| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77805030 |
| LAW OFFICE ASSIGNED | LAW OFFICE 104 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Here there is no likelihood of confusion between the Applicant's mark and the Registered Mark. Application of the DuPont factors, as set forth below, supports Applicant's position of no likelihood of confusion. 1. Similarity of Marks Here there is no dispute that the marks are similar. 2. Similarity of Nature of Goods/Services Here the nature of the goods/services between the respective marks are not similar. Applicant's mark is services, i.e., the business of the retail sale of office supplies. Conversely, the Registered Mark is for goods, i.e. cases for items such as laptops and DVD players. The statement in the office action that the respective marks are likely to be encountered by the same purchaers is not supported and is incorrect. Applicant has never and has no intention of ever selling the products sold by Motion Systems, LLC. While Applicant sells cases, such as for laptop computers, all of those cases are brand name cases that have the brand name featured on the product, such as Samsonite and SOLO. Cases are a very small part of Applicant's business, far under .5% of its sales. 3. Similarity of Trade Channels Here the trade channels for the respective marks are not similar, as set forth above. 4. Sophistication of Purchaser Applicant's customers are typically corporations who purchase office supplies in bulk. Applicant's customers are typically sophisticated and the products that Applicant sells are relatively expensive, especially when purchased in bulk, as is typical. Customers in the office supply business in general are typically sophisticated. Applicant's customers typically exercise a high degree of care in purchasing office supplies. 5. Fame of the Prior Mark The Registered Mark is not well known. In fact, prior to the office action Applicant had never heard of Motion Systems, LLC, its mark or its products. 6. Number and Nature of Similar Marks There are no other similar marks in use. 7. Evidence of Actual Confusion This is the most important factor. At no time has anyone ever confused Applicant's Zuma mark for Zuma used by anyone else, including the products sold by Motion Systems, LLC. 8. Length of Concurrent Use The length of concurent use here is more than two year. Applicant has been using the word Zuma as a trademark since December 3, 2009. 9. Variety of Goods on Which Mark is Used Here Applicant only uses its mark on its retail store, while the Registered Mark is only used on cases. 10. Market Interface Here there has been no market interface between Applicant and Motion Systems, LLC as they have peacefully co-existed without any competition between them and absolutely no confusion. 11. Extent of Applicant's Right to Exclude Others Applicant is only seeking to exclude others from using its mark with respect to the retail sale of office supplies. 12. Extent of Potential Confusion For the reasons set forth above there is no potential confusion. 13. Other Established Fact Probative The respective marks are for different classes of goods. In summary, all but one of the relevant factors favor Applicant's position that there is no likelihood of confusion |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_3811215198-183547603_._CCE01042011_00000.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT11\IMAGEOUT11\778\050\77805030\xml4\ROA0002.JPG |
| \\TICRS\EXPORT11\IMAGEOUT11\778\050\77805030\xml4\ROA0003.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Affidavit of Applicant's President Gregory Pierce |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /James K. Borcia/ |
| SIGNATORY'S NAME | James K. Borcia |
| SIGNATORY'S POSITION | Attorney of record, Illinois bar member |
| DATE SIGNED | 02/04/2011 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Feb 04 19:44:02 EST 2011 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0110204194402682552-77805 030-480e09e4927a990821526 0d0773aafeb4-N/A-N/A-2011 0204183547603246 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
Here there is no likelihood of confusion between the Applicant's mark and the Registered Mark. Application of the DuPont factors, as set forth below, supports Applicant's position of no likelihood of confusion.
1. Similarity of Marks
Here there is no dispute that the marks are similar.
2. Similarity of Nature of Goods/Services
Here the nature of the goods/services between the respective marks are not similar. Applicant's mark is services, i.e., the business of the retail sale of office supplies. Conversely, the Registered Mark is for goods, i.e. cases for items such as laptops and DVD players. The statement in the office action that the respective marks are likely to be encountered by the same purchaers is not supported and is incorrect. Applicant has never and has no intention of ever selling the products sold by Motion Systems, LLC. While Applicant sells cases, such as for laptop computers, all of those cases are brand name cases that have the brand name featured on the product, such as Samsonite and SOLO. Cases are a very small part of Applicant's business, far under .5% of its sales.
3. Similarity of Trade Channels
Here the trade channels for the respective marks are not similar, as set forth above.
4. Sophistication of Purchaser
Applicant's customers are typically corporations who purchase office supplies in bulk. Applicant's customers are typically sophisticated and the products that Applicant sells are relatively expensive, especially when purchased in bulk, as is typical. Customers in the office supply business in general are typically sophisticated. Applicant's customers typically exercise a high degree of care in purchasing office supplies.
5. Fame of the Prior Mark
The Registered Mark is not well known. In fact, prior to the office action Applicant had never heard of Motion Systems, LLC, its mark or its products.
6. Number and Nature of Similar Marks
There are no other similar marks in use.
7. Evidence of Actual Confusion
This is the most important factor. At no time has anyone ever confused Applicant's Zuma mark for Zuma used by anyone else, including the products sold by Motion Systems, LLC.
8. Length of Concurrent Use
The length of concurent use here is more than two year. Applicant has been using the word Zuma as a trademark since December 3, 2009.
9. Variety of Goods on Which Mark is Used
Here Applicant only uses its mark on its retail store, while the Registered Mark is only used on cases.
10. Market Interface
Here there has been no market interface between Applicant and Motion Systems, LLC as they have peacefully co-existed without any competition between them and absolutely no confusion.
11. Extent of Applicant's Right to Exclude Others
Applicant is only seeking to exclude others from using its mark with respect to the retail sale of office supplies.
12. Extent of Potential Confusion
For the reasons set forth above there is no potential confusion.
13. Other Established Fact Probative
The respective marks are for different classes of goods.
In summary, all but one of the relevant factors favor Applicant's position that there is no likelihood of confusion
