Response to Office Action

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Applicant:    Caribbean Electronics Enterprises, Inc.

Serial No.:   76/655,316

Mark:         TROJAN  

Law Office 112

D. Beryl Gardner, Examiner

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA 22313-1451

Dear Examiner:

Responsive to the Office Action dated August 9, 2006, Applicant submits the following:

                      A M E N D M E N T                  

First, the Examiner has suggested amendment of the identification of goods. Applicant hereby amends the application to identify the goods as follows, namely:

“Electronic protection devices, namely, burglar alarms, anti-intrusion sensors and alarms, personal security alarms; and video cameras and video and TV monitors sold with and for use in connection with security systems” in International Class 09. 

Applicant hereby deletes the services referenced by the Examiner in International Class 045, to the extent the original application could be construed as identifying such services.

     Applicant further confirms the following:

The mark consists of standard characters without claim to any particular font, style, size or color.”

Lastly, registration of Applicant’s mark “TROJAN” for use in connection with its security system goods, as clarified above, has been refused pursuant to §2(d) of the Lanham Act, 15 U.S.C. §1052(d), on the ground that the mark, when applied to Applicant’s goods, is considered to so resemble the mark shown in U.S. Registration Nos. 2,731,381 – “TROJAN (stylized)” and 2,500,475 “TROJAN and design in non-latin characters meaning ‘start crystal’”, both registrations for use in connection with “semiconductors; integrated circuits; computer chips; semiconductor chips; silicon chips; floating point arithmetic chips; read only memory chips; microprocessor chips” as to be likely to cause confusion. The Examiner has also cited pending Application Serial No. 78/753,940 also for the mark “TROJAN,” for use in connection with “protective covers for electronic devices; downloadable computer software for use as screensavers, wallpaper, browsers, skins and cursors, provided over the internet.”

Applicant appreciates the opportunity to respond, and respectfully asserts that there is no likelihood of confusion. As set forth more fully below, the internal computer circuitry identified in the cited Registrations would be used to construct or upgrade computers or possibly electronic equipment.  Such items would not be competitive with or purchased by a consumer purchasing Applicant’s security system products to protect their home and loved ones.  Consumers for Applicant’s security system products are not logically or naturally in the market to manufacture, repair or build computers or electronic equipment, which is the only reason to purchase the products of the cited Registrant. As to the cited pending application, again, the associated products are essentially non-competitive and different in function from Applicant’s products, and would not engender a likelihood of confusion.

R E M A R K S

After concluding that the marks are “confusingly similar,” the Examiner advises that the “second step of the analysis” results in a likelihood of confusion. However, it is respectfully asserted that no proper “analysis” was undertaken in arriving at this conclusion.  The Examiner’s asserts as part of this “second step” that “the registrant’s goods and the applicant’s goods are commercially related” and that the Applicant’s “apparatus and electronic devices may include the goods that the registrant provides.” (Office Action). Such conclusory statements do not properly address the marketplace realities and nature of the products at issue, which render those products entirely distinctive and non-competitive in their application and function.

As set forth in the often cited case of In re E.I duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (C.C.P.A. 1973), there are several points to consider in determining if marks are confusingly similar.  The relevant points for consideration herein include:

(1) The similarity or dissimilarity and nature of the goods and services as described in an application or registration;

(2) The similarity or dissimilarity of established, likely-to-continue trade channels;

(3) The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful sophisticated purchasing.

Id.

Applying each these factors to the highly distinctive goods in question demonstrates that there is no likelihood of confusion.

I.   DISTINCTIVE GOODS AND CHANNELS OF TRADE.

     As is well recognized, the mere tangential relationship of the products at issue will not necessarily be sufficient to create a likelihood of confusion, even when comparing similar or identical marks.  See e.g., Interstate Brands Corp. v. Celestial Seasonings, Inc., 198 USPQ 151 (C.C.P.A. 1978) ("RED ZINGERS" for use on herb tea and "ZINGERS" for use on cakes.); In Re Mars, Inc., 222 USPQ 938 (Fed. Cir. 1984) ("CANYON" for candy bars and “CANYON” for fresh citrus fruit).

     Thus, it has been held that a tenuous relationship between two products or services will not suffice to prohibit the registration of a mark, a principle espoused in Colgate-Palmolive Co. v. Carter-Wallace, Inc., 167 USPQ 529 (C.C.P.A. 1970).  In that case, registration of the mark "PEAK PERIOD" on deodorant was allowed despite a prior registration for "PEAK" on dentrifice, or toothpaste.  The Court noted that:

"Although the respective goods of the parties may be encompassed by the broad characterization of 'toilet preparations,' they are nevertheless essentially different and noncompetitive in that their application and utility serve different objectives."

Id., at 530.