| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 76675312 |
| LAW OFFICE ASSIGNED | LAW OFFICE 104 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Applicant’s mark is A FINE MESS and Design, U.S. Trademark Application serial no. 76/675,312, for use in connection with “watches; watch straps; bracelets; watch buckles; jewelry; imitation jewelry; clocks; ornamental pins; precious metals and their alloys; goods in precious metals or coated, namely charms, rings, earrings, ankle bracelets, brooches and cuff links; key rings and key chains made of precious metal” in International Class 14 (“Applicant’s Mark”), as amended per the current Office Action Response. Registration of Applicant’s Mark has been refused based on a finding of a likelihood of confusion with the mark ANOTHER FINE MESS, U.S. Trademark Registration no. 2,552,838 for use in connection with “Clothing, namely T-shirts, sweatshirts, socks, sweatsuits, pants, shorts, jackets, jogging suits, and shirts; aprons; footwear; neckwear; suspenders; and headwear” in International Class 25 (the “Cited Mark”). COMPARING MARKS IN THEIR ENTIRETYAlthough the Applicant’s Mark and the Cited Mark relate to clothing, and contain the words FINE MESS, among others, Applicant submits that there is still no likelihood of confusion. Among the factors to consider in a likelihood of confusion analysis, the principal factors relevant to this case are the similarities in appearance, sound, connotation and commercial impression of the marks. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In such an analysis, the Examining Attorney must consider the trademarks in their entirety to determine whether or not there may be a likelihood of confusion. General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 3 USPQ2d 1442, 1445 (8th Cir. 1987). Further, a likelihood of confusion may not be predicated on only part of a mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992) (stating that marks tend to be perceived in their entireties, and all components thereof must be given appropriate weight). When comparing conflicting marks, a mark should not be dissected into its component parts and each part then compared with corresponding parts of the conflicting mark to determine a likelihood of confusion. 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. Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538 (U.S. 1920). As the Supreme Court noted, “[t]he commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety and to strike out any considerable part of it, certainly any conspicuous part of it, would be to greatly affect its value.” Id. at 546-547. In In re Electrolyte Laboratories, 16 USPQ2d 1239 (CA FC 1990), the Federal Court of Appeals overturned the TTAB holding that it erred by focusing on one element at the substantial exclusion of all others. Applicant’s stylized “K+” mark for dietary potassium supplement, was not likely to cause confusion with the mark “K+EFF,” also for potassium supplement, because applicant's mark was a composite whose design was a significant feature, “EFF” in registrant’s mark was also significant, and the symbols and abbreviations in the mark were not identical. Here, the Examining Attorney focuses on the wording FINE MESS, based on the allegation that the word portion is more dominant than the design portion, to the substantial exclusion of the additional elements in Applicant’s Mark. Respectfully, and to remain consistent with the holding of In re Electrolyte Laboratories, the Examining Attorney should not ignore the particular stylization and font prominently featured in Applicant’s Mark. These stylistic design features are equally as dominant as the wording, and therefore, are just as likely to be impressed in the minds of purchasers. Accordingly, consumers will likely recall the wording ANOTHER FINE MESS in the Cited Mark and the stylized font in Applicant’s Mark, rather than the merely the similarity of the phrase FINE MESS. In such a comparison, it is likely that the typical consumer will be able to distinguish the marks, and thus the goods, of the respective owners. In addition to the aforementioned differences in appearance, Applicant’s Mark and the Cited Mark also differ in sound. A phonetic comparison of the marks A FINE MESS and ANOTHER FINE MESS immediately reveals the distinct oral quality of each mark. Moreover, as a general rule, consumers are more inclined to focus on the first word, phrase, prefix, or syllable in any trademark or services mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Thus, the presence of the letter A in Applicant’s Mark, as distinguished from the word ANOTHER in the Cited Mark, further assists in eliminating any potential consumer confusion. Moreover, the appearance of the wording FINE MESS in each of the marks should not automatically result in a finding of a likelihood of confusion. Marks that contain some similar terms, but are very different when viewed as a whole are unlikely to cause consumer confusion as to their source. Keebler Co. v. Murray Bakery Prod., 866 F.2d 1386 (Fed. Cir. 1989). Any commonality created by the inclusion of the wording FINE MESS is greatly reduced by the additional words and stylization (or lack thereof) contributing to the overall commercial impressions of the marks. Consequently, such varied and obvious differences are unlikely to confuse consumers. Finally, by stressing the portion “FINE MESS,” the Examining Attorney improperly changes the mark to merely FINE MESS. This scenario was addressed in In re Hearst Corp., 25 USPQ2d 1238 (CA FC 1992), where, with respect to the mark VARGAS GIRL, the Court noted that by stressing the portion “varga” (because it was dominant) and diminishing the portion “girl” (because it was descriptive), the Board inappropriately changed the mark. In view of this holding, the Examining Attorney must not ignore the additional wording in the marks at issue. In sum, the dominant elements in Applicant’s Mark are the words and design features, while the dominant element in the Cited Mark is simply the wording ANOTHER FINE MESS. Both marks differ in sound, appearance, and commercial impression. Specifically, the different wording and design features incorporated into Applicant’s Mark assist in conveying a quite dissimilar impression to the consuming public. For the reasons stated above, the marks when viewed as a whole are not similar. CONCLUSION In light of the foregoing, Applicant submits that there is no likelihood of confusion among Applicant’s Mark and the Cited Mark. WHEREFORE, Applicant prays that the Examining Attorney’s refusal of registration be reversed and that registration be granted. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 014 |
| DESCRIPTION | |
| WATCHES STRAPS, BRACELETS, BUCKLES, JEWELRY, IMITATION JEWELRY, CLOCKS, ORNMENTAL PINS, PRECIOUS METALS AND THEIR ALLOYS AND GOODS IN PRECIOUS METALS OR COATED; KEY RINGS, KEY CHAINS | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 014 |
| DESCRIPTION | |
| watches; watch straps; bracelets; watch buckles; jewelry; imitation jewelry; clocks; ornamental pins; precious metals and their alloys; goods in precious metals or coated, namely charms, rings, earrings, ankle bracelets, brooches and cuff links; key rings and key chains made of precious metal | |
| FILING BASIS | Section 1(b) |
| CORRESPONDENCE SECTION | |
| NAME | John Alumit, Esq. |
| FIRM NAME | Patel & Alumit, PC |
| INTERNAL ADDRESS | Suite 360 |
| STREET | 16830 Ventura Blvd. |
| CITY | Encino |
| STATE | California |
| ZIP/POSTAL CODE | 91436 |
| COUNTRY | United States |
| PHONE | 818-380-1900 |
| FAX | 818-380-1908 |
| jalumit@patelalumit.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /john alumit/ |
| SIGNATORY'S NAME | John Alumit |
| SIGNATORY'S POSITION | Attorney of Record |
| DATE SIGNED | 12/12/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Dec 12 20:07:44 EST 2007 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20071212200744500635-7667 5312-41081755acfb4fb14d52 2c5bb9c396dd5d-N/A-N/A-20 071212195902465695 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Applicant’s mark is A FINE MESS and Design, U.S. Trademark Application serial no. 76/675,312, for use in connection with “watches; watch straps; bracelets; watch buckles; jewelry; imitation jewelry; clocks; ornamental pins; precious metals and their alloys; goods in precious metals or coated, namely charms, rings, earrings, ankle bracelets, brooches and cuff links; key rings and key chains made of precious metal” in International Class 14 (“Applicant’s Mark”), as amended per the current Office Action Response.
Registration of Applicant’s Mark has been refused based on a finding of a likelihood of confusion with the mark ANOTHER FINE MESS, U.S. Trademark Registration no. 2,552,838 for use in connection with “Clothing, namely T-shirts, sweatshirts, socks, sweatsuits, pants, shorts, jackets, jogging suits, and shirts; aprons; footwear; neckwear; suspenders; and headwear” in International Class 25 (the “Cited Mark”).
Although the Applicant’s Mark and the Cited Mark relate to clothing, and contain the words FINE MESS, among others, Applicant submits that there is still no likelihood of confusion. Among the factors to consider in a likelihood of confusion analysis, the principal factors relevant to this case are the similarities in appearance, sound, connotation and commercial impression of the marks. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In such an analysis, the Examining Attorney must consider the trademarks in their entirety to determine whether or not there may be a likelihood of confusion. General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 3 USPQ2d 1442, 1445 (8th Cir. 1987). Further, a likelihood of confusion may not be predicated on only part of a mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992) (stating that marks tend to be perceived in their entireties, and all components thereof must be given appropriate weight).
When comparing conflicting marks, a mark should not be dissected into its component parts and each part then compared with corresponding parts of the conflicting mark to determine a likelihood of confusion. 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. Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538 (U.S. 1920). As the Supreme Court noted, “[t]he commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety and to strike out any considerable part of it, certainly any conspicuous part of it, would be to greatly affect its value.” Id. at 546-547.
In In re Electrolyte Laboratories, 16 USPQ2d 1239 (CA FC 1990), the Federal Court of Appeals overturned the TTAB holding that it erred by focusing on one element at the substantial exclusion of all others. Applicant’s stylized “K+” mark for dietary potassium supplement, was not likely to cause confusion with the mark “K+EFF,” also for potassium supplement, because applicant's mark was a composite whose design was a significant feature, “EFF” in registrant’s mark was also significant, and the symbols and abbreviations in the mark were not identical.
Here, the Examining Attorney focuses on the wording FINE MESS, based on the allegation that the word portion is more dominant than the design portion, to the substantial exclusion of the additional elements in Applicant’s Mark. Respectfully, and to remain consistent with the holding of In re Electrolyte Laboratories, the Examining Attorney should not ignore the particular stylization and font prominently featured in Applicant’s Mark. These stylistic design features are equally as dominant as the wording, and therefore, are just as likely to be impressed in the minds of purchasers.
Accordingly, consumers will likely recall the wording ANOTHER FINE MESS in the Cited Mark and the stylized font in Applicant’s Mark, rather than the merely the similarity of the phrase FINE MESS. In such a comparison, it is likely that the typical consumer will be able to distinguish the marks, and thus the goods, of the respective owners.
In addition to the aforementioned differences in appearance, Applicant’s Mark and the Cited Mark also differ in sound. A phonetic comparison of the marks A FINE MESS and ANOTHER FINE MESS immediately reveals the distinct oral quality of each mark. Moreover, as a general rule, consumers are more inclined to focus on the first word, phrase, prefix, or syllable in any trademark or services mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Thus, the presence of the letter A in Applicant’s Mark, as distinguished from the word ANOTHER in the Cited Mark, further assists in eliminating any potential consumer confusion.
Moreover, the appearance of the wording FINE MESS in each of the marks should not automatically result in a finding of a likelihood of confusion. Marks that contain some similar terms, but are very different when viewed as a whole are unlikely to cause consumer confusion as to their source. Keebler Co. v. Murray Bakery Prod., 866 F.2d 1386 (Fed. Cir. 1989). Any commonality created by the inclusion of the wording FINE MESS is greatly reduced by the additional words and stylization (or lack thereof) contributing to the overall commercial impressions of the marks. Consequently, such varied and obvious differences are unlikely to confuse consumers.
Finally, by stressing the portion “FINE MESS,” the Examining Attorney improperly changes the mark to merely FINE MESS. This scenario was addressed in In re Hearst Corp., 25 USPQ2d 1238 (CA FC 1992), where, with respect to the mark VARGAS GIRL, the Court noted that by stressing the portion “varga” (because it was dominant) and diminishing the portion “girl” (because it was descriptive), the Board inappropriately changed the mark. In view of this holding, the Examining Attorney must not ignore the additional wording in the marks at issue.
In sum, the dominant elements in Applicant’s Mark are the words and design features, while the dominant element in the Cited Mark is simply the wording ANOTHER FINE MESS. Both marks differ in sound, appearance, and commercial impression. Specifically, the different wording and design features incorporated into Applicant’s Mark assist in conveying a quite dissimilar impression to the consuming public. For the reasons stated above, the marks when viewed as a whole are not similar.
CONCLUSION
In light of the foregoing, Applicant submits that there is no likelihood of confusion among Applicant’s Mark and the Cited Mark.
WHEREFORE, Applicant prays that the Examining Attorney’s refusal of registration be reversed and that registration be granted.