| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87396901 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87396901/mark.png |
| LITERAL ELEMENT | PREMIER |
| 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) | |
|
Response to Refusal of Registration under Section 2(d), 15 U.S.C. § 1052(d)
Applicant respectfully submits that, based on the differences in the appearance, sound, and commercial impression of the marks, as well as the differences between the goods and their respective trade channels as explained below, there is little likelihood of consumer confusion between the marks.
The likelihood of confusion determination is made on a case-by-case basis. In re Dixie Restaurants Inc., 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). The test for likelihood of confusion is whether a 'reasonably prudent consumer' in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks. In re E.J. DuPont de Nemours and Co., 177 U.S.P.Q. 563 (C.C.P.A 1973). The DuPont factors are utilized to make this determination. The DuPont factors relevant to the present case are as follows: (1) the dissimilarity between the marks as to appearance, sound, and commercial impression; (2) the dissimilarity of the nature of the goods offered under the respective marks; and (3) the dissimilarity of established trade channels through which the marks are likely to be sold.
Applicant initially notes that established authority requires marks to be compared in their entirety for similarities in key DuPont factors such as appearance and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 160 (Fed. Cir. 2014); TMEP § 1207.01(b)(b)(v).
Accordingly, when viewed in their entirety and as a whole, Applicant maintains that the marks are sufficiently dissimilar in appearance have a different commercial impression because Registrant’s mark distinctly uses the different spelling of “PREMIERE”, and also specifically recites “PREMIERE HOT TUBS”. Applicant’s mark includes a spelling of “PREMIER” which Applicant respectfully submits has a different connotation and impression in the context of appearance and commercial impression, and Applicant respectfully submits that because the marks are distinct in visual appearance, consumers are unlikely to be confused as to the source of either party's offerings.
Applicant further notes a dissimilarity of the nature of goods offered under each of the respective marks. Registrant’s mark is directed towards hot tubs, as noted in the mark itself “PREMIERE HOT TUBS”. Applicant’s mark is directed at infrared saunas that use infrared heater elements to administer heat in an enclosed space. While the Office Action asserts that “hot tubs and saunas are related goods”, Applicant respectfully submits that hot tubs associated with Registrant and infrared sauna structures associated with Applicant, and as specifically recited in the description of goods, are sufficiently different to avoid a likelihood of consumer confusion as consumers would not necessarily expect a manufacturer of hot tubs to also make infrared sauna enclosures.
Applicant further notes that customers in the established trade channels would be sophisticated customers, and that because the likely consumers of both marks are sophisticated and knowledgeable, there is substantially less chance of confusion.
Circumstances that suggest consumers exercise care in purchasing minimize the likelihood of confusion. See In re N.A.D., Inc., 754 F.2d 996, 999-1000 (Fed. Cir. 1985); TMEP § 1207.01(vii) ("circumstances suggesting care in purchasing may tend to minimize the likelihood of confusion.") Goods that are sold to consumers that have a sophisticated knowledge of a given activity are less likely to be confused with goods that are sold to a different class of sophisticated buyers. See Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ 2d 1388, 1392 (Fed. Cir. 1992). Furthermore, the degree of care factor plays a significant role in minimizing potential confusion where the subject goods fail to constitute "impulse" goods. See Astra Pharm. Prods. Inc. v. Beckman Instruments, Inc., 718 F.2d 1201 , 1206 (lst Cir. 1983) (finding that blood analyzers that cost between $35,000 to $60,000 require careful consideration likely to result in added consumer scrutiny and examination).
While the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are immune from source confusion, circumstances suggesting care in purchasing may tend to minimize the likelihood of confusion. TMEP § 1207.01(vii).
Here, the purchasers of both Applicant’s and Registrant’s products are likely to be sophisticated and take considerable time to research their purchasing decisions before taking action. Both Applicant’s and Registrant’s products are not impulse goods, and are significant purchases. Consumers will want to research and identify which products will meet their needs, and be compatible with their intended uses. Both commercial and residential consumers purchasing hot tubs and saunas will be sophisticated consumers.
Finally, Applicant wishes to address the lack of fame in both marks. Applicant’s and Registrant’s marks are unlikely to cause consumer confusion because the marks are not famous.
Fame of a mark can be established by the length of time the mark has been in use, the volume of sales and advertising expenditures, as well as the widespread unsolicited media attention it has garnered. See ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007). In order to obtain fame in niche market, the mark must be so recognized within the specific field that nearly everyone recognizes it.
Applicant submits that the marks have not obtained the required level of fame for this element to side in their favor in a likelihood of confusion analysis. There appears to be no wide commercial or news recognition of the marks. As the likelihood of confusion decreases in instances in which a mark is not famous, the fact that the registered marks are not famous further decreases the possibility of consumer confusion between the marks.
For at least these reasons, Applicant respectfully submits that there is no significant likelihood of confusion between Applicant’s mark and Registrant’s mark.
Response to Refusal of Registration under Section 2(e)(1), 15 U.S.C. § 1052(e)(1)
Applicant's application was refused on the basis that Applicant’s mark is allegedly a descriptive mark. Applicant respectfully maintains that Applicant’s mark is suggestive.
The focus of the "merely descriptive" test is whether the function, characteristics, or use of the mark are immediately and directly conveyed, or, in other words, whether they are always and only conveyed. TTAB has set a high threshold under which a mark can be categorized as "merely descriptive." Applicant respectfully submits that Applicant’s mark does not cross this threshold.
The Court of Appeals for the Second Circuit in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (1976), identified four different categories of terms with respect to trademark protection. The four different categories, arranged in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful.
The court also recognized that the lines of demarcation are not always clear. The difficulties are compounded because a term that is in one category for a particular product may be in quite a different category for another product. A term may shift from one category to another in light of differences in usage throughout time, or have one meaning to one group of users and a different meaning to others. The courts further described that a term is suggestive if it requires imagination, thought, and perception to reach a conclusion as to the nature of goods. In the present case, Applicant’s mark falls under the category of "suggestive" marks, rather than descriptive. This is because the mark requires that a reasonable and prudent consumer go through a thinking process and apply some imagination to find out the exact nature of Applicant’s goods and services. Applicant’s mark does not immediately convey any idea as to the ingredient, or any other characteristics of Applicant’s goods.
Accordingly, Applicant respectfully disagrees with the Examining Attorney's findings, and requests the mark be registered on the Principal Register, as the mark can properly be classified as a suggestive mark. Courts have commonly held that a stop-and-pause moment is the key component of a suggestive mark. See Abercrombie & Fitch Co. v. Hunting World, Inc., 1976 537 F.2d 4 (2nd Cir. 1974) ("a term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods."). Applicant's mark requires such thought and perception in order for a consumer to understand the nature of the product provided under the mark.
Moreover, Applicant notes that competitors do not need the terms found in Applicant’s mark to describe their goods. As discussed above, the meaning conveyed by the terms found in Applicant’s mark is not clear in relation to Applicant’s goods. Competitors can describe their goods without using the words found in Applicant’s mark. Nor are the terms found in Applicant’s mark required to describe the nature of Applicant’s goods.
Conclusion
Applicant respectfully disagrees with the Examining Attorney’s evaluation regarding both a likelihood of confusion with an existing mark and the conclusion that the mark is merely descriptive. Comparing Applicant's and Registrant's marks within the framework of the DuPont factors underscores significant differentiation between the marks. Applicant respectfully submits that numerous distinct differences, for all of the reasons set forth above, makes a finding of likelihood of confusion inappropriate. Additionally, Applicant respectfully submits that Applicant’s mark is not descriptive, but merely suggestive due to the high degree of imagination needed to connect the mark and products, and the ability for competitors to use additional marks to describe their goods. Because there is little likelihood of confusion, mistake, or deception in the marketplace, and because the mark is at most, suggestive, Applicant respectfully requests that the Examining Attorney should approve Applicant's mark for publication in the Official Gazette. If the Examining Attorney feels that a phone call would facilitate the examination process, or if publication in the Supplemental Register is appropriate, the Examining Attorney is encouraged to contact Applicant’s representative. |
|
| GOODS AND/OR SERVICES SECTION (011)(no change) | |
| GOODS AND/OR SERVICES SECTION (035)(class deleted) | |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Nirav Thakor/ |
| SIGNATORY'S NAME | Nirav Thakor |
| SIGNATORY'S POSITION | Attorney of Record, CA Bar Member |
| SIGNATORY'S PHONE NUMBER | 510-900-9501 |
| DATE SIGNED | 08/17/2018 |
| AUTHORIZED SIGNATORY | YES |
| CONCURRENT APPEAL NOTICE FILED | NO |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Aug 17 19:44:26 EDT 2018 |
| TEAS STAMP | USPTO/RFR-XXX.XX.XXX.XXX- 20180817194426836393-8739 6901-610fd90c2385df2628f2 de6ac3d14eada9b7ed49b64bf 5308b73ef7f87183bb9-N/A-N /A-20180817194119363632 |
| 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) |
Response to Refusal of Registration under Section 2(d), 15 U.S.C. § 1052(d)
Applicant respectfully submits that, based on the differences in the appearance, sound, and commercial impression of the marks, as well as the differences between the goods and their respective trade channels as explained below, there is little likelihood of consumer confusion between the marks.
The likelihood of confusion determination is made on a case-by-case basis. In re Dixie Restaurants Inc., 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). The test for likelihood of confusion is whether a 'reasonably prudent consumer' in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks. In re E.J. DuPont de Nemours and Co., 177 U.S.P.Q. 563 (C.C.P.A 1973). The DuPont factors are utilized to make this determination. The DuPont factors relevant to the present case are as follows:
(1) the dissimilarity between the marks as to appearance, sound, and commercial impression;
(2) the dissimilarity of the nature of the goods offered under the respective marks; and
(3) the dissimilarity of established trade channels through which the marks are likely to be sold.
Applicant initially notes that established authority requires marks to be compared in their entirety for similarities in key DuPont factors such as appearance and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 160 (Fed. Cir. 2014); TMEP § 1207.01(b)(b)(v).
Accordingly, when viewed in their entirety and as a whole, Applicant maintains that the marks are sufficiently dissimilar in appearance have a different commercial impression because Registrant’s mark distinctly uses the different spelling of “PREMIERE”, and also specifically recites “PREMIERE HOT TUBS”. Applicant’s mark includes a spelling of “PREMIER” which Applicant respectfully submits has a different connotation and impression in the context of appearance and commercial impression, and Applicant respectfully submits that because the marks are distinct in visual appearance, consumers are unlikely to be confused as to the source of either party's offerings.
Applicant further notes a dissimilarity of the nature of goods offered under each of the respective marks. Registrant’s mark is directed towards hot tubs, as noted in the mark itself “PREMIERE HOT TUBS”. Applicant’s mark is directed at infrared saunas that use infrared heater elements to administer heat in an enclosed space. While the Office Action asserts that “hot tubs and saunas are related goods”, Applicant respectfully submits that hot tubs associated with Registrant and infrared sauna structures associated with Applicant, and as specifically recited in the description of goods, are sufficiently different to avoid a likelihood of consumer confusion as consumers would not necessarily expect a manufacturer of hot tubs to also make infrared sauna enclosures.
Applicant further notes that customers in the established trade channels would be sophisticated customers, and that because the likely consumers of both marks are sophisticated and knowledgeable, there is substantially less chance of confusion.
Circumstances that suggest consumers exercise care in purchasing minimize the likelihood of confusion. See In re N.A.D., Inc., 754 F.2d 996, 999-1000 (Fed. Cir. 1985); TMEP § 1207.01(vii) ("circumstances suggesting care in purchasing may tend to minimize the likelihood of confusion.") Goods that are sold to consumers that have a sophisticated knowledge of a given activity are less likely to be confused with goods that are sold to a different class of sophisticated buyers. See Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ 2d 1388, 1392 (Fed. Cir. 1992). Furthermore, the degree of care factor plays a significant role in minimizing potential confusion where the subject goods fail to constitute "impulse" goods. See Astra Pharm. Prods. Inc. v. Beckman Instruments, Inc., 718 F.2d 1201 , 1206 (lst Cir. 1983) (finding that blood analyzers that cost between $35,000 to $60,000 require careful consideration likely to result in added consumer scrutiny and examination).
While the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are immune from source confusion, circumstances suggesting care in purchasing may tend to minimize the likelihood of confusion. TMEP § 1207.01(vii).
Here, the purchasers of both Applicant’s and Registrant’s products are likely to be sophisticated and take considerable time to research their purchasing decisions before taking action. Both Applicant’s and Registrant’s products are not impulse goods, and are significant purchases. Consumers will want to research and identify which products will meet their needs, and be compatible with their intended uses. Both commercial and residential consumers purchasing hot tubs and saunas will be sophisticated consumers.
Finally, Applicant wishes to address the lack of fame in both marks. Applicant’s and Registrant’s marks are unlikely to cause consumer confusion because the marks are not famous.
Fame of a mark can be established by the length of time the mark has been in use, the volume of sales and advertising expenditures, as well as the widespread unsolicited media attention it has garnered. See ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007). In order to obtain fame in niche market, the mark must be so recognized within the specific field that nearly everyone recognizes it.
Applicant submits that the marks have not obtained the required level of fame for this element to side in their favor in a likelihood of confusion analysis. There appears to be no wide commercial or news recognition of the marks. As the likelihood of confusion decreases in instances in which a mark is not famous, the fact that the registered marks are not famous further decreases the possibility of consumer confusion between the marks.
For at least these reasons, Applicant respectfully submits that there is no significant likelihood of confusion between Applicant’s mark and Registrant’s mark.
Response to Refusal of Registration under Section 2(e)(1), 15 U.S.C. § 1052(e)(1)
Applicant's application was refused on the basis that Applicant’s mark is allegedly a descriptive mark. Applicant respectfully maintains that Applicant’s mark is suggestive.
The focus of the "merely descriptive" test is whether the function, characteristics, or use of the mark are immediately and directly conveyed, or, in other words, whether they are always and only conveyed. TTAB has set a high threshold under which a mark can be categorized as "merely descriptive." Applicant respectfully submits that Applicant’s mark does not cross this threshold.
The Court of Appeals for the Second Circuit in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (1976), identified four different categories of terms with respect to trademark protection. The four different categories, arranged in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful.
The court also recognized that the lines of demarcation are not always clear. The difficulties are compounded because a term that is in one category for a particular product may be in quite a different category for another product. A term may shift from one category to another in light of differences in usage throughout time, or have one meaning to one group of users and a different meaning to others. The courts further described that a term is suggestive if it requires imagination, thought, and perception to reach a conclusion as to the nature of goods. In the present case, Applicant’s mark falls under the category of "suggestive" marks, rather than descriptive. This is because the mark requires that a reasonable and prudent consumer go through a thinking process and apply some imagination to find out the exact nature of Applicant’s goods and services. Applicant’s mark does not immediately convey any idea as to the ingredient, or any other characteristics of Applicant’s goods.
Accordingly, Applicant respectfully disagrees with the Examining Attorney's findings, and requests the mark be registered on the Principal Register, as the mark can properly be classified as a suggestive mark. Courts have commonly held that a stop-and-pause moment is the key component of a suggestive mark. See Abercrombie & Fitch Co. v. Hunting World, Inc., 1976 537 F.2d 4 (2nd Cir. 1974) ("a term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods."). Applicant's mark requires such thought and perception in order for a consumer to understand the nature of the product provided under the mark.
Moreover, Applicant notes that competitors do not need the terms found in Applicant’s mark to describe their goods. As discussed above, the meaning conveyed by the terms found in Applicant’s mark is not clear in relation to Applicant’s goods. Competitors can describe their goods without using the words found in Applicant’s mark. Nor are the terms found in Applicant’s mark required to describe the nature of Applicant’s goods.
Conclusion
Applicant respectfully disagrees with the Examining Attorney’s evaluation regarding both a likelihood of confusion with an existing mark and the conclusion that the mark is merely descriptive. Comparing Applicant's and Registrant's marks within the framework of the DuPont factors underscores significant differentiation between the marks. Applicant respectfully submits that numerous distinct differences, for all of the reasons set forth above, makes a finding of likelihood of confusion inappropriate. Additionally, Applicant respectfully submits that Applicant’s mark is not descriptive, but merely suggestive due to the high degree of imagination needed to connect the mark and products, and the ability for competitors to use additional marks to describe their goods. Because there is little likelihood of confusion, mistake, or deception in the marketplace, and because the mark is at most, suggestive, Applicant respectfully requests that the Examining Attorney should approve Applicant's mark for publication in the Official Gazette. If the Examining Attorney feels that a phone call would facilitate the examination process, or if publication in the Supplemental Register is appropriate, the Examining Attorney is encouraged to contact Applicant’s representative.