| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86115630 |
| LAW OFFICE ASSIGNED | LAW OFFICE 108 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/86115630/mark.png |
| LITERAL ELEMENT | CAPSTONE |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
RESPONSE TO OFFICE ACTION OF 02/26/2014 This is in response to the Office Action dated February 26, 2014. The Examining Attorney has requested that Applicant provide a more complete description of the applied-for mark. In addition, the Examining Attorney cites prior-filed pending U.S. Application Serial No. 86/020931 as potentially barring registration under Trademark Act Section 2(d) if the marks register. Applicant makes the following changes to the description of the applied-for mark and response in support of registration. DESCRIPTION OF MARK Applicant respectfully submits the following description of its mark: The mark consists of the word "CAPSTONE" in which the letter "A" is formed by a triangle design and the letter “O” is formed by a circle which has been divided horizontally in the middle. SUSPENSION FROM REGISTRATION FOR PRIOR PENDING APPLICATIONS IS IMPROPER The Examining Attorney has suggested that there may be a conflict between the Applicant’s mark and U.S. Application Serial No. 86/020931 for the mark “CAPSTONE INFRASTRUCTURE”. Applicant submits that concurrent registration of Applicant’s mark will not likely cause confusion, mistake or deception, for the reasons described below, and request that Examining Attorney approve application for publication. 1. Applicant’s Mark Is Not Confusingly Similar to Cited Marks. To determine whether two marks are confusingly similar, the Examining Attorney must first look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re Dupont de Nemours & Co., Inc., 476 F.2d 1357 (C.C.P.A. 1973). The Examining Attorney must then compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion is likely. Id.Because of the clear difference in the appearance, meaning and nature of the services between the Applicant’s mark and the cited mark, as well as trade channels and consumer sophistication, Applicant’s mark will not result in a likelihood of consumer confusion as to the source of the services represented by the Applicant’s mark and the cited mark. a. The Marks Differ in Appearance, Sound, and Meaning or Connotation. Where the marks contain common words with well-known meanings, relatively slight differences in sound or appearance suffice to avoid conflicts. Playboy Enters., Inc. v. Chuckleberry Publ’g, Inc., 486 F. Supp. 414 (S.D.N.Y. 1980), citing cases; E.R. Squibb & Sons, Inc. v. Cooper Labs., 536 F. Supp. 523, (S.D.N.Y. 1982); Racemark Int’l, Inc. v. Specialty Prods., Inc., 217 U.S.P.Q. 772, 779 (N.D.N.Y. 1982) (RACEMARK v. ROSSMARK); Chesebrough-Pond’s Inc. v. Faberge, Inc., 666 F.2d 393 (9 th Cir. 1982) (MATCH v. MACHO); Ava Enters., Inc. v. P.A.C. Trading Group, Inc., 86 U.S.P.Q.2d 1659 (T.T.A.B. 2008) (BOSS v. BOOSTER). The Applicant’s mark and the cited mark share the word “CAPSTONE”. The major difference between the cited marks and the Applicant’s mark is the word “INFRASTRUCTURE” contained in the cited mark. This difference clearly distinguishes Applicant’s mark from the cited mark because the word CAPSTONE is so commonly used by business services companies that it has become diluted. Applicant is attaching examples of third party marks registered in the same class 35, including: CAPSTONE (U.S. Reg. No. 3517362) CAPSTONE LEGACY FOUNDATION (U.S. Reg. No. 3794182) CAPSTONE REWARDS (U.S. Reg. No. 3784546) CAPSTONE LOGISTICS & Design (U.S. Reg. No. 4319739). These registrations clearly demonstrate that the word CAPSTONE has become significantly diluted for use in connection with business services. However, despite the existence of these third party registrations, all of the aforementioned CAPSTONE registrations were able to co-exist in the marketplace without consumer confusion and were able to register in conjunction with each other. This indicates the overall weakness of the word CAPSTONE. As a result, it has been shown that since the word CAPSTONE is so diluted in this space, the Trademark Office has effectively determined that CAPSTONE marks used for business services that might traditionally be deemed to be tangentially related would not likely be considered confusingly similar. Therefore, unless the services covered by the Applicant’s mark and the cited mark are nearly identical, the public is unlikely to be confused by variations in CAPSTONE marks for even slightly varying services in business services space. Applicant is aware that the Examining Attorney must consider each case on its merits, and that she is not bound by the decisions of other examiners, however, Examining Attorney is required to take the state of the register into account when making a final determination regarding likelihood of confusion. Furthermore, since consumers are not aware of the existence of a disclaimer when they encounter a mark, “the disclaimed material still forms a part of the mark and cannot be ignored in determining likelihood of confusion.” Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570 (Fed. Cir. 1983). The addition of the word “INFRASTRUCTURE” to the cited mark is significant as it indicates to the consumer something in addition, although descriptive, the consumer can expect from the cited mark’s services. As such, this additional word serves as a source indicator for cited mark’s services, and therefore, further distinguishes Applicant’s mark from the cited marks. Simply because two marks have some common terms does not make the marks confusingly similar. Moreover, there is no per se rule that confusion is automatically likely between marks even in a case where one mark contains in part the whole of another’s mark. E.g. Colgate-Palmolive Co. v. Carter-Wallace, Inc., 167 U.S.P.Q. 529 (C.C.P.A. 1970) (PEAK PERIOD not confusingly similar to PEAK); In re Ferrero, 178 U.S.P.Q. 167 (C.C.P.A. 1973) (TIC TAC not confusingly similar to TIC TAC TOE); Conde Nast Publications, Inc. v. Miss Quality, Inc., 184 U.S.P.Q. 422 (C.C.P.A. 1975) (COUNTRY VOGUE not confusingly similar to VOGUE); In re Merchandising Motivation, Inc., 184 U.S.P.Q. 364 (T.T.A.B. 1974) (MMI MENSWEAR not confusingly similar to MEN’S WEAR). One must consider the similarity or dissimilarity of the marks in their entireties as to appearance, sound and connotation. In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012) (quoting In re E.I. du Pont de Nemours & Co., 476 F.2d at 1361. Accordingly, Applicant submits that there is little likelihood of confusion between its mark and the cited marks and respectfully requests that the Examining Attorney allow Applicant’s mark to proceed to publication. b. Services of Applicant’s Mark Not Related to Cited Marks. The dissimilarity and nature of the subject services obviates the assertion that confusion is likely. Dupont, 476 F.2d at 1361. Applicant’s services are dental practice management for others. This is a very specific service for a very specific body of clientele. The only consumers that are even aware of the Applicant’s services are the dentist/owners of dental practices. These services are not at all related to the services provided by the cited mark which include “development and operation of infrastructure businesses.” The services associated with the cited mark are related to utilities, energy and other “infrastructure” businesses. Dental practices are not infrastructure businesses. The services offered by Applicant and the owner of the cited mark are in no way related and therefore, there is absolutely no likelihood of confusion between these two marks. c. The Shared Term CAPSTONE Entitled to Narrow Scope of Protection. The Trademark Trial and Appeal Board and the courts have recognized that weak designations may be entitled to a narrower scope of protection than entirely arbitrary or coined word. See Benjamin J. Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020 (TTAB 2009); In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006); In re Central Soya Company Inc., 220 USPQ 914 (TTAB 1984), TMEP Sec. 1207.01(b)(ix). As described above, the only word or similarity shared between Applicant’s mark and the cited mark is CAPSTONE. Attached is a definition of the word capstone which means the high point or crowning achievement. The cited mark uses the word CAPSTONE to convey the message that their services are a crowning achievement in their field. This use of the term CAPSTONE is laudatory and weak. Consumers are less likely to consider laudatory terms source identifiers and thus more readily distinguish between marks incorporating such terms. See, e.g., TMEP 1207.01(b)(viii), (d)(iii); 4 McCarthy § 23:48. If a mark consists only of weak terms, the “addition of other matter, even of suggestive or laudatory character” will serve to distinguish a subsequent mark in the minds of the consuming public. See Ind. Adhesive Co. v. Borden, Inc., 218 USPQ 945, 951 (TTAB 1983) (finding no likelihood of confusion between the marks BOND-PLUS and WONDER BOND-PLUS for adhesive products). Thus, the cited mark and the Applicant’s mark are not likely to be confused by consumers. d. Trade Channels of Applicant’s Mark and Cited Mark Are Very Different. The Trademark Trial and Appeal Board has not found a likelihood of confusion even in the face of identical marks applied to services in a common industry, where the services differ and where there is no evidence that the respective services would be encountered by the same consumers. In re Fresco, Inc., 219 USPQ 437 (TTAB 1983) (FESCO for farm equipment distributorships not likely to be confused with FESCO for fertilizer and processing equipment). In the present case, the cited mark will most likely be marketed primarily to power generation companies as noted in the website materials from the cited mark’s website attached hereto. The Applicant will market its services directly to dentists through person-to-person networking channels. These two trade channels could not be more different and it is highly unlikely that the relevant services represented by these marks would ever be encountered by the same consumers. e. Consumer Sophistication. Under certain circumstances, if it can be established that purchasers of the products/services in question are likely to be sophisticated that confusion will be less likely. See TMEP § 1207.01(d)(vii). In the present case, Applicant’s clients are dentists. The consumers of the cited mark are utility and other infrastructure businesses. Utility companies are typically very large and well-funded due to the high capital requirements associated with this type of business. Managers of utility companies typically hold degrees of higher education and are highly likely to use a very high degree of care in making purchasing decisions of these types of services because of enormous financial impact a poor business decision could have on their company. In exercising a high degree of care, managers of utility companies would likely be very deliberate in their decision making process and avoid snap purchasing decisions. As a result, the likelihood of confusion amongst the relative marks would almost certainly be significantly decreased. PRIOR REGISTERED MARK In addition to the above arguments, Applicant would like to point out that it has already registered the trademark CAPSTONE DENTAL Registration No. 4,540,520 attached hereto. If the cited mark is too confusingly similar to the Applicant’s mark then the cited mark should have been refused based on Applicant’s other prior registered mark CAPSTONE DENTAL. Clearly, the Trademark Office does not consider the two marks to be confusingly similar. Thus, the Applicant’s current application should also be approved for publication. CONCLUSION Based on the foregoing arguments and attached evidence, Applicant submits that the prior pending application refusal is not well-founded and therefore, should be withdrawn, permitting the instant application to proceed to publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| JPG FILE(S) | \\TICRS\EXPORT16\IMAGEOUT 16\861\156\86115630\xml7\ ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\861\156\86115630\xml7\ROA0003.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\861\156\86115630\xml7\ROA0004.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\861\156\86115630\xml7\ROA0005.JPG | |
| ORIGINAL PDF FILE | evi_9972131174-20140825165310146249_._86020030_Reg_Cert..pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\861\156\86115630\xml7\ROA0006.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\861\156\86115630\xml7\ROA0007.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Prior third party registrations, dictionary definition, online supporting evidence and Applicant's prior registration certificate. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Samuel R. Smith/ |
| SIGNATORY'S NAME | Samuel R. Smith |
| SIGNATORY'S POSITION | Attorney of Record, Washington DC bar member |
| SIGNATORY'S PHONE NUMBER | 214-739-2900 x105 |
| DATE SIGNED | 08/25/2014 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Aug 25 17:21:17 EDT 2014 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0140825172117973632-86115 630-500d888513ed9f7dfe1dd edaf2fb157fa5f6756114a18e a8a1db6e4b4ba59dbe-N/A-N/ A-20140825165310146249 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
RESPONSE TO OFFICE ACTION OF 02/26/2014
This is in response to the Office Action dated February 26, 2014. The Examining Attorney has requested that Applicant provide a more complete description of the applied-for mark. In addition, the Examining Attorney cites prior-filed pending U.S. Application Serial No. 86/020931 as potentially barring registration under Trademark Act Section 2(d) if the marks register. Applicant makes the following changes to the description of the applied-for mark and response in support of registration.
DESCRIPTION OF MARK
Applicant respectfully submits the following description of its mark: The mark consists of the word "CAPSTONE" in which the letter "A" is formed by a triangle design and the letter “O” is formed by a circle which has been divided horizontally in the middle.
SUSPENSION FROM REGISTRATION FOR PRIOR PENDING APPLICATIONS IS IMPROPER
The Examining Attorney has suggested that there may be a conflict between the Applicant’s mark and U.S. Application Serial No. 86/020931 for the mark “CAPSTONE INFRASTRUCTURE”. Applicant submits that concurrent registration of Applicant’s mark will not likely cause confusion, mistake or deception, for the reasons described below, and request that Examining Attorney approve application for publication.
1. Applicant’s Mark Is Not Confusingly Similar to Cited Marks.
To determine whether two marks are confusingly similar, the Examining Attorney must first look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re Dupont de Nemours & Co., Inc., 476 F.2d 1357 (C.C.P.A. 1973). The Examining Attorney must then compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion is likely. Id.Because of the clear difference in the appearance, meaning and nature of the services between the Applicant’s mark and the cited mark, as well as trade channels and consumer sophistication, Applicant’s mark will not result in a likelihood of consumer confusion as to the source of the services represented by the Applicant’s mark and the cited mark.
a. The Marks Differ in Appearance, Sound, and Meaning or Connotation.
Where the marks contain common words with well-known meanings, relatively slight differences in sound or appearance suffice to avoid conflicts. Playboy Enters., Inc. v. Chuckleberry Publ’g, Inc., 486 F. Supp. 414 (S.D.N.Y. 1980), citing cases; E.R. Squibb & Sons, Inc. v. Cooper Labs., 536 F. Supp. 523, (S.D.N.Y. 1982); Racemark Int’l, Inc. v. Specialty Prods., Inc., 217 U.S.P.Q. 772, 779 (N.D.N.Y. 1982) (RACEMARK v. ROSSMARK); Chesebrough-Pond’s Inc. v. Faberge, Inc., 666 F.2d 393 (9 th Cir. 1982) (MATCH v. MACHO); Ava Enters., Inc. v. P.A.C. Trading Group, Inc., 86 U.S.P.Q.2d 1659 (T.T.A.B. 2008) (BOSS v. BOOSTER). The Applicant’s mark and the cited mark share the word “CAPSTONE”. The major difference between the cited marks and the Applicant’s mark is the word “INFRASTRUCTURE” contained in the cited mark. This difference clearly distinguishes Applicant’s mark from the cited mark because the word CAPSTONE is so commonly used by business services companies that it has become diluted. Applicant is attaching examples of third party marks registered in the same class 35, including:
CAPSTONE (U.S. Reg. No. 3517362)
CAPSTONE LEGACY FOUNDATION (U.S. Reg. No. 3794182)
CAPSTONE REWARDS (U.S. Reg. No. 3784546)
CAPSTONE LOGISTICS & Design (U.S. Reg. No. 4319739).
These registrations clearly demonstrate that the word CAPSTONE has become significantly diluted for use in connection with business services. However, despite the existence of these third party registrations, all of the aforementioned CAPSTONE registrations were able to co-exist in the marketplace without consumer confusion and were able to register in conjunction with each other. This indicates the overall weakness of the word CAPSTONE. As a result, it has been shown that since the word CAPSTONE is so diluted in this space, the Trademark Office has effectively determined that CAPSTONE marks used for business services that might traditionally be deemed to be tangentially related would not likely be considered confusingly similar. Therefore, unless the services covered by the Applicant’s mark and the cited mark are nearly identical, the public is unlikely to be confused by variations in CAPSTONE marks for even slightly varying services in business services space. Applicant is aware that the Examining Attorney must consider each case on its merits, and that she is not bound by the decisions of other examiners, however, Examining Attorney is required to take the state of the register into account when making a final determination regarding likelihood of confusion.
Furthermore, since consumers are not aware of the existence of a disclaimer when they encounter a mark, “the disclaimed material still forms a part of the mark and cannot be ignored in determining likelihood of confusion.” Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570 (Fed. Cir. 1983). The addition of the word “INFRASTRUCTURE” to the cited mark is significant as it indicates to the consumer something in addition, although descriptive, the consumer can expect from the cited mark’s services. As such, this additional word serves as a source indicator for cited mark’s services, and therefore, further distinguishes Applicant’s mark from the cited marks.
Simply because two marks have some common terms does not make the marks confusingly similar. Moreover, there is no per se rule that confusion is automatically likely between marks even in a case where one mark contains in part the whole of another’s mark. E.g. Colgate-Palmolive Co. v. Carter-Wallace, Inc., 167 U.S.P.Q. 529 (C.C.P.A. 1970) (PEAK PERIOD not confusingly similar to PEAK); In re Ferrero, 178 U.S.P.Q. 167 (C.C.P.A. 1973) (TIC TAC not confusingly similar to TIC TAC TOE); Conde Nast Publications, Inc. v. Miss Quality, Inc., 184 U.S.P.Q. 422 (C.C.P.A. 1975) (COUNTRY VOGUE not confusingly similar to VOGUE); In re Merchandising Motivation, Inc., 184 U.S.P.Q. 364 (T.T.A.B. 1974) (MMI MENSWEAR not confusingly similar to MEN’S WEAR). One must consider the similarity or dissimilarity of the marks in their entireties as to appearance, sound and connotation. In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012) (quoting In re E.I. du Pont de Nemours & Co., 476 F.2d at 1361. Accordingly, Applicant submits that there is little likelihood of confusion between its mark and the cited marks and respectfully requests that the Examining Attorney allow Applicant’s mark to proceed to publication.
b. Services of Applicant’s Mark Not Related to Cited Marks. The dissimilarity and nature of the subject services obviates the assertion that confusion is likely. Dupont, 476 F.2d at 1361. Applicant’s services are dental practice management for others. This is a very specific service for a very specific body of clientele. The only consumers that are even aware of the Applicant’s services are the dentist/owners of dental practices. These services are not at all related to the services provided by the cited mark which include “development and operation of infrastructure businesses.” The services associated with the cited mark are related to utilities, energy and other “infrastructure” businesses. Dental practices are not infrastructure businesses. The services offered by Applicant and the owner of the cited mark are in no way related and therefore, there is absolutely no likelihood of confusion between these two marks.
c. The Shared Term CAPSTONE Entitled to Narrow Scope of Protection. The Trademark Trial and Appeal Board and the courts have recognized that weak designations may be entitled to a narrower scope of protection than entirely arbitrary or coined word. See Benjamin J. Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020 (TTAB 2009); In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006); In re Central Soya Company Inc., 220 USPQ 914 (TTAB 1984), TMEP Sec. 1207.01(b)(ix).
As described above, the only word or similarity shared between Applicant’s mark and the cited mark is CAPSTONE. Attached is a definition of the word capstone which means the high point or crowning achievement. The cited mark uses the word CAPSTONE to convey the message that their services are a crowning achievement in their field. This use of the term CAPSTONE is laudatory and weak. Consumers are less likely to consider laudatory terms source identifiers and thus more readily distinguish between marks incorporating such terms. See, e.g., TMEP 1207.01(b)(viii), (d)(iii); 4 McCarthy § 23:48. If a mark consists only of weak terms, the “addition of other matter, even of suggestive or laudatory character” will serve to distinguish a subsequent mark in the minds of the consuming public. See Ind. Adhesive Co. v. Borden, Inc., 218 USPQ 945, 951 (TTAB 1983) (finding no likelihood of confusion between the marks BOND-PLUS and WONDER BOND-PLUS for adhesive products). Thus, the cited mark and the Applicant’s mark are not likely to be confused by consumers.
d. Trade Channels of Applicant’s Mark and Cited Mark Are Very Different. The Trademark Trial and Appeal Board has not found a likelihood of confusion even in the face of identical marks applied to services in a common industry, where the services differ and where there is no evidence that the respective services would be encountered by the same consumers. In re Fresco, Inc., 219 USPQ 437 (TTAB 1983) (FESCO for farm equipment distributorships not likely to be confused with FESCO for fertilizer and processing equipment). In the present case, the cited mark will most likely be marketed primarily to power generation companies as noted in the website materials from the cited mark’s website attached hereto. The Applicant will market its services directly to dentists through person-to-person networking channels. These two trade channels could not be more different and it is highly unlikely that the relevant services represented by these marks would ever be encountered by the same consumers.
e. Consumer Sophistication. Under certain circumstances, if it can be established that purchasers of the products/services in question are likely to be sophisticated that confusion will be less likely. See TMEP § 1207.01(d)(vii). In the present case, Applicant’s clients are dentists. The consumers of the cited mark are utility and other infrastructure businesses. Utility companies are typically very large and well-funded due to the high capital requirements associated with this type of business. Managers of utility companies typically hold degrees of higher education and are highly likely to use a very high degree of care in making purchasing decisions of these types of services because of enormous financial impact a poor business decision could have on their company. In exercising a high degree of care, managers of utility companies would likely be very deliberate in their decision making process and avoid snap purchasing decisions. As a result, the likelihood of confusion amongst the relative marks would almost certainly be significantly decreased.
PRIOR REGISTERED MARK
In addition to the above arguments, Applicant would like to point out that it has already registered the trademark CAPSTONE DENTAL Registration No. 4,540,520 attached hereto. If the cited mark is too confusingly similar to the Applicant’s mark then the cited mark should have been refused based on Applicant’s other prior registered mark CAPSTONE DENTAL. Clearly, the Trademark Office does not consider the two marks to be confusingly similar. Thus, the Applicant’s current application should also be approved for publication.
CONCLUSION
Based on the foregoing arguments and attached evidence, Applicant submits that the prior pending application refusal is not well-founded and therefore, should be withdrawn, permitting the instant application to proceed to publication.
