| 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 | 87194111 |
| LAW OFFICE ASSIGNED | LAW OFFICE 105 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87194111/mark.png |
| LITERAL ELEMENT | CENTURION |
| 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 Examining Attorney has refused registration of the instant application on the ground of a likelihood of confusion with the mark CENTURION under Reg. No. 4998975. Applicant has amended its identification of goods to read “composite fabric and laminate material for use in the manufacture of tactical vests.” In light of the amendment, and for the additional reasons discussed below, Applicant submits that confusion with the cited mark is unlikely. The Goods are Different In evaluating confusion, the marks must not be compared in the abstract but rather must be compared as used in connection with their respective goods. See In re National Data Corp., 224 U.S.P.Q. 749, 750 (Fed. Cir. 1985). Further, there is no per se rule that certain goods or services are so related that there must be a likelihood of confusion from the use of similar or identical marks thereon. See, e.g., In re British Bulldog, Ltd., 224 U.S.P.Q. 854, 856 (T.T.A.B. 1984) (use of identical mark "PLAYERS" on "shoes" and "underwear" held not to be confusingly similar due to the nature of the goods). As in British Bulldog the marks are identical but the respective goods are even more dissimilar and, thus, as in that case, there should be no likelihood of confusion. See also In re August Storck KG, 218 U.S.P.Q. 823, 825 (T.T.A.B. 1983) (holding that confusion was not likely between JUICY 2 for candy and JUICY BLEND II for ground beef and vegetable protein mix, even though the respective goods were both food products, because the goods were "quite different").
The cited mark covers “carpet tile and carpeting” in Class 27. These goods are used to cover floors or stairs in places like buildings. By contrast, applicant’s application covers “composite fabric and laminate material for use in the manufacture of tactical vests”. The fabric in applicant’s goods is a lightweight, durable material that goes into tactical vests to provide protection for law enforcement personnel, for example. As a result, carpet tile and carpeting covered by the cited mark and composite fabric and laminate material for use in the manufacture of tactical vests cannot be found to be commercially related. Applicant asserts that the respective goods are in fact different and serve very different purposes. The Trade Channels are Different
The Parties’ Respective Consumers are Sophisticated Whether it is carpet tile and carpet or composite fabric or laminate material for the manufacture of tactical vests, great care is likely taken in purchasing the respective goods. Indeed, the purchaser of applicant’s goods is not buying on impulse as a tactical vest is a protective item which could save one’s life. Similarly, in choosing carpet or carpet tile, consumers are very discriminating and take lots of time before making a decision.
The C.A.F.C. has cautioned the P.T.O. not to overlook the great importance of consumer sophistication in deciding whether confusion is likely. The decision in Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992) is instructive. The C.A.F.C. there held that confusion was unlikely between E.D.S. for computer services and EDS for power supplies and battery chargers because the buyers were sophisticated commercial purchasers. 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.” 21 U.S.P.Q.2d at 1392.
With the above, Applicant respectfully requests that the Examining Attorney withdraw the cited mark and approve the instant application for publication.
|
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 024 |
| DESCRIPTION | Composite fabric and laminate material |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 024 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Composite fabric and laminate material for use in the manufacture of tactical vests | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /deirdre a clarke/ |
| SIGNATORY'S NAME | Deirdre A. Clarke |
| SIGNATORY'S POSITION | Attorney - NY bar member |
| SIGNATORY'S PHONE NUMBER | 914-821-3084 |
| DATE SIGNED | 07/19/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jul 19 16:15:33 EDT 2017 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XXX.XX-2 0170719161533962527-87194 111-510347ee6824c53879fde c73ff449ae428199b73556387 9264476d57aaedb1820-N/A-N /A-20170719160515073108 |
| 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 Examining Attorney has refused registration of the instant application on the ground of a likelihood of confusion with the mark CENTURION under Reg. No. 4998975. Applicant has amended its identification of goods to read “composite fabric and laminate material for use in the manufacture of tactical vests.” In light of the amendment, and for the additional reasons discussed below, Applicant submits that confusion with the cited mark is unlikely.
The Goods are Different
In evaluating confusion, the marks must not be compared in the abstract but rather must be compared as used in connection with their respective goods. See In re National Data Corp., 224 U.S.P.Q. 749, 750 (Fed. Cir. 1985). Further, there is no per se rule that certain goods or services are so related that there must be a likelihood of confusion from the use of similar or identical marks thereon. See, e.g., In re British Bulldog, Ltd., 224 U.S.P.Q. 854, 856 (T.T.A.B. 1984) (use of identical mark "PLAYERS" on "shoes" and "underwear" held not to be confusingly similar due to the nature of the goods). As in British Bulldog the marks are identical but the respective goods are even more dissimilar and, thus, as in that case, there should be no likelihood of confusion. See also In re August Storck KG, 218 U.S.P.Q. 823, 825 (T.T.A.B. 1983) (holding that confusion was not likely between JUICY 2 for candy and JUICY BLEND II for ground beef and vegetable protein mix, even though the respective goods were both food products, because the goods were "quite different").
The cited mark covers “carpet tile and carpeting” in Class 27. These goods are used to cover floors or stairs in places like buildings. By contrast, applicant’s application covers “composite fabric and laminate material for use in the manufacture of tactical vests”. The fabric in applicant’s goods is a lightweight, durable material that goes into tactical vests to provide protection for law enforcement personnel, for example. As a result, carpet tile and carpeting covered by the cited mark and composite fabric and laminate material for use in the manufacture of tactical vests cannot be found to be commercially related. Applicant asserts that the respective goods are in fact different and serve very different purposes.
The Trade Channels are Different
As the Examining Attorney has argued, the registrant’s goods and applicant’s goods travel in the same trade channels because third-party websites demonstrate
that entities that provide fabric also provide carpeting. There is no evidence, however, to support any argument that the registrant’s floor coverings have any
application to applicant’s tactical vests. Indeed, tactical vests would not be found in the same store or aisle of a store with carpet or carpet tile. The respective goods must be presumed to travel in all “normal” channels of trade. Accordingly, Applicant submits that the trade channels for
the respective goods differ and that this factor alone is sufficient to find that confusion is not likely. See TMEP 1207.01
(“In some cases, a determination that there is no likelihood of confusion may be appropriate, even where the marks are similar and the goods/services are related, because these factors are
outweighed by other factors, such as differences in the relevant trade channels of the goods/services . . . .”). Here, where other factors also weigh against
confusion, Applicant submits that the case is even stronger for withdrawing the refusal.
The Parties’ Respective Consumers are Sophisticated
Whether it is carpet tile and carpet or composite fabric or laminate material for the manufacture of tactical vests, great care is likely taken in purchasing the respective goods. Indeed, the purchaser of applicant’s goods is not buying on impulse as a tactical vest is a protective item which could save one’s life. Similarly, in choosing carpet or carpet tile, consumers are very discriminating and take lots of time before making a decision.
The C.A.F.C. has cautioned the P.T.O. not to overlook the great importance of consumer sophistication in deciding whether confusion is likely. The decision in Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992) is instructive. The C.A.F.C. there held that confusion was unlikely between E.D.S. for computer services and EDS for power supplies and battery chargers because the buyers were sophisticated commercial purchasers. 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.” 21 U.S.P.Q.2d at 1392.
With the above, Applicant respectfully requests that the Examining Attorney withdraw the cited mark and approve the instant application for publication.