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. 88294637 BOULEVARD HOME FURNISHINGS(Standard Characters, see http://uspto.report/TM/88294637/mark.png) has been amended as follows:

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

RESPONSE TO OFFICE ACTION

 

            Applicant Wittwer, Inc. (“Applicant” or “Wittwer”) has reviewed the Office Action issued in connection with Application Serial No. 88294637 for the mark BOULEVARD HOME FURNISHINGS (“Wittwer Mark”), and, based upon arguments presented below, respectfully requests that the Examiner withdraw the rejections and allow the mark to proceed to publication. The Examiner is encouraged to call and discuss this response with Applicant’s Attorney of Record if the Examiner is not ready to allow the application to proceed to publication.

I.              Introduction

            The Examining Attorney issued a non-final Office Action on April 23, 2019 (Office Action), refusing registration based on a likelihood of confusion with Registration 1856765 (“Global Mark”) owned by Global Contract Limited Partnership (“Global”).

II.            Identification of Goods/Services

Applicant seeks to register the Wittwer Mark for:

·      retail furniture stores in Class 035.

The Global Mark issued for:

·      office furniture; namely, panels to define work spaces, storage shelves, room dividers, and tables in Class 020.

III.          Dissimilarity of the Marks

The average consumer does not dissect words or marks, and would, naturally, distinguish the two marks when viewed as a whole—they contain different words and are viewed and pronounced distinctly: Applicant’s mark is Boulevard Home Furnishings, while the Global Mark is for Boulevard alone. As announced by the Federal Circuit, “The relevant DuPont factor requires examination of the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. As is apparent from the plain language of this factor, marks must be viewed ‘in their entireties,’ and it is improper to dissect a mark when engaging in this analysis…” In re Viterra Inc., 671 F.3d at 1362 (internal citations omitted). Therefore, the marks should be viewed as a whole, without removing any portions therefrom or otherwise altering the marks. Therefore, the fact that both marks begin with the same word is not sufficient to find consumer confusion. The mark as a whole must be analyzed.

Under such an analysis, it is clear that the marks are different. This distinction is particularly relevant given the different nature of goods and services and their respective markets as discussed below. Notably, the Wittwer Mark is for retail furniture stores directed to household consumers. Appropriately, it contains the words “home furnishings.” In contrast, Global’s product is sold to business consumers through showrooms and dealers and it, again appropriately, does not include the words “home furnishings.”

IV.          No Likelihood of Confusion

Even when marks are identical, a determination must be made that there is an actual likelihood of confusion. In re Coors Brewing Co., 343 F3.d 1340, 1345 (Fed. Cir. 2003) (citing Jacobs v. International Multifoods Corp., 668 F.2d 1234, 1236 (CCPA 1982)) (“[T]o establish likelihood of confusion a party must show something more than that similar or even identical marks are used . . . .") (emphasis in original). “Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods.” Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).

A.   Retailer/Product Relationship Not Sufficient

The In re Coors Brewing Co. case is particularly relevant to the present application. In Coors Brewing, the Coors Brewing Company sought to register the words “Blue Moon” for a brand of beer. Coors Brewing, 343 F3.d at 1341. The examining attorney refused the registration over the registered mark “Blue Moon” for restaurant services. Id. The examining attorney found that beer and restaurant services were “closely related” because some restaurants serve beer. Id. (“In support of that finding, the examining attorney cited evidence that brewpubs, which brew and serve their own beer, often provide restaurant services, and that some restaurants serve their own private label beer.”). The Trademark Trial and Appeal Board upheld the examining attorney’s rejection.

However, the Federal Circuit rejected this logic:

[The] fact that restaurants serve food and beverages is not enough to render food and beverages related to restaurant services for purposes of determining the likelihood of confusion…[T]he registered mark in this case is simply for restaurant services in general, and the Board's conclusion that restaurant services and beer are related is based on the fact that a tiny percentage of all restaurants also serve as a source of beer, which is a very weak evidentiary basis for a finding of relatedness…[T]he Board's finding that beer and restaurant services are related is not supported by substantial evidence…While the evidence produced by the examining attorney shows that some restaurants brew or serve their own private label beer, that evidence does not support the Board's conclusion that consumers are likely to conclude that beer and restaurant services with similar marks emanate from the same source.

Coors Brewing co., 343 F.3d 1340, 1346-1347 (Fed. Cir. 2003).

Here, the Examining Attorney has applied similar reasoning, namely: The Global Mark is related to furniture, and retail furniture stores sell furniture; therefore, the goods and services are related. However, as the court in Coors Brewing held, such a vague relationship is not sufficient to establish that “consumers are likely to conclude that [office furniture including panels to define work spaces, storage shelves, room dividers, and tables] and [retail furniture stores] with similar marks emanate from the same source.” Id.

B.    Evidence of Record Shows Goods/Services Not Related

To the contrary, evidence of record in the present application illustrates a relevant distinction in the goods and services. “Registrability must be determined on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of the goods are directed.” Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 1372 (Fed. Cir. 2002) (internal citations omitted).

The Examining Attorney has presented two items of Internet evidence to establish that “retail furniture store services feature . . . furniture.” (Office Action.) This conclusion can hardly be disputed. But it is not enough. The Global Mark is not merely registered for “furniture,” nor is it even registered generically for “office furniture.” Rather, it is specifically registered for “office furniture; namely, panels to define work spaces, storage shelves, room dividers, and tables,” essentially cubicles. Any evidence sufficient to overcome the Court’s reasoning in Coors Brewing must be sufficient to show that consumers are likely to conclude that retail furniture stores and office cubicles emanate from the same source.

In fact, the Internet evidence presented by the Examining Attorney points in the opposite direction. The first reference (http://www.worldmarket.com/search.do?query=world+market+furniture) makes no mention whatsoever of office furniture. The second reference (http://www.mybobs.com/categoryPage/home-office) does show office furniture, but it specifically shows home office furniture. Neither reference provides any indication that retail furniture stores sell office furniture of the specific type registered in the Global Mark, and the mybobs.com reference indicates that the mybobs.com store sells a particular type of home office furniture that is distinct from the “panels to define work spaces, storage shelves, room dividers, and tables” registered by the Global Mark.

C.   Cases Cited by Examining Attorney Include Overlap Not in Present Application

The Examining Attorney has cited a number of cases that purportedly stand for the conclusion that “[t]he use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products.” (Office Action.) However, each of these cases include a specific overlap in the identification of goods that is not found in the present application. The court in In re Detroit Athletic Co. concluded that the senior mark included a broad registration for clothing goods that expressly encompassed the type of clothing sold through the junior mark’s stores. In re Detroit Athletic Co., 903 F.3d 1297, 1306 (Fed. Cir., 2018). In addition, the court found, “[The] evidence suggests that consumers are accustomed to seeing a single mark associated with a source that sells both its own branded clothing (as does the Detroit Athletic Club) as well as sports-teams-branded clothing (as does DACo).” Id. In the present case, there is no suggestion that the Global Mark encompasses the “retail furniture stores” of the Wittwer Mark, nor is there any suggestion that consumers are accustomed to seeing a single mark associated with a source that both offers retail sales of furniture and, at the same time, produces its own line of cubicles.

The other cases cited by the Examining Attorney include similar express overlap. In In re House Beer, LLC, the senior mark was registered for “beer” and the applicant sought to register “retail store services featuring beer.” 114 USPQ2d 1073, 1078 (TTAB 2015). In re Thomas, reflects that same overlap and is instructive with regard to the present application. In Thomas, the applicant sought to register a mark for “jewelry.” In re Thomas, 79 USPQ2d 1021, 1022 (TTAB 2006). The TTAB considered two prior registrations, one for “retail jewelry and mineral store services” and one for “clothing for women, namely, dresses, pants, jackets, lingerie, tops, skirts, and shorts.” Id. at 1023, 1028. The TTAB upheld the examining attorney’s refusal over the first registration, which expressly included the applicant’s goods, but reversed the refusal over the second registration, concluding: “While jewelry may be related to clothing, the goods are nevertheless specifically different.” Id. at 1028.

V.            Additional du Pont Factors

Additional du Pont factors indicate that there is unlikely to be confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361.

A.   Dissimilarity of Established, Likely-to-Continue Trade Channels

The office furniture of the type sold by Global and registered under the Global Mark do not overlap with the retail furniture stores that Wittwer seeks to register with the Wittwer Mark. Global sells office cubicles under the “Boulevard” line of the Teknion brand. http://www.teknion.com/products/galleries/boulevard-gallery (Attachment 1). Global directs potential customer its showrooms or dealers for purchase of its products. See http://www.teknion.com/locations/locations-showrooms (Attachment 2) or http://www.teknion.com/locations/locations-dealers (Attachment 3) The dealers are uniformly entities that specialize in corporate or business furnishings. Id. In contrast, Wittwer offers retail furniture stores directed to consumers. To the degree that Wittwer offers any office furnishings, they are home office products that do not include the type of goods covered by the Global Mark. See, e.g., http://www.blvdhome.com/catalog/home-office (Attachment 4). The sophisticated business buyer in the market for office cubicles is unlikely to confuse the Global cubicle as coming from a furniture retailer with stores in southern Utah and Nevada, and the retail furniture consumer is unlikely to encounter the Global cubicles and even less likely to erroneously conclude that the local furniture retail store is somehow the source of such cubicles.

B.    Conditions under which and Buyers to Whom Sales Are Made

The nature of the buyers and the conditions under which a purchase would be made a retail furniture store versus the purchase of office cubicles varies significantly. These are not the same type of purchase nor the same type of product. Given the nature of the products and the conditions for purchase, it is again unlikely that consumers will confuse the source.

C.   Concurrent Use and Actual Confusion

The du Pont factors consider both the nature and extent of any actual confusion as well as the length of time during and conditions under which there has been concurrent use without evidence of actual confusion. Wittwer began use of the Boulevard Home Furnishings name in conjunction with retail furniture sales at least as early as 1978. Global filed its application in 1991. For nearly thirty years the marks have coexisted. In all that time, the Applicant is unaware of any actual confusion and have never been contacted by Global regarding any confusion, actual or potential.

D.   Variety of Goods on which a Mark Is or Is Not Used

Finally, the du Pont factors consider variety of goods on which a mark is or is not used, i.e., whether the mark is a house mark, a “family” mark, or a product mark. In the present case, Global uses the Global Mark only in association with a particular line of cubicles sold under the Teknion brand. The goods described in the Global Mark registration and the way that Global uses the Global Mark both cover a narrow subsection of office furniture. Likewise, Wittwer uses the Wittwer Mark in the narrow scope of retail furniture sales rather than as an identification source for furniture products. Accordingly, it is unlikely there is unlikely to be confusion between the marks.

VI.          Disclaimer

No claim is made to the exclusive right to use “HOME FURNISHINGS” apart from the mark as shown.

VII.        Conclusion

“[T]o establish likelihood of confusion a party must show something more than that similar or even identical marks are used . . . .” Coors Brewing, 343 F3.d at 1345. The Applicant respectfully submits that, for at least the reasons articulated above, registration of “Boulevard Home Furnishings” for retail furniture stores in Class 035 is unlikely to cause confusion with the existing registration of “Boulevard” for office furniture; namely, panels to define work spaces, storage shelves, room dividers, and tables in Class 020. Accordingly, Applicant requests that the Examining Attorney allow the mark to proceed to publication.

EVIDENCE
Evidence in the nature of Attachment 1: print of webpage http://www.teknion.com/products/galleries/boulevard-gallery; Attachment 2: print of webpage http://www.teknion.com/locations/locations-showrooms; Attachment 3: print of webpage http://www.teknion.com/locations/locations-dealers; Attachment 4: screen capture and print of webpage http://www.blvdhome.com/catalog/home-office has been attached.
Original PDF file:
evi_2049820672-20191023200202173283_._19-008-BHF-2019-10-23-BOULEVARD-Attachment1.pdf
Converted PDF file(s) ( 8 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Original PDF file:
evi_2049820672-20191023200202173283_._19-008-BHF-2019-10-23-BOULEVARD-Attachment2.pdf
Converted PDF file(s) ( 9 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Original PDF file:
evi_2049820672-20191023200202173283_._19-008-BHF-2019-10-23-BOULEVARD-Attachment3.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_2049820672-20191023200202173283_._19-008-BHF-2019-10-23-BOULEVARD-Attachment4.pdf
Converted PDF file(s) ( 8 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8

The applicant's current attorney information: Robert D. Spendlove. Robert D. Spendlove of GURR BRANDE & SPENDLOVE, PLLC, is located at

      491 E RIVERSIDE DR STE 4B
      ST GEORGE, Utah 84790
      US
The docket/reference number is 19-008-BHF.

The phone number is 435-767-7808.

The fax number is 866-232-8818.

The email address is spendlove@gbsip.com

The applicants proposed attorney information: Robert D. Spendlove. Other appointed attorneys are Jared Brande. Robert D. Spendlove of GURR BRANDE & SPENDLOVE, PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      491 E RIVERSIDE DR STE 4B
      ST GEORGE, Utah 84790
      United States
The docket/reference number is 19-008-BHF.

The phone number is 435-767-7808.

The fax number is 866-232-8818.

The email address is spendlove@gbsip.com

Robert D. Spendlove 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: ROBERT D. SPENDLOVE. ROBERT D. SPENDLOVE of GURR BRANDE & SPENDLOVE, PLLC, is located at

      491 E RIVERSIDE DR STE 4B
      ST GEORGE, Utah 84790
      US
The docket/reference number is 19-008-BHF.

The phone number is 435-767-7808.

The fax number is 866-232-8818.

The email address is spendlove@gbsip.com; ipdocket@gbsip.com

The applicants proposed correspondence information: Robert D. Spendlove. Robert D. Spendlove of GURR BRANDE & SPENDLOVE, PLLC, is located at

      491 E RIVERSIDE DR STE 4B
      ST GEORGE, Utah 84790
      United States
The docket/reference number is 19-008-BHF.

The phone number is 435-767-7808.

The fax number is 866-232-8818.

The email address is spendlove@gbsip.com; ipdocket@gbsip.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use HOME FURNISHINGS apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /Robert D. Spendlove/     Date: 10/23/2019
Signatory's Name: Robert D. Spendlove
Signatory's Position: Attorney of Record

Signatory's Phone Number: (435) 767-7808

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:    ROBERT D. SPENDLOVE
   GURR BRANDE & SPENDLOVE, PLLC
   
   491 E RIVERSIDE DR STE 4B
   ST GEORGE, Utah 84790
Mailing Address:    Robert D. Spendlove
   GURR BRANDE & SPENDLOVE, PLLC
   491 E RIVERSIDE DR STE 4B
   ST GEORGE, Utah 84790
        
Serial Number: 88294637
Internet Transmission Date: Wed Oct 23 20:10:32 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2019102320103246
2879-88294637-610da8bdbbac63a6b7b0dbb2e4
b45c78f094c647b2088faf238fd32d93c9706f-N
/A-N/A-20191023200202173283