Response to Office Action

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)

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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 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87915471 ADVANTA(Standard Characters, see http://uspto.report/TM/87915471/mark.png) has been amended as follows:

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

OFFICE ACTION RESPONSE FOR ADVANTA (Serial No. 87/915,471)
(Our Ref. 27475/17734)

I.                        Amendment of Goods Description:

In the Office Action, the Examining Attorney required the Applicant to further specify the nature of the applied for goods and suggested the following potential goods description:

Metal door lite frames; Metal frames for decorative glass for doors, in Class 06. 

Non-metal door lite frames; non-metal frames for decorative glass for doors, in Class 19.

By this response, Applicant hereby accepts the amended goods description proposed by the Examining Attorney and amends the goods description accordingly.

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.  In contrast, Applicant’s mark is for metal/non-metal door lite frames and metal/non-metal frames for decorative glass for doors in Classes 06 and 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 door frames could encompass cabinet door frames, including cabinet door frames for glass doors.  

However, the evidence relied upon by the Examining Attorney and the arguments made by the Examining Attorney do not take into account the classification of the goods of the Applicant and the Registrant.  Applicant’s goods are door lite frames and door glass frames for use for entry doors and other doors for buildings classified in Class 06 and 19 (See U.S. Acceptable Identification of Goods and Services Manual). On the other hand, the Registrant’s goods are for kitchen cabinets and the installation thereof in Classes 20 and 37.  The Examining Attorney’s contention that the Applicant’s goods could encompass cabinet door frames fails to account for the fact that such cabinet door frames would be classified in Class 20.  Note “cabinet doors for cabinets” are classified in Class 20 (See U.S. Acceptable Identification of Goods and Services Manual) and “doors for furniture” are also classified in Class 20 (See U.S. Acceptable Identification of Goods and Services Manual).  The proper identification of goods and services required by U.S. trademark law fully addresses the Examining Attorney’s arguments.  If Applicant’s goods encompassed cabinet door frames, they would be classified in Class 20, not Classes 6 and 19 that are reserved for doors for buildings.  Similarly, “sports cars” in Class 12 could not be interpreted to encompass “toy cars” in Class 28 or jewelry “rings” in Class 14 could not be interpreted to encompass “onion rings” in Class 29 or “boxing rings” in Class 28.  Just because a word used in a goods description could be interpreted broadly to encompass other, unrelated things does not mean that such goods descriptions encompasses such unrelated things if not so classified under the USPTO’s goods/service classification system.

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 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 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 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.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 019 for Door lite frames; frames for decorative glass for doors
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: Door lite frames; Non-metal door lite frames; frames for decorative glass for doors; non-metal frames for decorative glass for doorsClass 019 for Non-metal door lite frames; non-metal frames for decorative glass for doors
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 006 for Metal door lite frames; metal frames for decorative glass for doors
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.

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Ryan W. Falk/      Date: 03/05/2019
Signatory's Name: Ryan W. Falk
Signatory's Position: Attorney of record, Ohio bar member
Signatory's Phone Number: 216-622-8200


Response Signature
Signature: /Ryan W. Falk/     Date: 03/05/2019
Signatory's Name: Ryan W. Falk
Signatory's Position: Attorney of record, Ohio bar member

Signatory's Phone Number: 2166228206

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.

        
RAM Sale Number: 87915471
RAM Accounting Date: 03/05/2019
        
Serial Number: 87915471
Internet Transmission Date: Tue Mar 05 13:39:25 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2019030513392550
4255-87915471-62077734677b3dd1345b0cc332
bb5518ad844a27be9429902f6015fc201774-DA-
12753-20190305130214080900