| 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 | 88134288 |
| LAW OFFICE ASSIGNED | LAW OFFICE 100 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88134288/mark.png |
| LITERAL ELEMENT | KANE |
| 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 has refused registration of Applicant’s mark under Section 2(d) based on Registration No. 5,259,738 for the mark CAIN BROTHERS covering “Financial advisory and consultancy services; Investment banking services; Real estate brokerage.” The Examining Attorney alleges that Applicant’s mark, when applied to the identified services, so resembles the cited mark as to be likely to cause confusion, mistake, or deception.
A determination of likelihood of confusion under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the thirteen factors set forth in In re E.I. du Pont de Nemours & Co., 177 USPQ 563, 567 (CCPA 1973). The Examining Attorney need not consider all factors, but may consider those factors that are most relevant to the case at hand. See In re Dixie Restaurants, Inc., 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The relevant du Pont factors in this case are: (1) the differences in appearance, sound, meaning, and overall commercial impression between the marks; (2) the level of care required of purchasers prior to engaging the parties’ services; and (3) peaceful coexistence without confusion for over thirty-five years. In the present case, the cumulative effects of each of these factors are sufficient to render confusion unlikely. 1. The Parties’ Marks Taken as a Whole Are Sufficiently Dissimilar to Avoid a Likelihood of Confusion. Although the parties’ respective marks share an audible component (KANE vs. CAIN), the overall visual and audible differences between the marks, as well as their respective meanings and commercial impressions, are sufficient to distinguish them and avoid a likelihood of confusion.
First, the marks appear and look very different. The cited mark CAIN BROTHERS is comprised of two words. The “BROTHERS” portion contains twice the number of letters as “CAIN”, and is thus visually double the length of the “CAIN” portion of the mark. Accordingly, those encountering the cited mark will undoubtedly place emphasis on the “BROTHERS” portion. Applicant’s mark, however, is only four total letters, with no corresponding second word. In addition, even discounting the “BROTHERS” component of the cited mark, the remaining “CAIN” portion is also visually dissimilar to Applicant’s mark due to the significant difference in spelling. Specifically, unlike the cited mark’s “CAIN” component, Applicant’s mark (i) begins with a “K” instead of a “C”, (ii) does not contain the letter “I”, and (iii) ends with the letter “E”.
Second, the marks viewed as a whole sound different. The cited mark is comprised of two words and three syllables. Applicant’s mark, however, is comprised of only one word and one syllable. Furthermore, two-thirds of the cited mark’s syllables result from its second word, “BROTHERS”, necessarily causing even those only hearing the mark to place emphasis on that term.
Third, the term “BROTHERS” in the cited mark has the ordinary meaning of male siblings, whereas nothing in Applicant’s mark conveys any such meaning.
Finally, both parties’ marks are surnames. The Registrant proceeded to registration under Section 2(f) based on 5 years of use, just as Applicant has done in the present case. As such, the scope of protection afforded each mark is not very broad.
Taken together, and in view of this scope of protection, the cumulative differences between the marks as described above are sufficient to avoid a likelihood of confusion. 2. The Careful Analysis that the Parties’ Customers Undergo Prior to Any Purchase Renders Confusion Unlikely.
Consumer care is an essential element in the likelihood of confusion analysis. The greater the value of a good or service, the more careful analysis the purchaser will undergo to examine different options prior to purchasing. See McGregor-Doniger, Inc. v. Drivzzel, Inc., 202 U.S.P.Q. 81, 92 (2d Cir. 1979); Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 236 F.2d 423, 427–28 (C.C.P.A. 1956) (finding no likelihood of confusion between HURRICANE for auto engines and HURRICANE for outboard motors; the court stated: “It is to be noted, in the first place, that the goods involved are comparatively expensive and are not ordinarily purchased casually, but only after rather careful consideration. In such cases confusion is less likely than where the goods are cheap and are purchased casually.”).
Here, neither of the parties’ respective services are of the type that would be purchased on impulse or with a low degree of care. The real estate brokerage and consultancy services, and other services covered by the parties’ marks, are highly personalized in their nature, require a considerable level of expertise in the field, and often come at a substantial cost. As such, any purchaser of these services will conduct extremely careful research and analysis prior to making any purchase.
Accordingly, the careful analysis that any purchaser will undergo before engaging the parties’ services will preclude a likelihood of confusion, particularly in light of the overall differences in the parties’ marks as discussed above. 3. The Parties’ Marks Have Coexisted for Over Thirty-Five Years Without Confusion.
The lack of actual confusion over a significant period of time weighs heavily in favor of finding confusion unlikely. See CareFirst of Maryland, Inc. v. First Care, P.C., 77 U.S.P.Q.2d 1577 (4th Cir. 2006) (holding that the fact that there was only “at best” evidence of a de minimis amount of confusion despite coexistence for nine years between (i) CAREFIRST covering a health maintenance organization and (ii) FIRST CARE covering a corporation of primary physicians, “weighed heavily” in favor of and created a “strong inference” that confusion was unlikely); Barre-National, Inc. v. Barr Laboratories, Inc., 21 U.S.P.Q.2d 1755, 1762 (D.N.J. 1991) (noting that coexistence for at least seventeen years without any actual confusion between the marks BARR and BARRE for similar and identical products “weigh[ed] heavily against a finding of likelihood of confusion.”).
In the present case, the parties have both used their respective marks in commerce for more than thirty-five years. And yet, all this time, Applicant has not encountered a single instance of actual confusion between the parties’ marks. This period of peaceful coexistence is longer than the periods of coexistence for the respective marks in CareFirst of Maryland and Barre-National combined. This period of coexistence without confusion creates a strong inference of, and weighs heavily in favor of, there being no likelihood of confusion between the marks at issue in this case.
In summary, given (i) the cumulative differences in the parties’ marks in appearance, sound, meaning, and overall commercial impression, (ii) the careful analysis required of purchasers prior to purchasing the services covered by both parties’ marks, and (iii) the fact that these marks have coexisted for more than thirty-five years without any actual confusion, confusion between the marks is not likely and the Section 2(d) refusal should be withdrawn. Applicant respectfully requests that the Examining Attorney approve the application for publication.
|
|
| GOODS AND/OR SERVICES SECTION (036)(current) | |
| INTERNATIONAL CLASS | 036 |
| DESCRIPTION | |
| Commercial and industrial real estate brokerage, leasing, development, consulting, and property and asset management services | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/1983 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/1983 |
| GOODS AND/OR SERVICES SECTION (036)(proposed) | |
| INTERNATIONAL CLASS | 036 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Commercial and industrial real estate brokerage, leasing, consulting, and property and asset management services | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/1983 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/1983 |
| GOODS AND/OR SERVICES SECTION (037)(class added) | |
| INTERNATIONAL CLASS | 037 |
| DESCRIPTION | Commercial and industrial real estate development services |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/1983 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/1983 |
| STATEMENT TYPE | "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. |
| SPECIMEN FILE NAME(S) | |
| ORIGINAL PDF FILE | SPN0-6949136242-20190723131314757564_._Specimen_-_Class_37.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\881\342\88134288\xml4\ROA0002.JPG |
| SPECIMEN DESCRIPTION | website advertising the services |
| ADDITIONAL STATEMENTS SECTION | |
| SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use | The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement. |
| PAYMENT SECTION | |
| NUMBER OF CLASSES | 1 |
| APPLICATION FOR REGISTRATION PER CLASS | 275 |
| TOTAL FEES DUE | 275 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Jonathan M. Gelchinsky/ |
| SIGNATORY'S NAME | Jonathan M. Gelchinsky |
| SIGNATORY'S POSITION | Attorney of Record, Maine Bar Member |
| SIGNATORY'S PHONE NUMBER | 207-791-1100 |
| DATE SIGNED | 07/24/2019 |
| RESPONSE SIGNATURE | /Jonathan M. Gelchinsky/ |
| SIGNATORY'S NAME | Jonathan M. Gelchinsky |
| SIGNATORY'S POSITION | Attorney of Record, Maine Bar Member |
| SIGNATORY'S PHONE NUMBER | 207-791-1100 |
| DATE SIGNED | 07/24/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jul 24 15:09:03 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0190724150903184945-88134 288-6206e90d11fe7496bfea3 5b8825143af8b5f2b4da6a648 4d750e593bbf13e5aa-DA-164 9-20190724150421468715 |
| 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 has refused registration of Applicant’s mark under Section 2(d) based on Registration No. 5,259,738 for the mark CAIN BROTHERS covering “Financial advisory and consultancy services; Investment banking services; Real estate brokerage.” The Examining Attorney alleges that Applicant’s mark, when applied to the identified services, so resembles the cited mark as to be likely to cause confusion, mistake, or deception.
A determination of likelihood of confusion under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the thirteen factors set forth in In re E.I. du Pont de Nemours & Co., 177 USPQ 563, 567 (CCPA 1973). The Examining Attorney need not consider all factors, but may consider those factors that are most relevant to the case at hand. See In re Dixie Restaurants, Inc., 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The relevant du Pont factors in this case are: (1) the differences in appearance, sound, meaning, and overall commercial impression between the marks; (2) the level of care required of purchasers prior to engaging the parties’ services; and (3) peaceful coexistence without confusion for over thirty-five years. In the present case, the cumulative effects of each of these factors are sufficient to render confusion unlikely.
1. The Parties’ Marks Taken as a Whole Are Sufficiently Dissimilar to Avoid a Likelihood of Confusion.
Although the parties’ respective marks share an audible component (KANE vs. CAIN), the overall visual and audible differences between the marks, as well as their respective meanings and commercial impressions, are sufficient to distinguish them and avoid a likelihood of confusion.
First, the marks appear and look very different. The cited mark CAIN BROTHERS is comprised of two words. The “BROTHERS” portion contains twice the number of letters as “CAIN”, and is thus visually double the length of the “CAIN” portion of the mark. Accordingly, those encountering the cited mark will undoubtedly place emphasis on the “BROTHERS” portion. Applicant’s mark, however, is only four total letters, with no corresponding second word. In addition, even discounting the “BROTHERS” component of the cited mark, the remaining “CAIN” portion is also visually dissimilar to Applicant’s mark due to the significant difference in spelling. Specifically, unlike the cited mark’s “CAIN” component, Applicant’s mark (i) begins with a “K” instead of a “C”, (ii) does not contain the letter “I”, and (iii) ends with the letter “E”.
Second, the marks viewed as a whole sound different. The cited mark is comprised of two words and three syllables. Applicant’s mark, however, is comprised of only one word and one syllable. Furthermore, two-thirds of the cited mark’s syllables result from its second word, “BROTHERS”, necessarily causing even those only hearing the mark to place emphasis on that term.
Third, the term “BROTHERS” in the cited mark has the ordinary meaning of male siblings, whereas nothing in Applicant’s mark conveys any such meaning.
Finally, both parties’ marks are surnames. The Registrant proceeded to registration under Section 2(f) based on 5 years of use, just as Applicant has done in the present case. As such, the scope of protection afforded each mark is not very broad.
Taken together, and in view of this scope of protection, the cumulative differences between the marks as described above are sufficient to avoid a likelihood of confusion.
2. The Careful Analysis that the Parties’ Customers Undergo Prior to Any Purchase Renders Confusion Unlikely.
Consumer care is an essential element in the likelihood of confusion analysis. The greater the value of a good or service, the more careful analysis the purchaser will undergo to examine different options prior to purchasing. See McGregor-Doniger, Inc. v. Drivzzel, Inc., 202 U.S.P.Q. 81, 92 (2d Cir. 1979); Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 236 F.2d 423, 427–28 (C.C.P.A. 1956) (finding no likelihood of confusion between HURRICANE for auto engines and HURRICANE for outboard motors; the court stated: “It is to be noted, in the first place, that the goods involved are comparatively expensive and are not ordinarily purchased casually, but only after rather careful consideration. In such cases confusion is less likely than where the goods are cheap and are purchased casually.”).
Here, neither of the parties’ respective services are of the type that would be purchased on impulse or with a low degree of care. The real estate brokerage and consultancy services, and other services covered by the parties’ marks, are highly personalized in their nature, require a considerable level of expertise in the field, and often come at a substantial cost. As such, any purchaser of these services will conduct extremely careful research and analysis prior to making any purchase.
Accordingly, the careful analysis that any purchaser will undergo before engaging the parties’ services will preclude a likelihood of confusion, particularly in light of the overall differences in the parties’ marks as discussed above.
3. The Parties’ Marks Have Coexisted for Over Thirty-Five Years Without Confusion.
The lack of actual confusion over a significant period of time weighs heavily in favor of finding confusion unlikely. See CareFirst of Maryland, Inc. v. First Care, P.C., 77 U.S.P.Q.2d 1577 (4th Cir. 2006) (holding that the fact that there was only “at best” evidence of a de minimis amount of confusion despite coexistence for nine years between (i) CAREFIRST covering a health maintenance organization and (ii) FIRST CARE covering a corporation of primary physicians, “weighed heavily” in favor of and created a “strong inference” that confusion was unlikely); Barre-National, Inc. v. Barr Laboratories, Inc., 21 U.S.P.Q.2d 1755, 1762 (D.N.J. 1991) (noting that coexistence for at least seventeen years without any actual confusion between the marks BARR and BARRE for similar and identical products “weigh[ed] heavily against a finding of likelihood of confusion.”).
In the present case, the parties have both used their respective marks in commerce for more than thirty-five years. And yet, all this time, Applicant has not encountered a single instance of actual confusion between the parties’ marks. This period of peaceful coexistence is longer than the periods of coexistence for the respective marks in CareFirst of Maryland and Barre-National combined. This period of coexistence without confusion creates a strong inference of, and weighs heavily in favor of, there being no likelihood of confusion between the marks at issue in this case.
In summary, given (i) the cumulative differences in the parties’ marks in appearance, sound, meaning, and overall commercial impression, (ii) the careful analysis required of purchasers prior to purchasing the services covered by both parties’ marks, and (iii) the fact that these marks have coexisted for more than thirty-five years without any actual confusion, confusion between the marks is not likely and the Section 2(d) refusal should be withdrawn. Applicant respectfully requests that the Examining Attorney approve the application for publication.
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.
