Response to Office Action

PTO Form 1957 (Rev 5/2006)

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

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PTO Form 1957 (Rev 5/2006)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 78449256 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

1.0.    The Examining Attorney has refused registration of Applicant's mark on the basis that it is confusingly similar to the mark cited in United States Registration No.2,538,741.

 

Applicant is responding to a new issue raised by the Examining Attorney that was not addressed in the first Office Action.  The Examining Attorney has provisionally refused registration for the proposed mark on the basis that it is confusingly similar to U.S. Registration No. 2,583,741.

 

Factors to be considered when assessing the likelihood of confusion created by the contemporaneous use of two marks, by different entities, was outlined in In re E.I. duPont de Nemours & Co., 476 F2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  See also, T.M.E.P. § 1207.01.

 

The factors relevant to the present situation include: (1) the similarity or dissimilarity of the marks as to the commercial impression, (2) the similarity or dissimilarity of the nature of the goods or services, and (3) the similarity or dissimilarity of established trade channels.

 

Applicant respectfully submits that upon consideration of all relevant factors, Applicant's mark QC is distinguishable and not confusingly similar to the mark cited in U.S. Registration No. 2,538,741.

 

(1)   Commercial Impression of the marks are Significantly Different

 

The natures of the marks, when viewed in association with the identified goods convey different commercial impressions to the relevant buying class.  The mark QC, cited in U.S. Registration No. 2,538,741, is an acronym for QUALITY CHOICE, a line of private label consumer products distributed exclusively to registered members of the Chain Drug Marketing Association (hereinafter "CDMA").  The membership in CDMA consists solely of owners operating retail drug store operations.  See Exhibit A.  A potential purchaser does not retain the same commercial impression of Applicant's mark QC, in connection with commercial cleaning preparations.  Applicant's products are not marketed to the same channels of trade, nor are they offered to the same class of customers.  Generally, the focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  See, T.M.E.P. § 1207.01(b).  However, as Applicant will subsequently discuss in detail, the relevant buying classes of Applicant's products are sophisticated professional purchasers who have a specific, rather than general, impression of trademarks.  The sophistication of the relevant buying class would understand the difference in the meaning or connotation between Applicant's mark and the mark cited in U.S. Registration No. 2,538,741, as it relates to the specific identification of goods.

 

(2)   Nature of the Goods are Significantly Different

 

Although Applicant's goods and the goods cited in U.S. Registration No. 2,538,741 both reference goods classified as cleaners, the goods with which Applicant uses its mark are not the same, nor are they used for the same purposes.  Applicant is seeking to register the mark QC in association with "All-purpose cleaners, floor stripping/cleaning preparations, glass cleaners, water based solvent lime scale removers, metal cleaners, mildew removers, and multi-purpose degreasing preparations not used in the manufacturing process, all for commercial, institutional and industrial use."  The specific purpose of Applicant's product is to maintain the general cleanliness of restaurants, hotels, schools, hospitals and other commercial and institutional facilities.  The goods identified in U.S. Registration No. 2,538,741 are retail consumer products that are offered only through drug stores associated with CDMA.  Additionally, the specification of goods listed in U.S. Registration No. 2,538,471 explicitly restricts its products covered under the cited mark to retail channels of trade.  According to the limiting language in the cited registration, the goods protected under U.S. Registration No. 2,538,741 are "all for retail sale only."  (Emphasis added).  Based upon the specific description of goods, Applicant's products and the products identified in U.S. Registration No. 2,538,741 are used for separate and distinct functions.  A potential purchaser would understand the nature and use of both products in the relevant marketplaces.  The difference in the nature and use of the goods weighs in favor of finding no likelihood of confusion.

 

(3)   Source of the Goods are Apparent

 

A relevant factor in an issue of likelihood of confusion is the "consideration of how and to whom the respective goods of the parties are sold."  4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §24:51, at 24-81 (4^th ed. March 2005).  "Obviously, if the goods of one party are sold to one class of buyers in a different marketing context than the goods of seller, the likelihood that a single group of buyers will be confused by similar trademarks is less than if both parties sold their goods through the same channel of distribution."  Id at 24-81 to 24-82.  The question in evaluating the determination of likelihood of confusion is not whether "the goods are likely to be confused but rather whether there is a likelihood of confusion as to the source of the goods because of the marks used thereon."  In re Rexel Inc., 223 U.S.P.Q. 830, 831 (T.T.A.B. 1984) (emphasis added).  "[I]f the goods or services in question are not related or marketed in such a way that 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 not likely."  TMEP §1207.01(a)(i). 

 

The distinctiveness between Applicant's goods and the goods cited in U.S. Registration No. 2,538,741 is even more significant in light of how Applicant's goods and the goods identified in U.S. Registration No. 2,538,741are sold and distributed in the relevant marketplace.  The goods identified in U.S. Registration No. 2,538,741 are consumer goods that are distributed directly by members of CDMA.  In contrast, Applicant is the leading supplier of premium cleaning and sanitizing products to the food service, institutional and hospitality markets, among others.  Applicant markets its products exclusively to its commercial customers through direct sales and distribution.  All products offered by the Applicant are sold through direct contact between the purchasing agent and Applicant's sales representative.  As a result, the relevant buyer class of Applicant's products will be well-informed, deliberative purchasers who are familiar with the goods of Applicant as it relates to the field of cleaning products.  Potential consumers would not believe that the goods originate from the same source or are in some way affiliated, connected or otherwise related to one another.  Because of the unique nature of Applicant's sales and distribution system, trademarks that are closely similar would not confuse a professional purchaser of cleaning products.

Evidence
Evidence in the nature of Exhibit A - Scanned image of CDMA documentation has been attached.
Evidence-1
Evidence-2
Evidence-3
Evidence-4

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 003 for All-purpose cleaners, floor stripping/cleaning preparations, glass cleaners, water based solvent lime scale removers, metal cleaners, mildew removers, and multi-purpose degreasing preparations not used in the manufacturing process
Original Filing Basis: 1(a).
Proposed: Class 003 for All-purpose cleaners, floor stripping/cleaning preparations, glass cleaners, water based solvent lime scale removers, metal cleaners, mildew removers, and multi-purpose degreasing preparations not used in the manufacturing process, all for commercial, institutional and industrial use.

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: /lar/      Date: 12/30/2005
Signatory's Name: Leigh Rand
Signatory's Position: Duly Authorized Signatory

Response Signature

Signature: /lar/     Date: 12/30/2005
Signatory's Name: Leigh Rand
Signatory's Position: Duly Authorized Signatory
        
Serial Number: 78449256
Internet Transmission Date: Fri Dec 30 10:50:30 EST 2005
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20051230105030673
767-78449256-32015911d0b72cd9a6b838526a4
e315574-N/A-N/A-20051230100718401818