| 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 | 87881836 |
| LAW OFFICE ASSIGNED | LAW OFFICE 113 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87881836/mark.png |
| LITERAL ELEMENT | BENCHMARK |
| 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 Office Action
Likelihood of Confusion
The examining attorney has refused registration under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), citing the following trademark registration as an obstacle to registration:
U.S. Registration No. 4848823(BENCHMARK)
The examining attorney has concluded that Applicant’s mark, when used in connection with the identified goods and services is likely to cause confusion among consumers. Applicant has amended the identification of goods consistent with the examining attorney’s guidance to clarify its services and avoid potential overlap with the cited registration. Accordingly, Applicant requests that the examining attorney withdraw and the refusal to register and approve this mark for publication.
The determination of likelihood of confusion turns primarily on the similarity of the marks in question and the degree to which the identified goods are related. In re E.I. Dupont de Nemours & Co., 177 USPQ 563 (CCPA 1973); In re August Storck KG, 218 USPQ 823 (TTAB 1983); Federated Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24 (CCPA 1976). In this case, the marks and the identified goods and services are sufficiently different to avoid confusion.
(a) Similarity of the Marks
Applicant does not contest the similarity of the marks but notes that its rights to the BENCHMARK name in the field of assisted living long predate the cited registration. This includes Applicant’s ownership of multiple registrations that predate the filing date of the cited registration.
(b) Relation of the Services
Applicant has amended its services to the following –
Original Recitation: Providing independent living residences and living facilities; Providing assisted living and memory care living residences and living facilities designed for seniors
Amended Recitation: Providing independent living residences and living facilities directed to seniors and the elderly that incorporate support services to family members of senior residents; Providing assisted living and memory care living residences and living facilities designed for seniors
The amended recitation of services clearly distinguishes Applicant’s services from those in the cited registration.
Confusion as to source is unlikely unless the goods or services of the applicant and the registrant are so related that the circumstances surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that would give rise to the mistaken belief that they originate from the same source. See, e.g., On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000).
It is well-settled that even in cases where the marks are identical confusion is not likely if the goods or services are not related. See In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (no likelihood of confusion between PLAYERS for shoes and PLAYERS for men's underwear); Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992) (no likelihood of confusion between EDS for power supplies or battery chargers versus E.D.S. for computer services).
General Electric, 197 USPQ at 694 (emphasis supplied); see also Harvey Hubbell, 188 USPQ at
520 ("In determining whether products are identical or similar, the inquiry should be whether they appeal to the same market, not whether they resemble each other physically or whether a word can be
found to describe the goods of the parties").
In view of the amended recitation of services, Applicant requests that the examining attorney withdraw the refusal to register and approve the mark BENCHMARK for publication. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 043 |
| DESCRIPTION | |
| Providing independent living residences and living facilities; Providing assisted living and memory care living residences and living facilities designed for seniors | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 04/01/2011 |
| FIRST USE IN COMMERCE DATE | At least as early as 04/01/2011 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 043 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Providing independent living residences and living facilities directed to seniors and the elderly that incorporate support services to family members of senior residents; Providing assisted living and memory care living residences and living facilities designed for seniors, all of the foregoing including support services for family members of senior residents. | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 04/01/2011 |
| FIRST USE IN COMMERCE DATE | At least as early as 04/01/2011 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /AIC/ |
| SIGNATORY'S NAME | Andy I. Corea |
| SIGNATORY'S POSITION | Attorney for Applicant, Member CT bar |
| SIGNATORY'S PHONE NUMBER | 203-772-7700 |
| DATE SIGNED | 10/05/2018 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Oct 05 09:47:05 EDT 2018 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XX-20 181005094705921167-878818 36-6106193698f7ac2e79d565 d231f6b85efb819b54acde7db 1969eebd6c732f14c8-N/A-N/ A-20181005094434386017 |
| 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) |
Response to Office Action
Likelihood of Confusion
The examining attorney has refused registration under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), citing the following trademark registration as an obstacle to registration:
U.S. Registration No. 4848823(BENCHMARK)
The examining attorney has concluded that Applicant’s mark, when used in connection with the identified goods and services is likely to cause confusion among consumers. Applicant has amended the identification of goods consistent with the examining attorney’s guidance to clarify its services and avoid potential overlap with the cited registration. Accordingly, Applicant requests that the examining attorney withdraw and the refusal to register and approve this mark for publication.
The determination of likelihood of confusion turns primarily on the similarity of the marks in question and the degree to which the identified goods are related. In re E.I. Dupont de Nemours & Co., 177 USPQ 563 (CCPA 1973); In re August Storck KG, 218 USPQ 823 (TTAB 1983); Federated Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24 (CCPA 1976). In this case, the marks and the identified goods and services are sufficiently different to avoid confusion.
(a) Similarity of the Marks
Applicant does not contest the similarity of the marks but notes that its rights to the BENCHMARK name in the field of assisted living long predate the cited registration. This includes Applicant’s ownership of multiple registrations that predate the filing date of the cited registration.
(b) Relation of the Services
Applicant has amended its services to the following –
Original Recitation:
Providing independent living residences and living facilities; Providing assisted living and memory care living residences and living facilities designed for seniors
Amended Recitation:
Providing independent living residences and living facilities directed to seniors and the elderly that incorporate support services to family members of senior residents; Providing assisted living and memory care living residences and living facilities designed for seniors
The amended recitation of services clearly distinguishes Applicant’s services from those in the cited registration.
Confusion as to source is unlikely unless the goods or services of the applicant and the registrant are so related that the circumstances surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that would give rise to the mistaken belief that they originate from the same source. See, e.g., On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000).
It is well-settled that even in cases where the marks are identical confusion is not likely if the goods or services are not related. See In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (no likelihood of confusion between PLAYERS for shoes and PLAYERS for men's underwear); Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992) (no likelihood of confusion between EDS for power supplies or battery chargers versus E.D.S. for computer services).
Further, a general relationship between the goods or services at issue is insufficient to establish a likelihood of confusion. See General Electric
Company v. Graham Magnetics Incorporated, 197 USPQ 690, 694 (TTAB 1977); Harvey Hubbell Incorporated v. Tokyo Seimitsu Co., Ltd., 188 USPQ 517, 520 (TTAB 1975).
As the Board stated in General Electric:
It is, however, not enough to find one term that may generically describe the goods. More must be shown: that is, a commercial or technological relationship must exist between the
goods such that the use of the trademark in commercial transactions on the goods is likely to produce opportunities for purchasers or users of the goods to be misled about their source or
sponsorship.
General Electric, 197 USPQ at 694 (emphasis supplied); see also Harvey Hubbell, 188 USPQ at
520 ("In determining whether products are identical or similar, the inquiry should be whether they appeal to the same market, not whether they resemble each other physically or whether a word can be
found to describe the goods of the parties").
Consistent with this precedent, there are numerous Board cases finding no likelihood of confusion between even identical marks for goods or services used in a common industry, where the goods or
services at issue differ from each other and there is insufficient evidence to establish a reasonable basis for assuming that they would be encountered by the same purchasers. See,
Borg-Warner Chemicals, Inc. v. Helena Chemical Co., 225 USPQ 222, 224 (TTAB 1983) (no likelihood of confusion between BLEND EX for stabilizing chemical composition for fertilizers and pesticides
versus BLENDEX for synthetic resigns used in the industrial arts - "while both products are chemical compositions, said products neither overlap nor move in common trade channels"); In re Fesco, 219 USPQ 437 (TTAB 1983) (no likelihood of confusion between FESCO & Design for distributorship services in the field of farm machinery and equipment versus FESCO for a
variety of fertilizer processing and machinery and equipment); Chase Brass & Copper Co., Inc. v. Special Springs, Inc., 199 USPQ 243 (TTAB 1978) (no likelihood of confusion
between BLUE DOT for springs for engine distributors versus BLUE DOT for brass rods, both products used in new automobile manufacture); Autac, Inc. v. Walco Sys., Inc., 195 USPQ
11 (TTAB 1977) (no likelihood of confusion between AUTAC for thermocouple automatic temperature regulators for brushless wire preheaters versus AUTAC for retractile electric cords, both products used
in the wire manufacturing industry); Hi-Country Foods Corp. v. Hi Country Beef Jerky, 4 USPQ2d 1169 (TTAB 1987) (no likelihood of confusion between HI-COUNTRY & Design for
various fruit juices versus HI-COUNTRY (stylized) for meat snack foods in the nature of jerky and sausage).
In view of the amended recitation of services, Applicant requests that the examining attorney withdraw the refusal to register and approve the mark BENCHMARK for publication.