| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 78643384 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
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Pursuant to Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the Examining Attorney has refused registration of the subject mark based on a likelihood of confusion with the previously registered mark MICROFLEX, Registration No. 2,303,608, covering “personal computers,” in Class 9, in the name of ASA Engineering, Inc. (“ASA”).
Applicant respectfully asserts that there is no likelihood of confusion between the cited mark and Applicant’s mark if such marks were to co-exist. While both ASA’s mark and Applicant’s mark are used in connection with computers generally, Applicant’s use is narrowly tailored to the sale of “portable micro-computers for use in diagnostic tests, inspection of facilities, logistics management, combat communications; electrical and water meter reading for various industrial purposes, logistics and tracking of the transportation and delivery of packages, inventory management, parking meters reading, water level measurement and related industrial, commercial and environmental applications,”as reflected by the amended identification of goods.
In re E.I. du Pont de Nemours & Co., 476 F. 2d 1357 (1973), sets forth the factors in determining likelihood of confusion under §2(d) of the Lanham Act. The second factor under the likelihood of confusion test is that the Examining Attorney must compare the goods and services in order to determine if the goods and services are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 U.S.P.Q. 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 U.S.P.Q. 910 (TTAB 1978). Applicant strongly believes that its goods are not substantially related to those offered by ASA under its mark. ASA’s product line specifically covers personal or “home” desktop computers under its MICROFLEX mark used for broad personal purposes, commonly referred to as “PCs.”. In contrast, the portable and handheld computers sold by Applicant serve more specific industrial and non-personal purposes. For example, the hand-held device can be used for diagnostic tests, inspection of facilities, logistics management and combat communications, purposes completely unrelated to those computers sold by ASA, performing functions of which ASA’s computers are wholly incapable.
In addition, the target market for Applicant’s and ASA’s products, and thus the channels of trade through which the products are sold, are wholly dissimilar and distinguishable. See factors for determining likelihood of confusion set out in Interpace Corporation v. Lapp, Inc., 721 F.2d 460, 463 (3rd Cir. 1983) wherein the seventh factor includes considering “whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media.” Unlike ASA’s personal computers which are sold through traditional retail channels, Applicant sells its products through industrial channels, i.e., business to business sales. As such, Applicant’s target market consists primarily of companies and other industry members interested in purchasing the product for their business, whereas ASA targets its sales to the general public, clearly a different consumer base. Therefore, the respective marks and the products which bear the brands are not likely to overlap, nor are the channels of trade likely to intersect. See Kangol Ltd. V. KangaROOS U.S.A., Inc., 974 F.2d 161, 163 (Fed. Cir. 1992) (Court noted that the similarity of the trade channels is one factor which needs to be “examined in terms of [its] application in the marketplace where the confusion of purchasers would or would not be likely to occur.”), citing, Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 1569 (Fed. Cir. 1983). In light of the distinguishable channels of distribution and consumer bases, confusion in the relevant marketplace is unlikely to occur if the subject marks were to co-exist. Applicant further notes that despite the similarities in appearance among the subject marks, the Trademark Manual of Examining Procedure states that if the goods 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 Section 1207.01(a)(i). See, e.g., Local Trademarks, Inc. v. Handy Boys, Inc., 16 U.S.P.Q. 2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER & Design for advertising services) and Quartz Radiation Corp. v. Comm./Scope Co., 1 U.S.P.Q.2d 1668 (TTAB 1986) (The letters QR covering coaxial cable was held not confusingly similar to QR covering various products related to photocopying services). Applicant’s industrial micro-computer devices which serve very specific purposes are most certainly discernible from the personal computers sold by ASA marketed to the general public. As such, purchasers of each of these parties’ products are unlikely to simultaneously encounter both Applicant’s and ASA’s marks or be confused as to the source of same.
For the reasons set forth above, Applicant respectfully requests that the Examining Attorney reconsider her refusal to register Applicant’s mark based on U.S. Registration No. 2,303,608.
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| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | Portable micro-computers |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 08/22/1990 |
| FIRST USE IN COMMERCE DATE | At least as early as 08/22/1990 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Portable micro-computers for use in diagnostic tests, inspection of facilities, logistics management, combat communications; electrical and water meter reading for various industrial purposes, logistics and tracking of the transportation and delivery of packages, inventory management, parking meters reading, water level measurement and related industrial, commercial and environmental applications. | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 08/22/1990 |
| FIRST USE IN COMMERCE DATE | At least as early as 08/22/1990 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /susan m. rosenfeld/ |
| SIGNATORY NAME | Susan M. Rosenfeld |
| SIGNATORY POSITION | Attorney for Applicant |
| SIGNATURE DATE | 06/26/2006 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jun 26 18:07:06 EDT 2006 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XX- 20060626180706544125-7864 3384-3328d3a22e9f898d52ea 2ff85b4d58b3e1-N/A-N/A-20 060626174746112630 |
| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Pursuant to Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the Examining Attorney has refused registration of the subject mark based on a likelihood of confusion with the previously registered mark MICROFLEX, Registration No. 2,303,608, covering “personal computers,” in Class 9, in the name of ASA Engineering, Inc. (“ASA”).
Applicant respectfully asserts that there is no likelihood of confusion between the cited mark and Applicant’s mark if such marks were to co-exist. While both ASA’s mark and Applicant’s mark are used in connection with computers generally, Applicant’s use is narrowly tailored to the sale of “portable micro-computers for use in diagnostic tests, inspection of facilities, logistics management, combat communications; electrical and water meter reading for various industrial purposes, logistics and tracking of the transportation and delivery of packages, inventory management, parking meters reading, water level measurement and related industrial, commercial and environmental applications,”as reflected by the amended identification of goods.
In re E.I. du Pont de Nemours & Co., 476 F. 2d 1357 (1973), sets forth the factors in determining likelihood of confusion under §2(d) of the Lanham Act. The second factor under the likelihood of confusion test is that the Examining Attorney must compare the goods and services in order to determine if the goods and services are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 U.S.P.Q. 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 U.S.P.Q. 910 (TTAB 1978). Applicant strongly believes that its goods are not substantially related to those offered by ASA under its mark. ASA’s product line specifically covers personal or “home” desktop computers under its MICROFLEX mark used for broad personal purposes, commonly referred to as “PCs.”. In contrast, the portable and handheld computers sold by Applicant serve more specific industrial and non-personal purposes. For example, the hand-held device can be used for diagnostic tests, inspection of facilities, logistics management and combat communications, purposes completely unrelated to those computers sold by ASA, performing functions of which ASA’s computers are wholly incapable.
In addition, the target market for Applicant’s and ASA’s products, and thus the channels of trade through which the products are sold, are wholly dissimilar and distinguishable. See factors for determining likelihood of confusion set out in Interpace Corporation v. Lapp, Inc., 721 F.2d 460, 463 (3rd Cir. 1983) wherein the seventh factor includes considering “whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media.” Unlike ASA’s personal computers which are sold through traditional retail channels, Applicant sells its products through industrial channels, i.e., business to business sales. As such, Applicant’s target market consists primarily of companies and other industry members interested in purchasing the product for their business, whereas ASA targets its sales to the general public, clearly a different consumer base. Therefore, the respective marks and the products which bear the brands are not likely to overlap, nor are the channels of trade likely to intersect. See Kangol Ltd. V. KangaROOS U.S.A., Inc., 974 F.2d 161, 163 (Fed. Cir. 1992) (Court noted that the similarity of the trade channels is one factor which needs to be “examined in terms of [its] application in the marketplace where the confusion of purchasers would or would not be likely to occur.”), citing, Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 1569 (Fed. Cir. 1983). In light of the distinguishable channels of distribution and consumer bases, confusion in the relevant marketplace is unlikely to occur if the subject marks were to co-exist.
Applicant further notes that despite the similarities in appearance among the subject marks, the Trademark Manual of Examining Procedure states that if the goods 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 Section 1207.01(a)(i). See, e.g., Local Trademarks, Inc. v. Handy Boys, Inc., 16 U.S.P.Q. 2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER & Design for advertising services) and Quartz Radiation Corp. v. Comm./Scope Co., 1 U.S.P.Q.2d 1668 (TTAB 1986) (The letters QR covering coaxial cable was held not confusingly similar to QR covering various products related to photocopying services). Applicant’s industrial micro-computer devices which serve very specific purposes are most certainly discernible from the personal computers sold by ASA marketed to the general public. As such, purchasers of each of these parties’ products are unlikely to simultaneously encounter both Applicant’s and ASA’s marks or be confused as to the source of same.
For the reasons set forth above, Applicant respectfully requests that the Examining Attorney reconsider her refusal to register Applicant’s mark based on U.S. Registration No. 2,303,608.