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. 88484868 EVEREST(Standard Characters, see http://uspto.report/TM/88484868/mark.png) has been amended as follows:

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

This Response is being filed in response to the Office Action dated September 19, 2019, wherein the application for the mark EVEREST for use in connection with metal garages and metal sheds has been initially rejected under Section 2(d) because of a likelihood of confusion with the mark EVEREST in Reg. No. 5105320 for use in connection with portable shelters, namely, portable shelters primarily made of metal having metal framework covered with canvas. Based on the remarks to follow, Applicant respectfully requests reconsideration of the application and withdrawal of the rejection made thereto.

First, Applicant has amended the goods to free standing, all metal enclosed garages and storage sheds. In this way, Applicant respectfully submits that the goods of Applicant and those of registrant are even further distinguished from each other than heretofor.

Based on the now further differences in the goods themselves, in combination with the widespread use of the EVEREST mark as discussed herein, Applicant respectfully submits that there is no likelihood of confusion between the source of Applicant’s EVEREST mark and the cited mark.

For example, Applicant concedes the fact that sophisticated or knowledgeable purchasers does not necessarily mean that they are immune to source confusion. However, it is also true that circumstances suggesting care in purchasing may tend to minimize the likelihood of confusion. More particularly, in connection with the DuPont factor considering the care and sophistication of the purchasers, the conditions under which and buyers to whom sales are made, e.g. “impulse” vs. careful, sophisticated purchasing, must be considered. For example, it is self-evident that there is always less likelihood of confusion where goods are expensive and purchased after careful consideration. Thus, in addition to the extrinsic nature of the actual goods as discussed below, just focusing on the identification of goods stated in the respective application and registration makes it clear that the very nature of Applicant’s all metal garages and sheds themselves indicate that they are quite expensive and intended for long-term use. For at least this reason, Applicant respectfully submits that purchasers will exercise appropriate care in their purchase, which supports a conclusion of no likelihood of confusion.

The extrinsic evidence also supports the foregoing. As clearly indicating on the internet, the cost of Applicant’s EVEREST branded goods start at about $2299.99 (see http://www.shelterlogic.com/shop/everest-garage ) and units of the registrant’s goods are listed on registrant’s website from $149 to $249.99 (http://www.zshadeusa.com/index.php?route=product/category&path=59 ). Clearly consumers of the foregoing goods would be both sophisticated and would exercise care, as clearly such goods are not of an impulse nature. Again, this evidence supports a conclusion of no likelihood of confusion.

Significantly, in combination with the distinctions between the goods themselves, the sophistication of the purchasing consumers, and the care to which consumers would give to the purchasing of the respective goods all as discussed above, Applicant further respectfully submits that the numerous 3^rd party other EVEREST marks further narrows the scope of any single EVEREST mark, and in fact has sensitized consumes in appreciating the differences between the respective goods with which the marks are used. For example, Applicant respectfully submits that there is already widespread use of the mark EVEREST in connection with goods similar to those described in the cited EVEREST Reg. No. 5105320. For example, found on the Principal Register are the following:

• Reg. No. 2635797 EVEREST inter alia, door hardware

• Reg. No. 4441423 EVEREST inter alia, commercial and industrial metal storage bins

• Reg. No. 4644017 EVEREST inter alia, commercial and industrial metal storage bins

• Reg. No. 4491671 EVEREST SOLAR SYSTEMS inter alia, building materials of metal

• Reg. No. 4491665 EVEREST SOLAR SYSTEMS inter alia, building materials of metal

• Reg. No. 4371141 EVEREST 29 inter alia, door hardware

• Reg. No. 1888501 EVEREST inter alia, patio doors

  Based on the foregoing, it is respectfully submitted that the above is strong evidence that the Office acknowledges that the EVEREST mark can be protected for a widespread range of interrelateable goods without creating a likelihood of confusion for consumers.

  In summary, based on the foregoing factors taken together, it is respectfully submitted that numerous marks incorporating the word EVEREST can and do co-exist within the field of items usable in the home or yard for storage or shelter without confusion.

  As a result of the above, it is respectfully submitted that no single EVEREST mark should be able to dominate the field of buildings, shelters or outdoor goods. For these reasons, it is respectfully submitted that Reg. No. 5105320 should not pose an obstacle to the registration of Applicant’s EVEREST mark for the amended goods herein. It is therefore respectfully requested that Applicant’s application be reconsidered in view of the foregoing and that the rejection of Applicant’s application be withdrawn.

  Respectfully submitted,

  Arthur Schaier, for Applicant

EVIDENCE
Evidence in the nature of materials cited in response has been attached.
Original PDF file:
evi_20710623766-20200319102706795623_._everest.pdf
Converted PDF file(s) ( 20 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: SOJAG INC., a corporation of Canada, having an address of
      4055 Place Java
      Brossard, Quebec, J4Y0C4
      Canada

Proposed: SOJAG INC., a corporation of Canada, having an address of
      4055 Place Java
      Brossard, Quebec, J4Y0C4
      Canada
      Email Address: CTSHtms@carmodylaw.com

The owner's/holder's current attorney information: arthur schaier. arthur schaier of CARMODY TORRANCE SANDAK & HENNESSEY LLP, is located at

      PO BOX 1950
      195 CHURCH STREET
      NEW HAVEN, Connecticut 06509
      United States
The docket/reference number is 27331-T135.
      The phone number is 203-575-2629.
      The fax number is 2037843199.
      The email address is trademarks@carmodylaw.com

The owner's/holder's proposed attorney information: arthur schaier. arthur schaier of CARMODY TORRANCE SANDAK & HENNESSEY LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      PO BOX 1950
      195 CHURCH STREET
      NEW HAVEN, Connecticut 06509
      United States
The docket/reference number is 27331-T135.
      The phone number is 203-575-2629.
      The fax number is 2037843199.
      The email address is trademarks@carmodylaw.com

arthur schaier 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.Correspondence Information (current):
      ARTHUR SCHAIER
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@carmodylaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 27331-T135.
Correspondence Information (proposed):
      arthur schaier
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@carmodylaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 27331-T135.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /arthur g. schaier/     Date: 03/19/2020
Signatory's Name: Arthur G. Schaier
Signatory's Position: Attorney of Record, CT Bar Member

Signatory's Phone Number: 2035752629

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:    ARTHUR SCHAIER
   CARMODY TORRANCE SANDAK & HENNESSEY LLP
   PO BOX 1950
   195 CHURCH STREET
   NEW HAVEN, Connecticut 06509
Mailing Address:    arthur schaier
   CARMODY TORRANCE SANDAK & HENNESSEY LLP
   PO BOX 1950
   195 CHURCH STREET
   NEW HAVEN, Connecticut 06509
        
Serial Number: 88484868
Internet Transmission Date: Thu Mar 19 15:15:28 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202003191515283
15587-88484868-7101a7d94c243e15b96892d19
2416fddd4c6525bb60b5a585ae5f3f1ce7a195-N
/A-N/A-20200319102706795623