| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 79042086 |
| LAW OFFICE ASSIGNED | LAW OFFICE 106 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Applicant hereby responds to the Examiner’s action dated November 14, 2007, as follows: Section 2(d) refusal – Class 24 Applicant carefully considered the Section 2(d) refusal. However, for the reasons given below, applicant respectfully disagrees with the Examiner's conclusion the applied-for mark is confusingly similar to the mark shown in the cited registration. In the instant case, applicant’s mark consists of a single word closely associated with a design element, which in combination, forms an integral unit. To the contrary, the cited mark consists of four alphabet letters, each of which is encircled and separated from the others by a relatively large blank space making it overall dissimilar to the applied-for mark visually, aurally, and in meaning. Because of the way the cited mark is constructed, it is arguable the applied-for mark creates an impression on relevant members of the public and trade dissimilar to it. The Examiner must take into account the visual, aural, and conceptual features of the marks in question and the overall impression they create in the perception of the average consumer, such a consumer being assumed to be reasonably well-informed, observant and circumspect, although having to rely on an imperfect picture of a mark which he/she has kept in mind. For these reasons, it is reasonable to conclude - in the marketplace members of the relevant public focus solely or principally on the individual elements of the cited mark and would view applicant’s mark sufficiently different and not confusingly similar.. Applicant believes past action by the Office is instructive regarding similarity of the marks. Office records indicate at the time the cited mark was filed, Registration No.2244727, for the mark AREA ART, was alive, but not a bar to registration of the cited mark. Like the goods the cited mark covers, those covered by Registration No.2244727 are home textiles. Thus, registration of the cited mark indicates the Office did not believe it to be confusingly similar to the then-existing registered mark AREA ART although both include an element the Examiner now says creates a likelihood of confusion between the applied-for mark and the cited reference. A copy of Registration No. 2244727 is attached to and made part of this response. AREA ART was registered May 19, 1999. The cited mark was the subject of a pending application filed January 20, 1999. These facts suggest that though marks may have letters in common, the differences and variation in the way they are combined and overall appearance are adequate to make them distinguishable. Accordingly, past practice of the Office in the instant case regarding a comparison of applicant’s mark and goods to those of the registrant’ is entitled to as much weight as past Office practice the Examiner relies upon by citing the cases the Examiner notes. On a balance of probabilities, there is no likelihood of confusion between applicant’s mark and the cited mark. Typically, a person who seeks textiles has some knowledge about them as well as their source. Thus, it is reasonable to conclude such persons can be said to be sophisticated to a certain degree and able to discern differences between marks dissimilar in appearance as well as the goods offered by applicant and the owner of the cited registration. These persons exercise care and deliberation in selecting such services and when obtaining them under normally prevalent conditions of the market are able to distinguish their source. Noting this, the Examiner’s attention is directed to the point that buyer sophistication is an important factor in evaluating likelihood of confusion. See: Plus Products v. Plus Discounts Foods, Inc., 222 U.S.P.Q. 373 (CA 1983). Confusion is less likely among such persons. Proper to withdraw refusalKeeping in mind the distinctions noted in this response, it is proper for the Examiner to withdraw the refusal. The Trademark Trial and Appeal Board and courts have found no likelihood of confusion in instances where marks have common elements but cumulative differences in sight and sound as well as meaning (in some instances less than those between applicant’s mark and the cited reference), although the goods/services were related or very similar. See: e.g., In re Software Design, Inc., 220 U.S.P.Q. 663 (TTAB 1983) [DOX for computer programming services not confusingly similar to DOC’s for custom manufacture of computer systems]; In re Conti, 220 U.S.P.Q. 745 (TTAB 1983) [SHEAR PERFECTION for barbershop, hair styling, and beauty salon services not confusingly similar to SHEER PERFECTION for make-up for legs and body]; Keebler Co. v. Murray Bakery Products, 9 U.S.P.Q.2d 1736 (CAFC 1989) [PECAN SANDIES not confusingly similar to PECAN SHORTERS for pecan cookies]; In re Bed & Breakfast Registry, 229 U.S.P.Q. 818 (CAFC 1986) [BED & BREAKFAST REGISTRY not confusingly similar to BED & BREAKFAST INTERNATIONAL, both for lodging reservation services]; and Rooster Brush Co. v. Preger Brush Co, 231 U.S.P.Q. 316 (TTAB 1986) [POLY PRO for paint brushes not confusingly similar to POLY FLO paint brushes and applicators]. In terms of determining the likelihood of confusion issue, the Examiner must consider and give substantial weight to all components of the marks in question. It is well established that marks must be considered in their entirety in connection with determining likelihood of confusion. See: American Home Products Corp. v. B.F. Asher & Company, 176 U.S.P.Q. 552 (CCPA 1973). When this is done in the instant case, it is reasonable to conclude that applicant’s mark, consisting of a word and design combination of equal prominence, is not confusingly similar to the cited reference. It is important the Examiner take into consideration case precedent established by Trademark Trial and Appeal Board and court opinions on the likelihood of confusion issue. The following are representative of those where there was a finding of no likelihood of confusion between marks that are the same for differing but related goods/services. See: e.g., In re General Motors Corp., 23 U.S.P.Q.2d 1465 (TTAB 1992) (GRAND PRIX for automobiles versus GRAND PRIX for automotive products and parts); In re Hair Masters Services, Inc., 17 U.S.P.Q.2d 1335 (CA5 1990) (HAIR MASTERS for haircutting, styling and nail care services versus HAIR MASTER for hair tonic); In re Electrolyte Laboratories, Inc., 16 U.S.P.Q.2d 1239 (CAFC 1990) (K+ for dietary potassium supplement versus K+ EFF for a potassium supplement). In light of the foregoing response, there are adequate reasons for the Examiner to withdraw the cited references and refusal to register and to publish the mark for opposition. Identification of goods In light of the Examiner’s comments regarding the identification of goods, applicant requests amendment of the application as noted herein. Class 11 Lighting fixtures for use in home and studies Class 20 Furniture of all kinds for the home, study and garden, mirrors, picture frames, and decorative items. Class 21 House and kitchen glassware, porcelain and earthenware not included in other classes. Class 24 Textile and textile goods, not included in other classes; cotton bed and table covers and “linen bed and table covers. Significance of mark To applicant’s knowledge and belief, neither AREA nor the infinity symbol have any significance as to the goods described in the application. Contact applicant’s attorneyKeeping in mind the foregoing, applicant respectfully requests the Examiner to publish this mark for opposition. If the Examiner has further questions about this application that can be discussed in a telephone conversation, the Examiner is hereby authorized to contact applicant's attorney. The Office can communicate with applicant’s attorney regarding this application by e-mail directed to: davidaweinstein@qwestoffice.net. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_20314280148-025138865_._Registration_No._2244727.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS2\EXPORT15\790\420\79042086\xml2\ROA0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | A printout of information in the United States Patent and Trademark Office online database regarding Registration No.2244727 |
| GOODS AND/OR SERVICES SECTION (004)(no change) | |
| GOODS AND/OR SERVICES SECTION (008)(no change) | |
| GOODS AND/OR SERVICES SECTION (011)(class deleted) | |
| INTERNATIONAL CLASS | 011 |
| DESCRIPTION | Apparatus for lighting for use in the home and in studies |
| GOODS AND/OR SERVICES SECTION (020)(current) | |
| INTERNATIONAL CLASS | 020 |
| DESCRIPTION | |
| Furniture of all kinds for the home, study and garden, mirrors, picture frames, furniture and decorative items not included in other classes | |
| GOODS AND/OR SERVICES SECTION (020)(proposed) | |
| INTERNATIONAL CLASS | 020 |
| DESCRIPTION | |
| Furniture of all kinds for the home, study and garden, mirrors, picture frames, and decorative items | |
| GOODS AND/OR SERVICES SECTION (021)(current) | |
| INTERNATIONAL CLASS | 021 |
| DESCRIPTION | |
| Household or kitchen utensils and containers, glassware, porcelain and earthenware not included in other classes | |
| GOODS AND/OR SERVICES SECTION (021)(proposed) | |
| INTERNATIONAL CLASS | 021 |
| DESCRIPTION | |
| House and kitchen glassware, porcelain and earthenware not included in other classes | |
| GOODS AND/OR SERVICES SECTION (024)(current) | |
| INTERNATIONAL CLASS | 024 |
| DESCRIPTION | |
| Textiles and textile goods, not included in other classes; bed and table covers | |
| GOODS AND/OR SERVICES SECTION (024)(proposed) | |
| INTERNATIONAL CLASS | 024 |
| DESCRIPTION | |
| Textile and textile goods, not included in other classes; cotton bed and table covers and "linen bed and table covers | |
| GOODS AND/OR SERVICES SECTION (027)(no change) | |
| GOODS AND/OR SERVICES SECTION (028)(no change) | |
| ADDITIONAL STATEMENTS SECTION | |
| SIGNIFICANCE OF MARK | "Area and the infinity design appearing in the mark has no significance in the relevant trade or industry or as applied to the goods/services listed in the application, no geographical significance, nor any meaning in a foreign language." |
| CORRESPONDENCE SECTION | |
| NAME | David A. Weinstein |
| STREET | 695 South Colorado Boulevard, Suite 360 |
| CITY | Denver |
| STATE | Colorado |
| ZIP/POSTAL CODE | 80246 |
| COUNTRY | United States |
| PHONE | 303-863-8818 |
| FAX | 303-863-8820 |
| davidaweinstein@qwestoffice.net | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /david a. weinstein 23577/ |
| SIGNATORY'S NAME | David A. Weinstein |
| SIGNATORY'S POSITION | Applicant's Attorney |
| DATE SIGNED | 03/13/2008 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Mar 13 03:11:42 EDT 2008 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.XXX- 20080313031142284734-7904 2086-4207965181d77845927a 4ca175378ef6e5c-N/A-N/A-2 0080313025138865070 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Applicant hereby responds to the Examiner’s action dated November 14, 2007, as follows:
Section 2(d) refusal – Class 24
Applicant carefully considered the Section 2(d) refusal. However, for the reasons given below, applicant respectfully disagrees with the Examiner's conclusion the applied-for mark is confusingly similar to the mark shown in the cited registration.
In the instant case, applicant’s mark consists of a single word closely associated with a design element, which in combination, forms an integral unit. To the contrary, the cited mark consists of four alphabet letters, each of which is encircled and separated from the others by a relatively large blank space making it overall dissimilar to the applied-for mark visually, aurally, and in meaning. Because of the way the cited mark is constructed, it is arguable the applied-for mark creates an impression on relevant members of the public and trade dissimilar to it.
The Examiner must take into account the visual, aural, and conceptual features of the marks in question and the overall impression they create in the perception of the average consumer, such a consumer being assumed to be reasonably well-informed, observant and circumspect, although having to rely on an imperfect picture of a mark which he/she has kept in mind. For these reasons, it is reasonable to conclude - in the marketplace members of the relevant public focus solely or principally on the individual elements of the cited mark and would view applicant’s mark sufficiently different and not confusingly similar..
Applicant believes past action by the Office is instructive regarding similarity of the marks. Office records indicate at the time the cited mark was filed, Registration No.2244727, for the mark AREA ART, was alive, but not a bar to registration of the cited mark. Like the goods the cited mark covers, those covered by Registration No.2244727 are home textiles. Thus, registration of the cited mark indicates the Office did not believe it to be confusingly similar to the then-existing registered mark AREA ART although both include an element the Examiner now says creates a likelihood of confusion between the applied-for mark and the cited reference. A copy of Registration No. 2244727 is attached to and made part of this response. AREA ART was registered May 19, 1999. The cited mark was the subject of a pending application filed January 20, 1999.
These facts suggest that though marks may have letters in common, the differences and variation in the way they are combined and overall appearance are adequate to make them distinguishable. Accordingly, past practice of the Office in the instant case regarding a comparison of applicant’s mark and goods to those of the registrant’ is entitled to as much weight as past Office practice the Examiner relies upon by citing the cases the Examiner notes.
On a balance of probabilities, there is no likelihood of confusion between applicant’s mark and the cited mark.
Typically, a person who seeks textiles has some knowledge about them as well as their source. Thus, it is reasonable to conclude such persons can be said to be sophisticated to a certain degree and able to discern differences between marks dissimilar in appearance as well as the goods offered by applicant and the owner of the cited registration. These persons exercise care and deliberation in selecting such services and when obtaining them under normally prevalent conditions of the market are able to distinguish their source. Noting this, the Examiner’s attention is directed to the point that buyer sophistication is an important factor in evaluating likelihood of confusion. See: Plus Products v. Plus Discounts Foods, Inc., 222 U.S.P.Q. 373 (CA 1983). Confusion is less likely among such persons.
Keeping in mind the distinctions noted in this response, it is proper for the Examiner to withdraw the refusal. The Trademark Trial and Appeal Board and courts have found no likelihood of confusion in instances where marks have common elements but cumulative differences in sight and sound as well as meaning (in some instances less than those between applicant’s mark and the cited reference), although the goods/services were related or very similar. See: e.g., In re Software Design, Inc., 220 U.S.P.Q. 663 (TTAB 1983) [DOX for computer programming services not confusingly similar to DOC’s for custom manufacture of computer systems]; In re Conti, 220 U.S.P.Q. 745 (TTAB 1983) [SHEAR PERFECTION for barbershop, hair styling, and beauty salon services not confusingly similar to SHEER PERFECTION for make-up for legs and body]; Keebler Co. v. Murray Bakery Products, 9 U.S.P.Q.2d 1736 (CAFC 1989) [PECAN SANDIES not confusingly similar to PECAN SHORTERS for pecan cookies]; In re Bed & Breakfast Registry, 229 U.S.P.Q. 818 (CAFC 1986) [BED & BREAKFAST REGISTRY not confusingly similar to BED & BREAKFAST INTERNATIONAL, both for lodging reservation services]; and Rooster Brush Co. v. Preger Brush Co, 231 U.S.P.Q. 316 (TTAB 1986) [POLY PRO for paint brushes not confusingly similar to POLY FLO paint brushes and applicators].
In terms of determining the likelihood of confusion issue, the Examiner must consider and give substantial weight to all components of the marks in question. It is well established that marks must be considered in their entirety in connection with determining likelihood of confusion. See: American Home Products Corp. v. B.F. Asher & Company, 176 U.S.P.Q. 552 (CCPA 1973). When this is done in the instant case, it is reasonable to conclude that applicant’s mark, consisting of a word and design combination of equal prominence, is not confusingly similar to the cited reference.
It is important the Examiner take into consideration case precedent established by Trademark Trial and Appeal Board and court opinions on the likelihood of confusion issue. The following are representative of those where there was a finding of no likelihood of confusion between marks that are the same for differing but related goods/services. See: e.g., In re General Motors Corp., 23 U.S.P.Q.2d 1465 (TTAB 1992) (GRAND PRIX for automobiles versus GRAND PRIX for automotive products and parts); In re Hair Masters Services, Inc., 17 U.S.P.Q.2d 1335 (CA5 1990) (HAIR MASTERS for haircutting, styling and nail care services versus HAIR MASTER for hair tonic); In re Electrolyte Laboratories, Inc., 16 U.S.P.Q.2d 1239 (CAFC 1990) (K+ for dietary potassium supplement versus K+ EFF for a potassium supplement).
In light of the foregoing response, there are adequate reasons for the Examiner to withdraw the cited references and refusal to register and to publish the mark for opposition.
Identification of goods
In light of the Examiner’s comments regarding the identification of goods, applicant requests amendment of the application as noted herein.
Class 11
Lighting fixtures for use in home and studies
Class 20
Furniture of all kinds for the home, study and garden, mirrors, picture frames, and decorative items.
Class 21
House and kitchen glassware, porcelain and earthenware not included in other classes.
Class 24
Textile and textile goods, not included in other classes; cotton bed and table covers and “linen bed and table covers.
Significance of mark
To applicant’s knowledge and belief, neither AREA nor the infinity symbol have any significance as to the goods described in the application.
Keeping in mind the foregoing, applicant respectfully requests the Examiner to publish this mark for opposition. If the Examiner has further questions about this application that can be discussed in a telephone conversation, the Examiner is hereby authorized to contact applicant's attorney. The Office can communicate with applicant’s attorney regarding this application by e-mail directed to: davidaweinstein@qwestoffice.net.
