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)

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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. 87111631 ADVANTAGE (Stylized and/or with Design, see http://uspto.report/TM/87111631/mark.png) has been amended as follows:

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

RESPONSE TO OFFICE ACTION

            The Examining Attorney has refused registration of the mark ADVANTAGE (and Design), U.S. Serial No. 87-111631, based upon an assertion under Section 2(d) that the Applicant’s mark is likely to be confused with U.S. Registration No. 4,156,942 for the mark ADVANTAGE.  Applicant respectfully submits that confusion with the cited mark is unlikely, for the reasons discussed below. 

THERE IS NO LIKELIHOOD OF CONFUSION

            Applicant submits that under the factors set forth for determining whether a mark would create confusion among consumers in the marketplace, as established in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973), there is no likelihood of confusion between its trademark and the cited registration.  No one factor listed in DuPont is to be considered more important than the other, and from case to case, each factor may play a dominant role.

            The Marks Are Recognizably Different

            Applicant’s mark, in its entirety, has a different commercial impression, appearance, and connotation from the cited registration.

            It is well settled that “[m]arks must be considered in their entireties in determining the issue of likelihood of confusion” since the commercial impression is derived from a mark as a whole.  In re Data Corp., 753 F.2d 1056, 1058 (Fed.Cir. 1985) (there must be a rational reason for placing more or less emphasis on a particular feature of a mark when analyzing likelihood of confusion);  M-D On-Line, Inc. v. WebMD Corp., 2005 U.S. Dist. LEXIS 23563 at *11 (D.N.J. 2005) (the question is whether the marks 'viewed in their entirety' are confusingly similar).

            The Board has further stated that “[t]here can be no question but that it is a well determined principle of trademark law, that in considering the likelihood of confusion, the marks must be compared in their entireties and not dissected into their component parts, and that the commercial impression is derived from the mark as a whole, not from their elements separated and considered in detail.”  Id.  Thus, to ignore elements of the cited mark does not present a true picture of the respective marks as they appear to the relevant public.

            In numerous cases, a design element has been found to be more dominant or conspicuous than accompanying words.  Estee Lauder Inc. v. The Gap, Inc., 42 U.S. P.Q. 2d 1228, 1233‑34 (2nd Cir. 1997); Ricci v. Gencraft Ltd., 226 U. S. P.Q. 575, 581‑82 (S.D.N.Y.  1985); see e.g., In re Application of Computer Communications, 179 U.S.P.Q. 51 (C. C.P.A. 1973) (letter‑design portion of applicant’s mark is more prominent than word portion); Association of Cooperative Members, Inc. v. Farmland Indus., Inc., 216 U.S.P.Q. 361 (5th Cir. 1982) (double circle design element of mark found to be more dominant than word “Co‑op”). 

            The Applicant’s mark is markedly different in overall appearance and commercial impression from the cited mark.  The Applicant’s design mark is far different that the cited word mark, in that it includes multiple specific design elements, namely (a) the use of italicized block lettering; (b) formation of the word element into a parallelogram; and (c) the use of blue and purple arrows above the word element (claimed as a feature of the mark).  To ignore the substantial differences in the marks, in order to focus on the supposed similarity of some of the word elements, is improper.  See In re Produits de Beaute - Parfums Jean D’Aveze, 225 U.S.P.Q. 283, 284 (T.T.A.B. 1984).  Even small differences between marks has been held sufficient to avoid any likelihood of confusion.  See, e.g., In re AMF Inc., 181 U.S.P.Q. 797, 798 (T.T.A.B. 1974);  see, e.g., Safeway Stores Inc. v. The Bell Canto Fancy Foods Ltd., 5 U.S.P.Q.2d 1980, 1982 (T.T.A.B. 1987) (finding no likelihood of confusion between BEL ARIA for food products and BEL-AIR for frozen food products);  see also Viacom International Inc. v. Komm, 46 U.S.P.Q.2d 1233 (T.T.A.B. 1998) (finding MY-T-MOUSE for software not confusingly similar with MIGHTY MOUSE cartoon character for a variety of products). 

            The Goods are Not Necessarily Related or Competing

            The goods covered by Applicant’s mark do not necessarily relate to, or compete with, those listed in the cited registration. 

            The goods provided by the Applicant and the cited registrant are very dissimilar.  Applicant’s goods identification covers: “Two-wheeled motor vehicles and their parts and fittings; non-electric prime movers for land vehicles (not including "their parts"); mechanical elements for land vehicles; shafts, axles or spindles for two-wheeled motor vehicles; shafts, axle or spindle bearings for two-wheeled motor vehicles; shaft couplings or connectors for two-wheeled motor vehicles; bearings for two-wheeled motor vehicles; power transmissions and gearing for machines for two-wheeled motor vehicles; shock absorbers for two-wheeled motor vehicles; springs for two-wheeled motor vehicles; brakes for two-wheeled motor vehicles” 

            In contrast, the cited registration covers “Handrims and pushrims for wheelchairs; Motorized, electric-powered, self-propelled, self-balancing, wheeled personal mobility, transportation device; Multiple-pocketed carrier for personal items specially adapted for attachment to wheelchairs; Viscous gel polymer sold as a component of finished custom cushioned wheel chair seats and back cushions; Wheel chairs; Wheelchair cushions; Wheelchair pads; Wheelchairs.” 

            Applicant's goods and those of the cited registration are only generally related, if at all. See e.g. General Electric Company v. Graham Magnetics, Inc., 197 USPQ 690 (TTAB 1977) (simply because a term may be found that generically describes both parties' goods or services is not a sufficient basis for finding goods or services to be related).

            The goods serve unrelated purposes and travel within different channels of trade to different classes of purchasers.  Applicant’s products are limited to two-wheeled motor vehicles and their parts.  In contrast, the cited registrant’s goods are limited to wheelchairs – clearly differentiated and distinguishable from two-wheeled motor vehicles – and their parts.  As such, the respective goods are unrelated, thus obviating any likelihood of confusion.

            The Purchasers are Sophisticated

            Likelihood of confusion is less likely to be found where purchasers are sophisticated and, therefore, discriminating. McGregor-Donniger, Inc. v. Drizzle Inc., 202 U.S.P.Q. 81 (2d Cir. 1979).  Applicant contends that, given the highly specialized nature of the goods offered under the respective marks, the purchasers of those goods are undoubtedly highly knowledgeable and discerning in their purchasing decisions.  The Applicant’s goods are not mass-market goods relevant to the general public.  These are sophisticated goods that are marketed to and purchased by vehicle repair personnel that are very knowledgeable with respect to the very specific commercial niche to which these goods are directed. Likewise, the purchasers of the cited registrant’s goods, medical professionals, are similarly knowledgeable regarding the source of those goods.  As such, the goods at issue in the Application would not normally be encountered by the same purchasers under circumstances that might give rise to the mistaken belief that the goods emanated from the same source.

            The C.A.F.C. has cautioned the P.T.O. not to overlook the great importance of such consumer sophistication in deciding whether confusion is likely.  In Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992), the C.A.F.C. strongly stressed that the sophistication of discriminating customers is an extremely important likelihood of confusion factor, even in cases where the marks are identical.  Indeed, the C.A.F.C. reversed the Board’s finding of likely confusion because the Board "apparently failed to consider, and certainly failed to address, the sophistication of buyers."  Electronic Design & Sales, 21 U.S.P.Q.2d at 1392. 

CONCLUSION

            With the above, Applicant submits that all questions are now answered, and respectfully requests that the Examining Attorney pass the mark for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 012 for Two-wheeled motor vehicles and their parts and fittings; non-electric prime movers for land vehicles (not including "their parts"); mechanical elements for land vehicles; shafts, axles or spindles for two-wheeled motor vehicles; shafts, axle or spindle bearings for two-wheeled motor vehicles; shaft couplings or connectors for two-wheeled motor vehicles; bearings for two-wheeled motor vehicles; power transmissions and gearing for machines for two-wheeled motor vehicles; shock absorbers for two-wheeled motor vehicles; springs for two-wheeled motor vehicles; brakes for two-wheeled motor vehicles
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Japan application number 2016-011890 filed 02/03/2016]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Two-wheeled motor vehicles and their parts and fittings; Two-wheeled motorized vehicles and replacement parts therefor; non-electric prime movers for land vehicles (not including "their parts"); vehicle wheels; mechanical elements for land vehicles; non-electric prime movers for land vehicles, namely, diesel and gasoline engines for land vehicles; shafts, axles or spindles for two-wheeled motor vehicles; mechanical elements for land vehicles, namely, disc brakes for land vehicles, brake calipers for land vehicles, brake systems for land vehicles, clutches for land vehicles, clutch components for land vehicles, other than linings, drive shafts, axles and spindles for two-wheeled motor vehicles; shafts, axle or spindle bearings for two-wheeled motor vehicles; axle spindle bearings for two-wheeled land motor vehicles; shaft couplings or connectors for two-wheeled motor vehicles; shaft couplings for two-wheeled motor vehicles; bearings for two-wheeled motor vehicles; wheel bearings for two-wheeled motor vehicles; power transmissions and gearing for machines for two-wheeled motor vehicles; vehicle power train mechanism comprised of clutch, transmission, drive shaft, and differential; vehicle power train mechanism comprised of clutch, transmission, drive shaft, and differential for two-wheeled motor vehicles; springs for two-wheeled motor vehicles; shock absorbers for two-wheeled motor vehicles; brakes for two-wheeled motor vehicles; suspension springs for two-wheeled motor vehicles; brakes for two-wheeled motor vehicles.Class 012 for Two-wheeled motorized vehicles and replacement parts therefor; vehicle wheels; non-electric prime movers for land vehicles, namely, diesel and gasoline engines for land vehicles; mechanical elements for land vehicles, namely, disc brakes for land vehicles, brake calipers for land vehicles, brake systems for land vehicles, clutches for land vehicles, clutch components for land vehicles, other than linings, drive shafts, axles and spindles for two-wheeled motor vehicles; axle spindle bearings for two-wheeled land motor vehicles; shaft couplings for two-wheeled motor vehicles; wheel bearings for two-wheeled motor vehicles; vehicle power train mechanism comprised of clutch, transmission, drive shaft, and differential; vehicle power train mechanism comprised of clutch, transmission, drive shaft, and differential for two-wheeled motor vehicles; shock absorbers for two-wheeled motor vehicles; suspension springs for two-wheeled motor vehicles; brakes for two-wheeled motor vehicles.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Japan application number 2016-011890 filed 02/03/2016]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Japan registration number 5882896 registered 09/16/2016 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-5023459194-115427952_._4369TMUS1_Japanese_Registration_Certificate__220317_.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2
Original PDF file:
FRU0-5023459194-115427952_._4369TMUS1_English_translation_of_Certificate.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2
Original PDF file:
FRU0-5023459194-115427952_._4369TMUS1_Declaration__290317_.pdf
Converted PDF file(s) ( 1 page)
Foreign Registration-1

ADDITIONAL STATEMENTS
Description of mark
The mark consists of a top line featuring a blue half arrow pointing down, a purple half arrow pointing up, and a bottom line with the word ADVANTAGE in black lettering. The color white represents the background of the mark and does not form part of the mark, and no claim is being made on the color white.

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: /Charles P. Guarino/      Date: 03/30/2017
Signatory's Name: Charles P. Guarino
Signatory's Position: Attorney of record, NJ bar member
Signatory's Phone Number: 732-945-9498


Response Signature
Signature: /Charles P. Guarino/     Date: 03/30/2017
Signatory's Name: Charles P. Guarino
Signatory's Position: Attorney of record, NJ bar member

Signatory's Phone Number: 732-945-9498

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: 87111631
Internet Transmission Date: Thu Mar 30 12:33:25 EDT 2017
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2017033012332542
5141-87111631-5803525ecf895cbdb741c71b1c
64ba389c5e4d282396e16a61ea2becad48ab4-N/
A-N/A-20170330115427952512