| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 79255083 |
| LAW OFFICE ASSIGNED | LAW OFFICE 108 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/79255083/mark.png |
| LITERAL ELEMENT | STORK |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
The color(s) white, black, gray and red is/are claimed as a feature of the mark. |
| ARGUMENT(S) | |
|
The registration of the applied-for mark has been refused under Trademark Act Section 2(d) because of an alleged likelihood of confusion with the marks in U.S. Registration Nos. 2751595 and 4442150. Applicant request withdrawal of the refusal for the following reasons: The real issue is whether the applicant’s mark and the marks in the cited registrations, as applied to the respective goods, are likely to cause confusion. If the issue were as simple as determining whether two different marks have portions in common or whether one mark incorporates the entirety of another mark, or whether there are some similarities in spelling or sound, there would be little basis for argument by applicant. There is no such simplistic rule. 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). In the present case, due to the dissimilarity in the goods and services, the differing channels of trade, likelihood of confusion is, at best, de minimis. 1. The goods and services are not related. The examining attorney argues that the goods of the Applicant and the services of the registrant are related because “the attached evidence from Honda, Toyota and Chevrolet establishes that a single source often provides both goods of the type identified in the Application alongside the relevant services identified in the registrations under a common source indicator and that such goods and services may travel in the same channels of trade to the same class of purchasers.” (Emphasis added). Unfortunately, the Examining Attorney failed to indicate which of the services listed in the registration are relevant to the likelihood of confusion analysis. The Examining Attorney’s point would be valid, if the Registrant was also in the automobile business, such as Honda, Toyota and Chevrolet. However, it very clearly is not. Nowhere in the registrant’s registrations is there any mention of automobiles, the automobile industry, boats or the boating industry. In fact, the services identified in the registrations are clearly not directed to consumers in the automobile or boating industry. Accordingly, the Examining Attorney’s cited examples from the websites of Honda, Toyota and Chevrolet are not relevant to the analysis. Further, even a cursory glance at the registrant’s website reveals that the registrant does not perform any services related to automobiles. Relevant printouts illustrating the Registrant’s services are attached for the Examining Attorney’s review. The Examiner will note that the STORK mark on the attached website printouts is identical to the mark in U.S. Reg. No. 2751595. There is no doubt, therefore, that the attached examples are from the Registrant’s website. There being no mention of automotive or boating related services in either of the registrant’s registrations and it being clear that the applicant’s class 12 goods are exclusively directed to the automotive and boating industry, there is no likelihood that the goods identified in the application and the services identified in the registrations will travel in the same channels of trade or be directed to the same class of purchasers. Accordingly, there being no likelihood of confusion, the refusal to register should be withdrawn. 2. The marks are dissimilar and evoke different commercial impressions. Alternatively, and additionally, in determining the similarity or dissimilarity of the marks, the marks must be compared in their entireties as to appearance, sound, connotation and commercial impression. Palm Bay Imports, Inc. v. Veuve Cliquot Ponsardin Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. The Marks in their Entireties are Different in Meaning and Commercial Impression In the present case, it is clear that the marks are not at all similar and, most importantly, that they create entirely different commercial impression. A comparison of Applicant’s entire mark with Registrant’s marks shows that the marks are dissimilar in overall appearance and commercial impression. Extra and differing features contribute to the overall impression made by the mark on the relevant public. Johnson & Johnson v. Colgate-Palmolive Co., 345 F. Supp. 1216, 1222, 175 U.S.P.Q. 287, 291 (D.N.J. 1972) (dissecting marks is “not the manner in which potential purchasers shop.”) As the Court of Customs and Patent Appeals remarked in comparing the marks PEAK and PEAK PERIOD, “[t]he difference in appearance . . . of the marks in issue is too obvious to render detailed discussion necessary. In their entireties they neither look nor sound alike.” Colgate-Palmolive Co. v. Carter-Wallace Inc., 167 U.S.P.Q. 529, 530 (C.C.P.A. 1970). The differences between Applicant’s and Registrant’s marks are enough to obviate any likelihood of confusion. It is clear that the marks are not at all similar and, most importantly, that they create entirely different commercial impression. A comparison of Applicant’s entire mark with Registrant’s marks shows that the marks are dissimilar in overall appearance and commercial impression. Extra and differing features (specifically, applicant’s stylized “Stork” design) contribute to the overall impression made by the mark on the relevant public. Johnson & Johnson v. Colgate-Palmolive Co., 345 F. Supp. 1216, 1222, 175 U.S.P.Q. 287, 291 (D.N.J. 1972) (dissecting marks is “not the manner in which potential purchasers shop.”) As the Court of Customs and Patent Appeals remarked in comparing the marks PEAK and PEAK PERIOD, “[t]he difference in appearance . . . of the marks in issue is too obvious to render detailed discussion necessary. In their entireties they neither look nor sound alike.” Colgate-Palmolive Co. v. Carter-Wallace Inc., 167 U.S.P.Q. 529, 530 (C.C.P.A. 1970). With respect to U.S. Reg. No. 4442150, Registrant’s STORK TECHNICAL SERVICES mark is a combined word/design mark, described as consisting “of the word "STORK" in stylized letters in blue on a white background, the words "TECHNICAL SERVICES" in white on a blue background all appearing within a rectangle with rounded corners and blue trim.” Further, the Registrant’s “STORK” mark in U.S. Reg. No. 2751595, which the Examining Attorney erroneously calls a wordmark, consists of the word "STORK" in stylized letters, the font of the letters being the same as in U.S. Reg. No. 4442150. Applicant’s mark, on the other hand, consists of a white stylized bird with red beak and gray feathers with wings outstretched above the stylized wording “STORK”. Applicant notes that the font used in applicant’s mark is not comparable to the font used in the registrant’s mark. Applicant respectfully submits that the differences between applicant’s mark and registrant’s marks are enough to obviate any likelihood of confusion. Taken all of the foregoing together, applicant requests withdrawal of the refusal to register applicant’s mark. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_20849462-20191029174523887831_._hat_cover_the_full_asset_life_cycle_-_Stork__-_www_stork_com.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\792\550\79255083\xml9\ROA0002.JPG |
| ORIGINAL PDF FILE | evi_20849462-20191029174523887831_.__complete_asset_life-cycle_services_-_Stork__-_www_stork_com.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\792\550\79255083\xml9\ROA0003.JPG |
| ORIGINAL PDF FILE | evi_20849462-20191029174523887831_._ion_Services_-_Onshore_and_Offshore_-_Stork__-_www_stork_com.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\792\550\79255083\xml9\ROA0004.JPG |
| ORIGINAL PDF FILE | evi_20849462-20191029174523887831_._ce__Construction__Plant_Engineering_-_Stork__-_www_stork_com.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\792\550\79255083\xml9\ROA0005.JPG |
| ORIGINAL PDF FILE | evi_20849462-20191029174523887831_.__Innovation_in_Integrity_Management_-_Stork__-_www_stork_com.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\792\550\79255083\xml9\ROA0006.JPG |
| DESCRIPTION OF EVIDENCE FILE | Website printouts |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 012 |
| DESCRIPTION | |
| Vehicles; apparatus for locomotion by land, air or water; fitted vehicle covers; bags designed for strollers; foot muffs designed for prams; foot muffs designed for strollers; covers for vehicles; covers for motorcycles; cars; automobile engines; vehicle seats; seats for automobiles; children's car seats; boats; motor homes; automobile chassis; automobile bodies; automobile roof racks; electric cars; electric vehicles; electric motors for automobiles; electric motors for land vehicles; propulsion mechanisms for land vehicles; vehicle wheel rims; airplanes; all-terrain vehicles; sports utility vehicles; special boxes for motorcycles; armored vehicles; golf carts [vehicles]; houseboats; hot-air balloons; helicopters; hybrid vehicles; upholstery for vehicles; interior fittings of automobiles; yachts; recreational jet boats; personal watercraft; kayaks; camera drones; canoes; bodies for automobile vehicles; prams; land vehicles; aircraft; motorboats; motors and engines for land vehicles; motorcycles; electric motorcycles; motor scooters; wheels of automobiles; racing cars; rowboats; ships; snowmobiles; sailboats; gliders; sidecars for motorcycles; self-propelled electric vehicles; strollers; sports cars; structural automobile parts; internal combustion engines for land vehicles; soft tops for vehicles; water vehicles; water scooters; caravans; civilian drones | |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 012 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Land vehicles, namely, electric, hydrogen and gasoline powered automobiles; amphibious vehicles; fitted covers for vehicles; fitted footmuffs for prams; fitted footmuffs for strollers; semi-fitted vehicle covers; fitted motorcycle covers; cars; automobile engines; vehicle seats; seats for automobiles; children's car seats; boats; motor homes; automobile chassis; automobile bodies; automobile roof racks; electric cars; vehicle wheel rims; airplanes; all-terrain vehicles; sports utility vehicles; electric motors for automobiles; electric motors for land vehicles; engines for land vehicles; vehicle wheel rims; airplanes; all-terrain vehicles; sports utility vehicles; armored vehicles; motorized golf carts; house boats; hot-air balloons; helicopters; hybrid vehicles, namely, cars and motorcycles; upholstery for vehicles; interior fittings of automobiles, namely, seats, dashboards, steering wheels, rear view mirrors, sunshades, interior linings, headrests, gear shift levers and knobs, floor mats, center consoles, handbrake levers, headliners, seat belts, seat belt buckles; yachts; recreational jet boats; personal watercraft, namely, small powerboats, personal jet boats, and water scooters; kayaks; camera drones; canoes; bodies for automobile vehicles; prams; aircraft; motorboats; motors and engines for land vehicles; motorcycles; electric motorcycles; motor scooters; wheels of automobiles; racing cars; rowboats; ships; snowmobiles; sailboats; gliders; sidecars for motorcycles; self-propelled electric vehicles; strollers; sports cars; structural automobile parts; internal combustion engines for land vehicles; soft tops for vehicles; pontoon boats; water scooters; travel trailers; civilian drones | |
| ADDITIONAL STATEMENTS SECTION | |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of a white stylized bird with red beak and gray feathers with wings outstretched above the stylized wording "STORK". |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Thilo C. Agthe/ |
| SIGNATORY'S NAME | Thilo C. Agthe |
| SIGNATORY'S POSITION | Attorney of record, New York bar member |
| SIGNATORY'S PHONE NUMBER | 212-509-5050 |
| DATE SIGNED | 10/29/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Oct 29 17:51:59 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XX.X-201 91029175159472673-7925508 3-700b11d7b1120cd59eecc32 ce467e3c9956c51af7e92a3ae 5364554c32b2321cd3-N/A-N/ A-20191029174523887831 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
The registration of the applied-for mark has been refused under Trademark Act Section 2(d) because of an alleged likelihood of confusion with the marks in U.S. Registration Nos. 2751595 and 4442150. Applicant request withdrawal of the refusal for the following reasons:
The real issue is whether the applicant’s mark and the marks in the cited registrations, as applied to the respective goods, are likely to cause confusion. If the issue were as simple as determining whether two different marks have portions in common or whether one mark incorporates the entirety of another mark, or whether there are some similarities in spelling or sound, there would be little basis for argument by applicant. There is no such simplistic rule.
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).
In the present case, due to the dissimilarity in the goods and services, the differing channels of trade, likelihood of confusion is, at best, de minimis.
1. The goods and services are not related.
The examining attorney argues that the goods of the Applicant and the services of the registrant are related because “the attached evidence from Honda, Toyota and Chevrolet establishes that a single source often provides both goods of the type identified in the Application alongside the relevant services identified in the registrations under a common source indicator and that such goods and services may travel in the same channels of trade to the same class of purchasers.” (Emphasis added). Unfortunately, the Examining Attorney failed to indicate which of the services listed in the registration are relevant to the likelihood of confusion analysis.
The Examining Attorney’s point would be valid, if the Registrant was also in the automobile business, such as Honda, Toyota and Chevrolet. However, it very clearly is not. Nowhere in the registrant’s registrations is there any mention of automobiles, the automobile industry, boats or the boating industry. In fact, the services identified in the registrations are clearly not directed to consumers in the automobile or boating industry. Accordingly, the Examining Attorney’s cited examples from the websites of Honda, Toyota and Chevrolet are not relevant to the analysis.
Further, even a cursory glance at the registrant’s website reveals that the registrant does not perform any services related to automobiles. Relevant printouts illustrating the Registrant’s services are attached for the Examining Attorney’s review. The Examiner will note that the STORK mark on the attached website printouts is identical to the mark in U.S. Reg. No. 2751595. There is no doubt, therefore, that the attached examples are from the Registrant’s website.
There being no mention of automotive or boating related services in either of the registrant’s registrations and it being clear that the applicant’s class 12 goods are exclusively directed to the automotive and boating industry, there is no likelihood that the goods identified in the application and the services identified in the registrations will travel in the same channels of trade or be directed to the same class of purchasers.
Accordingly, there being no likelihood of confusion, the refusal to register should be withdrawn.
2. The marks are dissimilar and evoke different commercial impressions.
Alternatively, and additionally, in determining the similarity or dissimilarity of the marks, the marks must be compared in their entireties as to appearance, sound, connotation and commercial impression. Palm Bay Imports, Inc. v. Veuve Cliquot Ponsardin Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods and/or services offered under the respective marks is likely to result.
The Marks in their Entireties are Different in Meaning and Commercial Impression
In the present case, it is clear that the marks are not at all similar and, most importantly, that they create entirely different commercial impression. A comparison of Applicant’s entire mark with Registrant’s marks shows that the marks are dissimilar in overall appearance and commercial impression. Extra and differing features contribute to the overall impression made by the mark on the relevant public. Johnson & Johnson v. Colgate-Palmolive Co., 345 F. Supp. 1216, 1222, 175 U.S.P.Q. 287, 291 (D.N.J. 1972) (dissecting marks is “not the manner in which potential purchasers shop.”) As the Court of Customs and Patent Appeals remarked in comparing the marks PEAK and PEAK PERIOD, “[t]he difference in appearance . . . of the marks in issue is too obvious to render detailed discussion necessary. In their entireties they neither look nor sound alike.” Colgate-Palmolive Co. v. Carter-Wallace Inc., 167
U.S.P.Q. 529, 530 (C.C.P.A. 1970). The differences between Applicant’s and Registrant’s marks are enough to obviate any likelihood of confusion.
It is clear that the marks are not at all similar and, most importantly, that they create entirely different commercial impression. A comparison of Applicant’s entire mark with Registrant’s marks shows that the marks are dissimilar in overall appearance and commercial impression. Extra and differing features (specifically, applicant’s stylized “Stork” design) contribute to the overall impression made by the mark on the relevant public. Johnson & Johnson v. Colgate-Palmolive Co., 345 F. Supp. 1216, 1222, 175 U.S.P.Q. 287, 291 (D.N.J. 1972) (dissecting marks is “not the manner in which potential purchasers shop.”) As the Court of Customs and Patent Appeals remarked in comparing the marks PEAK and PEAK PERIOD, “[t]he difference in appearance . . . of the marks in issue is too obvious to render detailed discussion necessary. In their entireties they neither look nor sound alike.” Colgate-Palmolive Co. v. Carter-Wallace Inc., 167 U.S.P.Q. 529, 530 (C.C.P.A. 1970).
With respect to U.S. Reg. No. 4442150, Registrant’s STORK TECHNICAL SERVICES mark is a combined word/design mark, described as consisting “of the word "STORK" in stylized letters in blue on a white background, the words "TECHNICAL SERVICES" in white on a blue background all appearing within a rectangle with rounded corners and blue trim.”
Further, the Registrant’s “STORK” mark in U.S. Reg. No. 2751595, which the Examining Attorney erroneously calls a wordmark, consists of the word "STORK" in stylized letters, the font of the letters being the same as in U.S. Reg. No. 4442150.
Applicant’s mark, on the other hand, consists of a white stylized bird with red beak and gray feathers with wings outstretched above the stylized wording “STORK”. Applicant notes that the font used in applicant’s mark is not comparable to the font used in the registrant’s mark.
Applicant respectfully submits that the differences between applicant’s mark and registrant’s marks are enough to obviate any likelihood of confusion.
Taken all of the foregoing together, applicant requests withdrawal of the refusal to register applicant’s mark.
