| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
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|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|
| SERIAL NUMBER | 86444461 | ||||||||||||||||||
| LAW OFFICE ASSIGNED | LAW OFFICE 108 | ||||||||||||||||||
| MARK SECTION | |||||||||||||||||||
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86444461/large | ||||||||||||||||||
| LITERAL ELEMENT | TREAD | ||||||||||||||||||
| 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) | |||||||||||||||||||
|
Applicant respectfully argues that there is no likelihood of confusion with the cited registration.
For quick reference, the details of our application are:
Mark: TREAD Serial No.: 86-444,461 Filed: November 4, 2014 First Use: Intent-to-Use Goods: Jewelry, namely, bracelets, watches, and watchbands (Int. Class 14) Owner: Leatherman Tool Group, Inc.
The details of the cited third-party registration are:
Mark: TYRE TREDS Reg. No.: 4,500,406 Registered: March 25, 2014 Filed: January 14, 2013 First Use: October 8, 2013 Goods: Jewelry (Int. Class 14) Owner: Boiing, LLC Status: Registered
Likelihood of Confusion
Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken or deceived as to the source of the goods or services of the applicant and registrant. 12 U.S.C § 1052(d).
The question of confusion is related not to the nature of the mark but to its effect “when applied to the services of the applicant.” See In re E.I. DuPont de Nemours & Co., 177 USPQ 563, 567 (CCPA 1973). The only relevant application is made in the marketplace. Ibid. There is no litmus rule which can provide a ready guide to all cases. Ibid. The issue of likelihood of confusion is resolved by considering the various factors listed in the DuPont case. The examining attorney notes that one term in the marks is phonetically similar and the goods are related. The goods covered by the application and the cited mark are not identical. Additionally, as further discussed below, the marks are visually dissimilar and a prior more similar mark currently co-exists on the Register with the cited mark.
It is axiomatic that a finding of likelihood of confusion cannot be predicated on a dissection of a mark, that is, on only part of the mark. In re National Data Corp., 224 USPQ 749, 750-51 (Fed. Cir. 1985); TMEP §1207.01. It is recognized that while the examining attorney can focus on a particular feature of a mark in discussing rational reasons for finding likelihood of confusion, the ultimate conclusion must rest on a consideration of the marks in their entireties. Id. “[M]arks tend to be perceived in their entireties, and all components must be given appropriate weight.” In re Hearst Corp., 982 F.2d 493, 494, 25 USPQ2d 1238, 1239 (Fed. Cir. 1992).
The rationale for the rule is that the commercial impression of a composite mark on an ordinary prospective buyer is created by the mark as a whole, not by its component parts. See McCarthy on Trademarks and Unfair Competition, § 23:41:
The anti-dissection rule is based upon a common sense observation of customer behavior: The typical shopper does not retain all of the individual details of a composite mark in his or her mind, but retains only an overall, general impression created by the composite as a whole.
This principle was also enunciated by the Supreme Court as early as 1920 when it stated in Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545-46 (1920):
The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety.
The examining attorney’s analysis of the similarity of the marks seems to be as follows: “The wording “TREAD” in the applicant’s mark is the phonetic equivalent of “TREDS” in the registrant’s mark, yielding similar sound marks.” The mere fact that marks share elements does not compel a conclusion of likelihood of confusion. Kirkpatrick, Likelihood of Confusion in Trademark Law, § 4.10.A. “The use of identical, even dominant, words in common does not automatically mean that two marks are similar.” General Mills, Inc. v. Kellogg Co., 3 USPQ 2d 1442, 1445 (8th Cir. 1997).
Consider the following cases cited in the Kirkpatrick treatise, Section 4.10.A, for identical or related goods where no confusion was found:
In this case, the cited mark contains a completely different dominant element. The cited registration has a different prefix (TYRE) which obviously creates a different sound, appearance and connotation. Further, the term TREAD does not contain a letter “S” in the applicant’s mark and applicant’s mark is spelled differently.
In addition to the above, Applicant’s TREAD mark and Registrant’s TYRE TREDS mark have different connotations. The term “tread” means to step or to walk. See, http://dictionary.reference.com/browse/tread?s=t. The term “tyre treds” has no defined meaning. Even if we assume that “tyre treds” is a misspelling of “tire treads”, this phrase describes the rubber on tire’s circumference that makes contact with the road or the ground. See, http://en.wikipedia.org/wiki/Tread. Either way, a different commercial impression is invoked with the consumer. When the marks are considered in their entireties, they are different in sound, appearance and connotation/commercial impression.
As further proof of the fact that there is no likelihood of confusion, consider that the Trademark Office found no likelihood of confusion between the cited mark and the registered mark for TIRE RINGS (with “RINGS” disclaimed). Not only does this mark contain the same phonetically dominant term (TIRE and TYRE), but it also covers identical goods (jewelry). This mark is even more similar to TYRE TREDS than applicant’s mark. However, Registrant’s mark was allowed to co-exist on the Register with TIRE RINGS. Thus, applicant’s mark should be able to similarly co-exist on the Register. Details of this registration are copied below and attached as Exhibit A:
Mark: TIRE RINGS (with “RINGS” disclaimed) Reg. No.: 3,650,403 Registered: July 7, 2009 Filed: December 11, 2008 First Use: December 1, 2002 Goods: Jewelry (Int. Class 14) Owner: Brian Bergeron (Individual) Status: Registered
In view of the above remarks and evidence, an early notice of allowance is requested. Respectfully submitted,
Laura A. Kees Alston & Bird LLP |
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| EVIDENCE SECTION | |||||||||||||||||||
| EVIDENCE FILE NAME(S) | |||||||||||||||||||
| ORIGINAL PDF FILE | evi_3811636205-20150824114732725517_._ExhibitA.pdf | ||||||||||||||||||
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT16\IMAGEOUT16\864\444\86444461\xml4\ROA0002.JPG | ||||||||||||||||||
| DESCRIPTION OF EVIDENCE FILE | Exhibit A - Registration for TIRE RINGS | ||||||||||||||||||
| SIGNATURE SECTION | |||||||||||||||||||
| RESPONSE SIGNATURE | /lLaura Kees/ | ||||||||||||||||||
| SIGNATORY'S NAME | Laura Kees | ||||||||||||||||||
| SIGNATORY'S POSITION | Associate Attorney | ||||||||||||||||||
| SIGNATORY'S PHONE NUMBER | 404-881-7764 | ||||||||||||||||||
| DATE SIGNED | 08/24/2015 | ||||||||||||||||||
| AUTHORIZED SIGNATORY | YES | ||||||||||||||||||
| FILING INFORMATION SECTION | |||||||||||||||||||
| SUBMIT DATE | Mon Aug 24 11:53:25 EDT 2015 | ||||||||||||||||||
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0150824115325534990-86444 461-5403fccd4bd17a5706259 bf81c741acbe2c1909bb8a6dd 179f558fc389d441b6-N/A-N/ A-20150824114732725517 |
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| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
Applicant respectfully argues that there is no likelihood of confusion with the cited registration.
For quick reference, the details of our application are:
Mark: TREAD
Serial No.: 86-444,461
Filed: November 4, 2014
First Use: Intent-to-Use
Goods: Jewelry, namely, bracelets, watches, and watchbands (Int. Class 14)
Owner: Leatherman Tool Group, Inc.
The details of the cited third-party registration are:
Mark: TYRE TREDS
Reg. No.: 4,500,406
Registered: March 25, 2014
Filed: January 14, 2013
First Use: October 8, 2013
Goods: Jewelry (Int. Class 14)
Owner: Boiing, LLC
Status: Registered
Likelihood of Confusion
Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken or deceived as to the source of the goods or services of the applicant and registrant. 12 U.S.C § 1052(d).
The question of confusion is related not to the nature of the mark but to its effect “when applied to the services of the applicant.” See In re E.I. DuPont de Nemours & Co., 177 USPQ 563, 567 (CCPA 1973). The only relevant application is made in the marketplace. Ibid. There is no litmus rule which can provide a ready guide to all cases. Ibid. The issue of likelihood of confusion is resolved by considering the various factors listed in the DuPont case. The examining attorney notes that one term in the marks is phonetically similar and the goods are related. The goods covered by the application and the cited mark are not identical. Additionally, as further discussed below, the marks are visually dissimilar and a prior more similar mark currently co-exists on the Register with the cited mark.
It is axiomatic that a finding of likelihood of confusion cannot be predicated on a dissection of a mark, that is, on only part of the mark. In re National Data Corp., 224 USPQ 749, 750-51 (Fed. Cir. 1985); TMEP §1207.01. It is recognized that while the examining attorney can focus on a particular feature of a mark in discussing rational reasons for finding likelihood of confusion, the ultimate conclusion must rest on a consideration of the marks in their entireties. Id. “[M]arks tend to be perceived in their entireties, and all components must be given appropriate weight.” In re Hearst Corp., 982 F.2d 493, 494, 25 USPQ2d 1238, 1239 (Fed. Cir. 1992).
The rationale for the rule is that the commercial impression of a composite mark on an ordinary prospective buyer is created by the mark as a whole, not by its component parts. See McCarthy on Trademarks and Unfair Competition, § 23:41:
The anti-dissection rule is based upon a common sense observation of customer behavior: The typical shopper does not retain all of the individual details of a composite mark in his or her mind, but retains only an overall, general impression created by the composite as a whole.
This principle was also enunciated by the Supreme Court as early as 1920 when it stated in Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545-46 (1920):
The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety.
The examining attorney’s analysis of the similarity of the marks seems to be as follows: “The wording “TREAD” in the applicant’s mark is the phonetic equivalent of “TREDS” in the registrant’s mark, yielding similar sound marks.” The mere fact that marks share elements does not compel a conclusion of likelihood of confusion. Kirkpatrick, Likelihood of Confusion in Trademark Law, § 4.10.A. “The use of identical, even dominant, words in common does not automatically mean that two marks are similar.” General Mills, Inc. v. Kellogg Co., 3 USPQ 2d 1442, 1445 (8th Cir. 1997).
Consider the following cases cited in the Kirkpatrick treatise, Section 4.10.A, for identical or related goods where no confusion was found:
|
Mark |
Case |
|
CRISTAL v. CRYSTAL CREEK, both for wine |
Champagne Louis Roederer S.A. v. Delicato Vineyards, 47 USPQ2d 1459 (Fed. Cir. 1998) |
|
SILK ‘N SATIN v. SILK beauty lotion, bath oil/face cream |
Pacquin-Lester Co. v. Charmaceuticals, Inc., 179 USPQ 45 (CCPA 1973) |
|
SILK v. SILKSTICK both cosmetic products |
Melaro v. Pfizer, Inc., 214 USPQ 645 (TTAB 1982) |
|
ALPHA v. ALPHA STEEL tube making machinery/steel tubes |
Alpha Indus., Inc. v. Alpha Steel Tubes & Shapes, Inc., 205 USPQ 981 (9th Cir. 1980) |
|
EASY v. EASYTINT enamels/paints |
Murray Corp. of America v. Red Spot Paint and Varnish Co., 126 USPQ 390 (CCPA 1960) |
|
KEYCHECK, KEYBANKER v. KEY both banking services |
In re Hamilton Bank, 222 USPQ 174 (TTAB 1984) |
|
OOZ BALL v. OOZE both toy compounds |
Monarch Licensing, Ltd. V. Ritam Int’l Ltd., 24 USPQ2d 1456, 1461 (S.D.N.Y. 1992) |
|
PARENTS v. PARENTS DIGEST both magazines |
Grunner & Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072 (2nd Cir. 1993) |
In this case, the cited mark contains a completely different dominant element. The cited registration has a different prefix (TYRE) which obviously creates a different sound, appearance and connotation. Further, the term TREAD does not contain a letter “S” in the applicant’s mark and applicant’s mark is spelled differently.
In addition to the above, Applicant’s TREAD mark and Registrant’s TYRE TREDS mark have different connotations. The term “tread” means to step or to walk. See, http://dictionary.reference.com/browse/tread?s=t. The term “tyre treds” has no defined meaning. Even if we assume that “tyre treds” is a misspelling of “tire treads”, this phrase describes the rubber on tire’s circumference that makes contact with the road or the ground. See, http://en.wikipedia.org/wiki/Tread. Either way, a different commercial impression is invoked with the consumer. When the marks are considered in their entireties, they are different in sound, appearance and connotation/commercial impression.
As further proof of the fact that there is no likelihood of confusion, consider that the Trademark Office found no likelihood of confusion between the cited mark and the registered mark for TIRE RINGS (with “RINGS” disclaimed). Not only does this mark contain the same phonetically dominant term (TIRE and TYRE), but it also covers identical goods (jewelry). This mark is even more similar to TYRE TREDS than applicant’s mark. However, Registrant’s mark was allowed to co-exist on the Register with TIRE RINGS. Thus, applicant’s mark should be able to similarly co-exist on the Register. Details of this registration are copied below and attached as Exhibit A:
Mark: TIRE RINGS (with “RINGS” disclaimed)
Reg. No.: 3,650,403
Registered: July 7, 2009
Filed: December 11, 2008
First Use: December 1, 2002
Goods: Jewelry (Int. Class 14)
Owner: Brian Bergeron (Individual)
Status: Registered
In view of the above remarks and evidence, an early notice of allowance is requested.
Respectfully submitted,
Laura A. Kees
Alston & Bird LLP
