| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 79227462 |
| LAW OFFICE ASSIGNED | LAW OFFICE 107 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/79227462/mark.png |
| LITERAL ELEMENT | GENIE |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| OWNER SECTION (current) | |
| NAME | GENIE ENTERPRISE LTD. |
| INTERNAL ADDRESS | 39 Haprachim Street |
| STREET | 4691500 Rishpon |
| COUNTRY | Israel |
| OWNER SECTION (proposed) | |
| NAME | GENIE ENTERPRISE LTD. |
| STREET | 39 Haprachim Street |
| CITY | 4691500 Rishpon |
| COUNTRY | Israel |
| LEGAL ENTITY SECTION (current) | |
| TYPE | Limited company |
| LEGAL ENTITY SECTION (proposed) | |
| TYPE | Limited company |
| STATE/COUNTRY WHERE LEGALLY ORGANIZED | Israel |
| ARGUMENT(S) | |
|
Confusion is Unlikely In refusing registration, the Examiner notes that “a potential for confusion exists.” However, as previously pointed out, in order to refuse registration under Section 2(d), there must be shown more than a mere possibility of confusion; instead, there must be demonstrated a probability or likelihood of confusion. See Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), quoting from Witco Chemical Company, Inc. v. Whitfield Chemical Company, Inc., 418 F.2d 1403, 164 USPQ 43 (CCPA 1969) as follows: “We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal." See also, Triumph Machinery Company v. Kentmaster Manufacturing Company Inc., 1 USPQ2d 1826 (TTAB 1987). The Trademark Act does not speak in terms of remote possibilities of confusion, but rather, the likelihood of such confusion occurring in the marketplace. In this case, the registered mark is EggGenie for “electric egg cookers; electric food steamers” and “egg poachers.” By contrast the applicant’s mark is GENIE for: Class 11: Multi-purpose, computer-controlled electric countertop food preparation apparatus for cooking, baking, broiling, roasting, toasting, searing, browning, barbecuing and grilling food Class 29: Freeze-dried foods, namely, prepared food kits composed primarily of vegetables and also including sauces or seasonings, sold in single-serving or portion-controlled containers for use in an electric countertop food preparation apparatus; Freeze-dried food products, namely, pods and cartridges containing primarily vegetables and also including sauces or seasonings for use in an electric countertop food preparation apparatus for quickly making ready-to-eat servings Both the mark and the goods distinguish the applicant’s mark from the registered mark. Moreover, the very fact that the Examiner cites three other GENIE marks owned by a different company from the registered mark for POM GENIE, HEALTH GENIE and POM HEALTH GENIE shows that consumers will not think that all GENIE food goods come from the same source. And to lessen the likelihood of confusion even further, the applicant’s goods as listed above are of an entirely different nature than the goods in the cited marks. The applicant’s class 11 goods are a sophisticated, computer-controlled food preparation system. The goods are much more complex and expensive than the EggGenie goods. And the class 29 goods are freeze-dried and sold in pods and cartridges to be used in the applicant’s class 11 goods. Consumers would have no reason to think that these food containers come from the producers of the POM GENIE and HEALTH GENIE goods because the owners of the POM GENIE and HEALTH GENIE marks have no similar class 11 goods that require such containers. The USPTO must show “something more” than a mere possibility that the goods and/or services are related. See In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003. Combined with the differences in the marks, the applicant’s revised identification of goods contains no goods that would lead the public to believe that they come from the same source as the mark cited by the Examiner. The differences in the marks and the goods assure that there will be no likelihood of confusion as to the source of the Applicant’s goods. Accordingly, there should be no refusal to register under Section 2(d). |
|
| GOODS AND/OR SERVICES SECTION (011)(no change) | |
| GOODS AND/OR SERVICES SECTION (029)(current) | |
| INTERNATIONAL CLASS | 029 |
| DESCRIPTION | |
| A full line of freeze-dried foods sold in single-serving or portion-controlled containers for use in an electric countertop food preparation apparatus; Freeze-dried food products, namely, pods and cartridges containing freeze-dried foods for use in an electric countertop food preparation apparatus for quickly making ready-to-eat servings | |
| GOODS AND/OR SERVICES SECTION (029)(proposed) | |
| INTERNATIONAL CLASS | 029 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Freeze-dried foods, namely, prepared food kits composed primarily of vegetables and also including sauces or seasonings, sold in single-serving or portion-controlled containers for use in an electric countertop food preparation apparatus; Freeze-dried food products, namely, pods and cartridges containing primarily vegetables and also including sauces or seasonings for use in an electric countertop food preparation apparatus for quickly making ready-to-eat servings | |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /ft/ |
| SIGNATORY'S NAME | Frank Terranella |
| SIGNATORY'S POSITION | Attorney for Owner, NY Bar member |
| SIGNATORY'S PHONE NUMBER | 2129499022 |
| DATE SIGNED | 09/24/2018 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Sep 24 14:01:32 EDT 2018 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XX.XX-20 180924140132368816-792274 62-610d26241deb9acdf88944 87dca5ebfdb2ed94406e52aad 9efd4aecb0b7cef6f3-N/A-N/ A-20180924135609225765 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Confusion is Unlikely
In refusing registration, the Examiner notes that “a potential for confusion exists.” However, as previously pointed out, in order to refuse registration under Section 2(d), there must be shown more than a mere possibility of confusion; instead, there must be demonstrated a probability or likelihood of confusion. See Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), quoting from Witco Chemical Company, Inc. v. Whitfield Chemical Company, Inc., 418 F.2d 1403, 164 USPQ 43 (CCPA 1969) as follows: “We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal." See also, Triumph Machinery Company v. Kentmaster Manufacturing Company Inc., 1 USPQ2d 1826 (TTAB 1987). The Trademark Act does not speak in terms of remote possibilities of confusion, but rather, the likelihood of such confusion occurring in the marketplace.
In this case, the registered mark is EggGenie for “electric egg cookers; electric food steamers” and “egg poachers.” By contrast the applicant’s mark is GENIE for:
Class 11: Multi-purpose, computer-controlled electric countertop food preparation apparatus for cooking, baking, broiling, roasting, toasting, searing, browning, barbecuing and grilling food
Class 29: Freeze-dried foods, namely, prepared food kits composed primarily of vegetables and also including sauces or seasonings, sold in single-serving or portion-controlled containers for use in an electric countertop food preparation apparatus; Freeze-dried food products, namely, pods and cartridges containing primarily vegetables and also including sauces or seasonings for use in an electric countertop food preparation apparatus for quickly making ready-to-eat servings
Both the mark and the goods distinguish the applicant’s mark from the registered mark. Moreover, the very fact that the Examiner cites three other GENIE marks owned by a different company from the registered mark for POM GENIE, HEALTH GENIE and POM HEALTH GENIE shows that consumers will not think that all GENIE food goods come from the same source.
And to lessen the likelihood of confusion even further, the applicant’s goods as listed above are of an entirely different nature than the goods in the cited marks. The applicant’s class 11 goods are a sophisticated, computer-controlled food preparation system. The goods are much more complex and expensive than the EggGenie goods. And the class 29 goods are freeze-dried and sold in pods and cartridges to be used in the applicant’s class 11 goods. Consumers would have no reason to think that these food containers come from the producers of the POM GENIE and HEALTH GENIE goods because the owners of the POM GENIE and HEALTH GENIE marks have no similar class 11 goods that require such containers.
The USPTO must show “something more” than a mere possibility that the goods and/or services are related. See In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003.
Combined with the differences in the marks, the applicant’s revised identification of goods contains no goods that would lead the public to believe that they come from the same source as the mark cited by the Examiner. The differences in the marks and the goods assure that there will be no likelihood of confusion as to the source of the Applicant’s goods. Accordingly, there should be no refusal to register under Section 2(d).