PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK FILE NAME
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`ARGUMENT(S)
`
`The table below presents the data as entered.
`
`Entered
`
`86323210
`
`LAW OFFICE 101
`
`http://tsdr.uspto.gov/img/86323210/large
`
`EMCOR
`
`NO
`
`NO
`
`(cid:160)(cid:160)(cid:160)(cid:160) This is in response to the Examining Attorney's Office Action dated October 3, 2014. In addition to the arguments set forth below regarding
`the Section 2(d) refusal, Applicant has amended the identification of services.
`
`Section 2(d) Refusal
`(cid:160)(cid:160)(cid:160)(cid:160) For the reasons stated below, Applicant respectfully contends that Application No. 86/323,210 for EMCOR & Diamond Design (“EMCOR
`& DESIGN MARK”) is not likely to cause confusion, in part with regard to “planning, designing and consulting in the field of construction
`services” with the reference cited by the Examining Attorney, and is registerable over the following citation:
`Registration No. 3,655,886 for the mark DESIGN, owned by ONEOK, Inc., for, inter alia, construction services, namely, constructing
`structures and facilities for use in the natural gas, transportation, processing, storage, distribution, marketing and trading industries
`(“ONEOK MARK”).
`
`In reaching the finding of likelihood of confusion, the Trademark Examining Attorney compared the marks and the services. Based on the
`
`reasons set forth below, the services and the marks at issue are different. As a result, the Section 2(d) refusal should be withdrawn.
`
`Services are Different
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) The Examining Attorney stated that “the services are legally identical as both applicant and registrant provide construction services”.
`
`However, under TMEP §1207.01(a)(iii), “[t]he nature and scope of a party’s goods or services must be determined on the basis of the goods
`or services recited in the application or registration.”
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) Arguing, innuendo, that the ONEOK MARK is used in connection with construction services, the fact that ONEOK and Applicant are
`
`arguably in the field of construction, does not of itself provide a basis for regarding them as related. (cid:160) See Richard L. Kirkpatrick, Practicing
`Law Institute, Likelihood of Confusion in Trademark Law, §5:5 (2008); see also McGraw-Hill, Inc. v. Comstock Partners, Inc., 743 F. Supp.
`1029, 1034, 17 U.S.P.Q.2d 1599, 1602 (S.D.N.Y. 1990) (discussing how a broad similar field can have disparate products; “while [both
`parties] furnish products related to the broad field of finance, [they] are as completely unrelated as night and day”). (cid:160) However, this is not even
`the case as the ONEOK MARK is for constructing structures and facilities of a particular type.
`(cid:160)(cid:160)(cid:160)(cid:160) The Board agreed with this proposition in
`In Re Geomet, Inc., 2004 WL 2750200 (Trademark Trial and Appeal Board, November 10,
`2004). Both the cited registration and pending application contained the term "GEOMET." The applicant’s mark was for public unity services,
`and the cited registrant was for energy and environmental related services. The Board stated “simply because a term may be found that may
`generically describe both parties' goods or services is not a sufficient basis for finding goods or services to be related.” [internal citations
`omitted]. Id. at *2. (cid:160) This argument applies to the ONEOK MARK.(cid:160) Such mark should not be a bar to the EMCOR & DESIGN MARK solely
`because the marks are arguably in the same general generic field. Thus, Applicant's mark is registerable over this citation.(cid:160) The Trademark
`Attorney readily dismisses the differences between the services.(cid:160) Registrant’s services are limited to natural gas. (cid:160) The revised recitation of
`Applicant’s services reads, in pertinent part, “construction planning; construction consultation” which clearly does not include natural gas.
`
`(cid:160)
`

`

`Use in Commerce
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) Applicant has used the EMCOR & DESIGN MARK in connection with its services since at least as early as March 31, 2002. There has
`
`been no actual confusion during the almost more than twelve years of coexistence with the ONEOK MARK.(cid:160) This long term of lack of actual
`confusion is relevant evidence against a finding of a likelihood of confusion. See 4 J. Thomas McCarthy, McCarthy on Trademarks and
`Unfair Competition, §23:18 (4th Ed. 2008).
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) More specifically, the registration for the ONEOK MARK lists a date of first use of December 9, 1980, while Applicant’s date of first use
`
`for the EMCOR & DESIGN MARK is March 31, 2002.(cid:160) (cid:160)(cid:160) Thus, with twelve years on concurrent use, there should have been confusion
`between the parties, if it was likely, and there has been none.(cid:160) Thus, there is no likelihood of confusion.
`
`Market and Consumers
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) Applicant’s consumers are a highly sophisticated niche of purchasers; namely, those that require specific services related to construction
`
`planning, and construction consulting.(cid:160) Further, these services are quite expensive, and only purchased after careful consideration, and
`possibly, the consideration of alternate bids for the project.(cid:160) Accordingly, the “reasonably prudent person” standard is elevated to the standard
`of the “discriminating purchaser.” (cid:160) A purchaser will only buy such services after careful consideration.(cid:160) Accordingly, confusion is less likely
`than where the goods or services are cheap and bought casually.(cid:160) See 4 McCarthy § 23:96, at 23-189.
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) Similarly, Registrant’s services are services which are offered to a highly sophisticated niche of purchasers relating to natural gas.
`
`(cid:160) See In
`re Geomet, *5. Thus, the consumers in connection with the ONEOK MARK is not the general public. (cid:160) In fact, the general public would not
`obtain either Applicant’s or Registrant’s services in connection with the marks at issue. The Examining Attorney has not shown that
`Applicant’s services would be provided to the general public; and in fact, they would not be.
`(cid:160)(cid:160)(cid:160)(cid:160) Similarly, in Geomet, the cited registrant, whose services included energy and environmental services, provided its services to “utilities,
`government agencies and energy industry clients.” Id. at *5.(cid:160) The Board in Geomet found that “to the extent there would be any overlap in the
`classes of customers for applicant's and the registrant’s services, the common customers would be highly sophisticated and would not assume
`that such services would emanate from a single source.” Id. at *5. Accordingly, the Board found that there was no likelihood of confusion,
`based, in part, on the highly sophisticated customers of the cited registrant’s services.
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) In the matter at hand, the consumers at issue are the same as in the Geomet case. Based upon Applicant's highly sophisticated services, as
`
`well as the fact that the consumers in connection with the ONEOK MARK would be engaged in constructing structures and facilities for use in
`natural gas, any possible likelihood of confusion is eliminated.
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) Applicant is also the owner of the following trademark registrations for marks which include EMCOR:
`
`Registration No. 2,575,099 for the mark EMCOR SERVICES for facilities management services in Class 35; managing, contracting,
`providing mechanical and electrical construction services; and maintenance services to public, private, institutional and commercial
`buildings in Class 37;
`
`(cid:160) Registration No. 2,562,923 for the mark EMCOR & Design for facilities management services in Class 35 and managing, contracting,
`providing mechanical and electrical and construction services; and maintenance services to public, private, institutional and commercial
`buildings in Class 37.
`
`Based thereon, Applicant has clearly established its rights in the EMCOR mark in related fields.(cid:160) The expansion of its rights to the services set
`forth in the Application is clearly within Applicant’s natural zone of expansion, and accordingly, weight should be provided to these prior
`registrations.(cid:160) As a consequent, Applicant’s mark should be registerable over registrant.
`
`Existence of Diamond Designs in the Field
`(cid:160)(cid:160)(cid:160)(cid:160) While the existence of third party marks cannot, per se, justify the registration of another mark, third party marks are of use to the
`Examining Attorney if they demonstrate that because there is a plethora of similar marks in a field, the mark is relatively weak and entitled to
`only a narrow scope of protection.(cid:160) Further, customers "have been educated to distinguish between different [such] marks on the basis of
`minute distinctions." 2 McCarthy §11:88, quoting Standard Brands, Inc. v. RJR Foods, Inc., 192 U.S.P.Q. 383 (T.T.A.B. 1976).
`As evidenced by the marks cited by the Examining Attorney, a Diamond Design is a weak mark when applied to the field of energy related
`services. Applicant submits that due to the number of marks which include a Diamond Design no one entity can claim exclusive rights in a
`mark which includes a diamond design.(cid:160) A few examples are as follows:
`Registration No. 2,580,021 for the mark DESIGN, owned by PECO Energy Company (“PECO”), for public utility services in Class 39;
`
`Registration No. 2,580,023 for the mark DESIGN, owned by PECO Energy Company, for public utility services in Class 39
`(Registration Nos. 2,580,021 and 2,580,023 are collectively referred to as the “PECO DESIGN MARKS”); and
`
`(cid:160)
`

`

`Registration No. 3,044,430 for the mark TEXAS GAS SERVICES & Design, owned by ONEOK, Inc. (“ONEOK”), for public utility
`services in the nature of natural gas distribution in Class 39 (“ONEOK WORD & DESIGN MARK”).
`
`Further, because the PECO DESIGN MARKS and the ONEOK MARKS are for the exact same services, it is clear that the relevant
`
`consuming public has been able to differentiate between the marks based upon the differences between the Diamond Designs.
`
`(cid:160)I
`
`n fact, Applicant itself is the owner of registrations for a Diamond Design in the relevant field:
`
`(cid:160)R
`
`egistration No. 2,563,476 for DESIGN for facilities management services in Class 35 and managing, contracting and providing
`electrical and mechanical construction services; maintenance services to private, public and commercial building in Class 37; and
`
`Registration No. 2,562,923 for the mark EMCOR & Design for facilities management services in Class 35 and services and managing,
`contracting, providing mechanical and electrical and construction services; and maintenance services to public, private, institutional in
`Class 37.
`
`Registration No. 3, 915,427 for DESIGN, inter alia, maintenance and construction for others of energy systems and energy producing
`machinery, namely, engine generators, turbines, windmills and generators and the facilities and infrastructures associated therewith
`excluding systems and machinery for procurement, sale or transmission of natural gas, natural gas liquids, petroleum, and other similar
`fuels; construction, installation and maintenance for others of fire protection and life safety systems, namely, water and foam sprinklers
`and smoke detectors; consulting services in the field of installation and maintenance of emergency power systems; consulting services
`in the field of installation and maintenance of access and security systems; consulting services in the field of installation and
`maintenance of fire protection systems in Class 37.(cid:160)
`
`It is apparent that the public has come to appreciate the differences in the marks and that such marks can co-exist. Consequently,
`Applicant submits that the differences in the EMCOR & DESIGN MARK creates a mark sufficiently distinctive and differentiated from
`the cited reference.(cid:160) For all of foregoing reasons, Applicant's mark is registerable over the ONEOK MARK.
`
`The ONEOK MARK and the EMCOR & DESIGN MARK are Different(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) There is no likelihood of confusion between the ONEOK MARK and the EMCOR & DESIGN MARK, as,
`
`inter alia, the marks are
`different.(cid:160) First, composite marks are compared by looking at them as a whole, rather than breaking the marks into their component parts for
`comparison.(cid:160) Marks must be compared in their entireties, and not solely with relation to the Diamond Design portion of the marks.(cid:160) See 4
`McCarthy, §23:41.(cid:160) “It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof,
`that is important.” Id.(cid:160) Here, when invoking the “sound, sight and meaning” trilogy, because the ONEOK MARK does not have a word
`portion, the marks sound different when spoken, clearly look different, and have completely different meanings.(cid:160) Overall, they undoubtedly
`make different impressions, as the EMCOR & DESIGN MARK is the entire mark, including “EMCOR” with the Diamond Design, a minor
`element, as compared to the cited ONEOK MARK.(cid:160) Further, as discussed above, the Diamond Design is clearly a weak element and is
`distinguishable.(cid:160) Thus, the marks are not similar.
`(cid:160)(cid:160)(cid:160)(cid:160) In addition, it is not a violation of the anti-dissection rule to give greater weight to the dominant parts of a composite mark in determining
`the question of likelihood of confusion.(cid:160) 4 McCarthy § 23:42; Giant Foods, Inc. v. Nation’s Foodservice, Inc ., 710 F.2d 1565 (Fed. Cir.
`1983).(cid:160) When comparing composite marks involving both designs and words, the dominant feature is usually controlling in determining
`likelihood of confusion.(cid:160) While there is no general rule as to whether words or designs will dominate in composite marks, the more dominant
`features will, of course, weigh heavier in the overall impression of a mark.(cid:160) Here, it is clear that the word portion of the EMCOR & DESIGN
`MARK is dominant, as the Diamond Design is mostly a decorative element as a part of the mark.(cid:160) Further, it is a weak element, due to the
`number of Diamond Designs in the field and therefore, there can be no likelihood of confusion.
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) Likewise, it is inappropriate to dissect the mark into two parts for purpose of determining whether each part of the mark conflicts with
`
`other marks.(cid:160) Rather, when considering the totality of the marks, there is no likelihood of confusion with any of the cited marks.
`
`Conclusion
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) A finding of a likelihood of confusion depends upon whether an “appreciable amount” of the “purchasing public would mistakenly assume
`
`that the applicant's goods or services originate with, are sponsored by, or are in some way associated with the goods [or services] sold under a
`cited registration or trademark.” See 4 McCarthy § 23:2, at 23-9; § 23:78, at 23-168.1 - 23-168.2, citing FBI v. Societe, 172 U.S.P.Q. 310
`(T.T.A.B. 1971). Here, the services, marks, and consumers are different. As such, an appreciable amount of the purchasing public will not, and
`cannot, be confused as to the origin, sponsorship or association of Applicant’s services and therefore, the Section 2(d) refusal to register
`should be withdrawn.
`
`GOODS AND/OR SERVICES SECTION (035)(current)
`
`INTERNATIONAL CLASS
`
`035
`
`DESCRIPTION
`
`FILING BASIS
`
`Vendor management services
`
`Section 1(a)
`
`

`

`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE IN COMMERCE DATE
`
`At least as early as 03/31/2000
`
`At least as early as 03/31/2000
`
`GOODS AND/OR SERVICES SECTION (035)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`035
`
`Vendor management services; Vendor management services for commercial, industrial, government and non-profit facilities
`
`FINAL(cid:160)DESCRIPTION
`
`Vendor management services for commercial, industrial, government and non-profit facilities
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 03/31/2000
`
`At least as early as 03/31/2000
`
`GOODS AND/OR SERVICES SECTION (037)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`037
`
`Call center services; snow removal services; janitorial services, namely, cleaning of business premises and maintenance and/or repair of
`business premises; planning, designing and consulting in the field of construction services
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 03/31/2002
`
`At least as early as 03/31/2002
`
`GOODS AND/OR SERVICES SECTION (037)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`037
`
`Call center services; Call center services in the nature of responding to calls for assistance concerning the repair and maintenance for
`commercial, industrial, government and non-profit facilities, of building interior and exterior surfaces, HVAC systems, plumbing systems,
`electrical systems, fire and safety alarm systems, building locks, roofs, and windows; snow removal services; janitorial services, namely,
`cleaning of business premises and maintenance and/or repair of business premises; planning, designing and consulting in the field of
`construction services; construction planning; construction consultation
`
`FINAL(cid:160)DESCRIPTION
`
`Call center services in the nature of responding to calls for assistance concerning the repair and maintenance for commercial, industrial,
`government and non-profit facilities, of building interior and exterior surfaces, HVAC systems, plumbing systems, electrical systems, fire and
`safety alarm systems, building locks, roofs, and windows; snow removal services; janitorial services, namely, cleaning of business premises
`and maintenance and/or repair of business premises; construction planning; construction consultation
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 03/31/2002
`
`At least as early as 03/31/2002
`
`GOODS AND/OR SERVICES SECTION (044)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`044
`
`Landscaping design, installation and maintenance services for others
`
`FILING BASIS
`
`Section 1(a)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE ANYWHERE DATE
`
`At least as early as 03/31/2002
`
`

`

`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE IN COMMERCE DATE
`
`At least as early as 03/31/2002
`
`GOODS AND/OR SERVICES SECTION (044)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`044
`
`Landscaping design, installation and maintenance services for others; Landscaping design services for others; horticultural services for others,
`namely, planting and maintenance of lawn, shrubs, and trees for others
`
`FINAL(cid:160)DESCRIPTION
`
`Landscaping design services for others; horticultural services for others, namely, planting and maintenance of lawn, shrubs, and trees for others
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE IN COMMERCE DATE
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Section 1(a)
`
`At least as early as 03/31/2002
`
`At least as early as 03/31/2002
`
`/laura goldbard george/
`
`Laura Goldbard George
`
`Attorney of record, New York bar member
`
`212-806-6675
`
`03/18/2015
`
`YES
`
`Wed Mar 18 17:12:45 EDT 2015
`
`USPTO/ROA-XX.XXX.XXX.X-20
`150318171245157054-863232
`10-5303e56ca7158645be56af
`faad846b7079503785148d5fb
`09df8ce6370f28a40ed-N/A-N
`/A-20150318171146587675
`
`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 86323210(cid:160)EMCOR (Stylized and/or with Design, see http://tsdr.uspto.gov/img/86323210/large) has been amended as
`follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`(cid:160)(cid:160)(cid:160)(cid:160) This is in response to the Examining Attorney's Office Action dated October 3, 2014. In addition to the arguments set forth below regarding
`the Section 2(d) refusal, Applicant has amended the identification of services.
`
`Section 2(d) Refusal
`(cid:160)(cid:160)(cid:160)(cid:160) For the reasons stated below, Applicant respectfully contends that Application No. 86/323,210 for EMCOR & Diamond Design (“EMCOR &
`DESIGN MARK”) is not likely to cause confusion, in part with regard to “planning, designing and consulting in the field of construction
`services” with the reference cited by the Examining Attorney, and is registerable over the following citation:
`
`

`

`Registration No. 3,655,886 for the mark DESIGN, owned by ONEOK, Inc., for, inter alia, construction services, namely, constructing
`structures and facilities for use in the natural gas, transportation, processing, storage, distribution, marketing and trading industries
`(“ONEOK MARK”).
`
`In reaching the finding of likelihood of confusion, the Trademark Examining Attorney compared the marks and the services. Based on the
`
`reasons set forth below, the services and the marks at issue are different. As a result, the Section 2(d) refusal should be withdrawn.
`
`Services are Different
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) The Examining Attorney stated that “the services are legally identical as both applicant and registrant provide construction services”.
`
`However, under TMEP §1207.01(a)(iii), “[t]he nature and scope of a party’s goods or services must be determined on the basis of the goods or
`services recited in the application or registration.”
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) Arguing, innuendo, that the ONEOK MARK is used in connection with construction services, the fact that ONEOK and Applicant are
`
`arguably in the field of construction, does not of itself provide a basis for regarding them as related. (cid:160) See Richard L. Kirkpatrick,
`Practicing Law Institute, Likelihood of Confusion in Trademark Law, §5:5 (2008); see also McGraw-Hill, Inc. v. Comstock Partners, Inc.,
`743 F. Supp. 1029, 1034, 17 U.S.P.Q.2d 1599, 1602 (S.D.N.Y. 1990) (discussing how a broad similar field can have disparate
`products; “while [both parties] furnish products related to the broad field of finance, [they] are as completely unrelated as night and
`day”). (cid:160) However, this is not even the case as the ONEOK MARK is for constructing structures and facilities of a particular type.
`(cid:160)(cid:160)(cid:160)(cid:160) The Board agreed with this proposition in
`In Re Geomet, Inc., 2004 WL 2750200 (Trademark Trial and Appeal Board, November 10,
`2004). Both the cited registration and pending application contained the term "GEOMET." The applicant’s mark was for public unity
`services, and the cited registrant was for energy and environmental related services. The Board stated “simply because a term may be found
`that may generically describe both parties' goods or services is not a sufficient basis for finding goods or services to be related.” [internal
`citations omitted]. Id. at *2. (cid:160) This argument applies to the ONEOK MARK.(cid:160) Such mark should not be a bar to the EMCOR & DESIGN MARK
`solely because the marks are arguably in the same general generic field. Thus, Applicant's mark is registerable over this citation.(cid:160)
`The Trademark Attorney readily dismisses the differences between the services.(cid:160) Registrant’s services are limited to natural gas. (cid:160) The revised
`recitation of Applicant’s services reads, in pertinent part, “construction planning; construction consultation” which clearly does not include
`natural gas.
`
`Use in Commerce
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) Applicant has used the EMCOR & DESIGN MARK in connection with its services since at least as early as March 31, 2002. There has been
`
`no actual confusion during the almost more than twelve years of coexistence with the ONEOK MARK.(cid:160) This long term of lack of actual
`confusion is relevant evidence against a finding of a likelihood of confusion. See 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
`Competition, §23:18 (4th Ed. 2008).
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) More specifically, the registration for the ONEOK MARK lists a date of first use of December 9, 1980, while Applicant’s date of first use for
`
`the EMCOR & DESIGN MARK is March 31, 2002.(cid:160) (cid:160)(cid:160) Thus, with twelve years on concurrent use, there should have been confusion between the
`parties, if it was likely, and there has been none.(cid:160) Thus, there is no likelihood of confusion.
`
`Market and Consumers
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) Applicant’s consumers are a highly sophisticated niche of purchasers; namely, those that require specific services related to construction
`
`planning, and construction consulting.(cid:160) Further, these services are quite expensive, and only purchased after careful consideration, and possibly,
`the consideration of alternate bids for the project.(cid:160) Accordingly, the “reasonably prudent person” standard is elevated to the standard of the
`“discriminating purchaser.” (cid:160) A purchaser will only buy such services after careful consideration.(cid:160) Accordingly, confusion is less likely than
`where the goods or services are cheap and bought casually.(cid:160) See 4 McCarthy § 23:96, at 23-189.
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) Similarly, Registrant’s services are services which are offered to a highly sophisticated niche of purchasers relating to natural gas.
`
`(cid:160) See In re
`Geomet, *5. Thus, the consumers in connection with the ONEOK MARK is not the general public. (cid:160) In fact, the general public would not obtain
`either Applicant’s or Registrant’s services in connection with the marks at issue. The Examining Attorney has not shown that Applicant’s
`services would be provided to the general public; and in fact, they would not be.
`(cid:160)(cid:160)(cid:160)(cid:160) Similarly, in Geomet, the cited registrant, whose services included energy and environmental services, provided its services to “utilities,
`government agencies and energy industry clients.” Id. at *5.(cid:160) The Board in Geomet found that “to the extent there would be any overlap in the
`classes of customers for applicant's and the registrant’s services, the common customers would be highly sophisticated and would not assume
`that such services would emanate from a single source.” Id. at *5. Accordingly, the Board found that there was no likelihood of confusion, based,
`in part, on the highly sophisticated customers of the cited registrant’s services.
`
`(cid:160)
`(cid:160)
`

`

`(cid:160)(cid:160)(cid:160)(cid:160) In the matter at hand, the consumers at issue are the same as in the Geomet case. Based upon Applicant's highly sophisticated services, as well
`as the fact that the consumers in connection with the ONEOK MARK would be engaged in constructing structures and facilities for use in natural
`gas, any possible likelihood of confusion is eliminated.
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) Applicant is also the owner of the following trademark registrations for marks which include EMCOR:
`
`Registration No. 2,575,099 for the mark EMCOR SERVICES for facilities management services in Class 35; managing, contracting,
`providing mechanical and electrical construction services; and maintenance services to public, private, institutional and commercial
`buildings in Class 37;
`
`(cid:160) Registration No. 2,562,923 for the mark EMCOR & Design for facilities management services in Class 35 and managing, contracting,
`providing mechanical and electrical and construction services; and maintenance services to public, private, institutional and commercial
`buildings in Class 37.
`
`Based thereon, Applicant has clearly established its rights in the EMCOR mark in related fields.(cid:160) The expansion of its rights to the services set
`forth in the Application is clearly within Applicant’s natural zone of expansion, and accordingly, weight should be provided to these prior
`registrations.(cid:160) As a consequent, Applicant’s mark should be registerable over registrant.
`
`Existence of Diamond Designs in the Field
`(cid:160)(cid:160)(cid:160)(cid:160) While the existence of third party marks cannot, per se, justify the registration of another mark, third party marks are of use to the Examining
`Attorney if they demonstrate that because there is a plethora of similar marks in a field, the mark is relatively weak and entitled to only a narrow
`scope of protection.(cid:160) Further, customers "have been educated to distinguish between different [such] marks on the basis of minute
`distinctions." 2 McCarthy §11:88, quoting Standard Brands, Inc. v. RJR Foods, Inc., 192 U.S.P.Q. 383 (T.T.A.B. 1976).
`As evidenced by the marks cited by the Examining Attorney, a Diamond Design is a weak mark when applied to the field of energy related
`services. Applicant submits that due to the number of marks which include a Diamond Design no one entity can claim exclusive rights in a mark
`which includes a diamond design.(cid:160) A few examples are as follows:
`Registration No. 2,580,021 for the mark DESIGN, owned by PECO Energy Company (“PECO”), for public utility services in Class 39;
`
`Registration No. 2,580,023 for the mark DESIGN, owned by PECO Energy Company, for public utility services in Class 39 (Registration
`Nos. 2,580,021 and 2,580,023 are collectively referred to as the “PECO DESIGN MARKS”); and
`
`Registration No. 3,044,430 for the mark TEXAS GAS SERVICES & Design, owned by ONEOK, Inc. (“ONEOK”), for public utility
`services in the nature of natural gas distribution in Class 39 (“ONEOK WORD & DESIGN MARK”).
`
`Further, because the PECO DESIGN MARKS and the ONEOK MARKS are for the exact same services, it is clear that the relevant
`
`consuming public has been able to differentiate between the marks based upon the differences between the Diamond Designs.
`
`(cid:160)I
`
`n fact, Applicant itself is the owner of registrations for a Diamond Design in the relevant field:
`
`(cid:160)R
`
`egistration No. 2,563,476 for DESIGN for facilities management services in Class 35 and managing, contracting and providing electrical
`and mechanical construction services; maintenance services to private, public and commercial building in Class 37; and
`
`Registration No. 2,562,923 for the mark EMCOR & Design for facilities management services in Class 35 and services and managing,
`contracting, providing mechanical and electrical and construction services; and maintenance services to public, private, institutional in
`Class 37.
`
`Registration No. 3, 915,427 for DESIGN, inter alia, maintenance and construction for others of energy systems and energy producing
`machinery, namely, engine generators, turbines, windmills and generators and the facilities and infrastructures associated therewith
`excluding systems and machinery for procurement, sale or transmission of natural gas, natural gas liquids, petroleum, and other similar
`fuels; construction, installation and maintenance for others of fire protection and life safety systems, namely, water and foam sprinklers
`and smoke detectors; consulting services in the field of installation and maintenance of emergency power systems; consulting services in
`the field of installation and maintenance of access and security systems; consulting services in the field of installation and maintenance of
`fire protection systems in Class 37.(cid:160)
`
`It is apparent that the public has come to appreciate the differences in the marks and that such marks can co-exist. Consequently, Applicant
`submits that the differences in the EMCOR & DESIGN MARK creates a mark sufficiently distinctive and differentiated from the cited
`reference.(cid:160) For all of foregoing reasons, Applicant's m