests that the Application proceed to publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) |
\\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0002.JP G |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0003.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0004.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0005.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0006.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0007.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0008.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0009.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0010.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0011.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0012.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0013.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0014.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0015.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0016.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0017.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0018.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0019.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0020.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0021.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0022.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0023.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0024.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0025.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0026.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0027.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0028.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0029.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0030.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0031.JP G | |
| \\TICRS2\EXPORT13\770\088 \77008821\xml1\ROA0032.JP G | |
| DESCRIPTION OF EVIDENCE FILE | printouts of websites |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 020 |
| DESCRIPTION | Cabinets |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/1993 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/1994 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 020 |
| DESCRIPTION | kitchen and bathroom cabinets |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/1993 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/1994 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Juliet P. Castrovinci/ |
| SIGNATORY'S NAME | Juliet P. Castrovinci |
| SIGNATORY'S POSITION | Attorney of Record |
| DATE SIGNED | 08/15/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Aug 15 17:24:34 EDT 2007 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XX.X-200 70815172434896730-7700882 1-380cc771f24a47867ae2617 216b2f2abc-N/A-N/A-200708 15165124442695 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
OFFICE ACTION RESPONSE FOR EMBASSY (App. No. 77008821)
LIKELIHOOD OF CONFUSION
The Examining Attorney has refused registration of the present application under Section 2(d) of the Trademark Act contending that, when used in connection with the goods identified in the application, Applicant’s mark EMBASSY, Application No. 77008821 (App. ‘821), is likely to be confused with Registrant’s mark EMBASSY, U.S. Registration No. 2,856,934 (Reg. ‘934). For the reasons set forth below, the Applicant respectfully requests that the examining attorney withdraw the Section 2(d) refusal, as there is no likelihood of confusion between App. ‘821 and Reg. ‘934.
The factors that are relevant to an Examining Attorney’s determination of likelihood of confusion are set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973); TMEP 1207.01. Reserving all rights to make additional arguments in the future, Applicant asserts that the following factors strongly lead to the conclusion that there is no likelihood of confusion between its mark and Registrant’s:
1) Applicant’s and Registrant’s goods are dissimilar; and
2) The ordinary trade channels in which the respective goods are sold are dissimilar.
The Applicant’s and Registrant’s Goods are Dissimilar.
The Examining Attorney has refused registration, in part, because he has determined that the Applicant’s goods are closely related to the Registrant’s goods. Applicant asserts that a likelihood of confusion is not present between App. ‘821 and Reg. ‘934 because the goods for Applicant’s mark and Registrant’s mark are not closely related.
Registrant’s mark relates to the organization of clothing, namely, tie racks, belt racks, valet rods and closet organizers.
In contrast, Applicant’s mark is not related to the organization and storage of clothing. Rather, Applicant’s mark is used solely in connection with kitchen and bathroom cabinets. Therefore, in order to further clarify Applicant’s goods and distinguish them from Registrant’s, Applicant has amended its identification of goods from “Cabinets” to “Kitchen and bathroom cabinets”.
Many of the registrations and webpages the Examining Attorney has cited involve goods related to the organization of clothing (i.e., closet organization and furniture for clothing storage). The amendment of the identification for App. ‘821 distinguishes these goods. Applicant contends that clothing storage accessories and clothing storage furniture are not closely related to kitchen and bathroom cabinetry and therefore a likelihood of confusion is not present between Applicant’s and Registrant’s marks.
The Ordinary Trade Channels in Which the Respective Goods are Sold are Dissimilar.
The Examining Attorney has refused registration, in part, because he has determined that the conditions surrounding the marketing of App. ‘821 and Reg. ‘934 are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In light of the amended identification for App. ‘821, Applicant contends that both marks would not ordinarily be encountered by the same purchasers.
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. See, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field). TMEP § 1207.01(a)(i)
The clarifying amendment to the identification in App. ‘821 significantly lessens the “relatedness” of the goods perceived by the Examining Attorney. Separate retail outlets exist for closet organization items, such as California Closets and The Closet Factory (See Evidence A for attached list of retail locations for The Closet Factory.) Conversely, kitchen and bathroom cabinets are typically sold through networks of authorized Dealers (See Evidence B for attached printouts of dealer locator pages from two cabinet manufacturers.)
While Applicant acknowledges that its goods and one or more of Registrant’s goods may be sold in home improvement stores, the mere fact that goods are sold in the same store does not establish that there is a likelihood of confusion. Federated Foods, Inc., d.b.a. Hy-Top Products Division v. Fort Howard Paper Company., 544 F.2d 1098, 192 USPQ (BNA) 24 (C.C.P.A. 1976). (“A wide variety of products, not only from different manufacturers within an industry but also from diverse industries, have been brought together in the modern supermarket for the convenience of the customer. The mere existence of such an environment should not foreclose further inquiry into the likelihood of confusion arising from the use of similar marks on any goods so displayed.”).
By examining the websites of home improvement stores, it is clear that Applicant’s goods are indexed and categorized separately from Registrant’s goods. Kitchen cabinets are located in the “Cabinets and Countertops” section of the Lowe’s website, www.lowes.com, and Bath cabinets are located in the “Bath” section of the same website. In contrast, closet organization accessories are located in a separate area of the website entitled “Home Organization”. Similarly, the Home Depot Website, www.homedepot.com, indexes kitchen cabinets in the “Kitchen” section of the website, bathroom cabinets in the “Bath” section of the website, and clothing storage accessories in the “Storage” section of a website. (See Evidence C for attached
printouts of Lowes and Home Depot websites.) Given that Applicant’s and Registrant’s goods are located in separate areas of home improvement websites, Applicant asserts that it is not likely that a consumer interested in purchasing clothing storage accessories would encounter kitchen and bathroom cabinetry, and vice versa. Therefore, the relevant public would not expect that clothing storage accessories bearing the EMBASSY mark originate from the same source as kitchen and bathroom cabinetry bearing the EMBASSY mark, or otherwise be confused as the origin of such goods.
Conclusion.
The relevant du Pont factors all show that confusion is not likely between the Applicant’s mark and the Registrant’s mark. Thus, Applicant’s EMBASSY mark should be registered and Applicant respectfully requests that the Application proceed to publication.
