| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77553468 |
| LAW OFFICE ASSIGNED | LAW OFFICE 116 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Section 2(d) Refusal to Register The Examiner has cited Registration No. 3081464 for REGATTA for "full feature marine VHF two-way radios" in class 9, owned by Midland Radio Corporation. Applicant respectfully requests reconsideration of the Examiner's finding of a potential conflict between the marks as the associated goods offered under the marks are unrelated and will be offered in different channels of trade.
It is well-established that the similarity or dissimilarity of the goods or services for which the respective marks are used is an important factor in the likelihood of confusion analysis. In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973). Indeed, in Lindy Pen Co. v. Bic Pen Corp., 796 F.2d 254, 255-256 (9th Cir. 1986), the court expressed "the obvious conclusion that a likelihood of confusion is more readily found when the goods compete and the marks are very similar." Here, Applicant disagrees that its mobile phones are closely related to Midland's marine VHF radios. Applicant's mobile phones are small, portable devices marketed to consumers. In contrast, marine VHF radios are specialized equipment that are marketed to boat or ship owners, which operate on special radio frequencies, enable boats to communicate with other boats off shore, and are often mounted onto a boat. See, Exhibit A regarding use of marine radios. Since the associated goods are so different, it is unlikely that mobile phones and marine VHF two-way radios would be marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that the goods originate from the same source. See, Local Trademarks, Inc. v. Handy Boys Inc., 16 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); Information Resources v. X*Press Info. Servs., 6 U.S.P.Q.2d 1034 (T.T.A.B. 1988) (X*PRESS for a news service transmitted through cable television to a personal computer was found not likely to cause confusion with EXPRESS for highly specialized information analysis computer programs).
Moreover, the sophistication of the purchaser is an important factor when determining the likelihood of confusion. See Hewlett-Packard Co. v. Human Performance Measurement Inc., 23 U.S.P.Q.2d 1390, 1396 (T.T.A.B. 1992) (finding no likelihood of confusion because the medical equipment sold by both applicant and opposer would be selected by "highly educated, sophisticated purchasers who know their equipment needs and would be expected to exercise a great deal of care in its selection."); Electronic Data Systems Corp., 23 U.S.P.Q.2d at 1465 (holding that, due to the nature of the computer equipment sold by both applicant and opposer, "both parties' offerings would be carefully scrutinized by prospective purchasers, and any purchasing decisions would be made after careful consideration). Mobile phones often have sophisticated features such as camera functions, MP3 player capabilities, and texting capabilities. Thus, Applicant's goods are relatively sophisticated, expensive consumer electronic products. In making purchasing decisions regarding expensive goods, the reasonably prudent person standard is elevated to the standard of the discriminating purchaser. Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990). This is because the reasonably prudent buyer is assumed to take more care in purchasing expensive items, which are bought infrequently, than in buying every day, relatively inexpensive items. 4 J. McCarthy, Trademarks and Unfair Competition § 23:26 at 320 (4th ed. 2008); Sleepmaster Products Co., v. American Auto-Felt Corp., 241 F.2d 738, 113 USPQ 63 (CCPA 1957) (mattresses are infrequently bought and expensive enough to preclude careless buying); Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 212 USPQ 246 (1st Cir. 1981) (consumers buying an expensive, sophisticated camera in a specialty camera store are least likely to be confused). Boats are typically expensive to purchase and maintain, and the open sea is notoriously a dangerous place. Thus, marine radios are vital safety equipment for boats, which boat owners would depend on for their lives, as well as to protect their investment in their boats. Accordingly, purchasers of marine radios would likely take more care in purchasing such goods, as their lives may depend on the quality, reliability and range of such equipment. Since both the purchasers of mobile phones and marine VHF two-way radios would be expected to exercise care in the purchase of the goods, any likelihood of confusion between the use of REGATTA for mobile phones and REGATTA for Midland' marine VHF radios will be minimal. Accordingly, since mobile phones and marine VHF two-way radios are different goods used in different situations, and would be marketed in different channels of trade to careful purchasers, Applicant respectfully requests reconsideration of the Examiner's finding of a potential conflict between the marks. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_701031032-165845174_._Marine_Radio_Information_for_Boaters.PDF |
| CONVERTED PDF FILE(S) (6 pages) |
\\TICRS\EXPORT6\IMAGEOUT6\775\534\77553468\xml1\ROA0002.JPG |
| \\TICRS\EXPORT6\IMAGEOUT6\775\534\77553468\xml1\ROA0003.JPG | |
| \\TICRS\EXPORT6\IMAGEOUT6\775\534\77553468\xml1\ROA0004.JPG | |
| \\TICRS\EXPORT6\IMAGEOUT6\775\534\77553468\xml1\ROA0005.JPG | |
| \\TICRS\EXPORT6\IMAGEOUT6\775\534\77553468\xml1\ROA0006.JPG | |
| \\TICRS\EXPORT6\IMAGEOUT6\775\534\77553468\xml1\ROA0007.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A is a copy of "Nautical Know How - Marine Radio Information for BoatersBoating" from boatsafe.com. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /djm/ |
| SIGNATORY'S NAME | Diane J. Mason |
| SIGNATORY'S POSITION | attorney of record |
| DATE SIGNED | 04/29/2009 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Apr 29 17:34:22 EDT 2009 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.X-20 090429173422742490-775534 68-43033e24c1a4be14e56dd6 b85a8cfdd61-N/A-N/A-20090 429165845174327 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
Section 2(d) Refusal to Register
The Examiner has cited Registration No. 3081464 for REGATTA for "full feature marine VHF two-way radios" in class 9, owned by Midland Radio Corporation. Applicant respectfully requests reconsideration of the Examiner's finding of a potential conflict between the marks as the associated goods offered under the marks are unrelated and will be offered in different channels of trade.
It is well-established that the similarity or dissimilarity of the goods or services for which the respective marks are used is an important factor in the likelihood of confusion analysis. In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973). Indeed, in Lindy Pen Co. v. Bic Pen Corp., 796 F.2d 254, 255-256 (9th Cir. 1986), the court expressed "the obvious conclusion that a likelihood of confusion is more readily found when the goods compete and the marks are very similar."
Here, Applicant disagrees that its mobile phones are closely related to Midland's marine VHF radios. Applicant's mobile phones are small, portable devices marketed to consumers. In contrast, marine VHF radios are specialized equipment that are marketed to boat or ship owners, which operate on special radio frequencies, enable boats to communicate with other boats off shore, and are often mounted onto a boat. See, Exhibit A regarding use of marine radios. Since the associated goods are so different, it is unlikely that mobile phones and marine VHF two-way radios would be marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that the goods originate from the same source. See, Local Trademarks, Inc. v. Handy Boys Inc., 16 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); Information Resources v. X*Press Info. Servs., 6 U.S.P.Q.2d 1034 (T.T.A.B. 1988) (X*PRESS for a news service transmitted through cable television to a personal computer was found not likely to cause confusion with EXPRESS for highly specialized information analysis computer programs).
Moreover, the sophistication of the purchaser is an important factor when determining the likelihood of confusion. See Hewlett-Packard Co. v. Human Performance Measurement Inc., 23 U.S.P.Q.2d 1390, 1396 (T.T.A.B. 1992) (finding no likelihood of confusion because the medical equipment sold by both applicant and opposer would be selected by "highly educated, sophisticated purchasers who know their equipment needs and would be expected to exercise a great deal of care in its selection."); Electronic Data Systems Corp., 23 U.S.P.Q.2d at 1465 (holding that, due to the nature of the computer equipment sold by both applicant and opposer, "both parties' offerings would be carefully scrutinized by prospective purchasers, and any purchasing decisions would be made after careful consideration).
Mobile phones often have sophisticated features such as camera functions, MP3 player capabilities, and texting capabilities. Thus, Applicant's goods are relatively sophisticated, expensive consumer electronic products. In making purchasing decisions regarding expensive goods, the reasonably prudent person standard is elevated to the standard of the discriminating purchaser. Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990). This is because the reasonably prudent buyer is assumed to take more care in purchasing expensive items, which are bought infrequently, than in buying every day, relatively inexpensive items. 4 J. McCarthy, Trademarks and Unfair Competition § 23:26 at 320 (4th ed. 2008); Sleepmaster Products Co., v. American Auto-Felt Corp., 241 F.2d 738, 113 USPQ 63 (CCPA 1957) (mattresses are infrequently bought and expensive enough to preclude careless buying); Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 212 USPQ 246 (1st Cir. 1981) (consumers buying an expensive, sophisticated camera in a specialty camera store are least likely to be confused).
Boats are typically expensive to purchase and maintain, and the open sea is notoriously a dangerous place. Thus, marine radios are vital safety equipment for boats, which boat owners would depend on for their lives, as well as to protect their investment in their boats. Accordingly, purchasers of marine radios would likely take more care in purchasing such goods, as their lives may depend on the quality, reliability and range of such equipment.
Since both the purchasers of mobile phones and marine VHF two-way radios would be expected to exercise care in the purchase of the goods, any likelihood of confusion between the use of REGATTA for mobile phones and REGATTA for Midland' marine VHF radios will be minimal.
Accordingly, since mobile phones and marine VHF two-way radios are different goods used in different situations, and would be marketed in different channels of trade to careful purchasers, Applicant respectfully requests reconsideration of the Examiner's finding of a potential conflict between the marks.
