| 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 | 88173080 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88173080/mark.png |
| LITERAL ELEMENT | CARL |
| 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) | |
|
In response to the Office Action of December 22, 2018 (the “Office Action”), Maison Battat Inc. (hereinafter “Applicant”) respectfully requests reconsideration of the above-referenced Application seeking registration of the mark CARL, Serial No. 88/173,080 for “toy animals” in International Class 28 (hereinafter the “Mark” or “Applicant’s Mark”) in view of the following Remarks. REMARKS The Examining Attorney initially refused registration of the Mark because of a purported likelihood of consumer confusion with the prior registered mark, “CARL EDWARDS,” Registration No. 3,691,879 for “hand held units for playing video games; plush toy animals; miniature toy slot cars; die cast model cars; collectible toy cars” in International Class 28 (hereinafter the “Cited Registration”) pursuant to Trademark Act §2(d), 15 U.S.C. §1052(d). In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. (BNA) 563 (C.C.P.A. 1973) provides a useful guide for determining the factors for a determination of a likelihood of confusion under the Trademark Act §2(d); 15 U.S.C. §1052(d). From the opinion, which sets forth a number of factors to be considered, the following are believed highly relevant to the current application and mark under review:
A. The Marks Are Dissimilar. Applicant respectfully submits that the Examining Attorney has not considered – as is required – clear and distinct visual, auditory and connotative differences of the marks at issue. It is well-settled that, when determining likelihood of confusion, the Examiner should assess the mark as a whole (both the applied-for Mark and the Cited Registration) and not focus on a single aspect of a mark. This is the “anti-dissection” rule. See 4 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:41 at 23-227 (4th ed. 2015) (“A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important”). Marks are compared in their entireties for similarities in appearance, sound, connotation and commercial impression. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1358, 1362 (C.C.P.A. 1973). To begin, Applicant’s Mark is CARL, and Registrant’s mark is, in contrast, CARL EDWARDS. As discussed above, a mark should not be dissected. Nonetheless, the Examining Attorney has split the Cited Registration into two component parts and compared the shared part with Applicant’s Mark to make an objection based on alleged likelihood of confusion. This is improper. The marks at issue are distinct. Even if improperly “dissected,” a single overlapping word is not grounds for rejection, even for identical goods, as explained above, citing The Murray Corp. of America v. Red Spot Paint and Varnish Co., Inc., 126 U.S.P.Q. 390 (T.T.A.B. 1960), especially where the other word/component of the mark is so distinctive as to provide a different connotation, meaning, and look/sound. That is exactly the case here. Assessed as a whole, Applicant’s Mark is different from the distinct Cited Registration. The marks also do not sound the same. Applicant’s Mark, CARL, is one word with a single syllable. Registrant’s mark, CARL EDWARDS, on the other hand, is two words with three total syllables. This factor should weigh heavily in favor of a conclusion of no likelihood of confusion as to the sound and the look of the marks. Finally, the marks have totally different connotations. Applicant’s Mark, CARL, will be used in connection with toy animals. CARL is representative of a little boy’s name. In contrast, the Cited Registration immediately invokes images of the famous American former professional stock car racing driver, Carl Edwards. Mr. Edwards achieved the 2007 NASCAR Busch Series championship and nearly won the 2011 NASCAR Sprint Cup Series title. See Exhibit A. No such association exists with respect to the applied-for Mark. Accordingly, the additional word, Edwards, and most considerably, Registrant’s affiliation with NASCAR, creates a significantly different commercial impression when used in connection with Applicant’s goods and supports a finding of no likelihood of confusion. And, by the way, there are 491 OTHER Carl marks, by itself or combined with other words, Registered or applied for in the US Trademark Office, for a variety of goods. The CARL EDWARDS mark is entitled to little breadth of protection.
B. The Goods Are Dissimilar As held by the Federal Circuit, where two marks are used on goods that are different, and sold to different, discriminating customers, there is no likelihood of confusion even if the marks are identical. Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 718 (Fed. Cir. 1992) (citing Dynamics Research Corp. v. Langenau Mfg. Co., 704 F.2d 1575, 217 U.S.P.Q. 649 (Fed. Cir. 1983)) (emphasis added). Here, not only are the marks different, the goods are also different and sold to discriminating customers. Applicant has applied to register its mark CARL for use in connection with toy animals which are appealing to very young children. The owner of the Cited Registration sells “hand held units for playing video games; plush toy animals; miniature toy slot cars; die cast model cars; collectible toy cars” which are appealing to Carl Edwards race car fans. The goods associated with these two marks would be sold to completely different classes of purchasers, in entirely different channels of trade, to different consumers and would not be confused or overlap. Thus, when the goods associated with the applied-for Mark are sold under the name CARL, consumers would not immediately associate this mark with CARL EDWARDS especially given Registrant’s race car connection. Along with the distinction between the marks, the dissimilarity in the goods, the users, the purchasers, the likely channels of trade, etc., all weigh in favor of no likelihood of consumer confusion.
C. The ConditionsUnder Which And Buyers To Whom Sales Are Made Are Such That A Likelihood Of Confusion Will Not Be Created.
In determining a likelihood of confusion, the Examining Attorney must also consider the level of sophistication that is attributed to the parties’ respective target consumer base. It is well-settled that a likelihood of confusion is reduced where purchasers and potential purchasers of the products or services are sophisticated. See Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 718 (Fed. Cir. 1992) (no confusion between identical marks where, inter alia, both parties’ goods and services “are usually purchased after careful consideration by persons who are highly knowledgeable about the goods or services and their source”). See also TMEP § 1207.01(d)(vii) (care in purchasing tends to minimize the likelihood of confusion). Applicant’s customers are children and their parents-- an adult seeking to purchase toy animals for a young child to play with. Such consumers usually have done their “research” on what type of toy they want to play with and what toy they want their parent to purchase. Children, while not consumers in the sense of making final payment decisions, are very knowledgeable about branded products and can be very directing/manipulative in getting what they want. And, of course, parents are very knowledgeable about the type of products they will be buying for their children or others as gifts. Characteristics of the product and the character of the product being promoted are very important to parents. So, for example, some parents will not buy toy guns, bows and arrows, sling shots, even hot rod speedster cars. Others will buy them. Some seek toy animals to promote animal husbandry or care and awareness of species preservation. Similarly, a consumer in the market for race car or sports paraphernalia, specifically goods related to CARL EDWARDS and NASCAR, has usually done his/her research on what type of race car related products they plan to purchase. There is a huge difference between toy animals and goods provided by NASCAR drive--Carl Edwards. Accordingly, both consumers of Applicant’s CARL toy animals and Registrant’s goods related to CARL EDWARDS would be highly knowledgeable about the product they want to purchase, and thus very discriminating purchasers, as opposed to ordinary quick purchasers of socks, plastic cutlery, and/or pencils, for example. It has been proven that children constitute the most lucrative market there is for many businesses: “They [children] are a current market that spends $4.2 billion a year of their own money on their own desires. In this sense children are viewed as having needs, having money to spend on items that satisfy their needs, and having a willingness to spend money. Entire industries - such as producers of candy, gum, frozen desserts, soft drinks, toys, comic books, records and cassettes - treat children as a current market.”
“Today’s kids have more autonomy and decision-making power within the family than in previous generations, so it follows that kids are vocal about what they want their parents to buy. “Pester power” refers to children’s ability to nag their parents into purchasing items they may not otherwise buy. Marketing to children is all about creating pester power, because advertisers know what a powerful force it can be.” See Exhibit B.
Therefore, it is highly unlikely that such a large segment of consumers, children, especially those directing, even manipulating their parents, would mistakenly believe that Applicant’s CARL toy animals sold under its distinct mark and name would emanate from and/or are otherwise associated with the Registrant and his highly specific goods, sold under the mark CARL EDWARDS. This additional factor weighs heavily in favor of a conclusion of no likelihood of confusion.
D. The Number and Nature of Similar Marks in Use on Similar Goods. Most notably, the U.S. Patent and Trademark Office has registered the following mark, also in Class 28, with almost identical services to Registrant’s CARL EDWARDS mark. Thus, minor differences in the marks are entitled to weight on the issue of absence of likelihood of consumer confusion:
The Registration Certificate and TSDR Printout for the CONDUCTOR CARL registration referenced above is attached hereto as Exhibit C. Widely used terms in the same class as the applied-for mark have limited protection in terms of preventing others from using similar variations and, therefore, the Cited Registration should not be accorded wide breadth of protection. Furthermore, the CARL EDWARDS and CONDUCTOR CARL marks have presumably peacefully coexisted since 2010. Likewise, Applicant’s CARL mark should also be able to co-exist especially when distinctions can be drawn based upon appearance, sound, syllables and the goods that are provided under the respective marks. Although the decisions of prior Examining Attorneys are not binding in subsequent applications, consistency in examination has been recognized as a goal of the US Trademark Office. In re Nett Designs, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Rodale, Inc., 80 USPQ2d 1696 (TTAB 2006). Applicant submits this same justification extends to allow registration of Applicant’s Mark. In sum, an analysis of the relevant du Pont factors strongly leads to the conclusion that Applicant’s intended use of its Mark on or in connection with its goods will not likely lead to confusion, mistake or deception with the Cited Registration among prospective consumers. The subject marks differ on many levels, namely, those pertaining to overall sight, sound, cadence, and as now explained, different meaning and commercial impression. Moreover, the goods offered in connection with the marks are distinct and the third party co-existing registration for a mark incorporating similar elements and identical goods are additional factors that weigh against a finding of likely confusion. Therefore, in light of all cumulative factors, it is respectfully requested that the §2(d) objection with respect to the Cited Registrations should be withdrawn.
CONCLUSION In view of submission of the aforesaid Remarks responsive to the issues raised in the Office Action, Applicant believes that the instant Application is in a present condition for publication. Favorable action is therefore solicited and believed to be fully warranted. Should there be any remaining questions or comments, or if there are any additional issues that can be resolved through an Examiner’s Amendment, the Examining Attorney is encouraged to telephone the attorney of record for a likely quick resolution of the same. |
|
| EVIDENCE SECTION | |
| DESCRIPTION OF EVIDENCE FILE | Exhibits A through C |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Andrew S. Langsam/ |
| SIGNATORY'S NAME | Andrew S. Langsam |
| SIGNATORY'S POSITION | Attorney of record, New York bar member |
| SIGNATORY'S PHONE NUMBER | (212) 326-0180 |
| DATE SIGNED | 06/24/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jun 24 15:07:00 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 190624150700165823-881730 80-6205d881b22bf23f03c474 8baeaaae8ef349e9e93d96f44 a808b2e2fe9e91b81-N/A-N/A -20190624150302952051 |
| 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) |
In response to the Office Action of December 22, 2018 (the “Office Action”), Maison Battat Inc. (hereinafter “Applicant”) respectfully requests reconsideration of the above-referenced Application seeking registration of the mark CARL, Serial No. 88/173,080 for “toy animals” in International Class 28 (hereinafter the “Mark” or “Applicant’s Mark”) in view of the following Remarks.
REMARKS
The Examining Attorney initially refused registration of the Mark because of a purported likelihood of consumer confusion with the prior registered mark, “CARL EDWARDS,” Registration No. 3,691,879 for “hand held units for playing video games; plush toy animals; miniature toy slot cars; die cast model cars; collectible toy cars” in International Class 28 (hereinafter the “Cited Registration”) pursuant to Trademark Act §2(d), 15 U.S.C. §1052(d).
In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. (BNA) 563 (C.C.P.A. 1973) provides a useful guide for determining the factors for a determination of a likelihood of confusion under the Trademark Act §2(d); 15 U.S.C. §1052(d). From the opinion, which sets forth a number of factors to be considered, the following are believed highly relevant to the current application and mark under review:
The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression;
The relatedness of the goods as described in an application or registration or in connection with which a prior mark is in use;
The conditions under which and buyers to whom sales are made; and
The number and nature of similar marks in use on similar goods.
A. The Marks Are Dissimilar.
Applicant respectfully submits that the Examining Attorney has not considered – as is required – clear and distinct visual, auditory and connotative differences of the marks at issue.
It is well-settled that, when determining likelihood of confusion, the Examiner should assess the mark as a whole (both the applied-for Mark and the Cited Registration) and not focus on a single aspect of a mark. This is the “anti-dissection” rule. See 4 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:41 at 23-227 (4th ed. 2015) (“A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important”). Marks are compared in their entireties for similarities in appearance, sound, connotation and commercial impression. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1358, 1362 (C.C.P.A. 1973).
To begin, Applicant’s Mark is CARL, and Registrant’s mark is, in contrast, CARL EDWARDS. As discussed above, a mark should not be dissected. Nonetheless, the Examining Attorney has split the Cited Registration into two component parts and compared the shared part with Applicant’s Mark to make an objection based on alleged likelihood of confusion. This is improper. The marks at issue are distinct. Even if improperly “dissected,” a single overlapping word is not grounds for rejection, even for identical goods, as explained above, citing The Murray Corp. of America v. Red Spot Paint and Varnish Co., Inc., 126 U.S.P.Q. 390 (T.T.A.B. 1960), especially where the other word/component of the mark is so distinctive as to provide a different connotation, meaning, and look/sound. That is exactly the case here. Assessed as a whole, Applicant’s Mark is different from the distinct Cited Registration.
The marks also do not sound the same. Applicant’s Mark, CARL, is one word with a single syllable. Registrant’s mark, CARL EDWARDS, on the other hand, is two words with three total syllables. This factor should weigh heavily in favor of a conclusion of no likelihood of confusion as to the sound and the look of the marks.
Finally, the marks have totally different connotations. Applicant’s Mark, CARL, will be used in connection with toy animals. CARL is representative of a little boy’s name. In contrast, the Cited Registration immediately invokes images of the famous American former professional stock car racing driver, Carl Edwards. Mr. Edwards achieved the 2007 NASCAR Busch Series championship and nearly won the 2011 NASCAR Sprint Cup Series title. See Exhibit A. No such association exists with respect to the applied-for Mark. Accordingly, the additional word, Edwards, and most considerably, Registrant’s affiliation with NASCAR, creates a significantly different commercial impression when used in connection with Applicant’s goods and supports a finding of no likelihood of confusion. And, by the way, there are 491 OTHER Carl marks, by itself or combined with other words, Registered or applied for in the US Trademark Office, for a variety of goods. The CARL EDWARDS mark is entitled to little breadth of protection.
B. The Goods Are Dissimilar
As held by the Federal Circuit, where two marks are used on goods that are different, and sold to different, discriminating customers, there is no likelihood of confusion even if the marks are identical. Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 718 (Fed. Cir. 1992) (citing Dynamics Research Corp. v. Langenau Mfg. Co., 704 F.2d 1575, 217 U.S.P.Q. 649 (Fed. Cir. 1983)) (emphasis added). Here, not only are the marks different, the goods are also different and sold to discriminating customers. Applicant has applied to register its mark CARL for use in connection with toy animals which are appealing to very young children. The owner of the Cited Registration sells “hand held units for playing video games; plush toy animals; miniature toy slot cars; die cast model cars; collectible toy cars” which are appealing to Carl Edwards race car fans. The goods associated with these two marks would be sold to completely different classes of purchasers, in entirely different channels of trade, to different consumers and would not be confused or overlap. Thus, when the goods associated with the applied-for Mark are sold under the name CARL, consumers would not immediately associate this mark with CARL EDWARDS especially given Registrant’s race car connection. Along with the distinction between the marks, the dissimilarity in the goods, the users, the purchasers, the likely channels of trade, etc., all weigh in favor of no likelihood of consumer confusion.
C. The ConditionsUnder Which And Buyers To Whom Sales Are Made Are Such That A Likelihood Of Confusion Will Not Be Created.
In determining a likelihood of confusion, the Examining Attorney must also consider the level of sophistication that is attributed to the parties’ respective target consumer base. It is well-settled that a likelihood of confusion is reduced where purchasers and potential purchasers of the products or services are sophisticated. See Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 718 (Fed. Cir. 1992) (no confusion between identical marks where, inter alia, both parties’ goods and services “are usually purchased after careful consideration by persons who are highly knowledgeable about the goods or services and their source”). See also TMEP § 1207.01(d)(vii) (care in purchasing tends to minimize the likelihood of confusion).
Applicant’s customers are children and their parents-- an adult seeking to purchase toy animals for a young child to play with. Such consumers usually have done their “research” on what type of toy they want to play with and what toy they want their parent to purchase. Children, while not consumers in the sense of making final payment decisions, are very knowledgeable about branded products and can be very directing/manipulative in getting what they want. And, of course, parents are very knowledgeable about the type of products they will be buying for their children or others as gifts. Characteristics of the product and the character of the product being promoted are very important to parents. So, for example, some parents will not buy toy guns, bows and arrows, sling shots, even hot rod speedster cars. Others will buy them. Some seek toy animals to promote animal husbandry or care and awareness of species preservation. Similarly, a consumer in the market for race car or sports paraphernalia, specifically goods related to CARL EDWARDS and NASCAR, has usually done his/her research on what type of race car related products they plan to purchase. There is a huge difference between toy animals and goods provided by NASCAR drive--Carl Edwards. Accordingly, both consumers of Applicant’s CARL toy animals and Registrant’s goods related to CARL EDWARDS would be highly knowledgeable about the product they want to purchase, and thus very discriminating purchasers, as opposed to ordinary quick purchasers of socks, plastic cutlery, and/or pencils, for example. It has been proven that children constitute the most lucrative market there is for many businesses:
“They [children] are a current market that spends $4.2 billion a year of their own money on their own desires. In this sense children are viewed as having needs, having money to spend on items that satisfy their needs, and having a willingness to spend money. Entire industries - such as producers of candy, gum, frozen desserts, soft drinks, toys, comic books, records and cassettes - treat children as a current market.”
“Today’s kids have more autonomy and decision-making power within the family than in previous generations, so it follows that kids are vocal about what they want their parents to buy. “Pester power” refers to children’s ability to nag their parents into purchasing items they may not otherwise buy. Marketing to children is all about creating pester power, because advertisers know what a powerful force it can be.” See Exhibit B.
Therefore, it is highly unlikely that such a large segment of consumers, children, especially those directing, even manipulating their parents, would mistakenly believe that Applicant’s CARL toy animals sold under its distinct mark and name would emanate from and/or are otherwise associated with the Registrant and his highly specific goods, sold under the mark CARL EDWARDS. This additional factor weighs heavily in favor of a conclusion of no likelihood of confusion.
D. The Number and Nature of Similar Marks in Use on Similar Goods.
Most notably, the U.S. Patent and Trademark Office has registered the following mark, also in Class 28, with almost identical services to Registrant’s CARL EDWARDS mark. Thus, minor differences in the marks are entitled to weight on the issue of absence of likelihood of consumer confusion:
CONDUCTOR CARL, Reg. No. 4,056,420, for Class 28 “children's multiple activity toys; construction toys; toy trains and parts and accessories therefor; toy vehicle track sets and roadways and accessories therefor; toy vehicles; toy vehicles and accessories therefor,” registered on November 15, 2011 to Brybelly Holdings, Inc.
The Registration Certificate and TSDR Printout for the CONDUCTOR CARL registration referenced above is attached hereto as Exhibit C. Widely used terms in the same class as the applied-for mark have limited protection in terms of preventing others from using similar variations and, therefore, the Cited Registration should not be accorded wide breadth of protection. Furthermore, the CARL EDWARDS and CONDUCTOR CARL marks have presumably peacefully coexisted since 2010. Likewise, Applicant’s CARL mark should also be able to co-exist especially when distinctions can be drawn based upon appearance, sound, syllables and the goods that are provided under the respective marks. Although the decisions of prior Examining Attorneys are not binding in subsequent applications, consistency in examination has been recognized as a goal of the US Trademark Office. In re Nett Designs, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Rodale, Inc., 80 USPQ2d 1696 (TTAB 2006). Applicant submits this same justification extends to allow registration of Applicant’s Mark.
In sum, an analysis of the relevant du Pont factors strongly leads to the conclusion that Applicant’s intended use of its Mark on or in connection with its goods will not likely lead to confusion, mistake or deception with the Cited Registration among prospective consumers. The subject marks differ on many levels, namely, those pertaining to overall sight, sound, cadence, and as now explained, different meaning and commercial impression. Moreover, the goods offered in connection with the marks are distinct and the third party co-existing registration for a mark incorporating similar elements and identical goods are additional factors that weigh against a finding of likely confusion. Therefore, in light of all cumulative factors, it is respectfully requested that the §2(d) objection with respect to the Cited Registrations should be withdrawn.
CONCLUSION
In view of submission of the aforesaid Remarks responsive to the issues raised in the Office Action, Applicant believes that the instant Application is in a present condition for publication. Favorable action is therefore solicited and believed to be fully warranted.
Should there be any remaining questions or comments, or if there are any additional issues that can be resolved through an Examiner’s Amendment, the Examining Attorney is encouraged to telephone the attorney of record for a likely quick resolution of the same.