| 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 | 88361168 |
| LAW OFFICE ASSIGNED | LAW OFFICE 128 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88361168/mark.png |
| LITERAL ELEMENT | NAVIGATE THE JOURNEY |
| 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) | |
LIKELIHOOD OF CONFUSION
The Examining Attorney has searched the Office’s database of registered and pending marks and has found a mark that would, in her view, bar registration under Trademark Act Section 2(d).
The proposed mark is: NAVIGATE THE JOURNEY, Ser. No. 88361168, for “business education and training services, namely, developing customized in-company leadership and executive development programs, providing executive coaching services, and providing public and in-company keynote presentations to business leaders” in International Class 41.
The mark found by the Examining Attorney is:
THE NAVIGATED JOURNEY, Reg. No. 4747990, for “business advice and information relating to loans, finance and capital” in International Class 35.
The Examining Attorney is of the opinion that Applicant’s mark, when used on or in connection with the identified services, so resembles the mark in Reg. No. 4747990 as to be likely to cause confusion, or to cause mistake or deceive. Consequently, the Examining Attorney has refused registration under Section 2(d). However, the Examining Attorney’s refusal to register is respectfully traversed. In assessing the likelihood of confusion, the courts have repeatedly said, “it is the duty of the examiner * * * to find, upon consideration of all the evidence, whether or not confusion appears likely.” In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563, 568 (CCPA 1973) (emphasis in original). In this case, Applicant’s use of NAVIGATE THE JOURNEY in connection with the services identified in the application is unlikely to cause any confusion. Even when applied to similar goods or services, marks containing identical terms may create sufficiently different commercial impressions so that there is no likelihood of confusion. See, e.g., Lever Bros. Co. v. Barcolene Co., 174 USPQ 392 (CCPA 1972) (ALL for household cleaner held not likely to be confused with ALL CLEAR for household cleaner); Bell Laboratories, Inc. v. Colonial Products, Inc., 231 USPQ 569 (S.D. Fla. 1986) (FLIP and FINAL FLIP, both for rodenticide; denial of preliminary injunction). The Office and the courts have allowed a number of similar and identical marks to coexist in connection with various goods and services. See, e.g., Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ 2d 1460 (TTAB 1992) (EDS and EDSA as used in connection with computer software may coexist). Consequently, the mere fact that two marks share elements does not necessarily mean that they are confusingly similar. General Mills Inc. v. Kellogg Co., 3 USPQ2d 1442, 1445 (8th Cir. 1987). The words NAVIGATE and JOURNEYare highly suggestive of the business related services in connection with which they are used insofar as the services assist clients with formulating and achieving strategic goals, i.e. “navigate a journey”. Suggestive wording is considered “weak” in a trademark sense and, as a consequence, entitled to a narrow scope of protection. Furthermore, where a party chooses a mark which is highly suggestive (as in this case), he will not enjoy the wide latitude of protection afforded the owner of a less suggestive mark. Thus, others may come closer to his mark than would be the case with a less suggestive mark without violating his rights. For example, CHAMPION has long been used as a trademark by unrelated parties for spark plugs and sportswear without likelihood of confusion. The respective parties’ services in this case are no less different, and thus unrelated, than spark plugs and sportswear. Since the scope of protection to which the cited mark and the proposed mark are each entitled is so narrow, the respective parties can use and register their marks on or in connection with their respective business centric but unrelated services at the same time without causing confusion as to source of origin or sponsorship. Next, in order to find a likelihood of confusion, the services of two parties must be related in some manner, or the conditions surrounding their marketing must be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the services come from a common source. See In re Martins’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 233 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978). In this case, the respective parties’ services are “business education and training services, namely, developing customized in-company leadership and executive development programs, providing executive coaching services, and providing public and in-company keynote presentations to business leaders” in International Class 41 and “business advice and information relating to loans, finance and capital” in International Class 35. Although each of these business related services might in some sense of the words help a client “navigate a journey”, they are neither related nor marketed in such a way that the same class of clients could encounter them. The target markets for the respective parties’ services are sophisticated individuals with specialized needs. “Sophisticated consumers may be expected to exercise greater care.” Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388, 1392 (Fed. Cir. 1992), quoting Pignons S.A. de Mecaniaue de Precision v. Polaroid Corp., 657 F.2d 482,489 (1st Cir. 1981). When goods or services are expensive and purchased after careful consideration there is always less likelihood of confusion. Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206 (1st Cir. 1983) (finding the sophistication of purchasers the most critical factor weighing against the plaintiff’s claim of likelihood of confusion). In trademark cases the kind of product or service, its cost and the conditions of purchase are important factors in determining whether the degree of care that consumers of such products will exercise is sufficient to avoid a likelihood of confusion. Grotrian, Helfferich, Sculz, Th. Steinweg; Nachf. v. Steinway & Sons, 523 F.2d 1331, 1342 (2d Cir. 1975). Courts “must stand in the shoes of the ordinary purchaser, buying under the normally prevalent conditions of the market and giving the attention such purchasers usually give in buying that class of goods.” Luiaino’s, Inc. v. Stouffer Corp., 170 F.3d 827, 83 1 (8th Cir. 1999). So too must the Examining Attorney. While some business related services may not be particularly expensive it is also obvious that clients who seek out such services will exercise a high degree of care in choosing a business related service provider. It is reasonable to assume that clients will be familiar with the business related service providers they engage. No reasonable client would do business with a provider they do not know or trust. The degree of inquiry that clients are likely to make before deciding upon such a business related service provider is so thorough as virtually to preclude confusion as to the source of those services. The services provided by the respective parties in this case are not the subject of impulse buying. Thus, it is evident that the parties’ services are purchased only after careful consideration and investigation by their clients. True, the respective parties’ services broadly relate to business. However, to say that they are related as a consequence is to say that every letter is related because it came in an envelope or that every web site is related because it is accessible via the Internet. There is no per se rule that all services that touch upon business in some way must as a consequence be related to such a degree that confusion is likely. Business-to-consumer services are offered under the cited mark. Business-to-business services are offered under the proposed mark. According to Investopia, which is part of the Dotdash publishing family (www.investopedia.com), business-to-consumer (B2C) refers to the transactions conducted directly between a company and consumers who are the end-users of its products or services. The business-to-consumer business model differs significantly from the business-to-business (B2B) model, which refers to commerce between two or more businesses. Consequently, the respective parties’ services are directed to different audiences (individuals v. organizations) via different channels of trade (i.e. B2C v. B2B). Where target markets and channels of trade differ, confusion as to either source of origin or sponsorship is unlikely. The Examining Attorney is respectfully reminded that even assuming arguendo that the respective parties’ marks are confusingly similar, it does not follow that the respective parties’ services are so related that consumers would be likely to assume from the two marks that the respective parties’ services share the same source. As Applicant has more than amply demonstrated, confusion as to either source of origin or sponsorship between the proposed mark and the cited marks is unlikely given (i) the narrow scope of protection to which the respective parties’ marks are entitled, (ii) the sophistication of the respective parties’ clients (iii) the differences between the target markets and channels of trade of the respective parties’ services. Consequently, the cited mark and the proposed mark can coexist without confusion.
REMARKS Applicant has amended the application in a manner thought to comply with the Examining Attorney’s requirements. Consequently, it is respectfully requested that the application be promptly approved for publication. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Paul W. Kruse/ |
| SIGNATORY'S NAME | Paul W. Kruse |
| SIGNATORY'S POSITION | Attorney of record, TN bar member |
| SIGNATORY'S PHONE NUMBER | 615-238-6304 |
| DATE SIGNED | 07/18/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Jul 18 10:47:28 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20190718104728658059-883 61168-6202bdf90108de1d051 8090ce7a98727a773f2287e85 a434de4e139b8293c0bd53-N/ A-N/A-2019071810431951394 3 |
| 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 Examining Attorney has searched the Office’s database of registered and pending marks and has found a mark that would, in her view, bar registration under Trademark Act Section 2(d).
The proposed mark is:
NAVIGATE THE JOURNEY, Ser. No. 88361168, for “business education and training services, namely, developing customized in-company leadership and executive development programs, providing executive coaching services, and providing public and in-company keynote presentations to business leaders” in International Class 41.
The mark found by the Examining Attorney is:
THE NAVIGATED JOURNEY, Reg. No. 4747990, for “business advice and information relating to loans, finance and capital” in International Class 35.
The Examining Attorney is of the opinion that Applicant’s mark, when used on or in connection with the identified services, so resembles the mark in Reg. No. 4747990 as to be likely to cause confusion, or to cause mistake or deceive. Consequently, the Examining Attorney has refused registration under Section 2(d). However, the Examining Attorney’s refusal to register is respectfully traversed.
In assessing the likelihood of confusion, the courts have repeatedly said, “it is the duty of the examiner * * * to find, upon consideration of all the evidence, whether or not confusion appears likely.” In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563, 568 (CCPA 1973) (emphasis in original). In this case, Applicant’s use of NAVIGATE THE JOURNEY in connection with the services identified in the application is unlikely to cause any confusion.
Even when applied to similar goods or services, marks containing identical terms may create sufficiently different commercial impressions so that there is no likelihood of confusion. See, e.g., Lever Bros. Co. v. Barcolene Co., 174 USPQ 392 (CCPA 1972) (ALL for household cleaner held not likely to be confused with ALL CLEAR for household cleaner); Bell Laboratories, Inc. v. Colonial Products, Inc., 231 USPQ 569 (S.D. Fla. 1986) (FLIP and FINAL FLIP, both for rodenticide; denial of preliminary injunction). The Office and the courts have allowed a number of similar and identical marks to coexist in connection with various goods and services. See, e.g., Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ 2d 1460 (TTAB 1992) (EDS and EDSA as used in connection with computer software may coexist). Consequently, the mere fact that two marks share elements does not necessarily mean that they are confusingly similar. General Mills Inc. v. Kellogg Co., 3 USPQ2d 1442, 1445 (8th Cir. 1987).
The words NAVIGATE and JOURNEYare highly suggestive of the business related services in connection with which they are used insofar as the services assist clients with formulating and achieving strategic goals, i.e. “navigate a journey”. Suggestive wording is considered “weak” in a trademark sense and, as a consequence, entitled to a narrow scope of protection. Furthermore, where a party chooses a mark which is highly suggestive (as in this case), he will not enjoy the wide latitude of protection afforded the owner of a less suggestive mark. Thus, others may come closer to his mark than would be the case with a less suggestive mark without violating his rights. For example, CHAMPION has long been used as a trademark by unrelated parties for spark plugs and sportswear without likelihood of confusion. The respective parties’ services in this case are no less different, and thus unrelated, than spark plugs and sportswear. Since the scope of protection to which the cited mark and the proposed mark are each entitled is so narrow, the respective parties can use and register their marks on or in connection with their respective business centric but unrelated services at the same time without causing confusion as to source of origin or sponsorship.
Next, in order to find a likelihood of confusion, the services of two parties must be related in some manner, or the conditions surrounding their marketing must be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the services come from a common source. See In re Martins’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 233 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978). In this case, the respective parties’ services are “business education and training services, namely, developing customized in-company leadership and executive development programs, providing executive coaching services, and providing public and in-company keynote presentations to business leaders” in International Class 41 and “business advice and information relating to loans, finance and capital” in International Class 35. Although each of these business related services might in some sense of the words help a client “navigate a journey”, they are neither related nor marketed in such a way that the same class of clients could encounter them.
The target markets for the respective parties’ services are sophisticated individuals with specialized needs. “Sophisticated consumers may be expected to exercise greater care.” Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388, 1392 (Fed. Cir. 1992), quoting Pignons S.A. de Mecaniaue de Precision v. Polaroid Corp., 657 F.2d 482,489 (1st Cir. 1981). When goods or services are expensive and purchased after careful consideration there is always less likelihood of confusion. Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206 (1st Cir. 1983) (finding the sophistication of purchasers the most critical factor weighing against the plaintiff’s claim of likelihood of confusion). In trademark cases the kind of product or service, its cost and the conditions of purchase are important factors in determining whether the degree of care that consumers of such products will exercise is sufficient to avoid a likelihood of confusion. Grotrian, Helfferich, Sculz, Th. Steinweg; Nachf. v. Steinway & Sons, 523 F.2d 1331, 1342 (2d Cir. 1975). Courts “must stand in the shoes of the ordinary purchaser, buying under the normally prevalent conditions of the market and giving the attention such purchasers usually give in buying that class of goods.” Luiaino’s, Inc. v. Stouffer Corp., 170 F.3d 827, 83 1 (8th Cir. 1999). So too must the Examining Attorney.
While some business related services may not be particularly expensive it is also obvious that clients who seek out such services will exercise a high degree of care in choosing a business related service provider. It is reasonable to assume that clients will be familiar with the business related service providers they engage. No reasonable client would do business with a provider they do not know or trust. The degree of inquiry that clients are likely to make before deciding upon such a business related service provider is so thorough as virtually to preclude confusion as to the source of those services. The services provided by the respective parties in this case are not the subject of impulse buying. Thus, it is evident that the parties’ services are purchased only after careful consideration and investigation by their clients.
True, the respective parties’ services broadly relate to business. However, to say that they are related as a consequence is to say that every letter is related because it came in an envelope or that every web site is related because it is accessible via the Internet. There is no per se rule that all services that touch upon business in some way must as a consequence be related to such a degree that confusion is likely. Business-to-consumer services are offered under the cited mark. Business-to-business services are offered under the proposed mark. According to Investopia, which is part of the Dotdash publishing family (www.investopedia.com), business-to-consumer (B2C) refers to the transactions conducted directly between a company and consumers who are the end-users of its products or services. The business-to-consumer business model differs significantly from the business-to-business (B2B) model, which refers to commerce between two or more businesses. Consequently, the respective parties’ services are directed to different audiences (individuals v. organizations) via different channels of trade (i.e. B2C v. B2B). Where target markets and channels of trade differ, confusion as to either source of origin or sponsorship is unlikely. The Examining Attorney is respectfully reminded that even assuming arguendo that the respective parties’ marks are confusingly similar, it does not follow that the respective parties’ services are so related that consumers would be likely to assume from the two marks that the respective parties’ services share the same source.
As Applicant has more than amply demonstrated, confusion as to either source of origin or sponsorship between the proposed mark and the cited marks is unlikely given (i) the narrow scope of protection to which the respective parties’ marks are entitled, (ii) the sophistication of the respective parties’ clients (iii) the differences between the target markets and channels of trade of the respective parties’ services. Consequently, the cited mark and the proposed mark can coexist without confusion.
REMARKS
Applicant has amended the application in a manner thought to comply with the Examining Attorney’s requirements. Consequently, it is respectfully requested that the application be promptly approved for publication.