Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

EXAMINING ATTORNEY'S APPEAL BRIEF

 

Brigade Electronics PLC (hereinafter referred to as “appellant”) has appealed the Trademark

 

Examining Attorney’s refusal to register the proposed mark, BRIGADE.  Registration was refused

 

on the Principal Register under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because

 

applicant’s mark, when used on or in connection with the identified goods, so resembled the mark

 

in U.S. Registration No. 2929431, as to be likely to cause confusion, to cause mistake, or to

 

deceive.  TMEP §§1207.01 et seq.  The Trademark Examining Attorney respectfully requests that

 

this refusal be affirmed.  The Office reassigned this application to the undersigned

 

trademark examining attorney on November 9, 2005

 

FACTS

 

     On September 21, 2004, the appellant filed an application based on the Madrid Protocol to

 

register BRIGADE for the now-amended identification of goods of “closed circuit television

 

apparatus comprising television cameras and television monitors all for mounting on vehicles;

 

electrical or electronic switches, all for use in stopping or reducing the intake of polluted air into

 

the driver and/or passenger compartments of road vehicles” and “parts, electrical parts, and fittings

 

for motor land vehicles, namely, noiseless alarms and backup alarms.”

 

     In the first Office Action, mailed April 21, 2005, the examining attorney refused registration on

 

the Principal Register because the proposed mark so resembled the mark in U.S. Registration No.

 

2929431, as to be likely to cause confusion, to cause mistake, or to deceive.  The cited mark is also

 

for BRIGADE for “automobiles.”  On October 25, 2005, the appellant submitted a response to the

 

examining attorney’s first office action asserting that no such confusion was likely to occur

 

because although the marks may be identical, “confusion is not likely if the goods bearing the

 

marks in question are not related or not marketed in such a way that they would be encountered by

 

the same persons in situations that would create incorrect assumptions as to the source of those

 

goods.”  On March 17, 2006, the examining attorney made the refusal to register final and

 

submitted evidence in the nature of third party U.S. registrations of marks used in connection with

 

the same or similar goods as those of applicant and registrant.  On November 10, 2006, appellant

 

filed an appeal brief.  The examining attorney has considered the appellant’s arguments carefully

 

but has found them unpersuasive.

 

ISSUE

 

WHETHER THE PROPOSED MARK SO RESEMBLES U.S. REGISTRATION NO. 2929431

 

AS TO BE LIKELY TO CAUSE CONFUSION, TO CAUSE MISTAKE, OR TO DECEIVE.

 

 

ARGUMENTS

 

I.                                 THE PROPOSED MARK IS LIKELY TO CAUSE CONFUSION WITH U.S,

 

REGISTRATION NO. 2929431

 

 

     The examining attorney refused and maintained the refusal of registration on the Principal

 

Register because the proposed mark was likely to cause confusion with Registration No. 2929431.

 

Trademark Act Section 2(d), 15 U.S.C. §1052(d)

 

     The Court in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A.

 

1973), listed the principal factors to be considered in determining whether there is a likelihood of

 

confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case,

 

depending upon the evidence of record.  In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d

 

1531, 1533 (Fed. Cir. 1997).  In this case, the following factors are the most relevant:  similarity of

 

the marks, similarity of the goods and/or services, and similarity of trade channels of the goods

 

and/or services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s

 

Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Restaurant Enterprises, Inc., 50

 

USPQ2d 1209 (TTAB 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998); TMEP

 

§§1207.01 et seq.

  

     Taking into account the relevant du Pont factors, a likelihood of confusion determination in this

 

case involves a two-part analysis.  First, the marks are compared for similarities in appearance,

 

sound, connotation and commercial impression.  In re E .I. du Pont de Nemours & Co., 476 F.2d

 

1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the goods or services are compared to determine

 

whether they are similar or related or whether the activities surrounding their marketing are such

 

that confusion as to origin is likely.  In re National Novice Hockey League, Inc., 222 USPQ 638

 

(TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel.

 

Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738

 

(TTAB 1978); TMEP §§1207.01 et seq.

 

 

 

 

 

Comparison of the Marks 

When determining whether there is a likelihood of confusion under Section 2(d), the question is not

whether people will confuse the marks, but rather whether the marks will confuse the people into

believing that the goods they identify emanate from the same source.  In re West Point-Pepperell,

Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).  For that reason, the test of likelihood of

confusion is not whether the marks can be distinguished when subjected to a side-by-side

comparison.  The question is whether the marks create the same overall impression.  Visual

Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the

recollection of the average purchaser who normally retains a general rather than specific

impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537

(TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP

§1207.01(b). 

 

     In this case, the marks are identical in sound, appearance and commercial impression.  

 

Applicant’s mark is BRIGADE.   The registered mark is also for BRIGADE.  Applicant has not

 

contested the similarity between the marks.

 

Comparison of the Goods

     When determining whether there is a likelihood of confusion, all circumstances surrounding the

sale of the goods and/or services are considered.  Industrial Nucleonics Corp. v. Hinde, 475 F.2d

1197, 177 USPQ 386 (C.C.P.A. 1973).  These circumstances include the marketing channels, the

identity of the prospective purchasers and the degree of similarity between the marks and between

the goods and/or services.  In comparing the marks, similarity in any one of the elements of sound,

appearance or meaning is sufficient to find a likelihood of confusion.  In comparing the goods

and/or services, it is necessary to show that they are related in some manner.  In re Mack, 197

USPQ 755, 757 (TTAB 1977); TMEP §§1207.01 et seq.

     The applicant has applied to register BRIGADE for the now-amended “closed circuit television

apparatus comprising television cameras and television monitors all for mounting on vehicles;

electrical or electronic switches, all for use in stopping or reducing the intake of polluted air into

the driver and/or passenger compartments of road vehicles” and “Parts, electrical parts, and fittings

for motor land vehicles, namely, noiseless alarms and backup alarms.  The registered mark,

BRIGADE, is for “automobiles.”

 

     The Trademark Trial and Appeal Board has consistently found “that manufacturers of vehicles

 

also produce accessories and attachments for these goods and market them under the same

 

mark.  This has been recognized by the fact that it has consistently been held over the years that

 

there is such a definite relationship between a vehicle and the various accessories, parts, and

 

attachments thereof in the mind of the average person that the marketing thereof by different

 

parties under the same or similar marks is likely to cause confusion as to source.”  In re General

 

Motors Corp., 23 USPQ2d 1465, 1469 (TTAB 1992) (quoting In re Sien Equipment Co., 190

 

USPQ 84, 85 (TTAB 1976)); see In re Jeep Corp., 222 USPQ 333 (TTAB 1984); In re General

 

Motors Corp., 196 USPQ 574 (TTAB 1977); Jetzon Tire & Rubber Corp. v. General Motors

 

Corp., 177 USPQ 476 (TTAB 1973).

 

     In its appeal brief, applicant asserts that its goods are for “improving the operational safety of

 

commercial vehicles, trucks, construction equipment and passenger vehicles.  These goods include

 

noiseless alarms, backup alarms, and electrical and electronic parts and fittings for motor land

 

vehicles… The goods with which the marks are used or intended for use are not complementary.”

 

Such a claim is incorrect.  The registered goods are for “automobiles” which applicant has defined

 

as “four wheel vehicles designed for passengers transportation.”  The applicant’s identification lists

 

goods that are specifically and only for vehicles.  It reads: “closed circuit television apparatus

 

comprising television cameras and television monitors all for mounting on vehicles; electrical or

 

electronic switches, all for use in stopping or reducing the intake of polluted air into the driver

 

and/or passenger compartments of road vehicles” and “parts, electrical parts, and fittings for

 

motor land vehicles, namely, noiseless alarms and backup alarms.”  There can be no doubt that

 

applicant’s goods and the registered goods are complementary, as one was designed to be used in

 

conjunction with the other.

 

     In its brief, applicant further asserts “consumers seeking to purchase ‘automobiles’ under the

 

registered mark would not encounter the applicant’s mark in the same conditions, in the same

 

markets or under the same circumstances.  The market for goods that improve the safety of

 

vehicles is distinct and completely separate from the market to purchase new or used vehicles”, but

 

has never offered evidence of any kind to support this claim. 

 

     Likelihood of confusion is determined on the basis of the goods and/or services identified in the

 

application and registration.  If the application describes the goods and/or services broadly and

 

there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is

 

presumed that the application encompasses all goods and/or services of the type described, that

 

they move in all normal channels of trade, and that they are available to all potential customers. 

 

See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of

 

trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive

 

…There is no restriction [in its identification of goods] as to the channels of trade in which the

 

goods are sold”); TMEP §1207.01(a)(iii).

 

     The applicant submitted no evidence regarding difference in market channels or its claim that

 

the market of vehicle safety is different from automobiles in general.  The examining attorney, on

 

the other hand, submitted evidence of third party U.S. registrations of marks used in connection

 

with the same or similar goods and/or services as those of applicant and registrant in this case. 

 

These printouts have probative value to the extent that they serve to suggest that the goods listed in

 

the application and registration are of a kind that may emanate from a single source.  See In re

 

Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons

 

 

 

Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d

 

1467, 1470 at n.6 (TTAB 1988).

 

CONCLUSION

 

     For the foregoing reasons, it is requested that the refusal to register be affirmed on the ground

 

that the proposed mark BRIGADE when used on or in connection with the identified goods, so

 

resembles the mark in U.S. Registration No. 2929431, as to be likely to cause confusion, to cause

 

mistake, or to deceive.  Trademark Act Section 2(d), 15 U.S.C. §1052(d)

 

 

                                           Respectfully submitted,

 

/Sani Khouri/

Examining Attorney

Law Office 110

571-272-5884-Phone

571-273-9110-Fax

 

 

Chris A. F. Pedersen

Managing Attorney

Law Office - 110