| 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 | 88239379 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88239379/mark.png |
| LITERAL ELEMENT | ARRIVE |
| 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 modern factors for determining whether likelihood of confusion exists between two marks were articulated in In re E.I. DuPont DeNemours & Co, 476 F.2d 1357 (C.C.P.A. 1973). In particular, the following factors are of primary concern in the instant matter: (1) The similarity or dissimilarity of the services; (2) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. The Applicant respectfully submits that an analysis of these DuPont factors confirms that there is no likelihood of confusion between the marks. a. Applicant’s services are dissimilar from those of the cited mark In determining whether there is a likelihood of confusion between the Applicant’s Mark and the Cited Mark, pursuant to the first DuPont factor referenced above, the dissimilarity of the services is an important element in determining the likelihood of confusion between two marks. According to the TMEP, the examining attorney must provide evidence showing that the goods and services are related to support a finding of likelihood of confusion. See In re White Rock Distilleries Inc., 92 USPQ2d 1282 (TTAB 2009)(VOLTA for vodka infused with caffeine held not likely to be confused with TERZA VOLTA for wines). White Rock therefore sets out the criteria for relatedness of goods/services. The alleged confusion must be based upon a common source or be based upon a complementary relationship. Applicant’s services offered under ARRIVE, consist of “Real estate acquisition services; Real estate management of hotels and restaurants; Real estate procurement for others; Rental of real estate in the nature of hotels and restaurants”. The cited mark ARRIVE HOME MORTGAGE has services listed as “Mortgage banking; Mortgage brokerage; Mortgage financing services; Mortgage lending; Mortgage refinancing”. The mortgage banking industry is very different from the real estate management of hotels and restaurants. Applicant does not offer any type of lending, refinancing or brokerage services. Further mortgage banking is controlled by the Federal Reserve and has very strict guidelines regarding banking and lending. Finally, consumers looking for a home mortgage are unlikely to be confused with Applicant’s services specifically for real estate management of hotels and restaurants. Applicant is not involved in residential real estate nor in any type of banking, brokerage, financing, lending or refinancing.
They flow in completely different trade channels and consumers are not likely to be confused.
b. Applicant’s Mark Will Not Be Confused with the Cited Mark ARRIVE HOME MORTGAGE Because the Marks Are Dissimilar in Sight, Sound, Meaning, and Commercial Impression in their Entireties The Office Action asserts that Applicant’s Mark and the Cited Mark have sufficient similarity in sound, appearance and commercial impression to indicate a likelihood of confusion. This assertion is based on a dissection of the Cited Mark. The Applicant respectfully submits, however, that when examining the respective marks in their entireties, the Applicant’s Mark and the Cited Mark are not confusingly similar. “Marks must be compared in their entireties” (emphasis added) is the basic principle in determining whether consumer confusion between two marks will exist. TMEP § 1207.01(b) (iv); Mr. Hero Sandwich Sys. Inc. v. Roman Meal Co., 228 U.S.P.Q. 364, 366 (Fed. Cir. 1986). When a mark is made up of several words, a single word in that mark cannot be examined standing alone as a source indicator. Id. Likewise, it is a violation of the “anti-dissection rule” to focus upon the “prominent” feature of a mark and make a likelihood of confusion determination solely upon that feature, ignoring all other elements of the mark. McCarthy § 23:41. Thus, the Applicant’s Mark and the Cited Mark must be compared in their entireties, not by dissecting their individual elements. See TMEP §1207(b)(iv) (“However, the fundamental rule in this situation is that the marks must be compared in their entireties.”) citing Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399 (C.C.P.A. 1974). Just as a mark may not be dissected, it is also well settled that two marks may share common words without causing consumer confusion. The Board has repeatedly held that no likelihood of confusion exists merely because two marks incorporate one or more of the same or nearly identical words. See, e.g., M-F-G Corp v. EMRA Corp., 817 F.2d 410 (7th Cir. 1987) (SUPERCUT for shears and SUPERCUTS for hair cutting salons); Conde Nast Publications, Inc. v. Miss Quality, Inc., 184 U.S.P.Q. 422 (C.C.P.A. 1975) (COUNTRY VOGUE for women’s clothing and VOGUE for women’s fashions magazine); Color Key Corp. v. Color 1 Assocs., Inc., 219 U.S.P.Q. 936 (T.T.A.B. 1983) (COLOR 1 for counseling services including wardrobe, makeup and interior design and COLOR KEY 1 and KEY 1 COLORS for instructional materials and educational services concerning color selection for home, industry and personal fashions). Another particularly relevant case for comparison in this regard is In re Bed & Breakfast Registry, 791 F.2d 157, 158-59, 229 U.S.P.Q. 818, 819 (Fed. Cir. 1986). In that case, the federal court held that “BED & BREAKFAST REGISTRY” and “BED & BREAKFAST INTERNATIONAL” were not confusingly similar simply because they shared the words “bed and breakfast.” Id. The addition of completely different words resulted in two phrases with completely different meanings. Id. The court concluded that a “speculative assumption” by the Examining Attorney that one mark could be somehow connected to the other because of common words was an inadequate basis for denying registration and reversed the Attorney’s decision. Id. Similarly, in this case, there is no reason to believe that consumers would mistake these marks for each other simply because they each contain the commonly used term “exact.” Finally, the additional terms in the cited mark HOME MORTGAGE, indicate to a consumer exactly the type of services that are offered. It is not likely that consumers will confuse the two marks, especially in light of the use of the terms HOME MORTGAGE. Based on the above argument, Applicant respectfully requests reconsideration of the Examiner’s rejection based on a likelihood of confusion with ARRIVE HOME MORTGAGE. |
|
| ATTORNEY SECTION (current) | |
| NAME | Ellen Reilly |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | REILLY INTELLECTUAL PROPERTY LAW FIRM |
| STREET | 1888 N. SHERMAN STREET, SUITE 200 |
| CITY | DENVER |
| STATE | Colorado |
| POSTAL CODE | 80203 |
| COUNTRY | US |
| PHONE | 303-839-8700 |
| FAX | 720-536-5023 |
| reilly@iplawdenver.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 11180-T-4 |
| ATTORNEY SECTION (proposed) | |
| NAME | Ellen Reilly |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | REILLY INTELLECTUAL PROPERTY LAW FIRM |
| STREET | 1888 N. SHERMAN STREET, SUITE 200 |
| CITY | DENVER |
| STATE | Colorado |
| POSTAL CODE | 80203 |
| COUNTRY | United States |
| PHONE | 303-839-8700 |
| FAX | 720-536-5023 |
| reilly@iplawdenver.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 11180-T-4 |
| CORRESPONDENCE SECTION (current) | |
| NAME | ELLEN REILLY |
| FIRM NAME | REILLY INTELLECTUAL PROPERTY LAW FIRM |
| STREET | 1888 N. SHERMAN STREET, SUITE 200 |
| CITY | DENVER |
| STATE | Colorado |
| POSTAL CODE | 80203 |
| COUNTRY | US |
| PHONE | 303-839-8700 |
| FAX | 720-536-5023 |
| reilly@iplawdenver.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 11180-T-4 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Ellen Reilly |
| FIRM NAME | REILLY INTELLECTUAL PROPERTY LAW FIRM |
| STREET | 1888 N. SHERMAN STREET, SUITE 200 |
| CITY | DENVER |
| STATE | Colorado |
| POSTAL CODE | 80203 |
| COUNTRY | United States |
| PHONE | 303-839-8700 |
| FAX | 720-536-5023 |
| reilly@iplawdenver.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 11180-T-4 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /ellen reilly/ |
| SIGNATORY'S NAME | Ellen Reilly |
| SIGNATORY'S POSITION | attorney of record |
| SIGNATORY'S PHONE NUMBER | 303-839-8700 |
| DATE SIGNED | 09/18/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Sep 18 17:01:24 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20190918170124963953-8823 9379-6103a2bffd6b09969d19 c1e11c0a269759452c08b3de6 2e1c1524a22d5de88e54-N/A- N/A-20190918165740271428 |
| 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 modern factors for determining whether likelihood of confusion exists between two marks were articulated in In re E.I. DuPont DeNemours & Co, 476 F.2d 1357 (C.C.P.A. 1973). In particular, the following factors are of primary concern in the instant matter:
(1) The similarity or dissimilarity of the services;
(2) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
The Applicant respectfully submits that an analysis of these DuPont factors confirms that there is no likelihood of confusion between the marks.
a. Applicant’s services are dissimilar from those of the cited mark
In determining whether there is a likelihood of confusion between the Applicant’s Mark and the Cited Mark, pursuant to the first DuPont factor referenced above, the dissimilarity of the services is an important element in determining the likelihood of confusion between two marks. According to the TMEP, the examining attorney must provide evidence showing that the goods and services are related to support a finding of likelihood of confusion. See In re White Rock Distilleries Inc., 92 USPQ2d 1282 (TTAB 2009)(VOLTA for vodka infused with caffeine held not likely to be confused with TERZA VOLTA for wines). White Rock therefore sets out the criteria for relatedness of goods/services. The alleged confusion must be based upon a common source or be based upon a complementary relationship.
Applicant’s services offered under ARRIVE, consist of “Real estate acquisition services; Real estate management of hotels and restaurants; Real estate procurement for others; Rental of real estate in the nature of hotels and restaurants”. The cited mark ARRIVE HOME MORTGAGE has services listed as “Mortgage banking; Mortgage brokerage; Mortgage financing services; Mortgage lending; Mortgage refinancing”. The mortgage banking industry is very different from the real estate management of hotels and restaurants. Applicant does not offer any type of lending, refinancing or brokerage services. Further mortgage banking is controlled by the Federal Reserve and has very strict guidelines regarding banking and lending. Finally, consumers looking for a home mortgage are unlikely to be confused with Applicant’s services specifically for real estate management of hotels and restaurants. Applicant is not involved in residential real estate nor in any type of banking, brokerage, financing, lending or refinancing.
They flow in completely different trade channels and consumers are not likely to be confused.
b. Applicant’s Mark Will Not Be Confused with the Cited Mark ARRIVE HOME MORTGAGE Because the Marks Are Dissimilar in Sight, Sound, Meaning, and Commercial Impression in their Entireties
The Office Action asserts that Applicant’s Mark and the Cited Mark have sufficient similarity in sound, appearance and commercial impression to indicate a likelihood of confusion. This assertion is based on a dissection of the Cited Mark. The Applicant respectfully submits, however, that when examining the respective marks in their entireties, the Applicant’s Mark and the Cited Mark are not confusingly similar.
“Marks must be compared in their entireties” (emphasis added) is the basic principle in determining whether consumer confusion between two marks will exist. TMEP § 1207.01(b) (iv); Mr. Hero Sandwich Sys. Inc. v. Roman Meal Co., 228 U.S.P.Q. 364, 366 (Fed. Cir. 1986). When a mark is made up of several words, a single word in that mark cannot be examined standing alone as a source indicator. Id. Likewise, it is a violation of the “anti-dissection rule” to focus upon the “prominent” feature of a mark and make a likelihood of confusion determination solely upon that feature, ignoring all other elements of the mark. McCarthy § 23:41. Thus, the Applicant’s Mark and the Cited Mark must be compared in their entireties, not by dissecting their individual elements. See TMEP §1207(b)(iv) (“However, the fundamental rule in this situation is that the marks must be compared in their entireties.”) citing Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399 (C.C.P.A. 1974).
Just as a mark may not be dissected, it is also well settled that two marks may share common words without causing consumer confusion. The Board has repeatedly held that no likelihood of confusion exists merely because two marks incorporate one or more of the same or nearly identical words. See, e.g., M-F-G Corp v. EMRA Corp., 817 F.2d 410 (7th Cir. 1987) (SUPERCUT for shears and SUPERCUTS for hair cutting salons); Conde Nast Publications, Inc. v. Miss Quality, Inc., 184 U.S.P.Q. 422 (C.C.P.A. 1975) (COUNTRY VOGUE for women’s clothing and VOGUE for women’s fashions magazine); Color Key Corp. v. Color 1 Assocs., Inc., 219 U.S.P.Q. 936 (T.T.A.B. 1983) (COLOR 1 for counseling services including wardrobe, makeup and interior design and COLOR KEY 1 and KEY 1 COLORS for instructional materials and educational services concerning color selection for home, industry and personal fashions).
Another particularly relevant case for comparison in this regard is In re Bed & Breakfast Registry, 791 F.2d 157, 158-59, 229 U.S.P.Q. 818, 819 (Fed. Cir. 1986). In that case, the federal court held that “BED & BREAKFAST REGISTRY” and “BED & BREAKFAST INTERNATIONAL” were not confusingly similar simply because they shared the words “bed and breakfast.” Id. The addition of completely different words resulted in two phrases with completely different meanings. Id. The court concluded that a “speculative assumption” by the Examining Attorney that one mark could be somehow connected to the other because of common words was an inadequate basis for denying registration and reversed the Attorney’s decision. Id. Similarly, in this case, there is no reason to believe that consumers would mistake these marks for each other simply because they each contain the commonly used term “exact.”
Finally, the additional terms in the cited mark HOME MORTGAGE, indicate to a consumer exactly the type of services that are offered. It is not likely that consumers will confuse the two marks, especially in light of the use of the terms HOME MORTGAGE.
Based on the above argument, Applicant respectfully requests reconsideration of the Examiner’s rejection based on a likelihood of confusion with ARRIVE HOME MORTGAGE.