Response to Office Action

          Applicant has amended the identification of goods in accordance with the Examiner's request.. The Examining Attorney has refused registration under Trademark Act Section 2(d), 15 USC §1052(d), claiming that the Applicant's mark, when used on or in connection with the identified goods so resembles the marks in US Registration Nos. 1,394,983 for the mark CUPID foundation garments and 2,801,129 for the mark QUPID for shoes owned by unrelated parties to be likely to cause confusion, or to cause mistake, or to deceived. For the reasons set forth below, Applicant respectfully submits  that confusion is unlikely with any of the cited registrations in light of the distinctive connotation and different commercial impression of Applicant's mark from those cited and respectfully requests that the application at hand be approved for publication.

            The general test for likelihood of confusion is found in In re E.I. DuPont de Nemours & Co.  476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973) which requires a review of the appearance, sound, connotation and commercial impression of the marks considered.  It cannot be said that the marks at hand are similar in appearance, connotation and commercial impression simply because they alone share the term "Cupid" or a sound alike term   Both the Board and the courts have stated that conflicting marks must be compared by examining them as a whole, rather than breaking the marks up into their component parts for comparison.  See Duluth News-Tribune v. Mesabi Publ. Co., 84 F.3d 1093, 38 U.S.P.Q.2d 1937, 1940 (8^th Cir. 1996); Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545-46 (1920) ("The commercial impression of a trademark is derived from it as whole, not from its elements separated and considered in detail.  For this reason it should be considered in its entirety.").  Thus, the Examiner should not simply focus on common portions of the marks at hand but evaluate the marks in their entirety.  The rationale for this rule is that the commercial impression of a composite trademark on an ordinary prospective consumer is created by the mark as a whole, not by its prospective parts.  In this case, a finding of confusing similarity between Applicant's mark and the cited registrations can only be made when one focuses solely on the "Cupid" or identical sound alike portion of each of the marks at hand.  Since the Trademark Office has already found no confusion between the two cited registrations for identical sounding marks for different goods in Class 25, Applicant asserts that Applicant's mark (which includes the term "CUP") gives its mark a completely different and distinctive connotation from the cited marks clearly making confusion unlikely. See Duluth News-Tribune, 38 U.S.P.Q.2d at 1940 (DULUTH NEWS-TRIBUNE distinguishable in sight and sound from SATURDAY DAILY NEWS & TRIBUNE for newspapers); Electric Water Conditioners, Inc. v. Turbogmag Corp., 221 U.S.P.Q. 162 (TTAB 1984) (TURBO-MAG and ELECTRO-MAG for identical goods are different phonetically, visually and in terms of commercial impression); In Re Bed & Breakfast Registry, 229 U.S.P.Q. 819 (TTAB 1986) (BED & BREAKFAST REGISTRY and BED & BREAKFAST INTERNATIONAL are nor confusingly similar in either sound, appearance or meaning for similar services).   When prospective consumers see or hear Applicant's mark as a whole, they will readily notice the distinction added by the term "CUP".  The mental impression given leads the consumer to envision a cup or a chaise possibly adorned with hearts and roses rather than the a depiction of the mythical character "Cupid" which comes to mind upon seeing or hearing the registered marks cited.

            Applicant therefore respectfully submits that the mere presence of the term "Cupid" in Applicant's mark does not alone create a likelihood of confusion. The fact that one mark contains part of another mark clearly does not determine whether a likelihood of confusion exists.  See, e.g., Lever Bros. Co. v. Barcolene Co., 463 F.2d 1107, 174 U.S.P.Q. 392 (CCPA 1972) (ALL CLEAR not confusingly similar to ALL); Conde Nast Publications, Inc. v. Miss Quality, Inc., 507 F.2d 1404, 184 U.S.P.Q. 422 (CCPA 1975) (COUNTRY VOGUES not confusingly similar to VOGUE); In re Merchandising Motivation, Inc., 184 U.S.P.Q. 364, 365 (TTAB 1974) (no absolute rule against incorporating the total mark of another as part of one's own mark; MMI MENSWEAR not confusingly similar to MEN'S WEAR); Plus Products v. General Mills, Inc., 188 U.S.P.Q. 520 (TTAB 1975) (PROTEIN PLUS not confusingly similar to LUS).  The Trademark Trial and Appeal Board has previously held that even a one letter difference between marks may be sufficient to avoid a likelihood of confusion. See cited marks (CUPID for foundation garments vs. QUPID for shoes;  See also Dow Corp. v. the Doric Corp., 192 U.S.P.Q. 106 (TTAB 1976) (SILASTIC and MILASTIC, both for industrial adhesive, not confusingly similar); In re Reach Electronics, Inc., 175 U.S.P.Q. 734 (TTAB 1972) (REAC and REACH, both for electronic equipment, held not confusingly similar).

A review of the Principle Register indicates that the Trademark Office supports Applicant's position that that two marks sharing a common term such as "Cupid" can co-exist in the same class where the second filers mark contains another term. See US Trademark Registration Nos. 2,592,902 for the mark CUPID'S CROSSING and 2,283,085 for the mark CUPID'S COUPONS both for stationary novelty items in Class 16 and 1,886,231 for the mark CUPID KAKE for bakery goods, 1,809,397 for the mark CUPID for chocolate coatings and 2,542,121 for the mark CUPID CANDIES for candy all existing in Class 30.  

Applicant asserts that no likelihood of confusion exists between its distinctive mark and the cited marks. Since the points of dissimilarity between Applicant's mark and the cited marks (the use of the term "CUP" and the straight forward differences in connotation and commercial impression) are greater than the points of similarity (the use of the term "Cupid"
or a sound alike as a part of a mark), Applicant therefore submits that its distinctive mark creates a unique commercial impression that renders it clearly distinguishable from each the marks cited by the Examiner.

Upon consideration of the above Amendment and Response, Applicant maintains that no likelihood of confusion exists between its mark and the cited marks and respectfully submits that it application as amended is in condition for publication.