| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85967238 |
| LAW OFFICE ASSIGNED | LAW OFFICE 118 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/85967238/mark.png |
| LITERAL ELEMENT | TRAVELER |
| 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) | |
|
Examining attorney has refused registration of the applied-for standard character mark, TRAVELER based on assumption of a likelihood of confusion with the typed mark, TRAVELERS CLUB in U.S. Registration No. 0852889. Applicant contends the following arguments and evidence should allow registration of mark TRAVELER. 1.In response to examining attorney’s initial assessment that mark TRAVELER is confusingly similarity to TRAVELERS CLUB, there are specific examples of USPTO registered marks that prove that marks, with nearly identical qualities of the marks in question, have received registration and not held to be confusingly similar. The following are examples of nearly identical instances of trademarks registered with the USPTO not held to be confusingly similar. a.Example 1 – THE BANKER (Wine) vs. BANKER’S Club (Whiskey) i. THE BANKER Goods and Services IC 033. US 047 049. G & S: Wine. FIRST USE: 20071023. FIRST USE IN COMMERCE: 20071023 Registration Number 3603516 ii. BANKER'S CLUB Goods and Services IC 033. US 049. G & S: Blended Whiskey; Vodka; Gin; Scotch; Brandy; Bourbon; Rum. FIRST USE: 19691215. FIRST USE IN COMMERCE: 19691215 Registration Date September 20, 1983 b.Example 2 – JAZZ (Wine) vs. Jazz Club i. JAZZ IC 021. US 002 013 023 029 030 033 040 050. Registration Number 4281152 ii. JAZZ CLUB Goods and Services IC 033. US 047 049. G & S: Bourbon Whiskey. FIRST USE: 19911014. FIRST USE IN COMMERCE: 19911112 Registration Number 2658288 c.Example 3 – The Maker (Wine) vs. Maker’s Mark (Whiskey) i. THE MAKER Goods and Services IC 033. US 047 049. G & S: Wines. FIRST USE: 20110803. FIRST USE IN COMMERCE: 20130417 Registration Date September 17, 2013 ii. MAKER'S MARK Goods and Services IC 033. US 049. G & S: WHISKEY. FIRST USE: 19571101. FIRST USE IN COMMERCE: 19571101 Registration Number 0678192 2.Regarding confusion between Traveler and Traveler’s Club a.Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004) reversed the TTAB’s holding that contemporaneous use of THE RITZ KIDS for clothing items (including gloves) and RITZ for various kitchen textiles (including barbeque mitts) is likely to cause confusion, because, inter alia, THE RITZ KIDS creates a different commercial impression. It changes the look and sound of the mark making it distinct from the registered mark. 3.Furthermore, the meanings or connotations of the similar part of the marks differ. Due to the sailing emphasis on the Genoa Cellars label, TRAVELER represents the meaning of a sailing component that slides back and forth on the sailboat cabin connected to the sheet block for adjusting the mainsail angle. The registered mark TRAVELERS CLUB represents the more obvious meaning of a person who travels. 4.The meaning or connotation of a mark must be determined in relation to the named goods or services. Even marks that are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties’ goods or services so that there is no likelihood of confusion. See, e.g., In re Sears, Roebuck & Co., 2 USPQ2d 1312, 1314 (TTAB 1987) (holding CROSS-OVER for bras and CROSSOVER for ladies’ sportswear not likely to cause confusion, noting that the term "CROSS-OVER" was suggestive of the construction of applicant’s bras, whereas “CROSSOVER,” as applied to registrant’s goods, was “likely to be perceived by purchasers either as an entirely arbitrary designation, or as being suggestive of sportswear which “crosses over” the line between informal and more formal wear . . . or the line between two seasons”); 5.Look and Sound of the marks is different a.Traveler does not include the letter “s” which represents possessive or plural. The word Club is meaningful in the registered mark. b.Jet, Inc. v. Sewage Aeration Sys., 165 F.3d 419, 49 U.S.P.Q.2d 1355, 1359 (6th Cir. 1999) (“the ‘anti-dissection rule’ . . . serves to remind courts not to focus only on the prominent features of the mark, or only on those features that are prominent for purposes of the litigation, but on the mark in its totality”); August Storck K.G. v. Nabisco, Inc., 59 F.3d 616, 35 U.S.P.Q.2d 1211, 1214 (7th Cir. 1995); Forschner Group, Inc. v. Arrow Trading Co., 124 F.3d 402, 409, 43 F.3d 1942 (2d Cir. 1997) (“we are not so much concerned with dissecting the competing trade dress and enumerating discrete points of similarity, but rather we focus on the overall image created”); SquirtCo. v. Seven-Up Co., 628 F.2d 1086, 207 U.S.P.Q. 897, 900 (8th Cir. 1980); John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 219 U.S.P.Q. 515, 524 (11th Cir. 1983); In re Nat’l Data Corp., 753 F.2d 1056, 224 U.S.P.Q. 749, 750–51 (Fed. Cir. 1985); In re Bed & Breakfast Registry, 791 F.2d 157, 229 U.S.P.Q. 818, 819 (Fed. Cir. 1986); Oreck Corp. v. U.S. Floor Sys., Inc., 803 F.2d 166, 231 U.S.P.Q. 634, 638 (5th Cir. 1986); Little Caesar Enters., Inc. v. Pizza Caesar, Inc., 834 F.2d 568, 4 U.S.P.Q.2d 1942, 1944–45 (6th Cir. 1987); Bausch & Lomb, Inc. v. Nevitt Sales Corp., 810 F. Supp. 466, 477, 26 U.S.P.Q.2d 1275, 1283 (W.D.N.Y. 1993) (“in an action for trade dress infringement, as in an action for trademark infringement, the elements of the trade dress must be evaluated in their entirety and not separately”); B.V.D. Licensing Corp. v. Body Action Design, Inc., 846 F.2d 727, 730, 6 U.S.P.Q.2d 1719, 1722 (Fed. Cir. 1988) (Nies, J., dissenting), citing Joseph Schlitz Brewing Co. v. Houston Ice & Brewing Co., 250 U.S. 28, 29 (1919) (Holmes, J.) (“It is a fallacy to break the fagot stick by stick.”).
6.Comparison of the goods - Regarding similarity of wine and whiskey a.In In re White Rock Distilleries Inc (Case 77093221, October 5 2009), in a precedential decision, the Trademark Trial and Appeal Board (TTAB) reversed a refusal to register the word mark VOLTA, finding that confusion was unlikely with the registered figurative mark TERZA VOLTA. “there is no evidence that vodka, much less [White Rock]’s specific type of vodka, and wine emanate from a single source under a single mark”. b.As to the degree to which the goods were related, “there is no per se rule that holds that all alcoholic beverages are related” (Trademark Manual of Examining Procedure, §1207.01(a)(iv): “there can be no rule that certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto”).
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| EVIDENCE SECTION | |
| DESCRIPTION OF EVIDENCE FILE | Evidence is specified in Arguments. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /S. Scott Heinrich/ |
| SIGNATORY'S NAME | S. Scott Heinrich |
| SIGNATORY'S POSITION | Principal |
| SIGNATORY'S PHONE NUMBER | 425-770-6400 |
| DATE SIGNED | 03/29/2014 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Sat Mar 29 19:44:35 EDT 2014 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 140329194435690081-859672 38-50039dbc0fcb5890b8279f 5e530b6703c2e5fe33d4f5f1b 8067f76bdd46f268ed-N/A-N/ A-20140329193757440393 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
Examining attorney has refused registration of the applied-for standard character mark, TRAVELER based on assumption of a likelihood of confusion with the typed mark, TRAVELERS CLUB in U.S. Registration No. 0852889. Applicant contends the following arguments and evidence should allow registration of mark TRAVELER.
1.In response to examining attorney’s initial assessment that mark TRAVELER is confusingly similarity to TRAVELERS CLUB, there are specific examples of USPTO registered marks that prove that marks, with nearly identical qualities of the marks in question, have received registration and not held to be confusingly similar. The following are examples of nearly identical instances of trademarks registered with the USPTO not held to be confusingly similar.
a.Example 1 – THE BANKER (Wine) vs. BANKER’S Club (Whiskey)
i. THE BANKER Goods and Services IC 033. US 047 049. G & S: Wine. FIRST USE: 20071023. FIRST USE IN COMMERCE: 20071023 Registration Number 3603516
ii. BANKER'S CLUB Goods and Services IC 033. US 049. G & S: Blended Whiskey; Vodka; Gin; Scotch; Brandy; Bourbon; Rum. FIRST USE: 19691215. FIRST USE IN COMMERCE: 19691215 Registration Date September 20, 1983
b.Example 2 – JAZZ (Wine) vs. Jazz Club
i. JAZZ IC 021. US 002 013 023 029 030 033 040 050. Registration Number 4281152
ii. JAZZ CLUB Goods and Services IC 033. US 047 049. G & S: Bourbon Whiskey. FIRST USE: 19911014. FIRST USE IN COMMERCE: 19911112 Registration Number 2658288
c.Example 3 – The Maker (Wine) vs. Maker’s Mark (Whiskey)
i. THE MAKER Goods and Services IC 033. US 047 049. G & S: Wines. FIRST USE: 20110803. FIRST USE IN COMMERCE: 20130417 Registration Date September 17, 2013
ii. MAKER'S MARK Goods and Services IC 033. US 049. G & S: WHISKEY. FIRST USE: 19571101. FIRST USE IN COMMERCE: 19571101 Registration Number 0678192
2.Regarding confusion between Traveler and Traveler’s Club
a.Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004) reversed the TTAB’s holding that contemporaneous use of THE RITZ KIDS for clothing items (including gloves) and RITZ for various kitchen textiles (including barbeque mitts) is likely to cause confusion, because, inter alia, THE RITZ KIDS creates a different commercial impression. It changes the look and sound of the mark making it distinct from the registered mark.
3.Furthermore, the meanings or connotations of the similar part of the marks differ. Due to the sailing emphasis on the Genoa Cellars label, TRAVELER represents the meaning of a sailing component that slides back and forth on the sailboat cabin connected to the sheet block for adjusting the mainsail angle. The registered mark TRAVELERS CLUB represents the more obvious meaning of a person who travels.
4.The meaning or connotation of a mark must be determined in relation to the named goods or services. Even marks that are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties’ goods or services so that there is no likelihood of confusion. See, e.g., In re Sears, Roebuck & Co., 2 USPQ2d 1312, 1314 (TTAB 1987) (holding CROSS-OVER for bras and CROSSOVER for ladies’ sportswear not likely to cause confusion, noting that the term "CROSS-OVER" was suggestive of the construction of applicant’s bras, whereas “CROSSOVER,” as applied to registrant’s goods, was “likely to be perceived by purchasers either as an entirely arbitrary designation, or as being suggestive of sportswear which “crosses over” the line between informal and more formal wear . . . or the line between two seasons”);
5.Look and Sound of the marks is different
a.Traveler does not include the letter “s” which represents possessive or plural. The word Club is meaningful in the registered mark.
b.Jet, Inc. v. Sewage Aeration Sys., 165 F.3d 419, 49 U.S.P.Q.2d 1355, 1359 (6th Cir. 1999) (“the ‘anti-dissection rule’ . . . serves to remind courts not
to focus only on the prominent features of the mark, or only on those features that are prominent for purposes of the litigation, but on the mark
in its totality”); August Storck K.G. v. Nabisco, Inc., 59 F.3d 616, 35
U.S.P.Q.2d 1211, 1214 (7th Cir. 1995); Forschner Group, Inc. v. Arrow Trading Co., 124 F.3d 402, 409, 43 F.3d 1942 (2d Cir. 1997) (“we are not so
much concerned with dissecting the competing trade dress and enumerating discrete points of similarity, but rather we focus on the overall image created”); SquirtCo. v. Seven-Up Co., 628 F.2d 1086, 207 U.S.P.Q. 897, 900 (8th Cir. 1980); John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 219 U.S.P.Q. 515, 524 (11th Cir. 1983); In re Nat’l Data Corp., 753 F.2d 1056, 224 U.S.P.Q. 749, 750–51 (Fed. Cir. 1985); In re Bed & Breakfast Registry, 791 F.2d 157, 229 U.S.P.Q. 818, 819 (Fed. Cir. 1986); Oreck Corp. v. U.S. Floor Sys., Inc., 803 F.2d 166, 231 U.S.P.Q. 634, 638 (5th Cir. 1986); Little Caesar Enters., Inc. v. Pizza Caesar, Inc., 834 F.2d 568, 4 U.S.P.Q.2d 1942, 1944–45 (6th Cir. 1987); Bausch & Lomb, Inc. v. Nevitt Sales Corp., 810 F. Supp. 466, 477, 26 U.S.P.Q.2d 1275, 1283 (W.D.N.Y. 1993) (“in an action for trade dress infringement, as in an action for trademark infringement, the elements of the trade dress must be evaluated in their entirety and not separately”); B.V.D. Licensing Corp. v. Body Action Design, Inc., 846 F.2d 727, 730, 6 U.S.P.Q.2d 1719, 1722 (Fed. Cir. 1988) (Nies, J., dissenting), citing Joseph Schlitz Brewing Co. v. Houston Ice & Brewing Co., 250 U.S. 28, 29 (1919) (Holmes, J.) (“It is a fallacy to break the fagot stick by stick.”).
6.Comparison of the goods - Regarding similarity of wine and whiskey
a.In In re White Rock Distilleries Inc (Case 77093221, October 5 2009), in a precedential decision, the Trademark Trial and Appeal Board (TTAB) reversed a refusal to register the word mark VOLTA, finding that confusion was unlikely with the registered figurative mark TERZA VOLTA. “there is no evidence that vodka, much less [White Rock]’s specific type of vodka, and wine emanate from a single source under a single mark”.
b.As to the degree to which the goods were related, “there is no per se rule that holds that all alcoholic beverages are related” (Trademark Manual of Examining Procedure, §1207.01(a)(iv): “there can be no rule that certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto”).