| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 76130772 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
| The following amendments and remarks are submitted in response to the Office Action dated May 31, 2003. Applicant notes that it has electronically filed an Amendment to Allege Use ("AAU") with the ITU Division of the U.S. Patent and Trademark Office ("PTO"). A copy of the AAU and the specimens are attached hereto. In the Office Action dated May 31, 2003, the Examining Attorney continued and made final his refusal to register Applicant's mark based on a likelihood of confusion with U.S. Registration No. 2,042,853 (the "'853 Registration"), owned by National Computers Plus, Inc. ("Registrant"). Applicant notes that while amendments to the identification of goods were not required, as is set forth below, Applicant has limited and further specified the goods it is offering in connection with its mark. In light of these amendments and the comments set forth below, Applicant respectfully requests that the Examining Attorney reconsider his final refusal. Moreover, Applicant notes that the '853 Registration issued on March 11, 1997. Thus, the Declaration of Continued Use was due on or before March 11, 2003. Applicant notes that it has been over six (6) months past the deadline for filing the Declaration of Use. As the Declaration of Use has not been filed, the '853 Registration should be cancelled. As such, pursuant to T.M.E.P 716.02(e), if the Examining Attorney is not persuaded by Applicant's arguments, Applicant respectfully requests that the Examining Attorney suspend prosecution of Applicant's application pending cancellation of the '853 Registration. In addition, the Examining Attorney indicated that a signed copy of the application had not been provided. Accordingly, attached hereto is a signed copy of the application. Furthermore, the Examining Attorney requested a copy of Applicant's foreign registration. Attached hereto is a copy of the foreign registration. Finally, as is indicated above, Applicant notes that on November 21, 2003, it electronically filed an Amendment to Allege Use with the PTO. Accordingly, Applicant respectfully requests that prior to approving its application for publication, the Examining Attorney examine and approve the Amendment to Allege Use. LIKELIHOOD OF CONFUSION STANDARD: The PTO recognizes that registration should not be refused in view of all similar registered marks, but only on the basis of those similar marks whose effect in the marketplace would be to create a likelihood of confusion or mistake on the part of the purchasing public. T.M.E.P. § 1207.01. In T.M.E.P. § 1207.01, the PTO has set forth the following factors as relevant in making a determination of likelihood of confusion, including: (1) the dissimilarity and nature of the goods; and (2) the buyers to whom and the conditions under which sales are made. In applying the factors in the instant case, it is apparent that Applicant's goods and Registrant's goods are not "related in some manner" or sufficiently related that "the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source." DISSIMILARITY OF THE GOODS: Applicant respectfully submits that there are sufficient differences between the goods in the '853 Registration and the goods identified in Applicant's application so that confusion is unlikely. In the Office Action, the Examining Attorney contends that Applicant's "semiconductor memory device" is similar if not identical to Registrant's "data storage module." However, such a conclusion is not accurate. In fact, a data storage module is completely different from a semiconductor memory device. A data storage module, permanently stores inputted data. A computer disk or a computer hard drive are data storage modules. A prime example of a data storage module is the situation where a computer-user types a letter onto her computer. After she types the letter, she then saves the letter on a computer disk, which she can then remove from the disk drive and insert back into the same or another computer to retrieve her saved work. The same goes for a hard drive. Once a computer-user saves her letter to the computer's hard drive, she can restart the computer and retrieve her saved work. On the other hand, a semiconductor memory device, like Applicant's, increases the memory capabilities of any electronic device in which it is integrated, such as a car, microwave, refrigerator, cellular phone, digital watch, telephone, palm pilot, or computer. Unlike a data storage module, a semiconductor memory device does not permanently store data. It allows the electronic device that integrates it to have more space for programs to run. In other words, a semiconductor memory device allows the electronic device in which it is integrated to have more "thinking space." Moreover, a semiconductor memory device is normally not removed from where it is inserted. For example, a computer-user, who wants to perform many functions on her computer at once, would purchase a high-speed computer with a semiconductor memory device already installed. This will allow the user to run numerous programs at the same time at a high speed. If the device were not integrated in the computer, then the computer would not be able to run multiple functions simultaneously, and the computer would be slow to respond to commands. Therefore, a data storage module and a semiconductor memory device are completely different products and perform completely different functions. Thus, while Applicant's goods and the goods identified in the '853 Registration both relate to computers, this does not constitute sufficient evidence of confusion on which to refuse registration. Instead, in view of the specialized and distinguishable nature of the goods, the goods are not so "related" that there is any likelihood of confusion as to the source, connection, or sponsorship of the goods and services in the minds of the consumers. In fact, the issue of whether or not two products or services are related does not revolve around the question of whether a term can be used that describes them both, or whether both can be classified under the same general category. Electronic Data System Corp. v. EDSA Micro Corp., 23 U.S.P.Q.2d 1460, 1463 (T.T.A.B. 1992). Thus, the fact that Applicant's goods and Registrant's goods can be classified as both related to computers is not talismanic and does not automatically make the goods related or otherwise competitive. Instead, the TTAB has consistently held that in order to support a likelihood of confusion, there must be some similarity between the goods and services beyond the fact that each involves software. For example, in Reynolds & Reynolds Company v. I.E. Systems, Inc. ("Reynolds"), 5 U.S.P.Q.2d 1749 (T.T.A.B. 1987), the TTAB stated that "[i]t is important to note that, in order to support a holding of likelihood of confusion, there must be some similarity between the goods and services at issue herein beyond the fact that each involves the use of computers. In view of the fact that computers are useful and/or are used in almost every facet of the world of business, commerce, medicine, law, etc., it is obvious that distinctions must be made." Id. at 1751 (emphasis added). This theory was further expanded upon in later cases, where both the TTAB and its reviewing courts have rejected the hypothesis that a relationship exists between goods simply because each involves the use of computers. See Octocom Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16 U.S.P.Q.2d 1783 (Fed. Cir. 1990); Information Resources, Inc. v. X*Press Information Services, 6 U.S.P.Q.2d 1034 (T.T.A.B. 1988). Moreover, although the Examining Attorney has attempted to differentiate Electronic Data System Corp. v. EDSA Micro Corp., 23 U.S.P.Q.2d 1460, 1463 (T.T.A.B. 1992) ("Electronic Data") from the case at hand, this decision and the TTAB's rationale for finding no likelihood of confusion are clearly relevant. Specifically, in Electronic Data, the TTAB stated that "all computer programs process data, but it does not necessarily follow that all computer programs are related. Given the ubiquitous use of computers in all aspects of business in the United States today, this Board and its reviewing Court have rejected the view that a relationship exists between goods and services simply because each involves the use of computers (cites omitted). In particular, the fact that both parties provide computer programs does not establish a relationship between the goods or services, such that consumers would believe that all computer software programs emanate from the same source simply because they are sold under similar marks (cite omitted)." Similarly, as explained above, Applicant's goods are clearly not identical or highly similar to Registrant's goods. Instead, when a proper comparison is made between Applicant's goods and Registrant's goods, it is apparent that the distinct nature of the goods and services is sufficient to preclude a likelihood of confusion. Applicant notes that the TTAB and the courts have consistently determined that the use of even identical marks on goods and services that are much more closely related than those at issue here does not cause confusion. See e.g., Phoenix Closures Inc. v. Yen Shaing Corp. Ltd., 9 U.S.P.Q.2d 1891, 1894 (T.T.A.B. 1988) (no likelihood of confusion between the mark "PHOENIX and BIRD DESIGN" for bottle closures, liners and the like, and the mark "PHOENIX and BIRD DESIGN" for vacuum bottles, thermal food jars, and similar goods); Hi-Country Foods v. Hi Country Beef, 4 U.S.P.Q.2d 1169, 1172 (T.T.A.B. 1987) (no likelihood of confusion between the mark "HI-COUNTRY and DESIGN" and "HI-COUNTRY" both for "impulse" food); In re British Bulldog, Ltd., 224 U.S.P.Q. 854 (T.T.A.B. 1984) (no likelihood of confusion between the mark "PLAYERS" for shoes and the mark "PLAYERS" for men’s underwear); In re Sydel Lingerie Co., Inc., 197 U.S.P.Q. 629 (T.T.A.B. 1977) (no likelihood of confusion between the mark "BOTTOMS UP" for ladies' and children's underwear, and the mark "BOTTOMS UP" for men's suits, coats and trousers); J.C. Penney Co., Inc. v. Arctic Enterprises, Inc., 183 U.S.P.Q. 342 (D.C. Minn 1974) (no likelihood of confusion between the mark "EL TIGRE" for snowmobiles, and the mark "EL TIGRE" for automobile tires and minibikes); and Federal Telephone & Radio v. Federal Television Corp., 84 U.S.P.Q. 394 (2nd Cir. 1950) (no likelihood of confusion between the mark "FEDERAL" for television receivers, and the mark "FEDERAL" for radio receivers). Likewise, when a proper comparison is made between Applicant's goods and Registrant's goods, it is apparent that the distinct nature of the goods and services is sufficient to preclude a likelihood of confusion. CONFUSION IS UNLIKELY BECAUSE APPLICANT'S GOODS AND SERVICES ARE HIGHLY SPECIALIZED AND MARKETED THROUGH DIFFERENT CHANNELS OF TRADE TO DIFFERENT CONSUMERS: Applicant contends that a finding of no likelihood of confusion is mandated by the highly specialized nature of the goods and services sold by each company and the different channels of trade associated with the respective goods and services. In fact, the case at hand presents itself as one in which there will be no competitive proximity between the parties' respective goods and services, such goods and services being marketed differently to different customers. The realities of the marketplace mandate consumer orientation to the specific utility or function of computer software or computer services necessary to fulfill the consumer's specific needs. A perusal of the identification of the Registrant's goods and the goods in the present application indicate that the goods are not interchangeable. While it may not be necessary for the goods of the parties to be identical or directly competitive to find a likelihood of confusion, Applicant directs the Examining Attorney's attention to In re Unilever Ltd., 222 U.S.P.Q. 981 (T.T.A.B. 1984), in which the TTAB stated that "where the goods in question are not identical or competitive, and are not related or marketed in such a way that they would be encountered by the same people in situations that could create the incorrect assumption that all the goods come from the same source . . . confusion is not likely." Id. at 982-83. In this case, the goods at issue are not identical or competitive. Moreover, a consumer interested in Applicant's goods would be unable to use Registrant's goods to perform the functions of Applicant's goods and vice versa. Moreover, none of the products involved are in the nature of "impulse" purchases. A consumer would not purchase specialized computer products impulsively, but would contemplate such a purchase due to the cost involved, the fact that the purchase must be compatible with whatever computer system the consumer may already own, and more importantly, the need for the purchased goods or services to perform the appropriate function the consumer desires. Therefore, customers would be inclined to a great deal more circumspection, as a result of their desire to match their own important needs. In support of this position, Applicant directs the Examining Attorney's attention to In re Endress + Hauer, Inc., 191 U.S.P.Q. 238 (T.T.A.B. 1976), where the TTAB held identical marks used on sophisticated pieces of equipment which were specialized in their application were not likely to be confused. The TTAB reached this conclusion even though the identical marks involved the phenomenon of vibration. The TTAB reasoned that there was no likelihood of confusion given the different roles played by the two goods, both as to purpose and function. Similarly, Applicant's goods have very specific, precise use, purpose and function, which are completely different than those performed by Registrant's goods. Furthermore, while the Examining Attorney has rejected an argument based on the different channels of trade citing Trademark Act Section 7(b), 15 U.S.C. Section 1057(b), which implies that a registrant operates in normal channels of trade and reaches all classes of purchasers. Specifically, the Examining Attorney concluded that limitations regarding marketing channels are not indicated in the identification of goods provided and inure to all normal channels of trade. However, the fact is that semiconductor memory devices normally move through completely different trade channels from computer workstations and data storage modules. The former are normally sold to Original Equipment Manufacturers ("OEM"); the latter are normally marketed and sold to end-users. Even if semiconductor memory devices carry a trademark, once incorporated into a computer workstation or other electronic appliance, the purchaser or user of that workstation never sees them. Accordingly, contrary to the Examining Attorney's remarks, the "same consumers" will not be exposed to the goods identified with both marks. While memory modules may be used in creating a computer workstation or later added to increase the memory of a computer workstation, the markets for the two products are completely different. That is, Applicant markets its products to wholesalers and manufacturers; computer workstations, on the other hand, are sold at the retail level. This is evidenced by the fact that the companies display their products at different trade shows. CONCLUSION: For the foregoing reasons, Applicant respectfully requests that the refusals to register be withdrawn. Alternatively, as indicated above, if the Examining Attorney is not persuaded by Applicant's arguments, Applicant respectfully requests its application be suspended pending cancellation of the '853 Registration. Applicant submits that it has responded to all outstanding issues raised in the Office Action. Should the Examining Attorney have any questions or require any additional information, he is encouraged to contact the undersigned. Please charge Deposit Account No. 11-1410 for any fees which may be required. | |
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME | \\ticrs\EXPORT8\IMAGEOUT8 \761\307\76130772\xml2\RO A0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | copy of the Amendment to Allege Use filed 11/21/2003 |
| EVIDENCE FILE NAME | \\ticrs\EXPORT8\IMAGEOUT8 \761\307\76130772\xml2\RO A0003.JPG |
| DESCRIPTION OF EVIDENCE FILE | copy of the specimen filed with the Amendment to Allege Use on 11/21/2003 |
| EVIDENCE FILE NAME | \\ticrs\EXPORT8\IMAGEOUT8 \761\307\76130772\xml2\RO A0004.JPG |
| DESCRIPTION OF EVIDENCE FILE | page 1 of the signed application |
| EVIDENCE FILE NAME | \\ticrs\EXPORT8\IMAGEOUT8 \761\307\76130772\xml2\RO A0005.JPG |
| DESCRIPTION OF EVIDENCE FILE | page 2 of the signed application |
| EVIDENCE FILE NAME | \\ticrs\EXPORT8\IMAGEOUT8 \761\307\76130772\xml2\RO A0006.JPG |
| DESCRIPTION OF EVIDENCE FILE | page 3 of the signed application |
| EVIDENCE FILE NAME | \\ticrs\EXPORT8\IMAGEOUT8 \761\307\76130772\xml2\RO A0007.JPG |
| DESCRIPTION OF EVIDENCE FILE | copy of foreign registration |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| SEMICONDUCTOR MEMORY DEVICE AND PRODUCT, NAMELY MEMORY MODULE | |
| FILING BASIS | Section 1(b) |
| FOREIGN APPLICATION COUNTRY NAME | SG |
| FILING BASIS | Section 44(e) |
| FOREIGN REGISTRATION NUMBER | T99/06225C |
| FOREIGN REGISTRATION COUNTRY NAME | SG |
| FOREIGN REGISTRATION DATE | 06/18/1999 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| SEMICONDUCTOR MEMORY DEVICE AND PRODUCT, NAMELY MEMORY MODULE, NAMELY, MODULES USING FLASH MEMORY, MODULES EMPLOYING FLASH MEMORY IN THE FORM OF CARDS USED AS STORAGE MEDIUM, CARD READERS, CARD WRITERS TO READ AND CARD WRITERS TO WRITE THE MEMORY MODULES AND CARDS | |
| FILING BASIS | Section 1(b) |
| FOREIGN APPLICATION COUNTRY NAME | SG |
| FILING BASIS | Section 44(e) |
| FOREIGN REGISTRATION NUMBER | T99/06225C |
| FOREIGN REGISTRATION COUNTRY NAME | SG |
| FOREIGN REGISTRATION DATE | 06/18/1999 |
| SIGNATURE SECTION | |
| SIGNATURE | /Stacey R. Halpern/ |
| SIGNATORY NAME | Stacey R. Halpern |
| SIGNATORY POSITION | Attorney for Applicant |
| SIGNATORY DATE | 11/26/2003 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Nov 26 13:22:16 EST 2003 |
| TEAS STAMP | USPTO/OA-XXXXXXXXXXX-2003 1126132216457057-76130772 -200a5545b0d9a4cd14be2216 1021a13817-N-N-2003112613 2058607290 |
| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 76130772 is amended as follows: | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
| The following amendments and remarks are submitted in response to the Office Action dated May 31, 2003. Applicant notes that it has electronically filed an Amendment to Allege Use ("AAU") with the ITU Division of the U.S. Patent and Trademark Office ("PTO"). A copy of the AAU and the specimens are attached hereto. In the Office Action dated May 31, 2003, the Examining Attorney continued and made final his refusal to register Applicant's mark based on a likelihood of confusion with U.S. Registration No. 2,042,853 (the "'853 Registration"), owned by National Computers Plus, Inc. ("Registrant"). Applicant notes that while amendments to the identification of goods were not required, as is set forth below, Applicant has limited and further specified the goods it is offering in connection with its mark. In light of these amendments and the comments set forth below, Applicant respectfully requests that the Examining Attorney reconsider his final refusal. Moreover, Applicant notes that the '853 Registration issued on March 11, 1997. Thus, the Declaration of Continued Use was due on or before March 11, 2003. Applicant notes that it has been over six (6) months past the deadline for filing the Declaration of Use. As the Declaration of Use has not been filed, the '853 Registration should be cancelled. As such, pursuant to T.M.E.P 716.02(e), if the Examining Attorney is not persuaded by Applicant's arguments, Applicant respectfully requests that the Examining Attorney suspend prosecution of Applicant's application pending cancellation of the '853 Registration. In addition, the Examining Attorney indicated that a signed copy of the application had not been provided. Accordingly, attached hereto is a signed copy of the application. Furthermore, the Examining Attorney requested a copy of Applicant's foreign registration. Attached hereto is a copy of the foreign registration. Finally, as is indicated above, Applicant notes that on November 21, 2003, it electronically filed an Amendment to Allege Use with the PTO. Accordingly, Applicant respectfully requests that prior to approving its application for publication, the Examining Attorney examine and approve the Amendment to Allege Use. LIKELIHOOD OF CONFUSION STANDARD: The PTO recognizes that registration should not be refused in view of all similar registered marks, but only on the basis of those similar marks whose effect in the marketplace would be to create a likelihood of confusion or mistake on the part of the purchasing public. T.M.E.P. § 1207.01. In T.M.E.P. § 1207.01, the PTO has set forth the following factors as relevant in making a determination of likelihood of confusion, including: (1) the dissimilarity and nature of the goods; and (2) the buyers to whom and the conditions under which sales are made. In applying the factors in the instant case, it is apparent that Applicant's goods and Registrant's goods are not "related in some manner" or sufficiently related that "the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source." DISSIMILARITY OF THE GOODS: Applicant respectfully submits that there are sufficient differences between the goods in the '853 Registration and the goods identified in Applicant's application so that confusion is unlikely. In the Office Action, the Examining Attorney contends that Applicant's "semiconductor memory device" is similar if not identical to Registrant's "data storage module." However, such a conclusion is not accurate. In fact, a data storage module is completely different from a semiconductor memory device. A data storage module, permanently stores inputted data. A computer disk or a computer hard drive are data storage modules. A prime example of a data storage module is the situation where a computer-user types a letter onto her computer. After she types the letter, she then saves the letter on a computer disk, which she can then remove from the disk drive and insert back into the same or another computer to retrieve her saved work. The same goes for a hard drive. Once a computer-user saves her letter to the computer's hard drive, she can restart the computer and retrieve her saved work. On the other hand, a semiconductor memory device, like Applicant's, increases the memory capabilities of any electronic device in which it is integrated, such as a car, microwave, refrigerator, cellular phone, digital watch, telephone, palm pilot, or computer. Unlike a data storage module, a semiconductor memory device does not permanently store data. It allows the electronic device that integrates it to have more space for programs to run. In other words, a semiconductor memory device allows the electronic device in which it is integrated to have more "thinking space." Moreover, a semiconductor memory device is normally not removed from where it is inserted. For example, a computer-user, who wants to perform many functions on her computer at once, would purchase a high-speed computer with a semiconductor memory device already installed. This will allow the user to run numerous programs at the same time at a high speed. If the device were not integrated in the computer, then the computer would not be able to run multiple functions simultaneously, and the computer would be slow to respond to commands. Therefore, a data storage module and a semiconductor memory device are completely different products and perform completely different functions. Thus, while Applicant's goods and the goods identified in the '853 Registration both relate to computers, this does not constitute sufficient evidence of confusion on which to refuse registration. Instead, in view of the specialized and distinguishable nature of the goods, the goods are not so "related" that there is any likelihood of confusion as to the source, connection, or sponsorship of the goods and services in the minds of the consumers. In fact, the issue of whether or not two products or services are related does not revolve around the question of whether a term can be used that describes them both, or whether both can be classified under the same general category. Electronic Data System Corp. v. EDSA Micro Corp., 23 U.S.P.Q.2d 1460, 1463 (T.T.A.B. 1992). Thus, the fact that Applicant's goods and Registrant's goods can be classified as both related to computers is not talismanic and does not automatically make the goods related or otherwise competitive. Instead, the TTAB has consistently held that in order to support a likelihood of confusion, there must be some similarity between the goods and services beyond the fact that each involves software. For example, in Reynolds & Reynolds Company v. I.E. Systems, Inc. ("Reynolds"), 5 U.S.P.Q.2d 1749 (T.T.A.B. 1987), the TTAB stated that "[i]t is important to note that, in order to support a holding of likelihood of confusion, there must be some similarity between the goods and services at issue herein beyond the fact that each involves the use of computers. In view of the fact that computers are useful and/or are used in almost every facet of the world of business, commerce, medicine, law, etc., it is obvious that distinctions must be made." Id. at 1751 (emphasis added). This theory was further expanded upon in later cases, where both the TTAB and its reviewing courts have rejected the hypothesis that a relationship exists between goods simply because each involves the use of computers. See Octocom Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16 U.S.P.Q.2d 1783 (Fed. Cir. 1990); Information Resources, Inc. v. X*Press Information Services, 6 U.S.P.Q.2d 1034 (T.T.A.B. 1988). Moreover, although the Examining Attorney has attempted to differentiate Electronic Data System Corp. v. EDSA Micro Corp., 23 U.S.P.Q.2d 1460, 1463 (T.T.A.B. 1992) ("Electronic Data") from the case at hand, this decision and the TTAB's rationale for finding no likelihood of confusion are clearly relevant. Specifically, in Electronic Data, the TTAB stated that "all computer programs process data, but it does not necessarily follow that all computer programs are related. Given the ubiquitous use of computers in all aspects of business in the United States today, this Board and its reviewing Court have rejected the view that a relationship exists between goods and services simply because each involves the use of computers (cites omitted). In particular, the fact that both parties provide computer programs does not establish a relationship between the goods or services, such that consumers would believe that all computer software programs emanate from the same source simply because they are sold under similar marks (cite omitted)." Similarly, as explained above, Applicant's goods are clearly not identical or highly similar to Registrant's goods. Instead, when a proper comparison is made between Applicant's goods and Registrant's goods, it is apparent that the distinct nature of the goods and services is sufficient to preclude a likelihood of confusion. Applicant notes that the TTAB and the courts have consistently determined that the use of even identical marks on goods and services that are much more closely related than those at issue here does not cause confusion. See e.g., Phoenix Closures Inc. v. Yen Shaing Corp. Ltd., 9 U.S.P.Q.2d 1891, 1894 (T.T.A.B. 1988) (no likelihood of confusion between the mark "PHOENIX and BIRD DESIGN" for bottle closures, liners and the like, and the mark "PHOENIX and BIRD DESIGN" for vacuum bottles, thermal food jars, and similar goods); Hi-Country Foods v. Hi Country Beef, 4 U.S.P.Q.2d 1169, 1172 (T.T.A.B. 1987) (no likelihood of confusion between the mark "HI-COUNTRY and DESIGN" and "HI-COUNTRY" both for "impulse" food); In re British Bulldog, Ltd., 224 U.S.P.Q. 854 (T.T.A.B. 1984) (no likelihood of confusion between the mark "PLAYERS" for shoes and the mark "PLAYERS" for men’s underwear); In re Sydel Lingerie Co., Inc., 197 U.S.P.Q. 629 (T.T.A.B. 1977) (no likelihood of confusion between the mark "BOTTOMS UP" for ladies' and children's underwear, and the mark "BOTTOMS UP" for men's suits, coats and trousers); J.C. Penney Co., Inc. v. Arctic Enterprises, Inc., 183 U.S.P.Q. 342 (D.C. Minn 1974) (no likelihood of confusion between the mark "EL TIGRE" for snowmobiles, and the mark "EL TIGRE" for automobile tires and minibikes); and Federal Telephone & Radio v. Federal Television Corp., 84 U.S.P.Q. 394 (2nd Cir. 1950) (no likelihood of confusion between the mark "FEDERAL" for television receivers, and the mark "FEDERAL" for radio receivers). Likewise, when a proper comparison is made between Applicant's goods and Registrant's goods, it is apparent that the distinct nature of the goods and services is sufficient to preclude a likelihood of confusion. CONFUSION IS UNLIKELY BECAUSE APPLICANT'S GOODS AND SERVICES ARE HIGHLY SPECIALIZED AND MARKETED THROUGH DIFFERENT CHANNELS OF TRADE TO DIFFERENT CONSUMERS: Applicant contends that a finding of no likelihood of confusion is mandated by the highly specialized nature of the goods and services sold by each company and the different channels of trade associated with the respective goods and services. In fact, the case at hand presents itself as one in which there will be no competitive proximity between the parties' respective goods and services, such goods and services being marketed differently to different customers. The realities of the marketplace mandate consumer orientation to the specific utility or function of computer software or computer services necessary to fulfill the consumer's specific needs. A perusal of the identification of the Registrant's goods and the goods in the present application indicate that the goods are not interchangeable. While it may not be necessary for the goods of the parties to be identical or directly competitive to find a likelihood of confusion, Applicant directs the Examining Attorney's attention to In re Unilever Ltd., 222 U.S.P.Q. 981 (T.T.A.B. 1984), in which the TTAB stated that "where the goods in question are not identical or competitive, and are not related or marketed in such a way that they would be encountered by the same people in situations that could create the incorrect assumption that all the goods come from the same source . . . confusion is not likely." Id. at 982-83. In this case, the goods at issue are not identical or competitive. Moreover, a consumer interested in Applicant's goods would be unable to use Registrant's goods to perform the functions of Applicant's goods and vice versa. Moreover, none of the products involved are in the nature of "impulse" purchases. A consumer would not purchase specialized computer products impulsively, but would contemplate such a purchase due to the cost involved, the fact that the purchase must be compatible with whatever computer system the consumer may already own, and more importantly, the need for the purchased goods or services to perform the appropriate function the consumer desires. Therefore, customers would be inclined to a great deal more circumspection, as a result of their desire to match their own important needs. In support of this position, Applicant directs the Examining Attorney's attention to In re Endress + Hauer, Inc., 191 U.S.P.Q. 238 (T.T.A.B. 1976), where the TTAB held identical marks used on sophisticated pieces of equipment which were specialized in their application were not likely to be confused. The TTAB reached this conclusion even though the identical marks involved the phenomenon of vibration. The TTAB reasoned that there was no likelihood of confusion given the different roles played by the two goods, both as to purpose and function. Similarly, Applicant's goods have very specific, precise use, purpose and function, which are completely different than those performed by Registrant's goods. Furthermore, while the Examining Attorney has rejected an argument based on the different channels of trade citing Trademark Act Section 7(b), 15 U.S.C. Section 1057(b), which implies that a registrant operates in normal channels of trade and reaches all classes of purchasers. Specifically, the Examining Attorney concluded that limitations regarding marketing channels are not indicated in the identification of goods provided and inure to all normal channels of trade. However, the fact is that semiconductor memory devices normally move through completely different trade channels from computer workstations and data storage modules. The former are normally sold to Original Equipment Manufacturers ("OEM"); the latter are normally marketed and sold to end-users. Even if semiconductor memory devices carry a trademark, once incorporated into a computer workstation or other electronic appliance, the purchaser or user of that workstation never sees them. Accordingly, contrary to the Examining Attorney's remarks, the "same consumers" will not be exposed to the goods identified with both marks. While memory modules may be used in creating a computer workstation or later added to increase the memory of a computer workstation, the markets for the two products are completely different. That is, Applicant markets its products to wholesalers and manufacturers; computer workstations, on the other hand, are sold at the retail level. This is evidenced by the fact that the companies display their products at different trade shows. CONCLUSION: For the foregoing reasons, Applicant respectfully requests that the refusals to register be withdrawn. Alternatively, as indicated above, if the Examining Attorney is not persuaded by Applicant's arguments, Applicant respectfully requests its application be suspended pending cancellation of the '853 Registration. Applicant submits that it has responded to all outstanding issues raised in the Office Action. Should the Examining Attorney have any questions or require any additional information, he is encouraged to contact the undersigned. Please charge Deposit Account No. 11-1410 for any fees which may be required. | |
| Evidence | |
| Evidence in the nature of copy of the Amendment to Allege Use filed 11/21/2003 has been attached. | |
| Evidence-1 | |
| Evidence in the nature of copy of the specimen filed with the Amendment to Allege Use on 11/21/2003 has been attached. | |
| Evidence-2 | |
| Evidence in the nature of page 1 of the signed application has been attached. | |
| Evidence-3 | |
| Evidence in the nature of page 2 of the signed application has been attached. | |
| Evidence-4 | |
| Evidence in the nature of page 3 of the signed application has been attached. | |
| Evidence-5 | |
| Evidence in the nature of copy of foreign registration has been attached. | |
| Evidence-6 | |
| Classification and Listing of Goods/Services | |
| Applicant hereby amends the following class of goods/services in the application as follows: | |
| Current: Class 009 for SEMICONDUCTOR MEMORY DEVICE AND PRODUCT, NAMELY MEMORY MODULE | |
| Original Filing Basis: 1(b); and/or 44(e). | |
| Proposed: Class 009 for SEMICONDUCTOR MEMORY DEVICE AND PRODUCT, NAMELY MEMORY MODULE, NAMELY, MODULES USING FLASH MEMORY, MODULES EMPLOYING FLASH MEMORY IN THE FORM OF CARDS USED AS STORAGE MEDIUM, CARD READERS, CARD WRITERS TO READ AND CARD WRITERS TO WRITE THE MEMORY MODULES AND CARDS | |
| Response Signature | |
| Signature: /Stacey R. Halpern/ Date: 11/26/2003 | |
| Signatory's Name: Stacey R. Halpern | |
| Signatory's Position: Attorney for Applicant | |
| Serial Number: 76130772 | |
| Internet Transmission Date: Wed Nov 26 13:22:16 EST 2003 | |
| TEAS Stamp: USPTO/OA-XXXXXXXXXXX-2003112613221645705 7-76130772-200a5545b0d9a4cd14be22161021a 13817-N-N-20031126132058607290 |
