| 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 | 87135434 |
| LAW OFFICE ASSIGNED | LAW OFFICE 117 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87135434/mark.png |
| LITERAL ELEMENT | CENTURY |
| 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 Applicant, All Craft Marine, L.L.C., hereby submits its Response to the Office Action issued by the United States Patent and Trademark Office (USPTO) Examining Attorney in connection with the above-referenced pending trademark application to register the word mark CENTURY in International Class 012. In the Office Action (along with a similar Office Action issued for the Applicant’s logo mark CENTURY & Design), the Trademark Examining Attorney states that “[r]egistration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4738926, CENTURY.” As such, the USPTO Trademark Examining Attorney has refused registration of the Applicant’s CENTURY and CENTURY & Design marks for “boats and structural parts therefor” in International Class 012, based on a purported likelihood of confusion with the registered mark CENTURY for “dealerships in the field of motorcycles, motorcycle parts and accessories” in International Class 035 and for “maintenance and repair services in the field of motorcycles” in International Class 037. In response to such refusals to register under Trademark Act Section 2(d), the Applicant hereby respectfully requests reconsideration of the above-referenced mark and application in light of the following information and arguments presented in this Response as stated in the following paragraphs, supporting the Applicant’s position that there is no likelihood of confusion between its CENTURY and CENTURY & Design marks, and the cited CENTURY mark. After reviewing the cited CENTURY mark and the cited services in U.S. Registration No. 4,738,926, the instant Applicant asserts that there is no likelihood of confusion between its applied-for word and logo marks and the cited CENTURY mark. The Applicant believes that the cited mark is not confusingly similar with the Applicant’s CENTURY marks because of numerous factors more fully discussed below, including: (i) the fact that the cited registrant’s mark and application were approved and allowed to register despite the instant Applicant’s then valid and existing federal registrations for the identical marks CENTURY (which were subsequently inadvertently allowed to lapse), (ii) the Applicant’s goods are unrelated to and substantially different from the cited registrant’s services, (iii) the Applicant’s goods are offered through different channels of trade, (iv) the sophisticated nature of consumers purchasing the Applicant’s expensive boats, and (v) evidence that there has been no actual confusion in the marketplace with the cited registrant even though the instant Applicant’s marks have been in continuous use since 1931 and 1955. For these reasons, the Applicant respectfully requests that the USPTO Trademark Examining Attorney remove her refusal to register based on the cited registration and approve the instant Application for publication. Applicant’s Previous Federal Trademark Registrations Were not Cited Against the Cited Registrant’s Application At the outset, the instant Applicant notes that its CENTURY and CENTURY & Design marks for boats and structural parts therefor have been in use since at least as early as 1931 and 1955, respectively. In addition, the Applicant avers that it owned federal trademark Registration Nos. 759,559 and 1,284,200 for the marks CENTURY, which registrations were unintentionally allowed to lapse and were recently cancelled by the USPTO on April 1, 2016 and March 25, 2016, respectively. These trademark registrations for the marks CENTURY were for “skiffs, runabouts, and cruisers” and for “watercraft-namely, boats”, respectively, both in International Class 012, and registered on November 5, 1963 and July 3, 1984, respectively. Accordingly, it is very important to note that these federal trademark registrations were active, valid, and existing when the cited registrant filed its application to register the cited mark CENTURY in International Classes 035 and 037; and, the cited registrant’s mark and application were approved by the USPTO without even issuing an Office Action, despite the instant Applicant’s prior-issued registrations for the same marks in International Class 012. Therefore, the Applicant respectfully requests that the USPTO Trademark Examining Attorney likewise approve the instant Application to re-register the Applicant’s CENTURY mark in International Class 012, and remove the refusal to register based on the cited registration in International Classes 035 and 037. The Applicant’s Goods Are Not Related to the Cited Registrant’s Services - It is well established case law that the Examining Attorney must analyze each case in two steps to determine whether there is a likelihood of confusion between the applicant’s mark and the registered mark. First, the Examining Attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. See In re E.I. DuPont de Nemours, 177 U.S.P.Q. 563 (CCPA 1973) (listing the factors for a likelihood of confusion analysis). Although both the instant Applicant’s marks and the cited registrant’s mark are identical words, it is important to note that the Applicant and the cited registrant use their respective CENTURY marks on very different and unrelated goods and services – the Applicant uses its CENTURY mark for “boats and structural parts therefor”, while the cited registrant uses its CENTURY mark for “dealerships in the field of motorcycles, motorcycle parts and accessories” and “maintenance and repair services in the field of motorcycles”. Not only are Applicant’s goods in an entirely different class (International Class 012), the cited registrant’s registration is for completely unrelated services (International Classes 035 and 037), does not include any goods, nor does it include any goods in International Class 012. Further, the Applicant’s goods and the cited registrant’s services operate in completely different industries and specifically target different consumers. These different industries, boat manufacturing versus motorcycle dealerships, are not only distinct, but are regulated by different laws. Accordingly, based on the differences in their respective goods and services, and the different industries in which the Applicant and the cited registrant operate, the Applicant submits that there is no likelihood of confusion between the Applicant’s marks and the cited registrant’s mark. Moreover, as a general rule, most boat manufacturers do not also manufacture motorcycles, nor do most boat manufacturers also offer the cited motorcycle dealership and repair services provided by the cited registrant. Similarly, as a general rule, most motorcycle dealerships do not also manufacture boats. In fact, an Internet search for the term “motorcycle dealerships” brought up the Suzuki, Honda, and Victory motorcycle dealerships, all of which offer motorcycles, scooters and ATV vehicles for sale, but not boats. In this case, the Applicant does not offer any of the cited registrant’s services – the instant Applicant is a boat manufacturer and does not offer dealerships in the field of motorcycles, motorcycle parts and accessories, nor does it sell motorcycles or provide any maintenance or repair services in the field of motorcycles. Further, courts have held that confusion is less likely where there are differences in the intended use of the goods. See In re Hair Masters Goods, Inc., 17 USPQ 2d 1335, 1336 (Fed Cir. 1990)(finding no likelihood of confusion between HAIR MASTERS for hair styling product and HAIRMASTER for hair tonic); see also In re Donnay International, Societe Anonyme, 31 USPQ2d 1953 (TTAB 1994)(finding GHOST for tennis racquets and THE GHOST for soccer balls not confusingly similar); G.H. Mumm & Cie v. Desnoes & Geddes, Ltd., 917 F. 2d 1292, 1295 (Fed. Cir. 1990)(finding no likelihood of confusion between identical marks RED STRIPE for beer and champagne). Here, there is a vast difference between the intended uses of the Applicant’s goods and the intended use of the cited registrant’s services: the Applicant’s goods, namely, boats, are intended to be used for boating and fishing on the water – on oceans, lakes and rivers. On the other hand, the cited registrant’s services are intended to be used for transportation on land –on highways, dirt roads, city roads - and are directed at (i) consumers who would like to purchase a motorcycle to use on land, or (ii) existing motorcycle owners who use their Harley-Davidson, Ducati, BMW, Suzuki, Kawasaki, Victory, Honda, and other-brand motorcycles and need maintenance and repair services. The intended uses of boats versus motorcycle dealership and repair services are vastly different and not interchangeable or related. Thus, the differences among the intended uses of the Applicant’s goods and the cited registrant’s services are such that confusion between the Applicant’s CENTURY marks and the cited registrant’s mark is not likely to occur. The Applicant’s Goods Travel In Different Channels of Trade - In addition, the activities surrounding the marketing of the Applicant’s and the cited registrant’s respective goods and services are such that confusion among consumers is very unlikely. The Applicant’s goods and the cited registrant’s services are not related and do not share any channels of trade. The Applicant is a boat manufacturer while the cited registrant is a motorcycle dealership; the cited registrant does not even manufacture motorcycles. Accordingly, the direct clients and channels of trade of the Applicant are different from those of the cited registrant in that the Applicant specifically targets boat dealerships to market and sell its boats. The Applicant and the cited registrant do not directly or indirectly compete. Thus, the activities surrounding the Applicant’s marketing and those surrounding the registrant’s marketing are such that entirely different customers will be targeted in different industries with differing advertising materials, publications, websites, and promotions such that confusion as to origin is very unlikely. Therefore, the Applicant asks the Trademark Examining Attorney to consider that the goods the Applicant uses the mark for, and the services that the cited registrant uses the mark for, exist in such different industries and channels of trade that there should be no confusion by the purchasers of the products. Sophistication of Applicant’s Consumers Supports No Likelihood of Confusion - Further, the sophistication of the Applicant’s typical consumer, namely, purchasers of expensive, luxury boats, supports a finding of no likelihood of confusion. Courts have held that the more expensive the product, then the more discriminating the consumer is expected to be, thereby reducing the possibility of confusion. See Electronic Data Systems Corp. v. EDSA MicroCorp., 23 U.S.P.Q.2d 1465 (T.T.A.B. 1992).
The expensive nature of boats is indicative of the care and attention consumers use when making a purchase and deciding between brands; consumers tend to look closely at the different brands, trademarks, location, and specialization in the industry of the company to distinguish the source of the goods when purchasing luxury products. The degree of care exercised by a consumer making a very expensive purchase is more likely to be discriminating and more source-conscious, and thus the purchaser is less likely to be easily confused with similar marks. The reason for this higher degree of care is because the consumer buys expensive items less frequently. The Applicant sells boats ranging from $55,000 to $250,000; the average price of a CENTURY boat is $90,000. These amounts reflect a large purchase and expense by the typical consumer and cause purchasers of Applicant’s goods to exercise extreme care in identifying the source of Applicant’s goods. Accordingly, because of the expensive nature of the Applicant’s goods, the purchasers of such products are sophisticated, exercise a great degree of care when making the purchase, and are not likely to be confused between the Applicant’s CENTURY mark and the cited registrant’s mark. No Actual Confusion - The Applicant asserts for the record that there has been no actual confusion between its CENTURY and CENTURY & Design marks for boats, and the cited registrant’s CENTURY mark for “dealerships in the field of motorcycles, motorcycle parts and accessories” in International Class 035 and for “maintenance and repair services in the field of motorcycles” in International Class 037, over the past twelve years. Given that the Applicant has been using its CENTURY and CENTURY & Design marks since 1931 and 1955, respectively, and that the cited registrant has been using its mark since 2005, such evidence of long, concurrent use with no confusion should be given great weight as evidence that consumers in the marketplace do not confuse the Applicant’s CENTURY marks with the cited registrant’s mark and thus, there is no likelihood of confusion. *************************** In view of the foregoing, the Applicant respectfully requests approval of the application for publication for opposition and registration in due course. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Diana L. Hayes/ |
| SIGNATORY'S NAME | Diana L. Hayes |
| SIGNATORY'S POSITION | Attorney of record, Florida bar mmber |
| SIGNATORY'S PHONE NUMBER | 813-227-7433 |
| DATE SIGNED | 03/08/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Mar 08 15:08:21 EST 2017 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XX- 20170308150821974447-8713 5434-58012da1fd0d6beb61f1 ce98b85fecd4f78961ffed763 f58cc690561b2cc34c-N/A-N/ A-20170308150310847936 |
| 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 Applicant, All Craft Marine, L.L.C., hereby submits its Response to the Office Action issued by the United States Patent and Trademark Office (USPTO) Examining Attorney in connection with the above-referenced pending trademark application to register the word mark CENTURY in International Class 012.
In the Office Action (along with a similar Office Action issued for the Applicant’s logo mark CENTURY & Design), the Trademark Examining Attorney states that “[r]egistration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4738926, CENTURY.” As such, the USPTO Trademark Examining Attorney has refused registration of the Applicant’s CENTURY and CENTURY & Design marks for “boats and structural parts therefor” in International Class 012, based on a purported likelihood of confusion with the registered mark CENTURY for “dealerships in the field of motorcycles, motorcycle parts and accessories” in International Class 035 and for “maintenance and repair services in the field of motorcycles” in International Class 037.
In response to such refusals to register under Trademark Act Section 2(d), the Applicant hereby respectfully requests reconsideration of the above-referenced mark and application in light of the following information and arguments presented in this Response as stated in the following paragraphs, supporting the Applicant’s position that there is no likelihood of confusion between its CENTURY and CENTURY & Design marks, and the cited CENTURY mark.
After reviewing the cited CENTURY mark and the cited services in U.S. Registration No. 4,738,926, the instant Applicant asserts that there is no likelihood of confusion between its applied-for word and logo marks and the cited CENTURY mark. The Applicant believes that the cited mark is not confusingly similar with the Applicant’s CENTURY marks because of numerous factors more fully discussed below, including: (i) the fact that the cited registrant’s mark and application were approved and allowed to register despite the instant Applicant’s then valid and existing federal registrations for the identical marks CENTURY (which were subsequently inadvertently allowed to lapse), (ii) the Applicant’s goods are unrelated to and substantially different from the cited registrant’s services, (iii) the Applicant’s goods are offered through different channels of trade, (iv) the sophisticated nature of consumers purchasing the Applicant’s expensive boats, and (v) evidence that there has been no actual confusion in the marketplace with the cited registrant even though the instant Applicant’s marks have been in continuous use since 1931 and 1955.
For these reasons, the Applicant respectfully requests that the USPTO Trademark Examining Attorney remove her refusal to register based on the cited registration and approve the instant Application for publication.
Applicant’s Previous Federal Trademark Registrations Were not Cited Against the Cited Registrant’s Application
At the outset, the instant Applicant notes that its CENTURY and CENTURY & Design marks for boats and structural parts therefor have been in use since at least as early as 1931 and 1955, respectively. In addition, the Applicant avers that it owned federal trademark Registration Nos. 759,559 and 1,284,200 for the marks CENTURY, which registrations were unintentionally allowed to lapse and were recently cancelled by the USPTO on April 1, 2016 and March 25, 2016, respectively. These trademark registrations for the marks CENTURY were for “skiffs, runabouts, and cruisers” and for “watercraft-namely, boats”, respectively, both in International Class 012, and registered on November 5, 1963 and July 3, 1984, respectively.
Accordingly, it is very important to note that these federal trademark registrations were active, valid, and existing when the cited registrant filed its application to register the cited mark CENTURY in International Classes 035 and 037; and, the cited registrant’s mark and application were approved by the USPTO without even issuing an Office Action, despite the instant Applicant’s prior-issued registrations for the same marks in International Class 012.
Therefore, the Applicant respectfully requests that the USPTO Trademark Examining Attorney likewise approve the instant Application to re-register the Applicant’s CENTURY mark in International Class 012, and remove the refusal to register based on the cited registration in International Classes 035 and 037.
The Applicant’s Goods Are Not Related to the Cited Registrant’s Services -
It is well established case law that the Examining Attorney must analyze each case in two steps to determine whether there is a likelihood of confusion between the applicant’s mark and the registered mark. First, the Examining Attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. See In re E.I. DuPont de Nemours, 177 U.S.P.Q. 563 (CCPA 1973) (listing the factors for a likelihood of confusion analysis).
Although both the instant Applicant’s marks and the cited registrant’s mark are identical words, it is important to note that the Applicant and the cited registrant use their respective CENTURY marks on very different and unrelated goods and services – the Applicant uses its CENTURY mark for “boats and structural parts therefor”, while the cited registrant uses its CENTURY mark for “dealerships in the field of motorcycles, motorcycle parts and accessories” and “maintenance and repair services in the field of motorcycles”. Not only are Applicant’s goods in an entirely different class (International Class 012), the cited registrant’s registration is for completely unrelated services (International Classes 035 and 037), does not include any goods, nor does it include any goods in International Class 012. Further, the Applicant’s goods and the cited registrant’s services operate in completely different industries and specifically target different consumers. These different industries, boat manufacturing versus motorcycle dealerships, are not only distinct, but are regulated by different laws. Accordingly, based on the differences in their respective goods and services, and the different industries in which the Applicant and the cited registrant operate, the Applicant submits that there is no likelihood of confusion between the Applicant’s marks and the cited registrant’s mark.
Moreover, as a general rule, most boat manufacturers do not also manufacture motorcycles, nor do most boat manufacturers also offer the cited motorcycle dealership and repair services provided by the cited registrant. Similarly, as a general rule, most motorcycle dealerships do not also manufacture boats. In fact, an Internet search for the term “motorcycle dealerships” brought up the Suzuki, Honda, and Victory motorcycle dealerships, all of which offer motorcycles, scooters and ATV vehicles for sale, but not boats. In this case, the Applicant does not offer any of the cited registrant’s services – the instant Applicant is a boat manufacturer and does not offer dealerships in the field of motorcycles, motorcycle parts and accessories, nor does it sell motorcycles or provide any maintenance or repair services in the field of motorcycles.
Further, courts have held that confusion is less likely where there are differences in the intended use of the goods. See In re Hair Masters Goods, Inc., 17 USPQ 2d 1335, 1336 (Fed Cir. 1990)(finding no likelihood of confusion between HAIR MASTERS for hair styling product and HAIRMASTER for hair tonic); see also In re Donnay International, Societe Anonyme, 31 USPQ2d 1953 (TTAB 1994)(finding GHOST for tennis racquets and THE GHOST for soccer balls not confusingly similar); G.H. Mumm & Cie v. Desnoes & Geddes, Ltd., 917 F. 2d 1292, 1295 (Fed. Cir. 1990)(finding no likelihood of confusion between identical marks RED STRIPE for beer and champagne).
Here, there is a vast difference between the intended uses of the Applicant’s goods and the intended use of the cited registrant’s services: the Applicant’s goods, namely, boats, are intended to be used for boating and fishing on the water – on oceans, lakes and rivers. On the other hand, the cited registrant’s services are intended to be used for transportation on land –on highways, dirt roads, city roads - and are directed at (i) consumers who would like to purchase a motorcycle to use on land, or (ii) existing motorcycle owners who use their Harley-Davidson, Ducati, BMW, Suzuki, Kawasaki, Victory, Honda, and other-brand motorcycles and need maintenance and repair services. The intended uses of boats versus motorcycle dealership and repair services are vastly different and not interchangeable or related. Thus, the differences among the intended uses of the Applicant’s goods and the cited registrant’s services are such that confusion between the Applicant’s CENTURY marks and the cited registrant’s mark is not likely to occur.
The Applicant’s Goods Travel In Different Channels of Trade -
In addition, the activities surrounding the marketing of the Applicant’s and the cited registrant’s respective goods and services are such that confusion among consumers is very unlikely. The Applicant’s goods and the cited registrant’s services are not related and do not share any channels of trade. The Applicant is a boat manufacturer while the cited registrant is a motorcycle dealership; the cited registrant does not even manufacture motorcycles. Accordingly, the direct clients and channels of trade of the Applicant are different from those of the cited registrant in that the Applicant specifically targets boat dealerships to market and sell its boats. The Applicant and the cited registrant do not directly or indirectly compete. Thus, the activities surrounding the Applicant’s marketing and those surrounding the registrant’s marketing are such that entirely different customers will be targeted in different industries with differing advertising materials, publications, websites, and promotions such that confusion as to origin is very unlikely.
Therefore, the Applicant asks the Trademark Examining Attorney to consider that the goods the Applicant uses the mark for, and the services that the cited registrant uses the mark for, exist in such different industries and channels of trade that there should be no confusion by the purchasers of the products.
Sophistication of Applicant’s Consumers Supports No Likelihood of Confusion -
Further, the sophistication of the Applicant’s typical consumer, namely, purchasers of expensive, luxury boats, supports a finding of no likelihood of confusion. Courts have held that the more expensive the product, then the more discriminating the consumer is expected to be, thereby reducing the possibility of confusion. See Electronic Data Systems Corp. v. EDSA MicroCorp., 23 U.S.P.Q.2d 1465 (T.T.A.B. 1992).
The expensive nature of boats is indicative of the care and attention consumers use when making a purchase and deciding between brands; consumers tend to look closely at the different brands, trademarks, location, and specialization in the industry of the company to distinguish the source of the goods when purchasing luxury products. The degree of care exercised by a consumer making a very expensive purchase is more likely to be discriminating and more source-conscious, and thus the purchaser is less likely to be easily confused with similar marks. The reason for this higher degree of care is because the consumer buys expensive items less frequently.
The Applicant sells boats ranging from $55,000 to $250,000; the average price of a CENTURY boat is $90,000. These amounts reflect a large purchase and expense by the typical consumer and cause purchasers of Applicant’s goods to exercise extreme care in identifying the source of Applicant’s goods. Accordingly, because of the expensive nature of the Applicant’s goods, the purchasers of such products are sophisticated, exercise a great degree of care when making the purchase, and are not likely to be confused between the Applicant’s CENTURY mark and the cited registrant’s mark.
No Actual Confusion -
The Applicant asserts for the record that there has been no actual confusion between its CENTURY and CENTURY & Design marks for boats, and the cited registrant’s CENTURY mark for “dealerships in the field of motorcycles, motorcycle parts and accessories” in International Class 035 and for “maintenance and repair services in the field of motorcycles” in International Class 037, over the past twelve years. Given that the Applicant has been using its CENTURY and CENTURY & Design marks since 1931 and 1955, respectively, and that the cited registrant has been using its mark since 2005, such evidence of long, concurrent use with no confusion should be given great weight as evidence that consumers in the marketplace do not confuse the Applicant’s CENTURY marks with the cited registrant’s mark and thus, there is no likelihood of confusion.
***************************
In view of the foregoing, the Applicant respectfully requests approval of the application for publication for opposition and registration in due course.