PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 04/2009) |
Input Field |
Entered |
SERIAL NUMBER | 78918611 |
LAW OFFICE ASSIGNED | LAW OFFICE 103 |
MARK SECTION (no change) | |
ARGUMENT(S) | |
The Examining Attorney has refused registration in Class 24 pursuant to Trademark Act Section 2(d) on the grounds that there is a likelihood of confusion between Applicant's mark and the subject marks of Regs. Nos. 2441615 and 2592176 in the name of Burma-Bibas, Inc. (the "Cited Registrations"). Applicant respectfully disagrees with the Examining Attorney's Section 2(d) refusal and submits the following evidence and arguments in support of registration.
1. Confusion is Not Likely Between Applicant's Mark And The Mark In The Cited Registration. (a) Applicant's Goods And The Goods Offered Under The Cited Registrations Do Not Overlap.
The Examining Attorney has cited the '615 and '176 registrations for ARTHOUSE and ARTHOUSE & Design in connection with "neckties, shirts, jackets, sweaters, slacks, pants, swimwear, shorts, vests" in Int. Cl. 25 as a basis for refusal to register Applicant's mark in connection with "textiles and textile goods not included in other classes; cloth on the roll, bed linen, table linen, upholstery fabrics, wall hangings of textile" in Int. Cl. 24 under Section 2(d) of the Trademark Act. In contrast, the Class 24 goods in the instant application clearly indicates that apparel goods are not included in the application ("textiles and textile goods not included in other classes;…."). The Cited Registrant is a designer menswear manufacturer that markets its goods through four high-end retail chains, namely, Saks Fifth Avenue, Nordstrom, Neiman Marcus, and Bloomingdale's. The attached screenshot of the "www.burmabibas.com" web site contains the message "Visit us at these fine stores!" and the logo marks of the foregoing four retailers. Based on the Cited Registrant's own web site, it is clear that the subject goods of the Cited Registrations are exclusively marketed to up-market consumers through four highly specific retail channels, and are otherwise not widely available. Unlike the goods in the Cited Registrations, Applicant does not manufacture apparel goods of any type; rather, it manufactures its textile products primarily for use by the interior design trade. Further, Applicant's goods are mainly sold through hardware and interior design outlets. The goods are therefore unlikely to appear alongside the goods in the Cited Registrations. In the rare instance in which the goods might appear in a department store, they would obviously be in different departments than the menswear goods identified in the Cited Registrations. The Examining Attorney makes the argument that "[a]s clothing marks [sic] are made from textiles and cloth rolls, these goods are inherently related." Applicant disagrees, since the goods at issue are not so closely related that the use of similar marks would result in confusion, mistake or deception. See Mr. Hero Sandwich Systems, Inc. v. Roman Meal Co., 781 F.2d 884, 228 U.S.P.Q. 364 (Fed. Cir. 1986) (no confusion between ROMANBURGER for prepared sandwiches and ROMAN MEAL for bread and hamburger buns, despite fact that bread and buns are an important part of a sandwich). Apart from the obvious differences between interior design textiles and finished designer menswear, the differences in the respective marketing channels, and sophistication of the buyers in making purchasing decisions militate strongly against finding a likelihood of confusion. Applicant's and the Cited Registrant's customer universes comprise two non‑overlapping groups of sophisticated consumers who know what they are looking for. None of Applicant's customers would be confused by a line of menswear bearing the ARTHOUSE mark; likewise, it is highly unlikely that the Cited Registrant's customers would confuse the name of interior design textiles with a clothing line of a designer menswear brand.
In light of the foregoing, Applicant respectfully submits that, because of the substantial dissimilarities between the respective goods, marketing channels and consumer universes in connection with Applicant and the Cited Registrant, consumer confusion is not likely.
CONCLUDING REMARKS
With the above, and as the Examining Attorney's search of Office records failed to reveal any similar registered or pending marks which would bar registration under Trademark Act Section 2(d), it is believed that the application is in condition for publication. Such action is respectfully requested. |
|
EVIDENCE SECTION | |
EVIDENCE FILE NAME(S) |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0002.JP G |
DESCRIPTION OF EVIDENCE FILE | Printout of Cited Registrant's web site "www.burmabibas.com" showing exclusive retail distribution through four high-end retailers. |
GOODS AND/OR SERVICES SECTION (016)(current) | |
INTERNATIONAL CLASS | 016 |
DESCRIPTION | |
Printed publications relating to design; photographs; posters; printed reproductions of artistic works | |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(e) |
FOREIGN REGISTRATION NUMBER |
2781110 |
FOREIGN REGISTRATION COUNTRY |
EM |
FOREIGN REGISTRATION DATE |
06/30/2004 |
FOREIGN EXPIRATION DATE | 07/18/2012 |
STANDARD CHARACTERS OR EQUIVALENT |
YES |
GOODS AND/OR SERVICES SECTION (016)(proposed) | |
INTERNATIONAL CLASS | 016 |
DESCRIPTION | |
Printed publications relating to design; photographs; posters; printed reproductions of artistic works | |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(e) |
FOREIGN REGISTRATION NUMBER |
2781110 |
FOREIGN REGISTRATION COUNTRY |
European Community |
FOREIGN REGISTRATION DATE |
06/30/2004 |
FOREIGN EXPIRATION DATE | 07/18/2012 |
FOREIGN REGISTRATION FILE NAME(S) | |
ORIGINAL PDF FILE | FRU0-6310711710-224840238_._arthouse.pdf |
CONVERTED PDF FILE(S) (5 pages) |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0003.JP G |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0004.JP G | |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0005.JP G | |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0006.JP G | |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0007.JP G | |
GOODS AND/OR SERVICES SECTION (019)(current) | |
INTERNATIONAL CLASS | 019 |
DESCRIPTION | Ceramic tiles |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(e) |
FOREIGN REGISTRATION NUMBER |
3957561 |
FOREIGN REGISTRATION COUNTRY |
EM |
FOREIGN REGISTRATION DATE |
11/29/2005 |
FOREIGN EXPIRATION DATE | 07/28/2014 |
STANDARD CHARACTERS OR EQUIVALENT |
YES |
GOODS AND/OR SERVICES SECTION (019)(proposed) | |
INTERNATIONAL CLASS | 019 |
DESCRIPTION | Ceramic tiles |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(e) |
FOREIGN REGISTRATION NUMBER |
2781110 |
FOREIGN REGISTRATION COUNTRY |
European Community |
FOREIGN REGISTRATION DATE |
06/30/2004 |
FOREIGN EXPIRATION DATE | 07/18/2012 |
FOREIGN REGISTRATION FILE NAME(S) | |
ORIGINAL PDF FILE | FRU1-6310711710-224840238_._arthouse.pdf |
CONVERTED PDF FILE(S) (5 pages) |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0008.JP G |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0009.JP G | |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0010.JP G | |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0011.JP G | |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0012.JP G | |
GOODS AND/OR SERVICES SECTION (020)(current) | |
INTERNATIONAL CLASS | 020 |
DESCRIPTION | |
Furniture; cushions and pillows; jewellery boxes; cutlery boxes; coat hangers and coat-stands; figurines; wall plaques; picture frames; mirrors; baskets; boxes; clothes silks; curtain holders; curtain hooks, curtain rails, curtain rings, curtain rods, curtain rollers, curtain tiebacks; cushions, mouldings for picture frames; seashells and animal shells; picture frame brackets; decorative wall plaques; ornaments made of plaster | |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(e) |
STANDARD CHARACTERS OR EQUIVALENT |
YES |
GOODS AND/OR SERVICES SECTION (020)(proposed) | |
INTERNATIONAL CLASS | 020 |
DESCRIPTION | |
Furniture; cushions and pillows; jewelry boxes not of metal; cutlery boxes; coat hangers and coat-stands; figurines, namely, figurines of bone, ivory, plaster, plastic, wax, wood; wall plaques; picture frames; mirrors; baskets; boxes, namely, plastic boxes, non-metal boxes; curtain holders, namely curtain rings; curtain hooks, curtain rails, curtain rings, curtain rods, curtain rollers; cushions, mouldings for picture frames; seashells and animal shells; picture frame brackets; decorative wall plaques; ornaments made of plaster | |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(e) |
GOODS AND/OR SERVICES SECTION (024)(current) | |
INTERNATIONAL CLASS | 024 |
DESCRIPTION | |
Textiles and textile goods not included in other classes; cloth on the roll, bed linen, table linen, upholstery fabrics, wall hangings of textile | |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(e) |
STANDARD CHARACTERS OR EQUIVALENT |
YES |
GOODS AND/OR SERVICES SECTION (024)(proposed) | |
INTERNATIONAL CLASS | 024 |
DESCRIPTION | |
Curtain tiebacks of textile material; textile fabrics for the manufacture of clothing, textile fabrics for home and commercial use, textile tablecloths, textile used as a lining for clothing; cloth on the roll, namely, silk cloth, crepe cloth, woollen cloth, cotton cloth, cloth made of synthetic materials; bed linen, table linen, upholstery fabrics, wall hangings of textile | |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(e) |
FOREIGN REGISTRATION NUMBER |
2781110 |
FOREIGN REGISTRATION COUNTRY |
European Community |
FOREIGN REGISTRATION DATE |
06/30/2004 |
FOREIGN EXPIRATION DATE | 07/18/2012 |
FOREIGN REGISTRATION FILE NAME(S) | |
ORIGINAL PDF FILE | FRU3-6310711710-224840238_._arthouse.pdf |
CONVERTED PDF FILE(S) (5 pages) |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0013.JP G |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0014.JP G | |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0015.JP G | |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0016.JP G | |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0017.JP G | |
GOODS AND/OR SERVICES SECTION (027)(current) | |
INTERNATIONAL CLASS | 027 |
DESCRIPTION | |
Non-textile wall hangings, floor coverings; Wall hangings (non-textile), floor coverings | |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(e) |
STANDARD CHARACTERS OR EQUIVALENT |
YES |
GOODS AND/OR SERVICES SECTION (027)(proposed) | |
INTERNATIONAL CLASS | 027 |
DESCRIPTION | Non-textile wall hangings, floor coverings |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(e) |
FOREIGN REGISTRATION NUMBER |
2781110 |
FOREIGN REGISTRATION COUNTRY |
European Community |
FOREIGN REGISTRATION DATE |
06/30/2004 |
FOREIGN EXPIRATION DATE | 07/18/2012 |
FOREIGN REGISTRATION FILE NAME(S) | |
ORIGINAL PDF FILE | FRU4-6310711710-224840238_._arthouse.pdf |
CONVERTED PDF FILE(S) (5 pages) |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0018.JP G |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0019.JP G | |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0020.JP G | |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0021.JP G | |
\\TICRS2\EXPORT13\789\186 \78918611\xml1\ROA0022.JP G | |
GOODS AND/OR SERVICES SECTION (021)(class added) | |
INTERNATIONAL CLASS | 021 |
DESCRIPTION | |
Cutlery holders; figurines, namely china, crystal, glass and porcelain figurines; baskets, namely, plant baskets, waste baskets, fitted picnic baskets. | |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(e) |
STANDARD CHARACTERS OR EQUIVALENT |
YES |
PAYMENT SECTION | |
NUMBER OF CLASSES | 1 |
FEE PER CLASS | 325 |
TOTAL FEES DUE | 325 |
SIGNATURE SECTION | |
DECLARATION SIGNATURE | /victor sapphire/ |
SIGNATORY'S NAME | Victor Sapphire |
SIGNATORY'S POSITION | Attorney for Applicant |
DATE SIGNED | 06/05/2007 |
RESPONSE SIGNATURE | /victor sapphire/ |
SIGNATORY'S NAME | Victor Sapphire |
SIGNATORY'S POSITION | Attorney for Applicant |
DATE SIGNED | 06/05/2007 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Tue Jun 05 23:20:48 EDT 2007 |
TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0070605232048790685-78918 611-370d2e860754afb79d3ad ef4c619fd6a5d-DA-3847-200 70605224840238117 |
PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 04/2009) |
The Examining Attorney has refused registration in Class 24 pursuant to Trademark Act Section 2(d) on the grounds that there is a likelihood of confusion between Applicant's mark and the subject marks of Regs. Nos. 2441615 and 2592176 in the name of Burma-Bibas, Inc. (the "Cited Registrations"). Applicant respectfully disagrees with the Examining Attorney's Section 2(d) refusal and submits the following evidence and arguments in support of registration.
1. Confusion is Not Likely Between Applicant's Mark And The Mark In The Cited Registration.
(a) Applicant's Goods And The Goods Offered Under
The Cited Registrations Do Not Overlap.
The Examining Attorney has cited the '615 and '176 registrations for ARTHOUSE and ARTHOUSE & Design in connection with "neckties, shirts, jackets, sweaters, slacks, pants, swimwear, shorts, vests" in Int. Cl. 25 as a basis for refusal to register Applicant's mark in connection with "textiles and textile goods not included in other classes; cloth on the roll, bed linen, table linen, upholstery fabrics, wall hangings of textile" in Int. Cl. 24 under Section 2(d) of the Trademark Act. In contrast, the Class 24 goods in the instant application clearly indicates that apparel goods are not included in the application ("textiles and textile goods not included in other classes;….").
The Cited Registrant is a designer menswear manufacturer that markets its goods through four high-end retail chains, namely, Saks Fifth Avenue, Nordstrom, Neiman Marcus, and Bloomingdale's. The attached screenshot of the "www.burmabibas.com" web site contains the message "Visit us at these fine stores!" and the logo marks of the foregoing four retailers. Based on the Cited Registrant's own web site, it is clear that the subject goods of the Cited Registrations are exclusively marketed to up-market consumers through four highly specific retail channels, and are otherwise not widely available. Unlike the goods in the Cited Registrations, Applicant does not manufacture apparel goods of any type; rather, it manufactures its textile products primarily for use by the interior design trade. Further, Applicant's goods are mainly sold through hardware and interior design outlets. The goods are therefore unlikely to appear alongside the goods in the Cited Registrations. In the rare instance in which the goods might appear in a department store, they would obviously be in different departments than the menswear goods identified in the Cited Registrations.
The Examining Attorney makes the argument that "[a]s clothing marks [sic] are made from textiles and cloth rolls, these goods are inherently related." Applicant disagrees, since the goods at issue are not so closely related that the use of similar marks would result in confusion, mistake or deception. See Mr. Hero Sandwich Systems, Inc. v. Roman Meal Co., 781 F.2d 884, 228 U.S.P.Q. 364 (Fed. Cir. 1986) (no confusion between ROMANBURGER for prepared sandwiches and ROMAN MEAL for bread and hamburger buns, despite fact that bread and buns are an important part of a sandwich). Apart from the obvious differences between interior design textiles and finished designer menswear, the differences in the respective marketing channels, and sophistication of the buyers in making purchasing decisions militate strongly against finding a likelihood of confusion.
Applicant's and the Cited Registrant's customer universes comprise two non‑overlapping groups of sophisticated consumers who know what they are looking for. None of Applicant's customers would be confused by a line of menswear bearing the ARTHOUSE mark; likewise, it is highly unlikely that the Cited Registrant's customers would confuse the name of interior design textiles with a clothing line of a designer menswear brand.
In light of the foregoing, Applicant respectfully submits that, because of the substantial dissimilarities between the respective goods, marketing channels and consumer universes in connection with Applicant and the Cited Registrant, consumer confusion is not likely.
CONCLUDING REMARKS
With the above, and as the Examining Attorney's search of Office records failed to reveal any similar registered or pending marks which would bar registration under Trademark Act Section 2(d), it is believed that the application is in condition for publication. Such action is respectfully requested.