| 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 11/30/2023) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88839438 |
| LAW OFFICE ASSIGNED | LAW OFFICE 127 |
| MARK SECTION | |
| MARK | mark |
| LITERAL ELEMENT | ARC |
| 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) | |
|
ARC “Likelihood of Confusion” Applicant submits there is no likelihood of confusion with Registration no. 5261219. The issue is not whether the respective marks themselves, or the goods or services offered under the marks, are likely to be confused but, rather, whether there is a likelihood of confusion as to the source or sponsorship of the goods or services because of the marks used thereon. See, e.g., Paula Payne Prods. Co. v. Johnson’s Publ’g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (C.C.P.A. 1973) ("[T]he question is not whether people will confuse the marks, but rather whether the marks will confuse people into believing that the goods they identify emanate from the same source."); In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) However, Applicant notes that the court in WE Media, Inc. v. General Elec. Co, 218 F. Supp. 2d 463, judgment aff'd, 94 Fed. Appx. 29 (2d Cir. 2004) states that “some confusion is always possible: but there must be some threshold quantum that crosses from mere possibility into a probability.” “Likelihood” is synonymous with “probable”, meaning that it is not sufficient if confusion is merely “possible.” (see 4 McCarthy on Trademarks and Unfair Competition § 23:3 (5th ed.)). Significant differences, such as in this case, in the nature of the goods weigh heavily against a finding of likelihood of confusion. (Mini Melts, Inc. v. Reckitt Benckiser, Inc., 118 U.S.P.Q.2d 1464, 1472) Applicant’s tile goods are significantly different than Registrant’s “flexible pipes, tubes, and hoses not of metal.” See Registrant’s attached specimen accompanying its registration showing an oilfield fracturing hose. The fact that one may be able to buy both tile and “pipes, tubes, and hoses” at Home Depot, Lowe’s, or Menard’s does not mean that people are going to be confused as to their sources. To believe that a consumer would be confused as to sources of two totally different products using the word ARC because they are sold at the same store means it is probable that, if the word ARC appears on a light bulb, a wrench, a piece of lumber, a battery, a screwdriver, a yellow jacket trap, a Christmas decoration, a door knob, or a light switch sold at such stores, the consumer would be confused as to the source of such products and Applicant’s tile. It is not even possible, yet alone probable, that a consumer would be so confused. There is simply no way the consumer would think that a floor or wall tile and a flexible pipe, tube, or hose emanate from the same source. It is therefore submitted that there is no likelihood of confusion. “Merely Descriptive” Applicant submits that the subject mark is not merely descriptive. As set forth in the Office Action, what consumers would understand when they see the goods is the issue. To understand this, one needs to think a little bit out-of-the-box and see what the consumer sees. As set forth in both the Applicant’s original and substitute specimens, where the subject tiles are placed together like they are displayed and will be used, the tiles do not look like an arc. Rather, they look like a bird or a mushroom or a flower or a face or whatever other interpretation one’s mind might perceive. Consequently, when one actually views the tiles as the consumer sees them, the mark is not merely descriptive. Alternatively, should the Trademark Examining Attorney not agree, it is requested that the application be amended to seek registration on the Supplemental Register. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_50231992-202012101555 51176743_._Contitech_USA_ ARC_specimen.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT18\IMAGEOUT 18\888\394\88839438\xml4\ ROA0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | Specimen "Contitech USA, Inc." submitted in its trademark application. |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 019 |
| DESCRIPTION | |
| Non-metal building materials, namely, tile made of stone, cement, brick and terracotta | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 08/24/2015 |
| FIRST USE IN COMMERCE DATE | At least as early as 08/24/2015 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 019 |
| DESCRIPTION | |
| Non-metal building materials, namely, tile made of stone, cement, brick and terracotta | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 08/24/2015 |
| FIRST USE IN COMMERCE DATE | At least as early as 08/24/2015 |
| STATEMENT TYPE | "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. |
| SPECIMEN FILE NAME(S) | |
| ORIGINAL PDF FILE | SPU0-50231992-20201210155 551176743_._CLE_Website_S creenshot_-_ARC.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT18\IMAGEOUT 18\888\394\88839438\xml4\ ROA0003.JPG |
| SPECIMEN DESCRIPTION | Cle Tile Website Screenshot of ARC tile including the URL and date accessed/printed. |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | As per the response option in the Nonfinal Office Action dated June 11, 2020, Applicant hereby submits a substitute specimen including the URL and date accessed/printed on it, that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the goods identified in the application. Also submitted is the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: "The substitute specimen was in use in commerce at least as early as the filing date of the application." |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | RUSSELL F. ROWEN |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | rrowen@twsglaw.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | alex@twsglaw.com; rdalvi@twsglaw.com |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Russell F. Rowen |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | rrowen@twsglaw.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | alex@twsglaw.com |
| SIGNATURE SECTION | |
| ORIGINAL PDF FILE | HS_50231992-155551176_._T M-Deborah_Osburn_declarat ions_regarding_specimens- ARC.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT18\IMAGEOUT 18\888\394\88839438\xml4\ ROA0004.JPG |
| SIGNATORY'S NAME | Deborah Osburn |
| SIGNATORY'S POSITION | President |
| SIGNATORY'S PHONE NUMBER | (415) 887-9011 |
| RESPONSE SIGNATURE | /Russell F. Rowen/ |
| SIGNATORY'S NAME | Russell F. Rowen |
| SIGNATORY'S POSITION | Attorney of record |
| SIGNATORY'S PHONE NUMBER | (415) 448-5000 |
| DATE SIGNED | 12/10/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Dec 10 16:48:50 ET 2020 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.X-202 01210164850388708-8883943 8-750c5279af0b31cee51d98f 4716bd548e1e3b1a73562851e 6e55429f3477bacfe-N/A-N/A -20201210155551176743 |
| 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 11/30/2023) |
ARC
“Likelihood of Confusion”
Applicant submits there is no likelihood of confusion with Registration no. 5261219.
The issue is not whether the respective marks themselves, or the goods or services offered under the marks, are likely to be confused but, rather, whether there is a likelihood of confusion as to the source or sponsorship of the goods or services because of the marks used thereon. See, e.g., Paula Payne Prods. Co. v. Johnson’s Publ’g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (C.C.P.A. 1973) ("[T]he question is not whether people will confuse the marks, but rather whether the marks will confuse people into believing that the goods they identify emanate from the same source."); In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003)
However, Applicant notes that the court in WE Media, Inc. v. General Elec. Co, 218 F. Supp. 2d 463, judgment aff'd, 94 Fed. Appx. 29 (2d Cir. 2004) states that “some confusion is always possible: but there must be some threshold quantum that crosses from mere possibility into a probability.” “Likelihood” is synonymous with “probable”, meaning that it is not sufficient if confusion is merely “possible.” (see 4 McCarthy on Trademarks and Unfair Competition § 23:3 (5th ed.)).
Significant differences, such as in this case, in the nature of the goods weigh heavily against a finding of likelihood of confusion. (Mini Melts, Inc. v. Reckitt Benckiser, Inc., 118 U.S.P.Q.2d 1464, 1472)
Applicant’s tile goods are significantly different than Registrant’s “flexible pipes, tubes, and hoses not of metal.” See Registrant’s attached specimen accompanying its registration showing an oilfield fracturing hose.
The fact that one may be able to buy both tile and “pipes, tubes, and hoses” at Home Depot, Lowe’s, or Menard’s does not mean that people are going to be confused as to their sources. To believe that a consumer would be confused as to sources of two totally different products using the word ARC because they are sold at the same store means it is probable that, if the word ARC appears on a light bulb, a wrench, a piece of lumber, a battery, a screwdriver, a yellow jacket trap, a Christmas decoration, a door knob, or a light switch sold at such stores, the consumer would be confused as to the source of such products and Applicant’s tile.
It is not even possible, yet alone probable, that a consumer would be so confused. There is simply no way the consumer would think that a floor or wall tile and a flexible pipe, tube, or hose emanate from the same source.
It is therefore submitted that there is no likelihood of confusion.
“Merely Descriptive”
Applicant submits that the subject mark is not merely descriptive.
As set forth in the Office Action, what consumers would understand when they see the goods is the issue. To understand this, one needs to think a little bit out-of-the-box and see what the consumer sees. As set forth in both the Applicant’s original and substitute specimens, where the subject tiles are placed together like they are displayed and will be used, the tiles do not look like an arc. Rather, they look like a bird or a mushroom or a flower or a face or whatever other interpretation one’s mind might perceive.
Consequently, when one actually views the tiles as the consumer sees them, the mark is not merely descriptive.
Alternatively, should the Trademark Examining Attorney not agree, it is requested that the application be amended to seek registration on the Supplemental Register.
