| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 79061635 |
| LAW OFFICE ASSIGNED | LAW OFFICE 114 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
REFUSAL - LIKELIHOOD OF CONFUSION The Examining Attorney has refused registration of the applied-for mark because of an alleged likelihood of confusion with the mark in U.S. Registration No. 2932257. First, Applicant avers that the applied-for mark is not confusingly similar to the registered mark. To arrive at the opposition conclusion, the Examining Attorney improperly dissects the applied-for mark and essentially ignores the four additional letters and the second syllable of the applied-for mark. While it is an expedient means of finding that the marks are confusingly similar, this approach violates the anti-dissection rule. See generally 3 Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:41 (4th ed. 2008) ("[I]t is not a violation of the anti-dissection rule to view the component parts of conflicting composite marks as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole."). "When it is the entirety of the marks that is perceived by the public, it is the entirety of the marks that must be compared." Opryland USA Inc. v. Great Am. Music Show Inc., 23 USPQ 1471, 1473 (Fed. Cir. 1992). The Examining Attorney has the burden of proving which aspects of Applicant's mark consumers are most likely to remember. See Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1359 (Fed. Cir. 2001). Therefore, the Examining Attorney's mere assertion that the COM portion of Applicant's Mark is "overshadowed" by the SWISS portion of Applicant's mark is insufficient to obviate the requirement that the marks must be compared in their entireties. The applied-for mark consists of 8 letters while the registered mark consists of only half as many. The applied-for mark also consists of 2 syllables whereas the registered mark consists of only one. Thus, the two marks are very different in appearance and sound. No consumer is going to fail to pronounce the suffix of the applied-for mark or not see the final four letters. Moreover, the suffix gives the applied-for mark a very different commercial impression than the one created by the registered mark. Applicant avers that the registered mark is most likely perceived as an acronym (and therefore registrable) rather than a reference to the country of Switzerland (which would have resulted in its refusal under Sections 2(a), 2(e)(2) and/or 2(e)(3) of the Trademark Act. Second, Applicant avers the services set forth in the instant application are not closely related to the services set forth in the cited registration. The refusal appeared to be predicated on the indefiniteness of the description of goods and services in the instant application. Because the description of goods and services in the instant application has now been limited and specified with particularity, it is clear that there is no overlap in the parties' services. In addition, Applicant has deleted the Class 16 goods from its application. Therefore, the refusal with respect to International Class 16 has been rendered moot. With respect to the services in Classes 35 and 41, the parties' services are in different fields. The registrant's services relate to business consulting provided to business to help them market and sell their goods or services. Applicant's services, by contrast, are not offered for the same purposes. In sum, the parties' marks differ significantly in sound, appearance and meaning. In addition, Applicant's amendments to its recitation of services make it clear that the parties' services are not closely related. Therefore, Applicant avers that the likelihood of confusion refusal is not warranted and respectfully requests that it be withdrawn. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /jmenker/ |
| SIGNATORY'S NAME | James R. Menker |
| SIGNATORY'S POSITION | Attorney of record, Virginia bar member |
| DATE SIGNED | 06/11/2009 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Jun 11 11:56:53 EDT 2009 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20090611115653130550-7906 1635-430d0e14633c61cfe1f4 c6576c33eefad7-N/A-N/A-20 090611114326006130 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
REFUSAL - LIKELIHOOD OF CONFUSION
The Examining Attorney has refused registration of the applied-for mark because of an alleged likelihood of confusion with the mark in U.S. Registration No. 2932257.
First, Applicant avers that the applied-for mark is not confusingly similar to the registered mark. To arrive at the opposition conclusion, the Examining Attorney improperly dissects the applied-for mark and essentially ignores the four additional letters and the second syllable of the applied-for mark. While it is an expedient means of finding that the marks are confusingly similar, this approach violates the anti-dissection rule. See generally 3 Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:41 (4th ed. 2008) ("[I]t is not a violation of the anti-dissection rule to view the component parts of conflicting composite marks as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole."). "When it is the entirety of the marks that is perceived by the public, it is the entirety of the marks that must be compared." Opryland USA Inc. v. Great Am. Music Show Inc., 23 USPQ 1471, 1473 (Fed. Cir. 1992). The Examining Attorney has the burden of proving which aspects of Applicant's mark consumers are most likely to remember. See Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1359 (Fed. Cir. 2001). Therefore, the Examining Attorney's mere assertion that the COM portion of Applicant's Mark is "overshadowed" by the SWISS portion of Applicant's mark is insufficient to obviate the requirement that the marks must be compared in their entireties.
The applied-for mark consists of 8 letters while the registered mark consists of only half as many. The applied-for mark also consists of 2 syllables whereas the registered mark consists of only one. Thus, the two marks are very different in appearance and sound. No consumer is going to fail to pronounce the suffix of the applied-for mark or not see the final four letters. Moreover, the suffix gives the applied-for mark a very different commercial impression than the one created by the registered mark. Applicant avers that the registered mark is most likely perceived as an acronym (and therefore registrable) rather than a reference to the country of Switzerland (which would have resulted in its refusal under Sections 2(a), 2(e)(2) and/or 2(e)(3) of the Trademark Act.
Second, Applicant avers the services set forth in the instant application are not closely related to the services set forth in the cited registration. The refusal appeared to be predicated on the indefiniteness of the description of goods and services in the instant application. Because the description of goods and services in the instant application has now been limited and specified with particularity, it is clear that there is no overlap in the parties' services. In addition, Applicant has deleted the Class 16 goods from its application. Therefore, the refusal with respect to International Class 16 has been rendered moot. With respect to the services in Classes 35 and 41, the parties' services are in different fields. The registrant's services relate to business consulting provided to business to help them market and sell their goods or services. Applicant's services, by contrast, are not offered for the same purposes.
In sum, the parties' marks differ significantly in sound, appearance and meaning. In addition, Applicant's amendments to its recitation of services make it clear that the parties' services are not closely related. Therefore, Applicant avers that the likelihood of confusion refusal is not warranted and respectfully requests that it be withdrawn.