Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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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. 77100548 has been amended as follows:

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

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

            Applicant:                                 Farberware Licensing Company, LLC

 

            Serial No.:                                77/100,548

 

            Filed:                                        February 6, 2007

 

            Trademark:                               AFFINITI

 

            Class                                        21

 

            Examining Attorney:                  Linda M. King

 

            Law Office:                              116

 

            Our Ref. No.:                           U0970-00086

 

 

Commissioner for Trademarks

PO Box 1451

Alexandria, VA 22313-1451

 

 

RESPONSE TO OFFICE ACTION

            Applicant has carefully examined the Office Action dated May 31, 2007.  Please consider the following amendments and remarks in response.

AMENDMENTS

            Applicant requests that “can openers”, “peelers” and “measuring spoon set” be deleted from the identification of goods.

REMARKS

            The Examining Attorney has taken the position that Applicant's mark AFFINITI (“Applicant’s Mark”) is likely to be confused with the mark AFFINITY (Reg. No. 1,618,447) (the “Cited Mark”).  Applicant respectfully disagrees with the Examining Attorney’s finding of a likelihood of confusion between Applicant’s Mark and the Cited Mark.

I.          Applicant’s Mark is Sufficiently Different from the Cited Mark to Eliminate any           Likelihood of Confusion

            In determining whether a likelihood of confusion exists, the marks must be compared for similarities in appearance, sound, connotation and commercial impression and the goods or services of the respective marks must be compared to determine if they are related or if the activities surrounding their marketing are such that confusion of origin is likely.  See In re E.I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). 

            When comparing marks, the marks must be considered as the public views them - in their entireties.  All relevant facts pertaining to the appearance and connotation of the marks must be considered.  See T.M.E.P. § 1207.01.  Therefore, the emphasis must be on the recollection of the average purchaser who normally retains a general, rather than specific impression of trademarks.  Id.  Thus, likelihood of confusion cannot be predicated on dissection of a mark, that is, only one part of a mark.  See Opryland USA Inc. v. The Great American Music Show, Inc., 23 U.S.P.Q.2d 1471, 1472 (Fed. Cir. 1992); In re Hearst, 25 U.S.P.Q.2d 1238 (Fed. Cir. 1992) (holding VARGA GIRL and VARGAS for the same product are sufficiently different in sound, appearance, connotation and commercial impression to negate likelihood of confusion).  Indeed, it is well settled that even marks that share common words do not necessarily cause a likelihood of confusion in the market place.

            As an initial matter, we respectfully note that the Examining Attorney mistakenly identified Applicant’s Mark in the Office Action as “AFFINITY.”  Applicant’s Mark is AFFINITI, with an “I” rather than a “Y” as the last letter of the mark.  The presence of the “I” as the last letter in Applicant’s Mark distinguishes Applicant’s Mark from the Cited Mark that reads AFFINITY with the letter “Y” as its last letter.  While the Examining Attorney asserts that “the proposed mark is identical to the registered mark” it is clear that the “I” as the last letter of Applicant’s Mark differentiates the appearance of Applicant’s Mark from the Cited Mark. 

            In addition, the “I” as the last letter of Applicant’s Mark creates an entirely different commercial impression compared to the Cited Mark.  The use of the letter “I” as the last letter of the mark gives rise to a modern commercial impression of Applicant’s Mark and distinguishes Applicant’s Mark from the Cited Mark.  A mark featuring added material is distinguishable where the added material creates a significantly different commercial impression from a registered mark.  See T.M.E.P. § 1207.01(b)(iii).  See also In re S.D. Fabrics, Inc., 223 U.S.P.Q. 54 (T.T.A.B. 1984) (DESIGNERS/FABRIC (stylized) for retail fabric store services held not likely to be confused with DAN RIVER DESIGNER FABRICS and design for textile fabrics); In re Shawnee Milling Co., 225 U.S.P.Q. 747 (T.T.A.B. 1985) (GOLDEN CRUST for flour held not likely to be confused with ADOLPH’S GOLD’N CRUST for coating and seasoning for food items); In re Farm Fresh Catfish Co., 231 U.S.P.Q. 495 (T.T.A.B. 1986) (CATFISH BOBBERS for fish held not likely to be confused with BOBBER for restaurant services).  When viewed by the consuming public, Applicant’s Mark, which is visually dissimilar to the Cited Mark, clearly conveys a unique and distinct commercial impression. 

            Given that Applicant’s Mark and the Cited Mark are not identical and are dissimilar in terms of sight and overall commercial impression, it is unlikely that there is any risk of consumer confusion.  The likelihood of confusion is diminished by the differences in the last letters of the respective marks with the “I” in Applicant’s Mark distinguishing Applicant’s Mark from the Cited Mark.

 

 

II.        The Respective Goods are Sufficiently Different so as to Avoid a Likelihood of             Confusion

 

            Another factor relevant to the determination of likelihood of confusion is the difference between the goods and services offered under the respective marks.  See Federated Foods, Inc. v. Fort Howard Paper Co., 192 U.S.P.Q. 24, 29 (C.C.P.A. 1976); In re E.I. du Pont, 177 U.S.P.Q. at 567.  The nature of the respective party's goods and services is determined on the basis of the goods or services set forth in the application or registration.  In re Dixie Restaurants Inc., 41 U.S.P.Q.2d 1531, 1534 (Fed. Cir. 1997) ("Indeed, the second du Pont factor expressly mandates consideration of the similarity or dissimilarity of the services as described in an application or registration.'").

            An analysis of this factor also weighs against a finding of likelihood of confusion.  As amended, the goods covered by Applicant’s Mark consist of basic cookware and bakeware items.  In contrast, the goods covered by the Cited Mark consist exclusively of “silverplated flatware, namely, knives, forks, spoons.”  While the Examining Attorney asserts that the “respective goods are directly related kitchen goods,” Applicant respectfully submits that the cookware and bakeware type of goods covered by Applicant’s Mark are unrelated to the “silverplated” eating utensils covered by the Cited Mark.  Eating utensils, especially of the more formal “silverplated” variety, are products generally sold together with formal dinnerware and china and apart from cookware and bakeware type products.  In addition, in major department stores “silverplated flatware” is generally exhibited in presentational displays and departments separate from those reserved for basic cookware and bakeware items.  Indeed, the fact that Applicant and the cited registrant offer goods related to the cooking industry is insufficient to establish confusing similarity between the goods covered by the respective marks.  See In re E.I. du Pont, 177 U.S.P.Q. at 567. 

            Accordingly, Applicant respectfully submits that the respective goods are sufficiently different so as to avoid consumer confusion between Applicant’s Mark and the Cited Mark.

CONCLUSION

            Based on the foregoing, Applicant submits that all matters in the application are now in order and, accordingly, respectfully requests that the application be permitted to proceed to registration.

Dated:  November 30, 2007

            New York, New York

 

I hereby certify that this correspondence is being transmitted by electronic mail to the United States Patent and Trademark Office on the date shown below.     /Inez P. Vega/ Inez P. Vega   Dated:  November 30, 2007	DUANE MORRIS LLP   By:  /Christopher J. Rooney/       Gregory P. Gulia       Christopher J. Rooney   1540 Broadway New York, New York  10036 (212) 692-1027
	Attorneys for Applicant

 

EVIDENCE
Evidence in the nature of Response to Office Action has been attached.
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /Gregory P. Gulia/     Date: 11/30/2007
Signatory's Name: Gregory P. Gulia
Signatory's Position: Attorney

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: 77100548
Internet Transmission Date: Fri Nov 30 09:45:48 EST 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2007113009454846
6408-77100548-410eec4772d67983757a24f7e8
ce8466b4-N/A-N/A-20071130094105484575