| PTO Form 1822 (Rev 11/2007) |
| OMB No. 0651-0050 (Exp. 4/30/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77177145 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| PENDING SERIAL NUMBER(S) | |
| Serial number(s) 77/248,031 should not be used as a citation(s) under Section 2(d) of the Trademark Act, in the event that said serial number(s) mature(s) into a registration(s). The applicant hereby requests removal of this application from suspension, based on the following arguments. In the event that the examining attorney is not persuaded by these arguments, the applicant hereby requests that this application be returned to suspended status, awaiting ultimate disposition of the referenced serial number(s). | |
| ARGUMENT(S) | |
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RESPONSE Madam: This paper is filed in response to Notice of Suspension issued November 13, 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 suspended action on the subject application pending the disposition of applications Serial Nos. 77/113,144 and 77/248,031. Upon review of the U.S. Trademark Office database, Applicant notes that application Serial No. 77/113,144 has been abandoned. Thus, Applicant submits that only Serial No. 77/248,031 remains as a potential bar to registration of Applicant’s mark for REACTOR. Furthermore, the Trademark Office upheld its refusal under Trademark Act Section 2(d) based on Registration No. 2,511,950 (‘950 Registration) and Registration No. 2,710,520 (‘520 Registration). Upon review of the U.S. Trademark Office database, Applicant notes that Registrant did not file a Section 8 Affidavit in ‘950 Registration by the expiration of the grace period. Applicant expects that ‘950 Registration will be cancelled in due course. Accordingly, applicant submits that only ‘520 Registration is to remain a bar to the registration of Applicant’s mark for REACTOR.
The Refusal Under Section 2(d) and Potential Refusal Under Section 2(d) Should Be Withdrawn Applicant maintains that the refusal under Trademark Act Section 2(d) and potential refusal under Trademark Act Section 2(d) should be withdrawn. Applicant maintains that the vast difference between the goods, the dissimilarity of the trade channels and target markets, and the sophistication of the purchasers show that no likelihood of confusion exists surrounding registration of Applicant’s mark.
I. Nature of Goods Described in Applications Applicant asserts that its product is sufficiently dissimilar from the goods in ‘520 Registration and the goods/services in ‘031 application. Accordingly, Applicant submits that its product is not likely to be confused with those of the Registrant or the owner of ‘031 application.
A. Applicant’s Goods As advised in Applicant’s Response filed October 25, 2007, Applicant’s product is a desktop computer designed to be capable of providing video gaming needs for hardcore video gamers or high-tech video gamers interested in high-end video gaming. Applicant’s product is not intended for the casual or regular gamer who plays video games on occasion as a form of entertainment. Furthermore, Applicant’s product is not a typical desktop computer intended for use by consumers with typical or average computing needs, such as database management or website creation. As shown in Exhibit A, hardcore gamers typically have a very high technical knowledge of computers, console hardware, and the whole computer industry in general and keep up-to-date with the latest technological advancements. Video games containing complex and intricate graphics continue to push computer hardware to its limits. Experienced hardcore gamers are familiar with constantly escalating hardware demands of the latest games and computer hard drives failing to keep up with these demands. Accordingly, hardcore gamers regularly upgrade their computer and console systems in order to meet the high hardware requirements of the new games that are released. Applicant submits that its product appeals to such hardcore gamers as it is specifically designed to combat high temperatures due to prolonged use of video games overtaxing the hard drive. Applicant’s product is highly technical and complex. Furthermore, Applicant’s product is quite costly. The price of Applicant’s product starts at $3,500. Accordingly, Applicant’s product appeals to a very specific segment of the consuming public, namely, the hardcore video gamers who, regardless of cost, desires the latest and most efficient computer system or hard drive available to run the newest video game at the most difficult level. General consumers and casual video gamers are unlikely to be aware of, or even interested in, Applicant’s product as they have no need for such a product and have no desire to spend a considerable amount of money on such a product.
B. Registrant’s Goods Alternatively, the goods in ‘520 Registration that appear to be the Trademark Office’s concern with Applicant’s goods include “LCD display panels, video game machines for use with televisions”. 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. Rather, as shown in Exhibit A filed with Applicant’s Response of October 25, 2007, Registrant’s products generally are intended for use in marine audio systems, car audio systems and electronic displays. Furthermore, Applicant notes that, per Registrant’s website, http://www.fusionelectronics.com/en/SingleMarketingComms.aspx?id=5, Registrant’s use of its REACTOR trademark is solely on audio components, namely, subwoofers. See Exhibit B. Moreover, Applicant notes that Registrant fails to make reference to its “video games machines for use with televisions” product on its website. Applicant submits that Registrant’s “LCD display panels” are likely intended to be used as a component of Registrant’s electronic display solutions. As argued in Applicant’s Response filed October 25, 2007, Registrant advertises that its 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. Registrant’s “LCD display panels” are intended for use in conjunction with home theater technology. Registrant’s “LCD display panels” do not appear to be nor are advertised to be used in conjunction with personal computers. Moreover, Applicant submits that Registrant’s “video game machines for use with televisions” are unrelated to Applicant’s product. Applicant contends that Registrant’s product is unlikely to be used by the same segment of the video gamer population as Applicant’s product. As shown in Exhibit C, there are various types of video gamers. Applicant contends that Registrant’s video game machines is most likely intended for use by the “casual” or “regular” gamer. The “casual” gamer is someone who enjoys game play, such as Tetris and cell phone games, and doesn’t spend much time playing computer games. The “regular” gamer is someone who enjoys video games and spends on average 11 hours a week playing video games. As noted in Exhibit C, “the regular gamers…have interested in what is the average in the industry”. However, Applicant contends that its product is far from what would be considered “average” in the industry. Applicant’s product is a desktop computer comprising a highly technical hard drive intended for and capable of handling complex video games that appeal to a specific segment of the consuming public. Applicant’s product is not a product that would appeal to a person who enjoys the occasion video game or even a person who spends 11 hours a week playing video games. Rather, Applicant’s product appeals to the person who spends the majority of his or her time playing games, the person who plays imported games with complex animation or simulation, or the professional gamer who plays video games for money. (See Exhibit C) Accordingly, Applicant submits that its goods and Registrant’s goods are highly dissimilar and wholly unrelated. Thus, Applicant contends that consumers are unlikely to believe that the parties’ respective goods emanate from the same source. Further, Applicant contends that the registration of its REACTOR mark is unlikely to cause confusion with Registrant’s REACTOR mark.
C. Goods of ‘031 Application The goods identified in ‘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”. The goods identified in ‘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. As stated explicitly in the Identification of Goods, the goods of ‘031 application include “…computer software for Content Management; Intellectual Property Management, and Community Content Management; Web site development software”. Video game hardware or software is not identified as a product of ‘031 applications, nor is the hardware/software identified in ‘031 application capable of the high-end video gaming Applicant’s product is capable of and designed for. Rather, the software/hardware of ‘031 application is specifically intended to assist in database management and website development and, thus, appeals directly to those in the fields of Content Management, Intellectual Property Management, and Community Content Management along with website creators. Accordingly, Applicant submits that its goods and the goods in ‘031 application are highly unrelated. Computer hardware and software for website development and data management is vastly dissimilar to a personal computer intended for high end video gaming.
D. Goods are not Related Applicant asserts that its product is sufficiently dissimilar from Registrant’s product and the product in ‘031 application to preclude likelihood of confusion. Although the goods all comprise computer hardware and/or software, the hardware/software is highly unrelated and the intended uses of the hardware/software is highly dissimilar. As stated in Information Resources Inc. v. X*Press Information Services, 6 USPQ2d 1034 (TTAB 198), “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….[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). The realities of the marketplace demonstrate that Applicant’s goods are dissimilar to those of the Registrant or those in ‘031 application. As realized by the TTAB in X*Press, the computer field has a limitless number of specialized products and specialized use. Based on the foregoing arguments, Applicant respectfully requests that the Trademark Office withdraw the Section 2(d) refusal and potential Section 2(d) refusal as Applicant has clearly shown that the goods of the subject application, ‘520 Registration, and ‘031 application are all specialized products with specialized uses. Moreover, Applicant submits that it has clearly demonstrated the goods are not related, nor do they overlap, and the intended uses of the goods are not related. In contrast to Registrant’s goods and the goods of ‘031 application, Applicant’s goods are not intended for use by the general consuming public. Rather, Applicant’s goods are intended for use by a specific segment of the consuming public who have the interest in a technologically advanced computer system intended primarily for high-end video gaming.
II. The Trade Channels and Target Markets of Each Product DifferApplicant submits that the Trademark Trial and Appeal Board has addressed the likelihood of confusion standard in several cases and found that “if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely.” TMEP §1207.01(a)(i). See also In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987) (CROSSOVER for bras held not likely to be confused with CROSSOVER for ladies’ sportswear); In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977)(BOTTOMS UP for ladies’ and children’s underwear held not likely to be confused with BOTTOMS UP for men’s clothing); Local Trademarks, Inc. v. Handy Boys Inc., 1 USPQ2d 1156 (TTAB 1990)(LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field). Further, a side-by-side comparison of the conflicting marks is improper if that is not the way buyers see the products in the marketplace. In Plough, Inc. v. Kreis Laboratories, 314 F. 2d 635, 136 USPQ 560 (9th Cir. 1963). If the conflicting marks are not shown side-by-side in the marketplace, then the court must determine the “purchasing public’s state of mind when confronted by somewhat similar trade names singly presented”. In Hemmeter Cigar Co. v. Congress Cigar Co., 118 F. 2d 64, 49 USPA 122 (6th Cir. 1941). “A side by side comparison of two designations may not be useful if the goods on which they are used do not appear in the market side by side. Two marks may appear similar when viewed together but may be clearly distinguishable in their market context…”. International Kennel Club Inc., v. Mighty Star, Inc., 846 F.2d 1079 6USPQ2d 1977 (5th Cir. 1988).
A. Applicant’s Channels of Trade and Target Market Applicant’s product is intricate computer system/hardware designed to combat overheating due to highly complex video games and their graphics overtaxing the hard drive. Accordingly, Applicant targets its products to consumers who are interested in a personal computer system capable of running high-end video games. As noted in Exhibit A, Applicant’s intended consumers keep abreast of the latest technological advancements and regularly upgrade their computer or console systems to meet the hardware requirements of the new games that are released. Thus, Applicant submits that its intended consumers would be aware of and seek out Applicant’s product if their video gaming needs so dictate. Applicant’s intended consumers are not the “casual” or “regular” gamers seeking occasional entertainment through video games. Rather, Applicant’s intended consumers are hardcore gamers who may be even considered video game addicts. Further, they are older (in terms of video game users) and professionals with higher incomes. Accordingly, Applicant’s goods will be marketed and provided to persons with a high degree of knowledge and familiarity concerning the goods. Furthermore, with Applicant’s product starting at $3500, Applicant’s target market is gamers who have the means and the desire to make such an investment. Moreover, Applicant’s product is currently intended to be available for purchase exclusively through Applicant’s website. As Applicant’s channels of trade are potentially limited, Applicant submits that consumers interested in its product will seek out Applicant. Accordingly, Applicant contends that confusion between its goods and the goods of ‘520 Registration and ‘031 application is highly unlikely as its intended consumers are aware the Applicant’s product, are aware Applicant is the source of the product, and are aware of the means of acquiring Applicant’s product.
B. Registrant’s Channels of Trade and Target Market In contrast, Registrant's product includes electronic equipment, such as audio and video equipment, LCD display panels, and video game machines for use with televisions. Registrant’s marketing and advertising clearly explains that Registrant specializes in car and marine audio. As noted in Exhibit A submitted in Applicant’s Response dated October 25, 2007, Registrant advertises that it meets the needs of “mobile entertainment enthusiasts”. Applicant submits that purchasers of Registrant’s goods seek out its goods due to this marketing and advertising. Registrant’s product is offered through retails outlets specializing in car audio equipment. In support of its position, Applicant submits herewith Exhibit D from Registrant’s website noting that is products are available through specialized electronic and car audio retail outlets in Arkansas and Arizona. Further, as argued in Applicant’s Response filed October 25, 2007, Registrant’s “LCD display panels” appear to be 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. Even if Registrant’s “LCD display panels” are marketed towards end consumers, Applicant maintains that the channels of trade are highly dissimilar. As noted above, Applicant’s goods are currently intended to be sold solely through its website whereas Registrant’s goods are sold via specialty electronic and car audio retailers. Thus, Applicant submits that confusion as to the source of the product is highly unlikely. Regarding Registrant’s “video game machines for use with televisions”, Applicant contends that the target market for Registrant’s “video game machines for use with televisions” is wholly dissimilar to Applicant’s target mark for “video gaming desktop computers”. First, it appears that Registrant’s product costs less than $200, thus, appealing to the “regular” or “casual” gamer or the parent of a “regular” or “casual” gamer who is willing to purchase such games for their child. In contrast, as stated above, Applicant’s product starts at $3500. A product with this type of price tag is unlikely to appeal to a person who plays video games for an average of 11 hours a week or the parent of a child who plays video games for an average of 11 hours a week. Rather, Applicant’s product appeals to elite hardcore gamers who are financially able to commit to such a purchasing decision. Second, Applicant contends Registrant’s target markets are looking for a product to appease simple entertainment needs. Thus, Registrant’s target market is unlikely to even be aware of Applicant’s product. In contrast, Applicant’s target market are hardcore gamers seeking a computer system/hard drive capable of handling high-end video gaming needs. Applicant’s submits that its intended consumers are unlikely to consider Registrant’s “video game machines for use with television” as Registrant’s product is unable to handle such high-end video gaming needs. Applicant submits that based on the foregoing, it has clearly established that the target markets are dissimilar. As the marks will not appear side-by-side in the marketplace, and the marks are clearly distinguishable in their market context, Applicant contends that it is unlikely that consumers would confuse its REACTOR mark with the registered REACTOR mark.
C. Channels of Trade and Target Market of ‘031 Goods Based on the Identification of Goods and Recitation of Services in ‘031 application, the owner, 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 is targeted towards consumers interested in database management, namely, Content Management, Intellectual Property Management, and Community Content Management, or web site developers. Thus, Applicant submits that Beals’ product is specialized enough to appeal to a certain segment of the consuming population interested in computer hardware and/or software capable of such database management and website creation. Furthermore, it appears that Beal’s product is likely to be marketed and sold through retail stores. Again, Applicant contends that consumers interested in computer hardware/software capable of organizing and editing information for database management are unlikely to be interested in or aware of Applicant’s product intended for high-end computer gaming. Moreover, Applicant submits that its intended consumers are unlikely to consider the products/services of ‘031 application if searching for a personal computer with hardware capable of handling high end video gaming needs. Lastly, as Applicant’s intended channels of trade are limited, Applicant contends that confusion is highly unlikely.
D. Channels of Trade and Target Markets are Unrelated Based on the foregoing, Applicant submits that it is highly improbable that the marks will be shown side-by-side in the marketplace. Thus, even though identical, Applicant contends that the marks are clearly distinguishable in their own market context. As noted above, the Trademark Office must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983). Applicant submits that, as demonstrated herewith, the goods of the potentially conflicting marks are unrelated and that the activities surrounding their marketing are so dissimilar, that confusion as to the origin is unlikely. Applicant asserts that there is little likelihood of overlap between the distribution and marketing of these products. Further, Applicant contends that its, Registrant’s, and Beals’ goods will not directly compete with each other. Applicant concludes that these different and particular channels of trade are a key factor in why the marks can co-exist without confusion. Based on the foregoing, Applicant contends that the goods in question are not related or marketed in such a way that they would be encountered by the same persons giving rise to the incorrect assumption that the goods originate from the same source. Rather, Applicant submits that it has clearly established that the channels of trade and target markets of the goods are unrelated. That being said, Applicant respectfully requests that the refusal under Section 2(d) of the Trademark Act and the potential refusal under Section 2(d) of the Trademark Act be withdrawn.
III. The Sophistication of Applicant’s Buyers Precludes Likelihood of ConfusionApplicant 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.
A. Applicant’s Consumers 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. As noted in Exhibit A, Applicant’s intended consumers are highly knowledgeable about the computer hardware available for high-end video gaming. Furthermore, Applicant’s intended consumers are required to upgrade their computer system or hardware on a regular basis in order to keep up with the video gaming industry. Thus, Applicant’s consumers are likely to keep abreast of the developments in the computer hardware industry as it relates to their personal video gaming needs. 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, due to the higher cost of the product and the demands and needs of its consumers, Applicant’s consumers are likely to 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. Applicant submits that its intended consumers have the knowledge, sophistication, and financial ability to commit to the purchase of Applicant’s product.
B. Registrant’s Consumers Although Registrant’s “video game machines for use with televisions” are significantly less expensive, less complex, and less technological than Applicant’s goods, Applicant submits that Registrant’s consumers are just as likely to commit time and effort into their purchase. “Regular” or “casual” gamers are likely to be aware of video gaming machines that can appease their entertainment needs. Moreover, parents of “regular or “casual” gamers are likely to research their video gaming options to ensure that their child’s entertainment needs are met. With a price tag that appears to be around $200, Applicant contends that “regular” or “casual” gamers or parents of “regular or “casual” gamers are going to conduct research to ensure that they are getting the best quality for the money. As $200 amounts to a fair amount of money for a large percentage of consumers, Applicant submits they the purchase is unlikely to be frivolous or spontaneous. Accordingly, Applicant submits that “regular” or “casual” gamers who play an average of 11 hours a week are likely to be aware of video gaming machines that can appease their entertainment needs and that are financially accessible to them.
C. Consumers of ‘031 Application Applicant submits that the Beals’ product appeals to consumers seeking the ability to manage databases in the fields of Content Management, Intellectual Property Management, and Community Content Management or develop web sites. Applicant submits that such computer-related products are unlikely to be an impulse buy due to the multitude of vendors to choose from, 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.
D. Sophistication of Consumers for All Three Products is High 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.
CONCLUSIONBased on the foregoing arguments, Applicant asserts that the dissimilarity of the products, the different trade channels, the different target markets, and the sophistication of the purchasers alleviate any concern over likelihood of confusion between Applicant’s Mark, Registrant’s Mark, and the Mark in ‘031 application. 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. Applicant submits that the marks when viewed side-by-side are identical. However, this cannot be the only factor considered. As established, “if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely.” TMEP §1207.01(a)(i) (emphasis added). Applicant’s “video gaming desktop computer” is an exceptional product with an exceptional price tag that will appeal to a specific segment of the consuming public. Applicant’s product will not be available in typical retail environments. Rather, Applicant’s channels of trade are through its website. Thus, the consuming public must seek out Applicant and Applicant’s product. Therefore, Applicant contends that its intended consumers must be aware of Applicant’s product, must be aware Applicant is the source of the product, and must be aware of the means of acquiring Applicant’s product. Based on the foregoing, Applicant respectfully submits that the standard for likelihood of confusion cannot be reached and requests that its application be approved for publication.
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| The referenced serial number(s) 77/113144 has/have now abandoned. The applicant hereby requests removal of this application from suspension for further consideration by the examining attorney. | |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Kristina M. Foudray/ |
| SIGNATORY'S NAME | Kristina M. Foudray |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 07/10/2008 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Jul 11 11:15:07 EDT 2008 |
| TEAS STAMP | USPTO/RSI-XX.XXX.XX.XXX-2 0080711111507665235-77177 145-420a530ba129e699a5f0d 7a8a866a2b2c-N/A-N/A-2008 0710173345146152 |
| PTO Form 1822 (Rev 11/2007) |
| OMB No. 0651-0050 (Exp. 4/30/2009) |
RESPONSE
Madam:
This paper is filed in response to Notice of Suspension issued November 13, 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 suspended action on the subject application pending the disposition of applications Serial Nos. 77/113,144 and 77/248,031. Upon review of the U.S. Trademark Office database, Applicant notes that application Serial No. 77/113,144 has been abandoned. Thus, Applicant submits that only Serial No. 77/248,031 remains as a potential bar to registration of Applicant’s mark for REACTOR.
Furthermore, the Trademark Office upheld its refusal under Trademark Act Section 2(d) based on Registration No. 2,511,950 (‘950 Registration) and Registration No. 2,710,520 (‘520 Registration). Upon review of the U.S. Trademark Office database, Applicant notes that Registrant did not file a Section 8 Affidavit in ‘950 Registration by the expiration of the grace period. Applicant expects that ‘950 Registration will be cancelled in due course. Accordingly, applicant submits that only ‘520 Registration is to remain a bar to the registration of Applicant’s mark for REACTOR.
The Refusal Under Section 2(d) and Potential Refusal Under Section 2(d) Should Be Withdrawn
Applicant maintains that the refusal under Trademark Act Section 2(d) and potential refusal under Trademark Act Section 2(d) should be withdrawn. Applicant maintains that the vast difference between the goods, the dissimilarity of the trade channels and target markets, and the sophistication of the purchasers show that no likelihood of confusion exists surrounding registration of Applicant’s mark.
I. Nature of Goods Described in Applications
Applicant asserts that its product is sufficiently dissimilar from the goods in ‘520 Registration and the goods/services in ‘031 application. Accordingly, Applicant submits that its product is not likely to be confused with those of the Registrant or the owner of ‘031 application.
A. Applicant’s Goods
As advised in Applicant’s Response filed October 25, 2007, Applicant’s product is a desktop computer designed to be capable of providing video gaming needs for hardcore video gamers or high-tech video gamers interested in high-end video gaming. Applicant’s product is not intended for the casual or regular gamer who plays video games on occasion as a form of entertainment. Furthermore, Applicant’s product is not a typical desktop computer intended for use by consumers with typical or average computing needs, such as database management or website creation.
As shown in Exhibit A, hardcore gamers typically have a very high technical knowledge of computers, console hardware, and the whole computer industry in general and keep up-to-date with the latest technological advancements. Video games containing complex and intricate graphics continue to push computer hardware to its limits. Experienced hardcore gamers are familiar with constantly escalating hardware demands of the latest games and computer hard drives failing to keep up with these demands. Accordingly, hardcore gamers regularly upgrade their computer and console systems in order to meet the high hardware requirements of the new games that are released.
Applicant submits that its product appeals to such hardcore gamers as it is specifically designed to combat high temperatures due to prolonged use of video games overtaxing the hard drive. Applicant’s product is highly technical and complex. Furthermore, Applicant’s product is quite costly. The price of Applicant’s product starts at $3,500. Accordingly, Applicant’s product appeals to a very specific segment of the consuming public, namely, the hardcore video gamers who, regardless of cost, desires the latest and most efficient computer system or hard drive available to run the newest video game at the most difficult level. General consumers and casual video gamers are unlikely to be aware of, or even interested in, Applicant’s product as they have no need for such a product and have no desire to spend a considerable amount of money on such a product.
B. Registrant’s Goods
Alternatively, the goods in ‘520 Registration that appear to be the Trademark Office’s concern with Applicant’s goods include “LCD display panels, video game machines for use with televisions”. 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. Rather, as shown in Exhibit A filed with Applicant’s Response of October 25, 2007, Registrant’s products generally are intended for use in marine audio systems, car audio systems and electronic displays. Furthermore, Applicant notes that, per Registrant’s website, http://www.fusionelectronics.com/en/SingleMarketingComms.aspx?id=5, Registrant’s use of its REACTOR trademark is solely on audio components, namely, subwoofers. See Exhibit B. Moreover, Applicant notes that Registrant fails to make reference to its “video games machines for use with televisions” product on its website.
Applicant submits that Registrant’s “LCD display panels” are likely intended to be used as a component of Registrant’s electronic display solutions. As argued in Applicant’s Response filed October 25, 2007, Registrant advertises that its 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. Registrant’s “LCD display panels” are intended for use in conjunction with home theater technology. Registrant’s “LCD display panels” do not appear to be nor are advertised to be used in conjunction with personal computers.
Moreover, Applicant submits that Registrant’s “video game machines for use with televisions” are unrelated to Applicant’s product. Applicant contends that Registrant’s product is unlikely to be used by the same segment of the video gamer population as Applicant’s product.
As shown in Exhibit C, there are various types of video gamers. Applicant contends that Registrant’s video game machines is most likely intended for use by the “casual” or “regular” gamer. The “casual” gamer is someone who enjoys game play, such as Tetris and cell phone games, and doesn’t spend much time playing computer games. The “regular” gamer is someone who enjoys video games and spends on average 11 hours a week playing video games. As noted in Exhibit C, “the regular gamers…have interested in what is the average in the industry”.
However, Applicant contends that its product is far from what would be considered “average” in the industry. Applicant’s product is a desktop computer comprising a highly technical hard drive intended for and capable of handling complex video games that appeal to a specific segment of the consuming public. Applicant’s product is not a product that would appeal to a person who enjoys the occasion video game or even a person who spends 11 hours a week playing video games. Rather, Applicant’s product appeals to the person who spends the majority of his or her time playing games, the person who plays imported games with complex animation or simulation, or the professional gamer who plays video games for money. (See Exhibit C)
Accordingly, Applicant submits that its goods and Registrant’s goods are highly dissimilar and wholly unrelated. Thus, Applicant contends that consumers are unlikely to believe that the parties’ respective goods emanate from the same source. Further, Applicant contends that the registration of its REACTOR mark is unlikely to cause confusion with Registrant’s REACTOR mark.
C. Goods of ‘031 Application
The goods identified in ‘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”.
The goods identified in ‘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. As stated explicitly in the Identification of Goods, the goods of ‘031 application include “…computer software for Content Management; Intellectual Property Management, and Community Content Management; Web site development software”.
Video game hardware or software is not identified as a product of ‘031 applications, nor is the hardware/software identified in ‘031 application capable of the high-end video gaming Applicant’s product is capable of and designed for. Rather, the software/hardware of ‘031 application is specifically intended to assist in database management and website development and, thus, appeals directly to those in the fields of Content Management, Intellectual Property Management, and Community Content Management along with website creators.
Accordingly, Applicant submits that its goods and the goods in ‘031 application are highly unrelated. Computer hardware and software for website development and data management is vastly dissimilar to a personal computer intended for high end video gaming.
D. Goods are not Related
Applicant asserts that its product is sufficiently dissimilar from Registrant’s product and the product in ‘031 application to preclude likelihood of confusion. Although the goods all comprise computer hardware and/or software, the hardware/software is highly unrelated and the intended uses of the hardware/software is highly dissimilar. As stated in Information Resources Inc. v. X*Press Information Services, 6 USPQ2d 1034 (TTAB 198), “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….[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).
The realities of the marketplace demonstrate that Applicant’s goods are dissimilar to those of the Registrant or those in ‘031 application. As realized by the TTAB in X*Press, the computer field has a limitless number of specialized products and specialized use. Based on the foregoing arguments, Applicant respectfully requests that the Trademark Office withdraw the Section 2(d) refusal and potential Section 2(d) refusal as Applicant has clearly shown that the goods of the subject application, ‘520 Registration, and ‘031 application are all specialized products with specialized uses.
Moreover, Applicant submits that it has clearly demonstrated the goods are not related, nor do they overlap, and the intended uses of the goods are not related. In contrast to Registrant’s goods and the goods of ‘031 application, Applicant’s goods are not intended for use by the general consuming public. Rather, Applicant’s goods are intended for use by a specific segment of the consuming public who have the interest in a technologically advanced computer system intended primarily for high-end video gaming.
Applicant submits that the Trademark Trial and Appeal Board has addressed the likelihood of confusion standard in several cases and found that “if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely.” TMEP §1207.01(a)(i). See also In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987) (CROSSOVER for bras held not likely to be confused with CROSSOVER for ladies’ sportswear); In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977)(BOTTOMS UP for ladies’ and children’s underwear held not likely to be confused with BOTTOMS UP for men’s clothing); Local Trademarks, Inc. v. Handy Boys Inc., 1 USPQ2d 1156 (TTAB 1990)(LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field).
Further, a side-by-side comparison of the conflicting marks is improper if that is not the way buyers see the products in the marketplace. In Plough, Inc. v. Kreis Laboratories, 314 F. 2d 635, 136 USPQ 560 (9th Cir. 1963). If the conflicting marks are not shown side-by-side in the marketplace, then the court must determine the “purchasing public’s state of mind when confronted by somewhat similar trade names singly presented”. In Hemmeter Cigar Co. v. Congress Cigar Co., 118 F. 2d 64, 49 USPA 122 (6th Cir. 1941). “A side by side comparison of two designations may not be useful if the goods on which they are used do not appear in the market side by side. Two marks may appear similar when viewed together but may be clearly distinguishable in their market context…”. International Kennel Club Inc., v. Mighty Star, Inc., 846 F.2d 1079 6USPQ2d 1977 (5th Cir. 1988).
A. Applicant’s Channels of Trade and Target Market
Applicant’s product is intricate computer system/hardware designed to combat overheating due to highly complex video games and their graphics overtaxing the hard drive. Accordingly, Applicant targets its products to consumers who are interested in a personal computer system capable of running high-end video games. As noted in Exhibit A, Applicant’s intended consumers keep abreast of the latest technological advancements and regularly upgrade their computer or console systems to meet the hardware requirements of the new games that are released. Thus, Applicant submits that its intended consumers would be aware of and seek out Applicant’s product if their video gaming needs so dictate. Applicant’s intended consumers are not the “casual” or “regular” gamers seeking occasional entertainment through video games. Rather, Applicant’s intended consumers are hardcore gamers who may be even considered video game addicts. Further, they are older (in terms of video game users) and professionals with higher incomes. Accordingly, Applicant’s goods will be marketed and provided to persons with a high degree of knowledge and familiarity concerning the goods. Furthermore, with Applicant’s product starting at $3500, Applicant’s target market is gamers who have the means and the desire to make such an investment.
Moreover, Applicant’s product is currently intended to be available for purchase exclusively through Applicant’s website. As Applicant’s channels of trade are potentially limited, Applicant submits that consumers interested in its product will seek out Applicant. Accordingly, Applicant contends that confusion between its goods and the goods of ‘520 Registration and ‘031 application is highly unlikely as its intended consumers are aware the Applicant’s product, are aware Applicant is the source of the product, and are aware of the means of acquiring Applicant’s product.
B. Registrant’s Channels of Trade and Target Market
In contrast, Registrant's product includes electronic equipment, such as audio and video equipment, LCD display panels, and video game machines for use with televisions. Registrant’s marketing and advertising clearly explains that Registrant specializes in car and marine audio. As noted in Exhibit A submitted in Applicant’s Response dated October 25, 2007, Registrant advertises that it meets the needs of “mobile entertainment enthusiasts”. Applicant submits that purchasers of Registrant’s goods seek out its goods due to this marketing and advertising. Registrant’s product is offered through retails outlets specializing in car audio equipment. In support of its position, Applicant submits herewith Exhibit D from Registrant’s website noting that is products are available through specialized electronic and car audio retail outlets in Arkansas and Arizona.
Further, as argued in Applicant’s Response filed October 25, 2007, Registrant’s “LCD display panels” appear to be 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. Even if Registrant’s “LCD display panels” are marketed towards end consumers, Applicant maintains that the channels of trade are highly dissimilar. As noted above, Applicant’s goods are currently intended to be sold solely through its website whereas Registrant’s goods are sold via specialty electronic and car audio retailers. Thus, Applicant submits that confusion as to the source of the product is highly unlikely.
Regarding Registrant’s “video game machines for use with televisions”, Applicant contends that the target market for Registrant’s “video game machines for use with televisions” is wholly dissimilar to Applicant’s target mark for “video gaming desktop computers”. First, it appears that Registrant’s product costs less than $200, thus, appealing to the “regular” or “casual” gamer or the parent of a “regular” or “casual” gamer who is willing to purchase such games for their child. In contrast, as stated above, Applicant’s product starts at $3500. A product with this type of price tag is unlikely to appeal to a person who plays video games for an average of 11 hours a week or the parent of a child who plays video games for an average of 11 hours a week. Rather, Applicant’s product appeals to elite hardcore gamers who are financially able to commit to such a purchasing decision. Second, Applicant contends Registrant’s target markets are looking for a product to appease simple entertainment needs. Thus, Registrant’s target market is unlikely to even be aware of Applicant’s product. In contrast, Applicant’s target market are hardcore gamers seeking a computer system/hard drive capable of handling high-end video gaming needs. Applicant’s submits that its intended consumers are unlikely to consider Registrant’s “video game machines for use with television” as Registrant’s product is unable to handle such high-end video gaming needs.
Applicant submits that based on the foregoing, it has clearly established that the target markets are dissimilar. As the marks will not appear side-by-side in the marketplace, and the marks are clearly distinguishable in their market context, Applicant contends that it is unlikely that consumers would confuse its REACTOR mark with the registered REACTOR mark.
C. Channels of Trade and Target Market of ‘031 Goods
Based on the Identification of Goods and Recitation of Services in ‘031 application, the owner, 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 is targeted towards consumers interested in database management, namely, Content Management, Intellectual Property Management, and Community Content Management, or web site developers. Thus, Applicant submits that Beals’ product is specialized enough to appeal to a certain segment of the consuming population interested in computer hardware and/or software capable of such database management and website creation. Furthermore, it appears that Beal’s product is likely to be marketed and sold through retail stores.
Again, Applicant contends that consumers interested in computer hardware/software capable of organizing and editing information for database management are unlikely to be interested in or aware of Applicant’s product intended for high-end computer gaming. Moreover, Applicant submits that its intended consumers are unlikely to consider the products/services of ‘031 application if searching for a personal computer with hardware capable of handling high end video gaming needs. Lastly, as Applicant’s intended channels of trade are limited, Applicant contends that confusion is highly unlikely.
D. Channels of Trade and Target Markets are Unrelated
Based on the foregoing, Applicant submits that it is highly improbable that the marks will be shown side-by-side in the marketplace. Thus, even though identical, Applicant contends that the marks are clearly distinguishable in their own market context. As noted above, the Trademark Office must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983). Applicant submits that, as demonstrated herewith, the goods of the potentially conflicting marks are unrelated and that the activities surrounding their marketing are so dissimilar, that confusion as to the origin is unlikely.
Applicant asserts that there is little likelihood of overlap between the distribution and marketing of these products. Further, Applicant contends that its, Registrant’s, and Beals’ goods will not directly compete with each other. Applicant concludes that these different and particular channels of trade are a key factor in why the marks can co-exist without confusion.
Based on the foregoing, Applicant contends that the goods in question are not related or marketed in such a way that they would be encountered by the same persons giving rise to the incorrect assumption that the goods originate from the same source. Rather, Applicant submits that it has clearly established that the channels of trade and target markets of the goods are unrelated. That being said, Applicant respectfully requests that the refusal under Section 2(d) of the Trademark Act and the potential refusal under Section 2(d) of the Trademark Act be withdrawn.
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.
A. Applicant’s Consumers
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. As noted in Exhibit A, Applicant’s intended consumers are highly knowledgeable about the computer hardware available for high-end video gaming. Furthermore, Applicant’s intended consumers are required to upgrade their computer system or hardware on a regular basis in order to keep up with the video gaming industry. Thus, Applicant’s consumers are likely to keep abreast of the developments in the computer hardware industry as it relates to their personal video gaming needs.
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, due to the higher cost of the product and the demands and needs of its consumers, Applicant’s consumers are likely to 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. Applicant submits that its intended consumers have the knowledge, sophistication, and financial ability to commit to the purchase of Applicant’s product.
B. Registrant’s Consumers
Although Registrant’s “video game machines for use with televisions” are significantly less expensive, less complex, and less technological than Applicant’s goods, Applicant submits that Registrant’s consumers are just as likely to commit time and effort into their purchase. “Regular” or “casual” gamers are likely to be aware of video gaming machines that can appease their entertainment needs. Moreover, parents of “regular or “casual” gamers are likely to research their video gaming options to ensure that their child’s entertainment needs are met. With a price tag that appears to be around $200, Applicant contends that “regular” or “casual” gamers or parents of “regular or “casual” gamers are going to conduct research to ensure that they are getting the best quality for the money. As $200 amounts to a fair amount of money for a large percentage of consumers, Applicant submits they the purchase is unlikely to be frivolous or spontaneous. Accordingly, Applicant submits that “regular” or “casual” gamers who play an average of 11 hours a week are likely to be aware of video gaming machines that can appease their entertainment needs and that are financially accessible to them.
C. Consumers of ‘031 Application
Applicant submits that the Beals’ product appeals to consumers seeking the ability to manage databases in the fields of Content Management, Intellectual Property Management, and Community Content Management or develop web sites. Applicant submits that such computer-related products are unlikely to be an impulse buy due to the multitude of vendors to choose from, 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.
D. Sophistication of Consumers for All Three Products is High
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.
Based on the foregoing arguments, Applicant asserts that the dissimilarity of the products, the different trade channels, the different target markets, and the sophistication of the purchasers alleviate any concern over likelihood of confusion between Applicant’s Mark, Registrant’s Mark, and the Mark in ‘031 application. 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.
Applicant submits that the marks when viewed side-by-side are identical. However, this cannot be the only factor considered. As established, “if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely.” TMEP §1207.01(a)(i) (emphasis added).
Applicant’s “video gaming desktop computer” is an exceptional product with an exceptional price tag that will appeal to a specific segment of the consuming public. Applicant’s product will not be available in typical retail environments. Rather, Applicant’s channels of trade are through its website. Thus, the consuming public must seek out Applicant and Applicant’s product. Therefore, Applicant contends that its intended consumers must be aware of Applicant’s product, must be aware Applicant is the source of the product, and must be aware of the means of acquiring Applicant’s product.
Based on the foregoing, Applicant respectfully submits that the standard for likelihood of confusion cannot be reached and requests that its application be approved for publication.
