| 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 | 87915471 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87915471/mark.png |
| LITERAL ELEMENT | ADVANTA |
| 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 FINAL OFFICE ACTION FOR ADVANTA (Serial No. 87/915,471) I. Amendment of Goods Description: As a response to the Final Office Action, Applicant requests further amendment of the goods descriptions to the following: Metal door lite frames for doors for buildings; Metal frames for decorative glass for doors for buildings, in Class 06. Non-metal door lite frames for doors for buildings; non-metal frames for decorative glass for doors for buildings, in Class 19. II. Likelihood of Confusion Refusal In View of U.S, Registration No. 4,731,472: The Examining Attorney has refused registration of the current application for the mark ADVANTA, U.S. Trademark Application Serial No. 87/915,471 (the ‘471 Application”) under Section 2(d) of the Trademark Act contending that, when used in commerce with the goods identified in the application (i.e., metal/non-metal door lite frames and metal/non-metal frames for decorative glass for doors in Classes 06 and 19) is likely to be confused with ADVANTA, U.S. Registration No. 4,731,472)(“the ‘472 Registration”), which is registered for kitchen cabinets in Class 20 and installation of kitchen cabinets in Class 37. For the reasons set forth below, Applicant respectfully requests that the Examining Attorney withdraw the Section 2(d) refusal since there is no likelihood of confusion between the ‘471 Application and the ‘472 Registration. The factors that are relevant to an examining attorney’s determination of likelihood of confusion are set forth in In re E.I. du Pont de Nemours &Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973); TMEP 1207.01. Reserving all rights to make additional arguments in the future, Applicant asserts that the following factors strongly lead to the conclusion that there is no likelihood of confusion between its mark which is the subject of the ‘471 Application and the mark which is the subject of the ‘472 Registration: 1.) Applicant’s goods are dissimilar to the goods set forth in ‘472 Registration and the goods description has been further amended to reflect this; 2.) the ordinary trade channels in which the goods are sold are dissimilar; and 3.) the purchasers of the Applicant’s goods and the goods of the ‘472 Registration are sophisticated purchasers (i.e., the purchasers of the respective goods make careful, sophisticated purchases as opposed to impulse purchases). While Applicant asserts that the DuPont factors set forth above are the most relevant to the present rejection, other DuPont factors may be applicable to distinguish Applicant’s mark from the cited registration. With respect to a likelihood of confusion analysis, the issue is not whether the goods will be confused with each other, but rather whether the public will be confused about their source. See, Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). If the goods or services are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g. lamps, tubes) related to the photocopying field). A. Applicant’s Goods Are Dissimilar to the Goods Set Forth in the ‘472 Registration Applicant asserts that an examination of the identification of goods and services at issue suggests that a likelihood of confusion is not present between the marks covered by the ‘471 Application and the ‘472 Registration. Registrant’s mark is for kitchen cabinets and the installation thereof in Classes 20 and 37. Applicant has further amended the goods covered by the ‘471 Application in order to further differentiate the goods (metal door lite frames for doors for buildings; metal frames for decorative glass for doors for buildings, in Class 06; and non-metal door lite frames for doors for buildings; non-metal frames for decorative glass for doors for buildings, in Class 19). The Examining Attorney has refused registration, in part, because the Examining Attorney has determined that Applicant’s goods are sufficiently related to Registrant’s goods for confusion to be likely. The Examining Attorney contends that Applicant’s goods, namely, door frames are closely related to the goods in the cited registration, namely, kitchen cabinets. The only evidence proffered by the Examining Attorney in support of the relatedness finding is evidence that purportedly shows that the term “door frames” could be interpreted broadly to potentially encompass cabinet door frames, including cabinet door frames for glass doors. Applicant’s ADVANTA mark is used in connection with metal/non-metal door lite frames and metal/non-metal frames for decorative glass for use with doors for buildings in Classes 06 and 19. Applicant, Therma-Tru Corp., is a leading manufacturer of building doors, including fiberglass and steel exterior doors and entry doors for homes and other buildings. Purchasers can design or customize their doors by selecting the door configuration, door style, finish, door handles and other options and features. Thus, door purchasers have a wide range of options to meet their door needs. As the large variety of choices suggests, doors, such as the entry doors and patio doors sold by Applicant, are a major purchase for most home owners. Purchasing doors typically requires significant time, effort, and investment on the part of the purchasers. Purchasers must evaluate and consider, among other things, the overall design of the doors, the style and appearance of their home, care and maintenance of the door, labor and installation, construction method and materials, the door’s finish, style, and features, overall price, and warranty. In light of the relevant identification of goods, Applicant’s goods serve an entirely different purpose than do Registrant’s. Applicant’s goods are not competitive with Registrant’s goods, are not interchangeable with them, and are not used with or in conjunction with Applicant’s kitchen cabinet goods. While it is possible the goods may on occasion be offered for sale in the same physical structure, such as a “big box” home improvement store, Applicant respectfully submits that that retail commonality alone is too broad to support a finding that the goods are sufficiently related for confusion to be likely, even where the marks in question are identical. In view of the differences between the goods as described, Applicant contends that its metal/non-metal door lite frames and metal/non-metal frames for decorative glass for doors for buildings in Classes 06 and 19 are not closely related to the Registrant’s kitchen cabinets and the installation thereof in Classes 20 and 37, and therefore a likelihood of confusion is not present between Applicant and Registrant’s marks. B. The Ordinary Trade Channels in Which the Parties’ Goods Are Purchased Are Dissimilar. The Examining Attorney has not provided any evidence which suggests that the goods covered by the ‘471 Application and the ‘472 Registration are of a kind that may emanate from a single source. Applicant submits that consumers interested in purchasing doors for buildings and components thereof would not likely encounter kitchen cabinets when exploring their purchasing options, and vice versa, because they are ordinarily sold through different channels. Given that the goods of the ‘471 Application and the ‘472 Registration are ordinarily marketed in different channels of trade, Applicant asserts that this further supports the conclusion that confusion is not likely. The mere fact that some big-box retailers may offer for sale both building doors and kitchen cabinets among the hundreds if not thousands of different products they offer is not and should not be enough to show that prospective purchasers of either are likely to encounter both and thus be likely to be confused. C. The Purchasers of the Parties’ Goods are Sophisticated Purchasers. When determining the likelihood of confusion, the discrimination and degree of care exhibited by purchasers must be considered, along with other relevant factors, and given appropriate weight. In re Shell Oil Co., 992 F.2d 1204, 1208 (Fed. Cir. 1993); DuPont, 476 F.2d at 1361. Circumstances suggesting care in purchasing minimizes the likelihood of confusion, even though sophisticated and knowledgeable purchasers are not necessarily immune to source confusion. Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206 (1st Cir. 1983) (stating “there is always less likelihood of confusion where goods are expensive and purchased after careful consideration”); TMEP 1207.01(d)(vii). When judging whether a purchaser of expensive goods will likely be confused, the reasonably prudent person standard is elevated to the standard of the “discriminating purchaser.” J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, 4th ed., § 23.96 (citing Weiss Associates, Inc., v. HRL Associates, Inc., 902 F.2d 1546 (Fed. Cir. 1990)). As previously discussed, Applicant’s doors and door components are typically a major purchase for most home owners that requires significant time, effort, and investment on the part of the purchasers. Consequently, purchasers of Applicant’s products are typically sophisticated and make careful purchasing decisions with respect to the doors and door components they select. Registrant is a manufacturer and installer of kitchen cabinets, which are often sold for multiple hundred dollars to multiple thousand dollars. Kitchen cabinets are even more expensive if bought for an entire kitchen or an entire dwelling or other building. The expensive price further supports careful and sophisticated purchasing of Registrant’s office. Registrant’s kitchen cabinets are typically a major purchase for most home owners. Purchasing kitchen cabinets typically requires significant time, effort, and investment on the part of the purchasers. Purchasers must evaluate and consider, among other things, the overall design of the cabinets, the space limitations in their homes, care and maintenance of the cabinets, labor and installation, construction method and materials, the cabinet’s finish, style, and features, overall price, and warranty. Consequently, purchasers of Applicant’s products are typically sophisticated and make careful purchasing decisions with respect to the cabinets they select. Since purchasers of both Registrant’s and Applicant’s products tend to be sophisticated and careful, they should be viewed as discriminating purchasers when evaluating the likelihood that they would be confused as to source. Applicant respectfully contends that that since the goods in question are purchased with care and the purchasers are sophisticated and discriminating, no confusion is likely. III. Conclusion: In view of the foregoing Remarks, Applicant respectfully submits that its mark, ADVANTA for metal/non-metal door lite frames and metal/non-metal frames for decorative glass for doors for buildings in Classes 06 and 19 will not likely be confused with Registrant’s mark used in connection with kitchen cabinets and the installation thereof in Classes 20 and 37. As such, Applicant respectfully requests reconsideration of the rejection of this application and that the Section 2(d) refusal be withdrawn. |
|
| GOODS AND/OR SERVICES SECTION (006)(current) | |
| INTERNATIONAL CLASS | 006 |
| DESCRIPTION | |
| Metal door lite frames; metal frames for decorative glass for doors | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (006)(proposed) | |
| INTERNATIONAL CLASS | 006 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Metal door lite frames for doors for buildings; metal frames for decorative glass for doors for buildings | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (019)(current) | |
| INTERNATIONAL CLASS | 019 |
| DESCRIPTION | |
| Non-metal door lite frames; non-metal frames for decorative glass for doors | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (019)(proposed) | |
| INTERNATIONAL CLASS | 019 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Non-metal door lite frames for doors for buildings; non-metal frames for decorative glass for doors for buildings | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Ryan W. Falk/ |
| SIGNATORY'S NAME | Ryan W. Falk |
| SIGNATORY'S POSITION | Attorney of record, Ohio bar member |
| SIGNATORY'S PHONE NUMBER | 216-622-8200 |
| DATE SIGNED | 04/16/2019 |
| AUTHORIZED SIGNATORY | YES |
| CONCURRENT APPEAL NOTICE FILED | NO |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Apr 16 18:51:36 EDT 2019 |
| TEAS STAMP | USPTO/RFR-XXX.XXX.XX.XX-2 0190416185136798075-87915 471-6204f2558316b2a9eec7e 38f5ec6fa2ed7f57bfea4ae32 edbbac6344a73ab8575c-N/A- N/A-20190416180538861194 |
| 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 FINAL OFFICE ACTION FOR ADVANTA (Serial No. 87/915,471)
(Our Ref. 27475/17734)
I. Amendment of Goods Description:
As a response to the Final Office Action, Applicant requests further amendment of the goods descriptions to the following:
Metal door lite frames for doors for buildings; Metal frames for decorative glass for doors for buildings, in Class 06.
Non-metal door lite frames for doors for buildings; non-metal frames for decorative glass for doors for buildings, in Class 19.
II. Likelihood of Confusion Refusal In View of U.S, Registration No. 4,731,472:
The Examining Attorney has refused registration of the current application for the mark ADVANTA, U.S. Trademark Application Serial No. 87/915,471 (the ‘471 Application”) under Section 2(d) of the Trademark Act contending that, when used in commerce with the goods identified in the application (i.e., metal/non-metal door lite frames and metal/non-metal frames for decorative glass for doors in Classes 06 and 19) is likely to be confused with ADVANTA, U.S. Registration No. 4,731,472)(“the ‘472 Registration”), which is registered for kitchen cabinets in Class 20 and installation of kitchen cabinets in Class 37. For the reasons set forth below, Applicant respectfully requests that the Examining Attorney withdraw the Section 2(d) refusal since there is no likelihood of confusion between the ‘471 Application and the ‘472 Registration.
The factors that are relevant to an examining attorney’s determination of likelihood of confusion are set forth in In re E.I. du Pont de Nemours &Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973); TMEP 1207.01. Reserving all rights to make additional arguments in the future, Applicant asserts that the following factors strongly lead to the conclusion that there is no likelihood of confusion between its mark which is the subject of the ‘471 Application and the mark which is the subject of the ‘472 Registration:
1.) Applicant’s goods are dissimilar to the goods set forth in ‘472 Registration and the goods description has been further amended to reflect this;
2.) the ordinary trade channels in which the goods are sold are dissimilar; and
3.) the purchasers of the Applicant’s goods and the goods of the ‘472 Registration are sophisticated purchasers (i.e., the purchasers of the respective goods make careful, sophisticated purchases as opposed to impulse purchases).
While Applicant asserts that the DuPont factors set forth above are the most relevant to the present rejection, other DuPont factors may be applicable to distinguish Applicant’s mark from the cited registration.
With respect to a likelihood of confusion analysis, the issue is not whether the goods will be confused with each other, but rather whether the public will be confused about their source. See, Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). If the goods or services are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g. lamps, tubes) related to the photocopying field).
A. Applicant’s Goods Are Dissimilar to the Goods Set Forth in the ‘472 Registration
Applicant asserts that an examination of the identification of goods and services at issue suggests that a likelihood of confusion is not present between the marks covered by the ‘471 Application and the ‘472 Registration. Registrant’s mark is for kitchen cabinets and the installation thereof in Classes 20 and 37. Applicant has further amended the goods covered by the ‘471 Application in order to further differentiate the goods (metal door lite frames for doors for buildings; metal frames for decorative glass for doors for buildings, in Class 06; and non-metal door lite frames for doors for buildings; non-metal frames for decorative glass for doors for buildings, in Class 19).
The Examining Attorney has refused registration, in part, because the Examining Attorney has determined that Applicant’s goods are sufficiently related to Registrant’s goods for confusion to be likely. The Examining Attorney contends that Applicant’s goods, namely, door frames are closely related to the goods in the cited registration, namely, kitchen cabinets. The only evidence proffered by the Examining Attorney in support of the relatedness finding is evidence that purportedly shows that the term “door frames” could be interpreted broadly to potentially encompass cabinet door frames, including cabinet door frames for glass doors.
Applicant’s ADVANTA mark is used in connection with metal/non-metal door lite frames and metal/non-metal frames for decorative glass for use with doors for buildings in Classes 06 and 19. Applicant, Therma-Tru Corp., is a leading manufacturer of building doors, including fiberglass and steel exterior doors and entry doors for homes and other buildings. Purchasers can design or customize their doors by selecting the door configuration, door style, finish, door handles and other options and features. Thus, door purchasers have a wide range of options to meet their door needs.
As the large variety of choices suggests, doors, such as the entry doors and patio doors sold by Applicant, are a major purchase for most home owners. Purchasing doors typically requires significant time, effort, and investment on the part of the purchasers. Purchasers must evaluate and consider, among other things, the overall design of the doors, the style and appearance of their home, care and maintenance of the door, labor and installation, construction method and materials, the door’s finish, style, and features, overall price, and warranty.
In light of the relevant identification of goods, Applicant’s goods serve an entirely different purpose than do Registrant’s. Applicant’s goods are not competitive with Registrant’s goods, are not interchangeable with them, and are not used with or in conjunction with Applicant’s kitchen cabinet goods. While it is possible the goods may on occasion be offered for sale in the same physical structure, such as a “big box” home improvement store, Applicant respectfully submits that that retail commonality alone is too broad to support a finding that the goods are sufficiently related for confusion to be likely, even where the marks in question are identical.
In view of the differences between the goods as described, Applicant contends that its metal/non-metal door lite frames and metal/non-metal frames for decorative glass for doors for buildings in Classes 06 and 19 are not closely related to the Registrant’s kitchen cabinets and the installation thereof in Classes 20 and 37, and therefore a likelihood of confusion is not present between Applicant and Registrant’s marks.
B. The Ordinary Trade Channels in Which the Parties’ Goods Are Purchased Are Dissimilar.
The Examining Attorney has not provided any evidence which suggests that the goods covered by the ‘471 Application and the ‘472 Registration are of a kind that may emanate from a single source. Applicant submits that consumers interested in purchasing doors for buildings and components thereof would not likely encounter kitchen cabinets when exploring their purchasing options, and vice versa, because they are ordinarily sold through different channels. Given that the goods of the ‘471 Application and the ‘472 Registration are ordinarily marketed in different channels of trade, Applicant asserts that this further supports the conclusion that confusion is not likely. The mere fact that some big-box retailers may offer for sale both building doors and kitchen cabinets among the hundreds if not thousands of different products they offer is not and should not be enough to show that prospective purchasers of either are likely to encounter both and thus be likely to be confused.
C. The Purchasers of the Parties’ Goods are Sophisticated Purchasers.
When determining the likelihood of confusion, the discrimination and degree of care exhibited by purchasers must be considered, along with other relevant factors, and given appropriate weight. In re Shell Oil Co., 992 F.2d 1204, 1208 (Fed. Cir. 1993); DuPont, 476 F.2d at 1361. Circumstances suggesting care in purchasing minimizes the likelihood of confusion, even though sophisticated and knowledgeable purchasers are not necessarily immune to source confusion. Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206 (1st Cir. 1983) (stating “there is always less likelihood of confusion where goods are expensive and purchased after careful consideration”); TMEP 1207.01(d)(vii). When judging whether a purchaser of expensive goods will likely be confused, the reasonably prudent person standard is elevated to the standard of the “discriminating purchaser.” J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, 4th ed., § 23.96 (citing Weiss Associates, Inc., v. HRL Associates, Inc., 902 F.2d 1546 (Fed. Cir. 1990)).
As previously discussed, Applicant’s doors and door components are typically a major purchase for most home owners that requires significant time, effort, and investment on the part of the purchasers. Consequently, purchasers of Applicant’s products are typically sophisticated and make careful purchasing decisions with respect to the doors and door components they select.
Registrant is a manufacturer and installer of kitchen cabinets, which are often sold for multiple hundred dollars to multiple thousand dollars. Kitchen cabinets are even more expensive if bought for an entire kitchen or an entire dwelling or other building. The expensive price further supports careful and sophisticated purchasing of Registrant’s office. Registrant’s kitchen cabinets are typically a major purchase for most home owners. Purchasing kitchen cabinets typically requires significant time, effort, and investment on the part of the purchasers. Purchasers must evaluate and consider, among other things, the overall design of the cabinets, the space limitations in their homes, care and maintenance of the cabinets, labor and installation, construction method and materials, the cabinet’s finish, style, and features, overall price, and warranty. Consequently, purchasers of Applicant’s products are typically sophisticated and make careful purchasing decisions with respect to the cabinets they select.
Since purchasers of both Registrant’s and Applicant’s products tend to be sophisticated and careful, they should be viewed as discriminating purchasers when evaluating the likelihood that they would be confused as to source. Applicant respectfully contends that that since the goods in question are purchased with care and the purchasers are sophisticated and discriminating, no confusion is likely.
III. Conclusion:
In view of the foregoing Remarks, Applicant respectfully submits that its mark, ADVANTA for metal/non-metal door lite frames and metal/non-metal frames for decorative glass for doors for buildings in Classes 06 and 19 will not likely be confused with Registrant’s mark used in connection with kitchen cabinets and the installation thereof in Classes 20 and 37. As such, Applicant respectfully requests reconsideration of the rejection of this application and that the Section 2(d) refusal be withdrawn.