| 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 | 87190104 |
| LAW OFFICE ASSIGNED | LAW OFFICE 121 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87190104/mark.png |
| LITERAL ELEMENT | WELCOME |
| 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) | |
|
This communication is in response to the Office Action mailed January 9, 2017, whereby the Examining Attorney set forth the following:
REMARKS LIKELIHOOD OF CONFUSION Applicant respectfully disagrees with the assertion that Applicant’s mark is confusingly similar to the cited registered marks, and requests that the Examining Attorney reconsider the refusal to register. Applicant contends that full consideration of the relevant factors set forth in In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. (BNA) 563 (C.C.P.A. 1973) supports the position that, in fact, there is not a likelihood that Applicant’s mark will be confused with the cited registration for the following reasons:
The first Du Pont factor to be considered when determining whether two marks are confusingly similar is the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. When compared side by side, Applicant’s WELCOME mark is immediately distinguishable from the cited marks BIENVENU and WELKOM. Applicant submits that Applicant’s and the Registrants’ marks have completely different appearances and commercial impressions, with Applicant’s mark conveying a commercial impression of being comfortable or right at home as the English word “welcome”, while the cited WELKOM mark fails to evoke the same sense of belonging that Applicant’s WELCOME mark suggests. The “K” in the cited WELKOM mark differentiates the cited mark from Applicant’s mark, and is an important factor in distinguishing the sound and commercial impression. Additionally, as the Examining Attorney points out, the French word for “welcome” is “BIENVENU,” but only in one sense of the term. The word “welcome” has several translated meanings in the French language depending on its context, as evidenced in Exhibit A, and the word “BIENVENU” is only one of them. The average consumer will not see the word “BIENVENU” and immediately relate it to the same connotation or look and feel of Applicant’s WELCOME mark. Furthermore, the average U.S. consumer may not even recognize that the wording “BIENVENU” can mean “welcome”, as French is not a common language in the U.S. When considering appearance, it is clear that the word “BIENVENU” taken at face value could not be more different from Applicant’s WELCOME mark, with Applicant’s mark featuring two syllables and starting with the letter “w”, while the cited BIENVENU mark features three syllables and begins with the letter “b”. Because neither the WELKOM mark nor the BIENVENU mark in its entirety is a plain reference to anything in the English language, consumers would also be likely to base commercial impression on the pronunciation – or sounds -- of each mark. Under the anti-dissection rule, Applicant’s mark and the cited marks must be judged by the commercial impression of the entire mark, and not merely by one of its components. Courts have consistently held that “[m]arks tend to be perceived in their entireties, and all components thereof must be given appropriate weight.” See In re Hearst Corp., 982 F.2d 494, 25 U.S.P.Q. 2d (BNA) 1238 (Fed. Cir. 1992) citing Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 U.S.P.Q. 2d (BNA) 1471 (Fed. Cir. 1992). In the refusal to register Applicant’s mark, the Examiner has inappropriately stressed certain consonants of Applicant’s WELCOME mark and the cited WELKOM mark by calling the marks phonetic equivalents, rather than viewing the marks in their entireties with all letters and syllables included. The Board has found that a difference of even one or two letters is sufficient to avoid confusion between two marks. See, e.g., In re Reach Elec., Inc., 175 U.S.P.Q. 734 (TTAB 1972) (REAC not confusingly similar to REACH, both relating to electronics equipment), and Lever Bros. Co. v. Babson Bros. Co., 197 F.2d 531, 94 USPQ 161 (C.C.P.A. 1952) (SURGE held to be sufficiently dissimilar from SURF, both relating to detergent). In In re Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 1998 U.S. App., 47 USPQ 2d (BNA) 1459, the mark CRYSTAL CREEK for use with wine was found not confusingly similar to the marks CRISTAL and CRISTAL CHAMPAGNE and Design for wine and champagne, as the Board found that the aforementioned marks created clearly different images in the minds of relevant consumers and that the appearance and sound of the marks were dissimilar. Applicant contends that the differences in the WELCOME and WELKOM marks are at least as significant as in the aforementioned cases. The “WELKOM” mark with a “k” is not a word in the English language, and could therefore be pronounced in any number of ways and could even be pondered as an obscure foreign word; moreover, the BIENVENU mark is clearly distinguishable from the WELCOME mark with its different starting and ending letters. The marks are therefore not “phonetic equivalents” but rather are simply phonetically similar. The cited marks are distinctly different in sound from Applicant’s WELCOME mark. When marks are only similar in sound, consumers proceed more cautiously before determining that there is a likelihood of confusion. See, e.g., Standard Brands Inc. v. Eastern Shore Canning Co., 172 F.2d 144, 80 USPQ 318, 321 (4th Cir. 1949), cert. denied, 337 U.S. 925 (1949); Crown Radio Corp. v. Soundscriber Corp., 506 F.2d 1392, 184 USPQ 221, 222 (CCPA 1974); General Electric Company Limited v. Janaer Glaswerk Shott & Gen, 52 CCPA 954, 341 F.2d 152, 144 USPQ 427 (1965). In Standard Brands Inc. v. Eastern Shore Canning Co., which discussed the similarity of V-8 and VA, it was concluded that “the phonetic similarity of the two marks cannot prevail, even if it is supposed … that the defendant’s goods are asked for as VA rather than as Virginia tomato juice or lima beans.” Applicant’s mark may be phonetically similar to the WELKOM mark, but the two marks are not phonetically identical, and therefore the presumption that the letters might be pronounced similarly is not a strong enough basis for a likelihood of confusion determination. The Examining Attorney contends that “[s]imilarity in sound alone may be sufficient to support a finding that the marks are confusingly similar,” citing to In re White Swan Ltd., 8 USPQ 2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ 2d 1581, 1586 (TTAB 2007; TMEP § 1207.01(b)(iv). However, the actual text in TMEP § 1207.01(b)(iv), which states: “Similarity in sound is one factor in determining whether there is a likelihood of confusion between marks,” determines that similarity in sound is only one factor, and that all other similarity factors must be considered, as well. As previously stated, Applicant’s mark and Registrants’ marks are dissimilar in sight, sound, and commercial impression. Therefore, all other factors of similarity determine that Applicant’s mark cannot be determined to be confusingly similar to Registrants’ marks. Although the first Du Pont factor alone may be dispositive in this likelihood of confusion analysis, there are additional factors in this case that also weigh against a likelihood of confusion.
Yet another factor which should be considered in this case is the extent to which there is likely to be confusion. It is well established that the law is not concerned with mere theoretical possibilities of confusion, deception or mistake, but with practicalities of the commercial world. Witco Chem Co. v. Whitfield Chem Co., 418 F.2d 1403, 153 U.S.P.Q. 412 (C.C.P.A. 1969), affirmed 164 U.S.P.Q. 43 (TTAB 1967). Applicant submits that the Examining Attorney’s concern with potential confusion is merely theoretical or at most de minimis. It is not consistent with trademark law to deny registration on this basis. Publication of Applicant’s mark will give the Registrants and other third parties a chance to oppose if there is a real likelihood of confusion in the marketplace. CONCLUSION In view of the foregoing remarks, we submit that this Application is in condition for prompt publication. Favorable action is therefore respectfully requested. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_7016617114-20170629210345471274_._exhibit_a.pdf |
| CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\871\901\87190104\xml4\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\871\901\87190104\xml4\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\871\901\87190104\xml4\ROA0004.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /JHA/ |
| SIGNATORY'S NAME | John H. Alspaugh, Esq. |
| SIGNATORY'S POSITION | Attorney of Record, California Bar Member |
| SIGNATORY'S PHONE NUMBER | 619-685-3055 |
| DATE SIGNED | 06/29/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Jul 06 12:29:40 EDT 2017 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0170706122940188609-87190 104-5904b49e768c4a357e5f1 195f7695431ff33aafd67f095 bfe68a7a489d09cff6b-N/A-N /A-20170629210345471274 |
| 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) |
This communication is in response to the Office Action mailed January 9, 2017, whereby the Examining Attorney set forth the following:
Registration is refused because the Examiner believes that Applicant’s mark so resembles the marks WELKOM (Reg. No. 4937238) and BIENVENU (Reg. No. 4996265) as to be likely to cause confusion.
REMARKS
LIKELIHOOD OF CONFUSION
Applicant respectfully disagrees with the assertion that Applicant’s mark is confusingly similar to the cited registered marks, and requests that the Examining Attorney reconsider the refusal to register. Applicant contends that full consideration of the relevant factors set forth in In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. (BNA) 563 (C.C.P.A. 1973) supports the position that, in fact, there is not a likelihood that Applicant’s mark will be confused with the cited registration for the following reasons:
The marks are visually dissimilar in appearance, sound, connotation, and commercial impression.
The first Du Pont factor to be considered when determining whether two marks are confusingly similar is the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. When compared side by side, Applicant’s WELCOME mark is immediately distinguishable from the cited marks BIENVENU and WELKOM. Applicant submits that Applicant’s and the Registrants’ marks have completely different appearances and commercial impressions, with Applicant’s mark conveying a commercial impression of being comfortable or right at home as the English word “welcome”, while the cited WELKOM mark fails to evoke the same sense of belonging that Applicant’s WELCOME mark suggests. The “K” in the cited WELKOM mark differentiates the cited mark from Applicant’s mark, and is an important factor in distinguishing the sound and commercial impression.
Additionally, as the Examining Attorney points out, the French word for “welcome” is “BIENVENU,” but only in one sense of the term. The word “welcome” has several translated meanings in the French language depending on its context, as evidenced in Exhibit A, and the word “BIENVENU” is only one of them. The average consumer will not see the word “BIENVENU” and immediately relate it to the same connotation or look and feel of Applicant’s WELCOME mark. Furthermore, the average U.S. consumer may not even recognize that the wording “BIENVENU” can mean “welcome”, as French is not a common language in the U.S.
When considering appearance, it is clear that the word “BIENVENU” taken at face value could not be more different from Applicant’s WELCOME mark, with Applicant’s mark featuring two syllables and starting with the letter “w”, while the cited BIENVENU mark features three syllables and begins with the letter “b”. Because neither the WELKOM mark nor the BIENVENU mark in its entirety is a plain reference to anything in the English language, consumers would also be likely to base commercial impression on the pronunciation – or sounds -- of each mark.
Under the anti-dissection rule, Applicant’s mark and the cited marks must be judged by the commercial impression of the entire mark, and not merely by one of its components. Courts have consistently held that “[m]arks tend to be perceived in their entireties, and all components thereof must be given appropriate weight.” See In re Hearst Corp., 982 F.2d 494, 25 U.S.P.Q. 2d (BNA) 1238 (Fed. Cir. 1992) citing Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 U.S.P.Q. 2d (BNA) 1471 (Fed. Cir. 1992). In the refusal to register Applicant’s mark, the Examiner has inappropriately stressed certain consonants of Applicant’s WELCOME mark and the cited WELKOM mark by calling the marks phonetic equivalents, rather than viewing the marks in their entireties with all letters and syllables included. The Board has found that a difference of even one or two letters is sufficient to avoid confusion between two marks. See, e.g., In re Reach Elec., Inc., 175 U.S.P.Q. 734 (TTAB 1972) (REAC not confusingly similar to REACH, both relating to electronics equipment), and Lever Bros. Co. v. Babson Bros. Co., 197 F.2d 531, 94 USPQ 161 (C.C.P.A. 1952) (SURGE held to be sufficiently dissimilar from SURF, both relating to detergent). In In re Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 1998 U.S. App., 47 USPQ 2d (BNA) 1459, the mark CRYSTAL CREEK for use with wine was found not confusingly similar to the marks CRISTAL and CRISTAL CHAMPAGNE and Design for wine and champagne, as the Board found that the aforementioned marks created clearly different images in the minds of relevant consumers and that the appearance and sound of the marks were dissimilar. Applicant contends that the differences in the WELCOME and WELKOM marks are at least as significant as in the aforementioned cases.
The “WELKOM” mark with a “k” is not a word in the English language, and could therefore be pronounced in any number of ways and could even be pondered as an obscure foreign word; moreover, the BIENVENU mark is clearly distinguishable from the WELCOME mark with its different starting and ending letters. The marks are therefore not “phonetic equivalents” but rather are simply phonetically similar. The cited marks are distinctly different in sound from Applicant’s WELCOME mark. When marks are only similar in sound, consumers proceed more cautiously before determining that there is a likelihood of confusion. See, e.g., Standard Brands Inc. v. Eastern Shore Canning Co., 172 F.2d 144, 80 USPQ 318, 321 (4th Cir. 1949), cert. denied, 337 U.S. 925 (1949); Crown Radio Corp. v. Soundscriber Corp., 506 F.2d 1392, 184 USPQ 221, 222 (CCPA 1974); General Electric Company Limited v. Janaer Glaswerk Shott & Gen, 52 CCPA 954, 341 F.2d 152, 144 USPQ 427 (1965). In Standard Brands Inc. v. Eastern Shore Canning Co., which discussed the similarity of V-8 and VA, it was concluded that “the phonetic similarity of the two marks cannot prevail, even if it is supposed … that the defendant’s goods are asked for as VA rather than as Virginia tomato juice or lima beans.” Applicant’s mark may be phonetically similar to the WELKOM mark, but the two marks are not phonetically identical, and therefore the presumption that the letters might be pronounced similarly is not a strong enough basis for a likelihood of confusion determination.
The Examining Attorney contends that “[s]imilarity in sound alone may be sufficient to support a finding that the marks are confusingly similar,” citing to In re White Swan Ltd., 8 USPQ 2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ 2d 1581, 1586 (TTAB 2007; TMEP § 1207.01(b)(iv). However, the actual text in TMEP § 1207.01(b)(iv), which states: “Similarity in sound is one factor in determining whether there is a likelihood of confusion between marks,” determines that similarity in sound is only one factor, and that all other similarity factors must be considered, as well. As previously stated, Applicant’s mark and Registrants’ marks are dissimilar in sight, sound, and commercial impression. Therefore, all other factors of similarity determine that Applicant’s mark cannot be determined to be confusingly similar to Registrants’ marks.
Although the first Du Pont factor alone may be dispositive in this likelihood of confusion analysis, there are additional factors in this case that also weigh against a likelihood of confusion.
The extent of potential confusion is de minimis.
Yet another factor which should be considered in this case is the extent to which there is likely to be confusion. It is well established that the law is not concerned with mere theoretical possibilities of confusion, deception or mistake, but with practicalities of the commercial world. Witco Chem Co. v. Whitfield Chem Co., 418 F.2d 1403, 153 U.S.P.Q. 412 (C.C.P.A. 1969), affirmed 164 U.S.P.Q. 43 (TTAB 1967). Applicant submits that the Examining Attorney’s concern with potential confusion is merely theoretical or at most de minimis. It is not consistent with trademark law to deny registration on this basis. Publication of Applicant’s mark will give the Registrants and other third parties a chance to oppose if there is a real likelihood of confusion in the marketplace.
CONCLUSION
In view of the foregoing remarks, we submit that this Application is in condition for prompt publication. Favorable action is therefore respectfully requested.
