TEAS Request Reconsideration after FOA

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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 87376087 SHIELD(Standard Characters, see http://uspto.report/TM/87376087/mark.png) has been amended as follows:

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

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

RESPONSE TO OFICE ACTION

Applicant, Mitsui & Co., Ltd., hereby responds to the Office Action dated January 12, 2018 in which the U.S. Patent and Trademark Office (“PTO”) refused the Applied-For-Mark “SHIELD” on the Principal Register.

The Examining Attorney sustained the Refusal of the Applied-For-Mark citing Registration No. 4808805 for SHIELD CLASSIC, and refused registration under Section 2(d) likelihood of confusion.

A review of the relevant likelihood of confusion factors demonstrates that there is no likelihood of confusion between Applicant’s Mark and the Cited Mark.

(1)      No Likelihood of Confusion

          In determining whether a likelihood of confusion exists, the fundamental inquiry goes to the cumulative effect of the differences in the marks and the goods or services at issue.  Federated Foods, Inc. v. Fort Howard Paper Co., 192 U.S.P.Q. 24, 29 (C.C.P.A. 1976).  Under the Lanham Act, a refusal to register requires that such confusion as to the source of the goods and/or services is not merely possible, but likely.  A mere possibility of confusion is an insufficient basis for rejections under Section 2(d).  In re Massey-Ferguson, 222 U.S.P.Q. 367, 368 (T.T.AB. 1983).  In the present case, the differences in the respective marks, in light of all the relevant factors, lead to a finding of no likelihood of confusion.

 

1. Different Commercial Impression

When examining the similarity or dissimilarity of marks, the marks must be compared “in their entireties as to appearance, sound, connotation and commercial impression.”  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); see also TMEP §1207.01(b). 

In analyzing the similarity of the marks, it is inappropriate to dissect the marks of the parties and to discard or ignore all other non-similar elements, as the marks should be viewed in their entireties.  Daddy’s Junky Music Stores Inc. v. Big Daddy’s Family Music Center, 109 F.3d 275, 283 (6th. Cir. 1997).  To do so is contrary to the principles of trademark law.  A trademark should not be split into its component parts and each part compared with parts of the conflicting mark to determine the likelihood of confusion.  Little Caesar Enterprises Inc. v. Pizza Caesar Inc., 4. USPQ 2d 1942 (6th Cir, 1987).

When the marks of the parties are viewed in their entireties, Applicant's mark significantly differs from the cited marks in appearance and overall commercial impression.

In this case, the Applied-For Mark and the Cited Mark are visually, phonetic, and audibly distinct due to the presence of the wording “CLASSIC” A visual contrast between the Applied-for-Mark and the cited Application infers that they do not look similar, reducing any possible risk of confusion/and or association as follows:

SHIELD

SHIELD CLASSIC

The wording “CLASSIC” of the cited Registration is sufficient to distinguish the marks and prevent any confusion.  Applicant's position is supported by several analogous cases featuring similarly constructed marks.  For example, in Colgate-Palmolive C. v. CarterWallace, Inc., 167 USPQ 529 (C.C.P.A. 1970) the mark "PEAK PERIOD" for personal deodorants was found not to be confusingly similar to the mark "PEAK" for dentifrices.

See also Bell Laboratories, inc. v. Colonial Products, Inc., 231 USPQ 569, 572 (S.D. Fla. 1986) (emphasizing the difference in sight and sound between "FINAL" and "FINAL FLIP," both for pesticides); Gruner + Jahr USA Publishing v. Meredith Corp,. 26 USPQ2d 1583, 1587 (2nd  Cir. 1993) (holding that "PARENTS" and "PARENTS DIGEST" for the same type of magazines were not confusingly similar); In re Ferrero, 178 USPQ 167, 168 (C.C.P.A. 1973)(holding that "TIC TAC"  for candy was not confusingly similar to "TIC TAC DOE" for ice cream); In re Hearst Corp., 25 USPQ2nd 1238, 1239 (Fed. Cir. 1992) (holding that "VARGAS" and "VARGA GIRL," both for calendars, were sufficiently different so that there was no likelihood of confusion).

Therefore, the differences between Applicant’s mark and the Cited mark outweigh any similarities that the marks may share, and will prevent any confusion on the part of consumers.

II.       The Parties' Goods are Distinguishable

          Moreover, there is no likelihood of confusion due to the differences in the parties' goods.

A review of the goods listed in the Applied-For Mark and the Cited Registrations reveals that the goods are not commercially related, as follows:

 

Goods Listed in the Applied-For Mark (as Amended)

Goods Listed in the Cited Registration

Class 24: waterproof fabric for use in the manufacture of sportswear, work clothing, outdoor clothing, and sleeping bags

Class 24: Textiles and textile goods, namely, fabrics, cotton fabrics, felt fabrics, faux suede fabrics, satin fabrics, silk fabrics, printed fabrics, woven fabrics; upholstery materials, namely, fabrics, cotton fabrics, felt fabrics, suede fabrics, satin fabrics, silk fabrics, printed fabrics, woven fabrics; materials for covering walls, namely, textile and fabric wall hangings; materials for soft furnishings, namely, textiles and fabrics for the further manufacture of soft furnishings; curtain materials of fabric and textile; fabrics for the manufacture of upholstered goods; flame retardant fabrics for the further manufacture of upholstered goods; waterproof fabrics for the further manufacture of upholstered goods; water resistant fabrics for the further manufacture of upholstered goods; laminated fabrics for the further manufacture of upholstered goods; vinyl cloth for use in the manufacture of upholstered goods; plastic substitutes for fabrics in the nature of vinyl fabric for use in the manufacture of upholstered items; upholstery fabrics; fabrics for the further manufacture of wall coverings; fabrics for furnishings; fabrics for soft furnishings; fabrics for seating areas, namely, for the further manufacture of furniture; curtain fabrics; soft furnishings, namely, curtains, cushion covers, bed sheets, duvet covers, pillow covers, bed blankets, blanket throws, lap blankets, travelling blankets, throws, coverlets; curtains; curtains of textile material; curtains made of plastics; shower curtains; door curtains in the nature of fabric curtains for separating rooms; fabric curtains for cubicles; fabric curtains for hospital cubicles; replacement parts for the aforesaid goods

 

Applicant asserts that the proposed limitation of Applicant’s goods submitted with this Response dismiss any possibility of risk of confusion and/or association due to the nature, application, use and industry of the parties’ goods.  Therefore, confusion regarding source or origin of the products is unlikely. 

In the present case, Applicant’s goods are clearly distinguishable from the goods listed in the Cited Registration. The goods are not complementary and travel in different channels. Further, the target consumers differ in Applicant’s mark and cited Registration, enhancing the distinctiveness of the marks to coexist in the market.

Again, Applicant submits that the Applied-For Mark will be used to manufacture sportswear, work clothing, outwear-clothing and sleeping bags, while the Cited Registration is used to manufacture upholstered items, walls, and curtains. Both, Applicant’s goods, and Cited Registration’s goods are highly specific and specialized items which need to fulfill with industrial standards and official specifications, limiting the market and the trade channels in which the products are offered.

Applicant respectfully submits that the differences in the parties’ goods alone are sufficient to obviate any likelihood of confusion.  See, e.g., In re Majestic Distilling Company, Inc., 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) (“Not all of the DuPont factors may be relevant or of equal weight in a given case, and 'any one of the factors may control a particular case.'").

Applicant submits that Applicant’s industry, market, and consumer differs from the Cited Registrations. It is clear that the nature, application, use, and the industry of the parties’ goods differ.  Therefore, confusion regarding source or origin of the products is unlikely. 

III.      Sophisticated Purchasers

Applicant incorporated to this Response the arguments and documents submitted on December 18, 2017, regarding the nature of consumers. Further minimizing any likelihood of confusion, the sophistication of the consumers is a key factor in this case.  It has been well established that confusion is less likely to arise when consumers deliberate over purchases.  See L.J. Mueller Furnace Co. v. United Conditioning Corp., 106 USPQ 112 (C.C.P.A. 1955); Magnaflux Corp. v. Sonoflux Corp., 109 USPQ 313 (C.C.P.A. 1956); Minnesota Mining and Manufacturing Company v. Electronic Memories, Inc., 173 USPQ 178 (C.C.P.A. 1972).

The degree of care exercised by consumers in purchasing goods, and the degree of sophistication of the relevant consumer group is a key factor that negates any likelihood of confusion in this case.  TMEP § 1207.01(d)(vii); Arrow Fastener Co. v. The Stanley Works, 35 USPQ2d 1449, 1458 (2d Cir. 1995); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668, 1669 (T.T.A.B. 1986).  If a purchasing decision is made after careful examination of the product, this is usually sufficient to negate a likelihood of confusion between the marks containing similarities.  Stoffer Corp. v. Health Valley Natural Foods, Inc., 1 USPQ 2d 1900 (T.T.A.B. 1986). See In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 USPQ 969, 971 (Fed. Cir. 1985) (concluding that there would be no likelihood of confusion merely because of the similarity between the marks NARCO and NARKOMED).

Customers of fabrics, and specially, customers of textiles used to manufacture upholstered items (Cited Registrant’s products), and waterproof textiles (Applicant’s goods) are savvy and well informed of the products that they acquired. They will only acquire the products after adopting several analysis and studies regarding the raw material used to elaborate final products. Customers look for new advances and technology, scientific techniques, and engineer processes involved in the fabrication of the textiles. They are concern about the brand, price, new green trends, quality, among others factors. As such, the decision of acquiring fabrics of this nature is made after carefully examination of the materials, and composition. They would only seek out those goods that matched the purchaser’s individual needs, and follow the official regulations. Applicant submits hereby several online articles which describe the consumer’s behaviors and industrial trends adopted in the market to select fabrics and textiles used to manufacture household items and clothing. Please see Exhibit A.

In light of the above it is clear that the purchasers of Registrant’s goods and Applicant’s goods are sophisticated and knowledgeable.  Purchases would not be made in a hasty manner. Great care would be exercised during the purchasing process.  It has been stated that where the nature of the goods demands this kind of deliberation, confusion is hardly even possible, much less likely.  The Court of Customs and Patent Appeals has stated that other things being equal, confusion is less likely where goods are purchased after careful consideration than where they are purchased casually.  See Magna Flux v. Sonoflex Corp., 231 F.2d 669 (C.C.P.A. 1956). 

This care in purchasing and the sophistication and knowledge of the purchasers, when coupled with the differences in the marks results in a situation where confusion is hardly possible, much less likely

Applicant incorporates hereto its argument and documents submitted on December 18, 2017, that the relevant consumers do distinguish the marks SHIELD and the SHIELD-formative marks even when the marks are used for fabrics and/or related goods such as clothing, as in this case. The Examining Attorney indicated that the marks cited by Applicant pertain to finished products for end consumers. However, Applicant submits that the registered marks list “textile” and fabrics,” the same nature of products as in this case. Applicant respectfully requests the Examining Attorney to refer the following marks:

Marks	Class/Goods	Applicant/Owner
PERTEX SHIELD	Class 24: Textile fabrics for making waterproof, showerproof, or windproof articles, namely, clothing, sleeping bags, and tents; and Class 25: Outerclothing, namely, waterproof, showerproof, or windproof jackets, pants, or coats; coats; jackets; trousers; anoraks; hoods; hooded robes	Mitsui & Co., Ltd.
HYDRA SHIELD	Class 24: Textile fabrics for use in the manufacture of garments, bags, jackets, gloves, and apparel; Waterproof fabric for manufacturing clothing, furniture and automobile upholstery, and luggage; Non-woven textile fabrics; Textile fabrics for use in the manufacture of garments, bags, jackets, gloves, and apparel; waterproof breathable polyurethane fabric for use as a textile in the manufacture of a lining or insert for clothing	NTA Enterprise, Inc.
MULTISHIELD	Class 24: Curtains; fabric window coverings and treatments, namely, window liners in the nature of draperies; window treatments in the nature of window panels of polyester, cotton and wool; fabric window coverings, namely, curtains and draperies	Ellery Holdings LLC
SOLSHIELD	Class 24: Curtains; fabric window coverings and treatments, namely, window liners in the nature of draperies; window treatments in the nature of window panels of polyester, cotton and wool; fabric window coverings, namely, curtains and draperies	Ellery Holdings LLC
BLOCKSHIELD	Class 24: Curtains; fabric window coverings and treatments, namely, window liners in the nature of draperies; window treatments in the nature of window panels of polyester, cotton and wool; fabric window coverings, namely, curtains and draperies	Ellery Holdings LLC
INTERSHIELD	Class 24: Curtains; fabric window coverings and treatments, namely, window liners in the nature of draperies; window treatments in the nature of window panels of polyester, cotton and wool; fabric window coverings, namely, curtains and draperies	Ellery Holdings LLC
PROTECTO CAMO SHIELD CAMO PATCH	Class 24: Self-adhesive fabrics having camouflage patterns	Protecto Wrap Company
BATTLESHIELD X	Class 24: Textile fabrics for the manufacture of clothing, namely, jackets, parkas, vests, pants, shirts, pullovers, crew necks, mock turtlenecks, overalls, bib overalls, headwear, and gloves	Samtech, LLC
MICROSHIELD	Class 24: Antimicrobial fabric finish or surface treatment composition sold as a component of finished treated or coated fabrics for window fashions	Hunter Douglas Inc
SOFA SHIELD	Class 24: Unfitted fabric furniture covers	Hills Point Industries
CAMO SHIELD	Class 24: Self-adhesive fabrics having camouflage patterns	Protecto Wrap Company
P-SHIELD	Class 24: fabric for shielding electronic components from electromagnetic waves	Polymer Science, Inc.
ECOSHIELD	Class 24: Fabrics for textile use	Victor Innovatex Inc.
FORMASHIELD	Class 24: Resin-saturated fiberglass fabric for use in structural reinforcement, structural repairs, and structural protection	Pipe Wrap LLC
ULTRA-SHIELD	Class 24: Ballistic resistant fabrics for use in the production of ballistic resistant, bulletproof, and blast proof clothing, garments, shoes, shields, and personal body armor	Top-Line Armor Systems, LLC
FPG THERMASHIELD	Class 24: Blanket throws; Blankets for outdoor use; Fabrics for the manufacture of modular panels, heat reflection, insulation, camouflage, shelter; Mixed fiber fabrics; Narrow woven fabrics	ForceProtector Gear, LLC
FLEXSHIELD	Class 24: woven fabrics and textile goods, namely, textile fabrics for use in making clothing; cotton fabrics; woolen fabrics; lining materials, namely, textile used as lining for clothing; fleece fabrics; textile substitute materials made from synthetic material; bath linen; textile towels; blankets, namely, travelling blankets, woolen blankets, fleece blankets	Jack Wolfskin Ausrüstung für Draussen GmbH & Co

 

Accordingly, as no confusion was considered likely between the related previously registered and granted marks, Applicant submits that there is no likelihood of confusion between the Applicant’s mark and the Cited Marks, and respectfully request the Examining Attorney use the same reasoning here.

IV. Highly Suggestive Connotation of the Applied-For-Mark leads to no Risk of Confusion

          The strength or weakness of the marks at issue, and their respective meanings or connotations, must also be considered when determining whether the marks are confusingly similar. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) ; In re Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009).

It has been well established that the meaning or connotation of a mark with respect to the nature of the goods can be used to infer no risk of confusion even when the marks are identical in sound and/or appearance. See, e.g., In re Sears, Roebuck & Co., 2 USPQ2d 1312, 1314 (TTAB 1987) (holding CROSS-OVER for bras and CROSSOVER for ladies’ sportswear not likely to cause confusion, noting that the term "CROSS-OVER" was suggestive of the construction of applicant’s bras, whereas "CROSSOVER," as applied to registrant’s goods, was "likely to be perceived by purchasers either as an entirely arbitrary designation, or as being suggestive of sportswear which "crosses over" the line between informal and more formal wear . . . or the line between two seasons"); In re British Bulldog, Ltd., 224 USPQ 854, 856 (TTAB 1984) (holding PLAYERS for men’s underwear and PLAYERS for shoes not likely to cause confusion, agreeing with applicant's argument that the term "PLAYERS" implies a fit, style, color, and durability suitable for outdoor activities when applied to shoes, but "'implies something else, primarily indoors in nature'" when applied to men’s underwear); In re Sydel Lingerie Co., 197 USPQ 629, 630 (TTAB 1977) (holding BOTTOMS UP for ladies’ and children’s underwear and BOTTOMS UP for men’s clothing not likely to cause confusion, noting that the wording connotes the drinking phrase "Drink Up" when applied to men’s clothing, but does not have this connotation when applied to ladies’ and children’s underwear).

          The term “SHIELD” in connection with the goods listed in the Application (as amended), namely, “waterproof fabric for use in the manufacture of sportswear, work clothing, outdoor clothing, and sleeping bags,” will be perceived and retained by customers as “armor, cover, or protection,” which is highly suggestive of the characteristics or boundaries of the products, but most important such perception will be used by customers to identify the goods in the market. Applicant submits that the Applied-for-Mark implies a different connotation than the cited registration “SHIELD CLASSIC.” By contrast, the cited registration infers classic royal shields or trophies. Applicant submits a printout of a Google search for “SHIELD CLASSIC.” Please see Exhibit B.

          In light of the above, Applicant states that the different highly suggestive connotation of the Applied-for-Mark along with the different nature of the products lead to a conclusion that the risk of confusion and/or association between the Applied-for-Mark and the Cited Registration is unlikely.  

V.       Conclusion

 

An analysis of the facts in the present case supports a conclusion that consumers will not be confused. Applicant submits that, given the differences in the parties respective marks, the nature of the products, the trade channels, the care and sophistication with which a purchase of Applicant’s goods and Cited Registration’s products would be made, as well as the connotation of the Applied-For-Mark there is no likelihood of confusion between Applicant’s mark, and the Cited Mark.  In view of the foregoing, Applicant respectfully requests the Examining Attorney withdraw the refusal and approve Applicant’s Mark for publication in the Official Gazette

EVIDENCE
Evidence in the nature of 1. copies of online articles 2. Copy of print out Google Search and online dictionary has been attached.
Original PDF file:
evi_19911617342-20180712190311628333_._SHIELD-_Final_Response-_Exhibit_A.pdf
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Original PDF file:
evi_19911617342-20180712190311628333_._SHIELD-_Final_Response-_Exhibit_B_pdf.pdf
Converted PDF file(s) ( 7 pages)
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CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 024 for Textile piece goods, namely, fabric for use in the manufacture of articles of clothing and sleeping bags
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. 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, 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/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Textile piece goods, namely, fabric for use in the manufacture of articles of clothing and sleeping bags; waterproof fabric for use in the manufacture of sportswear, work clothing, outdoor clothing, and sleeping bagsClass 024 for waterproof fabric for use in the manufacture of sportswear, work clothing, outdoor clothing, and sleeping bags
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. 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, 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/services that meet the certification standards of the applicant.

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Bassam N. Ibrahim/     Date: 07/12/2018
Signatory's Name: Bassam N. Ibrahim
Signatory's Position: Attorney of Record, VA Bar Member

Signatory's Phone Number: 703.836.6620

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 87376087
Internet Transmission Date: Thu Jul 12 19:43:07 EDT 2018
TEAS Stamp: USPTO/RFR-XX.XX.XXX.XXX-2018071219430794
3086-87376087-610e1e61ba7d6acc6a055ab64c
d3b836b879694fe859ae17f23869e1f186c1cf8e
-N/A-N/A-20180712190311628333