| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86258671 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/86258671/mark.png |
| LITERAL ELEMENT | BEDROCK |
| 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) | |
|
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
----------------------------------- In the Matter of the Application of: Abundant Life Landscaping, LLC Serial No.: 86/258671 Filed: 04/22/2014 Mark: BEDROCK Attorney Docket No.: 53471-901 -----------------------------------
RESPONSE
This Response is to the Office Action issued August 5, 2014, with respect to the above-referenced trademark application that has a statutory period for response set to expire on February 5, 2015. The Applicant wishes to respond to the issues set forth in the Office Action and, where appropriate, seeks to amend the application as follows:
I. GOODS AND/OR SERVICES AND BASIS INFORMATION The Applicant hereby amends its description of services to read as follows: Class 37: Construction services, namely, concrete residential paving, site clearing, excavation,
pad preparation, and grading services for sheds, gazebos, swing sets, barns and garages
II. LIKELIHOOD OF CONFUSION The Examining Attorney has refused registration of Applicant’s Mark BEDROCK under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), because Applicant’s Mark, when used on or in connection with the identified goods and/or services, so resembles U.S. Registration No. 3,396,898 (BEDROC) (hereinafter referred to as “Cited Registration”), as to be likely to cause confusion or to cause mistake or to deceive. A. Legal Standard The Court of Customs and Patent Appeals (“C.C.P.A”) has set forth thirteen factors for the Patent and Trademark Office to consider in determining a likelihood of confusion under Trademark Act Section 2(d). In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1360-2 (C.C.P.A. 1973). These factors include: the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; the similarity or dissimilarity and nature of the goods or services; the similarity or dissimilarity of established trade channels; the conditions under which and the buyers to whom sales are made; the number and nature of similar marks in use on similar goods or services; the length of time during which there has been concurrent use without actual confusion; and whether a house mark is used. Id. at 1361. Using these factors as a guide, each case must be decided on its own facts. Id. Although the amount of weight given to each factor may vary, all the evidence must be considered in determining whether there is a likelihood of confusion. Id. at 1362. B. Applicant’s Mark And The Cited Registration Are Used On Different Identified Goods And Services And Are Sold In Different Trade Channels To Different Types of Consumers The DuPont factors require the Examining Attorney to compare the similarity or dissimilarity of the goods or services, their established channels of trade, and the degree of sophistication of their purchasers. In re E.I. DuPont DeNemours & Co., 476 F.2d at 1361. “If the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely.” TMEP § 1207.01(a)(i); see, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field). The comparison of the goods or services is limited to those listed in the cited registrations. In re E.I. DuPont DeNemours & Co., 476 F.2d at 1361. Applicant’s Mark and the Cited Registration create sufficiently different commercial impressions when applied to their respective services, in light of the Applicant’s identified goods, especially as amended. The Applicant’s Mark, as amended herein, has been applied for registration for “construction services, namely, concrete residential paving, site clearing, excavation, pad preparation, and grading services for sheds, gazebos, swing sets, barns and garages; construction dewatering, namely, the removal of storm surface waters and groundwater to facilitate the construction of structures and pipelines; hardscaping services (class 37).” When used in conjunction with Applicant’s goods and services, the Applicant’s Mark therefore conveys the commercial impression that Applicant’s goods and services are associated with a specific class of construction services that differ from the Cited Registration. Specifically, the Applicant wants to market specific goods to educationally conscious consumers, namely, consumer looking for residential services, such as concrete residential paving, site clearing, excavation, pad preparation, and grading services for sheds, gazebos, swing sets, barns and garages; construction dewatering, namely, the removal of storm surface waters and groundwater to facilitate the construction of structures and pipelines, and hardscaping services. Rather, the Cited Registration is associated with large scale excavation, deconstruction, and demolition services, as well as environmental remediation, which is clearly different than the Applicant’s identified goods and services. A sophisticated consumer would know the differences between residential services and the services performed under the Cited Registration, considering these identified goods and services are not the type of goods and services that would be offered off the shelf per se. Based solely on the respective identifications, it is evident that Applicant’s amended goods and services are clearly different from than the services of the Cited Registration. Since the Cited Registration is directed and sold in different trade channels to different types of consumers, namely commercial construction services, a consumer would readily distinguish between services offered under the Cited Registration and Applicant’s Mark without any possibility of confusion. D. Conclusion In order to determine whether a likelihood of confusion exists under Trademark Act Section 2(d), the Examining Attorney is required to consider all relevant evidence. In re E.I. DuPont DeNemours & Co., 476 F.2d. at 1362. The Applicant’s Mark and the Cited Registration create a different commercial impression in the minds of purchasers, considering the difference in goods and services, especially as amended. The goods/services of Applicant’s Mark and the Cited Registration would not be marketed in such a way to create a likelihood of confusion, even if the Cited Registration is still in use. Removal of the refusal to register Applicant’s Mark in view of the Cited Registration is therefore respectfully requested. Please charge any additional fees associated with this application to Deposit Order Account No. 501581. Respectfully submitted,
Date: Monday, October 27, 2014 By: /Joseph Falcon/ Joseph R. Falcon III, Esq.
|
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 037 |
| DESCRIPTION | |
| Construction services, namely, concrete paving, site clearing, excavation, pad preparation, grading services, and storm water services; hardscaping services | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 03/01/2004 |
| FIRST USE IN COMMERCE DATE | At least as early as 03/01/2004 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 037 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Construction services, namely, concrete residential paving, site clearing, excavation, pad preparation, and grading services for sheds, gazebos, swing sets, barns and garages; construction dewatering, namely, the removal of storm surface waters and groundwater to facilitate the construction of structures and pipelines; hardscaping services. | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 03/01/2004 |
| FIRST USE IN COMMERCE DATE | At least as early as 03/01/2004 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Joseph Falcon/ |
| SIGNATORY'S NAME | Joseph R. Falcon III |
| SIGNATORY'S POSITION | Patent Attorney - PA Bar Member |
| SIGNATORY'S PHONE NUMBER | 610.889.3699 |
| DATE SIGNED | 10/27/2014 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Oct 27 15:05:07 EDT 2014 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0141027150507630985-86258 671-500e25867ee3b28ef7423 9e2dbf4fe26e6aa5921daacbf ae415532ada2bb1f4db-N/A-N /A-20141027144712850013 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
-----------------------------------
In the Matter of the Application of: Abundant Life Landscaping, LLC
Serial No.: 86/258671
Filed: 04/22/2014
Mark: BEDROCK
Attorney Docket No.: 53471-901
-----------------------------------
RESPONSE
This Response is to the Office Action issued August 5, 2014, with respect to the above-referenced trademark application that has a statutory period for response set to expire on February 5, 2015. The Applicant wishes to respond to the issues set forth in the Office Action and, where appropriate, seeks to amend the application as follows:
I. GOODS AND/OR SERVICES AND BASIS INFORMATION
The Applicant hereby amends its description of services to read as follows:
Class 37: Construction services, namely, concrete residential paving, site clearing, excavation,
pad preparation, and grading services for sheds, gazebos, swing sets, barns and garages, and storm water services; construction dewatering, namely, the removal of storm
surface waters and groundwater to facilitate the construction of structures and pipelines; hardscaping services.
II. LIKELIHOOD OF CONFUSION
The Examining Attorney has refused registration of Applicant’s Mark BEDROCK under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), because Applicant’s Mark, when used on or in connection with the identified goods and/or services, so resembles U.S. Registration No. 3,396,898 (BEDROC) (hereinafter referred to as “Cited Registration”), as to be likely to cause confusion or to cause mistake or to deceive.
A. Legal Standard
The Court of Customs and Patent Appeals (“C.C.P.A”) has set forth thirteen factors for the Patent and Trademark Office to consider in determining a likelihood of confusion under Trademark Act Section 2(d). In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1360-2 (C.C.P.A. 1973). These factors include: the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; the similarity or dissimilarity and nature of the goods or services; the similarity or dissimilarity of established trade channels; the conditions under which and the buyers to whom sales are made; the number and nature of similar marks in use on similar goods or services; the length of time during which there has been concurrent use without actual confusion; and whether a house mark is used. Id. at 1361. Using these factors as a guide, each case must be decided on its own facts. Id. Although the amount of weight given to each factor may vary, all the evidence must be considered in determining whether there is a likelihood of confusion. Id. at 1362.
B. Applicant’s Mark And The Cited Registration Are Used On Different Identified Goods And Services And Are Sold In Different Trade Channels To Different Types of Consumers
The DuPont factors require the Examining Attorney to compare the similarity or dissimilarity of the goods or services, their established channels of trade, and the degree of sophistication of their purchasers. In re E.I. DuPont DeNemours & Co., 476 F.2d at 1361. “If the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely.” TMEP § 1207.01(a)(i); see, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field). The comparison of the goods or services is limited to those listed in the cited registrations. In re E.I. DuPont DeNemours & Co., 476 F.2d at 1361.
Applicant’s Mark and the Cited Registration create sufficiently different commercial impressions when applied to their respective services, in light of the Applicant’s identified goods, especially as amended. The Applicant’s Mark, as amended herein, has been applied for registration for “construction services, namely, concrete residential paving, site clearing, excavation, pad preparation, and grading services for sheds, gazebos, swing sets, barns and garages; construction dewatering, namely, the removal of storm surface waters and groundwater to facilitate the construction of structures and pipelines; hardscaping services (class 37).”
When used in conjunction with Applicant’s goods and services, the Applicant’s Mark therefore conveys the commercial impression that Applicant’s goods and services are associated with a specific class of construction services that differ from the Cited Registration. Specifically, the Applicant wants to market specific goods to educationally conscious consumers, namely, consumer looking for residential services, such as concrete residential paving, site clearing, excavation, pad preparation, and grading services for sheds, gazebos, swing sets, barns and garages; construction dewatering, namely, the removal of storm surface waters and groundwater to facilitate the construction of structures and pipelines, and hardscaping services. Rather, the Cited Registration is associated with large scale excavation, deconstruction, and demolition services, as well as environmental remediation, which is clearly different than the Applicant’s identified goods and services. A sophisticated consumer would know the differences between residential services and the services performed under the Cited Registration, considering these identified goods and services are not the type of goods and services that would be offered off the shelf per se. Based solely on the respective identifications, it is evident that Applicant’s amended goods and services are clearly different from than the services of the Cited Registration. Since the Cited Registration is directed and sold in different trade channels to different types of consumers, namely commercial construction services, a consumer would readily distinguish between services offered under the Cited Registration and Applicant’s Mark without any possibility of confusion.
D. Conclusion
In order to determine whether a likelihood of confusion exists under Trademark Act Section 2(d), the Examining Attorney is required to consider all relevant evidence. In re E.I. DuPont DeNemours & Co., 476 F.2d. at 1362. The Applicant’s Mark and the Cited Registration create a different commercial impression in the minds of purchasers, considering the difference in goods and services, especially as amended. The goods/services of Applicant’s Mark and the Cited Registration would not be marketed in such a way to create a likelihood of confusion, even if the Cited Registration is still in use. Removal of the refusal to register Applicant’s Mark in view of the Cited Registration is therefore respectfully requested.
Please charge any additional fees associated with this application to Deposit Order Account No. 501581.
Respectfully submitted,
Date: Monday, October 27, 2014 By: /Joseph Falcon/
Joseph R. Falcon III, Esq.