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. 77144007 has been amended as follows:

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

ARGUMENT

            In the office action mailed June 25, 2007, the Examining Attorney has refused registration of the present application for the mark SMART CUBES for use in connection with goods described in the original application as “modular furniture; modular bookcases; modular display racks, sales counters, display counters, and display fixtures; modular tradeshow displays; and modular storage racks” under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based upon a finding of a likelihood of confusion with U.S. Trademark Registration No. 2,793,066 for the mark CUBESMART for use in connection with office furniture. 

            For the following reasons, applicant respectfully traverses the rejection based upon the CUBESMART registration.

            As a preliminary matter, in the present response, applicant has amended the description of the goods to include the new classification of “portable trade show display booths not made primarily of metal” in International Class 19 as directed by the Examining Attorney and to amend the description of the goods in International Class 20 to more precisely define the goods as “freestanding modular shelving furniture made of plastic;  freestanding modular bookcases made of plastic;  freestanding modular display racks, sales counters, display counters, display stands and display shelving all made of plastic.”

            Applicant submits that the distinctions between the applicant’s goods, as amended in this response, and the goods of the cited registration, in conjunction with the distinctions between applicant’s mark and the mark of the cited registration plus the consumer recognition that applicant has built up in its “SMART” family of marks, are sufficient to avoid a likelihood of confusion.  Accordingly, applicant respectfully requests that the rejection of the present application based upon the cited registration be withdrawn.

Applicant’s Family of “SMART” Trademarks

            Applicant is the owner of the following “SMART” family of registered trademarks:

SMART FURNITURE, Reg. No. 2,379,151 for modular furniture accessories, namely holders for computer or audio-visual media, namely company discs, audio or video cassettes, DVDs and the like in International Class 9;  modular furniture accessories, namely organizers for stationery use, desk top organizers, bookends and organizer trays in International Class 16;  furniture and furniture parts, modular furniture and furniture parts, namely furniture display racks, sales and display counters, trade show displays and storage racks in International Class 20;

SMARTFURNITURE (Stylized), Reg. No. 3,212,847 for furniture; furniture parts; display racks, sales and display counters, tradeshow displays and storage racks in International Class 20;

SMART FIXTURES, Reg. No. 3,347,195 for furniture, modular furniture and furniture parts, namely, display racks; sales and display counters, retail and trade show display furniture, counters and racks, and storage racks in International Class 20;  online retail store for furniture and retail display fixtures furniture and furniture parts in International Class 35;

SMART FIXTURE, Reg. No. 2,939,942 for modular furniture and furniture parts, namely furniture, display racks, sales and display counters, retail and trade show displays, and storage racks in International Class 20;

SMART DESIGNER, Reg. No. 3,094,503 for providing temporary use of online non-downloadable software for use in providing a visual representation of an assembled furniture product made up of various pre-selected component parts in International Class 42; and

GET SMART, Reg. No. 2,838,412 for furniture and furniture parts, modular furniture and furniture parts, namely furniture, display racks, sales and display counters, trade show displays, shelves, and storage racks in International Class 20. 

            Applicant has also applied for the following additional marks in the “SMART” family:  SMART FURNITURE, Ser. No. 77/121,904;  SIMPLY SMART, Ser. Nos. 78/968,125 and 77/016,697;  SIMPLE AND SMART, Ser. No. 77/016,648;  SMART MADE SIMPLE, Ser. No. 77/314,573; and SMART SHELVES, Ser. No. 78/365,001; all for use in connection with modular furniture and shelving and/or the retail sale of modular furniture and shelving.

            The consuming public has become accustomed to associating the distinctive “SMART” marks with the applicant through applicant’s use and joint promotion of this family of marks relating to modular furniture and display shelving.  Declaration of Gentle, ¶¶ 7-10.  As seen in its many of these “SMART” registrations, the applicant’s adoption of this “SMART” family of mark dates back to August, 1998, easily predating the September 1, 2006 first use date of the SMARTCUBE mark, and also the December 31, 2002 date of first use of the CUBESMART mark.

            Based upon its family of “SMART” marks and their manner of use in close association with each other, the SMART CUBES mark is much more likely to be associated with applicant than with the cited registration.

            Turning then to a more detailed analysis of the likelihood of confusion with CUBESMART, Reg. No. 2,793,066, as the Examining Attorney has pointed out, an application must be analyzed in two steps to determine whether there is a likelihood of confusion.  The Examining Attorney must look at the marks themselves for similarities in appearance, sound, connotation, and commercial impression, and then the Examining Attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973); In re August Storck KG, 218 U.S.P.Q. 823 (T.T.A.B. 1983).

            The Examining Attorney states that “Applicant’s joining and juxtaposition of the terms “cube” and “smart,” as opposed to Registrant’s CUBESMART does not adequately distinguish between Applicant’s and Registrant’s marks.”

            Applicant respectfully disagrees.  In the instant case, there is no likelihood of confusion between the applicant’s SMART CUBES mark and the cited CUBESMART mark because applicant’s SMART CUBES mark is not similar in appearance or sound and creates a distinct commercial impression. 

            In In re Sybron Corporation, 165 U.S.P.Q. 410 (T.T.A.B. 1970), the Board stated that, “the fact that two marks are reverse combinations of the same words is not necessarily conclusive on the question of likelihood of confusion, and registration has been permitted in those instances where the transposed marks create distinctly different commercial impressions.”  See Kampgrounds of America, Inc. v. North Delaware A-OK Campground, Inc., 415 F. Supp. 1288, 190 U.S.P.Q. 437 (D. Del. 1976), aff’d, 556 F.2d 566 (3d Cir. 1977) (A-OK not confusingly similar to KOA) and Carefirst of Maryland, Inc. v. First Care, P.C., 350 F. Suppl 2d 714, 73 U.S.P.Q.2d 1833 (E.D. Va. 2004), aff’d CareFirst of Maryland, Inc. v. First Care, P.C., 434 F.3d 263, 77 U.S.P.Q.2d 1577 (4^th Cir. 2006) (Summary judgment of no likelihood of confusion between CAREFIRST for health insurance vs. FIRST CARE for physicians’ group).

            In this case, the marks are clearly different in appearance and sound.  The cited mark is a single compound word, CUBESMART, whereas applicant’s mark is two distinct words, SMART CUBES.  While the words used in both marks are the same, they are used in reverse order.  This reversal creates a distinctly different commercial impression. 

            The compound word “CUBESMART” could be interpreted as either “cube smart” or as “cubes mart.”  When the word “smart” follows a noun, like “book smart” or “street smart” it is typically thought of as meaning that a person is knowledgeable regarding books or the subjects studied in books, or “the streets,” or in this case, cubes.  Alternatively, “cubes mart” could mean a shopping “mart” for cubes, such as seen in “Petsmart.”  In contrast, when the adjective “smart” is employed prior to the noun it modifies, the meaning is that the thing is literally brainy or “smart” - an intelligent thing to do.  Hence the applicant’s “SMART CUBES” would mean “cubes that are smart,” a suggestive reference to their efficient modular nature.

            When the two marks are examined in relation to their respective goods, the distinction in commercial impression becomes even more pronounced.  “Cubesmart” for office furniture implies that the office furniture is a smart choice for cubicles (a typical office setting).  On the other hand, when applied in connection with modular furniture whose basic building block is a modular square or “cube” that may be readily interconnected into a plurality of shapes, the applicant’s SMART CUBES mark suggests a direct comment on the nature of the product itself, “these modular cubes are smart!”

            These distinctions in appearance, sound and meaning, when considered in connection with applicant’s family of SMART marks, and the nature of the goods as more precisely defined in the amended descriptions, are sufficient to avoid a likelihood of confusion.  Accordingly, the rejection based upon the CUBESMART mark should be withdrawn.

            In light of the foregoing remarks, applicant believes the present application stands in proper condition for acceptance for publication, and such favorable action is courteously requested.

EVIDENCE
Evidence in the nature of the Declaration of TJ Gentle, President of Applicant Smart Furniture, Inc. has been attached.
Original PDF file:
.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby adds the following class of goods/services to the application:
New: Class 019 for portable trade show display booths not made primarily of metal
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

ADDITIONAL STATEMENTS
In filing out the electronic form, it is only letting me add the new Class 19 goods, but not amend the existing Class 20 goods, despite starting over several times. Accordingly, even though this is not in the correct field, please amend the description of the goods in International Class 20 to read as follows: freestanding modular shelving furniture made of plastic; freestanding modular bookcases made of plastic; freestanding modular display racks, sales counters, display counters, display stands and display shelving all made of plastic

FEE(S)
Fee(s) in the amount of $325 is being submitted.

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Charles W. Forlidas/      Date: 12/26/2007
Signatory's Name: Charles W. Forlidas
Signatory's Position: Attorney of Record

Response Signature
Signature: /Charles W. Forlidas/     Date: 12/26/2007
Signatory's Name: Charles W. Forlidas
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.

        
RAM Sale Number: 10605
RAM Accounting Date: 12/26/2007
        
Serial Number: 77144007
Internet Transmission Date: Wed Dec 26 13:18:45 EST 2007
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20071226131845308
041-77144007-410bc4246e75b7242b1e6de5a22
09f79c9-DA-10605-20071226125256451916