Response to Office Action

In response to the Office Action dated May 13, 2005, in the above-identified trademark application, please amend the above-entitled application as follows:

REMARKS

I.            Response to Section 2(D) Refusal

The Examining Attorney has initially refused registration of Applicant's proposed mark SOLITAIRE under Section 2(d), 15 U.S.C. § 1052(d), on the ground that Applicant's proposed mark SOLITAIRE, when used on or in connection with the identified goods, so resembles the mark SOLITAIRE in U.S. Registration No. 1902762 as to be likely to cause confusion, to cause mistake, or to deceive.  The Examining Attorney is requested to withdraw this rejection.

The Examining Attorney has stated the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The issue, according to the Examining Attorney,is whether the marks create the same overall impression citing Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The Examining Attorney contends that the focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks citing Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979) and Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b). The rejection of Applicant's mark SOLITAIRE under Section 2(d) is premised on a comparison of Applicant's mark SOLITAIRE, as applied to Applicant's goods including electric coffee makers, for similarities in appearance, sound, connotation and commercial impression with the registrant's mark SOLITAIRE, as applied to the registrant's goods including non-electric coffee pots. 

The Examining Attorney contends that Applicant's goods of electric coffee makers may be offered in the same channels of trade as the registrant's goods of non-electric coffee pots and notes that coffee shops may offer both goods.  Applicant respectfully submits that the mere fact that Applicant's goods of electric coffee makers and the registrant's goods of non-electric coffee pots may be offered in the same channels of trade does not inescapably lead to the conclusion that customers or potential customers will assume that both Applicant's goods and the registrant's goods emanate from the same source.

It is submitted that customers regard coffee makers as fundamentally different goods than coffee pots in that coffee makers commonly comprise hardware beyond the container for the coffee; for instance, coffee makers typically also are comprised of retainers for holding the coffee grounds and many coffee makers also include a water reservoir as well as a heating, brewing, or percolating system.  On the other hand, the non-electric coffee pots offered in association with the registrant's mark are containers for coffee and it is common that such products are offered by themselves with no associated hardware.  Moreover, there are numerous non-electric coffee pots that are explicitly designed to be used for retaining coffee that is prepared by another device.  Thus, it is submitted that customers or potential customers will not automatically assume that Applicant's goods of electric coffee makers and the registrant's goods of non-electric coffee pots emanate from the same source.  Applicant respectfully submits that the commercial relationship between the goods of Applicants and the registrant, when carefully considered, clearly indicate there is no likelihood of confusion.

CONCLUSION

            Having fully responded to all matters addressing by the Examining Attorney, Applicant respectfully submits that the application is in condition for publication, and requests that the Examining Attorney approve and pass the application to publication.

Respectfully submitted,

Russell W. Warnock