| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 78690507 |
| LAW OFFICE ASSIGNED | LAW OFFICE 114 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
AMENDMENT AND RESPONSE
Dear Sir: This paper is filed in response to Examining Attorney’s Office Action e-mailed 8 March 2006. Attention has been paid to the preparation of this Amendment and Response. Applicant respectfully requests a reconsideration and advancement of the application to publication.
REMARKS The Office Action initially refused registration by stating that 1) the mark so resembles Registration No. 2,825,374 (‘374 Registration) in Classes 9 and 35, Application No. 78/452,083 (‘083 Application) and Application No. 78/340,983 (‘983 Application) in Class 38, as to be likely to cause confusion, to cause mistake, or to deceive. The Trademark Office has also advised that the identification of goods must be clarified, a disclaimer must be entered, the meaning of the mark must be specified, and the color claim must be clarified. Each issue is addressed herewith this Amendment and Response.
AMENDMENT As advised by the Examining Attorney, Applicant amends herewith the identification of goods in order to clarify the goods. Applicant also specifies the meaning of the wording “GIGA”, and clarifies the color statement.
I. There is No Likelihood of Confusion Issue The refusal under Section 2(d) is based on the position that Applicant’s mark is the registered mark with the wording “MEDIA” disclaimed and that Registrant’s goods and Applicant’s goods are similar and could be found within related channels of trade. Applicant respectfully disagrees that these conclusions preclude registration and asserts that its mark is not likely to cause confusion, to cause mistake, or to deceive.
A. Use of a part of another's mark does not result in automatic likelihood of confusion
The anti-dissection rule states that "[t]he commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety." 3 J. McCarthy McCarthy on Trademarks and Unfair Competition, § 23:41 (4th ed. 1998)(citing Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545-46 (1920). In addition, "[c]onflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks up into their component parts for comparison." McCarthy, § 23:41 (citations omitted). “It is the impression that that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important.” Since likelihood of confusion does not automatically exist when a junior user's mark is a part of the whole of another's mark, Applicant asserts that the analysis should not concentrate merely on the Applicant's use of the wording "GIGA", but rather on the likelihood of confusion between the marks as a whole. In this case, Applicant’s mark is GIGA (Stylized). While there are some general similarities between Applicant’s and Registrant’s marks, there are significant differences that, when considering Applicant’s mark as a whole, sufficiently distinguish Applicant’s mark from Registrant’s mark. First, Applicant affirms that its mark and ‘374 Registration are both design marks. ‘374 Registration is one word with the design element of multiple bars or lines appearing above the word GIGAMEDIA. The commercial impression of Applicant’s mark is of a single word, namely, the stylized wording “GIGA” in lower-case letters. As stated above, “The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in details. For this reason, it should be considered in its entirety”. In Estate of P.D. Beckwith, Inc. v. Commission of Patents, 252 U.S. 538, 545-46 (1920). Further, the typical consumer does not retain the individual details of a composite mark, but rather the impression created by the mark as a whole. It is the overall impression created by the mark from the consumer’s observation in the marketplace that will or will not lead to confusion. Thus, Applicant contends that Registrant’s mark should not be viewed as only a portion of the mark, but as a composite mark. Second, Applicant’s mark is a color mark, whereas the ‘374 Registration is black and white. Applicant contends that, when viewing the marks, consumers would differentiate between the marks due to the color element of Applicant’s mark. Thus, Applicant submits that the entire appearance and commercial impression of the marks are sufficiently dissimilar to create different commercial impressions in the minds of consumers and thus, obviates any likelihood of confusion regarding the origin of goods.
B. Dilution of the term “GIGA” Applicant submits that the refusal based on the prior registration does not properly consider the state of the Trademark Register and that the refusal on this basis should be withdrawn. Applicant submits that the co-existence of multiple registrations incorporating the term “GIGA” computer-related products demonstrate that Applicant’s “GIGA (Stylized)” mark can also co-exist on the Federal Register for its goods. The Trademark Office records for the following cited Registrations do not show any opposition or cancellation actions brought by a third party. The absence of apparent concern among the existing Registrants suggests that the owners of these Registrations do not believe likelihood of confusion is likely to occur by the co-existence of the marks incorporating the same letters on the register. Mark Reg. No. Goods/Services
GIGA VAULT 2,900,351 Computer hard disc drives
GIGAPEEK 2,991,063 Computer software and hardware for network management and troubleshooting
GIGAVIZ 3,064,933 Computer software for visualization, interpretation, and analysis of seismic data in the field of oil and gas exploration and production
GIGA-PULSE 78/294,888 Wireless and wire communication terminals, modems and transceivers for establishing communication between two or more devices, for ultra-wideband communications, for ultra-wideband digital signal modulation, and for ultra-wideband digital signal transmission and reception; cellular and cordless telephones, personal communication network handsets, personal digital assistants, and personal and portable computers; ultra-wideband digital signal processing circuit assemblies; computer software that enables voice, data, and video transmission to be performed through an ultra-wideband digital processor; computer software for controlling an ultra-wideband communication system; integrated circuits that serve as ultra-wideband access points for controlling a communication system; digital signal processing circuit assemblies; computer software for controlling and testing an ultra-wideband communication system; integrated circuits for ultra- wideband modulation, ultra-wideband demodulation, error correction encoding, error correction decoding, vocoding and pre- programmed memories containing computer processor instructions; integrated circuits for ultra-wideband communications
GIGASIM 2,625,537 Computer software for compilation and simulation of electronic and electro- mechanical designs
GIGASCREEN 2,643,524 Computer hardware and software providing firewall protection, security, and encryption
GIGACLUSTER 2,436,416 Hardware and software which is used to improve speed and performance for cluster computing and parallel programming
GIGAPAK 2,782,615 Pre-recorded computer software featuring music; computer software for use in storing digital pictures; computer peripherals, namely, CD wallets, CD racks, CD boxed; blank digital picture media, namely, CDR, CDRW, DVDs, floppy disks, compact flash cards, smartmedia cards, also known as smartcards, multimedia cards, also known as VGA cards, TV cards, sound cards, video cards, fax/modem cards, security digit cards, more commonly referred to as fingerprint identification sensor cards, and memory stick cards
GIGAPIANO 2,685,863 Computer software that allows access to, and real time interactive control of digitally recorded musical instrument sounds
GIGASTUDIO 2,690,346 Computer software that allows access to, and real time interactive control of digitally recorded musical instrument sounds
GIGA 2,395,084 High-speed devices, namely integrated circuits for transmission of on-chip analog and digital signals for use in the telecommunication, data communication and video communication markets
Based on the above, Applicant submits that the co-existence of the Registrations noted above incorporating the term “GIGA” for computer-related goods creates a situation both on the Federal Register and in the marketplace where the Applicant’s mark “GIGA (Stylized)” can also co-exist. Further, Applicant has located the following Registrations incorporating the term “GIGA” for goods including optical fibers, electrical switches, and electrical connectors. For example, Mark Reg. No. Goods/Services
GIGATRUE 2,636,336 Electronic data communication cables, patch panels, outlet wall plates, jacks and fiber optic cables
GIGAGUIDE 2,448,182 High bandwith multimode optical fiber
GIGAPOF (Stylized) 3,075,910 Polymer optical fibers, polymer optical fiber cables
GIGASCORE 2,459,005 Unified electrical cabling systems for high- speed local area networks comprising electrical connectors, electrical cables, optical fibers cables, electrical patch panels and switch cabinets, wiring looms, modulators, routers, switches, communication cards, electrical amplifiers; software for tracking GIGAFLEX 2,628,789 Electric wire, cable and connectors
GIGAWAVE 2,698,169 Fiber optic cables, fiber optic termination cabinets, fiber optic cable frameworks for housing fiber optic termination cabinets, fiber optic terminal blocks, fiber optic connector cabinets, frames and blocks, fiber optic patchcords, fiber optic jumper cables, and multi-fiber optic cable connectors for cross-connecting fiber optic telecommunications equipment
Applicant contends that the Registrations noted above include goods similar to ‘374 Registration, namely optical fibers and electrical components with some products specifically designated to be implement in telecommunications. Thus, Applicant submits that if the Trademark Office determined the Registrations listed above can co-exist with ‘374 Registration, then its mark and ‘374 Registration can also co-exist. Lastly, in considering all the Registrations listed above, Applicant contends that such widespread use of the term “GIGA”, apparently without confusion, indicates that consumers do not rely merely on the term “GIGA" in making their purchasing decisions. Rather, consumers have become sophisticated in identifying products incorporating this term. Since consumers are not likely to be confused by merely the use of "GIGA" on related goods, Applicant asserts that the marks are not confusingly similar to the cited marks. In conclusion, Applicant submits that the co-existence of the Registrations noted above creates a situation both on the Federal Register and in the marketplace where the Applicant’s mark “GIGA (Stylized)” can also co-exist.
C. Any similarity of the goods is insufficient Several cases have concluded that the difference between the marks themselves is sufficient findings to avoid a likelihood of confusion refusal, regardless of the similarity between the goods. In Pacquin-Lester , the court held that Pacquin-Lester Co., a marketer of beauty and bath lotion and oil for hands and skin under the registered mark SILK'N'SATIN, could not prevent Charmaceuticals from registering the mark SILK for face cream. The court placed great reliance on the amount of third party usage in the field. Despite the close relatedness of the goods, the court found that the marks had "obvious substantial differences . . . enough to prevent any reasonable likelihood of confusion, mistake or deception when the marks are applied to the respective goods . . .," Pacquin-Lester . In Interstate Brands v. Celestial Seasonings, 198 USPQ 151 (CCPA 1978), appellant Interstate Brands owned ZINGERS for cakes and opposed Celestial Seasonings' application for registration of its mark RED ZINGER for herbal tea. The court that the mark had to be considered in its entirety, and the presence of the word "RED" could not be dismissed as an identifying factor insufficient to distinguish it from the mark ZINGER. The court allowed registration of RED ZINGER after it took into account nine third-party registrations of the formative "ZING-" as applied to various food and drink products. In EZ Loader Boat Trailers v. Cox Trailers, Inc., 217 USPQ 986 (Fed.Cir. 1983), the court affirmed the decision of the Trademark Trial and Appeal Board dismissing opposition to SUPER LOADER for boat trailers filed by the owner of the marks EZ LOADER and MINI LOADER for marketing boater trailers. The Board held that it was appropriate to consider "that a portion of a mark (common to a corresponding portion of the mark of the other party) may be used in the sense that it is descriptive, highly suggestive or in such common use by other traders in the same market as to not have very much effect in distinguishing source." EZ Loader at 987 (Emphasis added). Despite finding that the case was close, the products were the same and were distributed through the same channels of trade to the same customers, the court upheld the Board's denial of the opposition. Further, as to the relatedness of the goods analysis in the likelihood of confusion standard, the TTAB has addressed this issue in several cases. The Board has found that “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). See also In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987) (CROSSOVER for bras held not likely to be confused with CROSSOVER for ladies’ sportswear); In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977)(BOTTOMS UP for ladies’ and children’s underwear held not likely to be confused with BOTTOMS UP for men’s clothing); Local Trademarks, Inc. v. Handy Boys Inc., 1 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). Further, a side-by-side comparison of the conflicting marks is improper if that is not the way buyers see the products in the marketplace. In Plough, Inc. v. Kreis Laboratories, 314 F. 2d 635, 136 USPQ 560 (9th Cir. 1963). If the conflicting marks are not shown side-by-side in the marketplace, then the court must determine the “purchasing public’s state of mind when confronted by somewhat similar trade names singly presented”. In Hemmeter Cigar Co. v. Congress Cigar Co., 118 F. 2d 64, 49 USPA 122 (6th Cir. 1941). “A side by side comparison of two designations may not be useful if the goods on which they are used do not appear in the market side by side. Two marks may appear similar when viewed together but may be clearly distinguishable in their market context…”. International Kennel Club Inc., v. Mighty Star, Inc., 846 F.2d 1079 6USPQ2d 1977 (5th Cir. 1988). Registrant’s goods include computer cables, optical cables, network switches, and electric switches, all for use in the field of computers. Applicant’s goods are “blank discs for computers, computer keyboards, computers, hard discs for computers, modems” in Class 9 and “preparing advertisements for others; advertising agencies; advertising for others via an on-line electronic communications network; business investigations; retail store services featuring computers, computer peripherals and computer game software, available through on-line and department stores” in Class 35. Applicant contends that the distinctions are even greater in that the products aren’t the same and are potentially distributed through different channels of trade. Applicant’s products include computer hardware or the physical equipment that makes up a computer system. Computer hardware is essentially the parts of a computer that the consumer can touch, i.e., the monitor, keyboard, disk drives. Further, Applicant’s products included peripheral hardware or components that consumers add to the central system unit of a computer, i.e., a monitor, printer, or mouse. In contrast, Registrant’s products include computer cables, optical cables, network switches, and electric switches. Applicant contends that the products are highly dissimilar. Further, Applicant contends that it is unlikely that the products would be displayed in a side-by-side manner in a retail store. Computer hardware is typically reserved for one area of the retail store, while computer accessory equipment, such as cables, is typically reserved in a different area of the retail store. Thus, Applicant contends that consumers would not view the marks in a side-by-side manner lessening the possibility of likelihood of confusion.
The Marks are Not Similar In Colgate-Palmolive Company v. Carter-Wallace, Inc., 167 USPQ 529, 530 (CCPA 1970), the court discussed the issue of likelihood of confusion between PEAK for dentrifice and PEAK PERIOD for personal deodorants. The court stated that "the 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. . . In their entireties they neither look nor sound alike." The court further examined the different meanings of the involved marks when applied to the specific goods and the different commercial impressions which would logically ensue there from. After such consideration, the court held that no likelihood of confusion existed. Another case, Mr. Hero Sandwich Systems, Inc. v. Roman Meal Company, 228 USPQ 364 (Fed. Cir. 1986), discussed the issue of likelihood of confusion between ROMAN MEAL and ROMANBURGER. The court said that the word "ROMAN" in the mark ROMANBURGER is part of a unitary phrase that does not create the separable impression found in the Roman Meal marks. . . . 'Romanburger' is one word, not "Roman" plus another word. The mark is pronounced as one word, with sound and cadence distinctly different from the Roman Meal marks, . . . . We see no reason to believe, and there is no evidence on the point, that consumers are likely to extract 'Roman' from 'Romanburger' and rely on 'Roman' per se as an indication of source. Roman at 366. Also see Pacquin-Lester Company v. Charmaceuticals, Inc., 179 USPQ 45 (CCPA 1973) (SILK is not confusingly similar with SILK 'N SATIN); In re Ferrero, 178 USPQ 167 (CCPA 1973)(TIC TAC is not confusingly similar to TIC TAC TOE). Based on the above discussion, Applicant asserts that its mark is not confusingly similar to the cited registration. As stated by the court in Mr. Hero Sandwich Systems, Inc. v. Roman Meal Company, the word “ROMANBURGER” is one word, not “Roman” plus another word”. Thus, Applicant contends that the Trademark Office cannot view Registrant’s mark “GIGAMEDIA” as one word, “GIGA”, plus another word. As stated above, “ROMANBURGER” is pronounced as one word, with sound and cadence distinctively different from “ROMAN MEALS”. Thus, Applicant requests that the Examining Attorney follow Mr. Hero Sandwich Systems, Inc. v. Roman Meal Company and find that “GIGAMEDIA” is distinctively different from “GIGA”, and that consumers are unlikely to rely on “GIGA” as an indication of source. Applicant asserts that the dissimilarity of the marks and the dissimilarity of the products alleviate any concern over likelihood of confusion between the two marks. Applicant submits that the computer industry encompasses such a limitless territory of products that the realities of the marketplace, as established in the above arguments, demonstrate that the refusal based on likelihood of confusion should be withdrawn.
Potential Likelihood of Confusion The Examining Attorney also advised of a potential refusal under Trademark Section 2(d) based on the position that the ‘083 application and ‘983 application have filing dates that precede Applicant’s filing dates. First, Applicant contends that if cited application Serial No. 78/340,983 for “GIGIDATA” for the goods “Telecommunication services, namely, transmission of message, data and information via Ethernet circuits and/or internet”, and 78/452,083 for “GIGAMAIL” for the goods “Electronic mail services” can co-exist on the federal register and in the marketplace, than Applicant’s mark for “GIGA (Stylized)” can also co-exist. The Trademark Office records for the following cited Registrations do not appear to show any opposition or cancellation actions brought by a third party. The absence of apparent concern among the existing Registrants suggests that the owners of these Registrations do not believe likelihood of confusion is likely to occur by the co-existence of the marks incorporating the same term on the register. Further, Applicant notes that several marks incorporating the term “GIGA” for communication services have been registered. For example, Mark Reg. No. Goods/Services
GIGA (Stylized) 2,395,084 Design for others of high-speed, namely integrated circuits for transmission of on- chip analog and digital signals for use in the telecommunication, data communication and video communication markets
GIGANEWS 2,670,812 Computer services, namely, providing news feeds of information via a global computer network for news and discussion groups; usenet news services, namely on-line searching, retrieval, and filtering of information postings to usenet newsgroups and discussion groups; providing an on-line database featuring news
GIGATRUST 3,016,858 Technical support services, namely, troubleshooting of problems associated with secure communication software; design, customization, installation, maintenance and updating of computer software; and providing information and technical consulting in the fields of secure communications and Internet security
GIGAWAVE 2,512,492 Training in the use of products relating to TECHNOLOGIES wireless data communications; custom curriculum development in the field of wireless data communications; providing certification courses in the field of wireless data communications; and distribution of course materials in connection therewith
THE GIGABIT 2,890,334 Computer network design for others; EXPERTS computer hardware design for others; design for others in the field of computers; licensing of intellectual property
Further, such widespread use, apparently without confusion, indicates that consumers do not rely merely on the letters “GIGA" in making their purchasing decisions. Rather, consumers have become sophisticated in identifying products incorporating these letters. Since consumers are not likely to be confused by merely the use of "GIGA" on related goods, Applicant asserts that the marks are not confusingly similar to the cited marks. In conclusion, Applicant submits that the co-existence of the Registrations noted above creates a situation both on the Federal Register and in the marketplace where the Applicant’s mark “GIGA (Stylized) can also co-exist. CONCLUSIONApplicant asserts that the dissimilarity of the marks and the dissimilarity of the products alleviate any concern over likelihood of confusion between Applicant’s mark and cited Registration No. 2,825,374 and cited application Serial Nos. 78/340,983 and 78/452,083. Applicant respectfully requests reconsideration and subsequent withdrawal of the refusal based on the prior registration listed. Applicant further requests advancement of the amended application to publication.
|
|
| GOODS AND/OR SERVICES SECTION (009)(current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| blank discs for computers; computer keyboards; computers; computer mouses; hard discs for computers; modems | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (009)(proposed) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| blank discs for computers; computer keyboards; computers; hard discs for computers; modems | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (035)(current) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| preparing advertisements for others; advertising agencies; advertising for others via an on-line electronic communications network; business investigations; retail store services, available through on-line and department stores; TV programs watching rate investigation | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (035)(proposed) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| preparing advertisements for others; advertising agencies; advertising for others via an on-line electronic communications network; business investigations; retail store services featuring computers, computer peripherals and computer game software, available through on-line and department stores | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (037)(no change) | |
| GOODS AND/OR SERVICES SECTION (038)(current) | |
| INTERNATIONAL CLASS | 038 |
| DESCRIPTION | |
| telegram transmission and communication; telegraph services; telephone communication services; telecommunications services, namely ISDN services; telephone voice messaging services; delivery of messages by electronic transmission; transmission of data and documents via computer terminals; transmission of voice messages by telephone; facsimile transmission; telegram transmission; network conferencing services; providing telecommunications connections to a global computer network; electronic store-and-forward messaging | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (038)(proposed) | |
| INTERNATIONAL CLASS | 038 |
| DESCRIPTION | |
| telegram transmission and communication; telegraph services; telephone communication services; telecommunications services, namely ISDN services; telephone voice messaging services; delivery of messages by electronic transmission; electronic transmission of data and documents via computer terminals; transmission of voice messages by telephone; facsimile transmission; telegram transmission; network conferencing services; providing telecommunications connections to a global computer network; electronic store-and-forward messaging | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (041)(current) | |
| INTERNATIONAL CLASS | 041 |
| DESCRIPTION | |
| audio recording and production; publication of books; film production; rental of film; educational research; rental of videotapes; electronic publishing services, namely, publication of text and graphic works of others on CD-ROMs featuring entertainment, biography, technology, current events; publication of magazines; written text editing | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (041)(proposed) | |
| INTERNATIONAL CLASS | 041 |
| DESCRIPTION | |
| audio recording and production; publication of books; motion picture film production; rental of film; educational research; rental of videotapes; electronic publishing services, namely, publication of text and graphic works of others on CD-ROMs featuring entertainment, biography, technology, current events; publication of magazines; written text editing | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (042)(current) | |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION | |
| computer services, namely, creating and maintaining web sites for others; computer software design for others;computer services, namely, providing databases featuring general and local news, and information of interest to specific geographic areas; computer services, namely, providing search engines for obtaining data on a global computer network; computer systems analysis; rental of computers; testing of new products for others; computer dating services | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (042)(proposed) | |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION | |
| computer services, namely, creating and maintaining web sites for others; computer software design for others; computer services, namely, providing databases featuring general and local news, and computer software design; computer services, namely, providing search engines for obtaining data on a global computer network; computer systems analysis; rental of computers; testing of new products for others | |
| FILING BASIS | Section 1(b) |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | COLOR DESCRIPTION STATEMENT: "The wording "GIGA" is in the color white with blue in the dot for the "i" and blue background." SIGNIFICANCE OF MARK: "GIGA" appearing in the mark has no significance in the relevant trade or industry or as applied to the goods/services listed in the application. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Michael D. Schumann/ |
| SIGNATORY'S NAME | Michael D. Schumann |
| SIGNATORY'S POSITION | Attorney |
| DATE SIGNED | 09/08/2006 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Sep 08 11:30:03 EDT 2006 |
| TEAS STAMP | USPTO/ROA-XX.XX.XX.XXX-20 060908113003172380-786905 07-3403912e04bbede61cc539 90f1e57579a2-N/A-N/A-2006 0907143238499402 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
AMENDMENT AND RESPONSE
Dear Sir:
This paper is filed in response to Examining Attorney’s Office Action e-mailed
8 March 2006. Attention has been paid to the preparation of this Amendment and Response. Applicant respectfully requests a reconsideration and advancement of the application to publication.
REMARKS
The Office Action initially refused registration by stating that 1) the mark so resembles Registration No. 2,825,374 (‘374 Registration) in Classes 9 and 35, Application No. 78/452,083 (‘083 Application) and Application No. 78/340,983 (‘983 Application) in Class 38, as to be likely to cause confusion, to cause mistake, or to deceive. The Trademark Office has also advised that the identification of goods must be clarified, a disclaimer must be entered, the meaning of the mark must be specified, and the color claim must be clarified. Each issue is addressed herewith this Amendment and Response.
AMENDMENT
As advised by the Examining Attorney, Applicant amends herewith the identification of goods in order to clarify the goods. Applicant also specifies the meaning of the wording “GIGA”, and clarifies the color statement.
I. There is No Likelihood of Confusion Issue
The refusal under Section 2(d) is based on the position that Applicant’s mark is the registered mark with the wording “MEDIA” disclaimed and that Registrant’s goods and Applicant’s goods are similar and could be found within related channels of trade. Applicant respectfully disagrees that these conclusions preclude registration and asserts that its mark is not likely to cause confusion, to cause mistake, or to deceive.
A. Use of a part of another's mark does not result in automatic likelihood of confusion
The anti-dissection rule states that "[t]he commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety." 3 J. McCarthy McCarthy on Trademarks and Unfair Competition, § 23:41 (4th ed. 1998)(citing Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545-46 (1920). In addition, "[c]onflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks up into their component parts for comparison." McCarthy, § 23:41 (citations omitted). “It is the impression that that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important.” Since likelihood of confusion does not automatically exist when a junior user's mark is a part of the whole of another's mark, Applicant asserts that the analysis should not concentrate merely on the Applicant's use of the wording "GIGA", but rather on the likelihood of confusion between the marks as a whole.
In this case, Applicant’s mark is GIGA (Stylized). While there are some general similarities between Applicant’s and Registrant’s marks, there are significant differences that, when considering Applicant’s mark as a whole, sufficiently distinguish Applicant’s mark from Registrant’s mark.
First, Applicant affirms that its mark and ‘374 Registration are both design marks. ‘374 Registration is one word with the design element of multiple bars or lines appearing above the word GIGAMEDIA. The commercial impression of Applicant’s mark is of a single word, namely, the stylized wording “GIGA” in lower-case letters.
As stated above, “The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in details. For this reason, it should be considered in its entirety”. In Estate of P.D. Beckwith, Inc. v. Commission of Patents, 252 U.S. 538, 545-46 (1920). Further, the typical consumer does not retain the individual details of a composite mark, but rather the impression created by the mark as a whole. It is the overall impression created by the mark from the consumer’s observation in the marketplace that will or will not lead to confusion. Thus, Applicant contends that Registrant’s mark should not be viewed as only a portion of the mark, but as a composite mark.
Second, Applicant’s mark is a color mark, whereas the ‘374 Registration is black and white. Applicant contends that, when viewing the marks, consumers would differentiate between the marks due to the color element of Applicant’s mark.
Thus, Applicant submits that the entire appearance and commercial impression of the marks are sufficiently dissimilar to create different commercial impressions in the minds of consumers and thus, obviates any likelihood of confusion regarding the origin of goods.
B. Dilution of the term “GIGA”
Applicant submits that the refusal based on the prior registration does not properly consider the state of the Trademark Register and that the refusal on this basis should be withdrawn. Applicant submits that the co-existence of multiple registrations incorporating the term “GIGA” computer-related products demonstrate that Applicant’s “GIGA (Stylized)” mark can also co-exist on the Federal Register for its goods.
The Trademark Office records for the following cited Registrations do not show any opposition or cancellation actions brought by a third party. The absence of apparent concern among the existing Registrants suggests that the owners of these Registrations do not believe likelihood of confusion is likely to occur by the co-existence of the marks incorporating the same letters on the register.
Mark Reg. No. Goods/Services
GIGA VAULT 2,900,351 Computer hard disc drives
GIGAPEEK 2,991,063 Computer software and hardware for
network management and troubleshooting
GIGAVIZ 3,064,933 Computer software for visualization,
interpretation, and analysis of seismic data
in the field of oil and gas exploration and
production
GIGA-PULSE 78/294,888 Wireless and wire communication terminals,
modems and transceivers for establishing
communication between two or more
devices, for ultra-wideband
communications, for ultra-wideband digital
signal modulation, and for ultra-wideband
digital signal transmission and reception;
cellular and cordless telephones, personal
communication network handsets, personal
digital assistants, and personal and portable
computers; ultra-wideband digital signal
processing circuit assemblies; computer
software that enables voice, data, and video
transmission to be performed through an
ultra-wideband digital processor; computer
software for controlling an ultra-wideband
communication system; integrated circuits
that serve as ultra-wideband access points
for controlling a communication system;
digital signal processing circuit assemblies;
computer software for controlling and
testing an ultra-wideband communication
system; integrated circuits for ultra-
wideband modulation, ultra-wideband
demodulation, error correction encoding,
error correction decoding, vocoding and pre-
programmed memories containing computer
processor instructions; integrated circuits for
ultra-wideband communications
GIGASIM 2,625,537 Computer software for compilation and
simulation of electronic and electro-
mechanical designs
GIGASCREEN 2,643,524 Computer hardware and software providing
firewall protection, security, and encryption
GIGACLUSTER 2,436,416 Hardware and software which is used to
improve speed and performance for cluster
computing and parallel programming
GIGAPAK 2,782,615 Pre-recorded computer software featuring
music; computer software for use in storing
digital pictures; computer peripherals,
namely, CD wallets, CD racks, CD boxed;
blank digital picture media, namely, CDR,
CDRW, DVDs, floppy disks, compact flash
cards, smartmedia cards, also known as
smartcards, multimedia cards, also known as
VGA cards, TV cards, sound cards, video
cards, fax/modem cards, security digit cards,
more commonly referred to as fingerprint
identification sensor cards, and memory
stick cards
GIGAPIANO 2,685,863 Computer software that allows access to,
and real time interactive control of digitally
recorded musical instrument sounds
GIGASTUDIO 2,690,346 Computer software that allows access to,
and real time interactive control of digitally
recorded musical instrument sounds
GIGA 2,395,084 High-speed devices, namely integrated
circuits for transmission of on-chip analog
and digital signals for use in the
telecommunication, data communication and
video communication markets
Based on the above, Applicant submits that the co-existence of the Registrations noted above incorporating the term “GIGA” for computer-related goods creates a situation both on the Federal Register and in the marketplace where the Applicant’s mark “GIGA (Stylized)” can also co-exist.
Further, Applicant has located the following Registrations incorporating the term “GIGA” for goods including optical fibers, electrical switches, and electrical connectors. For example,
Mark Reg. No. Goods/Services
GIGATRUE 2,636,336 Electronic data communication cables, patch
panels, outlet wall plates, jacks and fiber
optic cables
GIGAGUIDE 2,448,182 High bandwith multimode optical fiber
GIGAPOF (Stylized) 3,075,910 Polymer optical fibers, polymer optical fiber
cables
GIGASCORE 2,459,005 Unified electrical cabling systems for high-
speed local area networks comprising
electrical connectors, electrical cables,
optical fibers cables, electrical patch panels
and switch cabinets, wiring looms,
modulators, routers, switches,
communication cards, electrical amplifiers;
software for tracking
GIGAFLEX 2,628,789 Electric wire, cable and connectors
GIGAWAVE 2,698,169 Fiber optic cables, fiber optic termination
cabinets, fiber optic cable frameworks for
housing fiber optic termination cabinets,
fiber optic terminal blocks, fiber optic
connector cabinets, frames and blocks, fiber
optic patchcords, fiber optic jumper cables,
and multi-fiber optic cable connectors for
cross-connecting fiber optic
telecommunications equipment
Applicant contends that the Registrations noted above include goods similar to ‘374 Registration, namely optical fibers and electrical components with some products specifically designated to be implement in telecommunications.
Thus, Applicant submits that if the Trademark Office determined the Registrations listed above can co-exist with ‘374 Registration, then its mark and ‘374 Registration can also co-exist.
Lastly, in considering all the Registrations listed above, Applicant contends that such widespread use of the term “GIGA”, apparently without confusion, indicates that consumers do not rely merely on the term “GIGA" in making their purchasing decisions. Rather, consumers have become sophisticated in identifying products incorporating this term. Since consumers are not likely to be confused by merely the use of "GIGA" on related goods, Applicant asserts that the marks are not confusingly similar to the cited marks.
In conclusion, Applicant submits that the co-existence of the Registrations noted above creates a situation both on the Federal Register and in the marketplace where the Applicant’s mark “GIGA (Stylized)” can also co-exist.
C. Any similarity of the goods is insufficient
Several cases have concluded that the difference between the marks themselves is sufficient findings to avoid a likelihood of confusion refusal, regardless of the similarity between the goods. In Pacquin-Lester , the court held that Pacquin-Lester Co., a marketer of beauty and bath lotion and oil for hands and skin under the registered mark SILK'N'SATIN, could not prevent Charmaceuticals from registering the mark SILK for face cream. The court placed great reliance on the amount of third party usage in the field. Despite the close relatedness of the goods, the court found that the marks had "obvious substantial differences . . . enough to prevent any reasonable likelihood of confusion, mistake or deception when the marks are applied to the respective goods . . .," Pacquin-Lester .
In Interstate Brands v. Celestial Seasonings, 198 USPQ 151 (CCPA 1978), appellant Interstate Brands owned ZINGERS for cakes and opposed Celestial Seasonings' application for registration of its mark RED ZINGER for herbal tea. The court that the mark had to be considered in its entirety, and the presence of the word "RED" could not be dismissed as an identifying factor insufficient to distinguish it from the mark ZINGER. The court allowed registration of RED ZINGER after it took into account nine third-party registrations of the formative "ZING-" as applied to various food and drink products.
In EZ Loader Boat Trailers v. Cox Trailers, Inc., 217 USPQ 986 (Fed.Cir. 1983), the court affirmed the decision of the Trademark Trial and Appeal Board dismissing opposition to SUPER LOADER for boat trailers filed by the owner of the marks EZ LOADER and MINI LOADER for marketing boater trailers. The Board held that it was appropriate to consider "that a portion of a mark (common to a corresponding portion of the mark of the other party) may be used in the sense that it is descriptive, highly suggestive or in such common use by other traders in the same market as to not have very much effect in distinguishing source." EZ Loader at 987 (Emphasis added). Despite finding that the case was close, the products were the same and were distributed through the same channels of trade to the same customers, the court upheld the Board's denial of the opposition.
Further, as to the relatedness of the goods analysis in the likelihood of confusion standard, the TTAB has addressed this issue in several cases. The Board has found that “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). See also In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987) (CROSSOVER for bras held not likely to be confused with CROSSOVER for ladies’ sportswear); In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977)(BOTTOMS UP for ladies’ and children’s underwear held not likely to be confused with BOTTOMS UP for men’s clothing); Local Trademarks, Inc. v. Handy Boys Inc., 1 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).
Further, a side-by-side comparison of the conflicting marks is improper if that is not the way buyers see the products in the marketplace. In Plough, Inc. v. Kreis Laboratories, 314 F. 2d 635, 136 USPQ 560 (9th Cir. 1963). If the conflicting marks are not shown side-by-side in the marketplace, then the court must determine the “purchasing public’s state of mind when confronted by somewhat similar trade names singly presented”. In Hemmeter Cigar Co. v. Congress Cigar Co., 118 F. 2d 64, 49 USPA 122 (6th Cir. 1941). “A side by side comparison of two designations may not be useful if the goods on which they are used do not appear in the market side by side. Two marks may appear similar when viewed together but may be clearly distinguishable in their market context…”. International Kennel Club Inc., v. Mighty Star, Inc., 846 F.2d 1079 6USPQ2d 1977 (5th Cir. 1988).
Registrant’s goods include computer cables, optical cables, network switches, and electric switches, all for use in the field of computers. Applicant’s goods are “blank discs for computers, computer keyboards, computers, hard discs for computers, modems” in Class 9 and “preparing advertisements for others; advertising agencies; advertising for others via an on-line electronic communications network; business investigations; retail store services featuring computers, computer peripherals and computer game software, available through on-line and department stores” in Class 35.
Applicant contends that the distinctions are even greater in that the products aren’t the same and are potentially distributed through different channels of trade. Applicant’s products include computer hardware or the physical equipment that makes up a computer system. Computer hardware is essentially the parts of a computer that the consumer can touch, i.e., the monitor, keyboard, disk drives. Further, Applicant’s products included peripheral hardware or components that consumers add to the central system unit of a computer, i.e., a monitor, printer, or mouse. In contrast, Registrant’s products include computer cables, optical cables, network switches, and electric switches.
Applicant contends that the products are highly dissimilar. Further, Applicant contends that it is unlikely that the products would be displayed in a side-by-side manner in a retail store. Computer hardware is typically reserved for one area of the retail store, while computer accessory equipment, such as cables, is typically reserved in a different area of the retail store. Thus, Applicant contends that consumers would not view the marks in a side-by-side manner lessening the possibility of likelihood of confusion.
The Marks are Not Similar
In Colgate-Palmolive Company v. Carter-Wallace, Inc., 167 USPQ 529, 530 (CCPA 1970), the court discussed the issue of likelihood of confusion between PEAK for dentrifice and PEAK PERIOD for personal deodorants. The court stated that "the 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. . . In their entireties they neither look nor sound alike." The court further examined the different meanings of the involved marks when applied to the specific goods and the different commercial impressions which would logically ensue there from. After such consideration, the court held that no likelihood of confusion existed.
Another case, Mr. Hero Sandwich Systems, Inc. v. Roman Meal Company, 228 USPQ 364 (Fed. Cir. 1986), discussed the issue of likelihood of confusion between ROMAN MEAL and ROMANBURGER. The court said that the word "ROMAN" in the mark ROMANBURGER is part of a unitary phrase that does not create the separable impression found in the Roman Meal marks. . . . 'Romanburger' is one word, not "Roman" plus another word. The mark is pronounced as one word, with sound and cadence distinctly different from the Roman Meal marks, . . . . We see no reason to believe, and there is no evidence on the point, that consumers are likely to extract 'Roman' from 'Romanburger' and rely on 'Roman' per se as an indication of source. Roman at 366. Also see Pacquin-Lester Company v. Charmaceuticals, Inc., 179 USPQ 45 (CCPA 1973) (SILK is not confusingly similar with SILK 'N SATIN); In re Ferrero, 178 USPQ 167 (CCPA 1973)(TIC TAC is not confusingly similar to TIC TAC TOE).
Based on the above discussion, Applicant asserts that its mark is not confusingly similar to the cited registration. As stated by the court in Mr. Hero Sandwich Systems, Inc. v. Roman Meal Company, the word “ROMANBURGER” is one word, not “Roman” plus another word”. Thus, Applicant contends that the Trademark Office cannot view Registrant’s mark “GIGAMEDIA” as one word, “GIGA”, plus another word. As stated above, “ROMANBURGER” is pronounced as one word, with sound and cadence distinctively different from “ROMAN MEALS”. Thus, Applicant requests that the Examining Attorney follow Mr. Hero Sandwich Systems, Inc. v. Roman Meal Company and find that “GIGAMEDIA” is distinctively different from “GIGA”, and that consumers are unlikely to rely on “GIGA” as an indication of source.
Applicant asserts that the dissimilarity of the marks and the dissimilarity of the products alleviate any concern over likelihood of confusion between the two marks. Applicant submits that the computer industry encompasses such a limitless territory of products that the realities of the marketplace, as established in the above arguments, demonstrate that the refusal based on likelihood of confusion should be withdrawn.
Potential Likelihood of Confusion
The Examining Attorney also advised of a potential refusal under Trademark Section 2(d) based on the position that the ‘083 application and ‘983 application have filing dates that precede Applicant’s filing dates.
First, Applicant contends that if cited application Serial No. 78/340,983 for “GIGIDATA” for the goods “Telecommunication services, namely, transmission of message, data and information via Ethernet circuits and/or internet”, and 78/452,083 for “GIGAMAIL” for the goods “Electronic mail services” can co-exist on the federal register and in the marketplace, than Applicant’s mark for “GIGA (Stylized)” can also co-exist.
The Trademark Office records for the following cited Registrations do not appear to show any opposition or cancellation actions brought by a third party. The absence of apparent concern among the existing Registrants suggests that the owners of these Registrations do not believe likelihood of confusion is likely to occur by the co-existence of the marks incorporating the same term on the register.
Further, Applicant notes that several marks incorporating the term “GIGA” for communication services have been registered. For example,
Mark Reg. No. Goods/Services
GIGA (Stylized) 2,395,084 Design for others of high-speed, namely
integrated circuits for transmission of on-
chip analog and digital signals for use in the
telecommunication, data communication and
video communication markets
GIGANEWS 2,670,812 Computer services, namely, providing news
feeds of information via a global computer
network for news and discussion groups;
usenet news services, namely on-line
searching, retrieval, and filtering of
information postings to usenet newsgroups
and discussion groups; providing an on-line
database featuring news
GIGATRUST 3,016,858 Technical support services, namely,
troubleshooting of problems associated with
secure communication software; design,
customization, installation, maintenance and
updating of computer software; and
providing information and technical
consulting in the fields of secure
communications and Internet security
GIGAWAVE 2,512,492 Training in the use of products relating to
TECHNOLOGIES wireless data communications; custom
curriculum development in the field of
wireless data communications; providing
certification courses in the field of wireless
data communications; and distribution of
course materials in connection therewith
THE GIGABIT 2,890,334 Computer network design for others;
EXPERTS computer hardware design for others; design
for others in the field of computers;
licensing of intellectual property
Further, such widespread use, apparently without confusion, indicates that consumers do not rely merely on the letters “GIGA" in making their purchasing decisions. Rather, consumers have become sophisticated in identifying products incorporating these letters. Since consumers are not likely to be confused by merely the use of "GIGA" on related goods, Applicant asserts that the marks are not confusingly similar to the cited marks.
In conclusion, Applicant submits that the co-existence of the Registrations noted above creates a situation both on the Federal Register and in the marketplace where the Applicant’s mark “GIGA (Stylized) can also co-exist.
Applicant asserts that the dissimilarity of the marks and the dissimilarity of the products alleviate any concern over likelihood of confusion between Applicant’s mark and cited Registration No. 2,825,374 and cited application Serial Nos. 78/340,983 and 78/452,083.
Applicant respectfully requests reconsideration and subsequent withdrawal of the refusal based on the prior registration listed. Applicant further requests advancement of the amended application to publication.