| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85645258 |
| LAW OFFICE ASSIGNED | LAW OFFICE 114 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/85645258/mark.png |
| LITERAL ELEMENT | PROLINE |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
I. Introductory Remarks Applicant is in receipt of the Office Action of June 7, 2014 in which the Examining Attorney cited U.S. Reg. No. 4292529 of the mark PROLINE SERIES and U.S. Reg. No. 4463258 of the mark PROLINE PLUS in refusing Applicant's mark under Section 2(d) as raising a likelihood of confusion. Applicant has amended herein the Goods Description with which the Applicant's mark is associated. Below are the Applicant's response and observations in view of these amendments. II. There is No Likelihood of Confusion Between Applicant's PROLINE and PROLINE SERIES Lanham Act Section 2(d) prohibits the registration of an applicant's mark that is so similar to a previously-registered mark as to "likely cause confusion" such that members of the public are likely to believe that the two marks come from the same source. In du Pont, the Court of Customs and Patent Appeals enumerated thirteen factors as a guide for the determination of whether a mark sought to be registered is confusingly similar to a previously-registered mark under Section 2(d) of the Lanham Act. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). Only those du Pont factors that are material or relevant in the particular case to the determination of likelihood of confusion need to be considered. See, e.g., Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1241 (Fed. Cir. 2001) (holding that the court is "required only to consider those factors that are relevant."); see also Bose Corp. v. QSC Auto Prods., Inc., 293 F.3d 1367, 1370 (Fed. Cir. 2002) ("[T]he determination of a likelihood of confusion does not require examination and findings as to each and every DuPont factor."). In addition, not all of the relevant du Pont factors are necessarily given equal weight, and any single factor may be controlling. See Kellogg Co. v. Pack'Em Enters., Inc., 951 F.2d 330, 333 (Fed. Cir. 1991) (stating that the court "know[s] of no reason why, in a particular case, a single du Pont factor may not be dispositive."). The du Pont factors relevant to this particular claim are the similarity or dissimilarity of the (1) "marks in their entireties as to appearance, sound, connotation and commercial impression"; (2) "nature of the goods or services as described in an application or registration"; and (3) "established, likely-to-continue trade channels". du Pont, 476 F.2d at 1361 (C.C.P.A. 1973). A. The Overall Commercial Impression of the Applicant's Mark Differs Substantially From the Cited Mark The Examining Attorney has refused registration of Applicant's design mark for PROLINE on the grounds that it is likely to be confused with "ProLine Series" registered mark 4292529, where the word "Series" is disclaimed. The Examining Attorney has described "proline" as the dominant feature of the mark, but does not appear to have considered the contribution of the disclaimed matter to the commercial impression of the "ProLine Series" mark and the differing stylized features of each mark. Applicant respectfully disagrees with this methodology. For purposes of determining the likelihood of confusion concerning a registered composite mark of which portions are disclaimed, the disclaimed matter cannot be ignored. See May Dept. Stores Co. v. Schloo Bros. & Co., Inc., 43 C.C.P.A. 980 (1956). Although the disclaimed portion of a mark may be regarded as "weaker," this does not mean the disclaimed portion should be completely disregarded. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). The registered mark and the Applicant's marks are both design marks having very different stylized features. Moreover, the disclaimed portion of the registered mark contributes to the distinctions between the marks. The Examining Attorney's analysis ignores the significant contributions of the disclaimed matter of the "ProLine Series" mark and the differing stylized features of each mark that make clear the differences in the overall commercial impressions of the marks in their entireties. As discussed in Applicant's response to the Office Action dated September 24, 2012, the ProLine Series mark consists of the stylized words "ProLine Series". The "ProLine" portion of the mark consists of both capital and small case letters and appears angled or italicized. The word "SERIES" of the mark is in all capital letters and is positioned inside a horizontal bar that extends across the word "ProLine." Color is not claimed as a feature of the mark. Applicant's mark is a design mark consisting only of the word "PROLINE" wherein each of the letters is capitalized. The first three letters of Applicant's mark ("PRO") have breaking points at various junctures of the letters. These breaking points in the letters are related to the transition characteristics of buildings products that Applicant manufactures. In addition, the break in the "O" denotes a shading differential between the first portion of the mark and the second portion of the marks which also highlights the transition characteristics of Applicant's products. Color is not claimed as a feature of Applicant's mark. Thus, these marks are very different in their stylized characteristics and there is no confusion in their visual appearance and sound when the necessary consideration of the disclaimed material is analyzed. B. The Nature of the Goods Are Not Related When goods differ in function, structure, and intended use such that they are not in competition, consumer confusion is unlikely. See Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1244-46 (Fed. Cir. 2004) (holding that identical marks were not confusingly similar because cooking classes and kitchen textiles such as aprons and potholders are not related goods; finding that a barbecue mitt and a glove are unrelated because the "mere fact that both barbeque mitts and gloves are worn on the hands simply does not support a finding that consumers would associate these products with a common source"); In re Mars, Inc., 741 F.2d 395 (Fed. Cir. 1984) (holding that candy bars and fresh citrus fruits do not bear such a close relationship that consumer confusion is likely); Ralston Purina Co. v. On-Cor Frozen Foods, Inc., 746 F.2d 807 (Fed. Cir. 1984). The goods described in registered mark 4292529 are "Copper tube and copper fittings, none for use with fluid and corrosive handling applications." Clearly, Applicant's building materials for installing tiling and flooring, as indicated in the amended Class 006 description, do not compete in the marketplace with "ProLine Series" copper tube and copper fittings. Moreover, even though a purchaser may encounter both flooring and tiling materials and piping materials in the same store (whether online or brick and mortar), this is insufficient to find that the goods are related. Consumers at hardware stores expect to see goods offered by many different vendors. Thus, the mere potential that tiling and flooring materials and piping materials may appear in the same store is insufficient to conclude that the goods are closely related. Further, the plumbing industry and the flooring industry employ skilled tradepersons who are sophisticated in choosing the materials for their craft. There is no risk of confusion between the goods claimed by the Registrant and the goods claimed by the Applicant as the goods of both are directed and marketed to differing industries and tradepersons. The consumers of Registrant's and Applicant's goods are knowledgeable about their trade and a flooring tradeperson is not likely to look for materials from a plumbing manufacturer and vice versa. The likelihood of confusion between the marks given the differing relevant industries and trade channels is not a sustainable objection to the registration of Applicant's mark. C. The Trade Channels for the Goods are Dissimilar It is "difficult to establish likelihood of confusion" when the respective parties' channels of trade and purchasers are unrelated. M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 1384, 78 U.S.P.Q.2d 1944 (Fed. Cir. 2006). The parties' trade channels may be unrelated even if the same companies purchase the parties' products and services. See Electronic Design & Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 717, 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992) (holding that the purchase of the parties' goods and services by some of the same large corporations established only a "tenuous connection" between the parties' trade channels where one party sold data processing services for medical insurers and the other party sold battery charges for medical equipment); Astra Pharmaceutical Prods. v. Beckman Instruments, 718 F.2d 1201, 1206, 220 U.S.P.Q. 786, 790 (1st Cir. 1983) (holding that even if 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 institution does not, by itself, establish similarity of trade channels or overlap of customers"). Buyers of Applicant's and Registrant's goods are each specialists in their fields of trade. Registrant markets and directs their products to builders and installers of plumbing and piping. Applicant markets and directs their products to builders and installers of flooring material. It is highly unlikely that these respective goods would appear in close proximity on store shelves because the respective goods are used in widely differing applications and therefore different expertise and know-how are needed to market the goods to prospective customers. D. Conclusion Because the Registered mark cited by the Examining Attorney and Applicant's mark create significantly different commercial impressions and Applicant's goods, as amended, are markedly different from the description of goods identified by Registrant's mark. Once the marks are considered in their entireties there are clear differences in look, sound, connotation, and meaning which create two distinct commercial impressions and ensure that there is no likelihood of confusion between the marks for "ProLine Series" and Applicant's mark. III. There is No Likelihood of Confusion Between Applicant's PROLINE and PROLINE PLUS The legal standard is set forth above with respect to the comparison of Applicant's PROLINE and the Registered mark PROLINE SERIES. A. The Overall Commercial Impression of the Applicant's Mark Differs Substantially From the Cited Mark The Examining Attorney has refused registration of Applicant's design mark for PROLINE on the grounds that it is likely to be confused with "PROLINE PLUS" registered mark 4663258, where the word "Plus" has not been disclaimed. The Examining Attorney has described "proline" as the dominant feature of the mark, but does not appear to have considered the commercial impression of the "PROLINE PLUS" mark as a whole and the differing stylized features of each mark. Applicant respectfully disagrees with the Examining Attorney. Applicant recognizes that a dominant portion of a mark may be given greater weight in determining similarity. However, composite marks are to be compared by looking at them as a whole, rather than breaking the marks up into their component parts for comparison. Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538 (1920). Thus, Applicant's mark and the registered mark should be compared according to the overall commercial impression of each mark. As discussed in Applicant's response to the Office Action dated September 24, 2012, Applicant's mark is a stylized mark and readily distinct from the mere standard characters of the registered mark which further includes the word "PLUS." As discussed above, Applicant's mark is a design mark consisting only of the word "PROLINE" wherein each of the letters is capitalized. The first three letters of Applicant's mark have breaking points at various junctures of the letters that relate to the transition characteristics of building products that Applicant manufactures. Further, the break in the "O" denotes a shading differential between the first portion of the mark and the second portion of the mark which also highlights the transition characteristics of Applicant's products. Even when marks are similar in part, when the marks are compared as a whole, there may be no likelihood of confusion. See, e.g., Lever Brothers Co. v. Barcolene Co., 463 F. 2d 1107 (C.C.P.A. 1972) (finding the mark "ALL CLEAR" for household cleaners was not confusingly similar to "ALL" for cleaning products). These marks are markedly different, one being a stylized design mark and the other a standard character mark that includes the word "PLUS." Thus, there is no confusion in their visual appearance. B. The Nature of the Goods Are Not Related When goods differ in function, structure, and intended use such that they are not in competition, consumer confusion is unlikely. See Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1244-46 (Fed. Cir. 2004) (holding that identical marks were not confusingly similar because cooking classes and kitchen textiles such as aprons and potholders are not related goods; finding that a barbecue mitt and a glove are unrelated because the "mere fact that both barbeque mitts and gloves are worn on the hands simply does not support a finding that consumers would associate these products with a common source"); In re Mars, Inc., 741 F.2d 395 (Fed. Cir. 1984) (holding that candy bars and fresh citrus fruits do not bear such a close relationship that consumer confusion is likely); Ralston Purina Co. v. On-Cor Frozen Foods, Inc., 746 F.2d 807 (Fed. Cir. 1984). The goods described in registered mark 4663258 is for "PROLINE PLUS" under International Class 019 are "Building products, namely, interior and exterior PVC trim." Applicant's mark is "PROLINE" for metal building materials for installing tiling and flooring, as indicated in the amended description of Applicant's mark under International Classes 006 and 020. Applicant's goods pertain to metal profiles to join flooring materials together. Applicant does not make any claims to goods in International Class 019 and makes no claims to any building material consisting of PVC (polyvinly chloride). Clearly, Applicant's building materials for installing tiling and flooring, as indicated in the amended Class 006 description, do not compete in the marketplace with "PROLINE PLUS" frame finishing materials. Moreover, even though a purchaser may encounter both flooring and tiling materials and frame finishing materials in the same online store, this is insufficient to find that the goods are related. Consumers utilizing hardware store websites expect to see goods offered by many different vendors. Thus, the mere potential that tiling and flooring materials and frame finishing materials may appear in the same store is insufficient to conclude that the goods are closely related. Further, as discussed in Applicant's response to the September 24, 2012, Office action, Applicant produces products for flooring and flooring system installations that are durable and made from metal materials, as further indicated in the goods description of Applicant's mark. These products cannot be made out of PVC material as this material is not resilient enough for flooring applications. A floor joist or profile made from PVC would be irreparably damaged if a large piece of furniture or heavy object were pushed across it. No one in the flooring industry would confuse the products offered by Applicant for those of registered mark 4663258. Additionally, the frame finishing industry and the flooring industry employ skilled tradepersons who are sophisticated in choosing the materials for their craft. There is no risk of confusion between the goods claimed by the registered mark 4663258 and the goods claimed by Applicant, as the goods of both are directed and marketed to differing industries and tradepersons. The consumers of each of the goods are knowledgeable about their trade and a flooring tradeperson is not likely to look for materials from a trim manufacturer and vice versa. The likelihood of confusion between the marks given the differing relevant industries and trade channels i not a sustainable objection to the registration of Applicant's mark. C. The Trade Channels for the Goods are Dissimilar It is "difficult to establish likelihood of confusion" when the respective parties' channels of trade and purchasers are unrelated. M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 1384, 78 U.S.P.Q.2d 1944 (Fed. Cir. 2006). The parties' trade channels may be unrelated even if the same companies purchase the parties' products and services. See Electronic Design & Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 717, 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992) (holding that the purchase of the parties' goods and services by some of the same large corporations established only a "tenuous connection" between the parties' trade channels where one party sold data processing services for medical insurers and the other party sold battery charges for medical equipment); Astra Pharmaceutical Prods. v. Beckman Instruments, 718 F.2d 1201, 1206, 220 U.S.P.Q. 786, 790 (1st Cir. 1983) (holding that even if 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 institution does not, by itself, establish similarity of trade channels or overlap of customers"). Buyers of Applicant's and Registrant's goods are each specialists in their fields of trade. Registrant markets and directs their products to builders and installers of interior and exterior trim. Applicant markets and directs their products to builders and installers of flooring material. It is highly unlikely that these respective goods would appear in close proximity on store shelves because the respective goods are used in widely differing applications and therefore different expertise and know-how are needed to market the goods to prospective customers. D. Conclusion Because the Registered mark cited by the Examining Attorney and Applicant's mark create significantly different commercial impressions and Applicant's goods, as amended, are markedly different from the description of goods identified by Registrant's mark. Once the marks are considered in their entireties there are clear differences in look, sound, connotation, and meaning which create two distinct commercial impressions and ensure that there is no likelihood of confusion between the marks for "PROLINE PLUS" and Applicant's mark. IV. THE COEXISTENCE OF THE REGISTERED 4292529 MARK AND THE REGISTERED 4663258 MARK, EACH WITH GENERAL APPLICABILITY TO BUILDING MATERIALS, FURTHER INDICATES THERE IS NO LIKELIHOOD OF CONFUSION BETWEEN THE MARKS In addition, Applicant notes that, even if the Examining Attorney's argument that the "Proline" term in each mark is dominant is accepted, the fact that the "ProLine Series" registered mark 4292529 and the "PROLINE PLUS" registered mark 4663258 have each been registered with respect to general building materials provides strong evidence that the registered marks and Applicant's mark are sufficiently distinct to coexist without creating customer confusion. As noted by the Examining Attorney, all three parties provide goods that generally relate to building materials. However, just as a consumer seeking "ProLine Series" "copper tube and copper fittings" under registered mark 4292529 would not be confused by a "PROLINE PLUS" "interior and exterior PVC trim," or vice versa, a customer seeking either of these products would not be confused by Applicant's "PROLINE" mark on the flooring materials listed in the amended Goods Description. Thus, although each mark includes the term "Proline" and is generally applicable to the building industry, the specific applications are each sufficiently distinct, and registration of Applicant's mark would not create any customer confusion, just as the coexistence of registered marks 4292529 and 4663258 has not caused customer confusion. V. CONCLUDING REMARKS In summary, the Applicant's mark PROLINE differs in its appearance of overall commercial impression from the "ProLine Series" and "PROLINE PLUS" marks. Furthermore, the respective goods differ substantially in terms of function, purpose, and structure. Finally, the respective goods are purchased through varying trade channels by distinct consumers. The cumulative effect of these differences in the marks and the differences in essential characteristics of the goods demonstrate that there is no likelihood of confusion between the marks. . See, e.g., Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103 (C.C.P.A. 1976) (holding that the "fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks."). For the foregoing reasons, approval of Applicant's mark is requested. If there are any remaining questions, the Examining Attorney is invited to contact the undersigned. |
|
| GOODS AND/OR SERVICES SECTION (006)(current) | |
| INTERNATIONAL CLASS | 006 |
| DESCRIPTION | |
| Building materials, namely, stair nosing of metal; Decorative metal profiles for use in further manufacture; Drywall corner bead of metal; Mechanical fastening elements of metal; Metal clasps for installing profiles; Metal clip for installing profiles; Metal couplings for use with installing profiles; Metal expansion joints for floors and walls; Metal fasteners, namely, for installing profiles; Metal flanges; Metal gutters; Metal profiles made of steel, iron, nickel, titanium and other metals and their alloys; Metal thresholds; Metal vent covers for roof deck protrusions, drains and pitch pans; Metallic drain traps | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (006)(proposed) | |
| INTERNATIONAL CLASS | 006 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Building materials for installing tiling and flooring, namely, stair nosing of metal, decorative metal profiles for use in further manufacture, drywall corner bead of metal, mechanical fastening elements of metal for installing profiles, metal clasps for installing profiles, metal clip for installing profiles, metal couplings for use with installing profiles, metal expansion joints for floors, metal profiles made of steel, iron, nickel, titanium and other metals and their alloys, metal thresholds | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (020)(current) | |
| INTERNATIONAL CLASS | 020 |
| DESCRIPTION | |
| Door stops of wood; Non-metal clips for installing profiles; Non-metal escutcheons for pipes | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (020)(proposed) | |
| INTERNATIONAL CLASS | 020 |
| TRACKED TEXT DESCRIPTION | |
| Door stops of wood; Non-metal clips for installing profiles; |
|
| FINAL DESCRIPTION | Door stops of wood; Non-metal clips for installing profiles |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Thomas J. Daly/ |
| SIGNATORY'S NAME | Thomas J. Daly |
| SIGNATORY'S POSITION | Attorney of record, California bar member |
| SIGNATORY'S PHONE NUMBER | 626-795-9900 |
| DATE SIGNED | 12/08/2014 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Dec 08 21:24:52 EST 2014 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.XX-2 0141208212452622340-85645 258-500fa1823c414f9e81354 534b6d6e39e02e67aa1fcd15c 74cefc3bcaed189873ff-N/A- N/A-20141208200705562074 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
I. Introductory Remarks
Applicant is in receipt of the Office Action of June 7, 2014 in which the Examining Attorney cited U.S. Reg. No. 4292529 of the mark PROLINE SERIES and U.S. Reg. No. 4463258 of the mark PROLINE PLUS in refusing Applicant's mark under Section 2(d) as raising a likelihood of confusion. Applicant has amended herein the Goods Description with which the Applicant's mark is associated. Below are the Applicant's response and observations in view of these amendments.
II. There is No Likelihood of Confusion Between Applicant's PROLINE and PROLINE SERIES
Lanham Act Section 2(d) prohibits the registration of an applicant's mark that is so similar to a previously-registered mark as to "likely cause confusion" such that members of the public are likely to believe that the two marks come from the same source. In du Pont, the Court of Customs and Patent Appeals enumerated thirteen factors as a guide for the determination of whether a mark sought to be registered is confusingly similar to a previously-registered mark under Section 2(d) of the Lanham Act. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). Only those du Pont factors that are material or relevant in the particular case to the determination of likelihood of confusion need to be considered. See, e.g., Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1241 (Fed. Cir. 2001) (holding that the court is "required only to consider those factors that are relevant."); see also Bose Corp. v. QSC Auto Prods., Inc., 293 F.3d 1367, 1370 (Fed. Cir. 2002) ("[T]he determination of a likelihood of confusion does not require examination and findings as to each and every DuPont factor."). In addition, not all of the relevant du Pont factors are necessarily given equal weight, and any single factor may be controlling. See Kellogg Co. v. Pack'Em Enters., Inc., 951 F.2d 330, 333 (Fed. Cir. 1991) (stating that the court "know[s] of no reason why, in a particular case, a single du Pont factor may not be dispositive.").
The du Pont factors relevant to this particular claim are the similarity or dissimilarity of the (1) "marks in their entireties as to appearance, sound, connotation and commercial impression"; (2) "nature of the goods or services as described in an application or registration"; and (3) "established, likely-to-continue trade channels". du Pont, 476 F.2d at 1361 (C.C.P.A. 1973).
A. The Overall Commercial Impression of the Applicant's Mark Differs Substantially From the Cited Mark
The Examining Attorney has refused registration of Applicant's design mark for PROLINE on the grounds that it is likely to be confused with "ProLine Series" registered mark 4292529, where the word "Series" is disclaimed. The Examining Attorney has described "proline" as the dominant feature of the mark, but does not appear to have considered the contribution of the disclaimed matter to the commercial impression of the "ProLine Series" mark and the differing stylized features of each mark.
Applicant respectfully disagrees with this methodology. For purposes of determining the likelihood of confusion concerning a registered composite mark of which portions are disclaimed, the disclaimed matter cannot be ignored. See May Dept. Stores Co. v. Schloo Bros. & Co., Inc., 43 C.C.P.A. 980 (1956). Although the disclaimed portion of a mark may be regarded as "weaker," this does not mean the disclaimed portion should be completely disregarded. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
The registered mark and the Applicant's marks are both design marks having very different stylized features. Moreover, the disclaimed portion of the registered mark contributes to the distinctions between the marks. The Examining Attorney's analysis ignores the significant contributions of the disclaimed matter of the "ProLine Series" mark and the differing stylized features of each mark that make clear the differences in the overall commercial impressions of the marks in their entireties.
As discussed in Applicant's response to the Office Action dated September 24, 2012, the ProLine Series mark consists of the stylized words "ProLine Series". The "ProLine" portion of the mark consists of both capital and small case letters and appears angled or italicized. The word "SERIES" of the mark is in all capital letters and is positioned inside a horizontal bar that extends across the word "ProLine." Color is not claimed as a feature of the mark.
Applicant's mark is a design mark consisting only of the word "PROLINE" wherein each of the letters is capitalized. The first three letters of Applicant's mark ("PRO") have breaking points at various junctures of the letters. These breaking points in the letters are related to the transition characteristics of buildings products that Applicant manufactures. In addition, the break in the "O" denotes a shading differential between the first portion of the mark and the second portion of the marks which also highlights the transition characteristics of Applicant's products. Color is not claimed as a feature of Applicant's mark.
Thus, these marks are very different in their stylized characteristics and there is no confusion in their visual appearance and sound when the necessary consideration of the disclaimed material is analyzed.
B. The Nature of the Goods Are Not Related
When goods differ in function, structure, and intended use such that they are not in competition, consumer confusion is unlikely. See Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1244-46 (Fed. Cir. 2004) (holding that identical marks were not confusingly similar because cooking classes and kitchen textiles such as aprons and potholders are not related goods; finding that a barbecue mitt and a glove are unrelated because the "mere fact that both barbeque mitts and gloves are worn on the hands simply does not support a finding that consumers would associate these products with a common source"); In re Mars, Inc., 741 F.2d 395 (Fed. Cir. 1984) (holding that candy bars and fresh citrus fruits do not bear such a close relationship that consumer confusion is likely); Ralston Purina Co. v. On-Cor Frozen Foods, Inc., 746 F.2d 807 (Fed. Cir. 1984).
The goods described in registered mark 4292529 are "Copper tube and copper fittings, none for use with fluid and corrosive handling applications." Clearly, Applicant's building materials for installing tiling and flooring, as indicated in the amended Class 006 description, do not compete in the marketplace with "ProLine Series" copper tube and copper fittings. Moreover, even though a purchaser may encounter both flooring and tiling materials and piping materials in the same store (whether online or brick and mortar), this is insufficient to find that the goods are related. Consumers at hardware stores expect to see goods offered by many different vendors. Thus, the mere potential that tiling and flooring materials and piping materials may appear in the same store is insufficient to conclude that the goods are closely related.
Further, the plumbing industry and the flooring industry employ skilled tradepersons who are sophisticated in choosing the materials for their craft. There is no risk of confusion between the goods claimed by the Registrant and the goods claimed by the Applicant as the goods of both are directed and marketed to differing industries and tradepersons. The consumers of Registrant's and Applicant's goods are knowledgeable about their trade and a flooring tradeperson is not likely to look for materials from a plumbing manufacturer and vice versa. The likelihood of confusion between the marks given the differing relevant industries and trade channels is not a sustainable objection to the registration of Applicant's mark.
C. The Trade Channels for the Goods are Dissimilar
It is "difficult to establish likelihood of confusion" when the respective parties' channels of trade and purchasers are unrelated. M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 1384, 78 U.S.P.Q.2d 1944 (Fed. Cir. 2006). The parties' trade channels may be unrelated even if the same companies purchase the parties' products and services. See Electronic Design & Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 717, 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992) (holding that the purchase of the parties' goods and services by some of the same large corporations established only a "tenuous connection" between the parties' trade channels where one party sold data processing services for medical insurers and the other party sold battery charges for medical equipment); Astra Pharmaceutical Prods. v. Beckman Instruments, 718 F.2d 1201, 1206, 220 U.S.P.Q. 786, 790 (1st Cir. 1983) (holding that even if 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 institution does not, by itself, establish similarity of trade channels or overlap of customers").
Buyers of Applicant's and Registrant's goods are each specialists in their fields of trade. Registrant markets and directs their products to builders and installers of plumbing and piping. Applicant markets and directs their products to builders and installers of flooring material. It is highly unlikely that these respective goods would appear in close proximity on store shelves because the respective goods are used in widely differing applications and therefore different expertise and know-how are needed to market the goods to prospective customers.
D. Conclusion
Because the Registered mark cited by the Examining Attorney and Applicant's mark create significantly different commercial impressions and Applicant's goods, as amended, are markedly different from the description of goods identified by Registrant's mark. Once the marks are considered in their entireties there are clear differences in look, sound, connotation, and meaning which create two distinct commercial impressions and ensure that there is no likelihood of confusion between the marks for "ProLine Series" and Applicant's mark.
III. There is No Likelihood of Confusion Between Applicant's PROLINE and PROLINE PLUS
The legal standard is set forth above with respect to the comparison of Applicant's PROLINE and the Registered mark PROLINE SERIES.
A. The Overall Commercial Impression of the Applicant's Mark Differs Substantially From the Cited Mark
The Examining Attorney has refused registration of Applicant's design mark for PROLINE on the grounds that it is likely to be confused with "PROLINE PLUS" registered mark 4663258, where the word "Plus" has not been disclaimed. The Examining Attorney has described "proline" as the dominant feature of the mark, but does not appear to have considered the commercial impression of the "PROLINE PLUS" mark as a whole and the differing stylized features of each mark.
Applicant respectfully disagrees with the Examining Attorney. Applicant recognizes that a dominant portion of a mark may be given greater weight in determining similarity. However, composite marks are to be compared by looking at them as a whole, rather than breaking the marks up into their component parts for comparison. Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538 (1920). Thus, Applicant's mark and the registered mark should be compared according to the overall commercial impression of each mark.
As discussed in Applicant's response to the Office Action dated September 24, 2012, Applicant's mark is a stylized mark and readily distinct from the mere standard characters of the registered mark which further includes the word "PLUS." As discussed above, Applicant's mark is a design mark consisting only of the word "PROLINE" wherein each of the letters is capitalized. The first three letters of Applicant's mark have breaking points at various junctures of the letters that relate to the transition characteristics of building products that Applicant manufactures. Further, the break in the "O" denotes a shading differential between the first portion of the mark and the second portion of the mark which also highlights the transition characteristics of Applicant's products. Even when marks are similar in part, when the marks are compared as a whole, there may be no likelihood of confusion. See, e.g., Lever Brothers Co. v. Barcolene Co., 463 F. 2d 1107 (C.C.P.A. 1972) (finding the mark "ALL CLEAR" for household cleaners was not confusingly similar to "ALL" for cleaning products).
These marks are markedly different, one being a stylized design mark and the other a standard character mark that includes the word "PLUS." Thus, there is no confusion in their visual appearance.
B. The Nature of the Goods Are Not Related
When goods differ in function, structure, and intended use such that they are not in competition, consumer confusion is unlikely. See Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1244-46 (Fed. Cir. 2004) (holding that identical marks were not confusingly similar because cooking classes and kitchen textiles such as aprons and potholders are not related goods; finding that a barbecue mitt and a glove are unrelated because the "mere fact that both barbeque mitts and gloves are worn on the hands simply does not support a finding that consumers would associate these products with a common source"); In re Mars, Inc., 741 F.2d 395 (Fed. Cir. 1984) (holding that candy bars and fresh citrus fruits do not bear such a close relationship that consumer confusion is likely); Ralston Purina Co. v. On-Cor Frozen Foods, Inc., 746 F.2d 807 (Fed. Cir. 1984).
The goods described in registered mark 4663258 is for "PROLINE PLUS" under International Class 019 are "Building products, namely, interior and exterior PVC trim."
Applicant's mark is "PROLINE" for metal building materials for installing tiling and flooring, as indicated in the amended description of Applicant's mark under International Classes 006 and 020. Applicant's goods pertain to metal profiles to join flooring materials together. Applicant does not make any claims to goods in International Class 019 and makes no claims to any building material consisting of PVC (polyvinly chloride).
Clearly, Applicant's building materials for installing tiling and flooring, as indicated in the amended Class 006 description, do not compete in the marketplace with "PROLINE PLUS" frame finishing materials. Moreover, even though a purchaser may encounter both flooring and tiling materials and frame finishing materials in the same online store, this is insufficient to find that the goods are related. Consumers utilizing hardware store websites expect to see goods offered by many different vendors. Thus, the mere potential that tiling and flooring materials and frame finishing materials may appear in the same store is insufficient to conclude that the goods are closely related.
Further, as discussed in Applicant's response to the September 24, 2012, Office action, Applicant produces products for flooring and flooring system installations that are durable and made from metal materials, as further indicated in the goods description of Applicant's mark. These products cannot be made out of PVC material as this material is not resilient enough for flooring applications. A floor joist or profile made from PVC would be irreparably damaged if a large piece of furniture or heavy object were pushed across it. No one in the flooring industry would confuse the products offered by Applicant for those of registered mark 4663258.
Additionally, the frame finishing industry and the flooring industry employ skilled tradepersons who are sophisticated in choosing the materials for their craft. There is no risk of confusion between the goods claimed by the registered mark 4663258 and the goods claimed by Applicant, as the goods of both are directed and marketed to differing industries and tradepersons. The consumers of each of the goods are knowledgeable about their trade and a flooring tradeperson is not likely to look for materials from a trim manufacturer and vice versa. The likelihood of confusion between the marks given the differing relevant industries and trade channels i not a sustainable objection to the registration of Applicant's mark.
C. The Trade Channels for the Goods are Dissimilar
It is "difficult to establish likelihood of confusion" when the respective parties' channels of trade and purchasers are unrelated. M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 1384, 78 U.S.P.Q.2d 1944 (Fed. Cir. 2006). The parties' trade channels may be unrelated even if the same companies purchase the parties' products and services. See Electronic Design & Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 717, 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992) (holding that the purchase of the parties' goods and services by some of the same large corporations established only a "tenuous connection" between the parties' trade channels where one party sold data processing services for medical insurers and the other party sold battery charges for medical equipment); Astra Pharmaceutical Prods. v. Beckman Instruments, 718 F.2d 1201, 1206, 220 U.S.P.Q. 786, 790 (1st Cir. 1983) (holding that even if 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 institution does not, by itself, establish similarity of trade channels or overlap of customers").
Buyers of Applicant's and Registrant's goods are each specialists in their fields of trade. Registrant markets and directs their products to builders and installers of interior and exterior trim. Applicant markets and directs their products to builders and installers of flooring material. It is highly unlikely that these respective goods would appear in close proximity on store shelves because the respective goods are used in widely differing applications and therefore different expertise and know-how are needed to market the goods to prospective customers.
D. Conclusion
Because the Registered mark cited by the Examining Attorney and Applicant's mark create significantly different commercial impressions and Applicant's goods, as amended, are markedly different from the description of goods identified by Registrant's mark. Once the marks are considered in their entireties there are clear differences in look, sound, connotation, and meaning which create two distinct commercial impressions and ensure that there is no likelihood of confusion between the marks for "PROLINE PLUS" and Applicant's mark.
IV. THE COEXISTENCE OF THE REGISTERED 4292529 MARK AND THE REGISTERED 4663258 MARK, EACH WITH GENERAL APPLICABILITY TO BUILDING MATERIALS, FURTHER INDICATES THERE IS NO LIKELIHOOD OF CONFUSION BETWEEN THE MARKS
In addition, Applicant notes that, even if the Examining Attorney's argument that the "Proline" term in each mark is dominant is accepted, the fact that the "ProLine Series" registered mark 4292529 and the "PROLINE PLUS" registered mark 4663258 have each been registered with respect to general building materials provides strong evidence that the registered marks and Applicant's mark are sufficiently distinct to coexist without creating customer confusion. As noted by the Examining Attorney, all three parties provide goods that generally relate to building materials. However, just as a consumer seeking "ProLine Series" "copper tube and copper fittings" under registered mark 4292529 would not be confused by a "PROLINE PLUS" "interior and exterior PVC trim," or vice versa, a customer seeking either of these products would not be confused by Applicant's "PROLINE" mark on the flooring materials listed in the amended Goods Description.
Thus, although each mark includes the term "Proline" and is generally applicable to the building industry, the specific applications are each sufficiently distinct, and registration of Applicant's mark would not create any customer confusion, just as the coexistence of registered marks 4292529 and 4663258 has not caused customer confusion.
V. CONCLUDING REMARKS
In summary, the Applicant's mark PROLINE differs in its appearance of overall commercial impression from the "ProLine Series" and "PROLINE PLUS" marks. Furthermore, the respective goods differ substantially in terms of function, purpose, and structure. Finally, the respective goods are purchased through varying trade channels by distinct consumers. The cumulative effect of these differences in the marks and the differences in essential characteristics of the goods demonstrate that there is no likelihood of confusion between the marks. . See, e.g., Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103 (C.C.P.A. 1976) (holding that the "fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.").
For the foregoing reasons, approval of Applicant's mark is requested. If there are any remaining questions, the Examining Attorney is invited to contact the undersigned.