| PTO Form 1822 (Rev 11/2007) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85230691 |
| LAW OFFICE ASSIGNED | LAW OFFICE 108 |
| MARK SECTION | |
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85230691 |
| LITERAL ELEMENT | ELECTRA |
| 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. |
| PENDING SERIAL NUMBER(S) | |
| Serial number(s) 78961991, 78962081, 77010715, 77010678, and 85228340 should not be used as a citation(s) under Section 2(d) of the Trademark Act, in the event that said serial number(s) mature(s) into a registration(s). The applicant hereby requests removal of this application from suspension, based on the following arguments. In the event that the examining attorney is not persuaded by these arguments, the applicant hereby requests that this application be returned to suspended status, awaiting ultimate disposition of the referenced serial number(s). | |
| ARGUMENT(S) | |
|
The Examiner has suspended Applicant’s application for ELECTRA for “computer hardware, namely encoders, video and audio input processors, ethernet adapters, and embedded software for use in compression and decompression of video and audio data” in class 9 pending disposition of application serial nos. 78/961,991; 78/962,081; 77/010,715; 77/010,678; and 85/228,340, as there may be a likelihood of confusion between Applicant’s mark and the cited marks. Applicant respectfully informs the Examiner that Application no. 85/228,340 has been abandoned, and, therefore, cannot be cited against Applicant’s application. Furthermore, Applicant respectfully disagrees with the Examiner’s contention that the other identified applications, if registered, would be cited under Section 2(d) against Applicant’s application for ELECTRA.
1. Serial No. 78/961,991 for ELEKTRA & Serial No. 78/962081 for ELEKTRA TU TIENDA EN CASA
The examiner has cited Elektra del Milenio, S.A. de C.V.’s Application Serial No. 78/961991 for ELEKTRA and Design, and Application Serial No. 78/962081 for ELEKTRA TU TIENDA EN CASA and Design, both for catalog ordering service featuring household appliances, computer equipment, electronics and furniture in class 35.
It is well-established that the similarity or dissimilarity of the goods or services for which the respective marks are used is an important factor in the likelihood of confusion analysis. In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973). Indeed, in Lindy Pen Co. v. Bic Pen Corp., 796 F.2d 254, 255-256 (9th Cir. 1986), the court expressed “the obvious conclusion that a likelihood of confusion is more readily found when the goods compete and the marks are very similar.” Here, as explained below, Applicant’s goods are different and unrelated to Elektra del Milenio, S.A. de C.V.’s offered services.
Applicant’s ELECTRA products are sophisticated components used in video and audio delivery hardware. Applicant’s goods are not promoted or sold to the general public. Instead, Applicant’s goods are promoted and sold to video service providers and multiple service operators, such as cable operators, internet service providers and broadcast satellite operators.
In contrast, the services identified in Elektra del Milenio’s cited applications are for catalog ordering services featuring household appliances and consumer electronic products. Thus, the services identified in the cited applications will be offered to consumers. As the services identified in the cited applications are associated with consumer electronic products, they are sufficiently different from and unrelated to Applicant’s ELECTRA products to avoid a likelihood of confusion.
Furthermore, because the associated goods and services are unrelated, it is unlikely that they will be marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that the goods originate from the same source. See, Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusing similar to LIQUID PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field). Here, Applicant’s ELECTRA products are sold in the business to business context and are marketed to video service providers and multiple service operators, such as cable operators, internet service providers and broadcast satellite operators. Applicant’s ELECTRA products will not be sold and/or marketed to individual consumers. In contrast, the services identified in Elektra del Milenio’s cited applications will likely be offered to individual consumers for purchase of household items. Accordingly, because the associated channels of trade for Applicant’s ELECTRA products and the services associated with the cited applications are so different, there is no likelihood of confusion between the two marks. See Du Pont, 476 F.2d at 1361 (explaining that different prospective customer bases of trade for the respective products and services support the peaceful coexistence of marks); Information Resources v. X*Press Info, Servs., 6 U.S.P.Q.2d 1034 (TTAB 1988) (X*PRESS for a news service transmitted through cable television to a personal computer was found not likely to cause confusion with EXPRESS for highly specialized information analysis computer programs). Moreover, the sophistication of the purchaser is an important factor when determining the likelihood of confusion. See Hewlett-Packard Co. v. Human Performance Measurement Inc., 23 U.S.P.Q.2d 1390, 1396 (T.T.A.B. 1992) (finding no likelihood of confusion because the medical equipment sold by both applicant and opposer would be selected by “highly educated, sophisticated purchasers who know their equipment needs and would be expected to exercise a great deal of care in its selection.”); Electronic Data Systems Corp., 23 U.S.P.Q.2d at 1465 (holding that, due to the nature of the computer equipment sold by both applicant and opposer, “both parties’ offerings would be carefully scrutinized by prospective purchasers, and any purchasing decisions would be made after careful consideration.”) Here, as discussed above, Applicant’s ELECTRA computer hardware and embedded software for use in compression and decompression of video and audio data would be sold to sophisticated, professional purchasers employed by video service providers. Likewise, consumers using Elektra del Milenio’s catalog ordering service featuring household appliances, computer equipment, electronics and furniture would likely exercise a great deal of care in making purchasing decisions because they would be buying expensive household items such as appliances, furniture and computer equipment. Accordingly as both the professional purchasers of Applicant’s products and the users of Elektra del Milenio’s catalog ordering service would exercise care in making purchasing decisions, any likelihood of confusion between the marks would be minimal.
2. Serial No. 77010715 for ELEKTRA & Serial No. 77010678 for ELEKTRA Elektra Trading & Consulting Group, S.A. d.e. C.V. owns Application Serial No. 77/010715 for ELEKTRA and Design for retail stores featuring general consumer goods such as home appliances, electronics, electric appliances, furniture and household goods; and advertising, namely, the commercialization of goods such as home appliances, electronics, electric appliances, furniture and household goods in class 35, and Application Serial No. 77/010678 for ELEKTRA and Design, for goods and services, including, television sets, DVD players and recorders, portable DVD players, CD players, radios, tape recorders, MP3 players, video cameras, videotape players, photographic cameras, electric irons, computer monitors, flat panel display screens, computer printers, electric accumulators, home theater products, personal stereos, stereo receivers, USB (universal serial bus) hardware, memory cards, and video game cartridges in class 9.
As noted above, Applicant’s ELECTRA products are sophisticated computer hardware components used by video service providers. Applicant’s goods are not promoted or sold to the general public. Instead, Applicant’s goods are promoted and sold to video service providers, such as cable operators, internet service providers and broadcast satellite operators. In contrast, the goods and services identified in Elektra Trading & Consulting Group’s cited applications are for retail store services featuring household appliances and consumer electronic products, as well as consumer electronic products such as television sets and computer monitors. Thus, the goods services identified in Elektra Trading & Consulting Group’s cited applications will be offered to consumers. Accordingly, Elektra Trading & Consulting Group’s identified goods and services are sufficiently different from and unrelated to Applicant’s ELECTRA products to avoid a likelihood of confusion.
Furthermore, purchasers of Applicant’s goods and Elektra Trading & Consulting Group’s services and goods are likely to be exercise great care in making purchasing decisions. As noted above, purchasers of Applicant’s goods are professional purchasers employed by cable operators, internet service providers and broadcast satellite operators. Moreover, consumer goods such as home appliances, electronics, electric appliances, and furniture are typically big ticket, expensive items. Thus, consumers shopping at Elektra Trading & Consulting Group retail stores for such consumer goods are likely to exhibit care in making purchasing decisions. Accordingly as both the professional purchasers of Applicant’s products and the consumers shopping at Elektra Trading & Consulting Group’s retail stores would be expected to exercise care in making purchasing decisions, any likelihood of confusion between the marks would be minimal.
Finally, Applicant owns U.S. registration 3,331,106 for DIVICOM ELECTRA, which was filed before any of the cited applications. The DIVICOM ELECTRA registration was not cited against any of Elektra del Milenio or Elektra Trading & Consulting Group’s applications. Thus, the USPTO has indicated that it will allow the registration for DIVICOM ELECTRA to coexist with registrations for the cited marks. Thus, ELECTRA for specialized hardware goods used by video service providers should be permitted to coexist with registrations for the cited marks.
Accordingly, given the differences in the associated goods and services and channels of trade, there is no likelihood of confusion between Applicant’s use of ELECTRA for its specialized hardware goods used by video service providers and the consumer-related goods and services identified in the cited applications. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /djm/ |
| SIGNATORY'S NAME | Diane J. Mason |
| SIGNATORY'S POSITION | Attorney of record, California state bar |
| SIGNATORY'S PHONE NUMBER | 415-913-4911 |
| DATE SIGNED | 06/28/2012 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Jun 28 18:20:26 EDT 2012 |
| TEAS STAMP | USPTO/RSI-XXX.XXX.X.XXX-2 0120628182026401782-85230 691-490c98b953d84174696ef 8b085b13a6bbe-N/A-N/A-201 20628175224632885 |
| PTO Form 1822 (Rev 11/2007) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
The Examiner has suspended Applicant’s application for ELECTRA for “computer hardware, namely encoders, video and audio input processors, ethernet adapters, and embedded software for use in compression and decompression of video and audio data” in class 9 pending disposition of application serial nos. 78/961,991; 78/962,081; 77/010,715; 77/010,678; and 85/228,340, as there may be a likelihood of confusion between Applicant’s mark and the cited marks. Applicant respectfully informs the Examiner that Application no. 85/228,340 has been abandoned, and, therefore, cannot be cited against Applicant’s application. Furthermore, Applicant respectfully disagrees with the Examiner’s contention that the other identified applications, if registered, would be cited under Section 2(d) against Applicant’s application for ELECTRA.
1. Serial No. 78/961,991 for ELEKTRA &
Serial No. 78/962081 for ELEKTRA TU TIENDA EN CASA
The examiner has cited Elektra del Milenio, S.A. de C.V.’s Application Serial No. 78/961991 for ELEKTRA and Design, and Application Serial No. 78/962081 for ELEKTRA TU TIENDA EN CASA and Design, both for catalog ordering service featuring household appliances, computer equipment, electronics and furniture in class 35.
It is well-established that the similarity or dissimilarity of the goods or services for which the respective marks are used is an important factor in the likelihood of confusion analysis. In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973). Indeed, in Lindy Pen Co. v. Bic Pen Corp., 796 F.2d 254, 255-256 (9th Cir. 1986), the court expressed “the obvious conclusion that a likelihood of confusion is more readily found when the goods compete and the marks are very similar.” Here, as explained below, Applicant’s goods are different and unrelated to Elektra del Milenio, S.A. de C.V.’s offered services.
Applicant’s ELECTRA products are sophisticated components used in video and audio delivery hardware. Applicant’s goods are not promoted or sold to the general public. Instead, Applicant’s goods are promoted and sold to video service providers and multiple service operators, such as cable operators, internet service providers and broadcast satellite operators.
In contrast, the services identified in Elektra del Milenio’s cited applications are for catalog ordering services featuring household appliances and consumer electronic products. Thus, the services identified in the cited applications will be offered to consumers. As the services identified in the cited applications are associated with consumer electronic products, they are sufficiently different from and unrelated to Applicant’s ELECTRA products to avoid a likelihood of confusion.
Furthermore, because the associated goods and services are unrelated, it is unlikely that they will be marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that the goods originate from the same source. See, Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusing similar to LIQUID PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field). Here, Applicant’s ELECTRA products are sold in the business to business context and are marketed to video service providers and multiple service operators, such as cable operators, internet service providers and broadcast satellite operators. Applicant’s ELECTRA products will not be sold and/or marketed to individual consumers. In contrast, the services identified in Elektra del Milenio’s cited applications will likely be offered to individual consumers for purchase of household items. Accordingly, because the associated channels of trade for Applicant’s ELECTRA products and the services associated with the cited applications are so different, there is no likelihood of confusion between the two marks. See Du Pont, 476 F.2d at 1361 (explaining that different prospective customer bases of trade for the respective products and services support the peaceful coexistence of marks); Information Resources v. X*Press Info, Servs., 6 U.S.P.Q.2d 1034 (TTAB 1988) (X*PRESS for a news service transmitted through cable television to a personal computer was found not likely to cause confusion with EXPRESS for highly specialized information analysis computer programs).
Moreover, the sophistication of the purchaser is an important factor when determining the likelihood of confusion. See Hewlett-Packard Co. v. Human Performance Measurement Inc., 23 U.S.P.Q.2d 1390, 1396 (T.T.A.B. 1992) (finding no likelihood of confusion because the medical equipment sold by both applicant and opposer would be selected by “highly educated, sophisticated purchasers who know their equipment needs and would be expected to exercise a great deal of care in its selection.”); Electronic Data Systems Corp., 23 U.S.P.Q.2d at 1465 (holding that, due to the nature of the computer equipment sold by both applicant and opposer, “both parties’ offerings would be carefully scrutinized by prospective purchasers, and any purchasing decisions would be made after careful consideration.”) Here, as discussed above, Applicant’s ELECTRA computer hardware and embedded software for use in compression and decompression of video and audio data would be sold to sophisticated, professional purchasers employed by video service providers. Likewise, consumers using Elektra del Milenio’s catalog ordering service featuring household appliances, computer equipment, electronics and furniture would likely exercise a great deal of care in making purchasing decisions because they would be buying expensive household items such as appliances, furniture and computer equipment. Accordingly as both the professional purchasers of Applicant’s products and the users of Elektra del Milenio’s catalog ordering service would exercise care in making purchasing decisions, any likelihood of confusion between the marks would be minimal.
2. Serial No. 77010715 for ELEKTRA &
Serial No. 77010678 for ELEKTRA
Elektra Trading & Consulting Group, S.A. d.e. C.V. owns Application Serial No. 77/010715 for ELEKTRA and Design for retail stores featuring general consumer goods such as home appliances, electronics, electric appliances, furniture and household goods; and advertising, namely, the commercialization of goods such as home appliances, electronics, electric appliances, furniture and household goods in class 35, and Application Serial No. 77/010678 for ELEKTRA and Design, for goods and services, including, television sets, DVD players and recorders, portable DVD players, CD players, radios, tape recorders, MP3 players, video cameras, videotape players, photographic cameras, electric irons, computer monitors, flat panel display screens, computer printers, electric accumulators, home theater products, personal stereos, stereo receivers, USB (universal serial bus) hardware, memory cards, and video game cartridges in class 9.
As noted above, Applicant’s ELECTRA products are sophisticated computer hardware components used by video service providers. Applicant’s goods are not promoted or sold to the general public. Instead, Applicant’s goods are promoted and sold to video service providers, such as cable operators, internet service providers and broadcast satellite operators. In contrast, the goods and services identified in Elektra Trading & Consulting Group’s cited applications are for retail store services featuring household appliances and consumer electronic products, as well as consumer electronic products such as television sets and computer monitors. Thus, the goods services identified in Elektra Trading & Consulting Group’s cited applications will be offered to consumers. Accordingly, Elektra Trading & Consulting Group’s identified goods and services are sufficiently different from and unrelated to Applicant’s ELECTRA products to avoid a likelihood of confusion.
Furthermore, purchasers of Applicant’s goods and Elektra Trading & Consulting Group’s services and goods are likely to be exercise great care in making purchasing decisions. As noted above, purchasers of Applicant’s goods are professional purchasers employed by cable operators, internet service providers and broadcast satellite operators. Moreover, consumer goods such as home appliances, electronics, electric appliances, and furniture are typically big ticket, expensive items. Thus, consumers shopping at Elektra Trading & Consulting Group retail stores for such consumer goods are likely to exhibit care in making purchasing decisions. Accordingly as both the professional purchasers of Applicant’s products and the consumers shopping at Elektra Trading & Consulting Group’s retail stores would be expected to exercise care in making purchasing decisions, any likelihood of confusion between the marks would be minimal.
Finally, Applicant owns U.S. registration 3,331,106 for DIVICOM ELECTRA, which was filed before any of the cited applications. The DIVICOM ELECTRA registration was not cited against any of Elektra del Milenio or Elektra Trading & Consulting Group’s applications. Thus, the USPTO has indicated that it will allow the registration for DIVICOM ELECTRA to coexist with registrations for the cited marks. Thus, ELECTRA for specialized hardware goods used by video service providers should be permitted to coexist with registrations for the cited marks.
Accordingly, given the differences in the associated goods and services and channels of trade, there is no likelihood of confusion between Applicant’s use of ELECTRA for its specialized hardware goods used by video service providers and the consumer-related goods and services identified in the cited applications.