| 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 | 88087807 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88087807/mark.png |
| LITERAL ELEMENT | LEXINGTON |
| 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) | |
|
The Examining Attorney issued an Office Action raising three issues, namely, a prior pending application (now registered), a request to clarify the identification of services, and a multiple class application advisory. As to the recitation of services and potential for multiple classes, Applicant appreciates the suggested clarification and provides additional information about the services below. Applicant’s custom fabrication and construction services are used to create “themed elements” such as models, sets, and props for use in theme parks, zoos, museums, aquariums, and other attractions. An example would be Applicant creating a section of a zoo for a penguin habitat. Applicant would provide “themed” elements such as an arctic-looking landscape prop with rocks, ice, and snow for the penguins to live in. Or, Applicant may build a section of a theme park that the theme park wants to associate with a new hit movie. Applicant would build the sets and props based on the visual and story elements from the hit movie. Applicant believes the below clarification should obviate the Examiner’s concerns:
Class 40: “Custom fabrication and production of themed models, sets, and props for use in theme parks, zoo, museums, aquariums, and other entertainment attractions.” This same clarification was accepted via Examiner’s Amendment for one of Applicant’s related-company’s marks. See February 7, 2019 Examiner’s Amendment attached hereto as Exhibit A in Serial No. 88087790. The amendment takes away any indefiniteness of “themed elements” and clarifies that the themed elements are items such as models, sets, and props. Should this be acceptable, please advise Applicant of the best way to amend the description – i.e. via Examiner’s Amendment or via Applicant making the amendment via TEAS. As for the prior pending application, Applicant notes that the pending application has now registered as U.S. Reg. No. 5674179. The services are in Class 37 for “Residential home construction and real estate development services; Construction services, namely, planning, laying out and construction of a planned residential community.” The mark is LEXINGTON HOMES. The inclusion of HOMES, although disclaimed, is still a crucial portion of the adverse mark as it serves to tie the mark to the services, which are expressly limited to residential, or “home,” construction such as residential communities. Conversely, as expressly claimed in Applicant’s services, Applicant’s services and clientele are commercial establishments that run commercial attractions such as theme parks, zoos, and aquariums. Thus, “HOMES” in the adverse applicant’s mark also “teaches away” (to use a patent term) or otherwise distinguishes the adverse services from the Applicant’s services, which are the opposite of “home” or “residential” services. The decision to utilize adverse-applicant’s residential home building services is certainly not an impulse buy, just as the decision to purchase Applicant’s custom fabrication services is not an impulse buy. The sophistication of the consumers purchasing the respective services is high, and given the very specialized, niche market that Applicant inhabits, the likelihood that consumers would assume some relationship between the parties is highly remote. These are not candy bars or off-the-shelf goods. These are both highly specialized and expensive services catering to distinct, yet sophisticated, clientele. As shown in Exhibit B, which is a true and correct printout from Applicant’s website (http://lexington.companiesofnassal.com/projects/, printed and last visited on February 26, 2019), Applicant’s services include “scenic fabrication” for cultural institutions, broadcast media, specialty sets and venues, and, casino & Indian gaming. At the bottom of the exhibit, a selection of Applicant’s clientele is shown, including Universal Parks & Resorts, Disney, the Tampa Bay Buccaneers, the Pittsburgh Steelers, Ferrari, and Kennedy Space Center. Exhibit “C” is a true and correct printout from http://lexington.companiesofnassal.com/projects/idaho-state-museum/ (printed and last accessed February 26, 2019) showing what Applicant’s services involve and also providing pictures of the fabricated elements (none of which appear remotely related to residential home construction or planned residential communities). Conversely, Registrant D.R. Horton’s “Lexington Homes” website is shown in Exhibit “D”, which is a true and correct printout from http://www.drhorton.com/affiliates---lexington (printed and last accessed February 26, 2019). As shown in Exhibit “D”, Registrant’s services are residential homebuilding in the “Spokane and surrounding Washington-state area.” Additional wording on the page shows the emphasis on “home building” and personalizing “your home to fit all your lifestyle needs” and designing one’s “dream home.” Applicant and Registrant are in completely distinct industries. As the predecessor to the Court of Appeals for the Federal Circuit has stated, “We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal.” Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992); Witco Chemical Co. v. Whitfield Chemical Co., 418 F.2d 1403, 1405 (C.C.P.A. 1969). The practicalities of the commercial world in this case are such that confusion is simply not likely. Applicant respectfully requests that the Examining Attorney remove the suspension. Adverse Registrant will have the option to oppose Applicant’s application, just as Lexington Furniture Industries, Inc. sought a request of time to oppose the adverse LEXINGTON HOMES application. (See TTAB Number 87953109, http://ttabvue.gov.uspto.report/ttabvue/v?pno=87953109&pty=EXT&eno=1). |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_7141212190-20190305134021896699_._Ex_A.pdf |
| CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\880\878\88087807\xml5\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\880\878\88087807\xml5\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\878\88087807\xml5\ROA0004.JPG | |
| ORIGINAL PDF FILE | evi_7141212190-20190305134021896699_._Ex_B.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\880\878\88087807\xml5\ROA0005.JPG |
| ORIGINAL PDF FILE | evi_7141212190-20190305134021896699_._Ex_C.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\880\878\88087807\xml5\ROA0006.JPG |
| ORIGINAL PDF FILE | evi_7141212190-20190305134021896699_._Ex_D.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\880\878\88087807\xml5\ROA0007.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\880\878\88087807\xml5\ROA0008.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibits referenced in argument. |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 040 |
| DESCRIPTION | |
| Custom fabrication and construction of themed elements, models, sets, and props for theme parks, zoo, museums, aquariums, and other attractions | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 01/01/2017 |
| FIRST USE IN COMMERCE DATE | At least as early as 01/01/2017 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 040 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Custom fabrication and production of themed models, sets, and props for use in theme parks, zoo, museums, aquariums, and other entertainment attractions | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 01/01/2017 |
| FIRST USE IN COMMERCE DATE | At least as early as 01/01/2017 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Kevin W. Wimberly/ |
| SIGNATORY'S NAME | Kevin W. Wimberly |
| SIGNATORY'S POSITION | Attorney of record, Florida bar member |
| SIGNATORY'S PHONE NUMBER | 4079267713 |
| DATE SIGNED | 03/05/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Mar 05 13:45:54 EST 2019 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0190305134554786232-88087 807-620d2da659c8cbce3ad27 e5c0bfec6f537246d47b4d209 9f5e3936de8b834adb473-N/A -N/A-20190305134021896699 |
| 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) |
The Examining Attorney issued an Office Action raising three issues, namely, a prior pending application (now registered), a request to clarify the identification of services, and a multiple class application advisory.
As to the recitation of services and potential for multiple classes, Applicant appreciates the suggested clarification and provides additional information about the services below.
Applicant’s custom fabrication and construction services are used to create “themed elements” such as models, sets, and props for use in theme parks, zoos, museums, aquariums, and other attractions. An example would be Applicant creating a section of a zoo for a penguin habitat. Applicant would provide “themed” elements such as an arctic-looking landscape prop with rocks, ice, and snow for the penguins to live in. Or, Applicant may build a section of a theme park that the theme park wants to associate with a new hit movie. Applicant would build the sets and props based on the visual and story elements from the hit movie.
Applicant believes the below clarification should obviate the Examiner’s concerns:
Class 40: “Custom fabrication and production of themed models, sets, and props for use in theme parks, zoo, museums, aquariums, and other entertainment attractions.”
This same clarification was accepted via Examiner’s Amendment for one of Applicant’s related-company’s marks. See February 7, 2019 Examiner’s Amendment attached hereto as Exhibit A in Serial No. 88087790. The amendment takes away any indefiniteness of “themed elements” and clarifies that the themed elements are items such as models, sets, and props. Should this be acceptable, please advise Applicant of the best way to amend the description – i.e. via Examiner’s Amendment or via Applicant making the amendment via TEAS.
As for the prior pending application, Applicant notes that the pending application has now registered as U.S. Reg. No. 5674179. The services are in Class 37 for “Residential home construction and real estate development services; Construction services, namely, planning, laying out and construction of a planned residential community.” The mark is LEXINGTON HOMES. The inclusion of HOMES, although disclaimed, is still a crucial portion of the adverse mark as it serves to tie the mark to the services, which are expressly limited to residential, or “home,” construction such as residential communities. Conversely, as expressly claimed in Applicant’s services, Applicant’s services and clientele are commercial establishments that run commercial attractions such as theme parks, zoos, and aquariums. Thus, “HOMES” in the adverse applicant’s mark also “teaches away” (to use a patent term) or otherwise distinguishes the adverse services from the Applicant’s services, which are the opposite of “home” or “residential” services.
The decision to utilize adverse-applicant’s residential home building services is certainly not an impulse buy, just as the decision to purchase Applicant’s custom fabrication services is not an impulse buy. The sophistication of the consumers purchasing the respective services is high, and given the very specialized, niche market that Applicant inhabits, the likelihood that consumers would assume some relationship between the parties is highly remote. These are not candy bars or off-the-shelf goods. These are both highly specialized and expensive services catering to distinct, yet sophisticated, clientele. As shown in Exhibit B, which is a true and correct printout from Applicant’s website (http://lexington.companiesofnassal.com/projects/, printed and last visited on February 26, 2019), Applicant’s services include “scenic fabrication” for cultural institutions, broadcast media, specialty sets and venues, and, casino & Indian gaming. At the bottom of the exhibit, a selection of Applicant’s clientele is shown, including Universal Parks & Resorts, Disney, the Tampa Bay Buccaneers, the Pittsburgh Steelers, Ferrari, and Kennedy Space Center. Exhibit “C” is a true and correct printout from http://lexington.companiesofnassal.com/projects/idaho-state-museum/ (printed and last accessed February 26, 2019) showing what Applicant’s services involve and also providing pictures of the fabricated elements (none of which appear remotely related to residential home construction or planned residential communities). Conversely, Registrant D.R. Horton’s “Lexington Homes” website is shown in Exhibit “D”, which is a true and correct printout from http://www.drhorton.com/affiliates---lexington (printed and last accessed February 26, 2019). As shown in Exhibit “D”, Registrant’s services are residential homebuilding in the “Spokane and surrounding Washington-state area.” Additional wording on the page shows the emphasis on “home building” and personalizing “your home to fit all your lifestyle needs” and designing one’s “dream home.” Applicant and Registrant are in completely distinct industries.
As the predecessor to the Court of Appeals for the Federal Circuit has stated, “We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal.” Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992); Witco Chemical Co. v. Whitfield Chemical Co., 418 F.2d 1403, 1405 (C.C.P.A. 1969). The practicalities of the commercial world in this case are such that confusion is simply not likely.
Applicant respectfully requests that the Examining Attorney remove the suspension. Adverse Registrant will have the option to oppose Applicant’s application, just as Lexington Furniture Industries, Inc. sought a request of time to oppose the adverse LEXINGTON HOMES application. (See TTAB Number 87953109, http://ttabvue.gov.uspto.report/ttabvue/v?pno=87953109&pty=EXT&eno=1).
