| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77812880 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
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Mark: ADVENT INTERNATIONAL GLOBAL PRIVATE EQUITY [& Design] Serial No: 77/812,880 Examiner: M.J. Souders, L.O. 115 Atty. Ref. No. AVN-601-US
Applicant Advent International Corporation ("Applicant"), by its undersigned counsel, hereby responds to the Office Action dated November 19, 2009 (Action No. 1). As and for its response, Applicant seeks herein to submit argument and evidence that the Applicant's mark is not confusingly similar to the mark cited by the Examining Attorney. Applicant further states as follows: 1. Refusal Based on Likelihood of Confusion. The Examining Attorney has refused registration of Applicant's mark (as to Class 35 only) under Section 2(d) of the Act, on the basis that Applicant's mark is confusingly similar to the mark in Registration No. 2,808,069: ADVENT CORPORATE ACTIONS (the "Cited Mark"), for use in connection with "Providing business data and reports concerning corporate financial instruments, ownership structure, bankruptcy, reorganization, mergers, name changes, and spin-offs" in Class 35. The Applicant respectfully submits that its mark is not confusingly similar to the Cited Mark, when the marks are viewed in their entireties and in light of their respective services, channels of trade, target customers, and other factors enunciated by the court in Application of E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563 (CCPA 1973). Applicant therefore requests that the Section 2(d) refusal be withdrawn and the Applicant's mark be approved for publication in both claimed classes 35 and 36.
It is well settled that a likelihood of confusion may be said to exist only where (1) an applicant's mark is similar to the cited registered mark in terms of sound, appearance, or commercial impression and (2) the applicant's goods or services are so related or the activities surrounding their marketing are such, that confusion as to their origin is likely. See id.; In re August Stork KG, 218 USPQ 823 (TTAB 1983); In re Int'l Telephone and Telegraph Co., 197 USPQ 910 (TTAB 1978). In the present case, neither of these prongs can be satisfied. While Applicant recognizes that the Cited Mark shares the word ADVENT with its Mark, the vastly different appearances, sounds, commercial impressions, and claimed goods/services between Applicant's Mark and the Cited Mark makes confusion as to source highly unlikely.
A. The Marks, When Viewed in Their Entireties, Are Not Similar in Sight, Sound or Meaning. It is black-letter law that a determination of likelihood of confusion must be based on a consideration of the marks in their entireties. See, e.g., Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100 (6th Cir. 1991) (marks must be viewed in their entirety and in context); In re National Data Corp., 753 F.2d 1056, 1058, 1060 (Fed. Cir. 1985); Aries Sys. Corp. v. World Book, Inc., 26 USPQ2d 1926, 1932 (TTAB 1993); Innovation Data Processing, Inc. v. Innovative Software, Inc., 4 USPQ2d 1972, 1974 (TTAB 1987); Interwoven Stocking Co. v. Crest Hosiery Mill, 134 USPQ 43, 44-45 (TTAB 1962). As the National Data Court said:
The basic principle in determining confusion between marks is that marks must be compared in their entireties.... It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark. On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rest on consideration of the marks in their entireties. National Data, supra, 753 F.2d at 1058 (citations omitted; emphasis supplied).
This rule applies to both word marks and composite marks that consist of a design element and words. See Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272 (CCPA 1974); TMEP §1207.01(c)(ii). Nonetheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. See, e.g., Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). When one mark consists of both word and design elements, and a potentially conflicting mark consists merely of a word, similarity is usually controlled by determining whether the word or design dominates the first mark. See McCarthy, McCarthy on Trademarks and Unfair Competition §23:47 at 23-197 (4th Ed. 1998). It has sometimes been stated that in such situations, the words are presumed to be the dominant portion. This is not, however, a formal, hard and fast rule. See id. The Federal Circuit itself has cautioned that "there is no general rule as to whether letters or design will dominate in composite marks." In re Electrolyte Laboratories, Inc., 913 F.2d 930, 16 USPQ2d 1239 (Fed. Cir. 1990), corrected 929 F.2d 645 (Fed. Cir. 1990).
By focusing only on the word ADVENT, the Examining Attorney has completely disregarded (a) the design elements in Applicant's Mark, (b) the four additional words in Applicant's Mark, and (c) the two additional words in the Cited Mark. These distinguishing elements give Applicant's Mark such an utterly different visual and aural impression than the Cited Mark that confusion is simply not possible.
The Office Action states that the addition of the descriptive wording and design of Applicant's Mark does not change the sound, appearance, and commercial impression sufficiently to avoid finding a likelihood of confusion. The Examining Attorney cites no authority holding that a non-shared design portion of a mark has no distinctive characteristics. Furthermore, the fact that certain words in either mark have been disclaimed does not mean that they are not part of the mark and can be ignored in the likelihood of confusion analysis. See TMEP §1213.10. When a disclaimer is required, the most common format is as follows:
No claim is made to the exclusive right to use the word [DISCLAIMED TERM] apart from the mark as shown.
[Emphasis added.] Disclaimed terms are thus still protectable and important elements of a mark, when the mark is viewed in its entirety. The Examining Attorney has improperly dissected Applicant's Mark and completely ignored the visually striking style and design elements, as well as the words INTERNATIONAL GLOBAL PRIVATE EQUITY. (It should be noted in this regard that the word INTERNATIONAL appears on the same line and in the same size and font as ADVENT and thus forms a unitary impression as ADVENT INTERNATIONAL.) This disregard of the highly distinctive elements of Applicant's mark clearly violates the principle that marks must be considered in their entireties. When Applicant's Mark is viewed as a whole, these distinctive elements make any confusion between Applicant's Mark and the Cited Mark highly unlikely.
B. Applicant's Mark is Aurally Distinct from the Cited Mark. In addition, the Applicant's mark differs obviously and significantly to the Cited Mark in sound, due to the presence in Applicant's mark of the additional words INTERNATIONAL GLOBAL PRIVATE EQUITY and the absence of the additional words in the Cited Mark, CORPORATE ACTIONS. As the Court stated in First Savings Bank F.S.B. v. First Bank Systems, Inc., 40 USPQ2d 1865, 1871 (10th Cir. 1996), "[a]s to pronunciation, 'First Bank System' contains an additional word, and to that extent is pronounced differently than FirstBank." 40 USPQ2d 1865, 1871. In contrast, Applicant notes that its mark contains not one but four additional words INTERNATIONAL and GLOBAL PRIVATE EQUITY, having twelve different syllables creating a mark that not only sounds entirely different from the single word ADVENT, but also substantially and definitively different than the Cited Mark, ADVENT CORPORATE ACTIONS.
C. The Overall Commercial Impressions of the Marks Differ. The TMEP makes clear that marks must be evaluated by determining the overall impression that they leave on the average consumer. See TMEP §1207.01(b), citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 109 (TTAB 1975) ("In evaluating the similarities between marks the emphasis must be on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.")
As discussed above, the Examining Attorney's focus on the word ADVENT ignores the style, design and additional word elements of Applicant's mark. The additional wording INTERNATIONAL GLOBAL PRIVATE EQUITY in particular convey a connotation and create a mental impression which is simply not present in the Cited Mark, in particular by identifying Applicant's primary field of endeavor as private equity investing. Thus the combination of the distinct global design, the stylized wording, and modifiers INTERNATIONAL and GLOBAL PRIVATE EQUITY creates a distinct overall impression in the mind of a consumer that is patently different from the word "advent" by itself or "advent corporate actions."
D. The Claimed Services for Each Mark are Different. The Cited Mark is registered for use in connection with "Providing business data and reports concerning corporate financial instruments, ownership structure, bankruptcy, reorganization, mergers, name changes, and spin-offs (in Class 35)." Whereas, Applicant's mark is used in connection with the following services:
BUSINESS CONSULTATION; BUSINESS ACQUISITIONS AND MERGER CONSULTATION; BUSINESS MANAGEMENT CONSULTATION; BUSINESS PLANNING CONSULTATION; BUSINESS ORGANIZATIONAL CONSULTATION; BUSINESS OPERATIONS CONSULTATION; PROVIDING INDIVIDUALS TO SERVE AS OFFICERS OR DIRECTORS OF START-UP, EMERGING AND GROWTH COMPANIES, IN CLASS 35. As can be seen from the foregoing descriptions, the services under the Cited Mark focus on providing business data and reports. In contrast, providing of information or reports is never mentioned in the current application, and Applicant's services are primarily directed to business management consulting. On their face, Applicant's services are distinct from the services offered under the Cited Mark, sharing only the superficial commonality of both being related to business. The Examiner has stated that the Registrant's services are "broadly worded and could include more narrowly identified services offered by Registrant" (emphasis added). This is mere speculation, and is unsupported by the record: there is no reasonable basis for inferring that the provision of data and reports could encompass the Applicant's consulting-related services. Moreover, the mere fact that both marks are related to business cannot lead to a per se determination of likelihood of confusion. TMEP § 1207.01(a)(vi). Rather, where the parties' products or services are somewhat related but not competitive, a finding of likelihood of confusion must depend on other factors. See Homeowners Group, Inc., supra, 931 F.2d at 1108, 18 U.S.P.Q.2d at 1593. While it is true that both marks are used in connection with business services, this bare assertion does not mean that the services are related in such a way as to cause any, not to mention a likelihood of, confusion in the business marketplace. Indeed, the services offered by the Applicant and the Registrant have completely different purposes (see infra Section 1.F). The assertion by the Examiner that the Cited Mark could include the Registrant's services overlooks the fact that the service of providing business data and reports is entirely different than the service of business consultation. In fact, Merriam-Webster defines 'consulting' as "providing professional or expert advice," which is patently dissimilar to the realm of services provided under the Cited Mark. In addition, there is no necessary connection or relation between the two services such that if the same persons encountered the services that those persons would be led to assume that they originate from the same source. Therefore, in the absence of any additional evidence to support the inference that these services are similar or emanate from the same source(s), this DuPont factor favors the Applicant.
E. Applicant's and Registrant's Services are Sold to
A further DuPont factor which weighs in favor of the Applicant here is the "conditions under which, and buyers to whom, sales are made, i.e., 'impulse' vs. careful, sophisticated purchasing." DuPont , 476 F.2d at 1361. Applicant submits that both its and the Registrant's services are sold to careful and discriminating customers who will exercise care in their purchasing decisions. Homeowners, supra, 931 F.2d at 1111, 18 U.S.P.Q.2d at 1596 ("When the relevant buyer class is composed of such professional purchasers, the likelihood of confusion is lower"). Services offered by Applicant are not inexpensive and would not be purchased on impulse. Rather, investment management organizations and private equity investors are understandably likely to be very careful and selective when selecting an investment management firm with whom to entrust their funds. The Registrant's goods and services are also by definition sold to businesses (rather than retail customers) and would be purchased by knowledgeable and sophisticated corporate I.T. professionals who would examine options from more than one vendor and weigh their purchase decision carefully. Thus the fourth DuPont factor - the degree of care - also favors the Applicant here and under such circumstances, confusion between Applicant's mark and the Cited Mark is significantly less likely.
F. The Parties Operate in Different Channels of Trade and If the channels of trade in which the products or services in question are sold are separate and different, it is not likely that buyers would be confused. See, e.g., Windsor Industries, Inc. v. U.S. Diamond Imports, 219 U.S.P.Q. 369 (1982). Here, the owner of the Cited Mark is primarily a computer software company as evidenced by the goods and services claimed in numerous registrations for ADVENT-formative marks it holds, including Reg. No. 2,288,132 (Software for use in accounting), Reg. No. 3,465,867 (Computer Software.), Reg. No. 3,305,587 (Computer Software.), Reg. No. 3,396,092 (Computer Software.), Reg. No. 3,386,827 (Computer Software.), Reg. No. 3,107,811 (Computer Software.), Reg. No. 2,785,466 (Application service provider services, namely, hosting computer software applications on a computer server for a global computer network), Reg. No. 2,591,241 (Computer software.) and Reg. No. 2,319,075 (Computer Software.). Based on these registrations and a cursory review of the Registrant's website, the Registrant's Mark and the related services is one of many products and services offered by the software company, and that the service at issue of 'providing business data and reports." is just a feature or end-result of using such software from Registrant.
By contrast, as a private equity investment firm, Applicant's services are used in connection with the raising, investing and distributing of capital from investors or investment organizations. Customers of Applicant's services seek out Applicant for its expertise in the private equity industry, and thus Applicant's services are marketed to companies and funds with significant capital for investment. "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 supplied]. See also Commerce Natl. Ins. Services, Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 55 U.S.P.Q.2d 1098 (3d Cir. 2000) (no likelihood of confusion between bank's and insurance agency's use of COMMERCE where reasonable consumers would not expect bank to be selling insurance generally); Hasbro, Inc. v. Clue Computing, Inc., 232 F.3d 1, 56 U.S.P.Q.2d 1766 (1st Cir. 2000) (no likelihood of confusion between CLUE for board game and CLUE.COM as Internet domain name for computer consulting company); Greenpoint Financial Corp. v. Sperry & Hutchinson Co., Inc., 116 F.Supp.2d 405 (S.D.N.Y. 2000) (GREENPOINT for banking services not infringed by GREENPOINTS for consumer point redemption program); Richards v. Cable News Network, Inc., 15 F.Supp.2d 683 (E.D.Pa. 1998) (WORLD BEAT for television show and Internet site about international music not confusingly similar to WORLD BEAT for sale of pre-recorded reggae music); Quartz Radiation Corp. v. Comm/Scope Co., 1 U.S.P.Q.2d 1668 (TTAB 1986) (QR for coaxial cable not confusingly similar to QR for various products related to the photocopying field). Here, the marks are not related or marketed in such a way that would support the assumption that they originate from the same source and the parties' respective channels of trade simply do not overlap.
G. Other DuPont Factors. It is well settled that the fame of a mark is "a dominant factor in the likelihood of confusion analysis for a famous mark, independent of the consideration of the relatedness of the goods." Recot, Inc. v. M.C. Becton, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); see also TMEP 1207.01(d)(ix). When the cited mark is famous, it is reasonable to presume that the public is more likely to confuse the junior mark with the famous registered mark. See id. In this case, however, there is absolutely no evidence of record to indicate that the Cited Mark is famous in any relevant market, and so that mark does not deserve any of the broader protections accorded to famous marks. This is yet another factor that militates in favor of the Applicant.
The eleventh factor enumerated by the DuPont court "the extent to which applicant has a right to exclude others from use of its mark on its goods." DuPont , 476 F.2d at 1361. This factor also favors the Applicant herein. Applicant has accumulated nearly fifteen years' worth of common law rights in the mark since its first use in October of 1995. Applicant's first use date is more than three years senior to Registrant's claimed first use date of April 1999, and so to the extent there is confusing similarity between the marks, Applicant as the senior user would ultimately have the right to exclude the cited Registrant. Moreover and on a practical level, Applicant's long presence in the investment management and private equity marketplace makes it less likely that consumers will mistake it for the cited Registrant.
The final DuPont factor which weighs in favor of the Applicant here is the nature and extent of any actual confusion and "the length of time during and conditions under which there has been concurrent use of Applicant's mark and the Cited Mark without evidence of actual confusion." DuPont , 476 F.2d at 1361. Based on the first use dates set forth in the record, Applicant's Mark and the Cited Mark have coexisted in the marketplace for over eleven years, and Applicant is aware of no instances of confusion between the Applicant's Mark and the Cited Mark, nor has Applicant received any complaints from the registrant regarding Applicant's use of the Applicant's Mark. Such long-term marketing and sales of each party's respective services under their respective marks without any apparent confusion is clear evidence that the Applicant's Mark and the Cited Mark are not confusingly similar.
H. Summary of Section 2(d) Issues Applicant respectfully suggests that the Section 2(d) refusal was based on an inappropriate dissection of the marks, and that Applicant's composite words + design mark is clearly distinguishable from the Cited Mark in the marketplace when the marks are viewed in their entireties, in light of:
· The clear differences in appearance, sound and overall impression; · The differences in the claimed goods and services; · The degree of purchaser care; · The use in different channels of trade and are aimed at different classes of customers; · The lack of fame of the Cited Mark; · Applicant's status as the senior user; and · The absence of any actual
confusion in over eleven years of concurrent use. Considering all these factors, there is little risk of confusion between the marks, let alone a likelihood of confusion, and the partial refusal as to class 35 should be withdrawn.
2. Conclusion. Applicant respectfully submits that the foregoing remarks satisfactorily address all the concerns raised by the Examiner in the Office Action, and places the application in condition for publication. Applicant therefore requests, and looks forward to, speedy approval of the mark for publication in both classes 35 and 36.
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| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Robert M. O'Connell, Jr./ |
| SIGNATORY'S NAME | Robert M. O'Connell, Jr. |
| SIGNATORY'S POSITION | Attorney of record, MA Bar member |
| DATE SIGNED | 05/14/2010 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri May 14 11:40:48 EDT 2010 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.X-201 00514114048836413-7781288 0-460d84d440c4d13576b02ea ec846d817cc-N/A-N/A-20100 514113355259904 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
Mark: ADVENT INTERNATIONAL GLOBAL PRIVATE EQUITY [& Design]
Serial No: 77/812,880
Examiner: M.J. Souders, L.O. 115
Atty. Ref. No. AVN-601-US
Applicant Advent International Corporation ("Applicant"), by its undersigned counsel, hereby responds to the Office Action dated November 19, 2009 (Action No. 1). As and for its response, Applicant seeks herein to submit argument and evidence that the Applicant's mark is not confusingly similar to the mark cited by the Examining Attorney. Applicant further states as follows:
1. Refusal Based on Likelihood of Confusion.
The Examining Attorney has refused registration of Applicant's mark (as to Class 35 only) under Section 2(d) of the Act, on the basis that Applicant's mark is confusingly similar to the mark in Registration No. 2,808,069: ADVENT CORPORATE ACTIONS (the "Cited Mark"), for use in connection with "Providing business data and reports concerning corporate financial instruments, ownership structure, bankruptcy, reorganization, mergers, name changes, and spin-offs" in Class 35. The Applicant respectfully submits that its mark is not confusingly similar to the Cited Mark, when the marks are viewed in their entireties and in light of their respective services, channels of trade, target customers, and other factors enunciated by the court in Application of E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563 (CCPA 1973). Applicant therefore requests that the Section 2(d) refusal be withdrawn and the Applicant's mark be approved for publication in both claimed classes 35 and 36.
It is well settled that a likelihood of confusion may be said to exist only where (1) an applicant's mark is similar to the cited registered mark in terms of sound, appearance, or commercial impression and (2) the applicant's goods or services are so related or the activities surrounding their marketing are such, that confusion as to their origin is likely. See id.; In re August Stork KG, 218 USPQ 823 (TTAB 1983); In re Int'l Telephone and Telegraph Co., 197 USPQ 910 (TTAB 1978). In the present case, neither of these prongs can be satisfied. While Applicant recognizes that the Cited Mark shares the word ADVENT with its Mark, the vastly different appearances, sounds, commercial impressions, and claimed goods/services between Applicant's Mark and the Cited Mark makes confusion as to source highly unlikely.
A. The Marks, When Viewed in Their Entireties,
Are Not Similar in Sight, Sound or Meaning.
It is black-letter law that a determination of likelihood of confusion must be based on a consideration of the marks in their entireties. See, e.g., Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100 (6th Cir. 1991) (marks must be viewed in their entirety and in context); In re National Data Corp., 753 F.2d 1056, 1058, 1060 (Fed. Cir. 1985); Aries Sys. Corp. v. World Book, Inc., 26 USPQ2d 1926, 1932 (TTAB 1993); Innovation Data Processing, Inc. v. Innovative Software, Inc., 4 USPQ2d 1972, 1974 (TTAB 1987); Interwoven Stocking Co. v. Crest Hosiery Mill, 134 USPQ 43, 44-45 (TTAB 1962). As the National Data Court said:
The basic principle in determining confusion between marks is that marks must be compared in their entireties.... It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark. On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rest on consideration of the marks in their entireties.
National Data, supra, 753 F.2d at 1058 (citations omitted; emphasis supplied).
This rule applies to both word marks and composite marks that consist of a design element and words. See Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272 (CCPA 1974); TMEP §1207.01(c)(ii). Nonetheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. See, e.g., Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). When one mark consists of both word and design elements, and a potentially conflicting mark consists merely of a word, similarity is usually controlled by determining whether the word or design dominates the first mark. See McCarthy, McCarthy on Trademarks and Unfair Competition §23:47 at 23-197 (4th Ed. 1998). It has sometimes been stated that in such situations, the words are presumed to be the dominant portion. This is not, however, a formal, hard and fast rule. See id. The Federal Circuit itself has cautioned that "there is no general rule as to whether letters or design will dominate in composite marks." In re Electrolyte Laboratories, Inc., 913 F.2d 930, 16 USPQ2d 1239 (Fed. Cir. 1990), corrected 929 F.2d 645 (Fed. Cir. 1990).
By focusing only on the word ADVENT, the Examining Attorney has completely disregarded (a) the design elements in Applicant's Mark, (b) the four additional words in Applicant's Mark, and (c) the two additional words in the Cited Mark. These distinguishing elements give Applicant's Mark such an utterly different visual and aural impression than the Cited Mark that confusion is simply not possible.
The Office Action states that the addition of the descriptive wording and design of Applicant's Mark does not change the sound, appearance, and commercial impression sufficiently to avoid finding a likelihood of confusion. The Examining Attorney cites no authority holding that a non-shared design portion of a mark has no distinctive characteristics. Furthermore, the fact that certain words in either mark have been disclaimed does not mean that they are not part of the mark and can be ignored in the likelihood of confusion analysis. See TMEP §1213.10. When a disclaimer is required, the most common format is as follows:
No claim is made to the exclusive right to use the word [DISCLAIMED TERM] apart from the mark as shown.
[Emphasis added.] Disclaimed terms are thus still protectable and important elements of a mark, when the mark is viewed in its entirety. The Examining Attorney has improperly dissected Applicant's Mark and completely ignored the visually striking style and design elements, as well as the words INTERNATIONAL GLOBAL PRIVATE EQUITY. (It should be noted in this regard that the word INTERNATIONAL appears on the same line and in the same size and font as ADVENT and thus forms a unitary impression as ADVENT INTERNATIONAL.) This disregard of the highly distinctive elements of Applicant's mark clearly violates the principle that marks must be considered in their entireties. When Applicant's Mark is viewed as a whole, these distinctive elements make any confusion between Applicant's Mark and the Cited Mark highly unlikely.
B. Applicant's Mark is Aurally Distinct from the Cited Mark.
In addition, the Applicant's mark differs obviously and significantly to the Cited Mark in sound, due to the presence in Applicant's mark of the additional words INTERNATIONAL GLOBAL PRIVATE EQUITY and the absence of the additional words in the Cited Mark, CORPORATE ACTIONS. As the Court stated in First Savings Bank F.S.B. v. First Bank Systems, Inc., 40 USPQ2d 1865, 1871 (10th Cir. 1996), "[a]s to pronunciation, 'First Bank System' contains an additional word, and to that extent is pronounced differently than FirstBank." 40 USPQ2d 1865, 1871. In contrast, Applicant notes that its mark contains not one but four additional words INTERNATIONAL and GLOBAL PRIVATE EQUITY, having twelve different syllables creating a mark that not only sounds entirely different from the single word ADVENT, but also substantially and definitively different than the Cited Mark, ADVENT CORPORATE ACTIONS.
C. The Overall Commercial Impressions of the Marks Differ.
The TMEP makes clear that marks must be evaluated by determining the overall impression that they leave on the average consumer. See TMEP §1207.01(b), citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 109 (TTAB 1975) ("In evaluating the similarities between marks the emphasis must be on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.")
As discussed above, the Examining Attorney's focus on the word ADVENT ignores the style, design and additional word elements of Applicant's mark. The additional wording INTERNATIONAL GLOBAL PRIVATE EQUITY in particular convey a connotation and create a mental impression which is simply not present in the Cited Mark, in particular by identifying Applicant's primary field of endeavor as private equity investing. Thus the combination of the distinct global design, the stylized wording, and modifiers INTERNATIONAL and GLOBAL PRIVATE EQUITY creates a distinct overall impression in the mind of a consumer that is patently different from the word "advent" by itself or "advent corporate actions."
D. The Claimed Services for Each Mark are Different.
The Cited Mark is registered for use in connection with "Providing business data and reports concerning corporate financial instruments, ownership structure, bankruptcy, reorganization, mergers, name changes, and spin-offs (in Class 35)." Whereas, Applicant's mark is used in connection with the following services:
BUSINESS CONSULTATION; BUSINESS ACQUISITIONS AND MERGER CONSULTATION; BUSINESS MANAGEMENT CONSULTATION; BUSINESS PLANNING CONSULTATION; BUSINESS ORGANIZATIONAL CONSULTATION; BUSINESS OPERATIONS CONSULTATION; PROVIDING INDIVIDUALS TO SERVE AS OFFICERS OR DIRECTORS OF START-UP, EMERGING AND GROWTH COMPANIES, IN CLASS 35.
As can be seen from the foregoing descriptions, the services under the Cited Mark focus on providing business data and reports. In contrast, providing of information or reports is never mentioned in the current application, and Applicant's services are primarily directed to business management consulting. On their face, Applicant's services are distinct from the services offered under the Cited Mark, sharing only the superficial commonality of both being related to business. The Examiner has stated that the Registrant's services are "broadly worded and could include more narrowly identified services offered by Registrant" (emphasis added). This is mere speculation, and is unsupported by the record: there is no reasonable basis for inferring that the provision of data and reports could encompass the Applicant's consulting-related services. Moreover, the mere fact that both marks are related to business cannot lead to a per se determination of likelihood of confusion. TMEP § 1207.01(a)(vi). Rather, where the parties' products or services are somewhat related but not competitive, a finding of likelihood of confusion must depend on other factors. See Homeowners Group, Inc., supra, 931 F.2d at 1108, 18 U.S.P.Q.2d at 1593.
While it is true that both marks are used in connection with business services, this bare assertion does not mean that the services are related in such a way as to cause any, not to mention a likelihood of, confusion in the business marketplace. Indeed, the services offered by the Applicant and the Registrant have completely different purposes (see infra Section 1.F). The assertion by the Examiner that the Cited Mark could include the Registrant's services overlooks the fact that the service of providing business data and reports is entirely different than the service of business consultation. In fact, Merriam-Webster defines 'consulting' as "providing professional or expert advice," which is patently dissimilar to the realm of services provided under the Cited Mark. In addition, there is no necessary connection or relation between the two services such that if the same persons encountered the services that those persons would be led to assume that they originate from the same source. Therefore, in the absence of any additional evidence to support the inference that these services are similar or emanate from the same source(s), this DuPont factor favors the Applicant.
E. Applicant's and Registrant's Services are Sold to
Sophisticated Purchasers, who will Exercise Great Care.
A further DuPont factor which weighs in favor of the Applicant here is the "conditions under which, and buyers to whom, sales are made, i.e., 'impulse' vs. careful, sophisticated purchasing." DuPont , 476 F.2d at 1361. Applicant submits that both its and the Registrant's services are sold to careful and discriminating customers who will exercise care in their purchasing decisions. Homeowners, supra, 931 F.2d at 1111, 18 U.S.P.Q.2d at 1596 ("When the relevant buyer class is composed of such professional purchasers, the likelihood of confusion is lower"). Services offered by Applicant are not inexpensive and would not be purchased on impulse. Rather, investment management organizations and private equity investors are understandably likely to be very careful and selective when selecting an investment management firm with whom to entrust their funds. The Registrant's goods and services are also by definition sold to businesses (rather than retail customers) and would be purchased by knowledgeable and sophisticated corporate I.T. professionals who would examine options from more than one vendor and weigh their purchase decision carefully. Thus the fourth DuPont factor - the degree of care - also favors the Applicant here and under such circumstances, confusion between Applicant's mark and the Cited Mark is significantly less likely.
F. The Parties Operate in Different Channels of Trade and
Target Different Classes of Customers.
If the channels of trade in which the products or services in question are sold are separate and different, it is not likely that buyers would be confused. See, e.g., Windsor Industries, Inc. v. U.S. Diamond Imports, 219 U.S.P.Q. 369 (1982). Here, the owner of the Cited Mark is primarily a computer software company as evidenced by the goods and services claimed in numerous registrations for ADVENT-formative marks it holds, including Reg. No. 2,288,132 (Software for use in accounting), Reg. No. 3,465,867 (Computer Software.), Reg. No. 3,305,587 (Computer Software.), Reg. No. 3,396,092 (Computer Software.), Reg. No. 3,386,827 (Computer Software.), Reg. No. 3,107,811 (Computer Software.), Reg. No. 2,785,466 (Application service provider services, namely, hosting computer software applications on a computer server for a global computer network), Reg. No. 2,591,241 (Computer software.) and Reg. No. 2,319,075 (Computer Software.). Based on these registrations and a cursory review of the Registrant's website, the Registrant's Mark and the related services is one of many products and services offered by the software company, and that the service at issue of 'providing business data and reports." is just a feature or end-result of using such software from Registrant.
By contrast, as a private equity investment firm, Applicant's services are used in connection with the raising, investing and distributing of capital from investors or investment organizations. Customers of Applicant's services seek out Applicant for its expertise in the private equity industry, and thus Applicant's services are marketed to companies and funds with significant capital for investment. "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 supplied]. See also Commerce Natl. Ins. Services, Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 55 U.S.P.Q.2d 1098 (3d Cir. 2000) (no likelihood of confusion between bank's and insurance agency's use of COMMERCE where reasonable consumers would not expect bank to be selling insurance generally); Hasbro, Inc. v. Clue Computing, Inc., 232 F.3d 1, 56 U.S.P.Q.2d 1766 (1st Cir. 2000) (no likelihood of confusion between CLUE for board game and CLUE.COM as Internet domain name for computer consulting company); Greenpoint Financial Corp. v. Sperry & Hutchinson Co., Inc., 116 F.Supp.2d 405 (S.D.N.Y. 2000) (GREENPOINT for banking services not infringed by GREENPOINTS for consumer point redemption program); Richards v. Cable News Network, Inc., 15 F.Supp.2d 683 (E.D.Pa. 1998) (WORLD BEAT for television show and Internet site about international music not confusingly similar to WORLD BEAT for sale of pre-recorded reggae music); Quartz Radiation Corp. v. Comm/Scope Co., 1 U.S.P.Q.2d 1668 (TTAB 1986) (QR for coaxial cable not confusingly similar to QR for various products related to the photocopying field). Here, the marks are not related or marketed in such a way that would support the assumption that they originate from the same source and the parties' respective channels of trade simply do not overlap.
G. Other DuPont Factors.
It is well settled that the fame of a mark is "a dominant factor in the likelihood of confusion analysis for a famous mark, independent of the consideration of the relatedness of the goods." Recot, Inc. v. M.C. Becton, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); see also TMEP 1207.01(d)(ix). When the cited mark is famous, it is reasonable to presume that the public is more likely to confuse the junior mark with the famous registered mark. See id. In this case, however, there is absolutely no evidence of record to indicate that the Cited Mark is famous in any relevant market, and so that mark does not deserve any of the broader protections accorded to famous marks. This is yet another factor that militates in favor of the Applicant.
The eleventh factor enumerated by the DuPont court "the extent to which applicant has a right to exclude others from use of its mark on its goods." DuPont , 476 F.2d at 1361. This factor also favors the Applicant herein. Applicant has accumulated nearly fifteen years' worth of common law rights in the mark since its first use in October of 1995. Applicant's first use date is more than three years senior to Registrant's claimed first use date of April 1999, and so to the extent there is confusing similarity between the marks, Applicant as the senior user would ultimately have the right to exclude the cited Registrant. Moreover and on a practical level, Applicant's long presence in the investment management and private equity marketplace makes it less likely that consumers will mistake it for the cited Registrant.
The final DuPont factor which weighs in favor of the Applicant here is the nature and extent of any actual confusion and "the length of time during and conditions under which there has been concurrent use of Applicant's mark and the Cited Mark without evidence of actual confusion." DuPont , 476 F.2d at 1361. Based on the first use dates set forth in the record, Applicant's Mark and the Cited Mark have coexisted in the marketplace for over eleven years, and Applicant is aware of no instances of confusion between the Applicant's Mark and the Cited Mark, nor has Applicant received any complaints from the registrant regarding Applicant's use of the Applicant's Mark. Such long-term marketing and sales of each party's respective services under their respective marks without any apparent confusion is clear evidence that the Applicant's Mark and the Cited Mark are not confusingly similar.
H. Summary of Section 2(d) Issues
Applicant respectfully suggests that the Section 2(d) refusal was based on an inappropriate dissection of the marks, and that Applicant's composite words + design mark is clearly distinguishable from the Cited Mark in the marketplace when the marks are viewed in their entireties, in light of:
· The clear differences in appearance, sound and overall impression;
· The differences in the claimed goods and services;
· The degree of purchaser care;
· The use in different channels of trade and are aimed at different classes of customers;
· The lack of fame of the Cited Mark;
· Applicant's status as the senior user; and
· The absence of any actual
confusion in over eleven years of concurrent use.
Considering all these factors, there is little risk of confusion between the marks, let alone a likelihood of confusion, and the partial refusal as to class 35 should be withdrawn.
2. Conclusion.
Applicant respectfully submits that the foregoing remarks satisfactorily address all the concerns raised by the Examiner in the Office Action, and places the application in condition for publication. Applicant therefore requests, and looks forward to, speedy approval of the mark for publication in both classes 35 and 36.