Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

---

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77011267 has been amended as follows:

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

Applicant, by and through its undersigned attorneys, hereby files its Response to the Office Action.  Reconsideration of the present application is respectfully requested in view of the following amendment and remarks:

AMENDMENT

Disclaimer

Please insert the following disclaimer into the application:

 

“No claim is made to the exclusive right to use the terms “RESIDENCE CLUB” apart from the mark as shown.”

 

REMARKS

Disclaimer

 

The Examining Attorney found the wording “Residence Club” in the mark “merely descriptive because it describes the subject matter of applicant’s services…”  The Examining Attorney has requested that Applicant disclaim exclusive rights to the wording “Residence Club.”  Pursuant to the request of the Examining Attorney and without waiver of any common law rights that might accrue in the future, Applicant has amended the application to disclaim exclusive rights to the words “Residence Club” apart from the mark as shown.

 

Likelihood of Confusion Refusal Under Section 2(d)

The Examining Attorney has initially refused registration of Applicant’s mark, GRAND LUXXE RESIDENCE CLUB, under Section 2(d) of the Trademark Act, stating that Applicant’s mark, when applied to Applicant’s services, so resembles the mark GRANDLUX VACATIONS in U.S. Registration No. 3,034,816, as to be likely to cause confusion, to cause mistake, or to deceive.  Applicant respectfully submits that the differences in the marks, and the differences in the services offered under the marks, combined with the weakness of the common elements of the cited mark, all preclude a likelihood of confusion.

A.                Confusion is Unlikely Where, as Here, the Common Element is Weak

It is well understood that when the common element shared by two marks is “weak,” confusion is often unlikely to occur.  See e.g., In re Bed & Breakfast Registry, 229 USPQ 818 (Fed. Cir. 1986) (No likelihood of confusion between BED AND BREAKFAST REGISTRY for “making lodging reservations for others in private homes” and BED AND BREAKFAST INTERNATIONAL for “room booking agency service” where record showed large numbers of marks containing the phrase “bed and breakfast.”); see also Texas Dairy Queen Operators Council v. The Feed Store, Inc., 1 USPQ.2d 1804, 1804-09 (N.D. Tex 1986).  As Professor McCarthy observes, “A portion of a mark may be ‘weak’ in the sense that such portion is… in common use by many other sellers in the market.” 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (“McCarthy”) §12:48 at 23-129 (4^th ed. 2000).  Indeed, as a general rule, a mark which is used in a marketplace having numerous similar marks on similar goods is one of only a crowd of marks.  In such a crowd, customers are not likely to be confused between any two of the crowd and have learned to carefully pick out one from the other.  As explained by the Trademark Trial and Appeal Board in a case involving stripe and bar designs on athletic shoes:

In view of the record of the present case, there can be little doubt concerning the fact that it is the common practice among the manufacturers of athletic shoes to place various stripe and bar designs on the sides of their respective shoes as a means of indicating the source of such product and/or as a decorative feature thereof.  However, this complete saturation of the market with somewhat similar stripe and bar designs leave applicant, registrant and all other manufacturers of athletic shoes engaging in such practice with marks that are extremely weak and certainly entitled to only a very narrow and limited scope of protection… This means that competitors in this field may come closer to such weak marks without violating the owner’s rights therein than would be the case with a stronger mark.

 

In re Lucky Co., 209 USPQ 422, 423 (TTAB 1980). 

Here, the common elements of the marks at issue, namely, the terms GRAND and LUX or related derivatives such as LUXE or LUXURY (as Lux is generally an abbreviation for luxury), are used by many other sellers in the market for differing goods and services.  Indeed, a search of the PTO’s TESS database reveals numerous registrations and published applications for marks including the term GRAND or the terms LUXXE, LUXE, LUX, or LUXURY for services which are similar to Applicant’s services and to the services of the cited registration.  A few of the marks which begin with the term GRAND as  reflected in the PTO records include the following:

MARK	U.S. APP. or REG. NO.	SERVICES
GRAND RESORT PROPERTIES	76/660,977	Class 36 services relating to vacation real estate properties
GRAND LUXURY PROPERTIES	78/930,575	Real estate brokerage, leasing and investment, Class 36
GRAND CROWN LEISURE	2,925,958	Travel agency services, etc., Class 43
GRAND HOSPITALITY	2,613,367	Hotel services, Class 42
GRAND HOTEL	1,250,067	Hotel and restaurant services, Class 42
GRAND GATEWAY HOTEL	76/663,332	Hotel and resort hotel services, Class 43
GRAND CIRCLE TRAVEL	2,616,634	Travel agency services, Class 42
GRAND AMERICA HOTEL	2,528,020	Hotel and restaurant services, Class 42
GRAND MAYAN	3,230,402	Real estate time-sharing services, Class 36
GRAND WAIKIKIAN	78/804,477	Vacation real estate time-sharing services, Class 36 and hotel services, Class 43
GRAND PACIFIC PALISADES	2,360,567	Vacation real estate time-sharing, Class 36
GRAND ESCAPES	3,118,268	Travel agency services, etc. in Class 39
GRAND EXPEDITIONS	2,378,274	Travel agency services, etc. Class 39
GRAND AMERICAN HOTELS AND RESORTS	78/526,314	Hotel and lodging services and related travel agency services, Class 43
GRAND RIVER CRUISES	3,178,724	Travel agency services, etc., Class 39
GRAND TRADITION HOTELS	1,514,951	Hotel services, Class 42
GRAND HERITAGE HOTEL GROUP and Design	3,099,018	Hotel and restaurant services, etc. in Class 43
GRAND BAHAMA VACATIONS	2,627,129	Hotel reservation services, Class 42 and Travel related services, Class 39
GRAND REGINA LOS CABOS and Design	2,936,976	Vacation time-sharing, Class 36 and hotel services, Class 43

 

Similarly, the terms LUX, LUXE, and LUXURY are similarly diluted in connection with services related to those offered by Applicant and those offered by the cited registrant.  Application notes that there do not appear to be any other uses of LUXXE with the double ‘x’ as the use of two x’s has a uniqueness and suggestive impression that separates it from the other Lux derivatives.  A few of the marks which include the term LUX or a LUX derivative which are reflected in the PTO records include the following:

MARK	U.S. APP. or REG. NO.	SERVICES
LUXE	2,425,916	Hotel services, Class 42
LUXE	79/013,480	Travel and Tourist information services and related programs and guidebooks, Classes 16 and 41
LUXE VEGAS	78/978,728	Resort hotel and restaurant services, etc. Class 43
LUXURIATE HOTELS	78/931,035	Hotel services, etc. in Class 43
LUXRES	3,203,638	Travel reservation services in Classes 39 and 43
LUXE REAL ESTATE GROUP and Design	3,167,958	Vacation real estate time-sharing, etc. in Class 36
LUXE SOURCE	77/243,405	Travel and real estate magazines, Class 16
LUXURY ADVENTURE GETAWAY	3,115,407	Online rental of vacation real estate, Class 36
LUXURY TOUR SPECIALISTS and Design	2,288,068	Travel agency services, etc., Class 39
LUXURY CRUISE SPECIALISTS and Design	2,328,026	Travel agency services, etc., Class 39
LUXURY PROPERTY	2,185,180	Vacation information services, etc. in Class 42
THE LUXURY COLLECTION	2,033,783	Hotel, resort, restaurant and related services, Class 42

 

Applicant respectfully submits that in view of the numerous uses of the term “GRAND” for time-sharing, hotel and travel agency services, and in view of the numerous uses of a derivative of the term LUX for such services, the resulting composite marks are weak, and that only a slight variation between the marks is necessary to create a different overall commercial impression in the minds of consumers.

Moreover, there is also dilution of marks which include the term GRAND and one of the LUX derivatives.  In particular, a representative sample of some of those applications and registrations with related goods or services are detailed below:

MARK	U.S. APP. or REG. NO.	SERVICES
GRAND LUX	2,857,701	Pillows
GRAND LUXURA	2,327,094	Carpets
GRAND LUX CAFÉ	2,836,742 2,	Restaurant services
GRAND LUXURY PROPERTIES	78/930,575	Real estate brokerage, leasing and investment, Class 36

 

In the present case, Applicant’s mark GRAND LUXXE RESIDENCE CLUB has a different overall commercial impression from the cited registration as discussed in more detail below.  When the differences in the services are factored in with the extremely diluted use of the terms GRAND and LUX, LUXE, and LUXURY, the resulting conclusion is that the consuming public will have learned to distinguish between the various goods and services offered under marks incorporating either or both of these diluted elements, especially when those terms are used on different services.  Thus, there will be no likelihood of confusion.

The mark of the present application, GRAND LUXXE RESIDENCE CLUB, is used for services that differ from the services of the cited registration and from the registrations and application listed above.  While the owner of the mark of the cited registration and of each of the listed applications or registrations may have protectable rights for their particular goods or services, it is clear that marks including GRAND and/or LUXE or LUX or LUXURY should be viewed as generally weak for which the scope of protection is limited to the particular goods and services with which the mark is used.  Given the differences between the services recited in the present application and the goods and services recited in the numerous other registrations and applications, confusion is not likely.

Accordingly, in view of the numerous third party marks that share the element GRAND and/or LUXE or LUX or LUXURY, but for slightly differing goods or services, it is apparent that the consuming public can and does distinguish among the various uses of these types of marks for the differing goods and services marketed under these marks.  Applicant’s use of GRAND LUXXE RESIDENCE CLUB for its particular, recited services is not likely to cause confusion.  The refusal under Section 2(d) should be withdrawn.

B.                 When Considered in their Entirety, The Marks Are Dissimilar

The conclusion that there is no likelihood of confusion is reinforced by proper consideration of the respective marks in their entirety.  As the U.S. Supreme Court has observed: “The commercial impression of a trade-mark is derived from it as a whole, not from its elements separated and considered in detail.”  Estate of Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545-46 (1920).  Potentially conflicting composite marks must be considered by viewing the marks as a whole, rather than dissecting the marks into their component parts.  See 3 McCarthy, supra, §23:41 at 23-112 through 23-115.  This anti-dissection rule prohibits a focus solely upon an individual feature of a mark when determining a likelihood of confusion.  See Franklin Mint Corp. v. Master Fmg. Co., 667 F.2d 1005 (CCPA 1981).

The Court of Appeals for the Federal Circuit illustrated the proper means of considering the likelihood of confusion between two marks in In re Hearst Corp., 982 F.2d 493 (Fed. Cir. 1992).  In Hearst, the court concluded that the Trademark Trial and Appeal Board (the “Board”) erred in failing to afford sufficient weight to the presence of the word “GIRL” in the applicant’s mark VARGA GIRL when it considered the likelihood of confusion between VARGA GIRL and the registered mark VARGAS.  Id. at 494.  The Court observed that, although “VARGA” and “VARGAS” were similar, “the marks must be considered in their entireties, and all components thereof must be given appropriate weight.”  Id. (citation omitted); see also Opryland USA, Inc. v. Great American Music Show, Inc., 970 F.2d 847 (Fed. Cir. 1982).  The Federal Circuit observed that “[b]y stressing the portion ‘VARGA’ and diminishing the portion ‘GIRL,’ the Board inappropriately changed the mark.”  In re Hearst Corp., 982 F.2d at 494 (emphasis added).  Concluding that the marks, when considered in their entireties, were “sufficiently different in sound, appearance, connotation, and commercial impression to negate likelihood of confusion in terms of § 2(d) of the Lanham Act,” the Federal Circuit reversed the Board’s refusal of registration.  Id.

The Board applied similar logic in considering the likelihood of confusion between the mark LEAN CUISINE for frozen prepared entrees and the mark LEAN LIVING, also for frozen entrees.  Stouffer Corp. v. Health Valley Natural Foods, Inc., 1 USPQ.2d 1900 (TTAB 1986).  The Board observed that LEAN CUISINE and LEAN LIVING, although applied to identical goods that were marketed in identical channels of trade, “are markedly different in sound and appearance…”  Id. at 1903.

Analogous situations are contemplated in the TMEP which indicates that additions or deletions to a mark may be sufficient to avoid a likelihood of confusion if “the matter common to the marks is not likely to be perceived by purchasers as distinguishing source due to its mere descriptiveness or the commonness of its use.” TMEP §1207.01(b)(iii). 

In the present case, Applicant’s mark GRAND LUXXE RESIDENCE CLUB, when considered in its entirety, is sufficiently different from the mark GRANDLUX VACATIONS as to preclude a likelihood of confusion to the relevant consumers.  In particular, Applicant’s mark uses GRAND and LUXXE as two separate words and places a double “x” in the word “Luxxe,” and adds an “e” to the end of the word.  Significantly, the use of a double “x” provides a differing commercial impression between the marks.  Further, while the terms Lux, Luxe and Luxury are highly diluted for related services, the spelling Luxxe is not diluted as there do not appear to be any related uses of the term LUXXE, thus providing strength to this element of the mark.  In addition, Applicant’s mark uses the term RESIDENCE CLUB as compared to VACATIONS.  The wording “Residence Club” conjures up an entirely different commercial impression from “vacations.”  Indeed, a “residence club” suggests concepts such as a long term residence or a homeowner’s association, as compared to the temporary stigma of “vacations.”  Moreover, the differences in the marks provide visual and aural differences that consumers will look to in determining the source of services.  Hence, these two marks differ sufficiently in sight, sound, and connotation as to preclude a likelihood of confusion, especially given the dilution of the common portion of the marks.

C.        Differences in Services For The Diluted Marks Preclude a Likelihood of Confusion

 

Just as the respective marks differ sufficiently to preclude confusion, so, too, the differences in the services offered by Applicant and those offered by the cited registrant also preclude a likelihood of confusion.  The Examining Attorney suggests that the services offered under Applicant’s mark and the services offered under the cited registered mark are closely related such that it “could give rise to the mistaken belief that the services come from a common source.”  However, the inquiry as to whether a mark proposed for registration is likely to be confused with a cited mark is not whether the goods or services sold under the marks could be sold by the same source, but rather whether the effect of the mark when applied to the services of the application is likely to cause confusion as to the source of the services.  See In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  The focus is not on “mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal.”  Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 717, 21 USPQ.2d 1388 (Fed. Cir. 1992).

“Simply occupying the same field does not necessarily render products [or services] proximate.”  Giorgio Beverly Hills, Inc. v. Revlon Consumer Prods. Corp., 869 F.Supp. 176, 183, 33 USPQ.2d 1465 (SDNY 1994).  Of more relevance is the nature of the consumer and the channels of trade of both products.”  Id. (finding CHARLIE RED for fragrance sold in mass department stores found not likely to be confused with RED for fragrance sold in more exclusive stores); see also Electronic Design, 954 F.2d 713 (finding E.D.S. for battery chargers and power supplies sold to customers in the automotive merchandising and communications fields not likely to be confused with EDS for computer programming and telecommunications services sold to some of the same companies); McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1139, 202 USPQ 81 (2d 1979) (finding DRIZZLE for women’s coats not likely to be confused with the nearly identical DRIZZLER for golf jackets).

In the present case, Applicant’s primary services include the offering of time-share properties and related services, with Applicant’s target consumers being individuals and companies purchasing high end time share properties. 

In comparison, the services recited in connection with the registration for the mark GRANDLUX VACATIONS owned by Grandlux Vacations Corporation (“GVC”) include travel agency services, namely making reservations and bookings for transportation, cruises, tours, car rentals and yacht and aircraft charters.  As indicated on GVC’s website, GVC primarily offers travel reservation services, but does not appear to offer time-share type services.  Applicant acknowledges that some extremely large and famous hotel chains have been able to “bridge the gap” and offer both travel agency related services and time-share options, such as Marriott, Wyndham, Hilton and Hyatt.  Out of the myriad of travel agency businesses and real estate/time share businesses that exist in the marketplace, however, the entities that offer both appear to be in a very small and select minority.  It therefore requires substantial speculation to jump to the conclusion that a consumer seeing use of a name with elements as diluted as Grandlux Vacations for a travel agency would be confused by use of the name GRAND LUXXE RESIDENCE CLUB for time share sales.  No likelihood of confusion exists in this case and the refusal to register under Section 2(d) should be withdrawn.

CONCLUSION

The differences between the marks, the differences in the services offered under the marks, and the resulting differences in the intended consumers, all coupled with the weakness of the only shared element, preclude a finding of likelihood of confusion.  Applicant respectfully requests that the refusal to register under Section 2(d) be withdrawn, and that this application be allowed to proceed to publication.

The present Response is intended to address all issues outlined by the Examining Attorney.  If there is an issue that can be resolved by an Examiner’s Amendment, the Examining Attorney is invited to contact either of Applicant’s attorneys William D. Raman at 512-473-2550 x. 101 or Sherri L. Eastley at 512-473-2550 x. 103.

ADDITIONAL STATEMENTS
Disclaimer
"No claim is made to the exclusive right to use RESIDENCE CLUB apart from the mark as shown."

SIGNATURE(S)
Response Signature
Signature: /Sherri L. Eastley/     Date: 09/12/2007
Signatory's Name: Sherri L. Eastley
Signatory's Position: Attorney of record

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 applicant'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 applicant in this matter: (1) the applicant 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 applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant'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: 77011267
Internet Transmission Date: Wed Sep 12 19:13:23 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2007091219132346
3634-77011267-400b974af1124631f4d5ece43a
9670d58c-N/A-N/A-20070912190630324285