| 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 | 88020489 |
| LAW OFFICE ASSIGNED | LAW OFFICE 103 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88020489/mark.png |
| LITERAL ELEMENT | CARROLL LEATHER |
| 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) | |
|
Mark CARROLL LEATHER Serial Number 88/020,489 Amendment to Identification of Goods The Examining Attorney requested clarification of the services identified in Class 35 of the subject application. Accordingly, Applicant submits the following amended identification: “Wholesale services through direct solicitation by salespersons featuring leather upholstery for furniture; wholesale services through direct solicitation by salespersons featuring cowhide rugs, goatskin rugs, sheepskin rugs; wholesale and retail services through direct solicitation by salespersons featuring leather scrap; wholesale and retail services through direct solicitation by salespersons featuring leather hides,” in Class 35. Disclaimer The Examining Attorney requests that Applicant disclaim the words “Leather” apart from the whole of Applicant’s Mark. Accordingly, Applicant submits the following disclaimer: No claim is made to the exclusive right to use “LEATHER” apart from the mark as shown. Likelihood of Confusion The Examining Attorney has refused registration of Applicant’s Mark because of a likelihood of confusion with the mark that is the subject of U.S. Reg. No. 4824241 (the “Cited Mark”). For the following reasons, Applicant respectfully requests that the Examining Attorney withdraw this refusal. First, Applicant respectfully submits that Applicant’s Mark is not likely to create confusion with the Cited Mark because Applicant’s goods and services are not sufficiently related to the goods or services for which the Cited Mark is registered to give rise to a likelihood of confusion. The Examining Attorney asserts that Applicant’s goods and services and the goods and services for which the Cited Mark is registered are of a type likely to be offered by the same source. Applicant respectfully disagrees. On the contrary, Applicant respectfully submits that Applicant’s goods and services and the registrant’s goods and services are unlikely to be offered by the same source, and are further distinguished by their nature and trade channels. Applicant’s goods are leather hides and upholstery leather sold for the purpose of manufacturing finished goods. Applicant’s services are wholesale and retail services of these leather materials through direct solicitation by sales professionals. In contrast, the registrant’s goods are finished consumer products, namely apparel and accessories for women (some of which may be made of leather or imitation leather), sold through online consumer retail channels, such as registrant’s website. (See Exhibit B.) Trademark Office policy dictates that “there can be no rule that certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto.” T.M.E.P. § 1207.01(a)(iv). In other words, the facts that Applicant’s goods and services and the goods and services for which the Cited Mark is registered both relate, in some manner, to leather does not necessitate the conclusion that their respective offerings are so similar that confusion among consumers is likely when similar marks are used for both. Tellingly, the Examining Attorney’s evidence does not show sales by the same companies of both leather hides and upholstery leather used in the manufacture of finished goods alongside finished goods such as luggage, apparel and accessories for women. Applicant submits that Applicant’s goods and services, namely leather materials sold for use in the manufacture of finished goods, are so distinct from the goods identified in the registration for the Cited Mark, namely luggage, apparel and accessories for women sold online to consumers, that confusion of any kind is highly unlikely. Moreover, Applicant’s goods are leather materials sold for the purpose of manufacturing finished goods. Applicant’s services are wholesale and retail services of these leather materials through direct solicitation by sales professionals. Applicant’s goods and services are marketed and sold by Applicant to manufacturers of goods (i.e. furniture manufacturers, hand bag manufacturers, manufactures of automotive seating, and the like) and to retailers of goods. (See Exhibit A.) Applicant’s customers will undoubtedly know the source of Applicant’s goods and services by virtue how Applicant sells its good and services—that is namely through communication and relationship between Applicant’s customers and Applicant’s sales professionals. Further, Applicant’s professional purchasers, namely manufacturers and retailers of goods, are likely to be sophisticated in their purchasing decisions and will undoubtedly know the source of Applicant’s goods and services. It is a well-recognized principle that purchasers exercising care in buying decisions are less likely to be confused even by marks that are similar in appearance. See T.M.E.P. § 1207.01(d)(vii) (circumstances suggesting care in purchasing tend to minimize likelihood of confusion); see also In re N.A.D., Inc., 224 USPQ 969, 971 (Fed. Cir. 1985) (no likelihood of confusion where, inter alia, relevant buyers were sophisticated purchasers who “would buy with great care and unquestionably know the source of the goods”). In contrast to Applicant’s goods and services, the registrant’s goods are finished consumer products, namely, luggage, apparel and accessories for women, sold through online consumer retail channels, such as registrant’s website. (See Exhibit B.). Based on the nature of the registrant’s goods and services, registrant’s customers are likely to be ordinary consumers, rather than professional industry purchasers such as manufacturers or retailers of goods. These factors indicate that Applicant’s and registrant’s goods and services are unrelated in the marketplace. Further, these factors indicate that Applicant and registrant provide goods and services to wholly unrelated classes of customers through trade channels that do not overlap. Where an Applicant’s and registrant’s goods and services are dissimilar, their trade channels do not overlap, and their classes of purchasers are unrelated and include sophisticated purchasers, there is no likelihood of confusion. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371 (Fed. Cir. 2012) (affirming Board conclusion that confusion was unlikely where goods, trade channels and class of consumers differed between the parties). Accordingly, Applicant’s Mark is unlikely to create confusion of any kind with the Cited Mark. Second, given the differences between Applicant’s goods and services and the goods and services for which the Cited Mark is registered, and the different trade channels and prospective customers
for both Applicant and the registrant, Applicant submits that Applicant’s Mark and the Cited Marks are sufficiently different in appearance and overall commercial impression to avoid confusion.
See T.M.E.P. § 1207.01(b)(iii) (additions or deletions to marks may be sufficient to avoid a likelihood of confusion if the marks in their entireties convey significantly different commercial
impressions) (emphasis added). It is well settled that a determination that two or more marks are likely to create confusion among the consuming public “cannot be predicated on dissection of a
mark, that is, on only part of a mark.” In re Nat’l Data Corp., 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985). Rather, in determining whether a likelihood of confusion exists, “the marks must be
considered in the way they are used and perceived.” In re Hearst Corp., 25 U.S.P.Q.2d 1238, 1239 (Fed. Cir. 1992). “Marks tend to be perceived in their entireties, and all components
thereof must be given appropriate weight.” Id. Therefore, it is inappropriate to disregard dissimilarities between marks in assessing whether a likelihood of confusion exists. Here, the additional term in Applicant’s Mark serves to indicate the nature of Applicant’s goods and services, namely that Applicant provides leather materials for use in the manufacture of finished goods. Given the differences in Applicant’s and the registrant’s channels of trade and product and service offerings, the additional wording is relevant to the overall commercial impression of Applicant’s Mark. In concluding that Applicant’s Mark and the Cited Mark are confusingly similar the Examining Attorney inappropriately dissected Applicant’s Mark and diminished the significant contribution of the additional and different word included in Applicant’s Mark to its overall commercial impression. See In re Hearst Corp., 25 U.S.P.Q.2d at 1239. Applicant submits that, when viewed in its entirety, with all components of Applicant’s Mark given appropriate weight, Applicant’s Mark and the Cited Mark are not likely to create confusion of any kind. This is especially so given the differences in the goods and services for which Applicant uses its mark compared to those for which the Cited Mark is registered, as explained above. Based on all of the foregoing, Applicant respectfully requests that this application be approved for publication. If you should have any further questions or need additional information
about this application, please feel free to contact us. Your assistance in this matter is greatly appreciated. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_6657398-20190130161303384913_._CARROLL_LEATHER_OA_Exhibit_A.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\880\204\88020489\xml4\ROA0002.JPG |
| ORIGINAL PDF FILE | evi_6657398-20190130161303384913_._CARROLL_LEATHER_OA__Exhibit_B.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\880\204\88020489\xml4\ROA0003.JPG |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A is a web page showing Applicant's leather materials for sale. Exhibit B is a web page showing Registrant's finished products for sale (luggage, apparel and accessories for women). |
| GOODS AND/OR SERVICES SECTION (018)(no change) | |
| GOODS AND/OR SERVICES SECTION (024)(no change) | |
| GOODS AND/OR SERVICES SECTION (027)(no change) | |
| GOODS AND/OR SERVICES SECTION (035)(current) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| Wholesale of leather upholstery for furniture; wholesale of cowhide rugs, goatskin rugs, sheepskin rugs; wholesale and retail of leather scrap; wholesale and retail of leather hides | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 12/31/1975 |
| FIRST USE IN COMMERCE DATE | At least as early as 12/31/1975 |
| GOODS AND/OR SERVICES SECTION (035)(proposed) | |
| INTERNATIONAL CLASS | 035 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Wholesale services through direct solicitation by salespersons featuring leather upholstery for furniture; wholesale services through direct solicitation by salespersons featuring cowhide rugs, goatskin rugs, sheepskin rugs; wholesale and retail services through direct solicitation by salespersons featuring leather scrap; wholesale and retail services through direct solicitation by salespersons featuring leather hides. | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 12/31/1975 |
| FIRST USE IN COMMERCE DATE | At least as early as 12/31/1975 |
| ADDITIONAL STATEMENTS SECTION | |
| DISCLAIMER | No claim is made to the exclusive right to use "LEATHER" apart from the mark as shown. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Tiffani D. Otey/ |
| SIGNATORY'S NAME | Tiffani D. Otey |
| SIGNATORY'S POSITION | Attorney of Record, NC Bar Member |
| SIGNATORY'S PHONE NUMBER | 336-721-3629 |
| DATE SIGNED | 01/30/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Jan 31 09:16:32 EST 2019 |
| TEAS STAMP | USPTO/ROA-XX.XX.X.XX-2019 0131091632832096-88020489 -620ef9a514caee8c3a78231f b06bfce623a6e8877ec026698 0dc113c63e94df821-N/A-N/A -20190130161303384913 |
| 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) |
Mark CARROLL LEATHER
Serial Number 88/020,489
Date of Office Action August 6, 2018
PTO Deadline February 6, 2019
Amendment to Identification of Goods
The Examining Attorney requested clarification of the services identified in Class 35 of the subject application. Accordingly, Applicant submits the following amended identification:
“Wholesale services through direct solicitation by salespersons featuring leather upholstery for furniture; wholesale services through direct solicitation by salespersons featuring cowhide rugs, goatskin rugs, sheepskin rugs; wholesale and retail services through direct solicitation by salespersons featuring leather scrap; wholesale and retail services through direct solicitation by salespersons featuring leather hides,” in Class 35.
Disclaimer
The Examining Attorney requests that Applicant disclaim the words “Leather” apart from the whole of Applicant’s Mark. Accordingly, Applicant submits the following disclaimer:
No claim is made to the exclusive right to use “LEATHER” apart from the mark as shown.
Likelihood of Confusion
The Examining Attorney has refused registration of Applicant’s Mark because of a likelihood of confusion with the mark that is the subject of U.S. Reg. No. 4824241 (the “Cited Mark”). For the following reasons, Applicant respectfully requests that the Examining Attorney withdraw this refusal.
First, Applicant respectfully submits that Applicant’s Mark is not likely to create confusion with the Cited Mark because Applicant’s goods and services are not sufficiently related to the goods or services for which the Cited Mark is registered to give rise to a likelihood of confusion. The Examining Attorney asserts that Applicant’s goods and services and the goods and services for which the Cited Mark is registered are of a type likely to be offered by the same source. Applicant respectfully disagrees. On the contrary, Applicant respectfully submits that Applicant’s goods and services and the registrant’s goods and services are unlikely to be offered by the same source, and are further distinguished by their nature and trade channels.
Applicant’s goods are leather hides and upholstery leather sold for the purpose of manufacturing finished goods. Applicant’s services are wholesale and retail services of these leather materials through direct solicitation by sales professionals. In contrast, the registrant’s goods are finished consumer products, namely apparel and accessories for women (some of which may be made of leather or imitation leather), sold through online consumer retail channels, such as registrant’s website. (See Exhibit B.) Trademark Office policy dictates that “there can be no rule that certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto.” T.M.E.P. § 1207.01(a)(iv). In other words, the facts that Applicant’s goods and services and the goods and services for which the Cited Mark is registered both relate, in some manner, to leather does not necessitate the conclusion that their respective offerings are so similar that confusion among consumers is likely when similar marks are used for both. Tellingly, the Examining Attorney’s evidence does not show sales by the same companies of both leather hides and upholstery leather used in the manufacture of finished goods alongside finished goods such as luggage, apparel and accessories for women. Applicant submits that Applicant’s goods and services, namely leather materials sold for use in the manufacture of finished goods, are so distinct from the goods identified in the registration for the Cited Mark, namely luggage, apparel and accessories for women sold online to consumers, that confusion of any kind is highly unlikely.
Moreover, Applicant’s goods are leather materials sold for the purpose of manufacturing finished goods. Applicant’s services are wholesale and retail services of these leather materials through direct solicitation by sales professionals. Applicant’s goods and services are marketed and sold by Applicant to manufacturers of goods (i.e. furniture manufacturers, hand bag manufacturers, manufactures of automotive seating, and the like) and to retailers of goods. (See Exhibit A.) Applicant’s customers will undoubtedly know the source of Applicant’s goods and services by virtue how Applicant sells its good and services—that is namely through communication and relationship between Applicant’s customers and Applicant’s sales professionals. Further, Applicant’s professional purchasers, namely manufacturers and retailers of goods, are likely to be sophisticated in their purchasing decisions and will undoubtedly know the source of Applicant’s goods and services. It is a well-recognized principle that purchasers exercising care in buying decisions are less likely to be confused even by marks that are similar in appearance. See T.M.E.P. § 1207.01(d)(vii) (circumstances suggesting care in purchasing tend to minimize likelihood of confusion); see also In re N.A.D., Inc., 224 USPQ 969, 971 (Fed. Cir. 1985) (no likelihood of confusion where, inter alia, relevant buyers were sophisticated purchasers who “would buy with great care and unquestionably know the source of the goods”).
In contrast to Applicant’s goods and services, the registrant’s goods are finished consumer products, namely, luggage, apparel and accessories for women, sold through online consumer retail channels, such as registrant’s website. (See Exhibit B.). Based on the nature of the registrant’s goods and services, registrant’s customers are likely to be ordinary consumers, rather than professional industry purchasers such as manufacturers or retailers of goods. These factors indicate that Applicant’s and registrant’s goods and services are unrelated in the marketplace. Further, these factors indicate that Applicant and registrant provide goods and services to wholly unrelated classes of customers through trade channels that do not overlap. Where an Applicant’s and registrant’s goods and services are dissimilar, their trade channels do not overlap, and their classes of purchasers are unrelated and include sophisticated purchasers, there is no likelihood of confusion. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371 (Fed. Cir. 2012) (affirming Board conclusion that confusion was unlikely where goods, trade channels and class of consumers differed between the parties). Accordingly, Applicant’s Mark is unlikely to create confusion of any kind with the Cited Mark.
Second, given the differences between Applicant’s goods and services and the goods and services for which the Cited Mark is registered, and the different trade channels and prospective customers
for both Applicant and the registrant, Applicant submits that Applicant’s Mark and the Cited Marks are sufficiently different in appearance and overall commercial impression to avoid confusion.
See T.M.E.P. § 1207.01(b)(iii) (additions or deletions to marks may be sufficient to avoid a likelihood of confusion if the marks in their entireties convey significantly different commercial
impressions) (emphasis added). It is well settled that a determination that two or more marks are likely to create confusion among the consuming public “cannot be predicated on dissection of a
mark, that is, on only part of a mark.” In re Nat’l Data Corp., 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985). Rather, in determining whether a likelihood of confusion exists, “the marks must be
considered in the way they are used and perceived.” In re Hearst Corp., 25 U.S.P.Q.2d 1238, 1239 (Fed. Cir. 1992). “Marks tend to be perceived in their entireties, and all components
thereof must be given appropriate weight.” Id. Therefore, it is inappropriate to disregard dissimilarities between marks in assessing whether a likelihood of confusion exists.
Applicant respectfully submits that the Examining Attorney failed to give appropriate weight to the additional and different components included in Applicant’s Mark that are not present in the
Cited Mark, and as a result has erred in determining that Applicant’s Mark creates a likelihood of confusion with the Cited Mark. Applicant’s Mark is CARROLL LEATHER. The Examining
Attorney notes that Applicant’s Mark and the Cited Mark both contain the word “Carroll” and bases the conclusion that the marks are confusingly similar on this consideration. However, the
Examining Attorney failed to give appropriate weight to the additional element in Applicant’s Mark. Specifically, the Examining Attorney concludes that the word “Leather” is insignificant to
the analysis because of its descriptive nature in relation to Applicant’s goods and services, and therefore disregards the commercial impression this component adds to Applicant’s Mark. However, a
descriptive term in a composite mark contributes to the overall appearance and commercial impression of a mark and should not be wholly disregarded.
Here, the additional term in Applicant’s Mark serves to indicate the nature of Applicant’s goods and services, namely that Applicant provides leather materials for use in the manufacture of finished goods. Given the differences in Applicant’s and the registrant’s channels of trade and product and service offerings, the additional wording is relevant to the overall commercial impression of Applicant’s Mark. In concluding that Applicant’s Mark and the Cited Mark are confusingly similar the Examining Attorney inappropriately dissected Applicant’s Mark and diminished the significant contribution of the additional and different word included in Applicant’s Mark to its overall commercial impression. See In re Hearst Corp., 25 U.S.P.Q.2d at 1239. Applicant submits that, when viewed in its entirety, with all components of Applicant’s Mark given appropriate weight, Applicant’s Mark and the Cited Mark are not likely to create confusion of any kind. This is especially so given the differences in the goods and services for which Applicant uses its mark compared to those for which the Cited Mark is registered, as explained above.
Based on all of the foregoing, Applicant respectfully requests that this application be approved for publication. If you should have any further questions or need additional information
about this application, please feel free to contact us. Your assistance in this matter is greatly appreciated.
