Response to Office Action

Request to Remove Application from Suspension Based on New Information

Registration of the Application for HESA has been initially refused, and later suspended, on the basis that when it is used on or in connection with the identified goods, it may so resemble the mark in U.S. App. No. 79/007,433 (the "Cited Mark") as to be likely to cause confusion.

Since the decision to suspend the Application, the owner of the Cited Mark has significantly narrowed its description of goods.   In an office action response dated October 6, 2005, the owner of the Cited Mark restricted the description of goods for the Cited Mark as follows:

Electric and electronic alarm and anti-theft devices, namely, access control and alarm monitoring systems, access control and alarm systems having remote warning capability via radio and/or phone links and/or having dialing devices, alarm central units, anti-intrusion alarms, burglar alarms, fire alarms, personal security alarms, smoke alarms, pressure sensors, temperature sensors, acceleration sensors, theft alarms, electric, electronic and infrared sensors for monitoring light, sound, weight and/or movement, wireless visitor signal chimes, and replacement parts for the aforementioned goods.  

            In contrast, by this response, the Applicant amends its description of goods as follows:

Antennas for wireless communications apparatus, namely, military direction finding communications systems.

Applicant respectfully submits that based on this new information, and for the reasons discussed below, there is no likelihood of confusion between the Cited Mark and the Mark as amended by this response.  As such, the Applicant respectfully requests that its application be removed from suspension and approved for publication.

A.            The Goods Under the Marks Are Dissimilar.

            In accordance with the standards established by In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973), the Trademark Manual of Examining Procedure ("TMEP") provides a number of factors for determining whether a likelihood of confusion exists between two marks.  One important factor is "the similarity or dissimilarity and nature of the goods or services as described in an application or registration in connection with which a prior mark is in use."  TMEP § 1207.01.  In the instant case, the Applicant's goods are markedly different than those of the owner of the Cited Mark. 

The goods covered by the Cited Mark and the Mark differ substantially in terms of purpose and function.  The Cited Mark is for burglar alarms and fire security systems for general use.  In contrast, the Mark, as amended by this response is limited to military navigation systems.  As consumer goods, anti-theft devices are unrelated to sophisticated and highly specialized military navigation systems, which are clearly not consumer goods. 

B.            The Goods Under the Marks Are Sold Through Different Channels of Trade.

Another of the DuPont factors used in determining whether a likelihood of confusion exists between two or more marks is "[t]he similarity or dissimilarity of established, likely-to-continue trade channels."  TMEP § 1207.01.  As discussed below, the fact that two marks are used in entirely different channels of trade often indicates that there is no likelihood of confusion between the two marks, even when the marks are similar or identical.

            Given their highly specialized nature, Applicant's goods are promoted to military officials with the authority to purchase military navigational systems.  The individuals seeking to purchase such systems base their purchasing decisions on the reputation of the company providing the systems and on the ability of the system to perform the narrow and important function for which it is required.  As such, these individuals are very knowledgeable about military navigational systems, and are accustomed to looking for navigational systems of a very specialized nature.

By contrast, the burglar and fire alarms in the Cited Mark appear to be offered for sale to the general public.  That is, the owner of the Cited Registration provides its products directly to the individual end user, i.e., the consumer who requires smoke detectors.  These goods travel in very distinct channels of trade such that consumers for the products associated with the Cited Mark are unlikely to encounter Applicant's specialized military systems.  Restated, the military professionals who use the Applicant's goods to perform complex military operations are well outside of the general consumer group to which the goods in the Cited Mark are marketed.  The Applicant and the owner of the Cited Mark deal with entirely distinct groups of customers which makes confusion in the marketplace highly unlikely.

Several courts have specifically stated that, when the goods or services in question do not compete or are marketed in different manners such that the public is not likely to assume the goods come from the same source, then even when two marks are identical, confusion is not likely.  See Heartsprings Inc. v. Heartspring Inc., 46 U.S.P.Q.2d 1481 (10^th Cir. 1998); Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992); Safeway Stores, Inc. v. Safeway Ins. Co., 657 F. Supp. 1307, 1315-16 (M.D. La. 1985), aff'd, 791 F.2d 929 (5th Cir. 1986).  Indeed, the Trademark Trial and Appeal Board has allowed the registration of identical, or nearly identical, marks when the marks are used in different channels of trade.  See, e.g., In re Albert Trostel & Sons Co., 29 U.S.P.Q.2d 1783, 1786 (T.T.A.B. 1993);

A case from the United States Court of Appeals for the Tenth Circuit is illustrative of this distinction.  In Coherent, Inc. v. Coherent Technologies, Inc., 935 F. 2d 1123 (10^th Cir. 1991), the court held that similarity of marks is not alone sufficient grounds to establish likelihood of confusion when the products as issue are marketed in different channels of trade. Id. at 1125.  In that case, one party's goods were marketed through catalogs, and orders for the others party's goods were solicited on an individual basis. Id.  Both parties, however, used the identical mark "COHERENT," for closely related goods.  Id. at 1124.  The Coherent court stated that in spite of the identity of the marks, the dissimilarity in channels of trade eliminated any likelihood of confusion in that case.  Id.  As in Coherent, the dissimilarity of the channels of trade of the Cited Mark's burglar alarms and of the Applicant's specialized military navigation systems ensures that consumers of the goods of each will not be confused as to their source.

C.            Applicant's Customers are Likely to be Careful Purchasers.

In determining whether confusion is likely between two marks, a further factor which carries great weight is the conditions under which sales are made (i.e., whether the purchasers are careful in their purchasing decisions or are "impulse" buyers).  See In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973).  When a product is expensive and complex, its purchasers are likely to be sophisticated and careful.  In such cases, purchasers are unlikely to confuse products based on their trademarks.  See In re Software Design, Inc., 220 U.S.P.Q. 662 (TTAB 1983) (DOX mark for programming services unlikely to be confused with DOC'S mark for computer systems since expensive, highly technical nature of both cause purchasers to use special care and deliberation).

Here, Applicant's military navigation systems are used by military specialists and, as such, will not compete with, and are not substitutes for, common burglar or fire detection devices.  Because of the specialized nature of the goods with which the Mark is used, purchasers of these goods can certainly be presumed to carefully deliberate when purchasing such goods.  These goods are not available to the general public.  The purchasing decisions of the military professionals who have authorization to make such purchases are predicated on obtaining the proper navigational system from a company known to produce such specialized military equipment.  As sophisticated consumers are likely to make careful, deliberate and planned buying decisions, it is very unlikely that there would be any consumer confusion between the two marks at issue here.  

The conditions under which the sales of the goods in the Cited Registration and the goods in the Application are made ensure that confusion between the marks is unlikely.

            As discussed above, Applicant's goods are targeted to very different groups than those of the owner of the Cited Mark and travel in markedly different trade channels.  Therefore, the Applicant respectfully submits that its complex, specialized military navigation devices and the goods covered in the Cited Registration are not promoted or sold in such a way that they would be encountered in the same trade channels or by the same consumers in the marketplace.  Based on the foregoing, on behalf of the Applicant, we respectfully request that the Application, as amended by this response be removed from suspension and approved for publication.