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 09/20/2020)

---

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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87046643 MACAN(Standard Characters, see http://uspto.report/TM/87046643/mark.png) has been amended as follows:

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

In a likelihood of confusion determination, the question is whether the goods or services are so related that they are likely to be encountered by the same persons under circumstances that would give rise to the mistaken belief that they originate from the same source while taking into account the Du Pont factors, including the similarity or dissimilarity and nature of the goods or services and the sophistication of the respective purchasers. In re E.I. du Pont DeNemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). I. DISSIMIMLARITY IN SERVICES & CHANNELS The Examiner argues that Applicant's services are too closely related, contending that purchasers encountering these marks could form the mistaken belief that the services come from a common source. See Office Action dated September 8, 2016. Applicant respectfully disagrees. Porsche's registration covers a wide range of goods and services, including the following listing of services under International Class 35: Insurance, namely, underwriting accident insurance; financial affairs, namely, financial consultation; monetary affairs, namely, monetary exchange; real estate affairs, namely, real estate management services; financing, particularly financing of leasing contracts; credit brokerage services; insurance services, particularly underwriting extended warranty contracts in the automobiles business Porsche uses the mark "MACAN" to identify one of its automobile models with an estimated retail price between $40,000 to $90,000. See www.porsche.com/usa/models/macan. In connection with its sale of automobiles, Porsche offers a range of financial services, including competitive leasing and financial options, to enable the purchasing of a Porsche automobile. See www.porsche.com/usa/accessoriesandservices/porschefinancialservices. In contrast, Applicant intends to provide investment and asset management services to institutions. Applicant has no intention to sell automobiles or to offer any financing or other financial consultation in connection with automobile sales. In addition, the difference in trade channels between Applicant's services and Porsche's goods and services prevents the likelihood of confusion. Porsche sells its cars primarily through dealerships physically located throughout the world. See www.porsche.com/usa/dealersearch. Porsche's mark "MACAN" is used at such retail dealerships to sell to individual consumers. In contrast, Applicant offers its services only to institutions and businesses. There is no overlap in the type of consumers between Porsche's goods/services and Applicant's services and hence no confusion. See Dawn Donut Co. v. Hart?s Food Stores, Inc., 267 F.2d 358, 121 U.S.P.Q. 430 (2d Cir. 1959) (wholesale doughnut mix versus retail doughnut sales); David Crystal, Inc. v. Soo Valley Co., 471 F.2d 1245, 176 U.S.P.Q. 326 (C.C.P.A. 1973) (sales to industrial users and to retail consumers distinguished). Consumers will never find Applicant's mark in automobile dealerships and thus the commercial impression on consumers precludes a finding of likelihood of consumer confusion. Nonetheless, Applicant offers the following disclaimer: Applicant disclaims any right to use the mark in regard to the sale or financing of automobiles wherein the other mark set forth in the refusal is believed to conduct business. The Examiner argues that "investment management; investment of funds; financial asset management" and "financial affairs, namely, financial consultation" are closely related by citing third-party marks registered for use in connection with the same or similar services as those of both Applicant and Porsche. While the Examiner is correct that investment management and financial consultation may emanate from a single source, that is not the case as explained above between Applicant and Porsche. 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, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012). II. SOPHISTICATION OF PURCHASERS Furthermore, the consumers for both Applicant's industry of institutional investment management and Porsche's industry of expensive automobiles are highly sophisticated. In the US market, conventional assets under management are estimated to be about $36 trillion. See "Investment Management" from Wikipedia. Even newly launched investment management firms generally seek investors with at least $500,000 in investable assets. See www.thebalance.com/asset-management-companies-for-beginners-4048203. As stated in Electronic Design & Sales Inc. v. Electronic Data Systems Corp.,?21 USPQ2d 1388, 1392 (Fed. Cir. 1992), "sophisticated consumers may be expected to exercise greater care." As mentioned above, Porsche's "MACAN" line of automobiles retails between $40,000 to $90,000. The U.S. Census Bureau reported in September 2017 that the US median household income was $59,039 in 2016. See "Income, Poverty and Health Insurance Coverage in the U.S.: 2016," Census.gov. Thus, the "MACAN" automobile would indeed be considered an expensive purchase and "there is always less likelihood of confusion where goods are expensive and purchased after careful consideration." See Astra Pharmaceuticals Prods., Inc. v. Beckman Instruments, Inc., 220 USPQ 786, 790 (1st Cir. 1993). For the reasons set forth above, there is no likelihood of confusion in granting the trademark in its disclaimed format.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Investment management; Investment of funds; Financial asset management
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: Investment management; Financial services namely, institutional investment advice, institutional investment of funds, including private and public equity; Investment of funds; financial asset management.; Financial asset managementClass 036 for Financial services namely, institutional investment advice, institutional investment of funds, including private and public equity; financial asset management.
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.

ADDITIONAL STATEMENTS
Translation
The English translation of Macan in the mark is Tiger.


FEE(S)
Fee(s) in the amount of $50 is being submitted.

SIGNATURE(S)
Response Signature
Signature: /Cindy Hsu/     Date: 12/16/2017
Signatory's Name: Cindy Hsu
Signatory's Position: Attorney of record, Georgia bar member

Signatory's Phone Number: 2122032191

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: 87046643
RAM Accounting Date: 12/18/2017
        
Serial Number: 87046643
Internet Transmission Date: Fri Dec 15 21:02:46 EST 2017
TEAS Stamp: USPTO/ROA-XXX.X.XXX.XXX-2017121521024685
4003-87046643-5102f4b682bdbf339cf42c37ba
272b17bf7c90c4bdee52a2dcd495169a459656f-
CC-6338-20171215205752243929