| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85063649 |
| LAW OFFICE ASSIGNED | LAW OFFICE 105 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
In response to the communication mailed June 29, 2010, please enter this Amendment and reconsider this application in view of the amendments and the remarks provided herein. Applicant expresses appreciation for the guidance in the Office Action regarding Applicant’s recitation of services. Applicant has amended the recitation of services patterned after the suggestions made in the Office Action and to reflect terminology used in the marketplace, to be acceptably definite, and to satisfy the requirements raised in the Office Action. Thus, no further action by Applicant is believed necessary regarding the recitation of services for this application. I. Applicant's APX Mark Is Not Confusingly Similar to the APEX Mark Contained in U.S. Trademark Registration No. 2454720. The case of In re E.I. DuPont de Nemours & Co.,76 F.2d 1357, 177 USPQ 563 (CCPA 1973)(hereinafter cited as DuPont), relied upon in the Office Action, provides crucial guidance in the instant case. As is well known, the DuPont case indicates that "there is no litmus rule which can provide a ready guide to all cases" of determining likelihood of confusion under Section 2(d). DuPont, 177 USPQ at 567. Advantageously, the DuPont case provides a list of evidentiary elements to be considered in an analysis under Section 2(d), commonly referred to as the DuPont factors. Importantly, one or more evidentiary elements may, from case to case, play a dominant role with no particular evidentiary element always having merit greater than the others. A determination of a lack of confusing similarity includes an analysis of the various DuPont factors, namely: (1) the similarity and dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; (2) the similarity or dissimilarity and nature of the goods as described in an application or registration or in connection with which a prior mark is in use; (3) the similarity or dissimilarity of established, likely-to-continue trade channels; (4) the conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing; (5) the fame of the prior mark; (6) the number and nature of similar marks in use on similar goods; (7) the nature and extent of any actual confusion; (8) the length of time during and the conditions under which there has been concurrent use without evidence of actual confusion; (9) the variety of goods on which a mark is or is not used; (10) the market interface between the applicant and the owner of a prior mark; (11) the extent to which applicant has a right to exclude others from use of its mark on its goods; (12) the extent of potential confusion; (13) any other established fact probative of the effect of use. Id. In view of the DuPont elements and factors to be applied in this case, the Applicant’s mark is registrable on the Principal Register due at least because: (1) the differences between Applicant's mark and the mark contained in the '720 registration, which create different commercial impressions for each mark; (2) the differences in the goods and services; (3) the differences between the channels of trade through which the respective goods and services travel; and (4) the weakness of the cited mark. Provided below is a discussion of the pertinent evidentiary elements and factors from the DuPont case and the applicable facts in the instant case all of which lead to a conclusion that there is no likelihood of confusion between the marks in question. A. Applicant's Mark Has a Substantially Different Appearance, Sound and Connotation than Registrant's Mark, Thereby Creating a Different Commercial Impression That is Not Confusingly Similar to Registrant's Mark. The first DuPont factor indicates that the similarity or dissimilarity of the marks in question as to appearance, sound, connotation and commercial impression is to be considered in an analysis under Section 2(d). Applicant respectfully traverses the statement in the Office Action that Applicant's mark is highly similar to Registrant's mark in sound and appearance for the reasons set forth below. 1. APX is phonetically dissimilar to APEX. Applicant's APX mark is phonetically dissimilar to the '720 registration's APEX mark as the APX mark is a string of letters with three syllables, which may be pronounced A-P-X. Whereas, APEX comprises only two syllables and is pronounced as the word "apex." Thus, under a phonetic analysis, the APX mark is clearly different and distinct from APEX. 2. Applicant's APX mark is dissimilar in appearance to Registrant's APEX mark. Applicant's APX mark is visually distinguishable from Registrant's APEX mark. The Registrant’s mark includes an additional letter "e" while the Applicant’s APX mark does not contain the letter "e." The omission of the letter "e" in the Applicant’s mark is significant because the letter "e", as used in the Registrant mark, forms a pronounced word. Without the letter "e", the Applicant’s mark is simply a combination of letters. 3. Applicant's APX mark has a very different meaning than Registrant's APEX mark and hence creates a different commercial impression. Perhaps most importantly, the respective meanings of the two marks in question are vastly different, such that the commercial impression created by each mark is also vastly different. In other words, because the mental impact created by each of the marks is so different the psychological imagery evoked in the minds of the consuming public is also very different. According to well established case law, the meaning of the marks can be determined by reference to a standard dictionary. McCarthy, Thomas J., McCarthy on Trademarks and Unfair Competition, § 23:26 (2007) citing Tornado Industries, Inc. v. Typhoon Industries, Inc., 187 N.Y.S.2d 83, 121 USPQ 328 (1959); Hancock v. American Steel & Wire Co., 203 F.2d 737, 97 USPQ 330 (CCPA 1953). In the present case, "APX" is a nonsense word and not found in the dictionary. Conversely, "APEX" may be defined as "the tip, top, point, or angular summit of anything; as, the apex of a mountain, spire, or cone; the apex, or tip, of a leaf." Random House Websters Unabridged Dictionary, p.97 (2001). Thus, it is clear that the meaning of Applicant's mark is nothing definable whereas the meaning of Registrant's mark is that of a mountain peak, which meanings are vastly different. Still further, if the two marks in question each have an aura of suggestion, but each suggests something different to the buyer or potential buyer, then the different suggestion indicates an absence of a likelihood of confusion. McCarthy, Thomas J., McCarthy on Trademarks and Unfair Competition, § 23:28. In the instant case, the word "apex" in Registrant's APEX mark creates the commercial impression relating to a ascending a mountain peak or a reaching the top of some formation due to the suggestion or mental image that is directly associated with a APEX, i.e., a mountain peak. Whereas, the commercial impression or suggestion created by the Applicant's mark is nothing more than three letters cobbled together. Thus, the different commercial impressions made by each mark is evidence of the lack of a likelihood of confusion. Id. (citing Morrison Milling Co. v. General Mills, Inc., 436 F.2d 1050, 168 USPQ 591 (CCPA 1971) (different connotation of CORN-KITS and CORN KIX)). For the above reasons, Applicant respectfully submits that its APX mark is phonetically and visually different than the Registrant's APEX mark and perhaps more importantly the two marks have different commercial impressions. Accordingly, Applicant submits that the present mark is registrable on the Principal Register based on this DuPont factor alone and that registrability increases substantially when other DuPont factors are considered as discussed below. B. Applicant's Services Are Significantly Different than the Registrants' Goods, Such That Confusion Among the Relevant Purchasers Is Unlikely. The Applicant’s services include "Monitoring burglar, trouble, fire and security alarm systems for residential and commercial buildings." The Registrant’s goods are directed to "anti-theft alarms for vehicles." Applicant respectfully submits that these services and goods are so dissimilar that there will be no likelihood of confusion. In particular, monitoring alarms for residential and commercial buildings are completely unrelated to anti-theft alarms for vehicles. Therefore, there can be no likelihood of confusion. C. The Channels of Trade Through Which Applicant's Services Travel Are Significantly Different than the Channels of Trade Through Which Registrants' Goods Travel, Such That Confusion Among the Relevant Purchasers Is Unlikely. Another DuPont factor considers the differences between the channels of trade through which the respective goods travel. It is well established that the usual meaning and connotation attributed to the words used to describe the goods in the cited registration indicate the normal channels of trade through which Registrant's goods travel. Applicant respectfully submits that in view of differences in the channels of trade through which the respective goods travel, the different classes of customers to which the goods are directed, and the conditions in the marketplace, that there is no likelihood of confusion between the present mark and the mark set forth in the cited registration. In the instant case, the '720 registration identifies its goods as "anti-theft alarms for vehicles, namely programmable anti-theft alarms, horns, trunk releases, flashing parking lights, shock sensors, plug-in connectors and starter disable relays all for vehicles, and all sold together as a unit" which are presumed to travel through the traditional trade channels for automobile related goods. In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982). On the other hand, Applicant's services, are distributed via Applicant’s alarm installers and sales force for residential and commercial buildings. Applicant's services are not available through typical retail establishments or available through channels of trade through which vehicle alarms are traditionally sold. The only way to obtain Applicant's services is in connection with the promotion, sale, installation or use of Applicant's alarms. In other words, there is no overlap between channels of trade through which Registrant's vehicle alarms are sold and Applicant's channels of trade. Accordingly, consumers of Applicant's services will not encounter Registrant's goods, and vice-versa, and as such there can be no likelihood of confusion between Applicant's services and Registrant's goods sold under the APEX mark. Additionally, because Applicant's services and Registrant's goods never cross paths in the marketplace, it is very unlikely that the marks will ever cross paths in such a way to cause confusion as to the source of the respective goods and services. If the goods and 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, then, even if the marks are phonetically and visually identical (a situation that is not present in this case), confusion is not likely. The purchasers of the goods associated with Registrant's APEX mark are not in a position to purchase the services recited in this application and which are distributed under the APX mark because they are seeking goods and services through different channels of trade. The disparate nature of the channels of trade through which the goods of the cited mark and the services of the present application travel, or are likely to travel, require the conclusion that there is no likelihood of confusion between the present mark and the cited mark. For the above reasons, Applicant respectfully submits that Applicant's services distributed under its APX mark travel through different channels of trade than the goods sold under Registrant's APEX mark, such that a likelihood of confusion is thereby avoided. Accordingly, Applicant submits that the present mark is registrable on the Principal Register based on this DuPont factor alone and that registrability increases substantially when other DuPont factors are considered as discussed herein. D. Registrant's APEX mark is a weak mark that is only entitled to the narrowest of protection. As further evidence that the APEX mark is only entitled to the narrowest of protection, when determining the existence of a likelihood of confusion, one must consider the relative strength of the cited mark. In the instant case, the Registrant's mark is a weak mark that lacks substantial distinctiveness due to the descriptive and even generic term of the APEX mark. The term "APEX" is used in over 700 Trademark Office records all of which use that term somewhere in the mark, which is evidence of substantial third party usage. Substantial third party usage evidences and underscores the weakness of the term "APEX." Thus, it is clear that the APEX mark is relatively weak. Accordingly, the differences between Applicant's APX mark and Registrant's APEX mark as well as the differences in the channels of trade through which the respective goods travel are deemed to be substantial differences. Accordingly, a likelihood of consumer confusion is avoided due to these substantial differences in the marks and Applicant respectfully requests a finding of the same. II. Applicant's APX Mark Is Not Confusingly Similar to the APEX ALARM Mark Contained in U.S. Trademark Registration No. 3597021. In view of the DuPont elements and factors to be applied in this case, the Applicant’s mark is registrable on the Principal Register due at least because: (1) the differences between Applicant's mark and the mark contained in the '021 registration, which create different commercial impressions for each mark; and (2) the weakness of the cited mark. Provided below is a discussion of the pertinent evidentiary elements and factors from the DuPont case and the applicable facts in the instant case all of which lead to a conclusion that there is no likelihood of confusion between the marks in question. A. Applicant's Mark Has a Substantially Different Appearance, Sound and Connotation than Registrant's Mark, Thereby Creating a Different Commercial Impression That is Not Confusingly Similar to Registrant's Mark. The first DuPont factor indicates that the similarity or dissimilarity of the marks in question as to appearance, sound, connotation and commercial impression is to be considered in an analysis under Section 2(d). Applicant respectfully traverses the statement in the Office Action that Applicant's mark is highly similar to Registrant's mark in sound and appearance for the reasons set forth below. 1. APX is phonetically dissimilar to APEX ALARM. Applicant's APX mark is phonetically dissimilar to the '021 registration's APEX ALARM mark as the APX mark is a string of letters with three syllables, which may be pronounced A-P-X. Whereas, APEX comprises only two syllables and is pronounced as the word "apex." The Registrant’s mark further includes the term "alarm" such that the Registrant’s mark is pronounced as two words, namely, "apex alarm." Thus, under a phonetic analysis, the APX mark is clearly different and distinct from APEX ALARM. 2. Applicant's APX mark is dissimilar in appearance to Registrant's APEX ALARM mark. Applicant's APX mark is visually distinguishable from Registrant's APEX ALARM mark. The Registrant’s mark includes an additional letter "e" while the Applicant’s APX mark does not contain the letter "e." The omission of the letter "e" in the Applicant’s mark is significant because the letter "e", as used in the Registrant mark, forms a pronounced word. Without the letter "e", the Applicant’s mark is simply a combination of letters. Registrant’s mark further includes the term "alarm." 3. Applicant's APX mark has a very different meaning than Registrant's APEX ALARM mark and hence creates a different commercial impression. Perhaps most importantly, the respective meanings of the two marks in question are vastly different, such that the commercial impression created by each mark is also vastly different. In other words, because the mental impact created by each of the marks is so different the psychological imagery evoked in the minds of the consuming public is also very different. According to well established case law, the meaning of the marks can be determined by reference to a standard dictionary. McCarthy, Thomas J., McCarthy on Trademarks and Unfair Competition, § 23:26 (2007) (citing Tornado Industries, Inc. v. Typhoon Industries, Inc., 187 N.Y.S.2d 83, 121 USPQ 328 (1959); Hancock v. American Steel & Wire Co., 203 F.2d 737, 97 USPQ 330 (CCPA 1953)). In the present case, "APX" is a nonsense word and not found in the dictionary. Conversely, "APEX" may be defined as "the tip, top, point, or angular summit of anything; as, the apex of a mountain, spire, or cone; the apex, or tip, of a leaf." Random House Websters Unabridged Dictionary, p.97 (2001). Thus, it is clear that the meaning of Applicant's mark is nothing definable whereas the meaning of Registrant's mark is that of a mountain peak, which meanings are vastly different. Still further, if the two marks in question each have an aura of suggestion, but each suggests something different to the buyer or potential buyer, then the different suggestion indicates an absence of a likelihood of confusion. McCarthy, Thomas J., McCarthy on Trademarks and Unfair Competition, § 23:28 (2007). In the instant case, the word "apex" in Registrant's APEX ALARM mark creates the commercial impression relating to ascending a mountain peak or reaching the top of some formation due to the suggestion or mental image that is directly associated with an apex, i.e., a mountain peak. Whereas, the commercial impression or suggestion created by the Applicant's mark is nothing more than three letters cobbled together. Thus, the different commercial impressions made by each mark is evidence of the lack of a likelihood of confusion. Id. (citing Morrison Milling Co. v. General Mills, Inc., 436 F.2d 1050, 168 USPQ 591 (CCPA 1971) (different connotation of CORN-KITS and CORN KIX)). For the above reasons, Applicant respectfully submits that its APX mark is phonetically and visually different than the Registrant's APEX ALARM mark and perhaps more importantly the two marks have different commercial impressions. Accordingly, Applicant submits that the present mark is registrable on the Principal Register based on this DuPont factor alone and that registrability increases substantially when other DuPont factors are considered as discussed below. B. Registrant's APEX ALARM mark is a weak mark that is only entitled to the narrowest of protection. As discussed above, the term "APEX" is found in over 700 Trademark Office records all of which use that term somewhere in the mark, which is evidence of substantial third party usage. Substantial third party usage evidences and underscores the weakness of the term "APEX." Thus, it is clear that the APEX mark is relatively weak. Accordingly, the differences between Applicant's APX mark and Registrant's APEX ALARM mark are deemed to be substantial differences. Accordingly, a likelihood of consumer confusion is avoided due to these substantial differences in the marks and Applicant respectfully requests a finding of the same. Applicant respectfully submits that registration on the Principal Register is appropriate. If any impediment to passing this mark onto publication remains after entry of this Amendment and consideration of these remarks, the Examining Attorney is invited to initiate a telephone interview with the attorney of record. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 045 |
| DESCRIPTION | |
| Monitoring burglar, trouble, fire and/or security alarm systems | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 045 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Monitoring burglar, trouble, fire and security alarm systems for residential and commercial buildings | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Grant R. Clayton/ |
| SIGNATORY'S NAME | Grant R. Clayton |
| SIGNATORY'S POSITION | Attorney of Record, Utah Bar Member |
| DATE SIGNED | 12/28/2010 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Dec 28 22:33:55 EST 2010 |
| TEAS STAMP | USPTO/ROA-XX.XX.XX.XX-201 01228223355510834-8506364 9-47042eec653b035784668ba b331cb8dd28-N/A-N/A-20101 228223257109819 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
In response to the communication mailed June 29, 2010, please enter this Amendment and reconsider this application in view of the amendments and the remarks provided herein.
Applicant expresses appreciation for the guidance in the Office Action regarding Applicant’s recitation of services. Applicant has amended the recitation of services patterned after the suggestions made in the Office Action and to reflect terminology used in the marketplace, to be acceptably definite, and to satisfy the requirements raised in the Office Action. Thus, no further action by Applicant is believed necessary regarding the recitation of services for this application.
I. Applicant's APX Mark Is Not Confusingly Similar to the APEX Mark Contained in U.S. Trademark Registration No. 2454720.
The case of In re E.I. DuPont de Nemours & Co.,76 F.2d 1357, 177 USPQ 563 (CCPA 1973)(hereinafter cited as DuPont), relied upon in the Office Action, provides crucial guidance in the instant case. As is well known, the DuPont case indicates that "there is no litmus rule which can provide a ready guide to all cases" of determining likelihood of confusion under Section 2(d). DuPont, 177 USPQ at 567. Advantageously, the DuPont case provides a list of evidentiary elements to be considered in an analysis under Section 2(d), commonly referred to as the DuPont factors. Importantly, one or more evidentiary elements may, from case to case, play a dominant role with no particular evidentiary element always having merit greater than the others.
A determination of a lack of confusing similarity includes an analysis of the various DuPont factors, namely: (1) the similarity and dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; (2) the similarity or dissimilarity and nature of the goods as described in an application or registration or in connection with which a prior mark is in use; (3) the similarity or dissimilarity of established, likely-to-continue trade channels; (4) the conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing; (5) the fame of the prior mark; (6) the number and nature of similar marks in use on similar goods; (7) the nature and extent of any actual confusion; (8) the length of time during and the conditions under which there has been concurrent use without evidence of actual confusion; (9) the variety of goods on which a mark is or is not used; (10) the market interface between the applicant and the owner of a prior mark; (11) the extent to which applicant has a right to exclude others from use of its mark on its goods; (12) the extent of potential confusion; (13) any other established fact probative of the effect of use. Id.
In view of the DuPont elements and factors to be applied in this case, the Applicant’s mark is registrable on the Principal Register due at least because: (1) the differences between Applicant's mark and the mark contained in the '720 registration, which create different commercial impressions for each mark; (2) the differences in the goods and services; (3) the differences between the channels of trade through which the respective goods and services travel; and (4) the weakness of the cited mark. Provided below is a discussion of the pertinent evidentiary elements and factors from the DuPont case and the applicable facts in the instant case all of which lead to a conclusion that there is no likelihood of confusion between the marks in question.
A. Applicant's Mark Has a Substantially Different Appearance, Sound and Connotation than Registrant's Mark, Thereby Creating a Different Commercial Impression That is Not Confusingly Similar to Registrant's Mark.
The first DuPont factor indicates that the similarity or dissimilarity of the marks in question as to appearance, sound, connotation and commercial impression is to be considered in an analysis under Section 2(d). Applicant respectfully traverses the statement in the Office Action that Applicant's mark is highly similar to Registrant's mark in sound and appearance for the reasons set forth below.
1. APX is phonetically dissimilar to APEX.
Applicant's APX mark is phonetically dissimilar to the '720 registration's APEX mark as the APX mark is a string of letters with three syllables, which may be pronounced A-P-X. Whereas, APEX comprises only two syllables and is pronounced as the word "apex." Thus, under a phonetic analysis, the APX mark is clearly different and distinct from APEX.
2. Applicant's APX mark is dissimilar in appearance to Registrant's APEX mark.
Applicant's APX mark is visually distinguishable from Registrant's APEX mark. The Registrant’s mark includes an additional letter "e" while the Applicant’s APX mark does not contain the letter "e." The omission of the letter "e" in the Applicant’s mark is significant because the letter "e", as used in the Registrant mark, forms a pronounced word. Without the letter "e", the Applicant’s mark is simply a combination of letters.
3. Applicant's APX mark has a very different meaning than Registrant's APEX mark and hence creates a different commercial impression.
Perhaps most importantly, the respective meanings of the two marks in question are vastly different, such that the commercial impression created by each mark is also vastly different. In other words, because the mental impact created by each of the marks is so different the psychological imagery evoked in the minds of the consuming public is also very different.
According to well established case law, the meaning of the marks can be determined by reference to a standard dictionary. McCarthy, Thomas J., McCarthy on Trademarks and Unfair Competition, § 23:26 (2007) citing Tornado Industries, Inc. v. Typhoon Industries, Inc., 187 N.Y.S.2d 83, 121 USPQ 328 (1959); Hancock v. American Steel & Wire Co., 203 F.2d 737, 97 USPQ 330 (CCPA 1953). In the present case, "APX" is a nonsense word and not found in the dictionary. Conversely, "APEX" may be defined as "the tip, top, point, or angular summit of anything; as, the apex of a mountain, spire, or cone; the apex, or tip, of a leaf." Random House Websters Unabridged Dictionary, p.97 (2001). Thus, it is clear that the meaning of Applicant's mark is nothing definable whereas the meaning of Registrant's mark is that of a mountain peak, which meanings are vastly different.
Still further, if the two marks in question each have an aura of suggestion, but each suggests something different to the buyer or potential buyer, then the different suggestion indicates an absence of a likelihood of confusion. McCarthy, Thomas J., McCarthy on Trademarks and Unfair Competition, § 23:28. In the instant case, the word "apex" in Registrant's APEX mark creates the commercial impression relating to a ascending a mountain peak or a reaching the top of some formation due to the suggestion or mental image that is directly associated with a APEX, i.e., a mountain peak. Whereas, the commercial impression or suggestion created by the Applicant's mark is nothing more than three letters cobbled together. Thus, the different commercial impressions made by each mark is evidence of the lack of a likelihood of confusion. Id. (citing Morrison Milling Co. v. General Mills, Inc., 436 F.2d 1050, 168 USPQ 591 (CCPA 1971) (different connotation of CORN-KITS and CORN KIX)).
For the above reasons, Applicant respectfully submits that its APX mark is phonetically and visually different than the Registrant's APEX mark and perhaps more importantly the two marks have different commercial impressions. Accordingly, Applicant submits that the present mark is registrable on the Principal Register based on this DuPont factor alone and that registrability increases substantially when other DuPont factors are considered as discussed below.
B. Applicant's Services Are Significantly Different than the Registrants' Goods, Such That Confusion Among the Relevant Purchasers Is Unlikely.
The Applicant’s services include "Monitoring burglar, trouble, fire and security alarm systems for residential and commercial buildings." The Registrant’s goods are directed to "anti-theft alarms for vehicles." Applicant respectfully submits that these services and goods are so dissimilar that there will be no likelihood of confusion. In particular, monitoring alarms for residential and commercial buildings are completely unrelated to anti-theft alarms for vehicles. Therefore, there can be no likelihood of confusion.
C. The Channels of Trade Through Which Applicant's Services Travel Are Significantly Different than the Channels of Trade Through Which Registrants' Goods Travel, Such That Confusion Among the Relevant Purchasers Is Unlikely.
Another DuPont factor considers the differences between the channels of trade through which the respective goods travel. It is well established that the usual meaning and connotation attributed to the words used to describe the goods in the cited registration indicate the normal channels of trade through which Registrant's goods travel. Applicant respectfully submits that in view of differences in the channels of trade through which the respective goods travel, the different classes of customers to which the goods are directed, and the conditions in the marketplace, that there is no likelihood of confusion between the present mark and the mark set forth in the cited registration.
In the instant case, the '720 registration identifies its goods as "anti-theft alarms for vehicles, namely programmable anti-theft alarms, horns, trunk releases, flashing parking lights, shock sensors, plug-in connectors and starter disable relays all for vehicles, and all sold together as a unit" which are presumed to travel through the traditional trade channels for automobile related goods. In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982).
On the other hand, Applicant's services, are distributed via Applicant’s alarm installers and sales force for residential and commercial buildings. Applicant's services are not available through typical retail establishments or available through channels of trade through which vehicle alarms are traditionally sold. The only way to obtain Applicant's services is in connection with the promotion, sale, installation or use of Applicant's alarms. In other words, there is no overlap between channels of trade through which Registrant's vehicle alarms are sold and Applicant's channels of trade. Accordingly, consumers of Applicant's services will not encounter Registrant's goods, and vice-versa, and as such there can be no likelihood of confusion between Applicant's services and Registrant's goods sold under the APEX mark.
Additionally, because Applicant's services and Registrant's goods never cross paths in the marketplace, it is very unlikely that the marks will ever cross paths in such a way to cause confusion as to the source of the respective goods and services. If the goods and 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, then, even if the marks are phonetically and visually identical (a situation that is not present in this case), confusion is not likely.
The purchasers of the goods associated with Registrant's APEX mark are not in a position to purchase the services recited in this application and which are distributed under the APX mark because they are seeking goods and services through different channels of trade. The disparate nature of the channels of trade through which the goods of the cited mark and the services of the present application travel, or are likely to travel, require the conclusion that there is no likelihood of confusion between the present mark and the cited mark.
For the above reasons, Applicant respectfully submits that Applicant's services distributed under its APX mark travel through different channels of trade than the goods sold under Registrant's APEX mark, such that a likelihood of confusion is thereby avoided. Accordingly, Applicant submits that the present mark is registrable on the Principal Register based on this DuPont factor alone and that registrability increases substantially when other DuPont factors are considered as discussed herein.
D. Registrant's APEX mark is a weak mark that is only entitled to the narrowest of protection.
As further evidence that the APEX mark is only entitled to the narrowest of protection, when determining the existence of a likelihood of confusion, one must consider the relative strength of the cited mark. In the instant case, the Registrant's mark is a weak mark that lacks substantial distinctiveness due to the descriptive and even generic term of the APEX mark.
The term "APEX" is used in over 700 Trademark Office records all of which use that term somewhere in the mark, which is evidence of substantial third party usage. Substantial third party usage evidences and underscores the weakness of the term "APEX." Thus, it is clear that the APEX mark is relatively weak. Accordingly, the differences between Applicant's APX mark and Registrant's APEX mark as well as the differences in the channels of trade through which the respective goods travel are deemed to be substantial differences. Accordingly, a likelihood of consumer confusion is avoided due to these substantial differences in the marks and Applicant respectfully requests a finding of the same.
II. Applicant's APX Mark Is Not Confusingly Similar to the APEX ALARM Mark Contained in U.S. Trademark Registration No. 3597021.
In view of the DuPont elements and factors to be applied in this case, the Applicant’s mark is registrable on the Principal Register due at least because: (1) the differences between Applicant's mark and the mark contained in the '021 registration, which create different commercial impressions for each mark; and (2) the weakness of the cited mark.
Provided below is a discussion of the pertinent evidentiary elements and factors from the DuPont case and the applicable facts in the instant case all of which lead to a conclusion that there is no likelihood of confusion between the marks in question.
A. Applicant's Mark Has a Substantially Different Appearance, Sound and Connotation than Registrant's Mark, Thereby Creating a Different Commercial Impression That is Not Confusingly Similar to Registrant's Mark.
The first DuPont factor indicates that the similarity or dissimilarity of the marks in question as to appearance, sound, connotation and commercial impression is to be considered in an analysis under Section 2(d). Applicant respectfully traverses the statement in the Office Action that Applicant's mark is highly similar to Registrant's mark in sound and appearance for the reasons set forth below.
1. APX is phonetically dissimilar to APEX ALARM.
Applicant's APX mark is phonetically dissimilar to the '021 registration's APEX ALARM mark as the APX mark is a string of letters with three syllables, which may be pronounced A-P-X. Whereas, APEX comprises only two syllables and is pronounced as the word "apex." The Registrant’s mark further includes the term "alarm" such that the Registrant’s mark is pronounced as two words, namely, "apex alarm." Thus, under a phonetic analysis, the APX mark is clearly different and distinct from APEX ALARM.
2. Applicant's APX mark is dissimilar in appearance to Registrant's APEX ALARM mark.
Applicant's APX mark is visually distinguishable from Registrant's APEX ALARM mark. The Registrant’s mark includes an additional letter "e" while the Applicant’s APX mark does not contain the letter "e." The omission of the letter "e" in the Applicant’s mark is significant because the letter "e", as used in the Registrant mark, forms a pronounced word. Without the letter "e", the Applicant’s mark is simply a combination of letters. Registrant’s mark further includes the term "alarm."
3. Applicant's APX mark has a very different meaning than Registrant's APEX ALARM mark and hence creates a different commercial impression.
Perhaps most importantly, the respective meanings of the two marks in question are vastly different, such that the commercial impression created by each mark is also vastly different. In other words, because the mental impact created by each of the marks is so different the psychological imagery evoked in the minds of the consuming public is also very different.
According to well established case law, the meaning of the marks can be determined by reference to a standard dictionary. McCarthy, Thomas J., McCarthy on Trademarks and Unfair Competition, § 23:26 (2007) (citing Tornado Industries, Inc. v. Typhoon Industries, Inc., 187 N.Y.S.2d 83, 121 USPQ 328 (1959); Hancock v. American Steel & Wire Co., 203 F.2d 737, 97 USPQ 330 (CCPA 1953)). In the present case, "APX" is a nonsense word and not found in the dictionary. Conversely, "APEX" may be defined as "the tip, top, point, or angular summit of anything; as, the apex of a mountain, spire, or cone; the apex, or tip, of a leaf." Random House Websters Unabridged Dictionary, p.97 (2001). Thus, it is clear that the meaning of Applicant's mark is nothing definable whereas the meaning of Registrant's mark is that of a mountain peak, which meanings are vastly different.
Still further, if the two marks in question each have an aura of suggestion, but each suggests something different to the buyer or potential buyer, then the different suggestion indicates an absence of a likelihood of confusion. McCarthy, Thomas J., McCarthy on Trademarks and Unfair Competition, § 23:28 (2007). In the instant case, the word "apex" in Registrant's APEX ALARM mark creates the commercial impression relating to ascending a mountain peak or reaching the top of some formation due to the suggestion or mental image that is directly associated with an apex, i.e., a mountain peak. Whereas, the commercial impression or suggestion created by the Applicant's mark is nothing more than three letters cobbled together. Thus, the different commercial impressions made by each mark is evidence of the lack of a likelihood of confusion. Id. (citing Morrison Milling Co. v. General Mills, Inc., 436 F.2d 1050, 168 USPQ 591 (CCPA 1971) (different connotation of CORN-KITS and CORN KIX)).
For the above reasons, Applicant respectfully submits that its APX mark is phonetically and visually different than the Registrant's APEX ALARM mark and perhaps more importantly the two marks have different commercial impressions. Accordingly, Applicant submits that the present mark is registrable on the Principal Register based on this DuPont factor alone and that registrability increases substantially when other DuPont factors are considered as discussed below.
B. Registrant's APEX ALARM mark is a weak mark that is only entitled to the narrowest of protection.
As discussed above, the term "APEX" is found in over 700 Trademark Office records all of which use that term somewhere in the mark, which is evidence of substantial third party usage. Substantial third party usage evidences and underscores the weakness of the term "APEX." Thus, it is clear that the APEX mark is relatively weak. Accordingly, the differences between Applicant's APX mark and Registrant's APEX ALARM mark are deemed to be substantial differences. Accordingly, a likelihood of consumer confusion is avoided due to these substantial differences in the marks and Applicant respectfully requests a finding of the same.
Applicant respectfully submits that registration on the Principal Register is appropriate. If any impediment to passing this mark onto publication remains after entry of this Amendment and consideration of these remarks, the Examining Attorney is invited to initiate a telephone interview with the attorney of record.