Response to Office Action

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)

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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 Office Action

To the Commissioner for Trademarks:

Application serial no. 88289576 CRE (Stylized and/or with Design, see http://uspto.report/TM/88289576/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

In an office action, mailing date June 24, 2019, the examining attorney refused registration.  For the reasons set forth below, Applicant respectfully requests that this application be reconsidered for registration on the Principal Register.

I.          Likelihood of Confusion

            The examining attorney noted that there may be a likelihood of confusion under Section 2(d) of the Act between Applicant’s mark and Registration No. 3,279,419 based on the similarity of the marks and the relatedness of the goods and/or services.  Applicant submits that there is no likelihood of confusion between Applicant’s mark and the Registration for the reasons discussed below. 

A.        The Marks Are Not Similar Enough To Cause A Likelihood Of Confusion

 

            The first factor in determining whether there is a likelihood of confusion is to compare the marks in their entireties for similarities in their appearance, sound, connotation and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973); see also TMEP § 1207.01(b).  Similarity of the marks in one respect – sight, sound or meaning – will not automatically result in a finding of likelihood of confusion even if the goods are identical or closely related.  In re Lamson Oil Co., 6 U.S.P.Q.2d 1041, 1043 (TTAB 1987); see also TMEP § 1207.01(b)(i).  While the marks at issue here are similar in sound, they are not similar in sight or meaning for the following reasons.

            Registration No. 3,279,419 is for CRE and is clearly an acronym for its owner, The Counselors of Real Estate, a non-profit organization of property professionals.  Further, while the registration at issue is for the “CRE” trademark, it is clear that Registrant primarily, if not exclusively, uses its mark as a certification mark to indicate membership in its organization.  Its website states, “[m]embership is extended by invitation and candidates may independently apply if they confirm a minimum of 10 years of real estate experience and three years of property advisory services.  A stringent process of selection ensures that individuals awarded the ‘CRE’ credential have attained the highest levels of expertise and achievement in their real estate specialty, particularly in the provision of sophisticated advice and high-level problem solving….  Members who hold the CRE credential are senior real estate decision makers….”  See Exhibit 1.  Registrant’s website further proclaims, “Find the Right CRE.”  Id.  Indeed, Registrant owns Registration No. 1,185,263 for the certification mark “CRE.”

            Applicant’s mark, on the other hand, is “CRE & design” and is an acronym for its owner, Clarity Real Estate, LP, a private equity platform dedicated to sourcing attractive real estate acquisitions in thriving markets.  The “CRE” in Applicant’s mark is not a certification.  Because both marks are acronyms with different meanings, they are therefore not similar in meaning.  Further, Applicant’s mark is a design mark with the following elements:

            Applicant’s mark and the Registration are therefore also not similar in sight.  While the Registration is a word mark, it appears that Applicant uses its mark with the following design: 

See Exhibit 1.

            In addition, “CRE” is a commonly known and used acronym for “Commercial Real Estate.”  See Exhibit 2.  And thus, it is used in a number of registrations related to commercial real estate, for example:

The presence of multiple marks that use the acronym “CRE” with regard to commercial real estate services, is evidence that “it is merely one of a crowd of marks.” 2 McCarthy on Trademarks, § 11:85 (4th ed. 2008).  In such a crowd, consumers will not be confused between any two similar marks and may have learned to carefully pick out one from the other. Standard Brands, Inc. v. RJR Foods, Inc., 192 U.S.P.Q. 383, 385 (T.T.A.B. 1976). Such a finding applies to this case, where consumers will not be confused by Applicant’s mark given the fact that there are multiple registered marks that use the same acronym.

B.        The Services Are Distinct; Thus, There is No Likelihood of Confusion

The second part of the analysis in determining whether there is a likelihood of confusion is to compare the goods and/or services to determine whether they are similar or commercially related or travel in the same trade channels.  Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 U.S.P.Q. 1375, 1380 (Fed. Cir. 2002). 

The test is whether the goods are similar enough that a customer would assume they were offered by the same source.  Checkpoint Systems, Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270 (3^rd Cir. 2001) (finding no likelihood of marketplace confusion where two companies used identical marks in same industry).  Mere use of identical marks, even if used in the same broad industry, does not demonstrate likelihood of confusion.  Id., see also Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718 F.2d 1201 (1^st Cir. 1983). 

In Astra, applicant applied for registration of the mark “ASTRA” in connection with computerized blood analyzer machines and products associated therewith.  Registrant had five active registrations for “ASTRA” in connection with pharmaceutical products and syringes.  The Registrant sued for trademark infringement and the District Court’s dismissal of the suit on summary judgment was upheld by the Court of Appeals, who agreed that there was no likelihood of confusion of the source of the products, even though those products emanated from the same broad category of products used in the medical health field.  Id. at 1205-1206. 

Similarly, there is no likelihood of confusion as to the source of Applicant’s and Registrant’s respective services.  While Applicant’s mark and the Registrant’s mark are similar, they are not used in the same industries, they do not travel in the same trade channels and they are not marketed and sold to the same class of purchasers. 

            Registration No. 3,279,419 is for the mark “CRE” for “providing financial market information for real estate professionals” in Class 36.  It is owned by Counselors of Real Estate, a non-profit organization of property professionals who also use its “CRE” mark to denote certification and membership in its organization.  See Exhibit 1.   

Applicant’s mark is for “CRE” & design for “private equity fund investment services” in Class 36.  Applicant is Clarity Real Estate, LP, (“Meritor”), a real estate private equity platform dedicated to investing in high growth markets and operates value-add private equity funds.  See Exhibit 3. 

While Applicant’s mark and the Registration may be nearly identical, they are both used in the very broad category of services in Class 36 and they do not travel in the same trade channels. Registrant’s services are marketed to real estate professionals and Registrant provides financial market information to those professionals.  Applicant’s services are marketed to private equity investors looking to invest their money. 

Not only are the actual services of the Registrant and Applicant very different, but those services likewise travel in different industries and different channels of trade and are not likely to be encountered by the same consumers.  There is no likelihood of confusion when similar marks are used in different markets of the same broad field.  Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 716 (Fed. Cir. 1992).  In this case, Applicant’s and Registrant’s marks are used in different markets in the same broad field.

Even where the marks are identical, 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 confusion is not likely.  Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1244-45, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of RITZ for cooking and wine selection classes and RITZ for kitchen textiles is likely to cause confusion, because the relatedness of the respective goods and services was not supported by substantial evidence); 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).

Applicant respectfully submits that under TMEP and applicable case law, Applicant’s and Registrant’s services are not related for the purposes of a likelihood of confusion analysis even if they fit under a broad umbrella category of services.  “[T]he issue of whether or not two products are related does not revolve around the question of whether a term can be used that describes them both, or whether both can be classified under the same general category.”  See Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460, 1463 (TTAB 1992); McGraw-Hill, Inc. v. Comstock Partners, Inc., 743 F.Supp. 1029, 1034 (S.D.N.Y. 1999) (“while [both parties] furnish products related to the broad field of finance, [they] are completely unrelated as night and day.”); WWW Pharm. Co. v. Gillette Co., 984 F.2d 567, 573 (2^nd Cir. 1993) (“[t]hese products do not compete nor serve the same purpose, although they may both be generally defined as personal care products” - SPORTSTICK for lip balm not confusing with SPORT STICK for deodorant) (emphasis supplied); Munters Corp. v. Matsui Am., Inc., 730 F.Supp. 790, 798 (N.D. Ill. 1989) (“[i]n some, albeit non-meaningful, sense, all products are related.”) (emphasis supplied).

There can be no rule that certain goods and services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto.  TMEP § 1207/01(a)(iv).  Similarity in one, generalized aspect is not sufficient if otherwise the goods and services are “plainly different things, different in size, shape, concept, purpose, appearance, and price.”  Safeguard Business Systems, Inc. v. New England Business Systems, 696 F.Supp. 1041, 9 USPQ2d 1051, 1055 (E.D. Pa. 1988).  As a matter of law, no trademark owner enjoys a monopoly in its mark with respect to all goods or services, and even similar marks often co-exist with no danger of consumer confusion when they are used with sufficiently different goods or services.  Quality Inns Int’l v. McDonald’s Corp., 8 USPQ2d 1633 (D. Md. 1988).

Registrant’s and Applicant’s services are not marketed to the same consumers, nor are they in the same industry, and they do not travel in the same trade channels.  Thus, consumers are unlikely to be confused as to the source of origin of the services. 

C.        Purchasers of Applicant’s and Registrant’s Services Are Sophisticated And Thus, Would Not Likely Be Confused

 

The purchasers of Applicant’s and Registrant’s services are sophisticated purchasers, further undercutting any likelihood of confusion.  The real estate professionals who purchase Registrant’s financial market information are sophisticated purchasers who are seeking a very specific and distinct service offered by Registrant and thus, are unlikely to be confused by Applicant’s mark.  Likewise, the purchasers of Applicant’s private equity fund investment services are also sophisticated private equity fund investors who are seeking to invest large sums of money. 

“Where the … buyer class consists of sophisticated or professional purchasers, courts have generally not found Lanham Act violations.”  Checkpoint Systems, Inc., v. Check Point Software Tech., Inc., 269 F.3d 270, 284 (3^rd Cir. 2001).  “Sophisticated consumers may be expected to exercise greater care.”  Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713 (Fed. Cir. 1992) (citations omitted).  Likelihood of confusion must be shown to exist in an actual or potential purchaser.  Id. at 717.  Sophisticated consumers would not overlook the marked and distinct differences between Applicant’s and Registrant’s services.  Thus, they are unlikely to be confused about Registrant’s and Applicant’s marks.

Further, “[t]here is always less likelihood of confusion where goods are expensive and purchased after careful consideration.”  Astra Pharm. Prods., Inc., v. Beckman Instruments, Inc., 220 USPQ 786, 791 (1^st Cir. 1983).  Sophisticated consumers purchasing expensive products exercise a greater level of care in distinguishing the source of products and services.  Jet Inc. v. Sewage Aeration Systems, 165 F.3d 419, 49 USPQ2d 1355, 1358 (6^th Cir. 1999); Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546, 1548, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990) (in making purchasing decisions regarding expensive goods, the reasonably prudent person standard is elevated to the standard of “discriminating purchaser.”).

Finally, when the nature of the product or service is usually complex or specialized, confusion is unlikely.  Astra, 718 F.2d 1201 (1^st Cir. 1983); Homeowners Group Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 18 USPQ2d 1587 (6^th Cir. 1991).  Purchasers exercise a higher degree of care when purchasing goods specifically to satisfy a focused need.  G.H. Mumm & Cie v. Desnoes & Geddes, Ltd., 917 F.2d 1292, 16 USPQ2d 1635, 1638 (Fed. Cir. 1990) (high degree of care when satisfying “focused need”); Originals, Inc. v. Stride Rite Corp., 656 F.Supp. 484, 2 USPQ2d 1934, 1941 (S.D.N.Y. 1987) (high degree of care exercised when buying shoes); Edison Bros. Stores, Inc. v. Cosmair, Inc., 651 F.Supp. 1547, 2 USPQ2d 1013, 1024 (S.D.N.Y. 1987) (high degree of care when purchasing apparel).

The TTAB found no confusion between the use of the mark HPM and the mark HP for medical instruments due to the nature of the consumers, stating that this audience consists of “highly educated, sophisticated purchasers who know their equipment needs and would be expected to exercise a great deal of care in its selection.”  Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 USPQ2d 1390 (1991).  Further, as noted above, if apparel and shoe buyers are considered careful purchasers, then Applicant respectfully submits that its customers and those of the Registrant are at least as discriminating. 

 

            In sum, there is no likelihood of confusion sufficient to prevent registration of Applicant’s mark.  Based upon the marked and distinct differences between the sight and meaning of the marks and Applicant’s and Registrant’s respective services, including the fact that they are marketed and sold to different industries and therefore travel in different trade channels and the fact that they are sold to different, sophisticated purchasers, Applicant respectfully requests the examining attorney reconsider the allowance of this application on the Principal Register.

EVIDENCE
Evidence in the nature of Website pages has been attached.
Original PDF file:
evi_641411442-20191219120230885314_._CREexhibit1.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_641411442-20191219120230885314_._CREexhibit2.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_641411442-20191219120230885314_._CREexhibit3.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

The applicant's current attorney information: Kimberly A. Berger. Kimberly A. Berger of MILLER, CANFIELD, PADDOCK & STONE, PLC, is located at

      150 W. JEFFERSON, STE. 2500
      DETROIT, Michigan 48226
      US
The docket/reference number is 156083-00001.

The phone number is 313-496-7912.

The fax number is 313-496-8453.

The email address is berger@millercanfield.com

The applicants proposed attorney information: Kimberly A. Berger. Kimberly A. Berger of MILLER, CANFIELD, PADDOCK & STONE, PLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      150 W. JEFFERSON, STE. 2500
      DETROIT, Michigan 48226
      United States
The docket/reference number is 156083-00001.

The phone number is 313-496-7912.

The fax number is 313-496-8453.

The email address is berger@millercanfield.com

Kimberly A. Berger submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: KIMBERLY A. BERGER. KIMBERLY A. BERGER of MILLER, CANFIELD, PADDOCK & STONE, PLC, is located at

      150 W. JEFFERSON, STE. 2500
      DETROIT, Michigan 48226
      US
The docket/reference number is 156083-00001.

The phone number is 313-496-7912.

The fax number is 313-496-8453.

The email address is berger@millercanfield.com; tate@millercanfield.com

The applicants proposed correspondence information: Kimberly A. Berger. Kimberly A. Berger of MILLER, CANFIELD, PADDOCK & STONE, PLC, is located at

      150 W. JEFFERSON, STE. 2500
      DETROIT, Michigan 48226
      United States
The docket/reference number is 156083-00001.

The phone number is 313-496-7912.

The fax number is 313-496-8453.

The email address is berger@millercanfield.com; tate@millercanfield.com

SIGNATURE(S)
Response Signature
Signature: /Kimberly A. Berger/     Date: 12/19/2019
Signatory's Name: Kimberly A. Berger
Signatory's Position: Attorney of record, Michigan bar member

Signatory's Phone Number: 3134967912

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    KIMBERLY A. BERGER
   MILLER, CANFIELD, PADDOCK & STONE, PLC
   
   150 W. JEFFERSON, STE. 2500
   DETROIT, Michigan 48226
Mailing Address:    Kimberly A. Berger
   MILLER, CANFIELD, PADDOCK & STONE, PLC
   150 W. JEFFERSON, STE. 2500
   DETROIT, Michigan 48226
        
Serial Number: 88289576
Internet Transmission Date: Thu Dec 19 12:06:20 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20191219120620064
674-88289576-70042ecd86433ea5a5cc451092b
874e1c641b635fac67bf8d86320ff35729c67c-N
/A-N/A-20191219120230885314