Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86376028 CREST(Standard Characters, see http://uspto.report/TM/86376028/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Initially, applicant has amended its goods to read, in Class 6:

Metal doors and windows and metal parts therefore, namely handles, door handles, window handles, lever handles, levers, lock escutcheons, handle escutcheons, lever escutcheons, window stays, window closers, door closers; locks of metals; small items of metal hardware, parts and accessories for the aforesaid goods, namely door handles, window handles, lever handles, levers, screws, shims, metal window cranks, trim, casings, stays and closers.

The provisionally cited applications are:

U.S. trademark application no. 86198487 for CRESTVIEW in Class 6 for "Metal doors; metal door frames; prehung metal doors; door facings made of metal; non-metal door parts for buildings, namely, adjusters for adjusting the height of a door, floor boards, columns, beams, paneling boards, sills, sleepers, backings for ceilings or walls, stiles, rails and ceiling boards" and in Class 19 for "Doors not made of metal; door frames not made of metal; prehung doors not made of metal; door facings not made of metal; non-metal door parts for buildings, namely, adjusters for adjusting the height of a door, floor boards, columns, beams, paneling boards, sills, sleepers, backings for ceilings or walls, stiles, rails and ceiling boards."

U.S. trademark application no. 86198493 for CRESTVIEW (Stylized) in Class 6 for "Metal doors; metal door frames; prehung metal doors; door facings made of metal; non-metal door parts for buildings, namely, adjusters for adjusting the height of a door, floor boards, columns, beams, paneling boards, sills, sleepers, backings for ceilings or walls, stiles, rails and ceiling boards" and in Class 19 for "Doors not made of metal; door frames not made of metal; prehung doors not made of metal; door facings not made of metal; non-metal door parts for buildings, namely, adjusters for adjusting the height of a door, floor boards, columns, beams, paneling boards, sills, sleepers, backings for ceilings or walls, stiles, rails and ceiling boards."

The Trademark Examining Attorney has provisionally refused registration of applicant's mark "CREST" under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) on the grounds that there is a likelihood of confusion with the marks in previously-filed U.S. trademark application no. 86198487 for "CRESTVIEW" and U.S. trademark application no. 86198493 for "CRESTVIEW" (Stylized), both in Classes 6 and 19.  Applicant requests reconsideration.

Applicant's application is for the mark "CREST," and applicant's amended goods are described above, in Class 6.

Applicant submits that there is no likelihood of confusion under Section 2(d) after taking into account the factors set forth in In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Applicant analyzes relevant du Pont factors below:

Similarity or dissimilarity of the marks in their entireties

The du Pont case identified this factor to be considered as the "similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression."  Id., 476 F.2d at 1361, 177 USPQ at 567.  "That marks must be considered in their entireties in determining whether there is likelihood of confusion or mistake is a basic rule in comparison of marks."  Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 1402, 181 USPQ 272, 273-74 (CCPA 1974) (reversing Board and holding that F.I.T. (stylized) not confusingly similar to FIA and design).  In this case, applicant's and registrant's marks are not identical. 

In the office action, the Trademark Examining Attorney appears to have focused only on the common formative "CREST." Notwithstanding that applicant's mark and the cited marks all include these same five letters, they are perceived quite differently.

The Court of Appeals for the Federal Circuit and its predecessor have held that marks must be considered in the way they are perceived by the relevant public, in determining likelihood of confusion.  Opryland USA Inc. v. The Great American Music Show Inc. 23 USPQ2d 1471, 1473 (Fed. Cir. 1992).  Although it is often helpful to analyze marks by separating them into their component words in order to ascertain which aspects are more or less dominant, such analysis must not contravene law and reason.  In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  While there are often discrete terms in marks that are more dominant and, thus, more significant to the assessment of similarity, see, e.g., Opryland USA Inc. v. The Great American Music Show Inc. 23 USPQ2d 1471, 1473 (Fed. Cir. 1992), the law forbids the type of dissection proposed by the Trademark Examining Attorney as in the instant application.  See, Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1358, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000) ("The ultimate conclusion of similarity or dissimilarity of the marks must rest on consideration of the marks in their entirety.")

The online Merriam-Webster Dictionary at www.merriam-webster.com defines applicant's mark "crest" as follows:

• the highest part or point of something (such as a hill or wave); something suggesting a crest especially in being an upper prominence, edge, or limit: as peak, the top line of a mountain or hill, the ridge of a roof, the top of a wave;

• a high point of an action or process and especially of one that is rhythmic

• a ridge or prominence on a part of an animal body; a group of decorative feathers at the top of a bird's head; a decorative bunch of hair on the head of another animal; a showy tuft or process on the head of an animal and especially a bird

• a special symbol used especially in the past to represent a family, group, or organization; a heraldic device depicted above the escutcheon but not upon a helmet; the plume or identifying emblem worn on a knight's helmet; the top of a helmet.
  

On the other hand, the term "CRESTVIEW" in the cited applications is not listed in the dictionary, and appears to be a made-up word that does not evoke the same meanings as applicant's mark "CREST."  Moreover, "CRESTVIEW" is substantially longer, and does not employ the "CREST-" portion as a separate word, but instead makes it into a single blended word, so that the "CREST-" portion does not stand on its own as in applicant's mark.

When it is the entirety of the marks that is perceived by the public, it is the entirety of the marks that must be compared.  Packard Press, 56 USPQ2d at 1354.  Applicant's mark is very different in sound, appearance, connotation and commercial impression as compared to the registrant's mark.  The term "CREST" in applicant's mark may bring to mind any of the definitions recited above, while the considerably longer, made-up term "CRESTVIEW" will not bring any of those definitions to mind.

Even when the entirety of one mark (applicant's) is in another's mark (the cited applications), there may be no likelihood of confusion. In re Hearst Corp., 982 F.2d 493, 494 (Fed.Cir.1992) (no likelihood of confusion between the marks VARGA GIRL and VARGAS both for calendars. The Court stated that appearance, sound, sight, and commercial impression of VARGA GIRL derive significant contribution from the component "girl," and by stressing the portion "varga" and diminishing the portion "girl", the Board inappropriately changed the mark.) See also, Conde Nast Publications, Inc. v. Miss Quality, Inc., 507 F.2d 1404, 1407 (CCPA 1975) (No likelihood of confusion between COUNTRY VOGUES for women's dresses and VOGUE for a magazine since the marks COUNTRY VOGUES and VOGUE do not look or sound alike. The only similarity between marks is word VOGUE, and the dissimilarities between the marks, viewed in their entireties, outweigh this similarity sufficiently.)

Likewise, in the instant case this minor similarity of inclusion of the term "crest" is sufficiently outweighed by the dissimilarities between the marks, as viewed in their entireties.  The mere fact that two marks share words in common, such as the word "CREST" in the case at hand, is not determinative.  See, The Murray Corp. of America v. Red Spot Paint and Varnish Co., Inc., 126 USPQ 390 (TTAB, 1960) (opposition of mark EASY against the mark EASY TINT for identical goods dismissed since Board found no likelihood of confusion), See also, Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945 (TTAB 1983), (opposition of mark BOND-PLUS against WONDER BOND PLUS for similar goods dismissed.  Board determined that the addition of the term WONDER to the expression BOND PLUS served to impart a distinctive commercial impression that precluded likelihood of confusion.)  Again, "[t]he ultimate conclusion of similarity or dissimilarity of the marks must rest on consideration of the marks in their entirety." In re Nat'l Data Corp., 753 F.2d 1056, 1059 [224 USPQ 749] (Fed. Cir. 1985). 

Thus, the dissimilarities of the marks in their entireties as to appearance, sound, connotation and commercial impression heavily favor applicant in a finding of no likelihood of confusion.

Number and nature of similar marks for similar goods

The number and nature of similar marks for similar goods and services goes to the strength of the common formative in applicant's and registrant's mark, here "crest."

A review of registered marks indicates that there are existing registrations including the "CREST-" formative in Classes 6 and 19 for various windows and doors, including U.S. Registration No. 1,869,215 for "CRESTLINE," U.S. Registration No. 1,816,315 for "CRESTLINE" and Logo and U.S. Registration No. 2,902,043 for "CRESTLINE SELECT."  Copies are attached as Exhibits A, B and C, along with the specimens showing how they are actually used.

Applicant notes that these "CREST-" formative registrations were not cited against the instant application or in the cited applications for "CRESTVIEW."

The evidence of these third-party registrations also including "crest" for similar goods illustrate that these respective goods cannot be understood by the purchasing public to emanate from a single source.  Further, the fact that there are third-party applications and registrations using the term "crest" for similar goods owned by different entities is consistent with the conclusion that such trademark owners and their consumers do not and would not believe there is a likelihood of confusion between such marks.  See, e.g., In re Hyundai Motor Am., Serial No. 78889340 (TTAB 2009) (non-precedential).

Since the only commonality between applicant's mark and the cited applications is the presence of the formative "crest" used in other registrations for similar goods, this factor points away from a likelihood of confusion between the marks, and heavily favors applicant.

Fame of the prior mark

There is no evidence that the cited marks are either well known or well recognized.  This factor therefore favors applicant.

Extent to which applicant may exclude others from use of its mark

As indicated by the other registrations using the words "crest," the cited applicant's right to exclude others from use marks inclusive of the word "crest" is limited.  Accordingly, this factor favors applicant.

Condition of sales and buyers

Purchasers of door products are used to seeing marks with the similar formatives "crest" in these goods, as sold by different entities, so this factor favors applicant.

Extent of potential confusion

In view of the actual difference in the marks themselves, the potential for confusion is de minimus.  As such, this factor favors applicant.

All of the foregoing weighs in favor of a finding of no likelihood of confusion.  It is for these reasons that applicant respectfully requests that the instant application be allowed and passed to publication pursuant to the Trade Marks Act of 1946.

Respectfully submitted,

Peter W. Peterson

 

Exhibits attached:

 Exhibit A, U.S. Registration No. 1,869,215 for "CRESTLINE," along with the specimen showing how the mark is actually used

Exhibit B, U.S. Registration No. 1,816,315 for "CRESTLINE" and Logo, along with the specimen showing how the mark is actually used

Exhibit C, U.S. Registration No. 2,902,043 for "CRESTLINE SELECT," along with the specimen showing how the mark is actually used

 

EVIDENCE
Evidence in the nature of Exhibit A, U.S. Registration No. 1,869,215 for "CRESTLINE," along with the specimen showing how the mark is actually used Exhibit B, U.S. Registration No. 1,816,315 for "CRESTLINE" and Logo, along with the specimen showing how the mark is actually used Exhibit C, U.S. Registration No. 2,902,043 for "CRESTLINE SELECT," along with the specimen showing how the mark is actually used has been attached.
Original PDF file:
evi_5019871169-20150415141255574821_._EXHIBIT_A.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_5019871169-20150415141255574821_._EXHIBIT_B.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_5019871169-20150415141255574821_._EXHIBIT_C.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 006 for METAL DOORS AND WINDOW FURNITURE INCLUDING HANDLES, LOCKS AND HINGES; LOCKS OF METAL; SMALL ITEMS OF METAL HARDWARE; PARTS AND ACCESSORIES IN THIS CLASS FOR THE AFORESAID GOODS
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: METAL DOORS AND WINDOW FURNITURE INCLUDING HANDLES, LOCKS AND HINGES; METAL DOORS AND WINDOWS AND METAL PARTS THEREFORE, NAMELY HANDLES, DOOR HANDLES, WINDOW HANDLES, LEVER HANDLES, LEVERS, LOCK ESCUTCHEONS, HANDLE ESCUTCHEONS, LEVER ESCUTCHEONS, WINDOW STAYS, WINDOW CLOSERS, DOOR CLOSERS; LOCKS OF METAL; LOCKS OF METALS; SMALL ITEMS OF METAL HARDWARE; SMALL ITEMS OF METAL HARDWARE, PARTS AND ACCESSORIES FOR THE AFORESAID GOODS, NAMELY DOOR HANDLES, WINDOW HANDLES, LEVER HANDLES, LEVERS, SCREWS, SHIMS, METAL WINDOW CRANKS, TRIM, CASINGS, STAYS AND CLOSERS; PARTS AND ACCESSORIES IN THIS CLASS FOR THE AFORESAID GOODSClass 006 for METAL DOORS AND WINDOWS AND METAL PARTS THEREFORE, NAMELY HANDLES, DOOR HANDLES, WINDOW HANDLES, LEVER HANDLES, LEVERS, LOCK ESCUTCHEONS, HANDLE ESCUTCHEONS, LEVER ESCUTCHEONS, WINDOW STAYS, WINDOW CLOSERS, DOOR CLOSERS; LOCKS OF METALS; SMALL ITEMS OF METAL HARDWARE, PARTS AND ACCESSORIES FOR THE AFORESAID GOODS, NAMELY DOOR HANDLES, WINDOW HANDLES, LEVER HANDLES, LEVERS, SCREWS, SHIMS, METAL WINDOW CRANKS, TRIM, CASINGS, STAYS AND CLOSERS
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /Peter W Peterson/     Date: 04/15/2015
Signatory's Name: Peter W Peterson
Signatory's Position: Attorney of Record, Connecticut bar member

Signatory's Phone Number: 203-787-0595

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 86376028
Internet Transmission Date: Wed Apr 15 14:20:56 EDT 2015
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2015041514205605
6137-86376028-530575aafac37f1b531e1741ff
1daa59f3dac27dc6133d095c3503aa07abc6380-
N/A-N/A-20150415141255574821