| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 78707428 |
| LAW OFFICE ASSIGNED | LAW OFFICE 102 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
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RESPONSE TO OFFICE ACTION DATED MARCH 21, 2006
REMARKS
In the Office Action, the Examining Attorney initially refused registration of Applicant’s Mark on the grounds of likelihood of confusion under Section 2(d), citing the registered mark, BRIDGEPORT, Registration No. 2,575,498 (the “Cited Mark”).
Applicant respectfully submits that concurrent registration and use of Applicant’s Mark is not likely to cause confusion with the Cited Mark and requests that the refusal to register be withdrawn and that Applicant’s application be approved for publication.
DISCUSSION
Applicant’s Mark is not likely to cause confusion with the Cited Mark because: i) the respective goods of the marks at issue are sufficiently different to avoid confusion; and ii) the Cited Mark is entitled to a narrow scope of protection.
Reconsideration of the above-identified application is respectfully requested.
A. The Respective Goods are Sufficiently Different to Avoid Confusion
In determining likelihood of confusion under Section 2(d), the similarity or dissimilarity and nature of the goods offered under the marks must be considered. See In re E.I. Du Pont de Nemours & Co., 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). Applicant’s Mark is to be used for “metal doors; metal windows; non-metal doors; non-metal windows.” Conversely, the Cited Mark covers “non-metal prefinished wall paneling with a decorative wood grain finish.” Applicant submits that these goods are different in nature, and are used for completely different purposes, such that a consumer would not necessarily expect that the goods come from the same source.
The peaceful coexistence on the Principal Register of the following pairs of identical marks for goods similar or identical to those at issue in the present case is persuasive evidence that consumers are used to distinguishing among such marks, and supports the conclusion that consumers would be able to differentiate between Applicant’s Mark and the Cited Mark due to the differences in the goods.
The pairs of pertinent registrations and published applications which currently coexist or have coexisted by apparently unrelated entities include:
1. (a). TRIO, U.S. Registration No. 2,805,250, “building materials, namely, non-metal windows” and “building materials, namely metal windows” owned by U.S. Block Windows Inc.; and (b). TRIO, U.S. Application Serial No. 76/317,316, “laminate floor panels” owned by Premark RWP Holdings, Inc. (abandoned for failure to file a Statement of Use, but would have coexisted with Reg. No. 2,805,250);
2. (a). HERITAGE, U.S. Application Serial No. 75/670,593, “non-metal interior residential doors” owned by Masonite Holdings, Inc. (Notice of Allowance issued); and b. HERITAGE, U.S. Registration No. 1,383,403, “vinyl siding” owned by Reynolds Metals Company;
3. (a). MARINER, U.S. Registration No. 1,989,645, “specialty plywood panels designed to meet the higher quality and performance requirements of the boat building and boat repair industry” owned by Dixie Plywood Company of Tampa, Inc. (Cancelled Section 8; coexisted with the following reference); and (b). MARINER, U.S. Registration No. 1,028,674, “doors” owned by Simpson Door Company; and
4. (a). PRESTIGE, U.S. Registration No. 2,023,339, “non-metal windows and patio doors” owned by American Weather-Seal Company and (b). PRESTIGE, U.S. Registration No. 1,371,309, “building siding, namely, vinyl siding;” owned by Vytec Corporation.
True and correct copies of printouts from the PTO’s TESS database concerning the referenced registrations and applications are attached as Exhibit A.
These pairs of coexisting marks establish that windows and doors are not similar to wall paneling. Further, Applicant submits that the Internet printouts attached to the Office Action do not establish that consumers would perceive that Applicant’s goods and the goods of the Cited Mark emanate from the same source. Much of the evidence cited by the Examiner is distinguishable. For example, the web site “showevent.com” contains a list of suppliers of “windows,” “doors, and “siding,” with each listed as a separate category and with separate suppliers. The web site “traditional-building.com” is a list of retailers or suppliers of building materials. Only one supplier on the entire list references “custom windows and doors” and “paneling.” The Georgia-Pacific website printout submitted by the Examiner does not have a reference to Applicant’s goods, namely, windows and doors. The “kitchens.com” web site is apparently a general information web site that has information on a number of kitchen remodeling issues and also contains links to “appliances,” “pulls and knobs,” “sinks and faucets,” and so forth. It does not establish that Applicant’s goods and the goods of the Cited Marks would emanate from the same source. Finally, the “macraesbluebook.com” web site is a directory of manufacturers of various wood products, but does not prove that all those entities are actually in business manufacturing windows, doors and siding.
In summary, Applicant submits that Applicant’s Mark is distinguishable from the Cited Mark given the differences in Applicant’s goods and the goods of the Cited Mark, such that consumer confusion is not likely.
B. Cited Mark Only Entitled to Narrow Scope of Protection
The scope of protection accorded a trade or service mark depends in part on the strength of the mark. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §11:73 (1998). Applicant asserts that Cited Mark is weakened by the presence of the following other “BRIDGEPORT” marks registered on the Principal Register by apparently unrelated entities. Under the standard set by the Examiner, both of these registrations could be viewed as being at least as related to the non-metal paneling of the Cited Mark as the goods of Applicant’s Mark in that they are used in the manufacture or installation of non-metal paneling.
a. BRIDGEPORT & Design, 0,672,452, for “power driven machines for cutting, shaping and otherwise operating on work articles and materials together with parts thereof and attachments and accessories therefor-namely, milling machines, self powered milling heads, milling cutters, broaching and slotting machines, self powered broaching and slotting heads, profiling and shaping machines, duplicating and tracing machines, drilling and boring machines, planing machines, table travel stop attachments, measuring attachments, raising blocks, power feed units, rotary tables, dividing heads, coolant pumps, vertical to horizontal power transmitting attachments, milling cutter holders, fly cutters, stub arbors, chuck arbors, threaded arbors, collets, adapters for self powered machine heads, work holding vises, gauges, adjustable boring heads, clamping devices, hold-down straps;” and
b. BRIDGEPORT (Stylized), 0,674,925 for “screwdrivers.”
True and correct copies of printouts from the PTO’s TESS database concerning the referenced registrations are attached at Exhibit B.
C. Doubts Resolved in Favor of the Applicant
If the Examining Attorney still waivers on the question of likelihood of confusion, Applicant urges the Examining Attorney to consider that doubts are to be resolved in the Applicant’s favor, on the theory that any person who believes that he or she would be damaged by the registration will have an opportunity to oppose the registration. In re Gourmet Bakers, Inc., 173 U.S.P.Q. 565 (T.T.A.B. 1972); see also In re Conductive Sys., Inc., 220 U.S.P.Q. 84 (T.T.A.B.) 1983; accord In re Aid Labs., Inc., 221 U.S.P.Q. 1215 (T.T.A.B. 1984); In re Bel Paese Sales Co., 1 U.S.P.Q.2d 1233 (T.T.A.B. 1986); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F. 2d 1567 (Fed. Cir. 1987).
CONCLUSION
In view of the foregoing, Applicant respectfully submits that this application is in condition for publication and action consistent therewith is respectfully requested. If a telephone conference would expedite the processing of this application, the Examining Attorney is requested to contact the Applicant at (302) 798-0620.
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) |
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| \\TICRS\EXPORT4\IMAGEOUT4 \787\074\78707428\xml1\RO A0003.JPG | |
| \\TICRS\EXPORT4\IMAGEOUT4 \787\074\78707428\xml1\RO A0004.JPG | |
| \\TICRS\EXPORT4\IMAGEOUT4 \787\074\78707428\xml1\RO A0005.JPG | |
| \\TICRS\EXPORT4\IMAGEOUT4 \787\074\78707428\xml1\RO A0006.JPG | |
| \\TICRS\EXPORT4\IMAGEOUT4 \787\074\78707428\xml1\RO A0007.JPG | |
| \\TICRS\EXPORT4\IMAGEOUT4 \787\074\78707428\xml1\RO A0008.JPG | |
| \\TICRS\EXPORT4\IMAGEOUT4 \787\074\78707428\xml1\RO A0009.JPG | |
| \\TICRS\EXPORT4\IMAGEOUT4 \787\074\78707428\xml1\RO A0010.JPG | |
| \\TICRS\EXPORT4\IMAGEOUT4 \787\074\78707428\xml1\RO A0011.JPG | |
| \\TICRS\EXPORT4\IMAGEOUT4 \787\074\78707428\xml1\RO A0012.JPG | |
| \\TICRS\EXPORT4\IMAGEOUT4 \787\074\78707428\xml1\RO A0013.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Print outs from USPTO website |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Steven M. Levy/ |
| SIGNATORY'S NAME | Steven M. Levy |
| SIGNATORY'S POSITION | President |
| DATE SIGNED | 08/21/2006 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Aug 21 12:18:29 EDT 2006 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20060821121829645616-787 07428-340b2f2e922b851fb65 a550f38a141c20-N/A-N/A-20 060821115722723703 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
RESPONSE TO OFFICE ACTION DATED MARCH 21, 2006
REMARKS
In the Office Action, the Examining Attorney initially refused registration of Applicant’s Mark on the grounds of likelihood of confusion under Section 2(d), citing the registered mark, BRIDGEPORT, Registration No. 2,575,498 (the “Cited Mark”).
Applicant respectfully submits that concurrent registration and use of Applicant’s Mark is not likely to cause confusion with the Cited Mark and requests that the refusal to register be withdrawn and that Applicant’s application be approved for publication.
DISCUSSION
Applicant’s Mark is not likely to cause confusion with the Cited Mark because: i) the respective goods of the marks at issue are sufficiently different to avoid confusion; and ii) the Cited Mark is entitled to a narrow scope of protection.
Reconsideration of the above-identified application is respectfully requested.
A. The Respective Goods are Sufficiently Different to Avoid Confusion
In determining likelihood of confusion under Section 2(d), the similarity or dissimilarity and nature of the goods offered under the marks must be considered. See In re E.I. Du Pont de Nemours & Co., 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). Applicant’s Mark is to be used for “metal doors; metal windows; non-metal doors; non-metal windows.” Conversely, the Cited Mark covers “non-metal prefinished wall paneling with a decorative wood grain finish.” Applicant submits that these goods are different in nature, and are used for completely different purposes, such that a consumer would not necessarily expect that the goods come from the same source.
The peaceful coexistence on the Principal Register of the following pairs of identical marks for goods similar or identical to those at issue in the present case is persuasive evidence that consumers are used to distinguishing among such marks, and supports the conclusion that consumers would be able to differentiate between Applicant’s Mark and the Cited Mark due to the differences in the goods.
The pairs of pertinent registrations and published applications which currently coexist or have coexisted by apparently unrelated entities include:
1. (a). TRIO, U.S. Registration No. 2,805,250, “building materials, namely, non-metal windows” and “building materials, namely metal windows” owned by U.S. Block Windows Inc.; and (b). TRIO, U.S. Application Serial No. 76/317,316, “laminate floor panels” owned by Premark RWP Holdings, Inc. (abandoned for failure to file a Statement of Use, but would have coexisted with Reg. No. 2,805,250);
2. (a). HERITAGE, U.S. Application Serial No. 75/670,593, “non-metal interior residential doors” owned by Masonite Holdings, Inc. (Notice of Allowance issued); and b. HERITAGE, U.S. Registration No. 1,383,403, “vinyl siding” owned by Reynolds Metals Company;
3. (a). MARINER, U.S. Registration No. 1,989,645, “specialty plywood panels designed to meet the higher quality and performance requirements of the boat building and boat repair industry” owned by Dixie Plywood Company of Tampa, Inc. (Cancelled Section 8; coexisted with the following reference); and (b). MARINER, U.S. Registration No. 1,028,674, “doors” owned by Simpson Door Company; and
4. (a). PRESTIGE, U.S. Registration No. 2,023,339, “non-metal windows and patio doors” owned by American Weather-Seal Company and (b). PRESTIGE, U.S. Registration No. 1,371,309, “building siding, namely, vinyl siding;” owned by Vytec Corporation.
True and correct copies of printouts from the PTO’s TESS database concerning the referenced registrations and applications are attached as Exhibit A.
These pairs of coexisting marks establish that windows and doors are not similar to wall paneling. Further, Applicant submits that the Internet printouts attached to the Office Action do not establish that consumers would perceive that Applicant’s goods and the goods of the Cited Mark emanate from the same source. Much of the evidence cited by the Examiner is distinguishable. For example, the web site “showevent.com” contains a list of suppliers of “windows,” “doors, and “siding,” with each listed as a separate category and with separate suppliers. The web site “traditional-building.com” is a list of retailers or suppliers of building materials. Only one supplier on the entire list references “custom windows and doors” and “paneling.” The Georgia-Pacific website printout submitted by the Examiner does not have a reference to Applicant’s goods, namely, windows and doors. The “kitchens.com” web site is apparently a general information web site that has information on a number of kitchen remodeling issues and also contains links to “appliances,” “pulls and knobs,” “sinks and faucets,” and so forth. It does not establish that Applicant’s goods and the goods of the Cited Marks would emanate from the same source. Finally, the “macraesbluebook.com” web site is a directory of manufacturers of various wood products, but does not prove that all those entities are actually in business manufacturing windows, doors and siding.
In summary, Applicant submits that Applicant’s Mark is distinguishable from the Cited Mark given the differences in Applicant’s goods and the goods of the Cited Mark, such that consumer confusion is not likely.
B. Cited Mark Only Entitled to Narrow Scope of Protection
The scope of protection accorded a trade or service mark depends in part on the strength of the mark. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §11:73 (1998). Applicant asserts that Cited Mark is weakened by the presence of the following other “BRIDGEPORT” marks registered on the Principal Register by apparently unrelated entities. Under the standard set by the Examiner, both of these registrations could be viewed as being at least as related to the non-metal paneling of the Cited Mark as the goods of Applicant’s Mark in that they are used in the manufacture or installation of non-metal paneling.
a. BRIDGEPORT & Design, 0,672,452, for “power driven machines for cutting, shaping and otherwise operating on work articles and materials together with parts thereof and attachments and accessories therefor-namely, milling machines, self powered milling heads, milling cutters, broaching and slotting machines, self powered broaching and slotting heads, profiling and shaping machines, duplicating and tracing machines, drilling and boring machines, planing machines, table travel stop attachments, measuring attachments, raising blocks, power feed units, rotary tables, dividing heads, coolant pumps, vertical to horizontal power transmitting attachments, milling cutter holders, fly cutters, stub arbors, chuck arbors, threaded arbors, collets, adapters for self powered machine heads, work holding vises, gauges, adjustable boring heads, clamping devices, hold-down straps;” and
b. BRIDGEPORT (Stylized), 0,674,925 for “screwdrivers.”
True and correct copies of printouts from the PTO’s TESS database concerning the referenced registrations are attached at Exhibit B.
C. Doubts Resolved in Favor of the Applicant
If the Examining Attorney still waivers on the question of likelihood of confusion, Applicant urges the Examining Attorney to consider that doubts are to be resolved in the Applicant’s favor, on the theory that any person who believes that he or she would be damaged by the registration will have an opportunity to oppose the registration. In re Gourmet Bakers, Inc., 173 U.S.P.Q. 565 (T.T.A.B. 1972); see also In re Conductive Sys., Inc., 220 U.S.P.Q. 84 (T.T.A.B.) 1983; accord In re Aid Labs., Inc., 221 U.S.P.Q. 1215 (T.T.A.B. 1984); In re Bel Paese Sales Co., 1 U.S.P.Q.2d 1233 (T.T.A.B. 1986); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F. 2d 1567 (Fed. Cir. 1987).
CONCLUSION
In view of the foregoing, Applicant respectfully submits that this application is in condition for publication and action consistent therewith is respectfully requested. If a telephone conference would expedite the processing of this application, the Examining Attorney is requested to contact the Applicant at (302) 798-0620.
