| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
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| SERIAL NUMBER | 78612041 | ||||||||||||||||||||||||||||||||||||||||||||||||||||
| LAW OFFICE ASSIGNED | LAW OFFICE 116 | ||||||||||||||||||||||||||||||||||||||||||||||||||||
| MARK SECTION (no change) | |||||||||||||||||||||||||||||||||||||||||||||||||||||
| ARGUMENT(S) | |||||||||||||||||||||||||||||||||||||||||||||||||||||
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RESPONSE
Applicant respectfully submits this response to the Examining Attorney's Office Action of 12/06/2006, for which this response is timely filed. The present mark has been rejected based on an asserted likelihood of confusion with the mark “Experience The Difference. Savor The Results.” which is the subject of U.S. Trademark Registration No. 3160277 and is used for cutlery, cookware, measuring spoons, measuring cups and other kitchen gadgets. Notably, the rejection is applied to the applicant’s goods listed in International Class 11 only. Applicant’s goods in International Class 11 include household and kitchen machines such as kitchen appliances for cooking, baking, frying, grilling and electric cooking pots, microwaves, exhaust fans, grease filters, ventilation hoods and the like. The registrant’s mark is used for cutlery, cookware including pots and pans and skillets, measuring cups and spoons, and other kitchen gadgets. Applicant respectfully traverses this rejection and submits to the contrary that there is no reasonable likelihood of confusion between the present mark and the cited mark. Even though the marks include the common terms "Experience The Difference", the cited mark includes the sentence, "Savor The Results", which acts to set the mark apart from the present mark. The mere fact that marks share elements, even dominant elements, does not compel a conclusion of likelihood of confusion. Kirkpatrick, Likelihood of Confusion in Trademark Law, § 4.10.A. “The use of identical, even dominant, words in common does not automatically mean that two marks are similar.” General Mills, Inc. v. Kellogg Co., 3 USPQ 2d 1442, 1445 (8th Cir. 1997). The cases cited by Kirkpatrick in support of this proposition and a finding of no likelihood of confusion were the following:
It should be noted that the above marks are for the same goods. Here the goods are different - a distinction which further avoids likelihood of confusion. Further, the mark EXPERIENCE THE DIFFERENCE is the subject of various trademark registrations owned by third parties as set forth below.
In addition, there are numerous applications outstanding for the mark EXPERIENCE THE DIFFERENCE. Accordingly, the common terms “EXPERIENCE THE DIFFERENCE” cannot be regarded as terms that consumers will rely upon to distinguish between the many trademarks comprising such terms and any additions or deletions from the mark should act to further set the mark apart from similar marks. Confusion is unlikely because of the difference in products upon which Applicant's Mark and the cited mark are used. In assessing the likelihood of confusion, the "nature of the products themselves and the structure of the relevant market" are paramount. Cadbury Beverages v. Cott Corp., 73 F.3d 474, 480 (2d Cir. 1996); Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 967 (2d Cir. 1981). The mere fact that the cited mark and Applicant's Mark both involve goods sold in the same field is insufficient to warrant a refusal. Astra Pharmaceutical Prods. v. Beckman Instruments, Inc., 718 F.2d 1201, 1205-09 (1st Cir. 1983) (holding that goods were not related though they were sold under identical marks in the health care field); Clayton Mark & Co. v. Westinghouse Elec. Corp., 356 F.2d 943 (C.C.P.A. 1966) (MARK for electrical conduit not likely to cause confusion with MARK 75 for industrial circuit breaker); Checkpoint Sys. v. Check Point Software Techs., Inc., 104 F. Supp.2d 427, 467-68 (D.N.J. 2000) (no likelihood of confusion between identical marks used for goods that were both in the corporate security field). This holds equally true for related goods sold in the kitchen products area. See, e.g., American Optical Corp. v. American Olean Tile Co., 185 U.S.P.Q. 405 (S.D.N.Y. 1974) ("AO" for floor coating versus ceramic tile); In re Tricam Indus., Inc., 2003 TTAB LEXIS 83, at *6 (T.T.A.B. 2003) (not citable as precedent) (UNIFRAME for metal ladders and UNIFRAME for vinyl windows and doors not confusing; rejecting argument that the goods were related simply because both goods sold in home improvement stores). It is unlikely that consumers, when faced with the two distinct marks in the marketplace will be confused into thinking that the kitchen appliances of the applicant come from the same source as the kitchen gadgets and other tools from the owner of the cited mark. Further, it is unlikely that the goods of the applicant and the goods of the registrant travel in the same channels of trade. The kitchen machinery of the applicant is typically sold through appliance retailers, while the kitchen gadgets may be sold in discount stores. This further reinforces the distinction between the goods of the applicant and those of the registrant. Since the marks are sufficiently different to avoid a reasonable likelihood of confusion, and since the goods travel in different channels of trade, it is herein respectfully submitted that there is no reasonable likelihood of confusion between the mark of the applicant and the mark of the registrant.
CONCLUSION Applicant respectfully submits that the application is in condition for publication, and requests that the Examining Attorney approve and pass the application to publication and subsequent registration. |
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| SIGNATURE SECTION | |||||||||||||||||||||||||||||||||||||||||||||||||||||
| RESPONSE SIGNATURE | /Russell W. Warnock/ | ||||||||||||||||||||||||||||||||||||||||||||||||||||
| SIGNATORY'S NAME | Russell W. Warnock | ||||||||||||||||||||||||||||||||||||||||||||||||||||
| SIGNATORY'S POSITION | Senior IP Counsel | ||||||||||||||||||||||||||||||||||||||||||||||||||||
| DATE SIGNED | 06/05/2007 | ||||||||||||||||||||||||||||||||||||||||||||||||||||
| AUTHORIZED SIGNATORY | YES | ||||||||||||||||||||||||||||||||||||||||||||||||||||
| FILING INFORMATION SECTION | |||||||||||||||||||||||||||||||||||||||||||||||||||||
| SUBMIT DATE | Tue Jun 05 09:39:50 EDT 2007 | ||||||||||||||||||||||||||||||||||||||||||||||||||||
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20070605093950991449-786 12041-37011fba7839d294cf9 7ee5fdc9e21bbfa7-N/A-N/A- 20070605093722160021 |
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| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
RESPONSE
Applicant respectfully submits this response to the Examining Attorney's Office Action of 12/06/2006, for which this response is timely filed.
The present mark has been rejected based on an asserted likelihood of confusion with the mark “Experience The Difference. Savor The Results.” which is the subject of U.S. Trademark Registration No. 3160277 and is used for cutlery, cookware, measuring spoons, measuring cups and other kitchen gadgets. Notably, the rejection is applied to the applicant’s goods listed in International Class 11 only. Applicant’s goods in International Class 11 include household and kitchen machines such as kitchen appliances for cooking, baking, frying, grilling and electric cooking pots, microwaves, exhaust fans, grease filters, ventilation hoods and the like. The registrant’s mark is used for cutlery, cookware including pots and pans and skillets, measuring cups and spoons, and other kitchen gadgets. Applicant respectfully traverses this rejection and submits to the contrary that there is no reasonable likelihood of confusion between the present mark and the cited mark.
Even though the marks include the common terms "Experience The Difference", the cited mark includes the sentence, "Savor The Results", which acts to set the mark apart from the present mark. The mere fact that marks share elements, even dominant elements, does not compel a conclusion of likelihood of confusion. Kirkpatrick, Likelihood of Confusion in Trademark Law, § 4.10.A. “The use of identical, even dominant, words in common does not automatically mean that two marks are similar.” General Mills, Inc. v. Kellogg Co., 3 USPQ 2d 1442, 1445 (8th Cir. 1997). The cases cited by Kirkpatrick in support of this proposition and a finding of no likelihood of confusion were the following:
Mark
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Case |
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MILLER v. OL’ BOB MILLER’S, both for beverages |
Miller Brewing Co. v. Premier Beverages, 210 USPQ 43, 48-49 (TTAB. 1981) |
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KISSES v. A BIG KISS FOR YOU SEALED WITH A KISS, both for chocolates |
Hershey Foods Corp. v. Cerreta, 195 USPQ 246 (TTAB 1977) |
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REX v. MERCIREX, both for medications |
United Drug Co. v. Mercirex Co., 86 USPQ 112 (CCPA 1950). |
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FINAL v. FINAL FLIP, both for rodenticide |
Bell Labs, Inc. v. Colonial Prods, Inc., 231 USPQ 569 (S.D. Fla. 1986) |
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SPEX, INC. v. THE JOY OF SPEX, INC., and logo, both for sale of eyewear |
Spex, Inc. v. Joy of Spex, Inc., 31 USPQ2d 1019 (N.D. Ill. 1994) |
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CRISTAL v. CRYSTAL CREEK, both for wine |
Champagne Louis Roederer S.A. v. Delicato Vineyards, 47 USPQ2d 1459 (Fed. Cir. 1998) |
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JET v. AEROB-A-JET, both for waste water treatment devices |
Jet Inc. v. Sewage Aeration Systems, 49 USPQ2d 1355 (6th Cir. 1999) |
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XL v. STEAMEX DELUXE 15 XL both for carpet cleaners |
Oreck Corp. v. United States Floor Sys., Inc., 231 USPQ 634, 638 (5th Cir. 1986) |
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PATIO for Mexican-style foods v. TAPATIO for sauce |
ConAgra, Inc. v. Saavedra, 4 USPQ2d 1245, 1247 (TTAB 1987) |
It should be noted that the above marks are for the same goods. Here the goods are different - a distinction which further avoids likelihood of confusion.
Further, the mark EXPERIENCE THE DIFFERENCE is the subject of various trademark registrations owned by third parties as set forth below.
|
Registration No. |
Goods |
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2997848 |
Candles |
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2869674 |
Water Filtering Units |
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3075889 |
Brazilian Steakhouse |
|
3057738 |
Concession Services Featuring Soft Drinks And Foods |
|
2789922 |
Movie Theater Services |
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3024150 |
Medical And Surgical Services In The Field Of Ophthalmology |
|
2582196 |
Employment Agency Services |
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2607363 |
Label Printing Machines |
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2612287 |
Packaging And Signs, Manufacturing Packing And Contract Packaging Of Articles For Others |
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2475739 |
Manufacture Of Textiles And Yarns For Others |
|
Registration No. |
Goods |
|
2531136 |
Footwear |
|
2436295 |
Dental Floss |
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1792973 |
Travel And Transportation Services |
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1656126 |
Calculators |
In addition, there are numerous applications outstanding for the mark EXPERIENCE THE DIFFERENCE. Accordingly, the common terms “EXPERIENCE THE DIFFERENCE” cannot be regarded as terms that consumers will rely upon to distinguish between the many trademarks comprising such terms and any additions or deletions from the mark should act to further set the mark apart from similar marks.
Confusion is unlikely because of the difference in products upon which Applicant's Mark and the cited mark are used. In assessing the likelihood of confusion, the "nature of the products themselves and the structure of the relevant market" are paramount. Cadbury Beverages v. Cott Corp., 73 F.3d 474, 480 (2d Cir. 1996); Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 967 (2d Cir. 1981).
The mere fact that the cited mark and Applicant's Mark both involve goods sold in the same field is insufficient to warrant a refusal. Astra Pharmaceutical Prods. v. Beckman Instruments, Inc., 718 F.2d 1201, 1205-09 (1st Cir. 1983) (holding that goods were not related though they were sold under identical marks in the health care field); Clayton Mark & Co. v. Westinghouse Elec. Corp., 356 F.2d 943 (C.C.P.A. 1966) (MARK for electrical conduit not likely to cause confusion with MARK 75 for industrial circuit breaker); Checkpoint Sys. v. Check Point Software Techs., Inc., 104 F. Supp.2d 427, 467-68 (D.N.J. 2000) (no likelihood of confusion between identical marks used for goods that were both in the corporate security field).
This holds equally true for related goods sold in the kitchen products area. See, e.g., American Optical Corp. v. American Olean Tile Co., 185 U.S.P.Q. 405 (S.D.N.Y. 1974) ("AO" for floor coating versus ceramic tile); In re Tricam Indus., Inc., 2003 TTAB LEXIS 83, at *6 (T.T.A.B. 2003) (not citable as precedent) (UNIFRAME for metal ladders and UNIFRAME for vinyl windows and doors not confusing; rejecting argument that the goods were related simply because both goods sold in home improvement stores).
It is unlikely that consumers, when faced with the two distinct marks in the marketplace will be confused into thinking that the kitchen appliances of the applicant come from the same source as the kitchen gadgets and other tools from the owner of the cited mark. Further, it is unlikely that the goods of the applicant and the goods of the registrant travel in the same channels of trade. The kitchen machinery of the applicant is typically sold through appliance retailers, while the kitchen gadgets may be sold in discount stores. This further reinforces the distinction between the goods of the applicant and those of the registrant.
Since the marks are sufficiently different to avoid a reasonable likelihood of confusion, and since the goods travel in different channels of trade, it is herein respectfully submitted that there is no reasonable likelihood of confusion between the mark of the applicant and the mark of the registrant.
CONCLUSION
Applicant respectfully submits that the application is in condition for publication, and requests that the Examining Attorney approve and pass the application to publication and subsequent registration.