| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85184276 |
| LAW OFFICE ASSIGNED | LAW OFFICE 109 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
APPLICANT’S RESPONSE TO OFFICE ACTION
Response to Primary Basis for Refusal of Registration Under Trademark Act Section 2(d), 15 U.S.C. §1052(d)
In the Office Action of March 3, 2011, the examining attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), on the ground that the applicant’s mark, when used on or in connection with the identified services, so resembles the marks in U.S. Registration No. 1925513 as to be likely to cause confusion, to cause mistake, or to deceive. Applicant does not agree with this conclusion and in further support of its original application (“Application”), hereby submits this Response and requests that the examining attorney reconsider their refusal of the Application A. The Nature of the Marks the Examining Attorney Concluded Could Lead to Confusion, Mistake, or Deception Under 15 U.S.C. 1052(d). 1) U.S. Registration No. 1925513 The mark covered by this registration is a word mark containing the words, “ENVY” The application fits into International Classes: Class 021: Paper cups, plates, bowls, food dishes, food trays and food containers. B. Explanation of the DuPont Multi-Factor Test for the Purpose of Determining Whether Confusion, Mistake, or Deception is Likely. The test for likelihood of confusion is whether a ‘reasonably prudent consumer’ in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks. In re E.I. DuPont de Nemours and Co., 177 U.S.P.Q. 563 (C.C.P.A 1973). Consequently, the Federal Circuit Court of Appeals articulated thirteen factors for the purpose of deciding likelihood of confusion on a case-by-case basis, otherwise known as the DuPont factors.
C. Application of the DuPont Factors to the Pending Application
Applying the DuPont factors to the instant case, Applicant hereby submits the following arguments in response to Examiner’s refusal to register Serial No. 85184276.1) Similarity as to Nature of Goods and Services Examiner also notes the similarities in goods and services as a basis for refusal. However, even where marks are placed within the same class, it is possible to avoid likelihood of confusion where the goods and/or services vary. See, e.g., Taj Mahal Enterprises, Ltd. v. Trump, 16 U.S.P.Q. 2d 1577 (D.N.J. 1990). In Taj Mahal, the marks under scrutiny were TAJ MAHAL for an Indian restaurant and TAJ MAHAL for a casino-hotel resort. The court held that the mark TAJ MAHAL for restaurants is suggestive of Indian food, while TAJ MAHAL for casino-hotel evokes images of grandeur, opulence and extravagance. Therefore, despite both falling under the same class of services for the purposes of registration, the Taj Mahal court found that there was no likelihood of any confusion.
Furthermore, if the goods or services in question 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., 393 F.3d 1238, 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 cable held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field); see also Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978), cert denied, 439 US 1116 (1979). Applicant’s products, or dual-wall vacuum stainless steel bottles, are commonly known as vacuum flasks or Thermos. A salient feature of such products includes the employment of thermal insulation by interposing a partial vacuum between the contents and the ambient environment. (THERMOS-1) The evacuated region of the partial vacuum removes material that could serve as a heat conductoror carrier, enabling the flask to keep its contents hotter or cooler than its surroundings. (THERMOS-1) This unique technological feature of the Applicant’s product segments prospective buyers and trade channels, where the primary function of such goods is to retain a desired temperature for the bottles’ contents. Furthermore, Applicant’s use of stainless steel materials highlights their emphasis on long-term usage consumers, where such materials are utilized primarily in situations requiring significant durability. (THERMOS-2; STAINLESSSTEEL-1) A look at Applicant’s own website also reveals an emphasis on thermal products intended for individual end-use consumers. (APPLICANT-1) In contrast, registrant’s products fail to carry this specific usage and purpose, where the goods described are, “paper cups, plates, bowls, food dishes, food trays and food containers.” Where each of the items listed in the identification is clarified by the leading adjective “paper,” the goods offered by registrant fail to target the same channels and consumers as Applicant (i.e., individuals looking for durable, temperature preserving beverage containers) In fact, registrant’s website boasts that they are, “the leading supplier of disposable paper and plastic packaging supplies to an array of businesses and industries including supermarkets - retailers, self-distributing chains and wholesalers - as well as food processors, retailers and convenience stores.” (REGISTANT-1,2) (emphasis added) Registrant’s focus on large-scale business consumers is further highlighted by their submitted specimens, which consist of bulk packaging for various paper products. (SPECIMEN-1925513; SPECIMEN-1925513-2) It is therefore unlikely that consumers would assume the goods originate from the same source as Applicant where: 1) registrant’s goods fail to exhibit the primary beneficial feature of Applicant’s product (i.e. thermal retention), 2) the disposable nature of registrant’s goods directly contradict the intended long term uses for Applicant’s stainless steel products (i.e. durability), and 3) registrant targets industrial consumers aside from Applicant’s focus on individual users. Examiner notes in her response that, “the registrant’s goods include paper cups that could be used for coffee or tea, which is the same use and same purchasers and maybe overlapping channels of trade as the applicant’s bottles,” citing to various internet exhibits showing stainless steel vacuum bottles and stainless steel food jars/containers offered in tandem. Applicant suggests that such internet evidence is not probative, where the use of stainless steel materially alters the benefits, usage, and applicable consumers of those products. More specifically, the sale of stainless steel bottles and stainless steel food jars/containers in tandem is not analogous to offering stainless steel bottles and paper food containers in tandem, since paper goods lack similar durability and thermal retention qualities. Furthermore, Applicant notes that multiple identifications listed in the trademark identification manual explicitly clarify between food and beverage containers. (TIDM) In fact a majority of these identifications deal specifically with thermal (e.g., dual-wall vacuum) containers. Therefore, to the extent that various identifications in Class 21 require or suggest clarification of “containers” between “food” and/or “beverage,” Applicant argues that registrant’s explicit use of “food containers” fails to encompass beverage containers. Therefore, given significant differences in underlying product, targeted consumers, and utilized trade channels, it is unlikely that source confusion would take place.
2) Nature and sophistication of customers
As analyzed in DuPont, supra: to the extent that a customer is likely to exercise a high degree of care and/or sophistication when selecting goods or services, the less chance that confusion, mistake or deception will occur between two or more competing marks. See also TCPIP Holding Co., Inc. v. Haar Communications, Inc., 244 F.3d 88, 102 (2d Cir.2001) ("The more sophisticated the consumers, the less likely they are to be misled by similarity in marks."); Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 480 (2d Cir.1996) ("The sophistication factor recognizes that the likelihood of confusion between the products at issue depends in part on the sophistication of the relevant purchasers."). Where goods require significant amounts of investment and involvement prior to purchase, consumers are more likely to exercise greater care. See, e.g., Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206 (1st Cir. 1983) (regarding at-issue products as non-impulse where product price was between $35,000 to $60,000 and where purchase took 3 months to year to consummate)
Consumers interested in Applicant’s products can purchase such goods at Applicant’s online retail store. (APPLICANT-2) In contrast, registrant does not sell individual products directly to end-use consumers. Registrant instead offers their goods in bulk to large scale retail locations and businesses. Registrant currently has no online store presence, and instead utilizes a basic initial contact form for potential client inquiries (REGISTRANT-3). Registrant’s focus on industrial consumers is highlighted by their three primary product delivery systems (REGISTRANT-4). Where registrant targets large industrialized consumers, it can be assumed that such consumers will examine any goods providers with added scrutiny. Consequently, where Applicant offers no bulk goods or set methods of client distribution, thereby making Applicant unable to meet industrial consumers’ logistical demands, consumers of registrant’s products would immediately identify Applicant as a unique source identifier. Furthermore, where registrant offers no direct sales to end-users or stainless steel products, Applicant’s consumers are likely to acknowledge registrant and their products as originating from a unique source. Even using a least knowledgeable general consumer standard, it is unlikely source confusion is likely to take place. As discussed at length above, the varying goods of the marks are likely to differentiate any resulting impressions in the minds of consumers. Where Applicant’s goods carry no express or implied association with the prior registrant’s marks, offer goods wholly unrelated to registrants, and target entirely different channels, consumers should easily be able to differentiate Applicant’s mark as a unique source identifier. Furthermore the lack of association between the marks reinforces the likelihood that the existence of Applicant’s mark is unlikely to cause any negative impact to the prior mark.
CONCLUSION: In view of the argument above, the applicant sincerely requests that the Examiner withdraws all objections listed in the office action and allow the applicant's trademark application to proceed for publication in the Official Gazette. |
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
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| ORIGINAL PDF FILE | evi_993818338-150447305_._SPECIMEN-1925513.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
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| ORIGINAL PDF FILE | evi_993818338-150447305_._SPECIMEN-1925513-2.pdf |
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\\TICRS\EXPORT11\IMAGEOUT11\851\842\85184276\xml4\ROA0012.JPG |
| \\TICRS\EXPORT11\IMAGEOUT11\851\842\85184276\xml4\ROA0013.JPG | |
| DESCRIPTION OF EVIDENCE FILE | exhibits cited to in Applicant's response to the 2(d) refusal |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Christopher Ditico/ |
| SIGNATORY'S NAME | Christopher Ditico |
| SIGNATORY'S POSITION | Attorney of record, California bar member |
| DATE SIGNED | 04/07/2011 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Apr 07 15:10:53 EDT 2011 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 110407151053418037-851842 76-480af6b12a245be3e5d134 5c2ce55bfaf-N/A-N/A-20110 407150447305298 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
APPLICANT’S RESPONSE TO OFFICE ACTION
Response to Primary Basis for Refusal of Registration
Under Trademark Act Section 2(d), 15 U.S.C. §1052(d)
In the Office Action of March 3, 2011, the examining attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), on the ground that the applicant’s mark, when used on or in connection with the identified services, so resembles the marks in U.S. Registration No. 1925513 as to be likely to cause confusion, to cause mistake, or to deceive. Applicant does not agree with this conclusion and in further support of its original application (“Application”), hereby submits this Response and requests that the examining attorney reconsider their refusal of the Application
A. The Nature of the Marks the Examining Attorney Concluded Could Lead to Confusion, Mistake, or Deception Under 15 U.S.C. 1052(d).
1) U.S. Registration No. 1925513
The mark covered by this registration is a word mark containing the words, “ENVY”
The application fits into International Classes:
Class 021: Paper cups, plates, bowls, food dishes, food trays and food containers.
B. Explanation of the DuPont Multi-Factor Test for the Purpose of Determining Whether Confusion, Mistake, or Deception is Likely.
The test for likelihood of confusion is whether a ‘reasonably prudent consumer’ in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks. In re E.I. DuPont de Nemours and Co., 177 U.S.P.Q. 563 (C.C.P.A 1973). Consequently, the Federal Circuit Court of Appeals articulated thirteen factors for the purpose of deciding likelihood of confusion on a case-by-case basis, otherwise known as the DuPont factors.
C. Application of the DuPont Factors to the Pending Application
1) Similarity as to Nature of Goods and Services
Examiner also notes the similarities in goods and services as a basis for refusal. However, even where marks are placed within the same class, it is possible to avoid likelihood of confusion where the goods and/or services vary. See, e.g., Taj Mahal Enterprises, Ltd. v. Trump, 16 U.S.P.Q. 2d 1577 (D.N.J. 1990). In Taj Mahal, the marks under scrutiny were TAJ MAHAL for an Indian restaurant and TAJ MAHAL for a casino-hotel resort. The court held that the mark TAJ MAHAL for restaurants is suggestive of Indian food, while TAJ MAHAL for casino-hotel evokes images of grandeur, opulence and extravagance. Therefore, despite both falling under the same class of services for the purposes of registration, the Taj Mahal court found that there was no likelihood of any confusion.
Furthermore, if the goods or services in question 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., 393 F.3d 1238, 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 cable held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field); see also Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978), cert denied, 439 US 1116 (1979).
Applicant’s products, or dual-wall vacuum stainless steel bottles, are commonly known as vacuum flasks or Thermos. A salient feature of such products includes the employment of thermal insulation by interposing a partial vacuum between the contents and the ambient environment. (THERMOS-1) The evacuated region of the partial vacuum removes material that could serve as a heat conductoror carrier, enabling the flask to keep its contents hotter or cooler than its surroundings. (THERMOS-1) This unique technological feature of the Applicant’s product segments prospective buyers and trade channels, where the primary function of such goods is to retain a desired temperature for the bottles’ contents. Furthermore, Applicant’s use of stainless steel materials highlights their emphasis on long-term usage consumers, where such materials are utilized primarily in situations requiring significant durability. (THERMOS-2; STAINLESSSTEEL-1) A look at Applicant’s own website also reveals an emphasis on thermal products intended for individual end-use consumers. (APPLICANT-1)
In contrast, registrant’s products fail to carry this specific usage and purpose, where the goods described are, “paper cups, plates, bowls, food dishes, food trays and food containers.” Where each of the items listed in the identification is clarified by the leading adjective “paper,” the goods offered by registrant fail to target the same channels and consumers as Applicant (i.e., individuals looking for durable, temperature preserving beverage containers) In fact, registrant’s website boasts that they are, “the leading supplier of disposable paper and plastic packaging supplies to an array of businesses and industries including supermarkets - retailers, self-distributing chains and wholesalers - as well as food processors, retailers and convenience stores.” (REGISTANT-1,2) (emphasis added) Registrant’s focus on large-scale business consumers is further highlighted by their submitted specimens, which consist of bulk packaging for various paper products. (SPECIMEN-1925513; SPECIMEN-1925513-2) It is therefore unlikely that consumers would assume the goods originate from the same source as Applicant where: 1) registrant’s goods fail to exhibit the primary beneficial feature of Applicant’s product (i.e. thermal retention), 2) the disposable nature of registrant’s goods directly contradict the intended long term uses for Applicant’s stainless steel products (i.e. durability), and 3) registrant targets industrial consumers aside from Applicant’s focus on individual users.
Examiner notes in her response that, “the registrant’s goods include paper cups that could be used for coffee or tea, which is the same use and same purchasers and maybe overlapping channels of trade as the applicant’s bottles,” citing to various internet exhibits showing stainless steel vacuum bottles and stainless steel food jars/containers offered in tandem. Applicant suggests that such internet evidence is not probative, where the use of stainless steel materially alters the benefits, usage, and applicable consumers of those products. More specifically, the sale of stainless steel bottles and stainless steel food jars/containers in tandem is not analogous to offering stainless steel bottles and paper food containers in tandem, since paper goods lack similar durability and thermal retention qualities.
Furthermore, Applicant notes that multiple identifications listed in the trademark identification manual explicitly clarify between food and beverage containers. (TIDM) In fact a majority of these identifications deal specifically with thermal (e.g., dual-wall vacuum) containers. Therefore, to the extent that various identifications in Class 21 require or suggest clarification of “containers” between “food” and/or “beverage,” Applicant argues that registrant’s explicit use of “food containers” fails to encompass beverage containers.
Therefore, given significant differences in underlying product, targeted consumers, and utilized trade channels, it is unlikely that source confusion would take place.
2) Nature and sophistication of customers
As analyzed in DuPont, supra: to the extent that a customer is likely to exercise a high degree of care and/or sophistication when selecting goods or services, the less chance that confusion, mistake or deception will occur between two or more competing marks. See also TCPIP Holding Co., Inc. v. Haar Communications, Inc., 244 F.3d 88, 102 (2d Cir.2001) ("The more sophisticated the consumers, the less likely they are to be misled by similarity in marks."); Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 480 (2d Cir.1996) ("The sophistication factor recognizes that the likelihood of confusion between the products at issue depends in part on the sophistication of the relevant purchasers."). Where goods require significant amounts of investment and involvement prior to purchase, consumers are more likely to exercise greater care. See, e.g., Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206 (1st Cir. 1983) (regarding at-issue products as non-impulse where product price was between $35,000 to $60,000 and where purchase took 3 months to year to consummate)
Consumers interested in Applicant’s products can purchase such goods at Applicant’s online retail store. (APPLICANT-2) In contrast, registrant does not sell individual products directly to end-use consumers. Registrant instead offers their goods in bulk to large scale retail locations and businesses. Registrant currently has no online store presence, and instead utilizes a basic initial contact form for potential client inquiries (REGISTRANT-3). Registrant’s focus on industrial consumers is highlighted by their three primary product delivery systems (REGISTRANT-4). Where registrant targets large industrialized consumers, it can be assumed that such consumers will examine any goods providers with added scrutiny. Consequently, where Applicant offers no bulk goods or set methods of client distribution, thereby making Applicant unable to meet industrial consumers’ logistical demands, consumers of registrant’s products would immediately identify Applicant as a unique source identifier. Furthermore, where registrant offers no direct sales to end-users or stainless steel products, Applicant’s consumers are likely to acknowledge registrant and their products as originating from a unique source.
Even using a least knowledgeable general consumer standard, it is unlikely source confusion is likely to take place. As discussed at length above, the varying goods of the marks are likely to differentiate any resulting impressions in the minds of consumers. Where Applicant’s goods carry no express or implied association with the prior registrant’s marks, offer goods wholly unrelated to registrants, and target entirely different channels, consumers should easily be able to differentiate Applicant’s mark as a unique source identifier. Furthermore the lack of association between the marks reinforces the likelihood that the existence of Applicant’s mark is unlikely to cause any negative impact to the prior mark.
CONCLUSION:
In view of the argument above, the applicant sincerely requests that the Examiner withdraws all objections listed in the office action and allow the applicant's trademark application to proceed for publication in the Official Gazette.
