| 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 | 88179845 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88179845/mark.png |
| LITERAL ELEMENT | TENACITY |
| 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) | |
|
RESPONSE TO 2(d) REFUSAL BASED UPON CITED MARKS
Applicant The Carlstar Group LLC (“Applicant”) acknowledges the Office Action issued by the Examining Attorney for the mark TENACITY (“the Mark”) on the basis of a perceived likelihood of confusion with U.S. Registration No. 4,027,529 for the mark TENACITY in Class 12 (“Cited Mark”). Applicant submits that there is no likelihood of confusion between the Mark and the Cited Mark because the goods are not sufficiently related such that a reasonable consumer would be confused as to source or sponsorship. Therefore, Applicant respectfully requests withdrawal of the refusal of the extension of protection and passage of the application for publication in the United States. In setting forth the refusal, the Examining Attorney first evaluated the similarity of the marks. More specifically, the Examining attorney stated that “[i]n the present case, applicant’s mark TENACITY is virtually identical to the registered mark is [sic] TENACITY,” and “because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.” Office Action, p. 2. From this, the Examining Attorney concluded that “[t]herefore, the marks are confusingly similar.” Id. The Office Action then continued with a comparison of the goods. In this regard, the Examining Attorney first noted that “[t]he compared goods and/or services need not be identical or even competitive to find a likelihood of confusion,” and that “[t]hey need only be related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the goods and/or services emanate from the same source.” Id. Next, the Examining Attorney asserted that “Applicant’s ‘tires’ are related to the registrant’s ‘parts for land vehicles including the wheel wide tire adapter kits’ ” and “[t]he goods are highly related.” Id. Furthermore, the Examiner stated that “In this case, the goods and/or services in the application and registration(s) are identical. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services.” Id. Thus, the Examining Attorney concluded that “applicant’s and registrant’s goods and/or services are related” and “applicant’s mark is not entitled to registration.” Id. at 2-3. However, Applicant notes that the goods listed in the Cited Mark include, in their entirety: Transmission mechanisms for land vehicles; parts for land vehicles, namely, engine mounts; chassis and wheel suspensions for vehicles and parts therefor, namely, rear axle supports and front axles supports and supporting frames; Automotive components made of rubber metal and plastic, for under car chassis parts and sold as integral components of car chassis, namely, strut mounts, subframe bushing kits comprised of multiple rubber bushings with metal washers; Land vehicle brake parts, namely, coil springs strut mount bearing assemblies; engine hoods for vehicles; Four wheel drive land vehicle accessories lift kits consisting primarily of springs, shocks, stabilizers, bushings; transmission cases for land vehicles, transmission mounting plates for land vehicles; stabilizer bushings for land vehicles; wheels wide tire adapter kits for land vehicles, consisting primarily of billet caliper brackets, pulley spacers and feeder strut spacers; apparatuses for locomotion by land, namely, automobiles and parts therefore, namely, shock absorbers; land vehicle suspension parts, namely, coil springs; axle carriers or engine carriers control arms for land vehicles, namely, longitudinal control arms and transverse control arms These goods are all related to the chassis, transmission, axles, suspension, and hood of a land vehicle. Even the “wheels wide tire adapter kits” referenced by the Examining Attorney are specifically limited to caliper brackets and spacers, and clearly do not include or encompass tires. As such, Applicant submits that the goods are not identical. Not only are the goods not identical, they are not related in such a manner that, nor are the circumstances surrounding their marketing such that, they could give rise to the mistaken belief that the goods emanate from the same source. In this regard, it is noted that: [A] determination that there is no likelihood of confusion may be appropriate, even where the marks are similar and the goods/services are related, because these factors are outweighed by other factors, such as differences in the relevant trade channels of the goods/services, the presence in the marketplace of a significant number of similar marks in use on similar goods/services, the existence of a valid consent agreement between the parties, or another established fact probative of the effect of use (emphasis added). TMEP § 1207.01. For example, “if the goods or services in question are not … marketed in such a way 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, even if the marks are identical, confusion is not likely.” TMEP § 1207.01(a)(i) (citing, Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012)); See also, In re Thor Tech, Inc., 113 USPQ2d 1546, 1551 (TTAB 2015) (finding use of identical marks for towable trailers and trucks not likely to cause confusion given the difference in the nature of the goods and their channels of trade and the high degree of consumer care likely to be exercised by the relevant consumers); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668, 1669 (TTAB 1986) (holding QR for coaxial cable and QR for various apparatus used in connection with photocopying, drafting, and blueprint machines not likely to cause confusion because of the differences between the parties’ respective goods in terms of their nature and purpose, how they are promoted, and who they are purchased by). In view thereof, Applicant submits that although the goods listed in the Mark and the Cited Mark all relate generally to vehicles, that is the extent of their relatedness. The goods listed in the Cited Mark, with the exception of the rubber metal and plastic sold as integral components of a car chassis, are metallic, structural elements that form, or are directly attached to, the chassis. In contrast, the tires of the Mark are rubber coverings that are placed around the wheels and form a flexible contact with the ground/road. Most vehicle owners never replace the chassis, transmission, axles, suspension, or hood during the lifetime of the vehicle, whereas virtually all vehicle owners purchase at least one set of replacement tires over the lifetime of their vehicle. Additionally, those who do replace the chassis, transmission, axles, suspension, or hood typically do so through a professional that selects the replacement part for them, whereas most consumers select replacement tires themselves. Furthermore, those who do purchase/replace a chassis, transmission, axles, suspension, or hood themselves are professionals and/or highly discerning consumers who would not be confused as to whether such goods emanate from the same source as tires. For these reasons, the goods are not marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source. Therefore, there is no likelihood of confusion between the Mark and the Cited Mark as applied to the goods listed in the respective applications. As further evidence that consumers are not likely to be confused as to the source of the goods, Applicant notes that other marks are registered on multiple different vehicle related goods. For example, application serial number 88130795 was published for opposition on February 19, 2019, for the mark RAPTOR in relation to land vehicle parts, namely brake elements and components, even though RAPTOR is also registered for steering wheels components (Reg. No. 4224601), pick-up trucks (Reg. No. 4109043), recreational vehicles (Reg. No. 3429379), all-terrain vehicles and structural parts therefor excluding tires (Reg. No. 3663956), and land vehicle tires (Reg. No. 3051246). The general use of the term RAPTOR in connection with many different vehicle related goods without consumer confusion shows the high degree of consumer care likely to be exercised by the relevant consumers in this area. Additionally, although the 3051246 registration (‘246) for land vehicle tires was initially cited against the 3663956 registration (‘956) for all-terrain vehicles (ATVs) and structural parts therefor, the ‘956 application was ultimately allowed after the applicant in the ‘956 application noted the high degree of consumer care and amended the goods to exclude tires. Since excluding tires was sufficient to show that consumers would not confuse the broad recitation of structural parts in the ‘956 registration with the tires of the ‘246 registration, consumers would be even less likely to confuse the narrower recitation of specific structural components that do not encompass tires in the Cited Mark, as discussed above, with the tires of the Mark. Therefore, there is no likelihood of confusion between the Mark and the Cited Mark as applied to the goods listed in the respective applications. Based on the foregoing, Applicant’s mark TENACITY for use in connection with Tires, should not be refused registration over the Cited Mark. Accordingly, Applicant respectfully requests withdrawal of the refusal of registration of Applicant’s TENACITY mark and passage of the application for publication in the United States. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Sean P. Ritchie/ |
| SIGNATORY'S NAME | Sean P. Ritchie |
| SIGNATORY'S POSITION | Attorney of record, Tennessee bar member |
| SIGNATORY'S PHONE NUMBER | (615) 782-2213 |
| DATE SIGNED | 04/22/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Apr 22 18:11:41 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.XXX- 20190422181141126203-8817 9845-620e9c4101cbfc31ffb6 11411986a4b5188effe5bdcfe 277521d2215a8fbf863d-N/A- N/A-20190422180817612676 |
| 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 2(d) REFUSAL BASED UPON CITED MARKS
Applicant The Carlstar Group LLC (“Applicant”) acknowledges the Office Action issued by the Examining Attorney for the mark TENACITY (“the Mark”) on the basis of a perceived likelihood of confusion with U.S. Registration No. 4,027,529 for the mark TENACITY in Class 12 (“Cited Mark”). Applicant submits that there is no likelihood of confusion between the Mark and the Cited Mark because the goods are not sufficiently related such that a reasonable consumer would be confused as to source or sponsorship. Therefore, Applicant respectfully requests withdrawal of the refusal of the extension of protection and passage of the application for publication in the United States.
In setting forth the refusal, the Examining Attorney first evaluated the similarity of the marks. More specifically, the Examining attorney stated that “[i]n the present case, applicant’s mark TENACITY is virtually identical to the registered mark is [sic] TENACITY,” and “because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.” Office Action, p. 2. From this, the Examining Attorney concluded that “[t]herefore, the marks are confusingly similar.” Id.
The Office Action then continued with a comparison of the goods. In this regard, the Examining Attorney first noted that “[t]he compared goods and/or services need not be identical or even competitive to find a likelihood of confusion,” and that “[t]hey need only be related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the goods and/or services emanate from the same source.” Id. Next, the Examining Attorney asserted that “Applicant’s ‘tires’ are related to the registrant’s ‘parts for land vehicles including the wheel wide tire adapter kits’ ” and “[t]he goods are highly related.” Id. Furthermore, the Examiner stated that “In this case, the goods and/or services in the application and registration(s) are identical. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services.” Id. Thus, the Examining Attorney concluded that “applicant’s and registrant’s goods and/or services are related” and “applicant’s mark is not entitled to registration.” Id. at 2-3.
However, Applicant notes that the goods listed in the Cited Mark include, in their entirety:
Transmission mechanisms for land vehicles; parts for land vehicles, namely, engine mounts; chassis and wheel suspensions for vehicles and parts therefor, namely, rear axle supports and front axles supports and supporting frames; Automotive components made of rubber metal and plastic, for under car chassis parts and sold as integral components of car chassis, namely, strut mounts, subframe bushing kits comprised of multiple rubber bushings with metal washers; Land vehicle brake parts, namely, coil springs strut mount bearing assemblies; engine hoods for vehicles; Four wheel drive land vehicle accessories lift kits consisting primarily of springs, shocks, stabilizers, bushings; transmission cases for land vehicles, transmission mounting plates for land vehicles; stabilizer bushings for land vehicles; wheels wide tire adapter kits for land vehicles, consisting primarily of billet caliper brackets, pulley spacers and feeder strut spacers; apparatuses for locomotion by land, namely, automobiles and parts therefore, namely, shock absorbers; land vehicle suspension parts, namely, coil springs; axle carriers or engine carriers control arms for land vehicles, namely, longitudinal control arms and transverse control arms
These goods are all related to the chassis, transmission, axles, suspension, and hood of a land vehicle. Even the “wheels wide tire adapter kits” referenced by the Examining Attorney are specifically limited to caliper brackets and spacers, and clearly do not include or encompass tires. As such, Applicant submits that the goods are not identical.
Not only are the goods not identical, they are not related in such a manner that, nor are the circumstances surrounding their marketing such that, they could give rise to the mistaken belief that the goods emanate from the same source. In this regard, it is noted that:
[A] determination that there is no likelihood of confusion may be appropriate, even where the marks are similar and the goods/services are related, because these factors are outweighed by other factors, such as differences in the relevant trade channels of the goods/services, the presence in the marketplace of a significant number of similar marks in use on similar goods/services, the existence of a valid consent agreement between the parties, or another established fact probative of the effect of use (emphasis added).
TMEP § 1207.01. For example, “if the goods or services in question are not … marketed in such a way 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, even if the marks are identical, confusion is not likely.” TMEP § 1207.01(a)(i) (citing, Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012)); See also, In re Thor Tech, Inc., 113 USPQ2d 1546, 1551 (TTAB 2015) (finding use of identical marks for towable trailers and trucks not likely to cause confusion given the difference in the nature of the goods and their channels of trade and the high degree of consumer care likely to be exercised by the relevant consumers); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668, 1669 (TTAB 1986) (holding QR for coaxial cable and QR for various apparatus used in connection with photocopying, drafting, and blueprint machines not likely to cause confusion because of the differences between the parties’ respective goods in terms of their nature and purpose, how they are promoted, and who they are purchased by).
In view thereof, Applicant submits that although the goods listed in the Mark and the Cited Mark all relate generally to vehicles, that is the extent of their relatedness. The goods listed in the Cited Mark, with the exception of the rubber metal and plastic sold as integral components of a car chassis, are metallic, structural elements that form, or are directly attached to, the chassis. In contrast, the tires of the Mark are rubber coverings that are placed around the wheels and form a flexible contact with the ground/road. Most vehicle owners never replace the chassis, transmission, axles, suspension, or hood during the lifetime of the vehicle, whereas virtually all vehicle owners purchase at least one set of replacement tires over the lifetime of their vehicle. Additionally, those who do replace the chassis, transmission, axles, suspension, or hood typically do so through a professional that selects the replacement part for them, whereas most consumers select replacement tires themselves. Furthermore, those who do purchase/replace a chassis, transmission, axles, suspension, or hood themselves are professionals and/or highly discerning consumers who would not be confused as to whether such goods emanate from the same source as tires. For these reasons, the goods are not marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source. Therefore, there is no likelihood of confusion between the Mark and the Cited Mark as applied to the goods listed in the respective applications.
As further evidence that consumers are not likely to be confused as to the source of the goods, Applicant notes that other marks are registered on multiple different vehicle related goods. For example, application serial number 88130795 was published for opposition on February 19, 2019, for the mark RAPTOR in relation to land vehicle parts, namely brake elements and components, even though RAPTOR is also registered for steering wheels components (Reg. No. 4224601), pick-up trucks (Reg. No. 4109043), recreational vehicles (Reg. No. 3429379), all-terrain vehicles and structural parts therefor excluding tires (Reg. No. 3663956), and land vehicle tires (Reg. No. 3051246). The general use of the term RAPTOR in connection with many different vehicle related goods without consumer confusion shows the high degree of consumer care likely to be exercised by the relevant consumers in this area. Additionally, although the 3051246 registration (‘246) for land vehicle tires was initially cited against the 3663956 registration (‘956) for all-terrain vehicles (ATVs) and structural parts therefor, the ‘956 application was ultimately allowed after the applicant in the ‘956 application noted the high degree of consumer care and amended the goods to exclude tires. Since excluding tires was sufficient to show that consumers would not confuse the broad recitation of structural parts in the ‘956 registration with the tires of the ‘246 registration, consumers would be even less likely to confuse the narrower recitation of specific structural components that do not encompass tires in the Cited Mark, as discussed above, with the tires of the Mark. Therefore, there is no likelihood of confusion between the Mark and the Cited Mark as applied to the goods listed in the respective applications.
Based on the foregoing, Applicant’s mark TENACITY for use in connection with Tires, should not be refused registration over the Cited Mark. Accordingly, Applicant respectfully requests withdrawal of the refusal of registration of Applicant’s TENACITY mark and passage of the application for publication in the United States.