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. 88657480 TRAVEL SCOPE(Standard Characters, see http://uspto.report/TM/88657480/mark.png) has been amended as follows:

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

REMARKS

 In the Office Action dated November 5, 2019, the Examining Attorney refused the registration as to Applicant’s goods under Section 2(d), 15 U.S.C. Sec. 1052(d) on the ground that there is purportedly a likelihood of confusion between Applicant’s TRAVEL SCOPE mark (“Applicant’s Mark”) and the mark in the following registration (the “Cited Registration”):

 

·        U.S. Registration No. 5,891,084

Mark:             TRAVELWORLD

Goods: IC 009:  Burglar alarms; Chargers for electric batteries; Circuit breakers; Covers for electric outlets; Electric cables and wires; Electric converters; Electric door bells; Electrical adapters; Electrical plugs and sockets; Electrophoretic displays; Eyeglasses; Gloves for protection against accidents; Life jackets; Plug adaptors; Power adapters; Power inverters; Protective films adapted for smartphones; Rechargeable electric batteries; Smoke detectors; Switches, electric; Telescopes; Time switches, automatic.

Record Owner: Hong Rui (“Registrant”)

Application Filing Date: April 22, 2019

             In addition, the Examining Attorney issued a merely descriptive rejection under Section 2(e)(1) on the ground that the mark is allegedly merely descriptive.   The Applicant has used its mark in commerce for over ten years.  Therefore, Applicant wishes to traverse this rejection and seeks registration on the Principal Register under Trademark Act Section 2(f), based on acquired distinctiveness.  The Applicant has amended the application to Section 2(f) in this response.

In light of the remarks set forth below, Applicant respectfully disagrees that its TRAVEL SCOPE mark creates a likelihood of confusion with the mark in the Cited Registration and urges the Examining Attorney to withdraw the 2(d) refusal and approve Applicant’s application for publication.  

 

THERE IS NO LIKELIHOOD OF CONFUSION BETWEEN APPLICANT'S MARK AND THE MARK IN THE CITED REGISTRATION

            A.        Likelihood Of Confusion Standard

            Likelihood of confusion is determined by considering a variety of factors, including the similarity of the marks and the “number and nature of similar marks in use on similar goods.”  T.M.E.P. § 1207.01; In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973).  The “determination that confusion is likely requires more than a theoretical possibility of confusion.”  Morgan Creek Prod. Inc. v. Foria Int’l Inc., 91 U.S.P.Q.2d 1142 (T.T.A.B. 2009).  Indeed, a finding of a likelihood of confusion requires a finding of “‘probable’ confusion – it is not sufficient if confusion is merely ‘possible.’”  2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:3 (4th ed. 2007).

  

            Applicant submits that in light of the dissimilarity between Applicant’s Mark and the mark in the Cited Registration in meaning, appearance, and sound, registration of Applicant’s TRAVELSCOPE  mark will not create a likelihood of confusion with the mark in the Cited Registration as set forth below.  

B.        Applicant’s Mark And The Mark In The Cited Registration Are Dissimilar In Meaning, Appearance, Sound, and Commercial Impression

When considering the similarity of marks in determining whether a likelihood of confusion exists, marks must be compared in their entireties rather than being broken into their constituent parts. See Estate of P.D. Beckwith, Inc. v. Comm. of Patents, 252 U.S. 538 (1920) (the commercial impression of a composite mark is derived from the mark as a whole, not its separate elements). A proper comparison of Applicant’s Mark to the Cited Registration indicates that the marks are completely different.

            As previously discussed, Applicant’s Mark is TRAVEL SCOPE, whereas the mark in the Cited Registration is TRAVELWORLD.  Applicant’s Mark is dissimilar in that it is two words while Registrant’s mark combines two words.  The word WORLD is different in look, sound, and meaning from the word SCOPE.   “World” is defined as “the earth, together with all its countries, peoples, and features.”  A “scope” is a “viewing instrument.”  Consumers would not find the meanings of the words WORLD and SCOPE to be similar in any way.   Rather, the words have completely different meanings and commercial impressions.  Additionally, this difference in words creates a distinct appearance for each of the marks, as well as a distinct sound for each of the marks when spoken aloud.  

Due to the differences in sound, meaning, and appearance of Applicant’s Mark as compared to the mark in the Cited Registration, there is no likelihood of confusion.

            C.        Numerous Third Party Registrations Use WORLD and SCOPE on Similar or Identical Goods Without Confusion   

            Generally, the existence of third-party registrations does not justify the registration of another mark that is so similar to a previously registered mark as to create a likelihood of confusion, or to cause mistake, or to deceive. However, third-party registrations may be relevant to show that the mark or a portion of the mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services. See, e.g., AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 1406, 177 U.S.P.Q. (BNA) 268, 269-70 (C.C.P.A. 1973); Plus Products v. Star-Kist Foods, Inc., 220 U.S.P.Q. (BNA) 541, 544, 1983 WL 51884 (TTAB 1983).   

            The words SCOPE and WORLD are used commonly with an identical first word and both marks are consistently registered in the same class, presumably because consumer confusion was not likely.  There are several registered or pending marks using the both –SCOPE and –WORLD in connection with the same or similar goods, for example:

·      HALO WORLD (Reg. No. 5,301,014) and HALOSCOPE (Reg. No. 5,396,131) both registered in IC 003 in connection with cosmetics and related goods;

·      FLEXIWORLD (Reg. No. 3,139,948) and FLEXISCOPE (Reg. No. 3,290,296) both registered in IC 009;

·      TECH-WORLD (Reg. No. 2,452,803) and TECH-SCOPE (Reg. No. 4,151,440) both registered in IC 009; and

·      MY WORLD (Reg. No. 2,978,278) and MYSCOPE (Reg. No. 2,907,379) both registered in IC 009.

To cite TRAVELWORLD against Applicant’s TRAVEL SCOPE in light of so many similar marks registered in the same class using -WORLD and –SCOPE is not appropriate in light of the evidence on the registry.  Consumers are clearly distinguishing these marks from one another and this evidence is relevant to public’s perception of these words. 

 

            D.        Applicant’s Goods Are Highly Dissimilar to the Goods in the Cited Registration

            To support a conclusion that two marks are confusingly similar, the goods or services specified in the Applicant’s application must be related to the goods listed in the Cited Registration, such that consumers would be confused about the source of origin.  See T.M.E.P. §1207.01(a)(i).  Where, as here, the services are not related or marketed in such a way that they would be encountered by the same people in situations that would create the incorrect assumption that they originate from the same source, then there is no likelihood of confusion, even if the marks are identical.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 U.S.P.Q. 2d 1713 (Fed. Cir. 2012).  Here, Applicant's telescopes are so unrelated to the Registrant's mishmash of goods that there is no likelihood of confusion because no consumers would believe they originate from the same source. 

Past decisions of the Board and the courts have concluded that it is contrary to the basic tenets of trademark law to base a likelihood of confusion decision on a “per se” rule that goods in the same general field and bearing the same mark are so similar or related that confusion as to origin is likely.  See In re The Shoe Works, Inc., 6 U.S.P.Q.2d 1890, 1891 (T.T.A.B. 1990) (“Shoe”) (no “per se” rule that the use of the same mark on different items of wearing apparel is likely to cause confusion); and Interstate Brands v. Celestial Seasonings, 576 F.2d 926, 928 (C.C.P.A. 1978) (no “per se” rule for foods).  Thus, precedent clearly establishes that there is no “per se” rule that a likelihood of confusion exists simply because the goods in question involve the same broad type of goods. To support a likelihood of confusion, there must be some similarity between the goods beyond the fact that both goods can be classified into the same broad category or are part of the same industry.  In re Quadram Corp., 228 U.S.P.Q. 863 (T.T.A.B. 1985).

            In In re Fesco Inc., 219 U.S.P.Q. 437, 438 (T.T.A.B. 1983) (“Fesco”), the Board did not hesitate to find an absence of likelihood of confusion, even in the face of identical marks applied to goods used in a common industry, where such goods are clearly different from each other and there is insufficient evidence to establish a reasonable basis for assuming that the respective products and/or services, as identified by their marks, would be encountered by the same purchasers or parties. 

            In Dwinell-Wright Co. v. White House Milk Co., the mark WHITE HOUSE for tea and coffee was held not related to WHITE HOUSE for milk.  132 F.2d 822, 56 U.S.P.Q. 120 (2d Cir. 1943).  These are both marks that are consumed and are complimentary in that milk is often used with tea and/or coffee.  In the instant case, the services are much less related than tea/coffee and milk. Similarly, BRAVO’S for crackers and BRAVOS for tortilla chips were not confusingly similar even though technically both are consumable, crunchy, snack foods.  Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 209 U.S.P.Q. 969 (2d Cir. 1981). 

            Applicant is a well-known source for telescopes and optics equipment.  It has been selling high end telescopes since the 1960s.    See Exhibit A.  Celestron telescopes have been featured on the popular television show The Big Bang Theory, peered through by President Obama at the White House, and been aboard an international space station.  Meanwhile, Registrant sells an odd variety of unrelated goods in IC 009 from burglar alarms to smoke detectors to eyeglasses.  The specimen provided by the Registrant during the prosecution of the mark is a printed label placed on the product packaging of an all-in-one adaptor.  See Exhibit B.  In reality, it is unlikely that a consumer would believe that Celestron’s Travel Scope originates from the same source as Mr. Hong Rui’s adaptors, smoke detectors, and apparently telescopes, line of dissimilar goods. 

            Recently, the mark FORMKRET (Serial No. 79234872) was rejected for likelihood of confusion in light of the similar mark FORMCRETE (Registration No. 2481225) both in connection with concrete building materials.  Both marks start with the word FORM- and have a more similar ending KRET v. CRETE.  And yet, here, the mark FORMKRET was recently published.  Similarly, in the instant case, while both marks merely share the word TRAVEL, the second portions of the marks are much more dissimilar than KRET and CRETE.  And, consumers are highly unlikely to confuse the source of these marks. 

Ultimately, when a proper comparison is made between Applicant’s goods and the goods in the Cited Registration, it is apparent that the distinct nature of the goods is sufficient to preclude a likelihood of confusion.  In other words, because the goods “in question are not related or 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, even if the marks are identical, confusion is not likely.”  T.M.E.P. § 1207.01(a)(i).  In this case, the marks are not identical and the goods would not cause confusion as to source.  No consumer would believe that Celestron’s TRAVEL SCOPE and Registrant’s goods originate from the same source.  As such, the likelihood of confusion objection should be removed.

 CONCLUSION

           Applicant submits that given the differences between Applicant’s Mark and the mark in the Cited Registration in meaning, commercial impression, appearance and sound, Applicant’s mark will not cause a likelihood of confusion with the Cited Registration.  Applicant submits that it has responded to all outstanding issues raised in the Office Action and respectfully requests that the Examining Attorney approve Applicant’s mark for publication.  If the Examining Attorney has any questions, the Examining Attorney is encouraged to contact the undersigned. 

EVIDENCE
Evidence in the nature of Exhibit A includes screenshots from Applicant's website. Exhibit B includes Registrant's specimen from the prosecution of its application for TRAVELWORLD. has been attached.
JPG file(s):
Evidence-1
Original PDF file:
evi_172117765-20191201190017801511_._Exhibit_A_Screenshots_Historic_Milestones.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Christina S. Loza/      Date: 12/01/2019
Signatory's Name: Christina S. Loza
Signatory's Position: Attorney of Record, CA Bar Member
Signatory's Phone Number: 949-705-6777


Response Signature
Signature: /Christina S. Loza/     Date: 12/01/2019
Signatory's Name: Christina S. Loza
Signatory's Position: Attorney of Record, CA bar member

Signatory's Phone Number: 949-705-6777

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.

        
Serial Number: 88657480
Internet Transmission Date: Sun Dec 01 19:15:11 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.X.XX-20191201191511347
758-88657480-7007844bae15e45ee4ace408a2d
2fdfc57f201427859acabe3b204a45a6155f7d-N
/A-N/A-20191201190017801511