| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77113591 |
| LAW OFFICE ASSIGNED | LAW OFFICE 105 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
INTRODUCTION
The examining attorney has refused registration of the CONNOISSEUR mark on the basis that the mark is confusingly similar to another mark, CONNOISSEUR, which is used in connection with kitchen cutlery. For several reasons, there is no likelihood of confusion between these two marks, and registration should be allowed.
In determining the likelihood of confusion between two marks, the following, if of record, must be considered:
(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. (3) The similarity or dissimilarity of established, likely-to-continue trade channels. (4) The conditions under which and buyers to whom sales are made, i. e. "impulse" vs. careful, sophisticated purchasing. (5) The fame of the prior mark (sales, advertising, length of use). (6) The number and nature of similar marks in use on similar goods. (7) The nature and extent of any actual confusion. (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. (9) The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark). (10) The market interface between applicant and the owner of a prior mark: (11) The extent to which applicant has a right to exclude others from use of its mark on its goods. (12) The extent of potential confusion, i.e., whether de minimis or substantial. (13) Any other established fact probative of the effect of use. In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563 (CCPA 1973). The most relevant factors in this case are the similarity of the goods, the conditions under which and buyers to whom sales are made, and the length of time during which there has been concurrent use without actual confusion.
I. APPLICANT’S GOODS AND REGISTRANT’S GOODS ARE DISSIMILAR AND ARE SOLD IN DIFFERENT CHANNELS OF COMMERCE.
Applicant uses the CONNOISSEUR mark on a line of artists’ brushes and palette knives. These art supplies, including the palette knives, are sold in specialty art supply stores, and are not marketed through knife supply catalogs or retail knife stores. Registrant uses its mark in connection with cutlery specifically targeted for use in connection with professional cooking. These are two very different types of goods, and although applicant does not know where registrant’s goods are sold, it is unlikely that specialty art supplies and cooking cutlery would be sold in the same store.
The Examining Attorney asserts that palette knives are in Registrant’s likely area of expansion. However, Registrant clearly focuses entirely on cooking knives, as is evident from Registrant’s description of goods, “cutlery – namely, paring knives,” etc. “Cutlery” is defined as “edged or cutting tools, specifically: implements for cutting and eating food.” See Ex. 1. Given that the registration is clearly limited to cooking utensils, it is unlikely that Registrant will expand into art supplies.
Furthermore, applicant’s and registrant’s goods are sold to entirely different classes of buyers. Registrant sells its goods to professional chefs, while applicant’s goods are marketed to artists. Because the buyers of applicant’s and registrant’s goods are different, there can be no likelihood of confusion.
On the basis of these factors, it is clear that applicant’s and registrant’s goods are sold in different channels of commerce, and there is no likelihood of confusion between the marks.
II. THE BUYERS OF BOTH APPLICANT’S AND REGISTRANT’S GOODS ARE SOPHISTICATED.
The buyers of both applicant’s and registrant’s goods are sophisticated, and are not making an “impulse” purchase that would heighten the likelihood of confusion. Estee Lauder v. The Gap, 108 F.3d 1503 (2d Cir. 1997) (consumers unlikely to be confused between high-priced skin care products and low-end skin care products). Applicant sells its palette knives to serious artists who are seeking high quality supplies. See Ex. 2. Registrant states on its web site that its CONNOISSEUR knives are “[t]he finest professional cutlery for the discriminating chef, combining modern European styling and the cutting performance of American craftsmanship. Connoisseur…the benchmark of Professional Cutlery.” See Ex. 3. Clearly, neither a professional chef nor a professional artist is likely to believe that Applicant’s fine palette knives come from the same source as Registrant’s top-of-the-line cutlery.
II. THE MARKS HAVE BEEN USED CONCURRENTLY WITH NO ACTUAL CONFUSION FOR FIFTEEN YEARS.
Applicant has been using her mark since at least as early as 1992. Registrant has been using his mark since 1962. Thus, the marks have been used concurrently for about fifteen years. To applicant’s knowledge, there have been no instances of actual confusion between the marks during this lengthy period. As the court noted in Brookfield Commc’ns, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1050 (9th Cir. 1999), “[w]e cannot think of more persuasive evidence that there is no likelihood of confusion between these two marks than the fact that they have been simultaneously used for five years without causing any consumers to be confused as to who makes what.” Thus, the concurrent use of the marks for ten years is extremely strong evidence supporting the conclusion that there is no likelihood of confusion between these marks. See also Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 228 (2d Cir. 1999).
CONCLUSION
Because Applicant’s and Registrant’s goods are dissimilar and in different channels of commerce, because the buyers of the goods are sophisticated, and because of the long period of uneventful concurrent use, there is no likelihood that these two marks would be confused by consumers.
Applicant requests that, in light of the above arguments, the Examining Attorney withdraw the citation of Registration No. 1,362,975. This response should resolve all of the Examining Attorney’s concerns. Therefore, Applicant requests that the mark proceed to publication.
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|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_6988126250-170105532_._OAExhibit1.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS2\EXPORT14\771\135\77113591\xml1\ROA0002.JPG |
| ORIGINAL PDF FILE | evi_6988126250-170105532_._OAExhibit2.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS2\EXPORT14\771\135\77113591\xml1\ROA0003.JPG |
| ORIGINAL PDF FILE | evi_6988126250-170105532_._OAExhibit3.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS2\EXPORT14\771\135\77113591\xml1\ROA0004.JPG |
| DESCRIPTION OF EVIDENCE FILE | Exhibit 1: dictionary definition; Exhibit 2: page from Applicant's web site; Exhibit 3: page from Registrant's web site. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /mnj/ |
| SIGNATORY'S NAME | Marisa N. James |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 12/07/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Dec 07 17:10:58 EST 2007 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0071207171058055169-77113 591-410adc657e28dd32b9a47 3ad5dbd2751580-N/A-N/A-20 071207170105532871 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
INTRODUCTION
The examining attorney has refused registration of the CONNOISSEUR mark on the basis that the mark is confusingly similar to another mark, CONNOISSEUR, which is used in connection with kitchen cutlery. For several reasons, there is no likelihood of confusion between these two marks, and registration should be allowed.
In determining the likelihood of confusion between two marks, the following, if of record, must be considered:
(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
(3) The similarity or dissimilarity of established, likely-to-continue trade channels.
(4) The conditions under which and buyers to whom sales are made, i. e. "impulse" vs. careful, sophisticated purchasing.
(5) The fame of the prior mark (sales, advertising, length of use).
(6) The number and nature of similar marks in use on similar goods.
(7) The nature and extent of any actual confusion.
(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
(9) The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).
(10) The market interface between applicant and the owner of a prior mark:
(a) a mere "consent" to register or use.
(b) agreement provisions designed to preclude confusion, i. e. limitations on continued use of the marks
by each party.
(c) assignment of mark, application, registration and good will of the related business.
(d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.
(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.
(12) The extent of potential confusion, i.e., whether de minimis or substantial.
(13) Any other established fact probative of the effect of use. In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563 (CCPA 1973).
The most relevant factors in this case are the similarity of the goods, the conditions under which and buyers to whom sales are made, and the length of time during which there has been concurrent use without actual confusion.
I. APPLICANT’S GOODS AND REGISTRANT’S GOODS ARE DISSIMILAR AND ARE SOLD IN DIFFERENT CHANNELS OF COMMERCE.
Applicant uses the CONNOISSEUR mark on a line of artists’ brushes and palette knives. These art supplies, including the palette knives, are sold in specialty art supply stores, and are not marketed through knife supply catalogs or retail knife stores. Registrant uses its mark in connection with cutlery specifically targeted for use in connection with professional cooking. These are two very different types of goods, and although applicant does not know where registrant’s goods are sold, it is unlikely that specialty art supplies and cooking cutlery would be sold in the same store.
The Examining Attorney asserts that palette knives are in Registrant’s likely area of expansion. However, Registrant clearly focuses entirely on cooking knives, as is evident from Registrant’s description of goods, “cutlery – namely, paring knives,” etc. “Cutlery” is defined as “edged or cutting tools, specifically: implements for cutting and eating food.” See Ex. 1. Given that the registration is clearly limited to cooking utensils, it is unlikely that Registrant will expand into art supplies.
Furthermore, applicant’s and registrant’s goods are sold to entirely different classes of buyers. Registrant sells its goods to professional chefs, while applicant’s goods are marketed to artists. Because the buyers of applicant’s and registrant’s goods are different, there can be no likelihood of confusion.
On the basis of these factors, it is clear that applicant’s and registrant’s goods are sold in different channels of commerce, and there is no likelihood of confusion between the marks.
II. THE BUYERS OF BOTH APPLICANT’S AND REGISTRANT’S GOODS ARE SOPHISTICATED.
The buyers of both applicant’s and registrant’s goods are sophisticated, and are not making an “impulse” purchase that would heighten the likelihood of confusion. Estee Lauder v. The Gap, 108 F.3d 1503 (2d Cir. 1997) (consumers unlikely to be confused between high-priced skin care products and low-end skin care products). Applicant sells its palette knives to serious artists who are seeking high quality supplies. See Ex. 2. Registrant states on its web site that its CONNOISSEUR knives are “[t]he finest professional cutlery for the discriminating chef, combining modern European styling and the cutting performance of American craftsmanship. Connoisseur…the benchmark of Professional Cutlery.” See Ex. 3. Clearly, neither a professional chef nor a professional artist is likely to believe that Applicant’s fine palette knives come from the same source as Registrant’s top-of-the-line cutlery.
II. THE MARKS HAVE BEEN USED CONCURRENTLY WITH NO ACTUAL CONFUSION FOR FIFTEEN YEARS.
Applicant has been using her mark since at least as early as 1992. Registrant has been using his mark since 1962. Thus, the marks have been used concurrently for about fifteen years. To applicant’s knowledge, there have been no instances of actual confusion between the marks during this lengthy period. As the court noted in Brookfield Commc’ns, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1050 (9th Cir. 1999), “[w]e cannot think of more persuasive evidence that there is no likelihood of confusion between these two marks than the fact that they have been simultaneously used for five years without causing any consumers to be confused as to who makes what.” Thus, the concurrent use of the marks for ten years is extremely strong evidence supporting the conclusion that there is no likelihood of confusion between these marks. See also Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 228 (2d Cir. 1999).
CONCLUSION
Because Applicant’s and Registrant’s goods are dissimilar and in different channels of commerce, because the buyers of the goods are sophisticated, and because of the long period of uneventful concurrent use, there is no likelihood that these two marks would be confused by consumers.
Applicant requests that, in light of the above arguments, the Examining Attorney withdraw the citation of Registration No. 1,362,975. This response should resolve all of the Examining Attorney’s concerns. Therefore, Applicant requests that the mark proceed to publication.
