| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77023022 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Trademark : GOING PLACES Serial Nos. : 77/023,022 Applicant : City of Cleveland Attorney Docket Nos. : 22344/04040
File by TEAS
___________________________________________________________________________
Identification of Services: Please amend the Identification of Services to read as follows:
“Airport services provided in the operation of a city-owned International Airport facility, namely, airport baggage check-in services, airport passenger check-in services, parking garage services, providing services for rental of cars and car rental reservations, providing terminal services for passenger convenience in the nature of restaraunts, restrooms, children play areas, wireless internet access, and video conferencing centers.”
___________________________________________________________________________
Remarks: In response to the Office Action sent by email on March 5, 2007, the Applicant’s undersigned representative respectfully disagrees with the Examining Attorney’s refusal to register the mark on the Principle Register and offers the following remarks.
Refusal to Register on the Basis of Likelihood of Confusion: The Examining Attorney has refused registration on the Principal Register because “the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 2,623,009 as to be likely to cause confusion, to cause mistake, or to deceive.” Applicant respectfully asserts that confusion between Applicant’s mark and the cited mark, owned by AAA Auto Club South, Inc. (hereinafter “Registrant”), and confusion as to source of services provided under these marks, is not likely. In summary, Applicant’s mark will be used in association with specific services related to the operation of a city-owned airport facility, quite unrelated to the services described in Reg. No. 2,623,009 and the services apparently provided by the Registrant in connection with the mark. Therefore, Applicant respectfully requests reconsideration of the Section 2(d) rejection for the following reasons. I. Factors in Evaluating Likelihood of Confusion In evaluating the likelihood of confusion, the Examining Attorney must consider the factors from In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973); TMEP § 1207.01. The following sections include Applicant’s remarks regarding certain DuPont factors that are most relevant to this Office Action. However, other factors may also be applicable to distinguish Applicant’s mark from the cited registration. To that end, the undersigned reserves the right to argue other factors in the future.
II. Relatedness of Applicant’s and Registrant’s Goods/Services as Described or Used In order to establish likelihood of confusion, the Examining Attorney must show the goods or services are related in some manner or that the conditions are such that the goods or services are encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods/services come from a common source. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565 (Fed. Cir. 1984). If the goods of an applicant and the goods of a registrant “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 unlikely.” (emphasis added) TMEP § 1207.01(a)(i), citing, e.g., Quartz Radiation Corp. v. Comm/Scope Co., 1 U.S.P.Q.2d 1668 (TTAB 1986) (QR for co-axial cable not confusingly similar to QR for various products, including lamps and tubes, related to the photocopying field). See also Consumers Petroleum Co. v. Consumers Co. of Illinois, 169 F.2d 153 (7th Cir. 1948); cert. denied, 335 U.S. 902 (1949) (CONSUMERS for fuel oil not confusingly similar to CONSUMERS for coal and wood fuel); Federal Tel. & Radio Corp. v. Federal Television Corp., 180 F.2d 250 (2d Cir. 1950) (FEDERAL for radio supplies not confusingly similar to FEDERAL for televisions sets); Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 236 F.2d 423 (C.C.P.A. 1956) (HURRICANE for outboard motors not confusingly similar to HURRICANE for auto engines); and Pabst Brewing Co. v. Decatur Brewing Co., 284 F. 110 (7th Cir. 1922) (BLUE RIBBON for beer not confusingly similar to BLUE RIBBON for malt extract). The Examining Attorney has stated that because Applicant’s goods and/or services as filed is very broad, “it is presumed that the application encompasses... those in the registrant’s more specific identification.” The Applicant has amended the identification of services so as to eliminate any possible presumption. Specifically, the Applicant has amended the identification of services to read specific airport services provided by a city-owned airport facility. The Registrant’s services are “travel club services; travel information services; arranging travel tours; arranging cruises.” Applicant respectfully asserts that any relationship between Applicant’s and Registrant’s services based on the travel industry alone would not lead to confusion as to the source of the goods. It is respectfully offered that essentially any traveler, experienced or otherwise, would not be confused as to source between a travel institution such as AAA and a single source airport in Cleveland, Ohio. In other words, the undersigned offers that it is highly unlikely a potential consumer of the airport services at Cleveland, Ohio would be confused as to believe the airport services, as listed in the amended identification, are being offered by a AAA office in Tampa, Florida, or any other AAA office for that matter. Consequently, Applicant’s and Registrant’s services are distinguishable and unrelated.
III. Similarity or Dissimilarity of Established, Likely-to-Continue Trade Channels The services associated with the respective marks are not related or marketed in such a way that they would be encountered by the same persons in situations that would create incorrect assumptions regarding origin. Services to be sold under Applicant’s mark will be provided under a single channel of trade on location at the Cleveland city-owned airport facility. Although certain advertising may exist elsewhere to those in other states and countries, the marketing efforts will be directed toward travel to the single location. Applicant performed research to determine whether or not the Registrant is using the registered mark and, if so, in what channels of trade. Applicant’s undersigned representative found only evidence of use of the mark as a travel publication. The publication is marketed on the Registrant’s website. Thus, logic suggests the channels of trade in which Applicant’s and Registrant’s respective goods/services are sold are vastly different. These differences between the channels in which the services are sold and provided further negates any possibility of creating confusion between the source of the services.
IV. Conditions under which and Buyers to whom Sales are Made One factor an Examining Attorney must consider is the conditions under which and buyers to whom sales are made. “Generally, in accessing the likelihood of confusion to the public, the standard used by the courts is the typical buyer exercising ordinary caution. However, when a buyer has expertise or is otherwise more sophisticated with respect to the purchase of the services at issue, a higher standard is proper. Similarly, when services are expensive or unusual, the buyer can be expected to exercise greater care in her purchases. When services are sold to such buyers, other things being equal, there is less likelihood of confusion.” Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1111 (Fed. Cir. 1991). In the case of Applicant’s, and it is believed also Registrant’s goods, there is a relatively high degree of sophistication among purchasers. In each instance, purchasers are travelers or potential travelers, either considering relatively expensive trips, or perhaps in the process of such a trip as in the case of the Cleveland airport. In the case of Applicant’s services, a typical consumer is a traveler during a business or pleasure trip. Services are purchased, consumed, and/or enjoyed within the very facility that is providing the service. This fact alone makes confusion as to source very unlikely. In the case of the Registrant’s services, it is believed that most services are purchased directly from a travel agent of AAA, either on the telephone or in person. The Registrant also operates a website (http://www.aaasouth.com/acs_pages/101.asp) that lists the services they provide. As previously mentioned, a search of the website reveals that the Registrant is using the cited mark as the title of a travel publication. Consequently, the conditions under which, and buyers to whom, sales are made raise essentially no possibility of confusion as to source of the goods.
In summary, Applicant asserts that when the factors for determining likelihood of confusion are viewed as a whole, the overall weight of the factors demonstrates that there is not a likelihood of confusion. As such, Applicant respectfully requests reconsideration of this refusal.
Conclusion: It is believed that this application is now in condition for allowance. Entry of this amendment and passage of the application on to publication is respectfully requested. If any questions remain regarding the registrability of this application, the Examining Attorney is invited to contact the Applicant’s representative by telephone at (216) 622-8576 or by email at wjohnston@calfee.com. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /WA Johnston/ |
| SIGNATORY'S NAME | William A. Johnston |
| SIGNATORY'S POSITION | Attorney for Applicant |
| DATE SIGNED | 00/81/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Aug 10 11:21:03 EDT 2007 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XX.X-200 70810112103271100-7702302 2-380fc9606f7bfa3860e5462 985deaa67bb-N/A-N/A-20070 809175812099789 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Trademark : GOING PLACES
Serial Nos. : 77/023,022
Applicant : City of Cleveland
Attorney Docket Nos. : 22344/04040
File by TEAS
___________________________________________________________________________
Identification of Services:
Please amend the Identification of Services to read as follows:
“Airport services provided in the operation of a city-owned International Airport facility, namely, airport baggage check-in services, airport passenger check-in services, parking garage services, providing services for rental of cars and car rental reservations, providing terminal services for passenger convenience in the nature of restaraunts, restrooms, children play areas, wireless internet access, and video conferencing centers.”
___________________________________________________________________________
Remarks:
In response to the Office Action sent by email on March 5, 2007, the Applicant’s undersigned representative respectfully disagrees with the Examining Attorney’s refusal to register the mark on the Principle Register and offers the following remarks.
Refusal to Register on the Basis of Likelihood of Confusion:
The Examining Attorney has refused registration on the Principal Register because “the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 2,623,009 as to be likely to cause confusion, to cause mistake, or to deceive.” Applicant respectfully asserts that confusion between Applicant’s mark and the cited mark, owned by AAA Auto Club South, Inc. (hereinafter “Registrant”), and confusion as to source of services provided under these marks, is not likely. In summary, Applicant’s mark will be used in association with specific services related to the operation of a city-owned airport facility, quite unrelated to the services described in Reg. No. 2,623,009 and the services apparently provided by the Registrant in connection with the mark. Therefore, Applicant respectfully requests reconsideration of the Section 2(d) rejection for the following reasons.
I. Factors in Evaluating Likelihood of Confusion
In evaluating the likelihood of confusion, the Examining Attorney must consider the factors from In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973); TMEP § 1207.01. The following sections include Applicant’s remarks regarding certain DuPont factors that are most relevant to this Office Action. However, other factors may also be applicable to distinguish Applicant’s mark from the cited registration. To that end, the undersigned reserves the right to argue other factors in the future.
II. Relatedness of Applicant’s and Registrant’s Goods/Services as Described or Used
In order to establish likelihood of confusion, the Examining Attorney must show the goods or services are related in some manner or that the conditions are such that the goods or services are encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods/services come from a common source. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565 (Fed. Cir. 1984). If the goods of an applicant and the goods of a registrant “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 unlikely.” (emphasis added) TMEP § 1207.01(a)(i), citing, e.g., Quartz Radiation Corp. v. Comm/Scope Co., 1 U.S.P.Q.2d 1668 (TTAB 1986) (QR for co-axial cable not confusingly similar to QR for various products, including lamps and tubes, related to the photocopying field). See also Consumers Petroleum Co. v. Consumers Co. of Illinois, 169 F.2d 153 (7th Cir. 1948); cert. denied, 335 U.S. 902 (1949) (CONSUMERS for fuel oil not confusingly similar to CONSUMERS for coal and wood fuel); Federal Tel. & Radio Corp. v. Federal Television Corp., 180 F.2d 250 (2d Cir. 1950) (FEDERAL for radio supplies not confusingly similar to FEDERAL for televisions sets); Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 236 F.2d 423 (C.C.P.A. 1956) (HURRICANE for outboard motors not confusingly similar to HURRICANE for auto engines); and Pabst Brewing Co. v. Decatur Brewing Co., 284 F. 110 (7th Cir. 1922) (BLUE RIBBON for beer not confusingly similar to BLUE RIBBON for malt extract).
The Examining Attorney has stated that because Applicant’s goods and/or services as filed is very broad, “it is presumed that the application encompasses... those in the registrant’s more specific identification.” The Applicant has amended the identification of services so as to eliminate any possible presumption. Specifically, the Applicant has amended the identification of services to read specific airport services provided by a city-owned airport facility. The Registrant’s services are “travel club services; travel information services; arranging travel tours; arranging cruises.” Applicant respectfully asserts that any relationship between Applicant’s and Registrant’s services based on the travel industry alone would not lead to confusion as to the source of the goods. It is respectfully offered that essentially any traveler, experienced or otherwise, would not be confused as to source between a travel institution such as AAA and a single source airport in Cleveland, Ohio. In other words, the undersigned offers that it is highly unlikely a potential consumer of the airport services at Cleveland, Ohio would be confused as to believe the airport services, as listed in the amended identification, are being offered by a AAA office in Tampa, Florida, or any other AAA office for that matter. Consequently, Applicant’s and Registrant’s services are distinguishable and unrelated.
III. Similarity or Dissimilarity of Established, Likely-to-Continue Trade Channels
The services associated with the respective marks are not related or marketed in such a way that they would be encountered by the same persons in situations that would create incorrect assumptions regarding origin. Services to be sold under Applicant’s mark will be provided under a single channel of trade on location at the Cleveland city-owned airport facility. Although certain advertising may exist elsewhere to those in other states and countries, the marketing efforts will be directed toward travel to the single location.
Applicant performed research to determine whether or not the Registrant is using the registered mark and, if so, in what channels of trade. Applicant’s undersigned representative found only evidence of use of the mark as a travel publication. The publication is marketed on the Registrant’s website. Thus, logic suggests the channels of trade in which Applicant’s and Registrant’s respective goods/services are sold are vastly different. These differences between the channels in which the services are sold and provided further negates any possibility of creating confusion between the source of the services.
IV. Conditions under which and Buyers to whom Sales are Made
One factor an Examining Attorney must consider is the conditions under which and buyers to whom sales are made. “Generally, in accessing the likelihood of confusion to the public, the standard used by the courts is the typical buyer exercising ordinary caution. However, when a buyer has expertise or is otherwise more sophisticated with respect to the purchase of the services at issue, a higher standard is proper. Similarly, when services are expensive or unusual, the buyer can be expected to exercise greater care in her purchases. When services are sold to such buyers, other things being equal, there is less likelihood of confusion.” Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1111 (Fed. Cir. 1991).
In the case of Applicant’s, and it is believed also Registrant’s goods, there is a relatively high degree of sophistication among purchasers. In each instance, purchasers are travelers or potential travelers, either considering relatively expensive trips, or perhaps in the process of such a trip as in the case of the Cleveland airport. In the case of Applicant’s services, a typical consumer is a traveler during a business or pleasure trip. Services are purchased, consumed, and/or enjoyed within the very facility that is providing the service. This fact alone makes confusion as to source very unlikely. In the case of the Registrant’s services, it is believed that most services are purchased directly from a travel agent of AAA, either on the telephone or in person. The Registrant also operates a website (http://www.aaasouth.com/acs_pages/101.asp) that lists the services they provide. As previously mentioned, a search of the website reveals that the Registrant is using the cited mark as the title of a travel publication. Consequently, the conditions under which, and buyers to whom, sales are made raise essentially no possibility of confusion as to source of the goods.
In summary, Applicant asserts that when the factors for determining likelihood of confusion are viewed as a whole, the overall weight of the factors demonstrates that there is not a likelihood of confusion. As such, Applicant respectfully requests reconsideration of this refusal.
Conclusion:
It is believed that this application is now in condition for allowance. Entry of this amendment and passage of the application on to publication is respectfully requested.
If any questions remain regarding the registrability of this application, the Examining Attorney is invited to contact the Applicant’s representative by telephone at (216) 622-8576 or by email at wjohnston@calfee.com.