| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 78696623 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
The Marks are not Likely to be Confused Applicant applied to register the mark MOUSE MOVER for "electronic and ultrasonic pest control devices" Registration of the Applicant’s mark has been refused on the grounds that the mark is likely to cause confusion with Registration No. 2,474,432 for the mark MOLE MOVER for "battery-operated rodent deterrent devices which emit vibrations to drive away rodents." The Applicant disagrees with the likelihood of confusion analysis and respectfully requests that the Examining Attorney reconsider the refusal. The marks are not confusingly similar because the goods do not travel within the same channels of trade. In determining likelihood of confusion the Examiner must consider the similarities between the marks and the relatedness of the goods or services. See generally TMEP Section 1207.01; In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357; 177 USPQ 563 (C.C.P.A. 1973). The marks are not so substantially similar as to create a likelihood of confusion. The Applicant’s and Registrant’s marks share the term MOVER. The mere fact that marks contain similar elements does not, by itself render the marks confusingly similar. When making a determination as to likelihood of confusion between marks, one must consider not only the similarities between the marks, but also the strength of the cited mark. The strength of the registered mark dictates the scope of protection of the mark. Words with commonly understood meanings or that are descriptive or highly suggestive in nature are considered to be weak trademarks, and are afforded a narrower scope of protection. See King Candy Co. v. Eunice King’s Kitchen, Inc., 182 USPQ 108, 109-110 (C.C.P.A. 1974)(holding MISS KINGS for "cakes" not likely to be confused with KINGS for "candy" since KINGS is a weak mark). In this instance, MOVER is not a particularly strong term since it is very highly suggestive of the fact that the goods repel or move pests. For this reason, the term MOVER should not be granted as much protection as a term that might be considered an arbitrary or coined expression, which consumers are recognize as an indication of source. See e.g., Ashe v. Pepsico, Inc., 205 USPQ 451 (S.D.N.Y. 1979)(finding no likelihood of confusion between ADVANTAGE ASHE for "tennis glasses" and ADVANTAGE for "tennis rackets" because ADVANTAGE is a highly suggestive weak mark). Since the common element of the marks, MOVER, is so highly suggestive of the quality of Registrants’ goods, it is prudent for the Examiner to consider the differences in the marks as well as the goods with which the marks are used to determine whether consumers are likely to be confused as to source. The goods offered in connection with the marks are not confusingly similar. In the Office Action, it is suggested that the Applicant’s goods are highly related to the goods identified in the registrations because they are likely to travel within the same channels of trades and be marketed together. The Examining Attorney asserts that in determining likelihood of confusion, all circumstances surrounding the marketing of the goods and/or services are considered. These circumstances include the marketing channels, the identity of the prospective purchasers, and the degree of similarity between the goods and/or services. Application of this standard to the current matter, demonstrates that the marks are not likely to be confused. Applicant’s goods are high-end products that are marketed to consumers through its stores and through catalogs featuring the goods. The product is a plug-in device that emits ultrasonic waves that drive away mice. Registrant’s products cannot be found in Applicant’s stores or in catalogs featuring Applicant’s products. Hence, confusion should be unlikely. Given the differences in the marks, the manner in which the products are marketed, the channels of trade in which they are marketed, and the types of consumers who will come in contact with the products, there should no likelihood of confusion. In view of the foregoing remarks, Applicant requests that the Examining Attorney withdraw the likelihood of confusion refusal. |
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| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | Electronic and ultrasonic pest control devices |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 07/00/2005 |
| FIRST USE IN COMMERCE DATE | At least as early as 07/00/2005 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Electronic and ultrasonic devices for use in the control of pests and rodents, namely electronic and ultrasonic repelling devices. | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 07/00/2005 |
| FIRST USE IN COMMERCE DATE | At least as early as 07/00/2005 |
| ADDITIONAL STATEMENTS SECTION | |
| DISCLAIMER | "No claim is made to the exclusive right to use MOUSE apart from the mark as shown." |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /knr/ |
| SIGNATORY'S NAME | Kimberly N. Reddick |
| SIGNATORY'S POSITION | Attorney for Applicant |
| DATE SIGNED | 09/11/2006 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Sep 11 18:29:42 EDT 2006 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0060911182942140168-78696 623-340652c7ebefadaed84f4 866357cb32f2b-N/A-N/A-200 60911182420018375 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
The Marks are not Likely to be Confused
Applicant applied to register the mark MOUSE MOVER for "electronic and ultrasonic pest control devices" Registration of the Applicant’s mark has been refused on the grounds that the mark is likely to cause confusion with Registration No. 2,474,432 for the mark MOLE MOVER for "battery-operated rodent deterrent devices which emit vibrations to drive away rodents."
The Applicant disagrees with the likelihood of confusion analysis and respectfully requests that the Examining Attorney reconsider the refusal. The marks are not confusingly similar because the goods do not travel within the same channels of trade.
In determining likelihood of confusion the Examiner must consider the similarities between the marks and the relatedness of the goods or services. See generally TMEP Section 1207.01; In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357; 177 USPQ 563 (C.C.P.A. 1973).
The marks are not so substantially similar as to create a likelihood of confusion.
The Applicant’s and Registrant’s marks share the term MOVER. The mere fact that marks contain similar elements does not, by itself render the marks confusingly similar. When making a determination as to likelihood of confusion between marks, one must consider not only the similarities between the marks, but also the strength of the cited mark. The strength of the registered mark dictates the scope of protection of the mark. Words with commonly understood meanings or that are descriptive or highly suggestive in nature are considered to be weak trademarks, and are afforded a narrower scope of protection. See King Candy Co. v. Eunice King’s Kitchen, Inc., 182 USPQ 108, 109-110 (C.C.P.A. 1974)(holding MISS KINGS for "cakes" not likely to be confused with KINGS for "candy" since KINGS is a weak mark). In this instance, MOVER is not a particularly strong term since it is very highly suggestive of the fact that the goods repel or move pests. For this reason, the term MOVER should not be granted as much protection as a term that might be considered an arbitrary or coined expression, which consumers are recognize as an indication of source. See e.g., Ashe v. Pepsico, Inc., 205 USPQ 451 (S.D.N.Y. 1979)(finding no likelihood of confusion between ADVANTAGE ASHE for "tennis glasses" and ADVANTAGE for "tennis rackets" because ADVANTAGE is a highly suggestive weak mark).
Since the common element of the marks, MOVER, is so highly suggestive of the quality of Registrants’ goods, it is prudent for the Examiner to consider the differences in the marks as well as the goods with which the marks are used to determine whether consumers are likely to be confused as to source.
The goods offered in connection with the marks are not confusingly similar.
In the Office Action, it is suggested that the Applicant’s goods are highly related to the goods identified in the registrations because they are likely to travel within the same channels of trades and be marketed together.
The Examining Attorney asserts that in determining likelihood of confusion, all circumstances surrounding the marketing of the goods and/or services are considered. These circumstances include the marketing channels, the identity of the prospective purchasers, and the degree of similarity between the goods and/or services. Application of this standard to the current matter, demonstrates that the marks are not likely to be confused.
Applicant’s goods are high-end products that are marketed to consumers through its stores and through catalogs featuring the goods. The product is a plug-in device that emits ultrasonic waves that drive away mice. Registrant’s products cannot be found in Applicant’s stores or in catalogs featuring Applicant’s products. Hence, confusion should be unlikely.
Given the differences in the marks, the manner in which the products are marketed, the channels of trade in which they are marketed, and the types of consumers who will come in contact with the products, there should no likelihood of confusion. In view of the foregoing remarks, Applicant requests that the Examining Attorney withdraw the likelihood of confusion refusal.