Response to Office Action

            This is in response to an Office Action having a mailing date of September 20, 2004, for which a statutory period for response of six (6) months is set to expire on Monday, March 21, 2005.  Applicant responds to the Examining Attorney's requirement and refusal as follows.

I.          Amendment to the Identification of Goods and Services

            The Examining Attorney has stated in the Office Action that the identification of goods and services in International Classes 16 and 38 is unacceptable as indefinite.  As a result of the foregoing amendments, Applicant has adopted the Examining Attorney's suggested identification of goods in Class 16 contained within the Office Action.  In addition, Applicant has amended the identification of services in Class 38 and, in doing so, Applicant has substantially adopted the Examining Attorney's suggested identification of services contained within the Office Action.  The foregoing amendments clarify the identification of goods and services.  Accordingly, Applicant respectfully submits that the amended identification of goods and services is no longer indefinite and that the Examining Attorney's requirement has been traversed.

II.         Response to Likelihood of Confusion Refusal

            In the Office Action, the Examining Attorney has refused registration of Applicant's OXYGEN mark on the ground that the mark, when used on and in connection with Applicant's goods and services, is likely to be confused with the following two registrations:

            (1)       U.S. Registration No. 2,390,328 for the mark OXYGEN for "television and radio broadcasting via cable, satellite, a global computer network and other means" (the "'328 Registration") currently owned by Oxygen Media Interactive, Inc. ("Oxygen Media"); and

            (2)       U.S. Registration No. 2,867,469 for the mark OH! OXYGEN for "television broadcasting via cable, satellite and broadcast transmissions; and providing on-line chat rooms and electronic bulletin boards for transmission of messages among computer users concerning current events, attitudes, profiles and lifestyle issues including health, fitness, medicine, beauty, family, business media and politics" (the "469 Registration") currently owned by O2 Holdings, LLC ("O2 Holdings").

            It is noted that Oxygen Media and O2 Holdings appear to be related companies that own and operate "The Oxygen Network," a cable and satellite television network.  Also, both entities have the same address listed in the '328 and '469 registrations.

            The Examining Attorney bases her refusal on the ground that Applicant's OXYGEN mark is similar in appearance, sound and meaning to each of the two cited marks, and that the goods and services originally identified in the present application as filed (i.e., prepaid telephone calling cards and prepaid telecommunications services) and the services covered by each of the cited registrations are related.  Applicant notes that, as a result of the foregoing amendments, the identification of goods and services has been clarified to further define Applicant's goods and services covered by its OXYGEN mark, i.e., "prepaid telephone calling cards, not magnetically encoded," in Class 16, and "prepaid wireless telephone services and telephone services provided by prepaid telephone calling cards," in Class 38.  As a result, Applicant respectfully submits that its OXYGEN mark is not likely to be confused with either of the cited marks and, thus, it is entitled to registration.

            As the Examining Attorney knows, the In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) decision provides a number of factors to be considered in testing for likelihood of confusion.  All of the Du Pont factors must be considered by the Examining Attorney when they are of record.  Id. at 1361.  The Du Pont factors applicable here are:

            (1)       The dissimilarity and nature of the goods and services described in the registrations;

            (2)       The dissimilarity of established, likely-to-continue trade channels;

            (3)       The dissimilarity of the marks in their entireties as to appearance, sound and meaning; and

            (4)       Other established facts probative of the effect of use.

            Applicant respectfully submits that an examination of the aforesaid factors compels the conclusion that its OXYGEN mark is not likely to be confused with either of the cited marks.

            A.        Dissimilarity of the Goods and Services; Other Probative Evidence

            The nature and scope of a party's goods and services are determined on the basis of the goods and services identified in the application or registration.  See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1262 USPQ2d 1001 (Fed. Cir. 2002).  Goods and services are related if they are marketed and consumed such that buyers are likely to believe that the goods and services come from the same source or are somehow connected with or sponsored by a common company.  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.  See, e.g., 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); Quartz Radiation Corp. v. CommScope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field).

            In addition, simply because the goods and services in question involve telecommunications does not per se require a finding of likelihood of confusion.  In re Quadram Corp., 228 U.S.P.Q. 863 (TTAB 1985).  Information Resources v. XPress Information, 6 U.S.P.Q. 2d 1034 (TTAB 1988).  Rather, the specific nature of the goods and services must be analyzed and considered.

            Since a comparison of the goods and services is based on their respective identifications, it is clearly evident that Applicant's goods and services reflected in the foregoing amendment are unrelated to the services cited in the '328 and '469 Registrations.  It is also evident that Applicant's goods and services and the services cited in such registrations are marketed and consumed in such a way that they would not be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source.  Accordingly, even if the marks are similar in appearance and sound, confusion is not likely.

            For instance, the services provided in connection with Oxygen Media's OXYGEN mark under the '328 Registration are "television and radio broadcasting via cable, satellite, a global computer network, and other means," while the services provided in connection with O2 Holdings' OH! OXYGEN mark under the '469 Registration are "television and broadcasting via cable, satellite and broadcast transmissions" and "providing online chat rooms and electronic bulletin boards for transmission of messages among computer users" concerning various topics such as current events, health, beauty, fitness, etc.  More particularly, Oxygen Media's and O2 Holdings' television and broadcasting services are provided through "The Oxygen Network," a television network co-founded by Oprah Winfrey which provides television shows and movies directed primarily to a female audience.  The line-up on the Oxygen Network includes talk shows, such as "The Oprah Winfrey Show" and "Ellen," syndicated television shows, such as "Rosanne" and "A Different World," and movies.  See Exhibit A, printouts of The Oxygen Network's web pages accessed from the domain name www.oyxgen.com.  O2 Holdings services also include providing online chat rooms and bulletin boards which appear to be primarily directed to women who meet online to discuss the aforesaid topics.

            Applicant's goods and services, on the other hand, are prepaid calling cards and prepaid wireless telephone services that are purchased by consumers to allow them to make telephone calls.  Applicant's goods and services are not television or radio broadcasting services or online chat rooms and bulletin boards whose purposes are to provide entertainment to television viewers and computer users.  As one can see, Applicant's goods and services and the services utilized in connection with the cited registrations have completely different purposes and functions and are utilized in completely different applications.  Thus, it is clear that Applicant's goods and services and the services referenced in the cited registrations are not related.  Accordingly, consumers are not likely to establish any relationship between Applicant's goods and services and the services of these two cited registrations.

            Moreover, it is respectfully submitted that the Examining Attorney has not provided any evidence or any explanation that clearly demonstrates that Applicant's goods and services and the services covered by the cited registrations are, in fact, related to support a finding of likelihood of confusion.  Rather, the Examining Attorney simply states, with no basis or reasoning, that the services generally deal with telecommunication services and would be exposed to the same consumers.  Accordingly, the Examining Attorney has not made a prima facie showing that likelihood of confusion exists.

            The foregoing demonstrates that there are significant distinctions between Applicant's goods and services and the services referenced in the cited registrations.  Accordingly, this compels a finding that Applicant's OXYGEN mark is not likely to be confused with the cited OXYGEN and OH! OXYGEN marks.

            B.        Dissimilarity of Established, Likely-to-Continue Trade Channels

            The established, likely-to-continue channels of trade in which Applicant's goods and services travel and the services referenced in the cited registrations travel are not similar.  Each set of services is not 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.

            For instance, as previously discussed, Oxygen Media's and O2's services are television broadcasting services that are primarily provided through The Oxygen Network, whose purpose is to provide entertainment to television viewers.  O2 Holdings' services also include providing online chat rooms and bulletin boards for the discussion of topics dealing with women's interests.

            On the other hand, Applicant's goods and services are prepaid telephone calling cards and prepaid wireless telephone services sold at retail stores and outlets, such as wireless telephone outlets, convenience stores, drugstores and supermarkets.  These goods and services are marketed to students, travelers and tourists who utilize such goods and services in order to allow them to make telephone calls for travel, business, etc.  Therefore, the trade channels in which Applicant's goods and services and the services under the cited marks travel are completely different.  As a result, it is unlikely that consumers seeking to purchase Applicant's calling cards and wireless services will encounter Oxygen Media's and O2 Holdings' television broadcasting services and online chat rooms and bulletin boards, and vice-versa, in situations that would create the incorrect assumption that they originate from the same source.  Accordingly, it is unlikely that confusion between Applicant's OXYGEN mark and the Oxygen Media's and O2 Holdings' OXYGEN and OH! OXYGEN marks will occur.

            C.        Dissimilarity of the Marks in Appearance, Sound and Meaning

            In setting forth her refusal as to confusing similarity, the Examining Attorney focuses only on a common element of the OH! OXYGEN mark, namely, the term "OXYGEN."  In determining likelihood of confusion, however, the marks, in their entireties, must be analyzed as to appearance, sound, connotation and commercial impression.  In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).  It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof which is important.  In other words, a determination on the issue of likelihood of confusion must be made upon consideration of the respective marks in their entireties and should not be broken into component parts to reach a conclusion of confusing similarity.  Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400 (C.C.P.A. 1970).

            For example, in Colgate-Palmolive, supra, the opposer, the registrant of the mark PEAK for dentifrice, appealed a decision by the TTAB dismissing its opposition against the applicant who was seeking to register the mark PEAK PERIOD for personal deodorants.  The CCPA affirmed the TTAB's dismissal of the opposition, stating:

[T]he mere presence of the word "PEAK" in the trademark PEAK PERIOD does not by reason of that fact alone create a likelihood of confusion or deception.  That determination must arise from a consideration of the respective marks in their entireties.  The difference in appearance and sound of the marks in issue is too obvious to render detailed discussion necessary.  In their entireties they neither look nor sound alike.

Id. At 530.

            In Industrial Adhesives Co. v. Borden, Inc., 218 U.S.P.Q. 945 (TTAB 1983), the TTAB considered the applicant's application to register the mark WONDER BOND PLUS for adhesives against the prior registration of the opposer's BOND PLUS mark as used with industrial adhesives.  The opposer contended that the applicant's mark so resembled its mark so as to be likely to cause confusion.  The TTAB held that despite certain similarities in appearance, sound and connotation (i.e., the opposer's mark BOND PLUS being completely encompassed within the applicant's WONDER BOND PLUS mark), contemporaneous use of the marks would not likely cause confusion.  Id. at 951.

            Here, the OH! OXYGEN mark cited by the Examining Attorney must be analyzed in its entirety against Applicant's OXYGEN mark in determining any likelihood of confusion.  In doing so, it is clear that Applicant's mark and each of the cited marks are not similar in appearance, sound or meaning.  Using the reasoning of the TTAB in Colgate-Palmolive and Industrial Adhesives, supra, the mere presence of Applicant's OXYGEN mark in the OH! OXYGEN mark does not in and of itself create a likelihood of confusion.  In this regard, there are significant differences between Applicant's OXYGEN mark and the cited OH! OXYGEN mark such that the overall appearance, sound and meaning of each of the marks is significantly different.

            For example, the addition of the "OH!" element in the OH! OXYGEN mark significantly differentiates its appearance from that of Applicant's OXYGEN mark.  Moreover, the dominant portion of the OH! OXYGEN mark is the "OH!" element; and, therefore, consumers would be more likely to focus on this element in perceiving the mark.  Accordingly, Applicant's OXYGEN mark and the OH! OXYGEN mark are different in appearance.

            In addition, the sound of Applicant's OXYGEN mark is different from the sound of the OH! OXYGEN mark.  For instance, Applicant's OXYGEN mark consists of only three syllables while the OH! OXYGEN mark consists of four syllables.  Also, the pronunciation of the OH! OXYGEN mark is different from the pronunciation of Applicant's mark.  Accordingly, the sound of each of these marks is not similar.

            Finally, the meaning and commercial impression evoked by the OH! OXYGEN mark is different from that of Applicant's OXYGEN mark.  For instance, the cited OH! OXYGEN mark would evoke a commercial impression of an excited expression.  Applicant's OXYGEN mark evokes no such meaning or commercial impression.  Accordingly, the meaning and commercial impression evoked by Applicant's OXYGEN mark is significantly different from that of the OH! OXYGEN mark.  Therefore, it is highly unlikely that consumers will be confused between Applicant's OXYGEN mark and the OH! OXYGEN mark.

            The foregoing demonstrates that there are significant distinctions between the appearance, sound and meaning of Applicant's OXYGEN mark and those of the cited OH! OXYGEN mark.  These distinctions compel a finding that there is no likelihood of confusion between Applicant's OXYGEN mark and the cited OH! OXYGEN mark.

II.         Conclusion

            Applicant's attorney thanks the Examining Attorney for the issuance of the Office Action mailed September 20, 2004.  In view of the foregoing, it is respectfully submitted that the present application is in condition for publication, and such action is respectfully requested.  If, however, such action cannot be taken, the Examining Attorney is cordially invited to contact Applicant's attorney at his telephone number in order that any outstanding issue may be resolved without the issuance of a further Office Action.

            No fees are believed to be due in connection with the submission of this Response.  Should there be any additional fees due in connection with the submission of this Response, the Examining Attorney is hereby authorized to charge them to Deposit Account No. 50-2639.