| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85955014 |
| LAW OFFICE ASSIGNED | LAW OFFICE 109 |
| MARK SECTION | |
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85955014 |
| LITERAL ELEMENT | APPROACH |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
Serial No.: 85955014 Applicant: Garmin Switzerland GmbH Mark: APPROACH Examiner: Stephanie Ali, Esq. Amendment and Response to Office Action Applicant is in receipt of the office action dated July 11, 2013 and acknowledges the same. Applicant appreciates the Examining Attorney’s courtesies with regard to the instant application. Amendment Please amend the identification of goods to the following: - - Watches, namely, watches containing global positioning system (GPS) and sold through sporting goods retailers. - - Correspondence The sole issue raised in the office action is a likelihood of confusion under Section 2(d) of the Trademark Act based upon U.S. Registration No. 3929928, for the mark APPROACH BROOCH used in connection with brooches. For the reasons set forth below, the Applicant respectfully requests that based upon the amended identification of goods, the refusal be withdrawn. The issue of likelihood of confusion is analyzed on a case-by-case basis, aided by the application of the relevant factors set forth in In re E.I. DuPont du Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973); Lloyd's Foods Products, Inc. v. Ely's, Inc., 25 U.S.P.Q. 2d 2027 (Fed. Cir. 1993). Those factors include: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; (3) The similarity or dissimilarity of established, likely-to-continue trade channels; (4) The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing; (5) The fame of the prior mark (sales, advertising, length of use); (6) The number and nature of similar marks in use on similar goods; (7) The nature and extent of any actual confusion; (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion; (9) The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark); (10) The market interface between Applicant and the owner of a prior mark: (a) a mere "consent" to register or use; (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party; (c) assignment of mark, application, registration and good will of the related business; (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion; (11) The extent to which Applicant has a right to exclude others from use of its mark on its goods; (12) The extent of potential confusion, i.e. whether de minimis or substantial; and (13) Any other established fact probative of the effect of use. Based on a review of the relevant factors, Applicant respectfully submits there is no likelihood of confusion. 1. Similarity of the Marks While Applicant’s mark is wholly contained within the cited mark, the marks are not identical. The fact that the cited mark contains the term BROOCH and thus clearly indicates that the goods associated with the cited mark are brooches helps distinguish it from Applicant’s mark. Marks must be considered in their entireties when considering whether a likelihood of confusion exists. See Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 U.S.P.Q. 272 (C.C.P.A. 1974). 2. Similarity of the Goods Applicant submits that its goods, as amended above, are not similar to the brooches of the cited marks. As noted in the Office Action and using the original identification of “watches” the goods in both the original application and the cited registration are likely to be sold to the same type of consumer and through similar channels of trade, as both are jewelry items. However, Applicant in the amendment above has clarified that its product is not a jewelry type watch that would be sold in the same type of establishment that sells brooches. Rather, Applicant’s goods are related to outdoor sports and sold to sportsmen. As a result, applicant’s goods and brooches, although in the same class, are not related goods. 3. Conditions of Purchase / Channels of Trade As noted in the amended identification above, applicant’s watches incorporate a GPS unit and are sold through sporting goods retailers. Brooches are jewelry items, not sold through sporting goods retailers and relate to a totally different use. As a result, Applicant’s goods and those of the cited registration have very different channels of trade and conditions of purchase. 4. Coexistence and Prior Mark Ownership As noted in the application, Applicant is the owner of US Reg. No. 3760898, for the mark APPROACH for GPS units. Given the amendment noted above, Applicant’s current registration is consistent with that in No. 3760898, which has peacefully coexisted with the cited registration for several years. Given the differences in the goods, conditions of purchase and channels of trade, the fact that the marks are not identical, and have coexisted with similar goods for several years, Applicant submits that the Section 2(d) refusal should be withdrawn and the mark, as amended, be approved for publication. Respectfully submitted, David V. Ayres Attorney of Record, Kansas bar Member |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 014 |
| DESCRIPTION | Watches |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 11/00/2010 |
| FIRST USE IN COMMERCE DATE | At least as early as 11/00/2010 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 014 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Watches, namely, watches containing global positioning system (GPS) and sold through sporting goods retailers. | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 11/00/2010 |
| FIRST USE IN COMMERCE DATE | At least as early as 11/00/2010 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /David V. Ayres/ |
| SIGNATORY'S NAME | /David V. Ayres/ |
| SIGNATORY'S POSITION | Attorney of Record, Kansas bar Member |
| SIGNATORY'S PHONE NUMBER | 913-440-2386 |
| DATE SIGNED | 01/07/2014 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Jan 07 17:07:13 EST 2014 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XXX.XX-2 0140107170713928498-85955 014-500cb8817cc2a9ae76e16 83b8fe1fe1e9342d36029c7ac 52809041939119f7aef-N/A-N /A-20140107141038112373 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
Serial No.: 85955014
Applicant: Garmin Switzerland GmbH
Mark: APPROACH
Examiner: Stephanie Ali, Esq.
Amendment and Response to Office Action
Applicant is in receipt of the office action dated July 11, 2013 and acknowledges the same. Applicant appreciates the Examining Attorney’s courtesies with regard to the instant application.
Amendment
Please amend the identification of goods to the following:
- - Watches, namely, watches containing global positioning system (GPS) and sold through sporting goods retailers. - -
Correspondence
The sole issue raised in the office action is a likelihood of confusion under Section 2(d) of the Trademark Act based upon U.S. Registration No. 3929928, for the mark APPROACH BROOCH used in connection with brooches. For the reasons set forth below, the Applicant respectfully requests that based upon the amended identification of goods, the refusal be withdrawn.
The issue of likelihood of confusion is analyzed on a case-by-case basis, aided by the application of the relevant factors set forth in In re E.I. DuPont du Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973); Lloyd's Foods Products, Inc. v. Ely's, Inc., 25 U.S.P.Q. 2d 2027 (Fed. Cir. 1993). Those factors include:
(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression;
(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use;
(3) The similarity or dissimilarity of established, likely-to-continue trade channels;
(4) The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing;
(5) The fame of the prior mark (sales, advertising, length of use);
(6) The number and nature of similar marks in use on similar goods;
(7) The nature and extent of any actual confusion;
(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion;
(9) The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark);
(10) The market interface between Applicant and the owner of a prior mark:
(a) a mere "consent" to register or use;
(b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party;
(c) assignment of mark, application, registration and good will of the related business;
(d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion;
(11) The extent to which Applicant has a right to exclude others from use of its mark on its goods;
(12) The extent of potential confusion, i.e. whether de minimis or substantial; and
(13) Any other established fact probative of the effect of use.
Based on a review of the relevant factors, Applicant respectfully submits there is no likelihood of confusion.
1. Similarity of the Marks
While Applicant’s mark is wholly contained within the cited mark, the marks are not identical. The fact that the cited mark contains the term BROOCH and thus clearly indicates that the goods associated with the cited mark are brooches helps distinguish it from Applicant’s mark. Marks must be considered in their entireties when considering whether a likelihood of confusion exists. See Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 U.S.P.Q. 272 (C.C.P.A. 1974).
2. Similarity of the Goods
Applicant submits that its goods, as amended above, are not similar to the brooches of the cited marks. As noted in the Office Action and using the original identification of “watches” the goods in both the original application and the cited registration are likely to be sold to the same type of consumer and through similar channels of trade, as both are jewelry items. However, Applicant in the amendment above has clarified that its product is not a jewelry type watch that would be sold in the same type of establishment that sells brooches. Rather, Applicant’s goods are related to outdoor sports and sold to sportsmen. As a result, applicant’s goods and brooches, although in the same class, are not related goods.
3. Conditions of Purchase / Channels of Trade
As noted in the amended identification above, applicant’s watches incorporate a GPS unit and are sold through sporting goods retailers. Brooches are jewelry items, not sold through sporting goods retailers and relate to a totally different use. As a result, Applicant’s goods and those of the cited registration have very different channels of trade and conditions of purchase.
4. Coexistence and Prior Mark Ownership
As noted in the application, Applicant is the owner of US Reg. No. 3760898, for the mark APPROACH for GPS units. Given the amendment noted above, Applicant’s current registration is consistent with that in No. 3760898, which has peacefully coexisted with the cited registration for several years.
Given the differences in the goods, conditions of purchase and channels of trade, the fact that the marks are not identical, and have coexisted with similar goods for several years, Applicant submits that the Section 2(d) refusal should be withdrawn and the mark, as amended, be approved for publication.
Respectfully submitted,
David V. Ayres
Attorney of Record, Kansas bar Member