| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85113369 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
The Examining Attorney has refused registration of Applicant’s mark on the ground of likelihood of confusion with U.S. Registration 3,198,262 for the mark PEPPER. The Applicant respectfully traverses this refusal. Applicant believes that the revision to the identification of goods should clarify Applicant’s goods and as a result eliminate the likelihood of confusion rejection in this matter. Registrant’s goods are simply not related to those of the Applicant. There are distinct differences in the marks such as to preclude a likelihood of confusion. It is noted that “confusion is related not to the nature of the mark but to its affect when applied to the goods of the Applicant. [Therefore] the only relevant application is made in the marketplace.” In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1360 (CCPA 1973). The services offered under Applicant’s mark are very different from the services offered under the cited registration and travel in very different channels of trade. As a result, there would be no likelihood of confusion between Applicant’s mark and the cited registration. While Applicant concedes that both marks are for PEPPER, the goods are different and are marketed to different consumers. There is no likelihood of confusion between Applicant’s mark and the cited registration because there are distinct differences in the goods and they travel through different channels of trade. A critical factor in determining the likelihood of confusion is the relatedness of the goods. Id. at 1361; TMEP § 1207.01. If the goods 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 identical, confusion is not likely. See, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related). Here, Applicant uses its mark in connection with downloadable interactive sports-related electronic game programs for mobile devices. By contrast, the cited mark is registered for use with ordinary playing cards. Playing electronic sports games on a mobile device and playing cards are two very different activities. The goods offered under each of these marks target very different audiences. While the respective products both fall under the penumbra of games, they are entirely different products which are marketed to very different consumers. A consumer looking for downloadable sports-game programs will not be confused with playing cards. Because of the wholly different uses and markets for the goods sold under the respective marks, there is no likelihood of confusion as to source by the average consumer. The issue is not whether the goods will be confused with each other, but rather whether the public will be confused about their source. Safety-Kleen Corp. v. Dresser Indus., Inc., 186 USPQ 476, 480 (C.C.P.A. 1975). If the goods 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 identical, confusion is not likely. Shen Mfg. Co. v. Ritz Hotel Ltd., 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 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). The conditions under which the goods are encountered in the marketplace and under which purchasing decisions are made must be considered as well when evaluating the likelihood that a mark sought to be registered in an application might be confused with a registered mark. See T.M.E.P. § 1207. Further, it is well established that if the decision is made by a sophisticated purchaser, it may be sufficient to negate a likelihood of confusion even between marks of great similarity. Litton Sys., Inc. v. Whirlpool Corp., 221 USPQ 97, 112 (Fed. Cir. 1984). Applicant’s products are only available for purchase and use on mobile devices whereas Registrant’s products are not electronic and only available in stores. Applicant’s consumers are highly discriminating and very careful in their purchases—they use their mobile devices to download electronic sports-game programs. Those purchasing applications for their mobile phones are knowledgeable about the type of game they are looking for and would not confuse ordinary playing cards with an electronic game program. Astra Pharmaceutical Prods., Inc. v. Beckman Instr., Inc., USPQ. 786, 790 (1st Cir. 1983) (“[t]here is always less likelihood of confusion where goods are purchased after careful consideration”). As a result, there clearly would be no likelihood of confusion between Applicant’s mark and cited registration. Finally, courts have consistently interpreted the likelihood of confusion standard as requiring much more than a “possibility” of confusion. McGregor-Doniger Inc. v. Drizzle, Inc., 599 F.2d 1126, 1130 (2nd Cir. 1979) (an “appreciable number of ordinary prudent purchasers are likely to be misled, or indeed simply confused”); Estee Lauder, Inc. v. The Gap, Inc., 108 F.3d 1503, 1510 (2nd Cir. 1997) (“likelihood of confusion means a probability of confusion; it is not sufficient if confusion is merely ‘possible.’”) In summary, it is respectfully requested that the Examining Attorney consider the difference in the goods and the differences in channels of trade. Taking these factors into consideration, there would be no likelihood of confusion between Applicant’s mark and the cited registration. In view of the foregoing, it is respectfully requested that the Examining Attorney withdraw the refusal to register, and that the application is in condition for publication. Favorable action is hereby solicited. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | interactive sports-related electronic games |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| downloadable interactive sports-related electronic game programs for mobile devices | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /cml/ |
| SIGNATORY'S NAME | Christina M. Licursi |
| SIGNATORY'S POSITION | Attorney of Record, MA Bar Member |
| DATE SIGNED | 04/14/2011 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Apr 14 14:43:20 EDT 2011 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.X-201 10414144320998214-8511336 9-480f134eaa41e66322712b8 e86c46669e-N/A-N/A-201104 14141959293528 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
The Examining Attorney has refused registration of Applicant’s mark on the ground of likelihood of confusion with U.S. Registration 3,198,262 for the mark PEPPER. The Applicant respectfully traverses this refusal.
Applicant believes that the revision to the identification of goods should clarify Applicant’s goods and as a result eliminate the likelihood of confusion rejection in this matter. Registrant’s goods are simply not related to those of the Applicant.
There are distinct differences in the marks such as to preclude a likelihood of confusion. It is noted that “confusion is related not to the nature of the mark but to its affect when applied to the goods of the Applicant. [Therefore] the only relevant application is made in the marketplace.” In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1360 (CCPA 1973). The services offered under Applicant’s mark are very different from the services offered under the cited registration and travel in very different channels of trade. As a result, there would be no likelihood of confusion between Applicant’s mark and the cited registration.
While Applicant concedes that both marks are for PEPPER, the goods are different and are marketed to different consumers. There is no likelihood of confusion between Applicant’s mark and the cited registration because there are distinct differences in the goods and they travel through different channels of trade. A critical factor in determining the likelihood of confusion is the relatedness of the goods. Id. at 1361; TMEP § 1207.01. If the goods 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 identical, confusion is not likely. See, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related). Here, Applicant uses its mark in connection with downloadable interactive sports-related electronic game programs for mobile devices. By contrast, the cited mark is registered for use with ordinary playing cards. Playing electronic sports games on a mobile device and playing cards are two very different activities.
The goods offered under each of these marks target very different audiences. While the respective products both fall under the penumbra of games, they are entirely different products which are marketed to very different consumers. A consumer looking for downloadable sports-game programs will not be confused with playing cards. Because of the wholly different uses and markets for the goods sold under the respective marks, there is no likelihood of confusion as to source by the average consumer. The issue is not whether the goods will be confused with each other, but rather whether the public will be confused about their source. Safety-Kleen Corp. v. Dresser Indus., Inc., 186 USPQ 476, 480 (C.C.P.A. 1975). If the goods 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 identical, confusion is not likely. Shen Mfg. Co. v. Ritz Hotel Ltd., 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 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).
The conditions under which the goods are encountered in the marketplace and under which purchasing decisions are made must be considered as well when evaluating the likelihood that a mark sought to be registered in an application might be confused with a registered mark. See T.M.E.P. § 1207. Further, it is well established that if the decision is made by a sophisticated purchaser, it may be sufficient to negate a likelihood of confusion even between marks of great similarity. Litton Sys., Inc. v. Whirlpool Corp., 221 USPQ 97, 112 (Fed. Cir. 1984). Applicant’s products are only available for purchase and use on mobile devices whereas Registrant’s products are not electronic and only available in stores. Applicant’s consumers are highly discriminating and very careful in their purchases—they use their mobile devices to download electronic sports-game programs. Those purchasing applications for their mobile phones are knowledgeable about the type of game they are looking for and would not confuse ordinary playing cards with an electronic game program. Astra Pharmaceutical Prods., Inc. v. Beckman Instr., Inc., USPQ. 786, 790 (1st Cir. 1983) (“[t]here is always less likelihood of confusion where goods are purchased after careful consideration”). As a result, there clearly would be no likelihood of confusion between Applicant’s mark and cited registration.
Finally, courts have consistently interpreted the likelihood of confusion standard as requiring much more than a “possibility” of confusion. McGregor-Doniger Inc. v. Drizzle, Inc., 599 F.2d 1126, 1130 (2nd Cir. 1979) (an “appreciable number of ordinary prudent purchasers are likely to be misled, or indeed simply confused”); Estee Lauder, Inc. v. The Gap, Inc., 108 F.3d 1503, 1510 (2nd Cir. 1997) (“likelihood of confusion means a probability of confusion; it is not sufficient if confusion is merely ‘possible.’”)
In summary, it is respectfully requested that the Examining Attorney consider the difference in the goods and the differences in channels of trade. Taking these factors into consideration, there would be no likelihood of confusion between Applicant’s mark and the cited registration.
In view of the foregoing, it is respectfully requested that the Examining Attorney withdraw the refusal to register, and that the application is in condition for publication. Favorable action is hereby solicited.