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)

---

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. 87954328 HB (Stylized and/or with Design, see http://uspto.report/TM/87954328/mark.png) has been amended as follows:

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

U.S. Application Serial No. 87/954,328 Mark: HB Applicant: Thomman GmbH Date of Office Action: July 19, 2018 Applicant files this response to the Office Action dated July 19, 2018. The Office Action issued a preliminary refusal of the application alleging a likelihood of confusion under Section 2(d) of the Lanham Act based on a prior registered mark, HB3, U.S. Registration Nos. 4,139,032 (the "032 mark") and 4,913,903 (the "903 mark"). Prior Registration HB, an abbreviation for Harley Benton, is well known in the US and abroad for use in connection with electric guitars and related parts and accessories. Applicant Thomann GmbH owns several prior existing trademark registrations covering its HARLEY BENTON mark, including U.S. Registration No. 5,108,376 (the "376 mark") issued in 2000. As evidenced by Applicant's existing registrations, Applicant owns longstanding rights in both the US and Worldwide in connection with its HARLEY BENTON and abbreviated HB marks. While the HB3 marks were registered before Applicant's current HB application, (the "328 application"), they were registered well after Applicant's 376 mark. Indeed, Applicant's 328 application is merely an effort to record the already protected abbreviation of those words. Natl. Cable Tel. Ass'n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1578 (Fed. Cir. 1991) (finding that an abbreviation of a registered trademark was protected under the scope of the trademark); 1 McCarthy on Trademarks and Unfair Competition 7:18 (5th ed.). Both the public as well as Applicant routinely abbreviated Harley Benton to HB since before 2013, the first use of HB3. Examples of Applicant's prior use of HB as an abbreviation for Harley Benton is attached hereto as Exhibit A. Courts have held that where an abbreviation is likely to create the same commercial impression on buyers as the original, the user may trace his first use back to use of the original for priority purposes. See, e.g., Vacuum-Elecs. Corp., 150 U.S.P.Q. (BNA) 215 (T.T.A.B. May 10, 1966). As such, if there is any meaningful concern regarding likelihood of confusion between HB and HB3, it is the HB3 marks that conflict with HB as an abbreviation of Applicant's previously registered mark. Section 2(d) Refusal Likelihood of Confusion However, for the purposes of this proceeding, Applicant asserts that there is no likelihood of confusion between Applicant's pending mark (Serial No. 87/954,328) and the HB3 marks. Applicant respectfully requests withdrawal of the Examiner's determination that the application may be refused registration based on the allegation of a likelihood of confusion with the 302 and 903 marks and removal of the suspension of Applicant's application. At its core, determination of likelihood of confusion depends upon whether the purchasing public would mistakenly assume that the Applicant's goods and services originate with, are associated with the goods or services of another, or are sponsored by the owner of another registered trademark. TMEP 1207.01; see, e.g., In re Majestic Distilling Co., 315 F.3d 1311, 1316 (Fed. Cir. 2003) ([T]he... mistaken belief that [a good] is manufactured or sponsored by the same entity [as another good]... is precisely the mistake that 2(d) of the Lanham Act seeks to prevent.); In re Shell Oil Co., 992 F.2d 1204, 1207 (Fed. Cir. 1993) (The degree of relatedness must be viewed in the context of all the factors, in determining whether the services are sufficiently related that a reasonable consumer would be confused as to source or sponsorship.). In determining whether a likelihood of confusion may arise, an examining attorney evaluates a variety of factors detailed in In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). Not all the factors are relevant in every case. Id. at 1361-62; see also In re Mighty Leaf Tea, 601 F.3d 1342, 1346 (Fed. Cir. 2010) ("Not all of the DuPont factors are relevant to every case, and only factors of significance to the particular mark need be considered.") Factors relevant to a likelihood of confusion determination in this matter: (1) the similarity or dissimilarity of established, likely-to-continue trade channels (2) sophistication of the buyer; (3) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; (4) the relatedness of the goods or services as described in the application and registration(s); and (5) the nature and extent of any actual confusion;. In re E.I. Du Pont, 476 F.2d at 1361; TMEP ? 1207.01 (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103 (C.C.P.A. 1976); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1244 (TTAB 2010); In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009)). Any of the du Pont factors may play a dominant role. In re E.I. Du Pont, 476 F.2d at 1361. In some cases, a single factor may be dispositive. Kellogg Co. v. Pack'em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) ("we know of no reason why, in a particular case, a single du Pont factor may not be dispositive"). A. Dissimilarity of Trade Channels There is no evidence to suggest an overlap in the channels of trade for the goods at issue. See, e.g., In re HerbalScience Group LLC, 96 USPQ2d 1321, 1324 (TTAB 2010) ("There is nothing in this record to show that a normal channel of trade for dietary and nutritional supplements is that they are sold to the companies that would purchase applicant's identified goods."). Where an applicant sells expensive goods under its mark to a distinct and discriminating group of people through a separate trade channel, this fact strongly weighs against a likelihood of confusion. See Alpha Industries, Inc. v. Alpha Steel Tube & Shapes, 616 F.2d 440, 444-45 (9th Cir. 1980) (ALPHA not confusingly similar to ALPHA STEEL, despite fact that "steel" was descriptive and the goods were related, "where the purchasers [were] two distinct groups and both knowledgeable, where the items [were] expensive (implying greater buyer care)"). The goods are sold through entirely different channels of trade and do not overlap. Applicant uses the mark HB as an abbreviation for Harley Benton, which, for nearly two decades, the applicant has used as a brand to sell highly specialized musical instruments and electronic goods relating specifically to musical instruments such as guitars, amplifiers, musical instrument effectors, sound amplifiers, sound mixers, and audio amplifiers through its own retail stores and website. HB?s products range from approximately $150 to $300?over 3 to 5 times the cost of HB3?s products?and its goods are sold through recognized dealers and service outlets. See In Re Bentley Motors Ltd., No. 85325994, 2013 WL 8147983, at *4 (Dec. 3, 2013). HB3, conversely, sells clothing and wireless headphones built into clothing. The clothing, which includes the wireless headphones, cost $50. A true and correct copy of HB3's products are attached hereto as Exhibit B. HB goods are sold only through established instrument dealers. HB3's goods are not sold through any of the same dealers as HB; indeed, HB3 is only sold through commercial clothing markets and on its own website. The parties are not in competition with each other, are not operating in the same channels of trade, and therefore, no likelihood of confusion exists. Charles Atlas, Ltd v. DC Comics, Inc., 112 F.Supp.2d 330, 339 (S.D.N.Y.2000) (noting that because the parties "are simply not in direct competition . . .the likelihood of confusion is greatly reduced"). B. Sophistication of the Buyer The sophistication of the buyers also counsel against a finding of likelihood of confusion. See Electronic Design & Sales v. Electronic Data Systems Corporation, 954 F.2d 713, 714 (Fed. Cir. 1992) (holding "that the Board failed to assess properly the differences in purchasers, channels of trade, and what each company sold, and overlooked the sophistication of the purchasers...") Because the channels of trade between the two goods differ substantially, the overlap of purchasers is limited. HB markets specifically to musicians who exercise a high degree of care when purchasing electrical instruments and equipment for those instruments. Based upon the accessibility of the HB goods and dealers they use, Applicant's goods are purchased after careful consideration by persons who are knowledgeable about the goods or services and their source. C. Relatedness of the Goods In a 2(d) determination, the primary concern is not whether the goods and/or services will be confused with each other, but rather whether the public will be confused as to their source. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). If the goods or services in question are not related or marketed such 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 confusion is not likely. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371 (Fed. Cir. 2012). In re St. Helena Hosp., 774 F.3d 747, 754 (Fed. Cir. 2014) (finding that substantial evidence did not support relatedness of hospital-based residential weight and lifestyle program and printed materials dealing with physical activity and fitness). The goods at issue are not related to each other, are not used together or acquired by the same purchasers and are not advertised together or sold by the same manufacturer or dealer, or the same types of dealers. Applicant's Mark, HB, is for class 9 and class 15 goods used for the sale of musical instruments such as guitars and sound equipment, including amplifiers, musical instrument effectors, namely sound amplifiers, sound mixers, sound mixers with integrated amplifiers, audio amplifiers. The HB3 marks, on the other hand, are for class 9 goods relating to the sale of audio headphones, audio speakers, ear buds, earphones and headphones, headphones including attached lanyard, electronic audio circuits, microphones, wireless communication devices, solar powered electronic devices relating to commercial clothing products. HB3 is used for wireless headphone technology in hoodies marketed for teenagers, whereas HB/Harley Benton instruments and amplifiers are sold as specialized goods for a sophisticated market. While both marks apply to the sale of certain electrical goods, those goods are for entirely different sectors of trade. These items are not used together, are not sold in the same channels of commerce, and the general public would not consider them to be related. D. Dissimilarity of the Marks In evaluating whether the marks are similar, "[a]ll relevant facts pertaining to appearance, sound, and connotation must be considered before similarity as to one or more of those factors may be sufficient to support a finding that the marks are similar or dissimilar." Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000). Courts will look to the appearance, sound, meaning, and commercial impression when evaluating the similarity of word marks. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1371 (Fed. Cir. 2005) (citing In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361). A court compares the marks without dissecting its components, instead looking at a single unitary expression. There is no likelihood of confusion between the marks at issue. Applicant's mark, HB, and the HB3 registered marks have different appearances and commercial impressions when taken in their entireties. Although the marks share the HB letters, the style of the letter font is markedly different. Applicant's mark, HB, is an all caps, italicized font that mirrors the same font as the HARLEY BENTON 376 mark. Although registered as a standard form mark, HB3 has utilized stylized all lower-case, bubble fonts in all its marketing. Furthermore, the HB and HB3 marks target different channels of trade and are sufficiently dissimilar such that there would be no confusion in the marketplace. E. No Actual Confusion There is simply no evidence of any actual confusion between the marks. These marks already coexist in the market, particularly with respect to the previously registered 376 mark, owned by Applicant, which has utilized the HB abbreviation for many years. Indeed, likelihood of confusion is not intended as a mechanically applied rule, but is to the extent possible, an evaluation of what happens in a real-world setting. Matsushita Elec. Indus. Co., Ltd. v. National Steel Construction Co., 442 F.2d 1383, 1385, 170 USPQ 98, 99 (CCPA 1971). No practical evidence suggests any overlap between these two trademarks. Conclusion For the foregoing reasons, Applicant respectfully submits that there is no likelihood of confusion between the HB application and the HB3 marks, respectfully requests withdrawal of the determination of a preliminary Section 2(d) refusal and urges the Examiner to approve Applicant's application for publication.

EVIDENCE
Evidence in the nature of Showing that the HB mark is an appreviated version of a previously registerd mark, that the goods are not in similar channels, and that the HB mark was in use before HB3. has been attached.
Original PDF file:
evi_10817610498-20190118140242114731_._HB_Mark_Exhibits.pdf
Converted PDF file(s) ( 9 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
MARTIN J. RICCIARDI
WHITEMAN OSTERMAN & HANNA LLP
ONE COMMERCE PLAZA
ALBANY
New York
US
12260

Proposed:
MARTIN J. RICCIARDI of WHITEMAN OSTERMAN & HANNA LLP, having an address of
ONE COMMERCE PLAZA ALBANY, New York 12260
United States
mricciardi@woh.com;rshwab@woh.com; ccarletta@woh.com
518-487-7618
518-487-7777
The docket/reference number is 108505-002 .



SIGNATURE(S)
Response Signature
Signature: /martin j. ricciardi/     Date: 01/18/2019
Signatory's Name: Martin J. Ricciardi
Signatory's Position: Attorney of Record

Signatory's Phone Number: 518-487-7618

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.

Mailing Address:    MARTIN J. RICCIARDI
   WHITEMAN OSTERMAN & HANNA LLP
   ONE COMMERCE PLAZA
   ALBANY, New York 12260
        
Serial Number: 87954328
Internet Transmission Date: Fri Jan 18 14:21:51 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201901181421516
12620-87954328-62021accefd5915d9dd29a47c
c5357fad4a8fd115b482a6a6e888332b502926f7
74-N/A-N/A-20190118140242114731