| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 79042902 |
| LAW OFFICE ASSIGNED | LAW OFFICE 102 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
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The Examining Attorney refused registration of the Applicant’s mark under Section 2(d) of the Trademark Act, because it was found that the mark, when used on or in connection with the specified services, so resembles the mark in U.S. Registration No. 3167265 as to be likely to cause confusion, to cause mistake, or to deceive. The Applicant respectfully disagrees with the Examining Attorney, and requests reconsideration of the refusal to register.
In determining whether marks are likely to be confused under Trademark Act Section 2(d), a series of factors are examined, each factor playing a more dominant or diminished role depending on the facts of the case. 15 U.S.C. Section 1053(d); In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). In the instant application, an analysis of all the relevant factors supports a finding that confusion is not “likely”, rendering a refusal under Section 2(d) inappropriate.
At the outset, it must be borne in mind that under the Trademark Act, a refusal to register based upon a likelihood of confusion requires that confusion as to the source of the goods or services not merely be possible, but likely. The Second Circuit has stated that, “likelihood of confusion means a probability of confusion; it is not sufficient if confusion is merely ‘possible.’” Estee Lauder, Inc. v. The Gap, Inc., 42 U.S.P.Q.2d 1228 (2d Cir. 1997) (internal quotations omitted) quoting 2 J. McCarthy, Trademarks and Unfair Competition, Section 23:3. No single factor is dispositive. DuPont, 476 F.2d 1357, 1362, 177 U.S.P.Q. 563 (C.C.P.A. 1973). As set forth below, the goods and services of the Applicant as amended and those of the Registrant are of such a distinct nature, are offered in different channels of trade, and marketed to consumers exercising a high degree of care that it is unlikely consumers will be confused as to the source of the respective goods.
It is a well-established principle of trademark law that in order to support a holding of likelihood of confusion, the respective goods or services at issue must be related in some manner, or the conditions and activities surrounding the marketing of the goods or services are such that they would or could be encountered by the same persons under circumstances that could give rise to the mistaken belief that they originate from the same source. In re Hal Leonard Publishing Corp., 15 U.S.P.Q.2d 1547, 1575 (T.T.A.B. 1990), citing In re International Telephone & Telegraph Corp., 197 U.S.P.Q. (T.T.A.B. 1978). This is one of the factors to be considered in a confusion analysis. DuPont, 476 F.2d at 1361-62, 177 U.S.P.Q. at 567. If the goods and services at issue are not related, even if the marks are identical, confusion is not likely. See, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 U.S.P.Q.2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); 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 and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 U.S.P.Q.2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field).
In the instant case, the goods and services included under Applicant’s mark as amended are of such a distinct nature, that consumer confusion is unlikely. Applicant has deleted the problematic goods, namely the “scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life saving and teaching apparatus and instruments; and apparatus for recording, transmitting and reproducing sound or images” in Class 9 from its application. Specifically, the goods remaining in Applicant’s identification of goods and services are limited to developing, manufacturing, and marketing automotive safety sensing applications for occupant detection and classification. It is highly unlikely that consumers will assume a common source to such disparate offerings as the amended goods and services offered by the Applicant and the “physiological monitor worn by a person for recording and displaying exercise time, calories used and sleep” offered by the Registrant. If the goods and services are completely unrelated confusion is unlikely. Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 67 U.S.P.Q.2d 1420 (2d Cir. 2003); Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Center, 109 F.3d 275, 282, 42 U.S.P.Q. 2d 1173 (6th Cir. 1997) (citing Champions Golf Club, Inc. v. Champions Gold Club, Inc., 78 F.3d 1111, 1118 (6th Cir. 1996)); see e.g. Lang v. Retirement Publ. Co. Inc., 949 F.2d 576, 21 U.S.P.Q.2d 1041 (2d Cir. 1991) (magazine on retirement living and books based on enhancing charisma neither compete nor serve the same purpose).
Further mitigating any chance for confusion is that the goods of the respective parties are offered in distinct channels of trade; the threshold significance of the trade channels is where they lead and whether the same class of persons is exposed to the marks in issue under circumstances likely to result in confusion. Jeanne-Marc, Inc. v. Cluett, Peabody & Co., Inc., 221 U.S.P.Q. 58, 61 (T.T.A.B. 1984); TCPIP Holding Co. v. Haar Communications, 244 F.3d 88, 91, 57 U.S.P.Q.2d 1969 (2d Cir. 2001) (similar buyers targeted). This evokes another DuPont factor – the dissimilarity of the trade channels in which the relevant services are sold. DuPont, 476 F.2d at 1361-1362, 177 U.S.P.Q. at 567. The goods identified in the cited registration include physiological monitors used to monitor the user’s health and wellness. Such goods are offered to employers looking to mitigate health insurance costs or individuals interested in improving their overall health. Exhibit A. In contrast, the Applicant markets highly specialized goods and services to the automotive industry. The Applicant’s goods are not offered through traditional retail outlets. Consumers of the goods included in the cited registration may never come into contact with the goods marketed by the Applicant, let alone under conditions likely to cause confusion.
Consumers of the Applicant’s goods will exercise a high degree of care in selecting the appropriate products necessary to meet their needs. The degree of consumer sophistication and conditions under which the sale is made is yet another DuPont factor that weighs in favor of the Applicant. Dupont, 476 F.2d at 1361-1362, 177 U.S.P.Q. at 567. A purchaser who has a “reasonably focused need” or “specific purpose” or plan for the product, an added duty of care, or the product is essential to his or her business, will exercise a higher degree of care in selecting the product. See e.g. Haydon Switch & Instr., Inc. v. Rexnord, Inc., 4 U.S.P.Q.2d 1510, 1517 (D. Conn. 1987) (specific products for specific industrial purpose); G.H. Mumm & Cie v. Desnoes & Geddes, Ltd., 917 F.2d 1292, 16 U.S.P.Q.2d 1635, 1638 (Fed. Cir. 1990) (“focused need” for champagne); Cliffs Notes, Inc. v. Bantam Doubleday Dell Publi’g Group, Inc., 886 F.2d 490, 496, 12 U.S.P.Q.2d 1289, 1293 (2d Cir. 1989) (reader of Cliffs Notes probably has specific book in mind); Barre-Nat’l, Inc. v. Barr Labs., Inc., 773 F.Supp. 735, 21 U.S.P.Q.2d 1755, 1761 (D.N.J. 1991) (pharmacist ordering pharmaceutical); Checkpoint, 269 F.3d 270, 60 U.S.P.Q.2d at 1618.
The Applicant’s goods and services are so highly specialized that consumers, namely those in the automotive industry, will exercise a great deal of care to ensure that the specific components meet their particular automotive safety needs. Further, since these goods and services are used to increase automobile safety, those utilizing Applicant’s goods and services will exercise a high degree of care in selecting and properly installing the appropriate sensors.
In light of the foregoing discussion and considerations, Applicant respectfully submits that maintaining the Section 2(d) refusal in this instance would serve to establish a monopoly for the cited registrant in an overly broad channel of trade. The Registrant’s mark is limited to use for “physiological monitor worn by a person for recording and displaying exercise time, calories used and sleep”, however should the Examiner maintain the 2(d) refusal to register the Applicant’s mark the result will be to extend protection of the Registrant’s mark over all goods in Class 9. The goods of the respective parties are expressly named, and serve highly specialized functions; the cited registration does not in fact include electronics and sensors used in the automotive industry, but rather is limited to health monitors. Refusing to register the Applicant’s mark for the goods and serves as amended, based on the cited registration serves to impermissibly expand the scope of the registration. The result of maintaining the refusal in the instant case would be to expand the scope of a registration for highly specified health monitor over all goods included in Class 9. If the Registrant sought protection for other electronic goods, its application would have so indicated. To extend protection of Registrant’s mark to include electronics and monitors generally improperly expands the scope of protection afforded by the Lanham Act.
While the Lanham Act does protect a senior user’s reasonable zone of business expansion from junior use of a mark, such is not the case where the goods at issue differ in non-trivial respects and share only minimal areas of competing use. Vitarroz Corp. v. Borden, Inc., 209 U.S.P.Q. 969, 975-976 (2nd Cir. 1981) (no likelihood of confusion between BRAVOS for tortilla chips and BRAVO’S for crackers). As discussed above, the differences between the respective parties’ goods are not trivial and are readily perceptible. The respective goods serve unique and specialized functions. There is no overlap in their areas of use, or in the prospective purchasers thereof. The Vitarroz court acknowledged its disapproval of the previously existing rule granting a “premonitory lien” on a “future” or “adjacent” market, attributing such as a “great injustice.” Id. at 975 n. 4. The analysis property takes into account the nature of the products and the structure of the market in which those products are placed. Id. at 975.
Given the significant differences between the goods and services with which the parties’ marks are used, it cannot be said that confusion is more than merely “possible.” Considering the totality of the circumstances in the instant application, the threshold of “probability” is not reached in this case. The Applicant therefore submits that consumer confusion is not likely, and respectfully requests that the Applicant’s mark be placed upon the Principal Register.
In view of the amendments and remarks set forth herein, and in further view of the fact that a search of the Office records found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), the Applicant believes that the Office Action has been fully responded to and believes the application is in condition for registration. It is respectfully requested that the Examining Attorney reconsider the refusal to register and pass this application to registration on the Principal Register.
In the event the Examining Attorney has any queries regarding the instantly submitted amendments and remarks, the Applicant’s attorney respectfully requests the courtesy of a telephone conference to discuss any matters in need of attention.
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_121575983-152611414_._Exhibit_A.pdf |
| CONVERTED PDF FILE(S) (5 pages) |
\\TICRS\EXPORT\IMAGEOUT\790\429\79042902\xml1\ROA0002.JPG |
| \\TICRS\EXPORT\IMAGEOUT\790\429\79042902\xml1\ROA0003.JPG | |
| \\TICRS\EXPORT\IMAGEOUT\790\429\79042902\xml1\ROA0004.JPG | |
| \\TICRS\EXPORT\IMAGEOUT\790\429\79042902\xml1\ROA0005.JPG | |
| \\TICRS\EXPORT\IMAGEOUT\790\429\79042902\xml1\ROA0006.JPG | |
| DESCRIPTION OF EVIDENCE FILE | website excerpt |
| GOODS AND/OR SERVICES SECTION (009)(current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmitting and reproducing sound or images; magnetic recording media, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing and computer equipment; fire extinguishers; processors (central processing units); chips (integrated circuits); printed circuits; integrated circuits; interfaces (computing); electric and/or electronic sensors; sensors; pressure indicators; pressure sensors; speed and/or distance indicators; software (recorded programs); data acquisition and processing devices; capacitive sensors (electric and/or electronic sensors); electric field detectors and sensors and detectors and sensors for deformation or modification in an electric field | |
| GOODS AND/OR SERVICES SECTION (009)(proposed) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Blank magnetic discs for recording; cash registers, data processing and computer equipment, namely data processors and computers for monitoring a car seat occupancy; fire extinguishers; Central processing units (CPU); electronic chips for the manufacturer of integrated circuits; printed circuits; integrated circuits; computer interface boards; electric and electronic sensors for identifying the spatial location of objects and people; pressure indicators; pressure sensors; speed and/or distance indicators; computer software for three-dimensional image recognition and processing, for car seat occupancy monitoring and static occupant classification; data acquisition and processing devices, namely system for monitoring and classifying a car seat occupancy and suppressing airbag where needed; capacitive sensors, namely electrical field sensors in the passenger seat to monitor and classify a car seat occupancy; electric field detectors and sensors and detectors and sensors for deformation or modification in an electric field, namely for evaluating change in electrical field to detect seat occupancy | |
| GOODS AND/OR SERVICES SECTION (012)(current) | |
| INTERNATIONAL CLASS | 012 |
| DESCRIPTION | |
| Vehicles; apparatus for locomotion by land, air or water; air bags (safety devices for automobiles) and parts thereof for their deployment, pre-positioning or positioning | |
| GOODS AND/OR SERVICES SECTION (012)(proposed) | |
| INTERNATIONAL CLASS | 012 |
| DESCRIPTION | |
| Land vehicles; air bags (safety devices for automobiles) and parts thereof for their deployment, pre-positioning or positioning | |
| GOODS AND/OR SERVICES SECTION (042)(current) | |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION | |
| Technological services and related research and design services; industrial analysis and research services; computer systems design; design of three-dimensional image analysis and processing devices for vehicles; mechanical research; technical research; technical project studies; appraisals (engineering services); design, development, installation, updating and maintenance of software; research and development of new products (for third parties) | |
| GOODS AND/OR SERVICES SECTION (042)(proposed) | |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION | |
| Technological consultation and research in the field of automobile safety improvement as well as design relating thereto; industrial analysis and research services, namely research in the field of sensory technology, encoding apparatus, and vehicle safety; design of computers for others; custom design of three-dimensional image analysis and processing devices for vehicles based on personal selections made by the customer; mechanical research; technical research in the field of automobile safety improvement and ergonomics; technical research in the nature of technical project studies in the field of automobile safety improvements and ergonomics; design, development, installation, updating and maintenance of software; research and development of new products for others | |
| CORRESPONDENCE SECTION | |
| NAME | Michelle P. Ciotola |
| FIRM NAME | Cantor Colburn LLP |
| INTERNAL ADDRESS | 22nd Floor |
| STREET | 20 Church Street |
| CITY | Hartford |
| STATE | Connecticut |
| ZIP/POSTAL CODE | 06103-3207 |
| COUNTRY | United States |
| PHONE | 860-286-2929 |
| FAX | 860-286-0115 |
| TM-CT@cantorcolburn.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Michelle P. Ciotola/ |
| SIGNATORY'S NAME | Michelle P. Ciotola |
| SIGNATORY'S POSITION | Attorney of Record |
| DATE SIGNED | 04/21/2008 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Apr 21 15:37:44 EDT 2008 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XX-20 080421153744878130-790429 02-42001353883b664617eb82 11ecd549a-N/A-N/A-2008042 1152611414748 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
The Examining Attorney refused registration of the Applicant’s mark under Section 2(d) of the Trademark Act, because it was found that the mark, when used on or in connection with the specified services, so resembles the mark in U.S. Registration No. 3167265 as to be likely to cause confusion, to cause mistake, or to deceive. The Applicant respectfully disagrees with the Examining Attorney, and requests reconsideration of the refusal to register.
In determining whether marks are likely to be confused under Trademark Act Section 2(d), a series of factors are examined, each factor playing a more dominant or diminished role depending on the facts of the case. 15 U.S.C. Section 1053(d); In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). In the instant application, an analysis of all the relevant factors supports a finding that confusion is not “likely”, rendering a refusal under Section 2(d) inappropriate.
At the outset, it must be borne in mind that under the Trademark Act, a refusal to register based upon a likelihood of confusion requires that confusion as to the source of the goods or services not merely be possible, but likely. The Second Circuit has stated that, “likelihood of confusion means a probability of confusion; it is not sufficient if confusion is merely ‘possible.’” Estee Lauder, Inc. v. The Gap, Inc., 42 U.S.P.Q.2d 1228 (2d Cir. 1997) (internal quotations omitted) quoting 2 J. McCarthy, Trademarks and Unfair Competition, Section 23:3. No single factor is dispositive. DuPont, 476 F.2d 1357, 1362, 177 U.S.P.Q. 563 (C.C.P.A. 1973). As set forth below, the goods and services of the Applicant as amended and those of the Registrant are of such a distinct nature, are offered in different channels of trade, and marketed to consumers exercising a high degree of care that it is unlikely consumers will be confused as to the source of the respective goods.
It is a well-established principle of trademark law that in order to support a holding of likelihood of confusion, the respective goods or services at issue must be related in some manner, or the conditions and activities surrounding the marketing of the goods or services are such that they would or could be encountered by the same persons under circumstances that could give rise to the mistaken belief that they originate from the same source. In re Hal Leonard Publishing Corp., 15 U.S.P.Q.2d 1547, 1575 (T.T.A.B. 1990), citing In re International Telephone & Telegraph Corp., 197 U.S.P.Q. (T.T.A.B. 1978). This is one of the factors to be considered in a confusion analysis. DuPont, 476 F.2d at 1361-62, 177 U.S.P.Q. at 567. If the goods and services at issue are not related, even if the marks are identical, confusion is not likely. See, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 U.S.P.Q.2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); 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 and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 U.S.P.Q.2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field).
In the instant case, the goods and services included under Applicant’s mark as amended are of such a distinct nature, that consumer confusion is unlikely. Applicant has deleted the problematic goods, namely the “scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life saving and teaching apparatus and instruments; and apparatus for recording, transmitting and reproducing sound or images” in Class 9 from its application. Specifically, the goods remaining in Applicant’s identification of goods and services are limited to developing, manufacturing, and marketing automotive safety sensing applications for occupant detection and classification. It is highly unlikely that consumers will assume a common source to such disparate offerings as the amended goods and services offered by the Applicant and the “physiological monitor worn by a person for recording and displaying exercise time, calories used and sleep” offered by the Registrant. If the goods and services are completely unrelated confusion is unlikely. Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 67 U.S.P.Q.2d 1420 (2d Cir. 2003); Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Center, 109 F.3d 275, 282, 42 U.S.P.Q. 2d 1173 (6th Cir. 1997) (citing Champions Golf Club, Inc. v. Champions Gold Club, Inc., 78 F.3d 1111, 1118 (6th Cir. 1996)); see e.g. Lang v. Retirement Publ. Co. Inc., 949 F.2d 576, 21 U.S.P.Q.2d 1041 (2d Cir. 1991) (magazine on retirement living and books based on enhancing charisma neither compete nor serve the same purpose).
Further mitigating any chance for confusion is that the goods of the respective parties are offered in distinct channels of trade; the threshold significance of the trade channels is where they lead and whether the same class of persons is exposed to the marks in issue under circumstances likely to result in confusion. Jeanne-Marc, Inc. v. Cluett, Peabody & Co., Inc., 221 U.S.P.Q. 58, 61 (T.T.A.B. 1984); TCPIP Holding Co. v. Haar Communications, 244 F.3d 88, 91, 57 U.S.P.Q.2d 1969 (2d Cir. 2001) (similar buyers targeted). This evokes another DuPont factor – the dissimilarity of the trade channels in which the relevant services are sold. DuPont, 476 F.2d at 1361-1362, 177 U.S.P.Q. at 567. The goods identified in the cited registration include physiological monitors used to monitor the user’s health and wellness. Such goods are offered to employers looking to mitigate health insurance costs or individuals interested in improving their overall health. Exhibit A. In contrast, the Applicant markets highly specialized goods and services to the automotive industry. The Applicant’s goods are not offered through traditional retail outlets. Consumers of the goods included in the cited registration may never come into contact with the goods marketed by the Applicant, let alone under conditions likely to cause confusion.
Consumers of the Applicant’s goods will exercise a high degree of care in selecting the appropriate products necessary to meet their needs. The degree of consumer sophistication and conditions under which the sale is made is yet another DuPont factor that weighs in favor of the Applicant. Dupont, 476 F.2d at 1361-1362, 177 U.S.P.Q. at 567. A purchaser who has a “reasonably focused need” or “specific purpose” or plan for the product, an added duty of care, or the product is essential to his or her business, will exercise a higher degree of care in selecting the product. See e.g. Haydon Switch & Instr., Inc. v. Rexnord, Inc., 4 U.S.P.Q.2d 1510, 1517 (D. Conn. 1987) (specific products for specific industrial purpose); G.H. Mumm & Cie v. Desnoes & Geddes, Ltd., 917 F.2d 1292, 16 U.S.P.Q.2d 1635, 1638 (Fed. Cir. 1990) (“focused need” for champagne); Cliffs Notes, Inc. v. Bantam Doubleday Dell Publi’g Group, Inc., 886 F.2d 490, 496, 12 U.S.P.Q.2d 1289, 1293 (2d Cir. 1989) (reader of Cliffs Notes probably has specific book in mind); Barre-Nat’l, Inc. v. Barr Labs., Inc., 773 F.Supp. 735, 21 U.S.P.Q.2d 1755, 1761 (D.N.J. 1991) (pharmacist ordering pharmaceutical); Checkpoint, 269 F.3d 270, 60 U.S.P.Q.2d at 1618.
The Applicant’s goods and services are so highly specialized that consumers, namely those in the automotive industry, will exercise a great deal of care to ensure that the specific components meet their particular automotive safety needs. Further, since these goods and services are used to increase automobile safety, those utilizing Applicant’s goods and services will exercise a high degree of care in selecting and properly installing the appropriate sensors.
In light of the foregoing discussion and considerations, Applicant respectfully submits that maintaining the Section 2(d) refusal in this instance would serve to establish a monopoly for the cited registrant in an overly broad channel of trade. The Registrant’s mark is limited to use for “physiological monitor worn by a person for recording and displaying exercise time, calories used and sleep”, however should the Examiner maintain the 2(d) refusal to register the Applicant’s mark the result will be to extend protection of the Registrant’s mark over all goods in Class 9. The goods of the respective parties are expressly named, and serve highly specialized functions; the cited registration does not in fact include electronics and sensors used in the automotive industry, but rather is limited to health monitors. Refusing to register the Applicant’s mark for the goods and serves as amended, based on the cited registration serves to impermissibly expand the scope of the registration. The result of maintaining the refusal in the instant case would be to expand the scope of a registration for highly specified health monitor over all goods included in Class 9. If the Registrant sought protection for other electronic goods, its application would have so indicated. To extend protection of Registrant’s mark to include electronics and monitors generally improperly expands the scope of protection afforded by the Lanham Act.
While the Lanham Act does protect a senior user’s reasonable zone of business expansion from junior use of a mark, such is not the case where the goods at issue differ in non-trivial respects and share only minimal areas of competing use. Vitarroz Corp. v. Borden, Inc., 209 U.S.P.Q. 969, 975-976 (2nd Cir. 1981) (no likelihood of confusion between BRAVOS for tortilla chips and BRAVO’S for crackers). As discussed above, the differences between the respective parties’ goods are not trivial and are readily perceptible. The respective goods serve unique and specialized functions. There is no overlap in their areas of use, or in the prospective purchasers thereof. The Vitarroz court acknowledged its disapproval of the previously existing rule granting a “premonitory lien” on a “future” or “adjacent” market, attributing such as a “great injustice.” Id. at 975 n. 4. The analysis property takes into account the nature of the products and the structure of the market in which those products are placed. Id. at 975.
Given the significant differences between the goods and services with which the parties’ marks are used, it cannot be said that confusion is more than merely “possible.” Considering the totality of the circumstances in the instant application, the threshold of “probability” is not reached in this case. The Applicant therefore submits that consumer confusion is not likely, and respectfully requests that the Applicant’s mark be placed upon the Principal Register.
In view of the amendments and remarks set forth herein, and in further view of the fact that a search of the Office records found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), the Applicant believes that the Office Action has been fully responded to and believes the application is in condition for registration. It is respectfully requested that the Examining Attorney reconsider the refusal to register and pass this application to registration on the Principal Register.
In the event the Examining Attorney has any queries regarding the instantly submitted amendments and remarks, the Applicant’s attorney respectfully requests the courtesy of a telephone conference to discuss any matters in need of attention.
