| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 79076988 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
I. Section 2(d) Refusal
Likelihood of Confusion The Examining Attorney cited the trademark registration of ADENA & Design, Reg. No. 3,129,037, for ?medical services? and the registration of ADENA and Design, Reg. No. 3,756,044, for the same services (which issued from Ser. No. 77/706,111), against the applied for mark. Applicant respectfully disagrees. Applicant's mark is not confusingly similar to the cited mark under the In re E.I. DuPont de Nemours & Co., 177 U.S.P.Q. 563 (CCPA 1973), factors. The Federal Circuit has explained that dissimilarity based on even one factor can warrant a finding of no likelihood of confusion. Kellogg Co. v. Pack'em Enter., Inc., 21 U.S.P.Q.2d 1142 (Fed. Cir. 1991). In this case, the difference between Applicant's and registrant?s respective goods/services, the channels of trade for said goods/services, and the conditions under which consumers encounter the marks at issue, support a finding that there is no likelihood of confusion.
Confusion is unlikely because the goods/services differ
Even when identical marks are used on goods in the same industry, that fact alone does not establish that the goods are related in a manner that creates a likelihood of confusion. Shen Mfg. Co. v. Ritz Hotel Ltd., 73 U.S.P.Q.2d 1350, 1356 (T.T.A.B. 2004) (no likelihood of confusion between RITZ for cooking classes and RITZ for kitchen textiles because consumers would not expect both to emanate from the same source); Fossil Inc. v. Fossil Group, 49 U.S.P.Q.2d 1451 (T.T.A.B. 1998) (FOSSIL for watches and THE FOSSIL GROUP for clocks held not confusingly similar); Lever Bros. Co. v. American Bakeries Co., 216 U.S.P.Q. 177 (2d. Cir. 1982) (AUTUMN for margarine and bread does not result in a likelihood of confusion); Johnson & Son, Inc. v. Johnson, 121 U.S.P.Q. 63, 66 (6th Cir. 1959) (JOHNSON for wax and wax applicators not confusingly similar to JOHNSON for mops); King Research, Inc. v. Shulton, Inc., 169 U.S.P.Q. 396 (S.D.N.Y. 1971) (hairspray and brush and comb cleaners are unrelated goods); Borg-Warner Chem. Inc. v. Helena Chem. Co., 225 U.S.P.Q. 222, 224 (T.T.A.B. 1983) (no confusion likely between BLENDEX for a stabilizing chemical composition for fertilizers and pesticides and BLENDEX for synthetic resinous composition for use in the industrial arts because there is "insufficient evidence to establish a reasonable basis for assuming that the respective goods as identified by their marks, would be encountered by the same purchasers"). Here, the registrant is a hospital that provides medical services under the cited mark. See attached. Few, if any hospitals, produce their own private label products or apparatus, as hospitals do not have the resources or financial backing to allow for the development and production of such products. Accordingly, no reasonable consumer would assume simply because the marks at issue are the same that Applicant?s goods emanate from registrant?s hospital. Additionally, Applicant intends to provide beauty care services under its applied for mark. These services differ from medical services, since they are cosmetic in nature and do not have to be performed by licensed physicians. The differences between the channels of trade render confusion unlikely. The distinct channels through which Applicant's and Registrant's goods travel render confusion even more unlikely. Indeed, the Trademark Trial and Appeal Board has found no likelihood of confusion in cases where goods are sold under identical marks, but have distinct consumers and are "marketed through distinctly different channels of commerce." Oxford Industries, Inc. v. JBJ Fabrics, Inc., 6 U.S.P.Q.2d 1756 (S.D.N.Y. 1988) (no likelihood of confusion found where plaintiff sells JBJ garments through retail channels to consumers and defendant, a fabric printer, sells its converted fabric to garment manufacturers, using a JBJ mark). If the customers of products sold under one mark would not usually see the other party's mark, neither set of customers is likely to be confused. Even when the goods have a "slight degree of proximity" there is little likelihood that consumers would be confused. Plus Products v. Plus Discount Foods, Inc., 722 F.2d 999, 1008 (2d Cir. 1983); see also Continental Plastic Containers Inc. v. Owens Brockway Plastic Products, Inc., 141 F.3d 1073, 46 U.S.P.Q.2d 1277 (Fed. Cir. 1998) (finding no likelihood of confusion because "[t]he wholesalers to whom [defendant] markets its bottles are not in the bottle business, they are in the juice business. While the shape of the bottle may create confusion as to the source of the juice, this is irrelevant to the determination as to confusion as to the source of the bottles"); In re Albert Trostel & Sons Co., 29 U.S.P.Q.2d 1783 (T.T.A.B. 1993) (applicant's PHOENIX for bulk leather sold to manufacturers of finished leather goods will not cause confusion with PHOENIX for leather luggage sold to consumers because of different channels and purchasers); Local Trademarks, Inc. v. Handy Boys, Inc., 16 U.S.P.Q.2d 1156 (T.T.A.B. 1990) (no likelihood of confusion found between applicant's LITTLE PLUMBER liquid drain opener sold to consumers and Opposer's LITTLE PLUMBER advertising agency services for professional plumbing contractors because they each travel through distinct channels of trade); In re Shipp, 4 U.S.P.Q.2d 1174 (T.T.A.B. 1987) (applicant's PURITAN for laundry and dry cleaning services not likely cause confusion with the cited trademark PURITAN for commercial dry cleaning machine filters sold only to dry cleaning professionals because applicants customers are unlikely to encounter any of the commercial goods sold under the cited mark); Autac, Inc. v. Walco Systems, 195 U.S.P.Q. 11 (T.T.A.B. 1977) (no confusion between AUTAC for thermocouple automatic temperature regulators for brushless wire preheaters and AUTAC for retractile electric cords, although both products are used in the wire manufacturing industry). Like the goods and services discussed in the cases above, which were sold in separate trade channels, Applicant's goods/services and registrant?s services also travel in distinct trade channels, such that the same consumers would not be likely encounter both marks. Registrant provides its services and markets and advertises its services to prospective patients. Applicant, on the other hand, will likely market its goods/services not to prospective patients, but instead to beauty salon owners or individuals in charge of purchasing equipment for such salons. Therefore, Applicant's goods would never be sold or even offered for sale in registrant?s hospitals. Additionally, Applicant?s services are likely be offered in beauty salons, not hospitals. Given the differences between hospitals and beauty salons, and the fact that beauty salons and hospitals almost never have common ownership, no reasonable consumer is likely to assume that registrant is the source of Applicant?s services or vice versa. Accordingly, 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. In conclusion, and based on the foregoing, despite the similarity of the marks in question, the differences between the goods/services and the channels of trade is enough to avoid a likelihood of confusion. Accordingly, Applicant respectfully requests that the Examiner withdraw the Section 2(d) refusal to register.
II. Meaning Upon information and belief, ADENA has no meaning in a foreign language.
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) |
\\TICRS\EXPORT10\IMAGEOUT 10\790\769\79076988\xml1\ ROA0002.JPG |
| GOODS AND/OR SERVICES SECTION (008)(no change) | |
| GOODS AND/OR SERVICES SECTION (010)(no change) | |
| GOODS AND/OR SERVICES SECTION (044)(current) | |
| INTERNATIONAL CLASS | 044 |
| DESCRIPTION | |
| Hygiene and beauty care for humans, namely aesthetic, hair removal and and photorejuvination services via exposure to pulsed light, treatment of stretch marks; dermatology services | |
| GOODS AND/OR SERVICES SECTION (044)(proposed) | |
| INTERNATIONAL CLASS | 044 |
| TRACKED TEXT DESCRIPTION | |
| Hygiene and beauty care for humans, namely aesthetic, hair removal and and photorejuvination services via exposure to
pulsed light, treatment of stretch marks; |
|
| FINAL DESCRIPTION | |
| Hygiene and beauty care for humans, namely aesthetic, hair removal and and photorejuvination services via exposure to pulsed light, treatment of stretch marks | |
| CORRESPONDENCE SECTION | |
| ORIGINAL ADDRESS | NONY 3 rue de Penthièvre F-75008 PARIS FRANCE |
| NEW CORRESPONDENCE SECTION | |
| NAME | William C. Wright |
| FIRM NAME | Epstein Drangel Bazerman & James, LLP |
| STREET | 60 East 42nd Street, Suite 820 |
| CITY | New York |
| STATE | New York |
| ZIP/POSTAL CODE | 10165 |
| COUNTRY | United States |
| PHONE | (212) 292-5390 |
| FAX | (212) 292-5391 |
| mail@ipcounselors.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /William C. Wright/ |
| SIGNATORY'S NAME | William C. Wright |
| SIGNATORY'S POSITION | Attorney for Applicant |
| DATE SIGNED | 06/28/2010 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jun 28 12:51:00 EDT 2010 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XX.XXX-2 0100628125100510335-79076 988-460203ed59a7eb58c633c fd73cc95651a1-N/A-N/A-201 00628123358434906 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
I. Section 2(d) Refusal
Likelihood of Confusion
The Examining Attorney cited the trademark registration of ADENA & Design, Reg. No. 3,129,037, for ?medical services? and the registration of ADENA and Design, Reg. No. 3,756,044, for the same services (which issued from Ser. No. 77/706,111), against the applied for mark. Applicant respectfully disagrees.
Applicant's mark is not confusingly similar to the cited mark under the In re E.I. DuPont de Nemours & Co., 177 U.S.P.Q. 563 (CCPA 1973), factors. The Federal Circuit has explained that dissimilarity based on even one factor can warrant a finding of no likelihood of confusion. Kellogg Co. v. Pack'em Enter., Inc., 21 U.S.P.Q.2d 1142 (Fed. Cir. 1991). In this case, the difference between Applicant's and registrant?s respective goods/services, the channels of trade for said goods/services, and the conditions under which consumers encounter the marks at issue, support a finding that there is no likelihood of confusion.
Confusion is unlikely because the goods/services differ
Even when identical marks are used on goods in the same industry, that fact alone does not establish that the goods are related in a manner that creates a likelihood of confusion. Shen Mfg. Co. v. Ritz Hotel Ltd., 73 U.S.P.Q.2d 1350, 1356 (T.T.A.B. 2004) (no likelihood of confusion between RITZ for cooking classes and RITZ for kitchen textiles because consumers would not expect both to emanate from the same source); Fossil Inc. v. Fossil Group, 49 U.S.P.Q.2d 1451 (T.T.A.B. 1998) (FOSSIL for watches and THE FOSSIL GROUP for clocks held not confusingly similar); Lever Bros. Co. v. American Bakeries Co., 216 U.S.P.Q. 177 (2d. Cir. 1982) (AUTUMN for margarine and bread does not result in a likelihood of confusion); Johnson & Son, Inc. v. Johnson, 121 U.S.P.Q. 63, 66 (6th Cir. 1959) (JOHNSON for wax and wax applicators not confusingly similar to JOHNSON for mops); King Research, Inc. v. Shulton, Inc., 169 U.S.P.Q. 396 (S.D.N.Y. 1971) (hairspray and brush and comb cleaners are unrelated goods); Borg-Warner Chem. Inc. v. Helena Chem. Co., 225 U.S.P.Q. 222, 224 (T.T.A.B. 1983) (no confusion likely between BLENDEX for a stabilizing chemical composition for fertilizers and pesticides and BLENDEX for synthetic resinous composition for use in the industrial arts because there is "insufficient evidence to establish a reasonable basis for assuming that the respective goods as identified by their marks, would be encountered by the same purchasers").
Here, the registrant is a hospital that provides medical services under the cited mark. See attached. Few, if any hospitals, produce their own private label products or apparatus, as hospitals do not have the resources or financial backing to allow for the development and production of such products. Accordingly, no reasonable consumer would assume simply because the marks at issue are the same that Applicant?s goods emanate from registrant?s hospital. Additionally, Applicant intends to provide beauty care services under its applied for mark. These services differ from medical services, since they are cosmetic in nature and do not have to be performed by licensed physicians.
The differences between the channels of trade render confusion unlikely.
The distinct channels through which Applicant's and Registrant's goods travel render confusion even more unlikely. Indeed, the Trademark Trial and Appeal Board has found no likelihood of confusion in cases where goods are sold under identical marks, but have distinct consumers and are "marketed through distinctly different channels of commerce." Oxford Industries, Inc. v. JBJ Fabrics, Inc., 6 U.S.P.Q.2d 1756 (S.D.N.Y. 1988) (no likelihood of confusion found where plaintiff sells JBJ garments through retail channels to consumers and defendant, a fabric printer, sells its converted fabric to garment manufacturers, using a JBJ mark). If the customers of products sold under one mark would not usually see the other party's mark, neither set of customers is likely to be confused. Even when the goods have a "slight degree of proximity" there is little likelihood that consumers would be confused. Plus Products v. Plus Discount Foods, Inc., 722 F.2d 999, 1008 (2d Cir. 1983); see also Continental Plastic Containers Inc. v. Owens Brockway Plastic Products, Inc., 141 F.3d 1073, 46 U.S.P.Q.2d 1277 (Fed. Cir. 1998) (finding no likelihood of confusion because "[t]he wholesalers to whom [defendant] markets its bottles are not in the bottle business, they are in the juice business. While the shape of the bottle may create confusion as to the source of the juice, this is irrelevant to the determination as to confusion as to the source of the bottles"); In re Albert Trostel & Sons Co., 29 U.S.P.Q.2d 1783 (T.T.A.B. 1993) (applicant's PHOENIX for bulk leather sold to manufacturers of finished leather goods will not cause confusion with PHOENIX for leather luggage sold to consumers because of different channels and purchasers); Local Trademarks, Inc. v. Handy Boys, Inc., 16 U.S.P.Q.2d 1156 (T.T.A.B. 1990) (no likelihood of confusion found between applicant's LITTLE PLUMBER liquid drain opener sold to consumers and Opposer's LITTLE PLUMBER advertising agency services for professional plumbing contractors because they each travel through distinct channels of trade); In re Shipp, 4 U.S.P.Q.2d 1174 (T.T.A.B. 1987) (applicant's PURITAN for laundry and dry cleaning services not likely cause confusion with the cited trademark PURITAN for commercial dry cleaning machine filters sold only to dry cleaning professionals because applicants customers are unlikely to encounter any of the commercial goods sold under the cited mark); Autac, Inc. v. Walco Systems, 195 U.S.P.Q. 11 (T.T.A.B. 1977) (no confusion between AUTAC for thermocouple automatic temperature regulators for brushless wire preheaters and AUTAC for retractile electric cords, although both products are used in the wire manufacturing industry).
Like the goods and services discussed in the cases above, which were sold in separate trade channels, Applicant's goods/services and registrant?s services also travel in distinct trade channels, such that the same consumers would not be likely encounter both marks. Registrant provides its services and markets and advertises its services to prospective patients. Applicant, on the other hand, will likely market its goods/services not to prospective patients, but instead to beauty salon owners or individuals in charge of purchasing equipment for such salons. Therefore, Applicant's goods would never be sold or even offered for sale in registrant?s hospitals. Additionally, Applicant?s services are likely be offered in beauty salons, not hospitals. Given the differences between hospitals and beauty salons, and the fact that beauty salons and hospitals almost never have common ownership, no reasonable consumer is likely to assume that registrant is the source of Applicant?s services or vice versa. Accordingly, 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.
In conclusion, and based on the foregoing, despite the similarity of the marks in question, the differences between the goods/services and the channels of trade is enough to avoid a likelihood of confusion. Accordingly, Applicant respectfully requests that the Examiner withdraw the Section 2(d) refusal to register.
II. Meaning
Upon information and belief, ADENA has no meaning in a foreign language.
