| 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 | 88304973 |
| LAW OFFICE ASSIGNED | LAW OFFICE 113 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88304973/mark.png |
| LITERAL ELEMENT | ESPECIA |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
This Response is to the Office Action issued by Examiner for Applicant’s pending application, “Especia” & design, serial #88304973 (“Mark”). This Response addresses the concerns as raised by Examiner.
I. Refusal Based on Alleged Confusion, Section 2(d) Examiner asserts that the Mark would cause a likelihood of confusion with U.S. Registration No. 4754243 for “SPICE” for the goods, “Business consultation services in the field of customer service for employees in the hospitality industry” (“Cited Mark”).
Applicant respectfully disagrees with the refusal and submits that there is not a likelihood of confusion with the Cited Mark for the reasons set forth herein.
The Doctrine of Foreign Equivalents doesn’t apply The doctrine of foreign equivalents applies only “when it is likely that the ordinary American purchaser would stop and translate a word into its English equivalent.” Palm Bay Imports, 73 U.S.P.Q.2d at 1696. In the context of the Mark, the term “ordinary American purchaser” would presume someone who is necessary knowledgeable in Spanish. But there is no way to reasonably assume that a consumer speaks Spanish or even that a translation would occur. Indeed, it is recognized that “there are foreign expressions that even those familiar with the language will not translate, accepting the term as it is.” In re Tia Maria, Inc., 188 U.S.P.Q. 524, 525 (TTAB 1975) (holding that consumers will not translate TIA MARIA as the name of a Mexican restaurant because the marketplace makes it unfeasible for them to do so). As such, no confusion can exist because there is no reason to believe an ordinary American purchaser would translate “Especia” to “Spice” and therefore confuse it with the Cited Mark.
The trade channel of the Cited Mark is very narrow and does not conflict with the Mark as modified Even if the Doctrine of Foreign Equivalents was held to apply, the Cited Mark’s services are limited to customer service in the hospitality industry. With this response, Applicant has removed broader IDs from the Mark around Business administration services and Business management. As such, the Mark is now strictly related to clothing marketing services. The trade channels under which these services are offered would never be seen by the same consumer. As such, there will be no likelihood of confusion.
Sophistication of Purchasers Involved The courts have long followed theeight-part Polaroid test in determining the likelihood of confusion between marks. See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). This test requires analysis of several non-exclusive factors, including: (1) the strength of the mark, (2) the degree of similarity between the two marks, (3) the competitive proximity of the products, (4) actual confusion, (5) the likelihood the plaintiff will bridge the gap, (6) the defendant's good faith in adopting its mark, (7) the quality of the defendant's products, and (8) the sophistication of the purchasers. See also, Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 256 (2d Cir. 1987). No single factor set forth above is dispositive, nor is a court limited to consideration of only these factors. See Polaroid, 287 F.2d at 495. Further, "each factor must be evaluated in the context of how it bears on the ultimate question of likelihood of confusion as to the source of the product." Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 872 (2d Cir. 1986). In fact, courts have noted that the eight-factor test is a "pliant" one, in which "some factors are much more important than others." See, Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054 (9th Cir. 1999).
And when determining whether likelihood of confusion exists, it must be determined that "an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." See, Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44,47, 199 U.S.P.Q. (BNA) 65,66 (2d Cir. 1978). This concept is further solidified in Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998) ("The test for likelihood of confusion is whether a reasonably prudent consumer in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks.")
When viewed in light of the eighth Polaroid factor, courts generally hold that if a consumer can be expected to exercise a high degree of care, they will be less likely to be confused by any connection between a senior and junior trademark. A sophisticated consumer is one who is apt to spend more time, attention, or care in making a purchasing decision and who is thus deemed less likely to be confused as to the source of goods and services. Analysis of case law shows that consumer care or sophistication correlates positively with price, length, purchase research, and complexity of the purchase transaction; infrequency of purchase; and the notion that professional buyers are generally more sophisticated than an average consumer.
When looking at the services offered by the Cited Mark and the Mark, marketing and business consultation services are not a common consumer purchase. In fact, such services are nearly always purchased by a highly sophisticated purchaser, far more aware of the marketplace than a typical consumer, due to the nature and the cost of such services. As shown in In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 USPQ 969, 971 (Fed. Cir. 1985), sophisticated purchasers who are exercising great care when purchasing the relevant goods, would not be confused due to similarity in marks (in this case, the marks were NARCO and NARKOMED).
As such, a purchaser of marketing and business services will know exactly who they are dealing with and will obviously know that the marketing services offered under the Mark are quite different than the business consultation services associated with the Cited Mark. Quite simply, there will be no likelihood of confusion as a result.
II. Conclusion In view of the foregoing arguments and evidence, Applicant respectfully submits that this application is in condition for publication. Favorable reconsideration and prompt publication of the Mark is respectfully requested.
|
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| Business administration services; Business management; Marketing services in the field of clothing; Shop window dressing; Targeted marketing services | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 035 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Marketing services in the field of clothing; Shop window dressing; Targeted marketing services | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Curt Handley, Esq./ |
| SIGNATORY'S NAME | Curt Handley, Esq. |
| SIGNATORY'S POSITION | Attorney of Record, IL Bar Member |
| SIGNATORY'S PHONE NUMBER | 888-932-5291 |
| DATE SIGNED | 07/07/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Sun Jul 07 10:49:02 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.X-20 190707104902684403-883049 73-620e8f81d6728517a19776 455959d358c6621ed8ff149ea e795a356eda9a9c4f31-N/A-N /A-20190707103158121532 |
| 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) |
This Response is to the Office Action issued by Examiner for Applicant’s pending application, “Especia” & design, serial #88304973 (“Mark”). This Response addresses the concerns as raised by Examiner.
I. Refusal Based on Alleged Confusion, Section 2(d)
Examiner asserts that the Mark would cause a likelihood of confusion with U.S. Registration No. 4754243 for “SPICE” for the goods, “Business consultation services in the field of customer service for employees in the hospitality industry” (“Cited Mark”).
Applicant respectfully disagrees with the refusal and submits that there is not a likelihood of confusion with the Cited Mark for the reasons set forth herein.
The Doctrine of Foreign Equivalents doesn’t apply
The doctrine of foreign equivalents applies only “when it is likely that the ordinary American purchaser would stop and translate a word into its English equivalent.” Palm Bay Imports, 73 U.S.P.Q.2d at 1696. In the context of the Mark, the term “ordinary American purchaser” would presume someone who is necessary knowledgeable in Spanish. But there is no way to reasonably assume that a consumer speaks Spanish or even that a translation would occur. Indeed, it is recognized that “there are foreign expressions that even those familiar with the language will not translate, accepting the term as it is.” In re Tia Maria, Inc., 188 U.S.P.Q. 524, 525 (TTAB 1975) (holding that consumers will not translate TIA MARIA as the name of a Mexican restaurant because the marketplace makes it unfeasible for them to do so). As such, no confusion can exist because there is no reason to believe an ordinary American purchaser would translate “Especia” to “Spice” and therefore confuse it with the Cited Mark.
The trade channel of the Cited Mark is very narrow and does not conflict with the Mark as modified
Even if the Doctrine of Foreign Equivalents was held to apply, the Cited Mark’s services are limited to customer service in the hospitality industry. With this response, Applicant has removed broader IDs from the Mark around Business administration services and Business management. As such, the Mark is now strictly related to clothing marketing services. The trade channels under which these services are offered would never be seen by the same consumer. As such, there will be no likelihood of confusion.
Sophistication of Purchasers Involved
The courts have long followed theeight-part Polaroid test in determining the likelihood of confusion between marks. See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). This test requires analysis of several non-exclusive factors, including: (1) the strength of the mark, (2) the degree of similarity between the two marks, (3) the competitive proximity of the products, (4) actual confusion, (5) the likelihood the plaintiff will bridge the gap, (6) the defendant's good faith in adopting its mark, (7) the quality of the defendant's products, and (8) the sophistication of the purchasers. See also, Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 256 (2d Cir. 1987). No single factor set forth above is dispositive, nor is a court limited to consideration of only these factors. See Polaroid, 287 F.2d at 495. Further, "each factor must be evaluated in the context of how it bears on the ultimate question of likelihood of confusion as to the source of the product." Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 872 (2d Cir. 1986). In fact, courts have noted that the eight-factor test is a "pliant" one, in which "some factors are much more important than others." See, Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054 (9th Cir. 1999).
And when determining whether likelihood of confusion exists, it must be determined that "an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." See, Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44,47, 199 U.S.P.Q. (BNA) 65,66 (2d Cir. 1978). This concept is further solidified in Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998) ("The test for likelihood of confusion is whether a reasonably prudent consumer in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks.")
When viewed in light of the eighth Polaroid factor, courts generally hold that if a consumer can be expected to exercise a high degree of care, they will be less likely to be confused by any connection between a senior and junior trademark. A sophisticated consumer is one who is apt to spend more time, attention, or care in making a purchasing decision and who is thus deemed less likely to be confused as to the source of goods and services. Analysis of case law shows that consumer care or sophistication correlates positively with price, length, purchase research, and complexity of the purchase transaction; infrequency of purchase; and the notion that professional buyers are generally more sophisticated than an average consumer.
When looking at the services offered by the Cited Mark and the Mark, marketing and business consultation services are not a common consumer purchase. In fact, such services are nearly always purchased by a highly sophisticated purchaser, far more aware of the marketplace than a typical consumer, due to the nature and the cost of such services. As shown in In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 USPQ 969, 971 (Fed. Cir. 1985), sophisticated purchasers who are exercising great care when purchasing the relevant goods, would not be confused due to similarity in marks (in this case, the marks were NARCO and NARKOMED).
As such, a purchaser of marketing and business services will know exactly who they are dealing with and will obviously know that the marketing services offered under the Mark are quite different than the business consultation services associated with the Cited Mark. Quite simply, there will be no likelihood of confusion as a result.
II. Conclusion
In view of the foregoing arguments and evidence, Applicant respectfully submits that this application is in condition for publication. Favorable reconsideration and prompt publication of the Mark is respectfully requested.