| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 76707587 |
| LAW OFFICE ASSIGNED | LAW OFFICE 106 |
| MARK SECTION | |
| MARK FILE NAME | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=76707587 |
| LITERAL ELEMENT | EARTH WEAR |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
Color is not claimed as a feature of the mark. |
| ARGUMENT(S) | |
|
THE SECTION 2(d) REJECTION The application has been initially rejected based on prior Registration Nos. 1371439, 1575103, 2199118, 2249826, 2668138, 3526963, 3572276 and 3585728, all for EARTH in Class 25. For the reasons set forth below, it is respectfully requested that the Section 2(d) citation be withdrawn, and the application be moved towards allowance. Applicant's mark, EARTH WEAR, would not create a likelihood of confusion with the cited registrations, based on the arguments below.
Reg. No. 1575103 – EARTHWEAR; Ser. No. 85138415 - CANNABEACH EARTHWEAR
Reg. No. 1575103 for EARTHWEAR has expired. This mark registered on January 2, 1990. A second renewal was due on or before January 2, 2010. No such renewal was filed, and the grace period for a late-filed renewal has expired. Similarly, Ser. No. 85138415 for CANNABEACH EARTHWEAR has been abandoned. Therefore, this registration and the formerly pending application should be withdrawn as 2(d) citations against Applicant’s Mark.
No Likelihood of Confusion – Marks Must be Considered in their Entireties Evaluating the similarity between a registered mark and an applicant's mark requires examination of the appearance, sound, connotation, and commercial impression of the two marks. In re Coors Brewing Co., 343 F.3d 1340, 1343 (Fed. Cir. 2003). With respect to the marks themselves, it is a basic rule in comparison of trademarks that the marks must be considered in their entireties in determining whether there is likelihood of confusion or mistake. Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 1402 (C.C.P.A. 1974). Additional terms in marks must be considered in comparing the marks in their entireties. Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1242 (Fed. Cir. 2004). It is well-settled that marks must be considered in their entireties, not dissected or split into component parts and each part compared with other parts. In re Waldman Diamonds Complete, LLC 2003 TTAB LEXIS 40 (TTAB 2003). This is so because it is the entire mark which is perceived by the purchasing public, and therefore, it is the entire mark that must be compared to any other mark. Id. It is the impression created by the involved marks, each considered as a whole that is important. See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); and Franklin Mint Corporation v. Master Manufacturing Company, 667 F.2d 1005, 212 USPQ 233 (CCPA 1981). See also, 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 23:41 (4th ed. 2001). As stated above, the Examining Attorney must consider each of the marks as a whole, and not dismiss the additional elements of those marks, namely the additional term “WEAR.” When the marks are considered in their entireties, the differences outweigh the similarities. Applicant’s mark contains the additional distinguishing term “WEAR,” unlike the cited registered marks, which consist solely of the term “EARTH.” This creates a distinctly different appearance when the registered marks are compared to Applicant’s mark. The additional term in each instance creates a distinctly different commercial impression from Applicant’s mark EARTH WEAR standing alone. A case very much on point is In re Hearst Corp., 982 F.2d 493 (Fed.Cir.1992). In Hearst, the Federal Circuit Court reversed a Board decision that refused registration of VARGA GIRL because there was an alleged likelihood of confusion with the registered mark VARGAS. While noting that the determination is highly fact-specific, the Court stated: Although undoubtedly “varga” and “vargas” are similar, the marks must be considered in the way they are used and perceived. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.Cir.1985). Marks tend to be perceived in their entireties, and all components thereof must be given appropriate weight. See Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed.Cir.1992). The appearance, sound, sight, and commercial impression of VARGA GIRL derive significant contribution from the component “girl”. By stressing the portion “varga” and diminishing the portion “girl”, the Board inappropriately changed the mark. Although the weight given to the respective words is not entirely free of subjectivity, we believe that the Board erred in its diminution of the contribution of the word “girl”. When GIRL is given fair weight, along with VARGA, confusion with VARGAS becomes less likely.
982 F.2d at 494 (footnote omitted). Although the registered mark and the applicant's mark were both for calendars, the court held that VARGA GIRL and VARGAS are sufficiently different in sound, appearance, connotation, and commercial impression, to negate likelihood of confusion in terms of § 2(d) of the Lanham Act.” Id. In Hearst, the applicant’s mark incorporated the registrant’s entire mark, and added an additional term, “GIRL.” The same is true in this case. Applicant’s mark, like in Hearst, adds the additional term “WEAR.” The appearance, sound, sight, and commercial impression of EARTH WEAR derive significant contribution from the component of both “EARTH” and “WEAR” equally. By stressing only the portion “EARTH,” and thereby diminishing the remaining portion of the mark, the Examiner inappropriately changed the mark. Although the weight given to the respective words is not entirely free of subjectivity, the Examiner erred in her diminution of the contribution of the word “WEAR.” When each component part of Applicant’s mark is given fair weight, confusion with the registered mark becomes less likely.
No Likelihood of Confusion – Applicant’s Mark is Sufficiently Dissimilar and Creates a Different Commercial Impression
The fact that marks in question share a common term (in this case either “EARTH”) does not necessarily mean that the marks as a whole project the same image or impression. See Olay Company, Inc. v. Avon Products, Inc. 178 USPQ 502 (TTAB 1973). In Royal Petroleum Corporation v. River States Oil Company v. Union Oil Company of California, 136 USPQ 79 (TTAB 1962) the Board specifically held that “it has been consistently held that trademarks will not ordinarily be held confusingly similar because each of them includes a word of that type” (suggestive as opposed to arbitrary). As a result, the Board allowed: (1) Applicant Petroleum a registration for ROYAL for gasoline;
(2) Applicant Union a registration for ROYAL 76 for gasoline;
(3) Applicant River a registration for ROYAL with a background “RS” for gasolines;
(4) Applicant River a registration for ROYAL LUBE for lubricating oil.
Obviously, only minor differences were required to avoid confusion, when all of the marks include the term ROYAL. In this case, the cumulative differences are greater than what existed in the Royal case. Here the marks are clearly distinguishable. Each of the cited registered marks is a single word mark, while Applicant’s mark is a composite mark containing additional terms, as discussed above. The composite mark EARTH WEAR creates a distinctly different commercial impression on the consumer, so much so that a consumer would not confuse the cited marks with Applicant’s mark. The fact that one mark may bring another mark to mind does not in itself establish likelihood of confusion as to source. Application of Ferrero 479 F.2d 1395, 1397 (Cust. & Pat.App.1973). The very fact of calling to mind may indicate that the mind is distinguishing, rather than being confused by, two marks. Id. In Ferrero, the Court of Customs and Patent Appeals held that the Examiner had improperly refused to allow registration of word mark “TIC TAC” for candy because of likelihood of confusion with the prior registered word mark “TIC TAC TOE” for ice cream and sherbet. The Court stated: We feel that the Board has made too much of the indisputable fact that TIC TAC is two-thirds of TIC TAC TOE and that TIC TAC would “bring to mind” TIC TAC TOE. Neither fact determines the issue of likelihood of confusion. See our opinion in In re General Electric Co., 304 F.2d 688, 49 CCPA 1186 (1962) in which we held VULKENE registrable over VULCAN … Compare Lever Brothers Co. v. Producers Chemical Service, WEAR3 F.2d 879, 48 CCPA 744 (1960) … In Lever Brothers we unanimously found SHUX registrable over LUX for like goods (off-the-shelf soap products) while fully conscious of the fact that purchasers seeing or hearing SHUX would almost certainly think of LUX-and at the same instant realize the distinction. Seeing a yellow traffic light immediately “calls to mind” the green that has gone and the red that is to come, or vice versa; that does not mean that confusion is being caused. As we are conditioned, it means exactly the opposite.
The same is true in this case. The fact that Applicant’s mark and the cited registrations share the terms EARTH does not mean that there is a likelihood of confusion, nor does the fact that the registrant’s entire marks are part of Applicant’s mark mean there is a likelihood of confusion. While Applicant’s mark may cause some consumers to think of the cited marks, they will still recognize the significant distinction between them, especially due to the additional terms employed by Applicant, and would immediately recognize that said absence means that Applicant’s goods do not emanate from the same source as those of the cited mark.
No Likelihood of Confusion – EARTH is a Weak Mark and Is Afforded Only a Narrow Scope of Protection
The elements of Applicant’s mark and the cited marks are terms used in ordinary parlance, are less than arbitrary when applied to these types of goods, and are exceedingly weak. Third party marks clearly establish that the term “EARTH” is an exceedingly weak mark entitled to a very narrow scope of protection. EARTH, and variations thereof, is so widely used and registered that the same must be considered a weak mark. A cursory search of the USPTO records discloses 3,614 EARTH or EARTH-based marks are currently active. (See Exhibit A, attached hereto). There are 980 EARTH or EARTH-based marks of record in Class 25 alone, and there 311 EARTH or EARTH-based marks live for EARTH or EARTH-based marks, in Class 25 alone. If the above marks are all permitted to co-exist in Class 25, then clearly there is no likelihood of confusion between them. The differences between the above-referenced marks and the cited marks are no greater than differences between Applicant’s mark and the cited marks. It necessarily follows that there would therefore be the same absence of confusion between Applicant’s and the cited marks. The basis of the weak mark doctrine was clearly explained in Sure-Fit Products Co. v. Saltzson Drapery Co., 117 USPQ 295, 297 (CCPA 1958): It seems both logical and obvious to us that where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owner of strong trademarks. Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights. The essence of all we have said is that in the former case there is not the possibility of confusion that exists in the latter case.
As held by the Board in Bost Bakery v. Roland Industries, Inc., 216 USPQ 799 (TTAB 1982) at page 891: Moreover, the principle that similarity between the marks in meaning or commercial significance alone may be sufficient to create a likelihood of confusion is applicable primarily to situations where marks are coined or arbitrary rather than highly suggestive in cast. Penn Dairies, Inc. v. Pennsylvania Agricultural Cooperative Marketing Assn., 200 USPQ 462 (TTAB 1978) (“PENN BEST” and “PENSURPREME” held not confusing for, among other things, soft drinks); In re Haddock, 181 USPQ 796 (TTAB 1974) (“MINI-BASS” and “LIL’ BASS” held not confusing for fish lures); Sure-Fit Products, Co. v. Saltzson Drapery Co., 117 USPQ 295 (CCPA 1958) “RITE-FIT” and “SURE-FIT” held not confusing for slipcovers).
Just as several other entities have done, Applicant is seeking to register a unique mark, but the term EARTH is a weak and widely used term. To maintain the 2(d) citations would give the owners of the same a greater degree of protection than would be afforded by the TTAB in the event of an opposition and/or cancellation proceeding – see In re Dayco Products-Eaglemotive Inc. 9 USPQ2d 1910 (TTAB 1988). EARTH-based and marks have several characteristics that weigh against affording them broad trademark protection. First, EARTH is widely registered for a variety of goods and services, as demonstrated above. This dilutes the strength of the marks and entitles them to only a narrower range of protection. See Exxon Corp. v. Texas Motor Exchange, 6WEAR F.2d 500, 208 USPQ 384 (5th Cir. 1980). “The greater the number of identical or more or less similar trade-marks already in use on different kinds of goods, the less is the likelihood of confusion.” Id. at 504 (quoting Restatement of Torts §729, comment g (1938)); see also Amstar Corp. v. Domino's Pizza, 615 F.2d 252, 259-60, 205 USPQ 969, 975 (5th Cir.), cert denied, 449 U.S. 899, 208 USPQ 464 (1980). Variations of EARTH have been adopted by a myriad of other trademark owners for a wide variety of goods, including goods that overlap. The ultimate test of relative strength is the distinctiveness of a mark in the mind and perception of the relevant customer group. J.T. McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. 2008) at § 11:85. But a mark that is hemmed in on all sides by similar marks on similar goods cannot be very “distinctive.” Id. It is merely one of a crowd of marks. Id. In such a crowd, customers will not likely be confused between any two of the crowd and may have learned to carefully pick out one from the other. Id. When numerous sellers in a product line use similar marks, individual distinctiveness may be blurred and consumers may have difficulty telling one seller from another. Id. “[I]f consumers don't have a clear sense of what plaintiff's mark represents, they are unlikely to purchase defendant's product or service thinking it is plaintiff's.” Id. Thus, in a “crowded” field of similar marks, each member of the crowd is relatively “weak” in its ability to prevent use by others in the crowd. Id. Accordingly, Applicant respectfully requests that the cited prior registrations be withdrawn as potential conflicts to registration of Applicant’s mark.
|
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| ADDITIONAL STATEMENTS SECTION | |
| DISCLAIMER | No claim is made to the exclusive right to use WEAR apart from the mark as shown. |
| MISCELLANEOUS STATEMENT | The mark consists of standard characters without claim to any particular font style, size, or color. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /brian gaynor/ |
| SIGNATORY'S NAME | Brian M. Gaynor |
| SIGNATORY'S POSITION | attorney |
| DATE SIGNED | 12/27/2011 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Dec 27 16:05:42 EST 2011 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20111227160542839267-7670 7587-4909d40fbaa5821dd5d2 736fdafec927432-N/A-N/A-2 0111227160012482263 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
THE SECTION 2(d) REJECTION
The application has been initially rejected based on prior Registration Nos. 1371439, 1575103, 2199118, 2249826, 2668138, 3526963, 3572276 and 3585728, all for EARTH in Class 25. For the reasons set forth below, it is respectfully requested that the Section 2(d) citation be withdrawn, and the application be moved towards allowance. Applicant's mark, EARTH WEAR, would not create a likelihood of confusion with the cited registrations, based on the arguments below.
Reg. No. 1575103 – EARTHWEAR; Ser. No. 85138415 - CANNABEACH EARTHWEAR
Reg. No. 1575103 for EARTHWEAR has expired. This mark registered on January 2, 1990. A second renewal was due on or before January 2, 2010. No such renewal was filed, and the grace period for a late-filed renewal has expired. Similarly, Ser. No. 85138415 for CANNABEACH EARTHWEAR has been abandoned. Therefore, this registration and the formerly pending application should be withdrawn as 2(d) citations against Applicant’s Mark.
No Likelihood of Confusion – Marks Must be Considered in their Entireties
Evaluating the similarity between a registered mark and an applicant's mark requires examination of the appearance, sound, connotation, and commercial impression of the two marks. In re Coors Brewing Co., 343 F.3d 1340, 1343 (Fed. Cir. 2003). With respect to the marks themselves, it is a basic rule in comparison of trademarks that the marks must be considered in their entireties in determining whether there is likelihood of confusion or mistake. Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 1402 (C.C.P.A. 1974). Additional terms in marks must be considered in comparing the marks in their entireties. Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1242 (Fed. Cir. 2004).
It is well-settled that marks must be considered in their entireties, not dissected or split into component parts and each part compared with other parts. In re Waldman Diamonds Complete, LLC 2003 TTAB LEXIS 40 (TTAB 2003). This is so because it is the entire mark which is perceived by the purchasing public, and therefore, it is the entire mark that must be compared to any other mark. Id. It is the impression created by the involved marks, each considered as a whole that is important. See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); and Franklin Mint Corporation v. Master Manufacturing Company, 667 F.2d 1005, 212 USPQ 233 (CCPA 1981). See also, 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 23:41 (4th ed. 2001).
As stated above, the Examining Attorney must consider each of the marks as a whole, and not dismiss the additional elements of those marks, namely the additional term “WEAR.” When the marks are considered in their entireties, the differences outweigh the similarities. Applicant’s mark contains the additional distinguishing term “WEAR,” unlike the cited registered marks, which consist solely of the term “EARTH.” This creates a distinctly different appearance when the registered marks are compared to Applicant’s mark. The additional term in each instance creates a distinctly different commercial impression from Applicant’s mark EARTH WEAR standing alone.
A case very much on point is In re Hearst Corp., 982 F.2d 493 (Fed.Cir.1992). In Hearst, the Federal Circuit Court reversed a Board decision that refused registration of VARGA GIRL because there was an alleged likelihood of confusion with the registered mark VARGAS. While noting that the determination is highly fact-specific, the Court stated:
Although undoubtedly “varga” and “vargas” are similar, the marks must be considered in the way they are used and perceived. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.Cir.1985). Marks tend to be perceived in their entireties, and all components thereof must be given appropriate weight. See Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed.Cir.1992). The appearance, sound, sight, and commercial impression of VARGA GIRL derive significant contribution from the component “girl”. By stressing the portion “varga” and diminishing the portion “girl”, the Board inappropriately changed the mark. Although the weight given to the respective words is not entirely free of subjectivity, we believe that the Board erred in its diminution of the contribution of the word “girl”. When GIRL is given fair weight, along with VARGA, confusion with VARGAS becomes less likely.
982 F.2d at 494 (footnote omitted). Although the registered mark and the applicant's mark were both for calendars, the court held that VARGA GIRL and VARGAS are sufficiently different in sound, appearance, connotation, and commercial impression, to negate likelihood of confusion in terms of § 2(d) of the Lanham Act.” Id.
In Hearst, the applicant’s mark incorporated the registrant’s entire mark, and added an additional term, “GIRL.” The same is true in this case. Applicant’s mark, like in Hearst, adds the additional term “WEAR.” The appearance, sound, sight, and commercial impression of EARTH WEAR derive significant contribution from the component of both “EARTH” and “WEAR” equally. By stressing only the portion “EARTH,” and thereby diminishing the remaining portion of the mark, the Examiner inappropriately changed the mark. Although the weight given to the respective words is not entirely free of subjectivity, the Examiner erred in her diminution of the contribution of the word “WEAR.” When each component part of Applicant’s mark is given fair weight, confusion with the registered mark becomes less likely.
No Likelihood of Confusion – Applicant’s Mark is Sufficiently Dissimilar and Creates a Different Commercial Impression
The fact that marks in question share a common term (in this case either “EARTH”) does not necessarily mean that the marks as a whole project the same image or impression. See Olay Company, Inc. v. Avon Products, Inc. 178 USPQ 502 (TTAB 1973). In Royal Petroleum Corporation v. River States Oil Company v. Union Oil Company of California, 136 USPQ 79 (TTAB 1962) the Board specifically held that “it has been consistently held that trademarks will not ordinarily be held confusingly similar because each of them includes a word of that type” (suggestive as opposed to arbitrary). As a result, the Board allowed:
(1) Applicant Petroleum a registration for ROYAL for gasoline;
(2) Applicant Union a registration for ROYAL 76 for gasoline;
(3) Applicant River a registration for ROYAL with a background “RS” for
gasolines;
(4) Applicant River a registration for ROYAL LUBE for lubricating oil.
Obviously, only minor differences were required to avoid confusion, when all of the marks include the term ROYAL. In this case, the cumulative differences are greater than what existed in the Royal case. Here the marks are clearly distinguishable. Each of the cited registered marks is a single word mark, while Applicant’s mark is a composite mark containing additional terms, as discussed above. The composite mark EARTH WEAR creates a distinctly different commercial impression on the consumer, so much so that a consumer would not confuse the cited marks with Applicant’s mark.
The fact that one mark may bring another mark to mind does not in itself establish likelihood of confusion as to source. Application of Ferrero 479 F.2d 1395, 1397 (Cust. & Pat.App.1973). The very fact of calling to mind may indicate that the mind is distinguishing, rather than being confused by, two marks. Id.
In Ferrero, the Court of Customs and Patent Appeals held that the Examiner had improperly refused to allow registration of word mark “TIC TAC” for candy because of likelihood of confusion with the prior registered word mark “TIC TAC TOE” for ice cream and sherbet. The Court stated:
We feel that the Board has made too much of the indisputable fact that TIC TAC is two-thirds of TIC TAC TOE and that TIC TAC would “bring to mind” TIC TAC TOE. Neither fact determines the issue of likelihood of confusion. See our opinion in In re General Electric Co., 304 F.2d 688, 49 CCPA 1186 (1962) in which we held VULKENE registrable over VULCAN … Compare Lever Brothers Co. v. Producers Chemical Service, WEAR3 F.2d 879, 48 CCPA 744 (1960) … In Lever Brothers we unanimously found SHUX registrable over LUX for like goods (off-the-shelf soap products) while fully conscious of the fact that purchasers seeing or hearing SHUX would almost certainly think of LUX-and at the same instant realize the distinction. Seeing a yellow traffic light immediately “calls to mind” the green that has gone and the red that is to come, or vice versa; that does not mean that confusion is being caused. As we are conditioned, it means exactly the opposite.
The same is true in this case. The fact that Applicant’s mark and the cited registrations share the terms EARTH does not mean that there is a likelihood of confusion, nor does the fact that the registrant’s entire marks are part of Applicant’s mark mean there is a likelihood of confusion. While Applicant’s mark may cause some consumers to think of the cited marks, they will still recognize the significant distinction between them, especially due to the additional terms employed by Applicant, and would immediately recognize that said absence means that Applicant’s goods do not emanate from the same source as those of the cited mark.
No Likelihood of Confusion – EARTH is a Weak Mark and Is Afforded Only a Narrow Scope of Protection
The elements of Applicant’s mark and the cited marks are terms used in ordinary parlance, are less than arbitrary when applied to these types of goods, and are exceedingly weak. Third party marks clearly establish that the term “EARTH” is an exceedingly weak mark entitled to a very narrow scope of protection. EARTH, and variations thereof, is so widely used and registered that the same must be considered a weak mark. A cursory search of the USPTO records discloses 3,614 EARTH or EARTH-based marks are currently active. (See Exhibit A, attached hereto). There are 980 EARTH or EARTH-based marks of record in Class 25 alone, and there 311 EARTH or EARTH-based marks live for EARTH or EARTH-based marks, in Class 25 alone.
If the above marks are all permitted to co-exist in Class 25, then clearly there is no likelihood of confusion between them. The differences between the above-referenced marks and the cited marks are no greater than differences between Applicant’s mark and the cited marks. It necessarily follows that there would therefore be the same absence of confusion between Applicant’s and the cited marks.
The basis of the weak mark doctrine was clearly explained in Sure-Fit Products Co. v. Saltzson Drapery Co., 117 USPQ 295, 297 (CCPA 1958):
It seems both logical and obvious to us that where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owner of strong trademarks. Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights. The essence of all we have said is that in the former case there is not the possibility of confusion that exists in the latter case.
As held by the Board in Bost Bakery v. Roland Industries, Inc., 216 USPQ 799 (TTAB 1982) at page 891:
Moreover, the principle that similarity between the marks in meaning or commercial significance alone may be sufficient to create a likelihood of confusion is applicable primarily to situations where marks are coined or arbitrary rather than highly suggestive in cast. Penn Dairies, Inc. v. Pennsylvania Agricultural Cooperative Marketing Assn., 200 USPQ 462 (TTAB 1978) (“PENN BEST” and “PENSURPREME” held not confusing for, among other things, soft drinks); In re Haddock, 181 USPQ 796 (TTAB 1974) (“MINI-BASS” and “LIL’ BASS” held not confusing for fish lures); Sure-Fit Products, Co. v. Saltzson Drapery Co., 117 USPQ 295 (CCPA 1958) “RITE-FIT” and “SURE-FIT” held not confusing for slipcovers).
Just as several other entities have done, Applicant is seeking to register a unique mark, but the term EARTH is a weak and widely used term. To maintain the 2(d) citations would give the owners of the same a greater degree of protection than would be afforded by the TTAB in the event of an opposition and/or cancellation proceeding – see In re Dayco Products-Eaglemotive Inc. 9 USPQ2d 1910 (TTAB 1988).
EARTH-based and marks have several characteristics that weigh against affording them broad trademark protection. First, EARTH is widely registered for a variety of goods and services, as demonstrated above. This dilutes the strength of the marks and entitles them to only a narrower range of protection. See Exxon Corp. v. Texas Motor Exchange, 6WEAR F.2d 500, 208 USPQ 384 (5th Cir. 1980). “The greater the number of identical or more or less similar trade-marks already in use on different kinds of goods, the less is the likelihood of confusion.” Id. at 504 (quoting Restatement of Torts §729, comment g (1938)); see also Amstar Corp. v. Domino's Pizza, 615 F.2d 252, 259-60, 205 USPQ 969, 975 (5th Cir.), cert denied, 449 U.S. 899, 208 USPQ 464 (1980). Variations of EARTH have been adopted by a myriad of other trademark owners for a wide variety of goods, including goods that overlap.
The ultimate test of relative strength is the distinctiveness of a mark in the mind and perception of the relevant customer group. J.T. McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. 2008) at § 11:85. But a mark that is hemmed in on all sides by similar marks on similar goods cannot be very “distinctive.” Id. It is merely one of a crowd of marks. Id. In such a crowd, customers will not likely be confused between any two of the crowd and may have learned to carefully pick out one from the other. Id. When numerous sellers in a product line use similar marks, individual distinctiveness may be blurred and consumers may have difficulty telling one seller from another. Id. “[I]f consumers don't have a clear sense of what plaintiff's mark represents, they are unlikely to purchase defendant's product or service thinking it is plaintiff's.” Id. Thus, in a “crowded” field of similar marks, each member of the crowd is relatively “weak” in its ability to prevent use by others in the crowd. Id.
Accordingly, Applicant respectfully requests that the cited prior registrations be withdrawn as potential conflicts to registration of Applicant’s mark.