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. 77177145 has been amended as follows:

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

RESPONSE

Madam:

            This paper is filed in response to Examining Attorney’s Office Action dated August 27, 2007.  Attention has been paid to the preparation of this Response.   Applicant respectfully requests a reconsideration and advancement of the application to publication.

REMARKS

            The Trademark Office initially refused registration under Trademark Act Section 2(d) by stating that the mark so resembles Registration No. 2,511,950 (‘950 Registration) and Registration No. 2,710,520 (‘520 Registration) as to be likely to cause confusion, to cause mistake, or to deceive.  Applicant respectfully disagrees with this position and asserts that its mark is not confusingly similar to Registrant’s marks.  The Trademark Office also advises that Section 2(d) refusal may be issued if applications Serial Nos. 77/113,144 and 77/248,031 mature into registration.  Each issue will be addressed below.

 

The Refusal Under Section 2(d) and Potential Refusal Under Section 2(d) Should Be Withdrawn

            Applicant contends that the refusal under Trademark Act Section 2(d) be withdrawn.  The basis for the refusal is that Applicant’s product and Registrant’s product are similar since Applicant’s goods comprise a computer apparatus on which one can play video games and Registrant’s goods include LCD display panels, which can be used in connection with video game machines, as well as video game machines for use with televisions.   Further, Applicant presumes the potential refusal under Section 2(d) was issued as both Applicant’s goods and the goods of Applications Serial Nos. 77/113144 (‘144 application) and 77/248031 (‘031 application) include computer-related goods.  Applicant submits that the following discussion demonstrating a) the vast difference between products, b) the dissimilarity of the likely trade channels, and c) the sophistication of the purchasers show that no likelihood of confusion exists surrounding registration of Applicant’s mark.

 

Nature of Goods Described in Applications

 

            In Information Resources Inc. v. X*Press Information Services, 6 USPQ2d 1034 (TTAB 198), the Board addressed a situation where an application was rejected under Section 2(d) of the Trademark Act.  The rejection was based on the belief that a likelihood of confusion existed because both goods related to computers.  The Board specifically stated that “there is no ‘per se’ rule mandating that likelihood of confusion is to be found in all cases where the goods or services in question involve computer software and/or hardware.”  X*Press at 1038.  In addition, the Board reiterated its previous statement that “[a]s a result of the veritable explosion of technology in the computer field over the last several years and the almost limitless number of specialized products and specialized uses in this industry, we think that a per se rule relating to source confusion vis-a-vis computer hardware and software is simply too rigid and restrictive an approach and fails to consider the realities of the marketplace.”  X*Press at 1038, citing In re Quandram Corp., 228 USPQ 863, 865 (TTAB 1985).    Applicant asserts that its product is sufficiently dissimilar from Registrant’s product and the product/services in ‘144 and ‘031 application and that its product is not likely to be confused with Registrant’s product or the product and services in ‘144 and ‘031 application.

            Applicant’s product is desktop computers that can be used to play video games.   It has been established that high temperatures can lead to problems within a computer’s central processing unit.  Applicant’s product is designed to combat high temperatures due to prolonged use of video games overtaxing the hard drive.  Applicant’s product is technical and complex.  It is not intended to be used by casual video gamers interested in appeasing simple entertainment needs.  Rather, Applicant’s product is designed to be capable of providing video gaming needs for hard-core video gamers or high-tech video gamers interested in high-end video gaming.  

            Alternatively, Registrant goods include “LCD display panels” in ‘950 Registration and “LCD display panels, video game machines for use with televisions” in ‘520 Registration.  Unlike Applicant’s product, Registrant’s product is not the mechanical, electric, electronic, and magnetic components that make up the core of a computer system.  Further, Applicant submits that Registrant’s “video games machines for use with televisions” are likely not intended to be used for the same segment of the video gamer population as Applicant’s product. 

            Registrant’s product appears to be a video game machine, such as a console, which manipulates the video display signal of a television or monitor to display a game.  Alternatively, Applicant’s product is a technical, complex computer system.  Registrant’s video game machines or consoles are distinguishable from Applicant’s product in that video games consoles are machines designed for consumers to buy and use solely for playing video games, whereas a personal computer has multiple complex functions. 

            Moreover, Registrants products are intended use in marine audio systems, car audio systems and electronic displays.  (Exhibit A)  Thus, Applicant submits that Registrant’s “LCD display panels” are likely intended to be used as a component in their electronic display solutions.  Registrant advertises that their electronic display solutions are merchandising tools used by U.S. retailer, Best Buy, and electronics mass manufacturer, Frye Electronics.  These display solutions are intended to display and market car audio and home theater technology.  Thus, Applicant contends that due to the specialized purpose of Registrant’s “LCD display panels”, Registrant’s product will not be used in connection with Applicant’s product, as the Trademark Office contends.

            Lastly, the goods identified in ‘144 and ‘031 applications are “computer hardware and software for the integration of text, audio, graphics, still image and moving pictures into an interactive delivery for multimedia applications; computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; computer software for content management, intellectual property management, community content management; and web site development software”. 

            It appears that the goods identified in ‘144 and ‘031 applications are computer hardware and software designed for flexible, interactive control of multimedia applications which contain text, graphics, video, audio, and links to URLs, computer software for the managing, editing, and sharing of data, and computer software for website development.  Video game hardware or software is not identified as a product of ‘144 or ‘031 applications, nor does it appear that the product identified in ‘144 or ‘031 application is designed to be capable of the high-end video gaming Applicant’s product is capable of and designed for. 

            In conclusion, Applicant asserts that its product is sufficiently dissimilar from Registrant’s product and the product in ‘144 and ‘031 applications to preclude likelihood of confusion.

 

The Trade Channels of Each Product Differ

 

            Applicant targets its products to consumers who are interested in a personal computer system capable of performing high-end video gaming needs.   Applicant’s product is intricate computer hardware designed to combat overheating due to highly complex video games overtaxing the hard drive.  Consumers interested in Applicant’s product are no doubt aware of its reputation and intended use and are likely to seek out Applicant’s product if their needs so dictate.  Applicant’s goods will likely be marketed and provided to persons with a high degree of knowledge and familiarity concerning the goods.  Applicant’s product cannot be considered an impulse buy due to its complex nature and exorbitant price.  Lastly, consumers are not likely to find Applicant’s product in typical retail outlets.  Rather, Applicant’s product likely will be distributed though specialty electronic or computer stores or exclusively through the Applicant’s sales department.  

            Registrant's product includes electronic equipment, such as audio and video equipment, LCD display panels, and video game machines for use with televisions.  Purchasers of Registrant’s goods are likely aware from their marketing and advertising that Registrant specializes in car and marine audio and thus, in meeting the needs of “mobile entertainment enthusiasts” (Exhibit A).  Applicant submits that purchasers of Registrant’s goods seek out its goods due to this marketing and advertising.  Applicant submits that it appears that Registrant’s product is offered through typical electronic retail outlets or through retails outlets specializing in car audio equipment.  Further, Applicant contends that Registrant’s customers will likely not even be aware of Applicant’s product if they are merely looking for a product to meet their car audio or marine audio needs. 

            Further, it appears that Registrant’s “LCD display panels” are marketed towards retail stores and manufacturers, rather than end consumers.  Thus, Applicant submits that the channels of trade for Registrant’s “LCD display panels” are highly dissimilar to Applicant’s channels of trade. 

            It appears that the owner of ‘144 and ‘031 applications, Justin Beals (Beals) targets his product towards consumers searching for a product that will allow them to present, organize, edit, and share information in numerous formats and multimedia applications depending on the individual or group needs.  Beals’ product appears to be targeted towards web authors, database managers, or web site developers.  

            Since Applicant, Registrant, and Beals appear to target their respective products to different consumers, Applicant asserts that there is little likelihood of overlap between the distribution and marketing of these products.  Further, Applicant’s, Registrant’s, and Beals’ goods will not directly compete with each other.  Applicant further submits that these different and particular channels of trade are a key factor in why the marks can co-exist without confusion.   

 

The Sophistication of Applicant's Buyers Precludes Likelihood of Confusion

 

            Applicant contends that its product, Registrant’s product and Beals’ product are all marketed and provided to persons with a high degree of knowledge and familiarity concerning the goods.  Thus, none of the products are purchased impulsively.

            Applicant’s product is highly technical and complex.  Further, it requires a significant financial commitment.   Purchasers who are interested in using Applicant’s product will likely investigate the quality and applicability of the product to their own needs before committing to the purchase.  Consumers interested in Applicant’s product are no doubt aware of its reputation and intended use, and are likely to seek out Applicant’s product if their needs so dictate.  Further, Applicant’s consumers will likely investigate the product thoroughly before making the purchase.   As stated above, Applicant’s product is designed for hard-core video gamers or high-tech video gamers interested in high-end video gaming.   These purchasers are very selective in the purchases.  Further, they are older (in terms of video game users) and professionals with higher incomes.  (Exhibit B)  Applicant’s consumers have the knowledge, sophistication, and financial ability to commit to the purchase of Applicant’s product. 

            Registrant’s consumers are also like to commit time and effort into their purchase.   Registrant appears to specialize in marine audio, car audio, and electronic displays.  Products in the industries of car and marine audio typically are expensive.  Further, purchasers interested in such product have a multitude of manufacturers to choose from.   Thus, Applicant contends that consumers are likely to conduct considerable research into their options to ensure that entertainment needs are met prior to spending a significant amount of money on a system or component.   

            Lastly, Applicant submits that the Beals’ product appeals to consumers seeking the ability to operate multimedia applications, such as Power Point or Java, manage databases, such as Access, or develop web sites.   Applicant submits that such computer-related product is unlikely to be an impulse buy due to the complex nature of the product and the financial commitment associated with the product.  Thus, Applicant contends that consumers will most likely investigate the product carefully in order to ensure that the hardware and software provide the capabilities that the consumer seeks.

            Applicant asserts that the sophistication of the purchasers precludes any concern over likelihood of confusion between Applicant’s product, Registrant’s product, and Beals’ product.  In Dynamics Research Corp. v. Langenau Mfg. Co., 704 F.2d 1575, 217 USPQ 649 (Fed.Cir. 1983), the court affirmed the Board's conclusion that “because the marks are used on goods that are ‘quite different’ and sold to different, discriminating customers, there is no likelihood of confusion” even though both parties used the identical mark “DRC.” Id. at 1576, 217 USPQ at 649 (emphasis added).  Further, as noted in Astra Pharmaceutical Products, Inc. v. Beckman Instruments ,Inc., 718 F.2d at 1206, 220 USPQ at 790 (1st Cir.1983)., “There is always less likelihood of confusion where goods are expensive and purchased after careful consideration.”.          

           

CONCLUSION

            In conclusion, Applicant asserts that the dissimilarity of the products, the different trade channels, and the sophistication of the purchasers alleviate any concern over likelihood of confusion between Applicant’s Mark, Registrant’s Mark, and the Marks in ‘144 and ‘031 applications.  Applicant submits that the computer industry encompasses such a limitless territory of products that the realities of the marketplace, as established in the above arguments, demonstrate that the refusal and potential refusal based on likelihood of confusion be withdrawn.

EVIDENCE
Evidence in the nature of printouts from Fusion Electronics internet site, article regarding hard-core video games has been attached.
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Video gaming desktop computers
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed: Class 009 for Desktop computer that can be used to play video games
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

SIGNATURE(S)
Response Signature
Signature: /Kristina M. Foudray/     Date: 10/25/2007
Signatory's Name: Kristina M. Foudray
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: 77177145
Internet Transmission Date: Thu Oct 25 11:59:40 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2007102511594020
0913-77177145-400f190d866e5792625682bb38
4abbd52-N/A-N/A-20071025084225747023