Response to Office Action

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Applicant                      :           CLYDE DUNEIER, INC.

Serial No                      :           76/624440

Mark                           :            CID

Examining

Attorney                       :           LOURDES D. AYALA

 

Law Office                   :           106

 

 

            RESPONSE TO JULY 22, 2005 OFFICIAL ACTION        

 

Assistant Commissioner for Trademarks

P. O. Box 1451

Alexandria, VA 22313-1451

 

                                   

                                                            REMARKS

 

In the Office Action, the Examining Attorney has initially refused registration of Applicant's Serial No. 76/624,440 for the mark CID in connection with "jewelry, not including watches and clocks and their accessories"  ("Applicant's Goods") on the ground that said mark was likely to be confused with Registration No. 2,272,871 for the mark C.I.D. as used in connection with "watches, clocks and their case and parts" ("Cited Registration").

 

The Examiner initially asserts that the marks in question are highly similar marks because "the marks consists of the same dominant part "CID" in it.  Moreover, the Examiner asserts that "the registrant do not limit its goods in any particular fashion and a determination of whether there is a likelihood of confusion is made solely on the basis of the goods and/or services identified in the application and registration, without limitations or restrictions that are not reflected therein."

 

Pursuant to my July 28, 2005 conference call with the Examiner, the Examiner agreed that the Registrant had in fact limited its goods to "watches, clocks and their accessories," while Applicant had specifically excluded the very same goods of the Cited Registration from its application.  Given the clear differences between the Registrant's special form C.I.D. letter mark and Applicant's CID word mark and the differences in services, the Examiner agreed to reevaluate this application herein.  Accordingly, as will be demonstrated below, the Applicant's Mark is different from the Cited Registration in sight, sound and commercial impression.  Moreover, the goods for which Applicant's Mark and the goods for which the Cited Registration are used, are sufficiently different and exclusive such that it outweighs any similarity of the marks themselves, and confusion between the Applicant's Mark and the Cited Registration is unlikely.  The complete absence of any evidence of actual confusion despite many years of concurrent usage is particularly telling. 

 

Therefore, pursuant to the below argument, Applicant believes that it has traversed the Examining Attorney's objections and submits that Applicant's Mark is not likely to be confused with the Cited Registration and is therefore entitled to registration.  Reconsideration is respectfully requested. 

                          

 

 

 

                                                            ARGUMENT

 

                                    A. Standard On Likelihood Of Confusion

 

The Court in In re E.I. du Pont De Nemours & Co., 476 F.2d 1357 (C.C.P.A 1973), articulated the principal factors to consider in determining whether there is a likelihood of confusion between two marks.  Chief factors being the similarity of the marks in their entireties as to the trilogy of sight, sound and commercial impression; and the similarity or dissimilarity of the goods.  Id. See 3 J.T., McCarthy, Trademarks and Unfair Competition, Section 23:79 (4^th ed. 2001)

 

There is no hard and fast rule that likelihood of confusion must automatically be found to exist if there is a similarity in any one of these elements. In re Software Design, Inc., 220 U.S.P.Q. 662 (T.T.A.B. 1983).  Each case must be decided on its own facts, based upon an examination of all of the elements and a consideration of any similarities or differences between the goods and/or services to which the respective marks are applied.  Id., citing Dor-O-Matic Division of Republic Industries, Inc. v. Doormaid, Inc., 199 U.S.P.Q. 573 (T.T.A.B. 1978) (and cases cited therein).  It is Applicant's contention that there is sufficient difference between the respective sight and sound, as well as the respective services of the Applicant's Mark and the goods of the Cited Registration, so that confusion is unlikely.  This Examiner cannot depart from the rule that marks should be considered in their entireties and not improperly dissected.  Colgate-Palmolive co. v. Carter-Wallace, Inc., 167 U.S.P.Q. 272 (C.C. P.A. 1970).  

 

It is clear that when taken in their entireties, there are significant differences between Applicant's Mark "CID" and the Registrant's C.I.D. Mark

 

Generally, comparison of sound entails looking at the phonetic effect of the trademarked word or words.  See e.g. A & H Sportswear, Inc. v. Victoria Secret Stores, Inc., 237 F.3d 198, 217 (3d Cir. 1000).  Comparing the C.I.D. and CID  Marks, they are both pronounced completely differently (Pronunciation - "sE-I-dE" vs "sid"), therefore, there is no similarity between the sound of the marks.

 

Comparison of sight assesses the visual impact in the presentations of the marks.  See id. (approving comparison of use of capital or lower case letters); see also Kraft Gen. Foods v. BC-USA, 840 F.Supp. 344, 350 (E.D.Pa 1993) (assessing color scheme and design of trademarked cream cheese packaging); Int'l Data Group, Inc. v. Ziff Davis Media, Inc., 145 F.Supp. 2d 422, 435 (D.Del. 2001) (comparing accompanying graphics, logo, font, style, colors, size, and method of presentation).  Comparing the sight of the two marks here, although both marks contain the same three letters they are otherwise different.   Applicant's Mark is an arbitrary word, while the Cited Registration is a special form, initial, letter Mark.  The Cited Registration is a special form, letter mark, while the Applicant's mark is a standard character mark.  When the appearance and lettering style shown in the Cited Registration is different from the mark of the Applicant, this factor is important in determining likelihood of confusion.  3 McCarthy on Trademarks and Unfair Competition, Section 19. 58 (2004 Edition).  Thus, while there is some similarity, overall, the visual presentations of the C.I.D and CID marks are generally distinct for the reasons noted above.

 

Comparison of meaning inquires into the impression given by the definition of the marks.  A & H, 237 F.3d at 217.  Comparing the meaning of the marks, the initials C.I.D. leads  a consumer to believe that the mark is an acronym, while no determination can be made of Applicant's arbitrary Mark.  It therefore cannot be denied that the marks do not convey similar images or meanings.

 

Decisional law is clear that where a word has different meanings in different contexts, even the use of the same word as a mark will not be likely to cause confusion.[1]  See, e.g., In re Sears, Roebuck and Co., 2 U.S.P.Q. 2d 1312 (T.T.A.B. 1987) (CROSS-OVER for bars held not likely to be confused with CROSSOVER for ladies' sportswear); In re British Bulldog, Ltd., 224 U.S.P.Q. 854 (T.T.A.B. 1984) (PLAYERS for men's underwear held not likely to be confused with PLAYERS for shoes).  The very different meanings of Applicant's Mark and the Cited Registration prevents a likelihood of confusion

 

Pursuant to TMEP 1207.01 (a)(vi), the burden of proof is on the examining attorney to provide evidence showing that the respective goods are related to support a finding of likelihood of confusion.  Applicant respectfully submits that the Examining Attorney has not met this burden herein.

 

 

B. The Goods And Services Under the Applicant's

                                     Mark and The Cited Registration Are Exclusive

Applicant's identification clearly demonstrates that Applicant's Goods are not used in connection with any of the goods cited in Registrant's identification.  Applicant's Goods are unrelated to watches and clocks and specifically exclude use in connection with those goods.  To find likelihood of confusion merely because both Applicant and Registrant's goods may be found in jewelry stores is to apply too broad a brush.  Why should all goods that may be found in a jewelry store be considered to be related?

 

Moreover, because of the limited area of Registrant's identification of goods, Registrant's mark should not be accorded the wide scope of protection the Examining Attorney has bestowed upon it.  On the contrary, such protection should be restricted to the particular goods for which it is registered.  Applicant argues that the distinction between Applicant's Goods and the goods identified by the Cited Registration are sufficiently different to prevent likelihood of confusion between the marks.  Accordingly, Applicant respectfully requests that the examiner withdraw her initial 2(d) objection.

 

                                    C.            Absence of Actual Confusion

Pursuant to its application, Applicant has been using its mark in connection with its services for the past thirty six (36) years, since 1969, without any reported instances of actual confusion with the Cited Registration whose use in commerce was initiated in 1990.   When there has been a long period of contemporaneous use without any actual confusion having occurred between the mark for which registration is sought and the mark upon which the rejection is based, the absence of any known incident of actual confusion in an extensive period of contemporaneous use of the mark is strong evidence that confusion is unlikely to occur in the future.  See In re American Management Associates, 218 USPQ 477 (TTAB 1983).  Accordingly, absence of actual confusion is significant in determining whether or not such confusion is likely and another factor in favor of allowing Applicant's Mark to proceed to publication.

 

 

                                                CONCLUSION

 

 

For the foregoing reasons, Applicant respectfully submits that Applicant's Mark is entitled to registration and requests that the Examining Attorney pass said mark to publication.  Applicant, however, respectfully requests that in the event the Examining Attorney does not agree with    Applicant's Response, a final refusal will not be issued so that Applicant may have the opportunity to respond further to any of the Examining Attorney's remaining concerns.

Respectfully submitted,

 

 

/ Mark J. Ingber /_________

 

 Mark J. Ingber

 INGBER & GELBER, LLP

 181 Millburn Avenue

 Suite 202

 Millburn, New Jersey 07041

 

 

Dated:            September 27, 2005

 

MJI/lb

 

Encl.

 

CID OFFICIAL ACTION RESPONSE 2 .WPD