| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86497288 |
| LAW OFFICE ASSIGNED | LAW OFFICE 124 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/86497288/mark.png |
| LITERAL ELEMENT | LABS |
| 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) | |
|
The Office Action mailed on November 30, 2016 rejected the present Application on the basis of a likelihood of confusion between Applicant’s mark LABS and the mark in U.S. Registration No. 5,029,421 (“the ‘421 Registration”) shown below. The ‘421 Registration is directed to a word and design mark for goods in International Classes 008, 009, 010, 011, 014 and 021. The specific goods of the cited ‘421 Registration include: IC 008. US 023 028 044. G & S: Hand operated abrading tools; Hand operated abrasive tools; Adjustable spanners; Hand operated adjustable wrenches; Hand operated atomizers for insecticides; Hand tools, namely, bits; Hand tools, namely, blades; Hand tools, namely, block cutters; Hand operating tools, namely, boring tools; Non-electric tin-openers; Hand operated tools, namely, knife sharpeners; Pliers; Apparatus for tattooing; Electric and non-electric depilatory appliances; Fireplace pokers; Hand-operated vaporizers for industrial or commercial purposes; Hand tools, namely, screwdrivers; Electric and non-electric hair clippers for personal use; Hand implements for hair curling; Boxes adapted for cutlery; Non-electric pizza cutters; Cutters; Nail clippers, electric and non-electric; Cleavers; Razor blade; Putty knives; Hand operated tools, namely, skimmers; Electric and non-electric manicure and pedicure sets; Hand operated tools, namely, fireplace bellows; Hand operated vehicle trolley jacks; Hand tools, namely, engravers; Axes; Hand operated gardening tools; Ice picks; Electric nail files; machetes; Shavers; Safety razors; Hammers; Sledgehammers; Penknives; Shovels; Wire strippers; Eyelash curlers; Nail scissors; Pickaxes; Hair-removing tweezers; Nippers; Flat irons; Electric steam irons; Hand tools, namely, daggers; Hand tools, namely, riveters; Hand operated hacksaws; Knife holders; Hand tools, namely, hand drills; Nippers; Scissors; Spoons; Knives; Forks; Daggers IC 009. US 021 023 026 036 038. G & S: Weighing apparatus, namely, weighing scales; Thermometers; Photographic cameras, flashes, spools, diaphragms, shutter releases, photography shutters and photography screens; Cine-cameras, cinematographic slides, film screens; cinematographic films and recorded films for entertainment featuring games, sports and social events; Film projectors; Optical cables; Sunglasses; Security alarms; Anti-theft warning apparatus; Sound alarms; Signaling buoys; Horns for signaling; Signaling lamps and torches; Safety helmets; Protective helmets for sports; Headphones; Speakers; recorded on hard media and downloadable videos whose subject matter is cinema, theatre, games, sports, concerts, music, social events, nature, technology, geography and scientific discoveries; Television; Radio; Telephones; Portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing audio files; Tablets; Video-cameras; Cables connection, connectors and patch cords; Computers; Computer software for entertainment featuring computer games; Computer software featuring information on sports entertainment and social events; Computer screens; Computer programs featuring information on entertainment, namely, cinema, theatre, games, sports, concerts, music and social events; Computer programs featuring education in the field of nature, technology, geography, history, mathematical sciences, religion, biology, languages and scientific discoveries; Educational software featuring instruction in sports, games and technology; Computer mouse; Computer printers; Acoustic discs and CDs featuring entertainment in the nature music, concerts and audiovisual events; Magnetic data carriers; Magnetic media for the storage of data, sound and images; Magnetic cards for electronic games; Cash registers, calculating machines; Fire-extinguishing apparatus; Frames for glasses in precious metals or their alloys IC 010. US 026 039 044. G & S: Apparatus for the treatment of the cellulite; Massage apparatus for personal use and for medical purpose; Gloves for massage; Massage chairs; Body massagers; Manual massage instruments; Abdominal pads and belts; Acupuncture needles; Orthopedic articles, namely, artificial limbs, eyes and teeth; Dental apparatus, namely, artificial teeth; Medical apparatus for the relief of pain, namely, electrostimulators; apparatus for bone and muscle rehabilitation, namely, generating waves electrotherapy units; Galvanic current apparatus for medical treatments and skin care and beauty care; Heat dispenser containers for relieving muscle pain; Teething ring for relieving teething pain; Heat dispensing containers for relieving pain in the ear IC 011. US 013 021 023 031 034. G & S: Infusers for beverages preparation; Appliance for heating beverages; Apparatus for dispensing chilled beverages; Beverage cooling apparatus; Decorative water fountains; Apparatus for lighting, namely, lamps, lighting fixtures, lamp bulbs, spotlights, standard lamps, torches and pocket torches; Apparatus for heating, namely, electric coffee machines, depilatory wax heating, electric tea machines and electric heating fans; Apparatus for cooking, namely, all kinds of cookers, barbecues, toaster sandwich makers, roasters, all kinds of ovens, microwave ovens and heaters; Electric apparatus for steam generating, namely, whistling tea kettle, facial saunas and steam generator for use in steam baths; Apparatus for refrigerating, namely, ice chests, air-conditioned apparatus and refrigerators; Apparatus for drying, namely, clothes dryers; Apparatus for ventilating, namely, ionizers for treatment of the air, air purification apparatus, water purification apparatus, air humidifiers and air conditioning fans; Fittings for massage baths; Electric and battery operated aromatherapy units; Electric candelabras made of precious metal; Sanitary ware, namely, bathtubs, washbasins as part of parts of sanitary installations, bidets, showers, faucets, and taps IC 014. US 002 027 028 050. G & S: Goods in precious metals or coated therewith, namely, bracelets, earrings, rings, medals, coins, necklaces, chokers, brooches, pins, buttons, solitary rings; Jewelry, precious stones and their imitations; Gold, silver, bronze and platinum and their alloys; Watches and clocks of all kinds; Alarm clocks; Chronometers of all kinds IC 021. US 002 013 023 029 030 033 040 050. G & S: Hand-operated vaporizers for household purposes; Hand operated electric shavers for removing fuzz from fabric; sponges for polishing and buffing; Tea kettles; Non-electric candelabras made of precious metal; Hand wash basins; Battery-operated lint removers; Electric lint removers
Applicant respectfully disagrees with the present refusal relating to the ‘421 Registration. There is no likelihood of confusion between Applicant’s mark “LABS” and the mark of the ‘421 Registration. The factors to be considered in determining whether a likelihood of confusion exists between two marks also strongly indicate the absence of a likelihood of confusion between Applicant’s mark and the marks of the Cited Registrations. The factors to be considered in determining whether there is a likelihood of confusion between two marks are set forth in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). These factors include: A. the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; B. the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; C. the similarity or dissimilarity of established, likely-to-continue trade channels; and D. the conditions under which and buyers to whom sales are made, i.e., impulse vs. careful, sophisticated purchasing. Id. Any one of the DuPont factors can be enough to show that there is no likelihood of confusion. Id. at 1361-62. In this case, each factor strongly indicates that no likelihood of confusion exists between Applicant’s mark and the mark of the ‘421 Registration. A. The Similarity Or Dissimilarity Of The Marks In Their Entireties As To Appearance, Sound, Connotation, And Commercial Impression. No likelihood of confusion exists between the Applicant’s mark, LABS, and the specific green colored word and design mark, ,of the 421 Registration because the marks are dissimilar in appearance, sound and commercial impression. Marks must be viewed in their entirety, focusing on the overall impression created by the marks, and not merely individual features of the marks. Luigino’s, Inc. v. Stouffer Corp., 170 F. 3d 827, 830 (8th Cir. 1999). When viewing the present mark, LABS, against the specific green word and design mark, , the appearance of the marks are significantly different. Initially, the mark is a color mark with the mark shown entirely in the color green. Additionally, the cited word and design mark of the ‘421 Registration is for the mark LAB in a distinctive green color design followed by a green colored curved symbol that is offset from the word LAB. The offset curved symbol resembles a hook or the number 2. A reasonable reading of the mark is LAB2 in a distinctive green stylized format. The LAB2 stylized mark is significantly different in appearance from Applicant’s mark LABS. Accordingly, the appearance of the distinctive design or LAB2 of the ‘421 Registration strongly indicates the absence of a likelihood of confusion between Applicant’s mark and the marks of the ‘421 Registration. Additionally, the offset green curved symbol 2 is also the significant dominant feature of the ‘421 Registration and it is clearly distinguishable from Applicant’s mark. “When comparing two marks, each mark must be viewed in its entirety, although ‘one feature of a mark may be more significant than the other features, and it is proper to give greater force and effect to that dominant feature.” Country Floors, Inc. v. Gepner, 18 U.S.P.Q.2d 1577, 1585 (3rd Cir. 1991) (quoting Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570 (Fed. Cir. 1983)). This dominant feature does not resemble Applicant’s mark in anyway. Accordingly, the appearance of the dominant feature, the green curved 2 strongly indicates the absence of a likelihood of confusion between Applicant’s mark and the marks of the ‘421 Registration. The marks are also dissimilar in sound. The dominant term, the green curved 2 , of the ‘421 Registration has an entirely different pronunciation (either “two” or nothing at all) than anything in the mark of the present Application. The difference between the sounds of two marks due to the prominent term, the green curved 2 , is significant. The marks are also dissimilar in connotation and commercial impression. The green curved offset symbol 2 connotes the number “two”, which has a different meaning than the letter S at the end of Applicant’s mark LABS. The commercial impression of the green stylized mark of the ‘421 Application is also entirely different than Applicant’s mark. Accordingly, the significant dissimilarity in the appearance, sound, connotation and commercial impression between Applicant’s mark and each of the ‘421 Registration strongly indicates that there is no likelihood of confusion. B. The Similarity Or Dissimilarity And Nature Of The Goods Or Services As Described In An Application Or Registration Or In Connection With Which A Prior Mark Is In Use. No likelihood of confusion exists between the Applicant’s mark, LABS, and the mark of the ‘421 Registration because the marks are directed at entirely different goods. With this Office Action Response, Applicant has further amended the goods of class 28 to remove the goods “batting helmets” to further distinguish the goods of the present Application from the goods of the ‘421 Registration. As listed above, the ‘421 Registration includes numerous goods in six separate International Classes, but none of the goods are even remotely similar to the goods of the present Application, and none of the six separate International Classes of the goods of the ‘421 Registration are International Class 28. Accordingly, the difference in the goods of the ‘421 Registration and the present Application is clear. The sporting goods listed in the present Application in no way relate to the wide variety of different goods of the ‘421 Registration, such as, for example, “eyelash curlers” of class 008, “computers” of class 9, “massage chairs” of class 10, “whistling tea kettles” of class 11, “jewelry” of class 14 and “vaporizers” and “tea kettles” of class 21. The listing of goods of the ‘421 Registration is indeed extensive and an unusual grouping of goods that in no way relate to the sporting goods of the present Application. The unusual assortment of goods also raises the issue of whether actual use of such an unusual collection of goods of the ‘421 Registration is actually present in the U.S. The Office Action cites “batting helmets” of the present Application as being related to “protective helmets for sports”. With this Response, Applicant has amended the its listing of goods to remove “batting helmets”. The Office Action further states “[w]hile the remaining goods in the application are not identical to the registered goods, they are highly related in commerce such that consumers are highly likely to believe that goods marketed under the same or highly similar marks emanate from the same source.” The Office Action goes on to list several webpage images of batting helmets sold by other companies along with other baseball sporting goods sold by other companies. As indicated above, batting helmets have been removed from the listing of goods of the present Application. Additionally, none of the other goods cited as evidence in the Office Action are included in the listing of goods of the ‘421 Registration. Applicant respectfully submits that no reasonable person would be confused by the listing of goods of the ‘421 Registration and the goods of the present Application. The goods are not remotely related. The fact that goods are sold on websites and in large department stores does not mean that goods are similar, and certainly does not raise a likelihood of confusion. The differences between the goods are apparent. The goods are directed toward entirely different consumer needs. The differences in the goods strongly indicate that there is no likelihood of confusion. C. The Similarity Or Dissimilarity Of Established, Likely-To-Continue Trade Channels; And The channels of trade of the goods and services of the Applicant’s mark and the goods of the ‘421 Registration are different indicating an absence of a likelihood of confusion. Applicant’s mark relates to goods that are significantly different from the goods of the ‘421 Registration. Although some larger retailers or websites may sell a variety of different goods, that is not the standard to establish a likelihood of confusion. Virtually every product would fit fall under such a standard and no listing of goods would be different from another listing of goods. The fact that goods may be sold in the same retail store does not mean that the goods share the same trade channels. It is well established that products are not deemed to be related goods by nature of their capability of being sold in the same markets (i.e., the “modern supermarket”). In re August Storck KG, 218 U.S.P.Q. 823, 825 (T.T.A.B. 1983) (finding that candy on the one hand and a beef and vegetable protein mix on the other are quite different). A consumer interested in purchasing sporting goods such as baseball bats does not seek out the tea kettle section or the jewelry section of a major retail store. These products utilize different advertising approaches and configurations further indicating the different marketing channels of the products. D. The Conditions Under Which, And Buyers To Whom, Sales Are Made, I.E., Impulse Vs. Careful, Sophisticated Purchasing. The amount of care taken by a purchaser of sporting goods products, such as baseball bats baseball gloves or tennis racquets also indicate an absence of a likelihood of confusion between the Applicant’s mark and the cited Registrations. Courts have found less likelihood of confusion where goods are purchased after careful consideration. Pignons S.A. v. Polaroid Corp., 657 F.2d 482, 489 (1st Cir. 1981). Although all of the goods of the present Application and of the’421 Registration are different and are offered in different trade channels by different consumers, these different consumers do share the tendency to exercise careful consideration before purchasing these goods. Sporting goods items such as baseball bats, baseball gloves and tennis racquets are highly personal sporting goods that many consumers develop a close attachment to, in fact, it is common for consumers of such goods to keep such sporting goods for years even after they stop using the item. Similarly, a reasonable person would understand that consumers of the many of the goods of the ‘421 registration, such as “jewelry”, “computers”, or “massage chairs” would apply significant consideration of such goods before making a purchase. Accordingly, an increased level of consideration is exercised by all of subject, different consumers. This increased level of consideration and discretion exercised by the subject, different purchasers prior to a purchase also indicates that no likelihood of confusion exists between the marks. The dissimilarity in the description of goods and services of the marks, the trade channels and the sophistication of the purchasers of goods under the marks all indicate the absence of a likelihood of confusion between the Applicant’s mark and the ‘421 Registration. Applicant believes that it has responded to all the issues raised in the Office Action and respectfully requests that the mark be passed to publication for registration.
|
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 028 |
| DESCRIPTION | |
| Sporting goods, namely, ball bats in the nature of baseball bats and softball bats; ball gloves, namely, baseball gloves and softball gloves; ball mitts, namely, baseball mitts, softball mitts and catchers mitts; baseballs, batting gloves, batting helmets, catchers masks, basketballs, footballs, golf balls, golf clubs, golf gloves, platform tennis paddles, platform tennis racket grip tape, volleyballs, squash racquets, squash balls, badminton racquets, shuttlecocks for badminton, racquetball racquets, racquetball string, soccer balls, softballs, tennis racquets, tennis string, tennis balls, sports protective equipment namely, forearm pads, elbow pads, hand pads, shoulder pads, chest protectors, knee pads, leg guards, shin guards, thigh pads and throat protectors | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 028 |
| TRACKED TEXT DESCRIPTION | |
| Sporting goods, namely, ball bats in the nature of baseball bats and softball bats; ball
gloves, namely, baseball gloves and softball gloves; ball mitts, namely, baseball mitts, softball mitts and catchers mitts; |
|
| FINAL DESCRIPTION | |
| Sporting goods, namely, ball bats in the nature of baseball bats and softball bats; ball gloves, namely, baseball gloves and softball gloves; ball mitts, namely, baseball mitts, softball mitts and catchers mitts; baseballs, batting gloves, catchers masks, basketballs, footballs, golf balls, golf clubs, golf gloves, platform tennis paddles, platform tennis racket grip tape, volleyballs, squash racquets, squash balls, badminton racquets, shuttlecocks for badminton, racquetball racquets, racquetball string, soccer balls, softballs, tennis racquets, tennis string, tennis balls, sports protective equipment namely, forearm pads, elbow pads, hand pads, shoulder pads, chest protectors, knee pads, leg guards, shin guards, thigh pads and throat protectors | |
| FILING BASIS | Section 1(b) |
| CORRESPONDENCE SECTION | |
| ORIGINAL ADDRESS | TERENCE P. O'BRIEN Wilson Sporting Goods Co 8750 W Bryn Mawr Ave Chicago Illinois US 60631-3655 |
| NEW CORRESPONDENCE SECTION | |
| NAME | TERENCE P. O'BRIEN |
| FIRM NAME | Wilson Sporting Goods Co |
| DOCKET/REFERENCE NUMBER | LABS |
| STREET | 8750 W Bryn Mawr Ave |
| CITY | Chicago |
| STATE | Illinois |
| ZIP/POSTAL CODE | 60631-3655 |
| COUNTRY | United States |
| PHONE | 773-714-6498 |
| terence.obrien@amersports.com;angelique.curley@amersports.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Terence P. O'Brien/ |
| SIGNATORY'S NAME | Terence P. O'Brien |
| SIGNATORY'S POSITION | Attorney for Applicant |
| SIGNATORY'S PHONE NUMBER | 7737146498 |
| DATE SIGNED | 04/18/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Apr 18 14:46:18 EDT 2017 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20170418144618392540-864 97288-580bb44e8329223a27b 29b94a68fe77648b789aab44f 48ed5a326aeaf02b44d3-N/A- N/A-20170418135435860467 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
The Office Action mailed on November 30, 2016 rejected the present Application on the basis of a likelihood of confusion between Applicant’s mark LABS and the mark in U.S. Registration No. 5,029,421 (“the ‘421 Registration”) shown below.
The ‘421 Registration is directed to a word and design mark
for goods in International Classes 008, 009, 010, 011, 014 and 021.
The specific goods of the cited ‘421 Registration include:
IC 008. US 023 028 044. G & S: Hand operated abrading tools; Hand operated abrasive tools; Adjustable spanners; Hand operated adjustable wrenches; Hand operated atomizers for insecticides; Hand tools, namely, bits; Hand tools, namely, blades; Hand tools, namely, block cutters; Hand operating tools, namely, boring tools; Non-electric tin-openers; Hand operated tools, namely, knife sharpeners; Pliers; Apparatus for tattooing; Electric and non-electric depilatory appliances; Fireplace pokers; Hand-operated vaporizers for industrial or commercial purposes; Hand tools, namely, screwdrivers; Electric and non-electric hair clippers for personal use; Hand implements for hair curling; Boxes adapted for cutlery; Non-electric pizza cutters; Cutters; Nail clippers, electric and non-electric; Cleavers; Razor blade; Putty knives; Hand operated tools, namely, skimmers; Electric and non-electric manicure and pedicure sets; Hand operated tools, namely, fireplace bellows; Hand operated vehicle trolley jacks; Hand tools, namely, engravers; Axes; Hand operated gardening tools; Ice picks; Electric nail files; machetes; Shavers; Safety razors; Hammers; Sledgehammers; Penknives; Shovels; Wire strippers; Eyelash curlers; Nail scissors; Pickaxes; Hair-removing tweezers; Nippers; Flat irons; Electric steam irons; Hand tools, namely, daggers; Hand tools, namely, riveters; Hand operated hacksaws; Knife holders; Hand tools, namely, hand drills; Nippers; Scissors; Spoons; Knives; Forks; Daggers
IC 009. US 021 023 026 036 038. G & S: Weighing apparatus, namely, weighing scales; Thermometers; Photographic cameras, flashes, spools, diaphragms, shutter releases, photography shutters and photography screens; Cine-cameras, cinematographic slides, film screens; cinematographic films and recorded films for entertainment featuring games, sports and social events; Film projectors; Optical cables; Sunglasses; Security alarms; Anti-theft warning apparatus; Sound alarms; Signaling buoys; Horns for signaling; Signaling lamps and torches; Safety helmets; Protective helmets for sports; Headphones; Speakers; recorded on hard media and downloadable videos whose subject matter is cinema, theatre, games, sports, concerts, music, social events, nature, technology, geography and scientific discoveries; Television; Radio; Telephones; Portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing audio files; Tablets; Video-cameras; Cables connection, connectors and patch cords; Computers; Computer software for entertainment featuring computer games; Computer software featuring information on sports entertainment and social events; Computer screens; Computer programs featuring information on entertainment, namely, cinema, theatre, games, sports, concerts, music and social events; Computer programs featuring education in the field of nature, technology, geography, history, mathematical sciences, religion, biology, languages and scientific discoveries; Educational software featuring instruction in sports, games and technology; Computer mouse; Computer printers; Acoustic discs and CDs featuring entertainment in the nature music, concerts and audiovisual events; Magnetic data carriers; Magnetic media for the storage of data, sound and images; Magnetic cards for electronic games; Cash registers, calculating machines; Fire-extinguishing apparatus; Frames for glasses in precious metals or their alloys
IC 010. US 026 039 044. G & S: Apparatus for the treatment of the cellulite; Massage apparatus for personal use and for medical purpose; Gloves for massage; Massage chairs; Body massagers; Manual massage instruments; Abdominal pads and belts; Acupuncture needles; Orthopedic articles, namely, artificial limbs, eyes and teeth; Dental apparatus, namely, artificial teeth; Medical apparatus for the relief of pain, namely, electrostimulators; apparatus for bone and muscle rehabilitation, namely, generating waves electrotherapy units; Galvanic current apparatus for medical treatments and skin care and beauty care; Heat dispenser containers for relieving muscle pain; Teething ring for relieving teething pain; Heat dispensing containers for relieving pain in the ear
IC 011. US 013 021 023 031 034. G & S: Infusers for beverages preparation; Appliance for heating beverages; Apparatus for dispensing chilled beverages; Beverage cooling apparatus; Decorative water fountains; Apparatus for lighting, namely, lamps, lighting fixtures, lamp bulbs, spotlights, standard lamps, torches and pocket torches; Apparatus for heating, namely, electric coffee machines, depilatory wax heating, electric tea machines and electric heating fans; Apparatus for cooking, namely, all kinds of cookers, barbecues, toaster sandwich makers, roasters, all kinds of ovens, microwave ovens and heaters; Electric apparatus for steam generating, namely, whistling tea kettle, facial saunas and steam generator for use in steam baths; Apparatus for refrigerating, namely, ice chests, air-conditioned apparatus and refrigerators; Apparatus for drying, namely, clothes dryers; Apparatus for ventilating, namely, ionizers for treatment of the air, air purification apparatus, water purification apparatus, air humidifiers and air conditioning fans; Fittings for massage baths; Electric and battery operated aromatherapy units; Electric candelabras made of precious metal; Sanitary ware, namely, bathtubs, washbasins as part of parts of sanitary installations, bidets, showers, faucets, and taps
IC 014. US 002 027 028 050. G & S: Goods in precious metals or coated therewith, namely, bracelets, earrings, rings, medals, coins, necklaces, chokers, brooches, pins, buttons, solitary rings; Jewelry, precious stones and their imitations; Gold, silver, bronze and platinum and their alloys; Watches and clocks of all kinds; Alarm clocks; Chronometers of all kinds
IC 021. US 002 013 023 029 030 033 040 050. G & S: Hand-operated vaporizers for household purposes; Hand operated electric shavers for removing fuzz from fabric; sponges for polishing and buffing; Tea kettles; Non-electric candelabras made of precious metal; Hand wash basins; Battery-operated lint removers; Electric lint removers
Applicant respectfully disagrees with the present refusal relating to the ‘421 Registration. There is no likelihood of confusion between Applicant’s mark “LABS” and the mark of the ‘421 Registration.
The factors to be considered in determining whether a likelihood of confusion exists between two marks also strongly indicate the absence of a likelihood of confusion between Applicant’s mark and the marks of the Cited Registrations. The factors to be considered in determining whether there is a likelihood of confusion between two marks are set forth in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). These factors include:
A. the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression;
B. the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use;
C. the similarity or dissimilarity of established, likely-to-continue trade channels; and
D. the conditions under which and buyers to whom sales are made, i.e., impulse vs. careful, sophisticated purchasing.
Id. Any one of the DuPont factors can be enough to show that there is no likelihood of confusion. Id. at 1361-62. In this case, each factor strongly indicates that no likelihood of confusion exists between Applicant’s mark and the mark of the ‘421 Registration.
A. The Similarity Or Dissimilarity Of The Marks In Their Entireties As To Appearance, Sound, Connotation, And Commercial Impression.
No likelihood of confusion exists between the Applicant’s mark, LABS, and the specific green colored word and design mark, ,of the 421 Registration because the marks are dissimilar in appearance, sound and commercial impression. Marks must be viewed in their entirety, focusing on the overall impression created by the marks, and not merely individual features of the marks. Luigino’s, Inc. v. Stouffer Corp., 170 F. 3d 827, 830 (8th Cir. 1999).
When viewing the present mark, LABS, against the specific green word and design mark, , the appearance of the marks are significantly different. Initially, the mark is a color mark with the mark shown entirely in the color green. Additionally, the cited word and design mark of the ‘421 Registration is for the mark LAB in a distinctive green color design followed by a green colored curved symbol that is offset from the word LAB. The offset curved symbol resembles a hook or the number 2. A reasonable reading of the mark is LAB2 in a distinctive green stylized format. The LAB2 stylized mark is significantly different in appearance from Applicant’s mark LABS. Accordingly, the appearance of the distinctive design or LAB2 of the ‘421 Registration strongly indicates the absence of a likelihood of confusion between Applicant’s mark and the marks of the ‘421 Registration.
Additionally, the offset green curved symbol 2 is also the significant dominant feature of the ‘421 Registration and it is clearly distinguishable from Applicant’s mark. “When comparing two marks, each mark must be viewed in its entirety, although ‘one feature of a mark may be more significant than the other features, and it is proper to give greater force and effect to that dominant feature.” Country Floors, Inc. v. Gepner, 18 U.S.P.Q.2d 1577, 1585 (3rd Cir. 1991) (quoting Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570 (Fed. Cir. 1983)). This dominant feature does not resemble Applicant’s mark in anyway. Accordingly, the appearance of the dominant feature, the green curved 2 strongly indicates the absence of a likelihood of confusion between Applicant’s mark and the marks of the ‘421 Registration.
The marks are also dissimilar in sound. The dominant term, the green curved 2 , of the ‘421 Registration has an entirely different pronunciation (either “two” or nothing at all) than anything in the mark of the present Application. The difference between the sounds of two marks due to the prominent term, the green curved 2 , is significant.
The marks are also dissimilar in connotation and commercial impression. The green curved offset symbol 2 connotes the number “two”, which has a different meaning than the letter S at the end of Applicant’s mark LABS. The commercial impression of the green stylized mark of the ‘421 Application is also entirely different than Applicant’s mark.
Accordingly, the significant dissimilarity in the appearance, sound, connotation and commercial impression between Applicant’s mark and each of the ‘421 Registration strongly indicates that there is no likelihood of confusion.
B. The Similarity Or Dissimilarity And Nature Of The Goods Or Services As Described In An Application Or Registration Or In Connection With Which A Prior Mark Is In Use.
No likelihood of confusion exists between the Applicant’s mark, LABS, and the mark of the ‘421 Registration because the marks are directed at entirely different goods. With this Office Action Response, Applicant has further amended the goods of class 28 to remove the goods “batting helmets” to further distinguish the goods of the present Application from the goods of the ‘421 Registration.
As listed above, the ‘421 Registration includes numerous goods in six separate International Classes, but none of the goods are even remotely similar to the goods of the present Application, and none of the six separate International Classes of the goods of the ‘421 Registration are International Class 28. Accordingly, the difference in the goods of the ‘421 Registration and the present Application is clear. The sporting goods listed in the present Application in no way relate to the wide variety of different goods of the ‘421 Registration, such as, for example, “eyelash curlers” of class 008, “computers” of class 9, “massage chairs” of class 10, “whistling tea kettles” of class 11, “jewelry” of class 14 and “vaporizers” and “tea kettles” of class 21. The listing of goods of the ‘421 Registration is indeed extensive and an unusual grouping of goods that in no way relate to the sporting goods of the present Application. The unusual assortment of goods also raises the issue of whether actual use of such an unusual collection of goods of the ‘421 Registration is actually present in the U.S.
The Office Action cites “batting helmets” of the present Application as being related to “protective helmets for sports”. With this Response, Applicant has amended the its listing of goods to remove “batting helmets”. The Office Action further states “[w]hile the remaining goods in the application are not identical to the registered goods, they are highly related in commerce such that consumers are highly likely to believe that goods marketed under the same or highly similar marks emanate from the same source.” The Office Action goes on to list several webpage images of batting helmets sold by other companies along with other baseball sporting goods sold by other companies. As indicated above, batting helmets have been removed from the listing of goods of the present Application. Additionally, none of the other goods cited as evidence in the Office Action are included in the listing of goods of the ‘421 Registration. Applicant respectfully submits that no reasonable person would be confused by the listing of goods of the ‘421 Registration and the goods of the present Application. The goods are not remotely related. The fact that goods are sold on websites and in large department stores does not mean that goods are similar, and certainly does not raise a likelihood of confusion.
The differences between the goods are apparent. The goods are directed toward entirely different consumer needs. The differences in the goods strongly indicate that there is no likelihood of confusion.
C. The Similarity Or Dissimilarity Of Established, Likely-To-Continue Trade Channels; And
The channels of trade of the goods and services of the Applicant’s mark and the goods of the ‘421 Registration are different indicating an absence of a likelihood of confusion. Applicant’s mark relates to goods that are significantly different from the goods of the ‘421 Registration. Although some larger retailers or websites may sell a variety of different goods, that is not the standard to establish a likelihood of confusion. Virtually every product would fit fall under such a standard and no listing of goods would be different from another listing of goods. The fact that goods may be sold in the same retail store does not mean that the goods share the same trade channels. It is well established that products are not deemed to be related goods by nature of their capability of being sold in the same markets (i.e., the “modern supermarket”). In re August Storck KG, 218 U.S.P.Q. 823, 825 (T.T.A.B. 1983) (finding that candy on the one hand and a beef and vegetable protein mix on the other are quite different). A consumer interested in purchasing sporting goods such as baseball bats does not seek out the tea kettle section or the jewelry section of a major retail store. These products utilize different advertising approaches and configurations further indicating the different marketing channels of the products.
D. The Conditions Under Which, And Buyers To Whom, Sales Are Made, I.E., Impulse Vs. Careful, Sophisticated Purchasing.
The amount of care taken by a purchaser of sporting goods products, such as baseball bats baseball gloves or tennis racquets also indicate an absence of a likelihood of confusion between the Applicant’s mark and the cited Registrations. Courts have found less likelihood of confusion where goods are purchased after careful consideration. Pignons S.A. v. Polaroid Corp., 657 F.2d 482, 489 (1st Cir. 1981). Although all of the goods of the present Application and of the’421 Registration are different and are offered in different trade channels by different consumers, these different consumers do share the tendency to exercise careful consideration before purchasing these goods. Sporting goods items such as baseball bats, baseball gloves and tennis racquets are highly personal sporting goods that many consumers develop a close attachment to, in fact, it is common for consumers of such goods to keep such sporting goods for years even after they stop using the item. Similarly, a reasonable person would understand that consumers of the many of the goods of the ‘421 registration, such as “jewelry”, “computers”, or “massage chairs” would apply significant consideration of such goods before making a purchase. Accordingly, an increased level of consideration is exercised by all of subject, different consumers. This increased level of consideration and discretion exercised by the subject, different purchasers prior to a purchase also indicates that no likelihood of confusion exists between the marks.
The dissimilarity in the description of goods and services of the marks, the trade channels and the sophistication of the purchasers of goods under the marks all indicate the absence of a likelihood of confusion between the Applicant’s mark and the ‘421 Registration. Applicant believes that it has responded to all the issues raised in the Office Action and respectfully requests that the mark be passed to publication for registration.