| 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 | 87307490 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/87307490/mark.png |
| LITERAL ELEMENT | NOBLE |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
REMARKS Section 2(d) Refusal – Likelihood of Confusion The Examining Attorney has refused registration of the mark of this application because of a likelihood of confusion with the mark in U.S. Registration No. 3707485. The applied-for mark is “Noble” in stylized font inside a slanted rectangular outline for, in relevant part, goods relating to automobiles and automotive parts in International Class 12. The mark for Registration No. 3707485 (“the ‘485 Registration”) is “NOBLE” in standard characters for “Fiberglass reinforced plastic exterior panels for use in the manufacture of recreational vehicles and truck trailers” in International Class 12. Applicant respectfully traverses this refusal and submits that there is no likelihood of confusion between its mark and the cited mark. In determining whether there is confusing similarity between two marks, In re DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) sets forth several factors which may be considered, although each case must be decided on its own facts and each factor may from case to case play a dominant role. 476 F.2d at 1361-1362. One of the most important factors is the similarity of the goods to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin, association or sponsorship is likely. In re August Stork K.G., 218 U.S.P.Q. 823 (T.T.A.B. 1983). Dissimilarity of the Goods and Services, and Channels of Trade Applicant submits that the use of the marks at issue here on entirely different goods and services dispels any likelihood of confusion. This is a key consideration under the DuPont factors in this case because it indicates that the goods will pass through distinct channels of trade, which will avoid consumer confusion. The cited ‘485 Registration specifically states that the goods are for use only in the manufacture of recreational vehicles and truck trailers i.e., the goods are panels used to fabricate the exterior of these two specific types of vehicles. Thus, these goods will travel through limited channels of trade since the only prospective customers are companies that manufacture recreational vehicles and truck trailers. In fact, the promotional materials from the website for the company that owns this registration makes it clear that these goods are intended for manufacturers of recreational vehicles. In contrast, the goods of this application are for use on automobiles (specifically, the automobiles designed by the Applicant), and are intended to be sold to automobile consumers or dealers that work on Applicant’s automobiles. As a result, there is no overlap in the customers or channels of trade for the goods of Applicant’s mark and the goods of the mark of the ‘485 Registration. The ‘485 Registrant’s products are commercial products sold to recreational vehicle and truck trailer manufacturers, while the Applicant’s products are sold to automobile consumers or dealers that work on Applicant’s automobiles. Thus, Applicant’s and Registrant’s products would not be expected to emanate from the same producers. In short, the goods of the parties’ marks are sold for totally different purposes, to different consumers and through different channels of trade, such that confusion is not at all likely to occur. Conclusion Applicant respectfully submits that when viewed in connection with the parties’ disparate goods, there is no likelihood of confusion between Applicant’s mark and the cited registrations. In light of the above amendments and remarks, Applicant respectfully requests that the Examining Attorney’s refusal of registration be withdrawn and that the subject mark be passed to publication. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 012 |
| DESCRIPTION | |
| Brake calipers for land vehicles; Aftermarket automobile accessories, namely, car interior organizer bags, nets and trays specially adapted for fitting in vehicles; Aftermarket automobile accessories, namely, luggage bags specially adapted for fitting in the trunk of vehicles; Auto aftermarket accessories, namely, vehicle custom grills; Automobile bodies; Automobile bumpers; Automobile door handles; Automobile gear sticks; Automobiles; Automobiles and structural parts therefor; Automotive body kits comprising external structural parts of automobiles; Automotive door handle scratch guards; Automotive hood ornaments; Automotive interior paneling; Automotive interior trim; Badges for vehicles; Bodies for vehicles; Bodyworks for motor vehicles; Bumpers for automobiles; Cars; Chassis for motor vehicles; Coachwork for motor vehicles; Dashboards; Doors for automobiles; Doors for vehicles; Engines for land vehicles; Fitted automotive seat covers; Fitted vehicle seat covers; Gas caps for land vehicles; Gear lever knobs for vehicles; Handbrake knobs for vehicles; Head-rests for vehicle seats; Insignia for vehicles; License plate fasteners; License plate frames; Metal parts for vehicles, namely, automotive exterior and interior metal decorative and protective trim; Motor car convertible tops; Motor car doors; Motor car seats; Motor car windows; Motor cars; Motor vehicles, namely, automobiles, trucks, vans, sport utility vehicles and structural parts therefor; Motor vehicles, namely, concept motor vehicles; Motor vehicles, namely, custom hot rods; Motor vehicles, namely, passenger automobiles, their structural parts, trim and badges; Mud flaps for vehicles; Mudguards; Novelty license plate holders; Pre-designed vinyl vehicle wraps specially adapted for vehicles; Racing cars; Racing motor cars; Safety seats for children, for vehicles; Seat safety harnesses for motor cars; Seats for automobiles; Shift boots for motor vehicles; Sports cars; Steering wheel covers for automobiles; Steering wheels for vehicles; Structural parts for automobiles; Sun blinds adapted for automobiles; Three-wheeled motor vehicles; Upholstery for vehicles; Valve stems for vehicle tires; Vehicle bumpers; Vehicle chassis; Vehicle hood and fender louvers and vents; Vehicle hoods; Vehicle running boards; Vehicle seat cushions; Vehicle seat protectors; Vehicle side view mirror cover; Vehicle tire valve stem caps; Vehicle wheel rims; Wheel covers; Wind blockers to be affixed in the passenger area of land vehicles | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 07/27/2007 |
| FIRST USE IN COMMERCE DATE | At least as early as 07/27/2007 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 012 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Automobiles; Automobiles and structural parts therefor; Automotive body kits comprising external structural parts of automobiles; Automotive hood ornaments; Automotive interior and exterior trim; Engines for automobiles and vehicles; Parts and fittings for automobiles and vehicles and engines; Badges for vehicles; Bodies for automobiles and motor vehicles; Chassis for automobiles and motor vehicles; Dashboards; Fitted automotive seat covers; Motor vehicles, namely, concept motor vehicles, custom hot rods, passenger automobiles, racing cars, sports cars, and three-wheeled motor vehicles; Structural parts for automobiles | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 07/27/2007 |
| FIRST USE IN COMMERCE DATE | At least as early as 07/27/2007 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Hoover Chan/ |
| SIGNATORY'S NAME | Hoover Chan |
| SIGNATORY'S POSITION | President |
| SIGNATORY'S PHONE NUMBER | 925-455-1066 |
| DATE SIGNED | 04/24/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Apr 24 19:07:33 EDT 2017 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.XX-2 0170424190733531762-87307 490-58084d6f27ea9c4903ced 81155c737b1923a07822c8f2b 2ff6bedc4bf39cd1d7923-N/A -N/A-20170424185935927104 |
| 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) |
REMARKS
Section 2(d) Refusal – Likelihood of Confusion
The Examining Attorney has refused registration of the mark of this application because of a likelihood of confusion with the mark in U.S. Registration No. 3707485.
The applied-for mark is “Noble” in stylized font inside a slanted rectangular outline for, in relevant part, goods relating to automobiles and automotive parts in International Class 12.
The mark for Registration No. 3707485 (“the ‘485 Registration”) is “NOBLE” in standard characters for “Fiberglass reinforced plastic exterior panels for use in the manufacture of recreational vehicles and truck trailers” in International Class 12.
Applicant respectfully traverses this refusal and submits that there is no likelihood of confusion between its mark and the cited mark. In determining whether there is confusing similarity between two marks, In re DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) sets forth several factors which may be considered, although each case must be decided on its own facts and each factor may from case to case play a dominant role. 476 F.2d at 1361-1362. One of the most important factors is the similarity of the goods to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin, association or sponsorship is likely. In re August Stork K.G., 218 U.S.P.Q. 823 (T.T.A.B. 1983).
Dissimilarity of the Goods and Services, and Channels of Trade
Applicant submits that the use of the marks at issue here on entirely different goods and services dispels any likelihood of confusion. This is a key consideration under the DuPont factors in this case because it indicates that the goods will pass through distinct channels of trade, which will avoid consumer confusion.
The cited ‘485 Registration specifically states that the goods are for use only in the manufacture of recreational vehicles and truck trailers i.e., the goods are panels used to fabricate the exterior of these two specific types of vehicles. Thus, these goods will travel through limited channels of trade since the only prospective customers are companies that manufacture recreational vehicles and truck trailers. In fact, the promotional materials from the website for the company that owns this registration makes it clear that these goods are intended for manufacturers of recreational vehicles.
In contrast, the goods of this application are for use on automobiles (specifically, the automobiles designed by the Applicant), and are intended to be sold to automobile consumers or dealers that work on Applicant’s automobiles.
As a result, there is no overlap in the customers or channels of trade for the goods of Applicant’s mark and the goods of the mark of the ‘485 Registration. The ‘485 Registrant’s products are commercial products sold to recreational vehicle and truck trailer manufacturers, while the Applicant’s products are sold to automobile consumers or dealers that work on Applicant’s automobiles. Thus, Applicant’s and Registrant’s products would not be expected to emanate from the same producers. In short, the goods of the parties’ marks are sold for totally different purposes, to different consumers and through different channels of trade, such that confusion is not at all likely to occur.
Conclusion
Applicant respectfully submits that when viewed in connection with the parties’ disparate goods, there is no likelihood of confusion between Applicant’s mark and the cited registrations.
In light of the above amendments and remarks, Applicant respectfully requests that the Examining Attorney’s refusal of registration be withdrawn and that the subject mark be passed to publication.