Response to Office Action

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)

---

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)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86845285 EASE(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86845285/large) has been amended as follows:

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

The Office Action refuses registration based on a perceived likelihood of confusion between Applicant’s mark EASE and the registered mark COMFORT EASE.  Additionally, the Office Action requires clarification of the identification of goods for the application.  In response to the Office Action, Applicant amends and narrows its recitation of goods to specify “power-operated adjustable bed bases for mattresses” in Class 020. 

Due to the cost and specialized nature of these goods, the relevant purchasers are sophisticated and exercise more care in purchasing decisions.  This factor, in addition to the differences between the marks and the weakness of the registered mark, precludes any likelihood of confusion.

            As referenced in the Office Action, a likelihood of confusion analysis considers various factors including: (i) “[t]he similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression”; (ii) “[t]he conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing”; and (iii) “[t]he number and nature of similar marks in use on similar goods.”  E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973).  Any one of these factors may play a dominant role in the likelihood of confusion analysis.  Id. at 1362.  Here, each of these factors weighs against a likelihood of confusion.

            The similarity or dissimilarity of the marks is determined based on the marks in their entireties and “cannot be predicated on dissection of a mark, that is, on only part of a mark.”  In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985).  In comparing the marks in their entireties, the inclusion of “COMFORT” in the registered mark cannot be overlooked.   COMFORT is the first term of the registered mark and creates an appearance and sound that is distinct from Applicant’s mark and makes a disparate commercial impression, particularly due to its prominence as the primary term of the two-term registered mark.  See TMEP § 1207.01(b)(iii).  In Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011), the Federal Circuit affirmed the TTAB’s holding that contemporaneous use of applicant’s CAPITAL CITY BANK marks for banking and financial services, and opposer’s CITIBANK marks for banking and financial services, were not likely to cause confusion, based, in part, on findings that the phrase “City Bank” was frequently used in the banking industry and that “CAPITAL” is the dominant element of applicant’s marks, which gave the marks a geographic connotation as well as a look and sound distinct from opposer’s marks.  See also TMEP §1207.01(b)(viii) (citing U.S. Shoe Corp. v. Chapman, 229 USPQ 74 (TTAB 1985) (holding COBBLER’S OUTLET for shoes, and CALIFORNIA COBBLERS (in typed and stylized forms) for footwear and women’s shoes, not likely to cause confusion); In re Istituto Sieroterapico E Vaccinogeno, Toscano “SCLAVO” S.p.A., 226 USPQ 1035 (TTAB 1985) (holding ASO QUANTUM (stylized, with “ASO” disclaimed) for diagnostic laboratory reagents, and QUANTUM I for laboratory instruments for analyzing body fluids, not likely to cause confusion)).

            Moreover, the primary significance of the term “COMFORT” in the registered mark cannot be ignored because the registered mark is a weak mark, entitled to a narrower scope of protection.  TMEP § 1207.01(b)(ix).  Numerous third-party registrations incorporate the term “ease” in connection with various furniture, including bed-related products. 

U.S. Reg. No. 3,239,907	TENSION EASE	IC 020 Mattresses and bed springs.
U.S. Reg. No. 2,802,486	FATIGUE EASE	IC 020 Sleep products, namely, mattresses, spring mattresses, box springs, and mattress foundations.
U.S. Reg. No. 3,822,891	EASE INTO COMFORT	IC 020 Furniture.
U.S. Reg. No. 4,038,175	MOTION EAZE	IC 020  Furniture.
U.S. Reg. No. 2,249,408	STRESS EASE	IC 020 Sleep products, namely, mattresses.
U.S. Reg. No. 2,174,770	HERBAL EASE	IC 020 Eye pillows, neck, back and moist heat pillows for relaxation.
U.S. Reg. No. 1,018,035	DREAM EZE	IC 020 Mattresses.
U.S. Reg. No. 1,501,367	POSTURE EASE	IC 020 Mattresses.
U.S. Reg. No. 4,430,046	PUFF EASE	IC 020 Wedge shaped elevation pillow used on top of a mattress or bed to elevate the head or feet, or used under a mattress to raise the head or foot of the mattress or as a study or reading pillow.
U.S. Reg. No. 1,437,344	ERGO-EASE	IC 020 Industrial and office seating furniture

See attached Exhibit A.  “If the evidence establishes that the consuming public is exposed to third-party use of similar marks on similar goods, it ‘is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.’”  TMEP §1207.01(d)(iii) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)).  The coexistence of these registrations, owned by separate entities, all for marks incorporating the term “ease” in connection with furniture, indicates the marks are entitled to a narrower scope of protection and weighs against any likelihood of confusion due to the commonality of the term “ease.”

            The coexistence of the registered marks also shows that purchasers are already able to distinguish between different marks that include “ease” for related goods and are accustomed to distinguishing the marks based on other factors.  See Plus Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983); Info. Res., Inc., v. X*Press Info. Servs., 6 USPQ2d 1034, 1039 (TTAB 1988) (TTAB held no likelihood of confusion between EXPRESS for information analysis of computer software and X*PRESS for transmission of news and general information to home and business computers).  Thus, the addition of the term “COMFORT” to the registered mark is sufficient to distinguish the marks and avoid any likelihood of confusion.  See Redken Labs., Inc. v. Clairol Inc., 175 USPQ 737 (D.C. Calif. 1972), (held that “CURL & CONDITION” was not likely to be confused with “CONDITION” for a hair product); Re Merch. Motivation, Inc., 184 USPQ 364 (TTAB 1974) (“MENSWEAR” for magazine and “MMI MENSWEAR” for a fashion consulting service held not confusingly similar); Stand. Brands Inc. v. Peters, 191 USPQ 168 (“CORN ROYAL” for margarine not confusingly similar to “ROYAL” for shortening); Jerrold Elecs. Corp. v. Magnavox Co., 199 USPQ 751 (TTAB 1978) (“STAR” for television receivers not confusingly similar to “STARLINE” for television amplifiers). 

The dissimilarity of the marks and the weakness of the cited registered mark are particularly significant when considered in connection with the relative sophistication of the purchasers.  “[Circumstances suggesting care in purchasing may tend to minimize the likelihood of confusion.”  TMEP §1207.01(d)(vii).  “[T]here is always less likelihood of confusion where goods are expensive and purchased after careful consideration.”  Astra Pharm. Prod. V. Beckman Instruments, 718 F.2d 1201, 1206 (1^st Cir. 1983).  As specified in the amended recitation, Applicant’s goods consist of power-operated adjustable bed bases for mattresses.  These types of products are currently priced from $1,399 to $4,998.  See attached Exhibit B.  Due to the expense of these specialty products, purchasers exercise care in their purchasing decisions which weighs against any likelihood of confusion.  Id.

Significantly, Applicant’s goods and those identified in the cited registration are not identical.  In contrast to the traditional “box springs and mattress foundations” recited in the registration, Applicant offers specialty products, namely, power-operated adjustable bed bases for mattresses.  There is no likelihood of confusion between the marks because of these differences between the parties’ respective goods, the differences between the marks, the weakness of the cited mark, and the sophistication of purchasers.  

            For all of the foregoing reasons, there is no likelihood of confusion between Applicant’s mark “EASE” for “power-operated adjustable bed bases for mattresses” and the registered mark COMFORT EASE.  Accordingly, Applicant requests the registration refusal based on U.S. Registration No. 4,267,104 be withdrawn.

EVIDENCE
Evidence in the nature of copies of third party trademark registrations and internet evidence has been attached.
JPG file(s):
Evidence-1
Evidence-2
Original PDF file:
evi_7414326132-20160427120731803402_._EASE_EXHIBIT_A_Third_Party_Registrations.pdf
Converted PDF file(s) ( 14 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for Power-operated adjustable bed bases for mattresses
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: Class 020 for Power-operated adjustable bed bases for mattresses
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: /christina i. ryan/     Date: 04/27/2016
Signatory's Name: Christina I. Ryan
Signatory's Position: Attorney of record, Kentucky bar member

Signatory's Phone Number: (502) 855-3425

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.

        
Serial Number: 86845285
Internet Transmission Date: Wed Apr 27 12:17:28 EDT 2016
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2016042712172851
6391-86845285-5502afaa8f151a5ca59828aabd
5ec13c0d8b7c0bdcf357ef2577d9fb9179ba7be2
-N/A-N/A-20160427120731803402