Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85195244 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Our office believes your analysis under E.I. du Pont de Nemours & Co. is flawed.  Your primary argument seems to be that the "applied for mark so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken."  The first basis your office gives for such a conclusion is that the two marks a similar. 

In evaluating whether two marks are similar, a fact finder is to look at the mark "in their entireties as to appearance, sound, connotation and commercial impression."  E.I. du Pont, 476 F.2d at 1360.  We do not believe your office has looked at the marks in their entirety.  The Manheim mark consists of a picture of the St. Louis archway, along with the word "Manheim" prominently displayed.  Then the phrase "Gateway St. Louis" is found at the bottom portion of the mark.  The phrase "Gateway St. Louis" is a geographic designation commonly associated with the Gateway arch.  The name of the business is "Manheim" and it is advertised as "Manheim."  Wheres my client's mark consists only of the word "Gateway" with graphical highlights.  It is highly unlikely that any ordinary consumer would confuse the two marks, or believe that they come from the same business.

It is true that greater weight may be given to the dominant feature in determining whether there is a likelihood of confusion. However, in the Manheim trademark, “Gateway” is not the dominant feature. In re Nat'l Data Corp further explains “That a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark .” Gateway is descriptive and generic because it is only referencing the city and is a common word to identify the St. Louis area.  It is as generic as a  person’s  name which is often found to be descriptive. See Tana v. Dantanna's, 611 F.3d 767 .

Your office's second objection is that a "consumer would be confused as to source or sponsorship."  In the present instance there is no risk that “consumer would be confused as to source or sponsorship” as discussed in the In re Shell Oil case. Manheim advertises nationally as a company called “Manheim.” They do not advertise “Manheim Gateway St. Louis” nationally.  Rather they advertise only as "Manheim St. Louis," as is shown on their website, http://www.manheim.com/locations/SLAA/events.   In Shell, the court stated the degree of relatedness must be viewed in the context of all other factors to determine whether the reasonable consumer would be confused as to the source or sponsorship. The reasonable consumer that recognizes the company Manheim would understand the “gateway” portion of their trademark references the city of St. Louis. There is also a Manheim Atlanta, Manheim Chicago, Manheim  Orlando, Manheim Texas Hobby,  and over 140 other Manheims in the United States. Given the trademark currently used on the Manheim website for Mayheim St Louis no longer contains the word Gateway, that the word "Gateway" refers to a geographic designation, and that, for my client, the word "Gateway" is the actual name of the business (as opposed to Manheim), there is no risk that a consumer would confuse our “gateway” trademark as having the same source or sponsorship as Manheim.

Additionally, there is very little risk of confusion since the two trademarks will be used in different cities. The Manheim Gateway trademark is used in a particular area of Missouri. The proposed Gateway trademark is for use in Texas. Because Manheim Gateway has such limited use there is no risk of confusion outside of that small geographic area. In Schenley Distillers, opposition to a trademark was dismissed because the court found that the company had a weak mark and was not entitled to protection. The court explained “the mark has not been the subject of wide or intensive advertising, nor has appellant used it on a great quantity of articles as symbols of its business.” Schenley Distillers, Inc. v. General Cigar Co., 57 C.C.P.A. 1213 , 1215. The “Manheim Gateway” trademark is a “weak” mark because it does not have popularity outside of the St. Louis area. It is not involved in Manheim advertising outside of the St. Louis area, if it is involved in any of Manheim’s advertising at all.  It is not even the current symbol for Manheim St. Louis on their website.Outside of the USPTO database, the Manheim mark does not appear to be used in commerce whatsoever.

Even if it is found that the Manheim business is similar to my client's business, there is no risk of confusion if the trademarks are used in different cities. In Tana v. Dantanna's, the court found there is little risk of confusion between trademarks of two restaurants with similar names because one restaurant operated in Atlanta, while the other was known exclusively  in California. In the present case, the Manheim trademark with “gateway” is used only in Missouri. It would not have any recognition outside of Missouri. The only recognition would be to the name “Manheim” which is the name of the company that advertises nationally.

Your office's third basis for rejection was that the goods and/or services are similar.  That is simply not the case.  My client is a car dealership located in North Texas that markets to end consumers.  Manheim is a wholesale auctioneer of vehicles.  Neither business markets to the same audience.  In fact, a customer of my client could not qualify as a customer of Manehim's.  Manheim deals with car dealers -- not end consumers.  See e.g. http://www.manheim.com/pdfs/auctions/Manheim-National-Buy-Back-Policy.pdf.  Gateway sells cars to end users.  They are completely different market segments, with different consumers.

Further supporting my client's position is the fact that confusion is also not likely because the products do not involve impulse items. See Sun-Fun Prods. v. Suntan Research & Dev., Inc., 5 Cir.1981, 656 F.2d 186, 189. Consumers that go to automobile dealerships will look into what they are purchasing. The court has found no confusion when “opposer's services and applicant's product are purchased by sophisticated purchasers who study the services and the product extensively before purchasing.” 

In conclusion, we request that this office re-evaluate its position.  The marks are simply not substantially similar upon an evaluation of the entire mark.  One uses the geographic moniker "Gateway St. Louis" to describe the actual mark "Manheim," while my client's store name is "Gateway."  Schenley Distillers, Inc., 57 C.C.P.A. 1213.  The fact that a particular feature is descriptive or generic is a commonly accepted rationale for giving less weight to that portion of the mark.  In re Nat'l Data Corp., 753 F.2d 1056.  The term "Gateway St. Louis" simply has no meaning outside of the St. Louis area.  Tana v. Dantanna's, 611 F.3d 767.  The types of businesses are also not similar, do not market to the same clients, and do not sell the same products.  Further, Manheim, as a company, is not using the mark "Manheim Gateway St. Louis" in commerce.  It is not on their website, not in their advertisements, and not on their literature.  It appears as if the principal mark is actually only "Manheim."  There is simply no rational basis for not granting the mark as requested.

 

ADDITIONAL STATEMENTS
Description of mark
The mark consists of a three quarter oval, with an opening in the top left quadrant of the oval. The oval consists of a red and black oval swoosh. A half car design occupies the top quarter opening of the oval, with the word "Gateway" through the center of the mark. A blue checked line is between the car and phrase "Gateway".

SIGNATURE(S)
Response Signature
Signature: /Christopher Welsh/     Date: 09/21/2011
Signatory's Name: Christopher Welsh
Signatory's Position: Attorney

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 85195244
Internet Transmission Date: Wed Sep 21 15:17:29 EDT 2011
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20110921151729071
243-85195244-4808f71729a5b3c1fee6274d9da
93125cde-N/A-N/A-20110921143901900188