| 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 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87678204 |
| LAW OFFICE ASSIGNED | LAW OFFICE 103 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87678204/mark.png |
| LITERAL ELEMENT | CONFORM |
| 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) | |
|
APPLICANT’S RESPONSE TO THE EXAMINER’S REFUSAL TO REGISTER THE MARK CONFORM ON THE GROUNDS OF LIKELIHOOD OF CONFUSION
The Examiner is of the view that because Applicant’s mark and Registrant’s mark are both CONFORM and are both standard character marks and because Applicant’s metal screws, bolts and rivets and Registrant’s metal extrusions, metal wires, and metal cables are often sold under the same mark as evidenced by on line advertising, the consent agreement that Applicant submitted in response to the previous office action, is not adequate to prevent likelihood of confusion in the US marketplace as to the source or origin of the Applicant’s goods.
Applicant respectfully disagrees. Applicant strongly believes that the consent agreement is far from a “naked” consent agreement and maintains that the terms of this agreement are entirely adequate to prevent “likelihood of confusion” in the marketplace. Both Applicant and Registrant are contract suppliers of their respective goods. Therefore, there are no distributors or other middlemen between the customers and either Applicant or Registrant. See especially Paragraph 3, Provision 3, on page 2 of the consent agreement which makes it clear that both Applicant and Registrant are contract suppliers. Since both the Applicant and the Registrant are contract suppliers and enter into requirements contracts through direct negotiations with their customers concerning the quality of the goods, the quantity of the goods, and the price of the goods, the likelihood of confusion as to the source or origin of the goods is highly unlikely. Therefore, the fact that the Examiner has provided third party internet evidence showing that both Applicant’s metal screws, bolts and rivets and Registrant’s metal extrusions, metal wires, and metal cables are both sold over the internet under the same marks is simply not the whole story. When requirements contracts that are directly negotiated between manufacturer and buyer are concerned as opposed to purchases over the internet through middlemen, the likelihood of confusion is eliminated.
Applicant is aware that the Examiner has cited In re Mastic Inc., 4 USPQ 2d 1292 (CAFC 1997) to support his argument that the present agreement is a “naked” consent and that it is inadequate to prevent likelihood of confusion in the marketplace. However, the facts in Mastic Inc. are entirely distinguishable from those in the present application. In Mastic, Inc. there was a defect in the consent agreement because in the consent agreement the Registrant consented only to the Applicant’s registration of the mark SHURLOK for vinyl siding. The Registrant did not consent to the Applicant’s use of the SHURLOK mark for vinyl siding. On page 1295, left-hand column, first full paragraph of the decision, the court stated the following: Further we note that Flintkote specifically consents only to Mastic’s registration, not use, of the mark SHURLOK for vinyl siding. If Mastic is making the argument that so long as it makes no use in the United States, no confusion will occur such argument has no validity. The Section 2(d) determination must be made on the basis of presumed exposure of both marks to the public in the marketplace.
In the present case, unlike in Mastic, the Registrant has consented to the Applicant’s use and registration of the CONFORM mark for “metal bolts, metal nuts, metal rivets, metal screws” in International Class 6. See Paragraph 7 on page 2 of the agreement.
Furthermore, the Applicant and the Registrant have taken additional steps to minimize any likelihood of confusion. In Paragraph 1 of the agreement, the Applicant has agreed to avoid using the CONFORM mark or any similar mark in connection with goods in Class 7 or Class 9 or in connection with services in Class 40, or in connection with extrusions, cables and wires. In other words, Applicant will avoid using its CONFORM mark to identify any of the goods and services identified in US Trademark Registration 3232886. At the same time, in Paragraph 4 of the agreement the Registrant has agreed not to use its mark CONFORM for metal fasteners in Class 6 including, but not limited to “metal bolts; metal nuts; metal rivets; metal screws.” Thus, Registrant has agreed to avoid using its CONFORM mark to identify itself as the source or origin of any of the goods in the Applicant’s CONFORM application. No such restrictions are found in the fact pattern described in Mastic. And in Paragraph 6 of the agreement, the parties have agreed to cooperate with one another in good faith in the unlikely event of any instances of actual purchaser confusion arising as a result of the Parties’ use of their respective marks and to take such steps as may be reasonably necessary to eliminate or minimize confusion. Again, no such restrictions are found in the fact pattern described in Mastic. That is why the agreement filed in this application between Applicant and Registrant is not a “naked” consent agreement.
In addition, there is no mention in the Mastic decision that either the applicant Mastic, or the Registrant Flintkote, were contract suppliers of their respective goods. As already discussed herein above, the fact that both the Applicant, Arnold, and the Registrant, BWE, are contract suppliers of their respective goods makes a significant difference concerning likelihood of confusion because there is direct negotiation of requirements contract terms between both the Applicant and its customers and the Registrant and its customers. Such direct negotiations minimizes any likelihood of confusion because both the Applicant and the Registrant know their customers and their customers know the Applicant and the Registrant. On the contrary, such was not the case in Mastic. In the last paragraph on page 1295, right hand column, the court indicated that its decision to deny registration of SHURLOK was based at least in part on three factors:
(1) the identity of the marks, (2) the close relationship of the respective products and (3) the identity of distributors and buyers for the goods i.e. the identity of channels of trade.
In the present case, the third factor is clearly absent because both Applicant and Registrant are contract suppliers, and not simply buyers and sellers on the internet. There are no distributors involved . Both the Applicant and the Registrant negotiate the terms of their requirement contracts directly with their buyers.
By no means is the agreement filed in this application between Applicant and Registrant, a “naked” consent agreement and the facts in the present case are entirely distinguishable from those set forth in Mastic. Under these circumstances, there is no likelihood of confusion between the Applicant’s CONFORM mark for the goods identified in this application and the Registrant’s CONFORM mark for the goods identified in the cited registration.
Applicant would like to cite In re Four Seasons Hotels Ltd., 26 USPQ 2d 1071 (CAFC 1993). The facts in that case were as follows: Applicant Four Seasons and Registrant T.A.T. entered in to a consent agreement after Four Seasons was denied registration of its mark FOUR SEASONS BILTMORE on the ground that the mark was confusingly similar to THE BILTMORE LOS ANGELES previously registered by T.A.T. The agreement provided that (1) Four Seasons will use and register the word “BILTMORE” only in connection with the Santa Barbara resort, and only in either FOUR SEASONS BILTMORE or SANTA BARBARA ; (2) Four Seasons will not use “BILTMORE” for any other hotel, resort, or similar facility; (3) T.A.T. will not use FOUR SEASONS in connection with any of its hotels, resorts or similar facilities; and (4) neither party will in any way attempt to associate itself with the other party or its properties. And additionally, both parties agreed to cooperate and find ways to eliminate or minimize confusion in the event any arose.
The facts in Four Seasons Hotels are similar to those in the present case because in both cases there were restrictions that each party agreed to accept in order to avoid likelihood of confusion. The restrictions in Four Seasons Hotels are set forth in the preceding paragraph. The restrictions in the present case are found in Paragraphs 1, 4 and 6 as discussed hereinabove. Paragraph 1 sets forth the Applicant’s restrictions. Paragraph 4 sets forth the Registrant’s restrictions. Paragraph 6 sets forth the restriction that the parties have agreed to cooperate with one another in good faith in the unlikely event of any instances of actual purchaser confusion arising as a result of the Parties’ use of their respective marks and to take such steps as may be reasonably necessary to eliminate or minimize confusion. The latter restriction is virtually the same as the last restriction between the parties in Four Seasons Hotels as discussed at the end of the preceding paragraph.
The court in Four Seasons Hotels held essentially that the agreement here between Four Seasons and T.A.T. is more than a mere consent allowing applicant to register the mark; the agreement states that ”in any event, any confusion arises,” the parties will cooperate with one another “to eliminate or minimize” such confusion, implying that there has been no confusion in the past. Thus, in response to the Board’s statement that “suffice it to say that the record is devoid of any evidence to support counsel’s bald assertion of no actual confusion,” we point out that neither is there evidence to the contrary . And it is well-settled that in the absence of contrary evidence, a consent agreement itself may be evidence that there is no likelihood of confusion.
Earlier in the Four Seasons Hotels decisions, the court quoted earlier decisions and stated as follows: Here the self-interests of applicant and registrant have caused them to enter into a consent agreement determining for themselves that confusion of their marks is unlikely. In a number of similar cases, this court and our predecessor court have reversed TTAB decisions where the PTO postulated that confusion between the marks was likely, but the parties involved agreed to the contrary.
The court explained that We have often said, in trademark cases involving agreements reflecting parties’ views on the likelihood of confusion in the marketplace, that they are in a much better position to know the real-life situation than bureaucrats or judges and therefore such agreements may , depending on the circumstances, carry great weight.
At the outset Applicant wishes to emphasize that the CAFC decided the Four Seasons Hotels case almost six years after it decided the Mastic case. Even if the Four Seasons Hotel decision did not expressly overrule Mastic, the ruling in Four Seasons Hotels clearly does not permit the Examiner’s application of Mastic to the facts set forth in the present case. The court in Four Seasons Hotels held essentially that Here the self-interests of applicant and registrant have caused them to enter into a consent agreement determining for themselves that confusion of their marks is unlikely. In a number of similar cases this court and our predecessor court have reversed TTAB decisions where the PTO postulated that confusion between the marks was likely, but the parties involved agreed to the contrary.
Applicant and Registrant are in a better position than the Examiner to evaluate whether the Examiner’s internet evidence of third party use of similar marks for the Applicant’s metal screws, bolts and rivets and Registrant’s metal extrusions, metal wires, and metal cables establishes that there will be a likelihood of confusion in the US marketplace between Applicant’s goods and those of the Registrant, especially after taking into account that Applicant and Registrant are both contract suppliers.
Applicant respectfully requests that the Examiner no longer maintain his refusal to register based on likelihood of confusion and pass this application to publication.
|
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 006 |
| DESCRIPTION | Metal bolts; Metal nuts; Metal rivets; Metal screws |
| FILING BASIS | Section 1(b) |
| FILING BASIS | Section 44(e) |
| FOREIGN REGISTRATION NUMBER | 006672257 |
| FOREIGN REGISTRATION COUNTRY |
European Union Trademark - EUTM |
| FOREIGN REGISTRATION DATE |
06/18/2010 |
| FOREIGN EXPIRATION DATE | 02/15/2028 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 006 |
| TRACKED TEXT DESCRIPTION | |
| Metal bolts; |
|
| FINAL DESCRIPTION | Metal bolts; Metal rivets; Metal screws |
| FILING BASIS | Section 1(b) |
| FILING BASIS | Section 44(e) |
| FOREIGN REGISTRATION NUMBER | 006672257 |
| FOREIGN REGISTRATION COUNTRY |
European Union Trademark - EUTM |
| FOREIGN REGISTRATION DATE |
06/18/2010 |
| FOREIGN EXPIRATION DATE | 02/15/2028 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Jonathan Myers/ |
| SIGNATORY'S NAME | Jonathan Myers |
| SIGNATORY'S POSITION | Attorney for Applicant, NY Bar |
| SIGNATORY'S PHONE NUMBER | 212.661.8000 |
| DATE SIGNED | 03/13/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Mar 13 15:37:24 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XX- 20190313153724131510-8767 8204-620289577e31da65db3a 38216b4a69427768377506783 74e532e35dcf96833b311e-N/ A-N/A-2019031315193574645 7 |
| 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 09/20/2020) |
APPLICANT’S RESPONSE TO THE EXAMINER’S REFUSAL TO REGISTER THE MARK CONFORM ON THE GROUNDS OF LIKELIHOOD OF CONFUSION
The Examiner is of the view that because Applicant’s mark and Registrant’s mark are both CONFORM and are both standard character marks and because Applicant’s metal screws, bolts and rivets and Registrant’s metal extrusions, metal wires, and metal cables are often sold under the same mark as evidenced by on line advertising, the consent agreement that Applicant submitted in response to the previous office action, is not adequate to prevent likelihood of confusion in the US marketplace as to the source or origin of the Applicant’s goods.
Applicant respectfully disagrees. Applicant strongly believes that the consent agreement is far from a “naked” consent agreement and maintains that the terms of this agreement are entirely adequate to prevent “likelihood of confusion” in the marketplace. Both Applicant and Registrant are contract suppliers of their respective goods. Therefore, there are no distributors or other middlemen between the customers and either Applicant or Registrant. See especially Paragraph 3, Provision 3, on page 2 of the consent agreement which makes it clear that both Applicant and Registrant are contract suppliers. Since both the Applicant and the Registrant are contract suppliers and enter into requirements contracts through direct negotiations with their customers concerning the quality of the goods, the quantity of the goods, and the price of the goods, the likelihood of confusion as to the source or origin of the goods is highly unlikely. Therefore, the fact that the Examiner has provided third party internet evidence showing that both Applicant’s metal screws, bolts and rivets and Registrant’s metal extrusions, metal wires, and metal cables are both sold over the internet under the same marks is simply not the whole story. When requirements contracts that are directly negotiated between manufacturer and buyer are concerned as opposed to purchases over the internet through middlemen, the likelihood of confusion is eliminated.
Applicant is aware that the Examiner has cited In re Mastic Inc., 4 USPQ 2d 1292 (CAFC 1997) to support his argument that the present agreement is a “naked” consent and that it is inadequate to prevent likelihood of confusion in the marketplace. However, the facts in Mastic Inc. are entirely distinguishable from those in the present application. In Mastic, Inc. there was a defect in the consent agreement because in the consent agreement the Registrant consented only to the Applicant’s registration of the mark SHURLOK for vinyl siding. The Registrant did not consent to the Applicant’s use of the SHURLOK mark for vinyl siding. On page 1295, left-hand column, first full paragraph of the decision, the court stated the following:
Further we note that Flintkote specifically consents only to Mastic’s registration, not use, of the mark SHURLOK for vinyl siding. If Mastic is making the argument that so long as it makes no use in the United States, no confusion will occur such argument has no validity. The Section 2(d) determination must be made on the basis of presumed exposure of both marks to the public in the marketplace.
In the present case, unlike in Mastic, the Registrant has consented to the Applicant’s use and registration of the CONFORM mark for “metal bolts, metal nuts, metal rivets, metal screws” in International Class 6. See Paragraph 7 on page 2 of the agreement.
Furthermore, the Applicant and the Registrant have taken additional steps to minimize any likelihood of confusion. In Paragraph 1 of the agreement, the Applicant has agreed to avoid using the CONFORM mark or any similar mark in connection with goods in Class 7 or Class 9 or in connection with services in Class 40, or in connection with extrusions, cables and wires. In other words, Applicant will avoid using its CONFORM mark to identify any of the goods and services identified in US Trademark Registration 3232886. At the same time, in Paragraph 4 of the agreement the Registrant has agreed not to use its mark CONFORM for metal fasteners in Class 6 including, but not limited to “metal bolts; metal nuts; metal rivets; metal screws.” Thus, Registrant has agreed to avoid using its CONFORM mark to identify itself as the source or origin of any of the goods in the Applicant’s CONFORM application. No such restrictions are found in the fact pattern described in Mastic. And in Paragraph 6 of the agreement, the parties have agreed to cooperate with one another in good faith in the unlikely event of any instances of actual purchaser confusion arising as a result of the Parties’ use of their respective marks and to take such steps as may be reasonably necessary to eliminate or minimize confusion. Again, no such restrictions are found in the fact pattern described in Mastic. That is why the agreement filed in this application between Applicant and Registrant is not a “naked” consent agreement.
In addition, there is no mention in the Mastic decision that either the applicant Mastic, or the Registrant Flintkote, were contract suppliers of their respective goods. As already discussed herein above, the fact that both the Applicant, Arnold, and the Registrant, BWE, are contract suppliers of their respective goods makes a significant difference concerning likelihood of confusion because there is direct negotiation of requirements contract terms between both the Applicant and its customers and the Registrant and its customers. Such direct negotiations minimizes any likelihood of confusion because both the Applicant and the Registrant know their customers and their customers know the Applicant and the Registrant. On the contrary, such was not the case in Mastic. In the last paragraph on page 1295, right hand column, the court indicated that its decision to deny registration of SHURLOK was based at least in part on three factors:
(1) the identity of the marks, (2) the close relationship of the respective products and (3) the identity of distributors and buyers for the goods i.e. the identity of channels of trade.
In the present case, the third factor is clearly absent because both Applicant and Registrant are contract suppliers, and not simply buyers and sellers on the internet. There are no distributors involved . Both the Applicant and the Registrant negotiate the terms of their requirement contracts directly with their buyers.
By no means is the agreement filed in this application between Applicant and Registrant, a “naked” consent agreement and the facts in the present case are entirely distinguishable from those set forth in Mastic. Under these circumstances, there is no likelihood of confusion between the Applicant’s CONFORM mark for the goods identified in this application and the Registrant’s CONFORM mark for the goods identified in the cited registration.
Applicant would like to cite In re Four Seasons Hotels Ltd., 26 USPQ 2d 1071 (CAFC 1993). The facts in that case were as follows: Applicant Four Seasons and Registrant T.A.T. entered in to a consent agreement after Four Seasons was denied registration of its mark FOUR SEASONS BILTMORE on the ground that the mark was confusingly similar to THE BILTMORE LOS ANGELES previously registered by T.A.T. The agreement provided that (1) Four Seasons will use and register the word “BILTMORE” only in connection with the Santa Barbara resort, and only in either FOUR SEASONS BILTMORE or SANTA BARBARA ; (2) Four Seasons will not use “BILTMORE” for any other hotel, resort, or similar facility; (3) T.A.T. will not use FOUR SEASONS in connection with any of its hotels, resorts or similar facilities; and (4) neither party will in any way attempt to associate itself with the other party or its properties. And additionally, both parties agreed to cooperate and find ways to eliminate or minimize confusion in the event any arose.
The facts in Four Seasons Hotels are similar to those in the present case because in both cases there were restrictions that each party agreed to accept in order to avoid likelihood of confusion. The restrictions in Four Seasons Hotels are set forth in the preceding paragraph. The restrictions in the present case are found in Paragraphs 1, 4 and 6 as discussed hereinabove. Paragraph 1 sets forth the Applicant’s restrictions. Paragraph 4 sets forth the Registrant’s restrictions. Paragraph 6 sets forth the restriction that the parties have agreed to cooperate with one another in good faith in the unlikely event of any instances of actual purchaser confusion arising as a result of the Parties’ use of their respective marks and to take such steps as may be reasonably necessary to eliminate or minimize confusion. The latter restriction is virtually the same as the last restriction between the parties in Four Seasons Hotels as discussed at the end of the preceding paragraph.
The court in Four Seasons Hotels held essentially that the agreement here between Four Seasons and T.A.T. is more than a mere consent allowing applicant to register the mark; the agreement states that ”in any event, any confusion arises,” the parties will cooperate with one another “to eliminate or minimize” such confusion, implying that there has been no confusion in the past. Thus, in response to the Board’s statement that “suffice it to say that the record is devoid of any evidence to support counsel’s bald assertion of no actual confusion,” we point out that neither is there evidence to the contrary . And it is well-settled that in the absence of contrary evidence, a consent agreement itself may be evidence that there is no likelihood of confusion.
Earlier in the Four Seasons Hotels decisions, the court quoted earlier decisions and stated as follows:
Here the self-interests of applicant and registrant have caused them to enter into a consent agreement determining for themselves that confusion of their marks is unlikely. In a number of similar cases, this court and our predecessor court have reversed TTAB decisions where the PTO postulated that confusion between the marks was likely, but the parties involved agreed to the contrary.
The court explained that
We have often said, in trademark cases involving agreements reflecting parties’ views on the likelihood of confusion in the marketplace, that they are in a much better position to know the real-life situation than bureaucrats or judges and therefore such agreements may , depending on the circumstances, carry great weight.
At the outset Applicant wishes to emphasize that the CAFC decided the Four Seasons Hotels case almost six years after it decided the Mastic case. Even if the Four Seasons Hotel decision did not expressly overrule Mastic, the ruling in Four Seasons Hotels clearly does not permit the Examiner’s application of Mastic to the facts set forth in the present case. The court in Four Seasons Hotels held essentially that
Here the self-interests of applicant and registrant have caused them to enter into a consent agreement determining for themselves that confusion of their marks is unlikely. In a number of similar cases this court and our predecessor court have reversed TTAB decisions where the PTO postulated that confusion between the marks was likely, but the parties involved agreed to the contrary.
Applicant and Registrant are in a better position than the Examiner to evaluate whether the Examiner’s internet evidence of third party use of similar marks for the Applicant’s metal screws, bolts and rivets and Registrant’s metal extrusions, metal wires, and metal cables establishes that there will be a likelihood of confusion in the US marketplace between Applicant’s goods and those of the Registrant, especially after taking into account that Applicant and Registrant are both contract suppliers.
Applicant respectfully requests that the Examiner no longer maintain his refusal to register based on likelihood of confusion and pass this application to publication.