| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 79138916 |
| LAW OFFICE ASSIGNED | LAW OFFICE 117 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/79138916/mark.png |
| LITERAL ELEMENT | RIVA |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
Color is not claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the wording RIVA in fantasy capital block letters; above the wording appears a stylised representation of a decorative fantasy element. |
| ARGUMENT(S) | |
|
In the action, the examining attorney refused registration of the subject mark under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because, in his opinion, the applicant’s mark, when used on or in connection with the identified goods, so resembles the marks in U.S. Registrations Nos. 4158747 and 4187640 as to be likely to cause confusion, cause mistakes, or to deceive. Contrary to the examiner’s assertion, the applicant believes that there is no likelihood of confusion between applicant’s mark and the marks in the cited registrations. Likelihood of confusion is determined on a case-specific basis, applying the factors set out in In re E. I. du Pont de Nemours & Co., 177 USPQ 563 (CCPA 1973).The first DuPont factor to be considered is the similarity or dissimilarity of the marks with respect to appearance, sound, and connotation. Id. at 567. Moreover, for the purpose of determining likelihood of confusion, marks must be compared in their entireties and must not be dissected into their component parts. In re Bed & Breakfast Registry, 229 USPQ 818, 819 (Fed. Cir. 1986). The applicant’s mark consists of the word RIVA and the filigree and leaf designs. The mark in Reg. No. 4187640 (the “640 registration”) is RIEVA. Although the difference is merely an additional “E” in the mark in the 640 registration, both the mark in the 640 registration and the literal element in the applicant’s mark are rather short and having one more letter in the middle of the mark in the 640 registration should be sufficient to give a different appearance and commercial impression on the mark in the 640 registration. The mark in Reg. No. 4158747 (the “747 registration”) is REVA. Since both of the compared marks are short, the difference in one letter in the 747 registration should be sufficient to give a different appearance and different commercial impression to this mark from the applicant’s mark. The more decisive in comparing the applicant’s mark with the marks in the cited registrations, is the second DuPont factor; the relatedness of the goods or services. The applicant respectfully submits that applicant’s goods, as amended in this response, and the goods specified in either of the cited registrations are not so related as to lead to a likelihood of reasonable consumer confusion as to their source. The applicant’s goods, as amended, are: Divans; sofa beds; sofas; cushions; beds; furniture; mirrors; furniture frames; seats; stools; tables; occasional tables; writing desks; computer tables; bedside tables, wardrobes, cupboards, bars, namely, freestanding bars, wooden ornaments, wooden objects d'art for decorative purposes, toiletry tables being furniture, dormeuses being furniture, poufs. The goods in the 640 registration are: Shelving systems composed primarily of shelving with wall panels and mounting brackets The goods in the 747 registration are: Reusable household containers, pots, and vases used to hold plants or flowers. In the action, the examiner claims that the applicant’s goods and the goods in the 640 registration and goods in the 747 registration are closely related because they are commonly manufactured by the same entity or are sold through the same channel of trade. To support this position, the examiner relies on webpages selling consumer products which include both the applicant’s goods and the goods identified in two cited registrations. These webpages, however, do not establish that the same entity commonly produces and markets finished pieces of furniture listed among the applicant’s goods and shelving systems or household containers (such as pots and vases). Numerous websites often sell a variety of products which are manufactured by different companies and sold under their respective brands. Consumers who search for and buy goods on the Internet are well aware that a wide range of products which are sold in one website do not necessarily emanate from a single source: rather, a disparate range of products from different brands or companies can be found and sold in one website for the sake of consumer convenience. One webpage submitted by the examiner, “HAVERTYS,” for example, is an Internet retail store which sells a variety of furniture and household goods, including bookcases, desks, tables, and vases. But consumers would not assume that all the products listed and sold in this website emanate from a single source or are manufactured by the same entity. This would apply to another webpage submitted by the examiner (BELFORT). These webpages submitted by the examiner cannot support the examiner’s position that consumers would assume the applicant’s goods and the goods in the cited registrations may come from a single source. Moreover, none of the websites relied upon by the examiner sells the kind of shelving system identified in the 640 registration, which is composed of wall panels and brackets and requires assembly. On the contrary, the applicant’s goods are all finished pieces of furniture. It is obvious that the applicant’s goods, as amended in this response, do not overlap with any of the goods in either the 640 registration or the 747 registration. For the reasons explained above, the applicant submits that the applicant’s goods and the goods in either of the cited registrations are not related, and the difference in the goods between the marks, combined with the difference in the marks themselves, negates e a likelihood of confusion between the applicant’s mark and the marks in the cited registrations. As seen in the foregoing paragraphs, the applicant has demonstrated that there is no likelihood of confusion between the applicant’s mark and the mark in the cited registrations. The applicant respectfully requests that the examining attorney withdraw his refusal to register under Trademark Act §2(d), 15 U.S.C. §1052(d), and approve the subject mark for publication. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 020 |
| DESCRIPTION | |
| Divans; sofa beds; sofas; cushions; beds; furniture; mirrors; furniture frames; seats; stools; tables; occasional tables; book shelves; writing desks; computer supports; computer tables; cabinets, bedside tables, wardrobes, (furniture) supports for televisions, cupboards, glass cabinets (furniture), bars, vase supports, wooden ornaments, wooden objects d'art, toiletry tables (furniture), consoles (wall-mounted tables), beds with containers, dormeuses, bottle-holders (furniture), poufs | |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 020 |
| TRACKED TEXT DESCRIPTION | |
| Divans; sofa beds; sofas; cushions; beds; furniture; mirrors; furniture frames; seats; stools; tables; occasional tables; |
|
| FINAL DESCRIPTION | |
| Divans; sofa beds; sofas; cushions; beds; furniture; mirrors; furniture frames; seats; stools; tables; occasional tables; writing desks; computer tables; bedside tables, wardrobes, cupboards, bars, namely, freestanding bars, wooden ornaments, wooden objects d'art for decorative purposes, toiletry tables being furniture, dormeuses being furniture, poufs | |
| ADDITIONAL STATEMENTS SECTION | |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the wording RIVA in stylized capital block letters above which is a filigree design including a half-circle band design with leaves within the half-circle band design. |
| TRANSLATION | The English translation of RIVA in the mark is "bank or shore". |
| SIGNIFICANCE OF MARK | RIVA appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as applied to the goods/services listed in the application, or any geographical significance. |
| CORRESPONDENCE SECTION | |
| ORIGINAL ADDRESS | ING. C. CORRADINI & C. S.R.L. Piazza Luigi di Savoia, 24 I-20124 MILANO IT |
| NEW CORRESPONDENCE SECTION | |
| NAME | aoi nawashiro |
| FIRM NAME | browdy and neimark, PLLC |
| DOCKET/REFERENCE NUMBER | RIVA=1 |
| STREET | 1625 K street, NW suite 1100 |
| CITY | washington, DC |
| STATE | District of Columbia |
| ZIP/POSTAL CODE | 20006 |
| COUNTRY | United States |
| PHONE | 2026285197 |
| FAX | 2027373528 |
| mail@browdyneimark.com;anawashiro@browdyneimark.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /aoi nawashiro/ |
| SIGNATORY'S NAME | aoi nawashiro |
| SIGNATORY'S POSITION | attorney for applicant, District of Columbia bar |
| SIGNATORY'S PHONE NUMBER | 2026285197 |
| DATE SIGNED | 06/09/2014 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jun 09 19:42:09 EDT 2014 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20140609194209792224-791 38916-500ca2fb4396e9e934b a66e4767aa2b4437ae6b6d5a2 0fa1dd8314d66ad56-N/A-N/A -20140609192232695397 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
In the action, the examining attorney refused registration of the subject mark under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because, in his opinion, the applicant’s mark, when used on or in connection with the identified goods, so resembles the marks in U.S. Registrations Nos. 4158747 and 4187640 as to be likely to cause confusion, cause mistakes, or to deceive. Contrary to the examiner’s assertion, the applicant believes that there is no likelihood of confusion between applicant’s mark and the marks in the cited registrations.
Likelihood of confusion is determined on a case-specific basis, applying the factors set out in In re E. I. du Pont de Nemours & Co., 177 USPQ 563 (CCPA 1973).The first DuPont factor to be considered is the similarity or dissimilarity of the marks with respect to appearance, sound, and connotation. Id. at 567. Moreover, for the purpose of determining likelihood of confusion, marks must be compared in their entireties and must not be dissected into their component parts. In re Bed & Breakfast Registry, 229 USPQ 818, 819 (Fed. Cir. 1986).
The applicant’s mark consists of the word RIVA and the filigree and leaf designs.
The mark in Reg. No. 4187640 (the “640 registration”) is RIEVA. Although the difference is merely an additional “E” in the mark in the 640 registration, both the mark in the 640 registration and the literal element in the applicant’s mark are rather short and having one more letter in the middle of the mark in the 640 registration should be sufficient to give a different appearance and commercial impression on the mark in the 640 registration.
The mark in Reg. No. 4158747 (the “747 registration”) is REVA. Since both of the compared marks are short, the difference in one letter in the 747 registration should be sufficient to give a different appearance and different commercial impression to this mark from the applicant’s mark.
The more decisive in comparing the applicant’s mark with the marks in the cited registrations, is the second DuPont factor; the relatedness of the goods or services. The applicant respectfully submits that applicant’s goods, as amended in this response, and the goods specified in either of the cited registrations are not so related as to lead to a likelihood of reasonable consumer confusion as to their source.
The applicant’s goods, as amended, are:
Divans; sofa beds; sofas; cushions; beds; furniture; mirrors; furniture frames; seats; stools; tables; occasional tables; writing desks; computer tables; bedside tables, wardrobes, cupboards, bars, namely, freestanding bars, wooden ornaments, wooden objects d'art for decorative purposes, toiletry tables being furniture, dormeuses being furniture, poufs.
The goods in the 640 registration are: Shelving systems composed primarily of shelving with wall panels and mounting brackets
The goods in the 747 registration are: Reusable household containers, pots, and vases used to hold plants or flowers.
In the action, the examiner claims that the applicant’s goods and the goods in the 640 registration and goods in the 747 registration are closely related because they are commonly manufactured by the same entity or are sold through the same channel of trade.
To support this position, the examiner relies on webpages selling consumer products which include both the applicant’s goods and the goods identified in two cited registrations. These webpages, however, do not establish that the same entity commonly produces and markets finished pieces of furniture listed among the applicant’s goods and shelving systems or household containers (such as pots and vases).
Numerous websites often sell a variety of products which are manufactured by different companies and sold under their respective brands. Consumers who search for and buy goods on the Internet are well aware that a wide range of products which are sold in one website do not necessarily emanate from a single source: rather, a disparate range of products from different brands or companies can be found and sold in one website for the sake of consumer convenience. One webpage submitted by the examiner, “HAVERTYS,” for example, is an Internet retail store which sells a variety of furniture and household goods, including bookcases, desks, tables, and vases. But consumers would not assume that all the products listed and sold in this website emanate from a single source or are manufactured by the same entity. This would apply to another webpage submitted by the examiner (BELFORT). These webpages submitted by the examiner cannot support the examiner’s position that consumers would assume the applicant’s goods and the goods in the cited registrations may come from a single source.
Moreover, none of the websites relied upon by the examiner sells the kind of shelving system identified in the 640 registration, which is composed of wall panels and brackets and requires assembly. On the contrary, the applicant’s goods are all finished pieces of furniture. It is obvious that the applicant’s goods, as amended in this response, do not overlap with any of the goods in either the 640 registration or the 747 registration.
For the reasons explained above, the applicant submits that the applicant’s goods and the goods in either of the cited registrations are not related, and the difference in the goods between the marks, combined with the difference in the marks themselves, negates e a likelihood of confusion between the applicant’s mark and the marks in the cited registrations.
As seen in the foregoing paragraphs, the applicant has demonstrated that there is no likelihood of confusion between the applicant’s mark and the mark in the cited registrations. The applicant respectfully requests that the examining attorney withdraw his refusal to register under Trademark Act §2(d), 15 U.S.C. §1052(d), and approve the subject mark for publication.