Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77027457 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

RESPONSE TO OFFICE ACTION

In her Mach 6, 2007, Office Action, the Examining Attorney refused registration of Applicant’s mark based on a likelihood of confusion with THE CLEAR CHOICE Reg. No. 2,284,310 registered as a house mark for use with a full line of electronic components in IC 009; and CLEAR CHOICE Reg. No. 2,107,243 registered for use with hearing aids and hearing aid batteries in IC 010.  The Examining Attorney further refused registration of Applicant's mark based on a likelihood of confusion with pending applications CLEAR CHOICE AUDIOLOGY Ser. No. 78/940,757 pending for use with hearing aid services, and CLEAR CHOICE HEARING CENTER Ser. No. 78/945,766 pending for use with a hearing aid sales and service center. 

1.                  Amendment - Identification of Goods.

Applicant requests amendment of this application by deletion of the goods in International Class (“IC”) 010, which leaves the application requesting registration of CLEAR CHOICE for use with the following goods in IC 009, namely:

"Audio equipment for vehicles, namely, stereos, speakers, amplifiers, equalizers, crossovers and speaker housings; Audio speakers; Cellular telephones; Cordless telephones; Headphones; Headsets for telephones; Personal headphones for use with sound transmitting systems". 

2.                  Refusal Under Section 2(d) - Likelihood of Confusion.

Likelihood of confusion between a mark for which registration is sought and a previously registered mark is determined on a case by case basis, applying the factors set out in In re E. I. du Pont De Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973); and in Packard Press, Inc. v. Hewlett-Packard Company, 227 F.3d 1352, 56 U.S.P.Q. 1351 (Fed. Cir. 2000).  The du Pont factors are (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; (2) the similarity or dissimilarity and nature of the goods described in the application or registration of the mark, or in connection with which a prior mark is in use; (3) the similarity or dissimilarity of established, likely-to-continue trade channels; (4) the conditions under which and the buyers to whom sales are made; (5) the fame of the prior mark; (6) the number and nature of similar marks in use on similar goods; (7) the nature and extent of any actual confusion; (8) the length of time during and the conditions under which there has been concurrent use without evidence of actual confusion; (9) the variety of goods on which a mark is or is not used; (10) the market interface between the Applicant and the owner of a prior mark; (11) the extent to which the Applicant has a right to exclude others from use of its mark on its goods; (12) the extent of potential confusion; and (13) any other established fact probative of the effect of use.  See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973); In re National Data Corp., 753 F.2d 1056, 1058, 224 U.S.P.Q. 749, 750-51 (Fed. Cir. 1985); TMEP Section 1207.01; 15 U.S.C.A. § 1052(d). 

In ex parte examination, the issue of likelihood of confusion typically revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or services.  TMEP Section 1207.01.  However, other factors listed above may be considered if relevant evidence is contained in the record.  See In re National Novice Hockey League, Inc., 222 U.S.P.Q. 638, 640 (TTAB 1984). 

a.                   Applicant’s goods are dissimilar to those offered by the owner of Reg. No. 2,107,243.  

A basic determinant as to likelihood of confusion between marks goes to the differences in the goods or services at issue.  See Federated Foods, Inc. v. Fort Howard Paper Co., 192 U.S.P.Q. 24, 29 (C.C.P.A. 1976).  The goods or services of the respective marks must be compared to determine if they are related or if the activities surrounding their marketing are such that confusion of origin is likely.  See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973).  It is quite possible for no likelihood of confusion to exist even between marks that may appear quite similar, where the respective goods or services to which the marks are applied are such that prospective customers are not likely to assume that those goods or services share a common source.  The nature of the respective party’s goods or services is determined based on the goods or services description set forth in the application or registration.  See In re Dixie Restaurants Inc., 41 U.S.P.Q.2d 1531, 1534 (Fed. Cir. 1997) (“Indeed, the second du Pont factor expressly mandates consideration of the similarity or dissimilarity of the goods or services as described in an application or registration.”).

Applicant uses CLEAR CHOICE with IC 009 goods listed in the present application, namely, audio equipment for vehicles, namely, stereos, speakers, amplifiers, equalizers, crossovers and speaker housings; audio speakers; cellular telephones; cordless telephones; headphones; headsets for telephones; and personal headphones for use with sound transmitting systems; but does not intend to use CLEAR CHOICE with hearing aids and related goods in IC 010, as shown by the Applicant’s deletion of any reference to IC 010 goods from the present application.  In contrast, CLEAR CHOICE Reg. No. 2,107,243 is registered for use with hearing aids and hearing aid batteries in IC 010.  Because the goods in the present application differ from those set out in Reg. No. 2,107,243, confusion is not likely. 

Moreover, the last date for renewal of CLEAR CHOICE Reg. No. 2,107,243 (assuming the normal one-year renewal period) is October 21, 2007.  If the Examining Attorney has any reservations about withdrawing her rejection of this application based upon CLEAR CHOICE Reg. No. 2,107,243, Applicant respectfully requests that she suspend action on this application until the end of the renewal period or until the registrant files its application for renewal of CLEAR CHOICE Reg. No. 2,107,243 and such application is accepted and granted. 

b.                  Applicant’s goods are offered in a particular channel of trade, one the owner of Reg. No. 2,284,310 does not use. 

Also in support of Applicant’s position are the dissimilar channels of trade in which the goods of the registrant and the Applicant travel.  If the goods offered by the owner of THE CLEAR CHOICE Reg. No. 2,284,310 are offered to one class of buyers in a different marketing context than the goods of the Applicant, the likelihood that similar trademarks will confuse consumers does not exist.  See Oxford Industries, Inc. v. JBJ Fabrics, Inc., 6 U.S.P.Q.2d 1756 (S.D.N.Y. 1988).  For example, the Federal Circuit found no likelihood of confusion where plaintiff offered “E.D.S.” computer services while defendant sold “EDS” power supplies and battery chargers.  This was determined as sales were made in different channels of trade to different people, even though there was some overlap in the markets.  See Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 21 U.S.P.Q.2d 1988 (Fed. Cir. 1992).  Here, the Applicant’s goods are directed to consumers, particularly consumers with sensory or cognitive impairments and are sold at retail through its website www.ableplanet.com, and through authorized resellers.  None of the goods offered by the owner of the cited registrations is offered at Applicant’s website, nor is registrant authorized to sell Applicant's goods.  See Exhibit A from Applicant's web site at www.ableplanet.com.  Since the goods of the respective parties are available only through separate channels, it is unlikely that a consumer would be offered both of the parties’ goods simultaneously, thereby obviating confusion. 

c.                   The conditions under which sales are made and the buyers to whom they are made cause careful evaluation of the goods offered by the Applicant and by the owner of Reg. No. 2,284,310.

Conditions under which purchases of a particular kind of good or service are made, i.e., “impulse” versus careful, are to be considered in determining likelihood of confusion.  TMEP Section 1207.01, citing In re E.I. duPont de Nemours & Co., at 1360-62.  When the relevant buyer class is composed of professional purchasers such as real estate brokers, consulting engineers, or contractors, the likelihood of confusion will be lower.  See Jet, Inc v. Sewage Aeration Systems, 165 F. 2d 419, 423 40 U.S.P.Q. 2d 1355 (6th Cir. 1999) citing Homeowners Group, Inc. v. Home Mktg. Specialists, Inc., 931 F. 2d 1100, 1111 (6th Cir. 1991); Industrial Nucleonics Corp. v. Hinde, 475 F. 2d 1197, 1199, 177 U.S.P.Q. 386 (C.C.P.A. 1973).  As the Sixth Circuit recently stated:

“Generally, in assessing the likelihood of confusion to the public, the standard used by the courts is the typical buyer exercising ordinary caution.  However, when a buyer has expertise or is otherwise more sophisticated with respect to the purchase of the services at issue, a higher standard is proper.  Similarly, when services are expensive or unusual, the buyer can be expected to exercise greater care in her purchases.  When services are sold to such buyers, other things being equal, there is less likelihood of confusion.  For example, home buyers will display a high degree of care when selecting their real estate brokers, whereas consumers of fast-food are unlikely to employ much care during their purchases.” 

Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Center, 109 F.3d 275, 285, 42 U.S.P.Q.2d 1173, (6th Cir. 1997) (internal cites omitted).

The Applicant’s goods and the goods in connection with the cited applications will be sold to consumers with a certain degree of sophistication.  Consumers who purchase electronic components or audio devices, especially those who are hearing impaired and have specific technology in mind, are unlikely to be confused by similarities between marks. 

d.                  Applicant’s goods are dissimilar to the services offered by the owner of Ser. No. 78/940,757. 

A basic determinant as to likelihood of confusion between marks goes to the differences in the goods or services at issue.  See Federated Foods, Inc. v. Fort Howard Paper Co., 192 U.S.P.Q. 24, 29 (C.C.P.A. 1976).  The goods or services of the respective marks must be compared to determine if they are related or if the activities surrounding their marketing are such that confusion of origin is likely.  See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973).  It is quite possible for no likelihood of confusion to exist even between marks that may appear quite similar, where the respective goods or services to which the marks are applied are such that prospective customers are not likely to assume that those goods or services share a common source.  Here, Applicant is using CLEAR CHOICE with audio equipment for vehicles, namely, stereos, speakers, amplifiers, equalizers, crossovers and speaker housings; audio speakers; cellular telephones; cordless telephones; headphones; headsets for telephones; and personal headphones for use with sound transmitting systems.   In contrast, the owner filed application Ser. No. 78/940,757 alleging use of CLEAR CHOICE AUDIOLOGY with hearing aid services.  In light of the deletion of the hearing aids and related goods in IC 010 from this application, consumers are not likely to assume that headphones emanate from the same source as a provider of hearing aid services, and thus, confusion is not likely.

e.                   Abandonment – Ser. No. 78/945,766.

The Examining Attorney further refused registration of Applicant's mark based on a likelihood of confusion with Ser. No. 78/945,766.  According to the United States Patent and Trademark Office - Trademark Electronic Search System, this application for CLEAR CHOICE HEARING CENTER was abandoned on August 4, 2007.  Applicant therefore respectfully requests that the citation of this application as a barrier to registration of this application be removed. 

3.                     Informalities.

Applicant has also noted that as the result of a typographical error, its incorrect corporate name has been reflected in the records of the U.S. Patent and Trademark Office.  Pursuant to the attached Certificate of Incorporation of Able Planet, Incorporated signed July 20, 2005 and filed with the Delaware Secretary of State on July 20, 2005, the correct corporate name of the applicant is Able Planet, Incorporated.  Applicant therefore respectfully requests that its correct corporate name be reflected in the records of the Trademark Office with respect to this application. 

4.                  Conclusion.

For the reasons presented above, Applicant respectfully asserts that it has met all requirements set forth by the Examining Attorney in her March 6, 2007 Office Action.  Applicant therefore requests reconsideration of the application, as amended, and passing of this application to publication.

EVIDENCE
Evidence in the nature of Exhibit A consists of three website printouts from Able Planet's website. Also attached is the Certificate of Incorporation of Able Planet, Incorporated from the Delaware Secretary of State in support of the correction of Applicant's correct entity name. has been attached.
JPG file(s):
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_637692100-162540246_._DE_Certificate_of_Incorporation.pdf
Converted PDF file(s) (9 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 010 for Electric hearing aids; Electrical hearing aids; Electrically operated hearing aids; Hearing aids; Hearing aids for the deaf; Medical hearing instruments and parts of such devices; Wireless transmitters and receivers for use with hearing aids

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Able Planet Inc., a corporation of Delaware, having an address of 9500 West 49th Avenue, Unit B-100 Wheat Ridge, Colorado United States 80033, whose phone number is 303-271-9775, whose fax number is 303-215-9774.
Proposed: Able Planet, Incorporated, a corporation of Delaware, having an address of 9500 West 49th Avenue, Unit B-100 Wheat Ridge, Colorado United States 80033, whose phone number is 303-271-9775 and whose fax number is 303-215-9774.

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /kaw/     Date: 09/05/2007
Signatory's Name: Kimberly A. Wingate
Signatory's Position: Attorney of record

The signatory has confirmed that he/she is either (1) an attorney who is a member in good standing of the bar of the highest court of a U.S. state; or (2) a Canadian attorney/agent who has been granted reciprocal recognition under 37 C.F.R. §10.14(c) by the USPTO's Office of Enrollment and Discipline. He/she further confirms that (1) the applicant has not previously been represented in this matter by an authorized attorney; and (2) he/she is the applicant's attorney or an associate of that attorney.

        
Serial Number: 77027457
Internet Transmission Date: Wed Sep 05 17:52:17 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20070905175217740
105-77027457-380f98735e08affe0dd639e9fb2
48d5cb32-N/A-N/A-20070905162540246131