| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85137144 |
| LAW OFFICE ASSIGNED | LAW OFFICE 114 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
In response to the Office Action issued on December 30, 2010, Applicant submits the following Response and Amendment. The mark consists of the standard character mark: CLASSIC
Section 2(d) – Likelihood of Confusion Refusal The Examining Attorney has refused registration of the proposed mark, under Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq., because of an alleged likelihood of confusion with the mark in U.S. Registration No. 3,295,241 issued to Fleetwood Enterprises, Inc. The likelihood of confusion is a two-part analysis. First the marks are compared for similarities in appearance, sound, connotation and commercial impression. Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely. The Office Action recites a refusal to register the mark under Trademark Act Section 2(d), 15 U.S.C. 1052(d), because of a likelihood of confusion with the mark in U.S. Registration No. 3295241 (‘241). As discussed more fully below, because the goods are not related, and because the channels of trade are not the same, it is unlikely that consumer confusion would result from the simultaneous use and registration of the marks. Therefore, Applicant respectfully suggests reconsideration of the refusal to register the mark based on the following response. Applicant submits that the marks are not substantially similar in sight and commercial impression as to create a likelihood of confusion. No likelihood of confusion has been found in situations where the applicant’s mark contains words and a design element and the registrant’s mark contains only words, where the common portion of the marks is weak or descriptive. In re Denisi, 225 U.S.P.Q. 624 (T.T.A.B. 1985). For example, MMI MENSWEAR was found not to be confusingly similar to MEN’S WEAR because the term MEN’S WEAR is descriptive, if not generic. In re Merchandising Motivation, Inc., 184 U.S.P.Q. 364 (T.T.A.B. 1974). Similarly, Applicant’s mark and the mark covered by ‘241 are not substantially similar in sight and commercial impression. The ‘241 Registration covers the mark PROWLER CLASSIC. Applicant’s mark is the word CLASSIC. Applicant respectfully submits that the common portion of ‘241 and Applicant’s mark is weak, as evidenced by a search of TESS using “classic” in the Combined Word Mark finds 9037 records. Consequently, Applicant respectfully submits that an average purchaser who normally retains a general impression of trademarks would not identify them from the same source or find them to be confusingly similar because the common portion is weak and not the dominant portion of Registrant’s mark. Additionally, Applicant submits that the differences in the goods also mitigates the chances of a likelihood of confusion here. If the goods are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd.., 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cables held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field). The goods covered by Applicant’s mark are “Folding camping trailers” in International Class 012. Applicant’s product as used is a small pop-up camping trailer folded compactly for towing, and is expandable in volume to a temporary living area during camping. The goods covered by the ‘241 Registration are full-sized “Travel trailers” in International Class 012 which are significantly different products from Applicant’s pop-up campers. Consequently, Applicant respectfully suggests that the goods are not related. As noted in the Office Action, the goods need not be identical or directly competitive to be considered related enough to cause confusion. However, they must be related in some manner, or the conditions surrounding their marketing must be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985). Applicant submits that Applicant’s goods and Registrant’s goods would not be encountered by the same purchasers under circumstances that could give rise to confusion. The Examiner provided printouts of third-party registrations showing travel trailers and pop-up trailers may emanate from a single source. Consumers of recreational vehicles (RV’s) would recognize the differences between the five types of RV’s, fifth wheel trailers, travel trailers, pop-up trailers, or truck campers. A pop-up trailer is a folding or tent trailer, a towed recreational vehicle that can be collapsed for easy storage and transport. Its small size contributes to easy towing by most vehicles. A travel trailer, on the other hand, is a much more expensive vehicle with rigid sides and is designed to be towed by larger vehicles. More specifically, customers who purchase Applicant’s goods are interested in purchasing a small recreational vehicle that is an easily towed, portable tent trailer for use as an alternative to a tent at a campsite. This customer market is very different from the customer market that is seeking to purchase a travel trailer, which is often an alternative to staying in a hotel. Fleetwood’s Prowler Classic is advertised to consumers who avoid “roughing it.” As an example, see the description of a 2007 Prowler Classic at http://www.finnrv.com/inventory_photos/p0754/index.htm) for a travel trailer equipped with a queen innerspring mattress in the master suite, dinette/sofa, restroom, a fully functional galley and sleeping ten. Applicant respectfully submits that Applicant’s goods and Registrant’s goods would not be encountered by the same purchasers under circumstances that could give rise to confusion, as purchasers of Applicant’s goods are purchasers of a foldable trailer as a tenting substitute, while purchasers of Registrant’s goods are purchasers of a classic travel trailer as a hotel substitute. Applicant further submits that no likelihood of confusion will exist as the products are sold in different channels of trade. See Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ 2d 1388 (Fed. Cir. 1992), wherein the court found that no likelihood of confusion existed between the mark E.D.S. for computer programming services and EDS for power supplies and battery chargers sold to manufacturers for incorporation into electronic computer devices. In that situation, the marks were virtually identical, that is, E.D.S. and EDS. Additionally, both the Applicant’s goods and the Opposer’s services were sold in the medical field and certain other fields, and in some instances they were sold to the same institutions. However, the court determined that although the two parties conduct business not only in the same fields but also with some of the same companies the mere purchase of the goods and services of both parties by the same institutions does not, by itself, establish the similarity of trade channels or overlap of customers. Id. at 1391, citing Astra Pharmaceutical Prods. v. Beckman Instruments, 718 F.2d 1201, 1206, 220 USPQ 786, 790 (1st Cir. 1983). Similarly, the fact that both marks may be used in connection with the recreational vehicle field does not, by itself, establish the similarity of trade channels or overlap of customers. Applicant’s goods are sold to customers who are minimalist campers. These customers are purchasing a small, easily towable trailer that becomes a livable tent only upon reaching the campground. However, the Registrant’s goods are hard-walled hotel substitutes or mobile homes with fully functional kitchens, restrooms, showers, and queen size beds. Applicant submits that there is no connection between the channels of trade, and the customers would not overlap. Therefore, Applicant respectfully submits that no likelihood of confusion would result from the simultaneous use and registration of these marks. Based on the foregoing remarks, Applicant respectfully requests reconsideration and withdrawal of the refusal to register based on Section 2(d). Applicant respectfully requests reconsideration and allowance of this application.
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| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Paul D. Bangor, Jr./ |
| SIGNATORY'S NAME | Paul D. Bangor, Jr. |
| SIGNATORY'S POSITION | Attorney of record, PA bar member |
| DATE SIGNED | 06/30/2011 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Jun 30 18:32:24 EDT 2011 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XXX.XXX- 20110630183224820413-8513 7144-480cb41db1a1549cf989 66675748628fc-N/A-N/A-201 10630182626153879 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
In response to the Office Action issued on December 30, 2010, Applicant submits the following Response and Amendment. The mark consists of the standard character mark: CLASSIC
Section 2(d) – Likelihood of Confusion Refusal
The Examining Attorney has refused registration of the proposed mark, under Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq., because of an alleged likelihood of confusion with the mark in U.S. Registration No. 3,295,241 issued to Fleetwood Enterprises, Inc.
The likelihood of confusion is a two-part analysis. First the marks are compared for similarities in appearance, sound, connotation and commercial impression. Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely.
The Office Action recites a refusal to register the mark under Trademark Act Section 2(d), 15 U.S.C. 1052(d), because of a likelihood of confusion with the mark in U.S. Registration No. 3295241 (‘241). As discussed more fully below, because the goods are not related, and because the channels of trade are not the same, it is unlikely that consumer confusion would result from the simultaneous use and registration of the marks. Therefore, Applicant respectfully suggests reconsideration of the refusal to register the mark based on the following response.
Applicant submits that the marks are not substantially similar in sight and commercial impression as to create a likelihood of confusion. No likelihood of confusion has been found in situations where the applicant’s mark contains words and a design element and the registrant’s mark contains only words, where the common portion of the marks is weak or descriptive. In re Denisi, 225 U.S.P.Q. 624 (T.T.A.B. 1985). For example, MMI MENSWEAR was found not to be confusingly similar to MEN’S WEAR because the term MEN’S WEAR is descriptive, if not generic. In re Merchandising Motivation, Inc., 184 U.S.P.Q. 364 (T.T.A.B. 1974). Similarly, Applicant’s mark and the mark covered by ‘241 are not substantially similar in sight and commercial impression. The ‘241 Registration covers the mark PROWLER CLASSIC. Applicant’s mark is the word CLASSIC. Applicant respectfully submits that the common portion of ‘241 and Applicant’s mark is weak, as evidenced by a search of TESS using “classic” in the Combined Word Mark finds 9037 records. Consequently, Applicant respectfully submits that an average purchaser who normally retains a general impression of trademarks would not identify them from the same source or find them to be confusingly similar because the common portion is weak and not the dominant portion of Registrant’s mark.
Additionally, Applicant submits that the differences in the goods also mitigates the chances of a likelihood of confusion here. If the goods are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd.., 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cables held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field).
The goods covered by Applicant’s mark are “Folding camping trailers” in International Class 012. Applicant’s product as used is a small pop-up camping trailer folded compactly for towing, and is expandable in volume to a temporary living area during camping. The goods covered by the ‘241 Registration are full-sized “Travel trailers” in International Class 012 which are significantly different products from Applicant’s pop-up campers. Consequently, Applicant respectfully suggests that the goods are not related.
As noted in the Office Action, the goods need not be identical or directly competitive to be considered related enough to cause confusion. However, they must be related in some manner, or the conditions surrounding their marketing must be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985).
Applicant submits that Applicant’s goods and Registrant’s goods would not be encountered by the same purchasers under circumstances that could give rise to confusion. The Examiner provided printouts of third-party registrations showing travel trailers and pop-up trailers may emanate from a single source. Consumers of recreational vehicles (RV’s) would recognize the differences between the five types of RV’s, fifth wheel trailers, travel trailers, pop-up trailers, or truck campers. A pop-up trailer is a folding or tent trailer, a towed recreational vehicle that can be collapsed for easy storage and transport. Its small size contributes to easy towing by most vehicles. A travel trailer, on the other hand, is a much more expensive vehicle with rigid sides and is designed to be towed by larger vehicles.
More specifically, customers who purchase Applicant’s goods are interested in purchasing a small recreational vehicle that is an easily towed, portable tent trailer for use as an alternative to a tent at a campsite. This customer market is very different from the customer market that is seeking to purchase a travel trailer, which is often an alternative to staying in a hotel. Fleetwood’s Prowler Classic is advertised to consumers who avoid “roughing it.” As an example, see the description of a 2007 Prowler Classic at http://www.finnrv.com/inventory_photos/p0754/index.htm) for a travel trailer equipped with a queen innerspring mattress in the master suite, dinette/sofa, restroom, a fully functional galley and sleeping ten. Applicant respectfully submits that Applicant’s goods and Registrant’s goods would not be encountered by the same purchasers under circumstances that could give rise to confusion, as purchasers of Applicant’s goods are purchasers of a foldable trailer as a tenting substitute, while purchasers of Registrant’s goods are purchasers of a classic travel trailer as a hotel substitute.
Applicant further submits that no likelihood of confusion will exist as the products are sold in different channels of trade. See Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ 2d 1388 (Fed. Cir. 1992), wherein the court found that no likelihood of confusion existed between the mark E.D.S. for computer programming services and EDS for power supplies and battery chargers sold to manufacturers for incorporation into electronic computer devices. In that situation, the marks were virtually identical, that is, E.D.S. and EDS. Additionally, both the Applicant’s goods and the Opposer’s services were sold in the medical field and certain other fields, and in some instances they were sold to the same institutions. However, the court determined that although the two parties conduct business not only in the same fields but also with some of the same companies the mere purchase of the goods and services of both parties by the same institutions does not, by itself, establish the similarity of trade channels or overlap of customers. Id. at 1391, citing Astra Pharmaceutical Prods. v. Beckman Instruments, 718 F.2d 1201, 1206, 220 USPQ 786, 790 (1st Cir. 1983).
Similarly, the fact that both marks may be used in connection with the recreational vehicle field does not, by itself, establish the similarity of trade channels or overlap of customers. Applicant’s goods are sold to customers who are minimalist campers. These customers are purchasing a small, easily towable trailer that becomes a livable tent only upon reaching the campground. However, the Registrant’s goods are hard-walled hotel substitutes or mobile homes with fully functional kitchens, restrooms, showers, and queen size beds. Applicant submits that there is no connection between the channels of trade, and the customers would not overlap. Therefore, Applicant respectfully submits that no likelihood of confusion would result from the simultaneous use and registration of these marks.
Based on the foregoing remarks, Applicant respectfully requests reconsideration and withdrawal of the refusal to register based on Section 2(d).
Applicant respectfully requests reconsideration and allowance of this application.