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. 86565514 VANGUARD(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86565514/large) has been amended as follows:

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

The Examining Attorney has refused registration of Applicant’s VANGUARD mark (“Applicant’s Mark”) under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), asserting that a likelihood of confusion exists with the following U.S. Registrations:

A.        U.S. Registration No. 1827219 for VANGUARD;

B.        U.S. Registration No. 4645368 for ALLEN VANGUARD;

C.        U.S. Registration No. 4645370 for ALLEN VANGUARD;

D.        U.S. Registration No. 3647582 for ALLEN VANGUARD; and

E.         U.S. Registration No. 3647583 for AV ALLEN VANGUARD & Design.

 All of the above are herein referred to as the “Cited Registrations.”  It is noted that Cited Registrations B through E are all commonly owned by Allen-Vanguard Corporation.

The Examining Attorney asserts that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of Applicant and registrants.  Applicant respectfully disagrees with the refusal. 

In determining whether a likelihood of confusion exists between marks, the Examining Attorney may consider the relatedness of the goods or services as described in the application and registration(s).  In re E. I. Du Pont DeNemours & Co., 177 U.S.P.Q.563, 567 (C.C.P.A. 1973).  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. Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 U.S.P.Q.2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks, Inc. v. Handy Boys Inc., 16 U.S.P.Q.2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 U.S.P.Q.2d 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 Examining Attorney may also consider the similarity or dissimilarity of established, likely-to-continue trade channels.  In re E. I. Du Pont DeNemours & Co., 177 U.S.P.Q.563, 567 (C.C.P.A. 1973).  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.  See TMEP § 1207.01(a).

I.          The Goods Bearing Applicant’s Mark Will Be Sold in Connection with Unrelated Goods Sold in Different Channels of Trade From Those of Cited Registrations A through E

Cited Registration A is registered in connection with “capacitors” and “paints in aerosol cans for insulating metal and wire.”  Applicant asserts that none of these goods are related to those listed in connection with Applicant’s Mark. 

While Cited Registration A does not list any of the same goods as Applicant’s Mark, the Examining Attorney has attached several third party registrations as evidence that both Applicant’s goods and the goods of Cited Registration A are of a kind that may emanate from a single source under a single mark.  Applicant respectfully submits that such evidence does not support a finding that capacitors and paints in aerosol cans for insulating metal and wire typically emanate from the same source as the goods listed in Applicant’s Mark.  

Here, the goods of Applicant’s Mark and Cited Registration A are wholly distinct.  In the first instance, Applicant’s Mark does not include “capacitors” or “paints in aerosol cans for insulating metal and wire.”  Next, a consumer who would purchase the goods listed in Cited Registration A is typically an industrial customer, or someone who is a professional in the field of electronics for industrial use; and thus would be a sophisticated consumer, for which “circumstances suggesting care in purchasing may tend to minimize the likelihood of confusion.” See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 U.S.P.Q. 969, 971 (Fed. Cir. 1985) (concluding that, because only sophisticated purchasers exercising great care would purchase the relevant goods, there would be no likelihood of confusion merely because of the similarity between the marks NARCO and NARKOMED); In re Homeland Vinyl Prods., Inc., 81 U.S.P.Q.2d 1378, 1380, 1383 (TTAB 2006).  In contrast, Applicant’s Mark is directed to consumers who are not highly sophisticated electronics professionals in the electronics industry, and not purchasing the goods for industrial use.

Even where two marks are identical, courts and the TTAB routinely hold that there is no likelihood of confusion “if the goods or services in question are not related 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.”  TMEP § 1207.1(a)(i) (citing Local Trademarks, Inc. v. Handy Boys, Inc., 16 U.S.P.Q.2d 1156 (T.T.A.B. 1990) (LITTLE PLUMBER for drain opener not confusingly similar to LITTLE PLUMBER and Design for advertising services).  Moreover, the Board has held that differences in the functions or purpose of products or services may prevent likelihood of confusion.  Aries Systems Corp. v. World Book, Inc., 26 U.S.P.Q.2d 1926 (T.T.A.B 1993) (KNOWLEDGE FINDER and INFORMATION FINDER are not confusingly similar because, inter alia, “[s]uch products, rather than being…simply computer programs utilized for facilitating research of medical and related scientific topics, are designed to search databases of vastly different levels of content for, concomitantly, significantly different purposes.”).  See also Reynolds & Reynolds Co. v. I.E. Systems, Inc., 5. U.S.P.Q.2d 1749, (T.T.A.B. 1987) (no confusion where “applicant is offering a specific type of software for operational uses while the products and services offered by opposer...are applications software aimed at a very narrow field.”). 

Additionally, there is no per se rule that goods sold “under the same roof” are related, and “the law is that products should not be deemed related simply because they are sold in the same kind of establishments” Recot, Inc. v. Becton, 213 F.3d 1322, 1330, 54 U.S.P.Q.2d 1894 (Fed. Cir. 2000).  In fact, “[c]onsumers known that modern retail stores sell a plethora of unrelated goods, including food, toys, clothing, automotive accessories, and so on.  Modern consumers would be less likely than their parents or grandparents in previous years to infer a connection between goods with the same or a similar mark, merely from the fact that they appear together in a retail store” Worthington Foods, Inc. v. Kellogg Co., 732 F. Supp. 1417, 1447, 14 U.S.P.Q.2d 1577, 1599 (S.D. Ohio 1990); TMEP § 24:45.

With regard to Cited Registrations B through E, the goods listed therein are also in different and unrelated channels of trade from those of Applicant’s Mark.  Primarily, Cited Registrations B through E are all commonly owned by Allen-Vanguard Corporation, and the relevant listings of goods clearly indicate that the goods are for use in connection with the services of highly-specialized professionals in the security, surveillance and espionage industries. 

Specifically, while the Examining Attorney lists examples of goods that are purported to be similar to those of Applicant’s Mark, a review of the listings of goods reveals that all of Cited Registrations B through E list the relevant goods as components of “security, surveillance and search tool kits” (emphasis added).   Thus, it is clear that the owner of Cited Registrations B through E contemplated a certain type of consumer – a highly sophisticated professional in the fields of security, surveillance and espionage, who would likely purchase security, surveillance and search tool kits.  As stated above, a sophisticated consumer creates “circumstances suggesting care in purchasing may tend to minimize the likelihood of confusion.” See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 U.S.P.Q. 969, 971 (Fed. Cir. 1985).  See also AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 204 U.S.P.Q. 808 (9th Cir. 1979) (finding that SLICKCRAFT  boats for general family recreation were sold in different channels of trade from SLEEKCRAFT boats for racing enthusiasts, and this was sufficient to overcome likelihood of confusion “despite the potential market overlap”); Haydon Switch & Instrument, Inc. v. Rexnord, Inc., 4 U.S.P.Q.2d 1510, 1987 WL 26062 (D. Conn. 1987) (“[S]ophisticated purchasers of the products . . . enter the marketplace in search of specific products for specific industrial purposes.  The sophistication of these purchasers makes the likelihood of confusion remote”) (emphasis added). 

Here, the goods in Applicant’s Mark are not intended for such highly sophisticated consumers.  For at least these reasons, The goods bearing Applicant’s Mark and those of Cited Registrations A through E will be sold through different and unrelated channels of trade.

 

II.        Applicant’s Mark Conveys a Distinct Commercial Impression From Cited Registrations B Through E

Applicant’s Mark is for VANGUARD; Cited Registrations B through E are for ALLEN VANGUARD.  Applicant’s Mark conveys a distinct commercial impression from Cited Registrations B through E.  The Office Action alleges that the “deletion of ALLEN from these marks does not obviate this refusal.” However, Applicant’s Mark differs from Cited Registrations B through E in that it does not contain the word “ALLEN,” and Courts have held that in comparing marks that involve addition or deletion of terms, there is no likelihood of confusion where the overall commercial impressions created by the marks are different.  See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1356, 98 U.S.P.Q.2d 1253, 1261 (Fed. Cir. 2011); TMEP § 1207.01(b)(iii). 

Here, the word “Allen” is clearly the dominant portion of Cited Registrations B through E.  The deletion of the additional word “Allen” from the beginning of Cited Registrations B through E causes it to convey a significantly different commercial impression from the Cited Registrations.  In fact, the TTAB and United States Court of Appeals for the Federal Circuit have held numerous times that where two marks share a common word or words, there is no likelihood of confusion when one mark contains an additional dominant portion.  See, e.g., Citigroup, Inc., 637 F.3d at 1356, 98 U.S.P.Q.2d at 1261 (holding CAPITAL CITY BANK not likely to cause confusion with CITIBANK, because “CAPITAL” is the dominant element of the first mark, which gives it a geographic connotation as well as a look and sound distinct from the second); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 U.S.P.Q.2d 1350, 1356-57 (Fed. Cir. 2004) (holding THE RITZ KIDS for clothing and RITZ for kitchen textiles not likely to cause confusion, because, inter alia, THE RITZ KIDS creates a different commercial impression);  In re Shawnee Milling Co., 225 U.S.P.Q. 747, 749 (TTAB 1985) (holding GOLDEN CRUST for flour, and ADOLPH’S GOLD’N CRUST and design for coating and seasoning for food items, not likely to cause confusion, noting that, because “GOLDEN CRUST” and “GOLD’N CRUST” are highly suggestive as applied to the respective goods, the addition of “ADOLPH’S” is sufficient to distinguish the marks); In re S.D. Fabrics, Inc., 223 U.S.P.Q. 54, 55-56 (TTAB 1984) (holding DESIGNERS/FABRIC (stylized) for retail fabric store services, and DAN RIVER DESIGNER FABRICS and design for textile fabrics, not likely to cause confusion because of the descriptive nature of “DESIGNERS/FABRIC” and “DESIGNER FABRICS,” the addition of “DAN RIVER” is sufficient to avoid a likelihood of confusion).

If the addition of a term is sufficient to avoid a likelihood of confusion, then the converse is true in that deletion of a term will also avoid a likelihood of confusion.  Here, as with the cited cases, Applicant respectfully submits that the deletion of the dominant portion “Allen” from the Cited Registrations is alone sufficient to distinguish Applicant’s Mark from Cited Registrations B through E.

In view of the above, Applicant’s Mark is not confusingly similar to the Cited Registrations.  The instant application should therefore be approved and passed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Extension cords; surge protectors; light switches; wireless remotes; electrical outlets; power strips; connectors for electrical wire; lamp and appliance timers; reels for power cords; tubing for electrical wire; wire cutting, stripping and crimping tools; electrical tape
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: Extension cords; surge protectors; light switches; wireless remotes; electrical outlets; power strips; connectors for electrical wire; lamp and appliance timers; reels for power cords; reels for power cords.; tubing for electrical wire; wire cutting, stripping and crimping tools; electrical tapeClass 009 for Extension cords; surge protectors; light switches; wireless remotes; electrical outlets; power strips; connectors for electrical wire; lamp and appliance timers; reels for power cords.
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 008 for Wire cutting, stripping and crimping tools
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 017 for Electrical tape; plastic tubing for electrical wire
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.

FEE(S)
Fee(s) in the amount of $550 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Marc Friedman/      Date: 12/01/2015
Signatory's Name: Marc Friedman
Signatory's Position: General Counsel
Signatory's Phone Number: -------------------------


Response Signature
Signature: /Rachel J. Lin/     Date: 12/01/2015
Signatory's Name: Rachel J. Lin
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: 212-216-8000

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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.

        
RAM Sale Number: 86565514
RAM Accounting Date: 12/02/2015
        
Serial Number: 86565514
Internet Transmission Date: Tue Dec 01 15:33:18 EST 2015
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2015120115331876
6454-86565514-5401355b9fcda13f845d21c768
1c1e0dc6db9eecb6c2ed3dcb83136fc9f8440b52
c-DA-3168-20151201102935238756