| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77604851 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Applicant, Cellco Partnership respectfully submits this response to the Office Action dated January 21, 2009. I. IDENTIFICATION OF GOODS
The Examining Attorney has indicated that the language "wireless communication device featuring voice, data and image transmission, namely, mobile web access, mobile email, voice, text and instant messaging, a video and still image camera, music player (MP3)" is indefinite. Applicant respectfully submits that this language is a slight variation on the following identification contained in the Trademark ID Manual: wireless communication device featuring voice, data and image transmission including voice, text and picture messaging, a video and still image camera, also functional to purchase music, games, video and software applications over the air for downloading to the device. Applicant has relied repeatedly on this identification. See, e.g., allowed Application Serial Nos. 77411428, 77411683, 77411676 etc. Therefore, Applicant respectfully requests that the requirement to amend the identification of goods be withdrawn.
II. REFUSAL ON THE GROUNDS OF LIKELIHOOD OF CONFUSION
A. SUMMARY OF THE ARGUMENT The Examining Attorney has refused to register Applicant's mark, GLANCE, on the basis that it is likely to cause confusion with Registration No. 3290678 for GLANCE by Glance Networks, Inc. (the "Registrant") for "computer software for enabling users to remotely view other user on-screen applications via the Internet; computer software for transmitting data, graphics, audio and/or video over electronic communications networks; computer software for creating, offering, hosting, and delivering online conferences, meetings, demonstrations, tours, presentations, and discussions" in Class 9 and "providing temporary use of non-downloadable computer software for enabling users to remotely view other user on-screen applications via the Internet" in Class 42 (the "Cited Registration"). Applicant respectfully submits that its mark is not likely to cause confusion with the Cited Registration based on (1) differences in the goods and (2) differences between channels of trade and the target markets for such goods. B. THE ARGUMENT 1. The Standard Likelihood of confusion between two marks is determined on a case-by-case basis, aided by application of the several factors set out in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). Several factors relevant to the case at hand are discussed below. When these criteria are applied to the facts, Applicant respectfully submits that the refusal to register should be withdrawn and the subject application passed to publication. 2 . The goods and Services offered under GLANCE and the Cited Registration are Different
Any likelihood of confusion analysis must include (i) a comparison of the goods and services to determine their similarity and (ii) a comparison of the manner in which the goods or services sold in connection with the respective marks are offered to determine if the activities surrounding their marketing are such that confusion of origin is likely. See In re August Storck KG, 218 U.S.P.Q. 823 (T.T.A.B. 1983). Pursuant to the Trademark Manual of Examining Procedure ("T.M.E.P.") § 1207.01(a)(i) "if the goods and 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." (emphasis added). Such is the situation in the present case. Applicant sells handheld wireless communications devices which are capable of voice, data and image transmission, and which also function as cameras and music players. These products enable the consumer to be mobile but remain in communication with work, home, family and friends. Registrant, in contrast, manufacturers software that allows the user to share the contents of his or her personal computer screen with up to 100 other computer users. See Printouts from Registrant's website attached hereto as Exhibit A. In short, the Registrant's products are wholly distinct from Applicant's; they are most definitely not interchangeable for the same purpose. See 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §24:23 at 24-44 (4th ed. 2008). Indeed, Registrant's goods do not enable mobile telecommunications. Nor are its software applications operational on Applicant's wireless devices. Instead, Registrant's goods and services are for stationary personal computers which have requisite memory and power. Not only are the goods and services different, they are not complementary and do not operate in the same manner or serve the same function. As a result, confusion is not likely and case law supports such a coexistence. Over the years, courts have found no likelihood of confusion for goods or services far more closely related than those at issue here, in spite of the fact that they were offered under identical or near identical marks. See United Foods Inc. v. United Air Lines, Inc., 41 U.S.P.Q.2d 1653, 1663 (T.T.A.B. 1995) (no confusion between UNITED EXPRESS for transportation of goods by truck and identical mark for transportation of goods by air); Sunenblick v. Harrell, 895 F. Supp. 616 (S.D.N.Y. 1995) (no confusion between UPTOWN RECORDS for jazz music and same mark for rap and R&B), aff'd, 101 F.3d 684 (2d Cir. 1996), cert. denied, 519 U.S. 964 (1996) (1996); In re Sears, Roebuck & Co., 2 U.S.P.Q. 2d 1312 (T.T.A.B. 1987) (CROSS-OVER for bras held not likely to be confused with CROSSOVER for ladies' sportswear); Vitarroz Corp. v. Borden, Inc., 209 U.S.P.Q. 969 (2d Cir. 1981) (no confusion between BRAVO'S for crackers and BRAVOS for tortilla chips); Champion Home Builders Co. v. American Motors Corp., 197 U.S.P.Q. 333 (E.D. Mich. 1978) (CONCORD for passenger automobile and CONCORD for mobile homes not likely to be confused); Motor Master Products Corp. v. Motor Masters Warehouse, Inc., 202 U.S.P.Q. 213 (E.D. Pa. 1978) (MOTOR MASTER for automotive parts and components and MOTOR MASTER for a warehouse distributor of automotive parts and components not likely to be confused). The goods here are even more remote than the goods at issue in the decisions cited above where the courts found no likelihood of confusion existed. Accordingly, the goods offered under Applicant's mark and those identified by the Cited Registration are sufficiently distinct as to avoid any likelihood of confusion. 3 . The Target Markets and Channels of Trade are Different
Just as the products are distinct, so too are the respective target markets for those products. Registrant's product is marketed primarily to companies to facilitate their various business needs such as sales demonstrations and presentations. See Exhibit C. This is distinct from the target audience for cell phone distribution, who are those seeking to engage in daily communications. The channels of trade are likewise different. The test is whether the "normal and usual channels of trade and methods of distribution" are the same. CBS Inc. v. Morrow, 708 F.2d 1579, 1581, 218 U.S.P.Q. 198, 199 (Fed. Cir. 1983); In re Melville Corp., 18 U.S.P.Q. 2d 1386, 1388 (T.T.A.B. 1991). More specifically, if the services or goods of one party are sold to one class of buyers in a different marketing context than the goods or services of another seller, the likelihood that a single group of buyers will be confused by similar trademarks is less than if both parties sold their goods through the same channel of distribution. 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §24.07[1], at 24-68 to 24-69 (3rd ed. 1995); see McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1134 (2d Cir. 1979) (competitive distance between DRIZZLER jackets and DRIZZLE coats is significant); In re Sears, Roebuck & Co., 2 U.S.P.Q. 2d 1312, 1314 (T.T.A.B. 1987) (competitive distance between CROSS-OVER for ladies undergarments and CROSS OVER for ladies sportswear). To purchase Registrant's software, customers must subscribe online at Registrant's website, www.glance.net, and download the software. See Exhibit B. This channel of trade is far removed from that of Applicant, which sells its phones under the Verizon Wireless brand through its own stores, on its own website and through authorized retailers. Simply put, the normal channels of trade for Applicant's cell phones are not the normal channels of Registrant's products. In fact, they do not overlap in any meaningful way and, as a result, confusion is unlikely. Applicant submits that its mark is not likely to cause confusion with the Cited Registration because of the significant differences in their target markets and the channels of trade. C. CONCLUSION In view of the foregoing, Applicant respectfully requests that the refusal to register based on likelihood of confusion be withdrawn based, in part, on the differences between the goods, the target markets and the channels of trade. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_2041949866-161745457_._GLANCE_EX_A.PDF |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT7\IMAGEOUT7\776\048\77604851\xml1\ROA0002.JPG |
| \\TICRS\EXPORT7\IMAGEOUT7\776\048\77604851\xml1\ROA0003.JPG | |
| \\TICRS\EXPORT7\IMAGEOUT7\776\048\77604851\xml1\ROA0004.JPG | |
| \\TICRS\EXPORT7\IMAGEOUT7\776\048\77604851\xml1\ROA0005.JPG | |
| ORIGINAL PDF FILE | evi_2041949866-161745457_._GLANCE_EX_B.PDF |
| CONVERTED PDF FILE(S) (6 pages) |
\\TICRS\EXPORT7\IMAGEOUT7\776\048\77604851\xml1\ROA0006.JPG |
| \\TICRS\EXPORT7\IMAGEOUT7\776\048\77604851\xml1\ROA0007.JPG | |
| \\TICRS\EXPORT7\IMAGEOUT7\776\048\77604851\xml1\ROA0008.JPG | |
| \\TICRS\EXPORT7\IMAGEOUT7\776\048\77604851\xml1\ROA0009.JPG | |
| \\TICRS\EXPORT7\IMAGEOUT7\776\048\77604851\xml1\ROA0010.JPG | |
| \\TICRS\EXPORT7\IMAGEOUT7\776\048\77604851\xml1\ROA0011.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibits A and B consist of printouts of the registrant's website |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /lbe/ |
| SIGNATORY'S NAME | Lauren Beth Emerson |
| SIGNATORY'S POSITION | attorney for applicant |
| DATE SIGNED | 07/20/2009 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jul 20 16:25:24 EDT 2009 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.XX-2 0090720162524795940-77604 851-430c17060feca1831b6a8 b9d32ab183a47-N/A-N/A-200 90720161745457849 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
Applicant, Cellco Partnership respectfully submits this response to the Office Action dated January 21, 2009.
I. IDENTIFICATION OF GOODS
The Examining Attorney has indicated that the language "wireless communication device featuring voice, data and image transmission, namely, mobile web access, mobile email, voice, text and instant messaging, a video and still image camera, music player (MP3)" is indefinite. Applicant respectfully submits that this language is a slight variation on the following identification contained in the Trademark ID Manual: wireless communication device featuring voice, data and image transmission including voice, text and picture messaging, a video and still image camera, also functional to purchase music, games, video and software applications over the air for downloading to the device. Applicant has relied repeatedly on this identification. See, e.g., allowed Application Serial Nos. 77411428, 77411683, 77411676 etc. Therefore, Applicant respectfully requests that the requirement to amend the identification of goods be withdrawn.
II. REFUSAL ON THE GROUNDS OF LIKELIHOOD OF CONFUSION
A. SUMMARY OF THE ARGUMENT
The Examining Attorney has refused to register Applicant's mark, GLANCE, on the basis that it is likely to cause confusion with Registration No. 3290678 for GLANCE by Glance Networks, Inc. (the "Registrant") for "computer software for enabling users to remotely view other user on-screen applications via the Internet; computer software for transmitting data, graphics, audio and/or video over electronic communications networks; computer software for creating, offering, hosting, and delivering online conferences, meetings, demonstrations, tours, presentations, and discussions" in Class 9 and "providing temporary use of non-downloadable computer software for enabling users to remotely view other user on-screen applications via the Internet" in Class 42 (the "Cited Registration"). Applicant respectfully submits that its mark is not likely to cause confusion with the Cited Registration based on (1) differences in the goods and (2) differences between channels of trade and the target markets for such goods.
B. THE ARGUMENT
1. The Standard
Likelihood of confusion between two marks is determined on a case-by-case basis, aided by application of the several factors set out in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). Several factors relevant to the case at hand are discussed below. When these criteria are applied to the facts, Applicant respectfully submits that the refusal to register should be withdrawn and the subject application passed to publication.
2 . The goods and Services offered under GLANCE
and the Cited Registration are Different
Any likelihood of confusion analysis must include (i) a comparison of the goods and services to determine their similarity and (ii) a comparison of the manner in which the goods or services sold in connection with the respective marks are offered to determine if the activities surrounding their marketing are such that confusion of origin is likely. See In re August Storck KG, 218 U.S.P.Q. 823 (T.T.A.B. 1983). Pursuant to the Trademark Manual of Examining Procedure ("T.M.E.P.") § 1207.01(a)(i) "if the goods and 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." (emphasis added). Such is the situation in the present case.
Applicant sells handheld wireless communications devices which are capable of voice, data and image transmission, and which also function as cameras and music players. These products enable the consumer to be mobile but remain in communication with work, home, family and friends. Registrant, in contrast, manufacturers software that allows the user to share the contents of his or her personal computer screen with up to 100 other computer users. See Printouts from Registrant's website attached hereto as Exhibit A. In short, the Registrant's products are wholly distinct from Applicant's; they are most definitely not interchangeable for the same purpose. See 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §24:23 at 24-44 (4th ed. 2008). Indeed, Registrant's goods do not enable mobile telecommunications. Nor are its software applications operational on Applicant's wireless devices. Instead, Registrant's goods and services are for stationary personal computers which have requisite memory and power. Not only are the goods and services different, they are not complementary and do not operate in the same manner or serve the same function. As a result, confusion is not likely and case law supports such a coexistence.
Over the years, courts have found no likelihood of confusion for goods or services far more closely related than those at issue here, in spite of the fact that they were offered under identical or near identical marks. See United Foods Inc. v. United Air Lines, Inc., 41 U.S.P.Q.2d 1653, 1663 (T.T.A.B. 1995) (no confusion between UNITED EXPRESS for transportation of goods by truck and identical mark for transportation of goods by air); Sunenblick v. Harrell, 895 F. Supp. 616 (S.D.N.Y. 1995) (no confusion between UPTOWN RECORDS for jazz music and same mark for rap and R&B), aff'd, 101 F.3d 684 (2d Cir. 1996), cert. denied, 519 U.S. 964 (1996) (1996); In re Sears, Roebuck & Co., 2 U.S.P.Q. 2d 1312 (T.T.A.B. 1987) (CROSS-OVER for bras held not likely to be confused with CROSSOVER for ladies' sportswear); Vitarroz Corp. v. Borden, Inc., 209 U.S.P.Q. 969 (2d Cir. 1981) (no confusion between BRAVO'S for crackers and BRAVOS for tortilla chips); Champion Home Builders Co. v. American Motors Corp., 197 U.S.P.Q. 333 (E.D. Mich. 1978) (CONCORD for passenger automobile and CONCORD for mobile homes not likely to be confused); Motor Master Products Corp. v. Motor Masters Warehouse, Inc., 202 U.S.P.Q. 213 (E.D. Pa. 1978) (MOTOR MASTER for automotive parts and components and MOTOR MASTER for a warehouse distributor of automotive parts and components not likely to be confused).
The goods here are even more remote than the goods at issue in the decisions cited above where the courts found no likelihood of confusion existed. Accordingly, the goods offered under Applicant's mark and those identified by the Cited Registration are sufficiently distinct as to avoid any likelihood of confusion.
3 . The Target Markets and
Channels of Trade are Different
Just as the products are distinct, so too are the respective target markets for those products. Registrant's product is marketed primarily to companies to facilitate their various business needs such as sales demonstrations and presentations. See Exhibit C. This is distinct from the target audience for cell phone distribution, who are those seeking to engage in daily communications.
The channels of trade are likewise different. The test is whether the "normal and usual channels of trade and methods of distribution" are the same. CBS Inc. v. Morrow, 708 F.2d 1579, 1581, 218 U.S.P.Q. 198, 199 (Fed. Cir. 1983); In re Melville Corp., 18 U.S.P.Q. 2d 1386, 1388 (T.T.A.B. 1991). More specifically, if the services or goods of one party are sold to one class of buyers in a different marketing context than the goods or services of another seller, the likelihood that a single group of buyers will be confused by similar trademarks is less than if both parties sold their goods through the same channel of distribution. 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §24.07[1], at 24-68 to 24-69 (3rd ed. 1995); see McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1134 (2d Cir. 1979) (competitive distance between DRIZZLER jackets and DRIZZLE coats is significant); In re Sears, Roebuck & Co., 2 U.S.P.Q. 2d 1312, 1314 (T.T.A.B. 1987) (competitive distance between CROSS-OVER for ladies undergarments and CROSS OVER for ladies sportswear). To purchase Registrant's software, customers must subscribe online at Registrant's website, www.glance.net, and download the software. See Exhibit B. This channel of trade is far removed from that of Applicant, which sells its phones under the Verizon Wireless brand through its own stores, on its own website and through authorized retailers. Simply put, the normal channels of trade for Applicant's cell phones are not the normal channels of Registrant's products. In fact, they do not overlap in any meaningful way and, as a result, confusion is unlikely.
Applicant submits that its mark is not likely to cause confusion with the Cited Registration because of the significant differences in their target markets and the channels of trade.
C. CONCLUSION
In view of the foregoing, Applicant respectfully requests that the refusal to register based on likelihood of confusion be withdrawn based, in part, on the differences between the goods, the target markets and the channels of trade.
