| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85606056 |
| LAW OFFICE ASSIGNED | LAW OFFICE 102 |
| MARK SECTION | |
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85606056 |
| LITERAL ELEMENT | ACORNS |
| 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. |
| ARGUMENT(S) | |
|
The Examiner has initially refused registration of Applicant’s Mark on grounds of likely confusion with two registrations owned by ACORN PERFORMANCE GROUP, INC. for the Marks ACORN SYSTEMS No. 3128305 for “computer hardware and software for use in measuring, managing, and optimizing activity costs in order to improve business profits” and ACORN PERFORMANCE ANALYZER No. 3276718 registered for “computer software for tracking, managing, and optimizing costs and profits for businesses.” (Emphasis added). For the reasons noted below, this refusal of registration should be withdrawn.
In analyzing likely confusion, there are a number of factors to be considered:
· similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; · the relatedness of the goods or services as described in the application and registration; · the similarity or dissimilarity of the established - likely - to continue trade channels; · the buyers to whom sales are made, i.e., impulse vs. careful sophisticated purchasers; · the strength or weakness of the marks/the number and nature of similar marks in use on similar goods or/for similar services; · any actual confusion between the marks; and · the relative fame of the marks.
With respect to determining likelihood of confusion, “[t]here is no litmus rule which can provide a ready guide to all cases,” In re, DuPont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563,566 (C.C.P.A. 1973), not all of the factors are relevant, and only those relevant factors for which there is evidence in the record must be considered. Id. at 3651-62, 177 USPQ 568. When all of the above factors are analyzed and applied to the facts and evidence of record in this case, it is evident that confusion is unlikely to occur and the refusal of registration should be withdrawn.
The Marks Are Dissimilar.
Marks are to be considered in their entirety when being analyzed for likely confusion, and all relevant facts pertaining to sound, appearance and connotation must be considered. Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 U.S.P.Q. 2d 1894 (Fed. Cir. 2000). Similarity of marks in one respect--sight, sound, or meaning--will not automatically result in a determination that confusion is likely even if the goods are identical or closely related. See In re Thor Tech., Inc. 90 USPQ 2d 1634, 1635 (TTAB 2009).
Applicant’s mark is ACORNS. Registrant's marks consist of composed marks of the word ACORN (singular) with SYSTEMS and PERFORMANCE ANALYZER (ACORN SYSTEMS / ACORN PERFORMANCE ANALYZER). The marks are dissimilar visually and phonetically and in the commercial impression they each convey. Applicant’s mark consists of one word, whereas Registrant’s marks are two and three. Although the latter one and two words in Registrant’s marks have been disclaimed, these words are not removed from the mark for purposes of a likely confusion analysis. See In re Nat'l Data Corp., 753 F.2d 1056, 1059, 224 U.S.P.Q. 749 USPQ 749, 751 (Fed.Cir.1985). The mark must still be regarded as a whole, including disclaimed matter, in evaluating similarity to other marks. Id. The disclaimed words in Registrant’s mark convey to the public the nature of the services Registrant provides and create a distinct commercial impression associated with Registrant’s marks. Applicant's mark does not convey this or any type of particular or unique commercial impression. Thus, when considered in their entireties, Applicant’s ACORNS mark is significantly different in appearance, sound, meaning, and commercial impression from the cited ACORN SYSTEMS and ACORN PERFORMANCE ANALYZER marks to avoid any likelihood of confusion.
The Board has held, and the Federal Circuit has affirmed, that dissimilarities between marks can outweigh all other factors which might be relevant in a likely confusion analysis. See Kellogg Co. v. Pack’em Enterprises, Inc. 951 F.2d 330, 21 U.S.P.Q. 2d 1142 (Fed. Cir. 1991); Keebler Co. v. Murray Bakery Products 9 U.S.P.Q 2d 1736 (Fed. Cir. 1989). In the Kellogg case, the Board held that [t]he similarity or dissimilarity of the marks [FROOT LOOPS and FROOTIE ICE] in their entireties as to appearance, sound, connotation, and commercial impressions was dispositive of the likelihood of confusion issue. The Board held that even if the opposer in that case had offered evidence that it used its mark on the same products as did Applicant, that its products traveled in the same channels of trade, to the same purchasers, that its goods were purchased casually and without care by unsophisticated purchasers, and that its mark was strong and famous, that it would still have rendered a decision in favor of Applicant finding no likelihood of confusion between the two marks based on the distinct dissimilarity between the marks themselves. That reasoning should be followed here.
The Keebler case is also highly relevant. In that case, despite the fact that Applicant admitted the opposer’s prior and extensive use of its mark, admitted the existence of opposer’s registrations, admitted the similarity of the goods, namely, cookies, admitted the similarities in the channels of trade, and admitted sales to the same class of purchasers, the Board nevertheless found that due to the “dissimilarity in commercial impression” and “the readily distinguishable appearance” of the [PECAN SANDIES and PECAN SHORTEES] marks, as well as the fact that the only point of similarity between the two marks was the word PECAN, that the dissimilarities between the marks would, alone, support a finding that confusion was unlikely between them. In the Board’s opinion, the case turned on the “dissimilarity in appearance, pronunciation, and connotation of the words ‘SANDIES’ and ‘SHORTEES.’”
If the Board can find the above marks to be sufficiently dissimilar that there is no likely confusion between them, then the Examiner should have no difficulty in this case finding that the differences between Applicant’s mark ACORNS and Registrant’s ACORN SYSTEMS and ACORN PERFORMANCE ANALYZER marks warrant a finding of no likely confusion. Although both use “ACORN (singular) and ACORNS (plural),” they are otherwise different visually, phonetically, and connotatively.
The Services Are Dissimilar.
Applicant’s business revolves around consumer services, by definition, consumer services are a range of services provided to consumers of a product by the company that produces, markets, or supports the product or service. Applicant’s product is a downloadable software application for the purpose of allowing consumers to track the profitability of their financial portfolios and process investments in small increments. See Exhibit A. Registrant is a global management consulting firm, specializing in delivering operational insight and performance improvement for lasting competitive advantage, revolving around business services, which by definition is a general term that describes work that supports a business but does not produce a tangible commodity as opposed to consumer services. See Exhibit B and http://www.acornpg.com/. These two types of goods and services are not likely to be confused by the relevant target customers.
If the 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 they are identical, confusion is not likely See Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1244-45, 73 USPQ 2d 1350, 1356 (Fed.Cir.2004) (emphasis added).
The Target Customers are Dissimilar.
The nature of the products and services which Applicant provides is very focused. Applicant’s target customers are and will be consumers interested in micro-investing. Thus, Applicant’s target customers are very specific.
The Registrant markets its consulting services to businesses that need help with operational insight and performance improvement for lasting competitive advantage.
Individuals and entities involved in these kind of services are very well educated, highly sophisticated, and well-informed. It is extremely unlikely, if not completely unlikely, that the target customers for each entity would ever confuse the services and/or products provided by Applicant and Registrant. The individuals seeking these services, and who would be the persons responsible for engaging the services or purchasing the products of each entity or themselves, are highly detail oriented given the nature of their work in the industries in which they operate. Such individuals would not be likely to confuse these two companies and accidentally purchase products or services from the wrong one.
The Channels of Trade Are Dissimilar.
Applicant will provide its products and services through distribution channels directed to consumers. Registrant’s services will be advertised and promoted to businesses looking for insights into profitability, cost and capacity and its relation to their strategic initiatives to that industry. These channels of trade are quite dissimilar, do not overlap, and will not result in a likelihood of confusion between the marks at issue.
There has been no actual confusion between the marks.
Applicant began operations in April 2012 and is not aware of any instances of actual confusion between its company and Registrant.
The Mark ACORN.
The mark ACORN is not famous. In fact, the mark ACORN is used by a variety of entities across a wide variety of industries. Customers are accustomed to encountering marks that consist of or contain this word in a variety of places for a variety of goods and services. There are 97 live U.S. applications or registrations consisting of or containing “acorn.” See Exhibit C. A Google® search of “acorn” retrieved 47,600,000 results, and in none of the first three pages of results is Registrant even referenced. See Exhibit D.
Conclusion
The refusal based on Section 2(d) should be withdrawn since the above demonstrates that there is no likelihood of confusion between Applicant’s mark and Registrant's marks. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_38971052-081522089_._Exhibit_A.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\856\060\85606056\xml4\ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\856\060\85606056\xml4\ROA0003.JPG | |
| ORIGINAL PDF FILE | evi_38971052-081522089_._Exhibit_B.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
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| \\TICRS\EXPORT16\IMAGEOUT16\856\060\85606056\xml4\ROA0005.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\060\85606056\xml4\ROA0006.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\060\85606056\xml4\ROA0007.JPG | |
| ORIGINAL PDF FILE | evi_38971052-081522089_._Exhibit_C.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
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| \\TICRS\EXPORT16\IMAGEOUT16\856\060\85606056\xml4\ROA0009.JPG | |
| ORIGINAL PDF FILE | evi_38971052-081522089_._Exhibit_D.pdf |
| CONVERTED PDF FILE(S) (6 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\856\060\85606056\xml4\ROA0010.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\856\060\85606056\xml4\ROA0011.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\060\85606056\xml4\ROA0012.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\060\85606056\xml4\ROA0013.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\060\85606056\xml4\ROA0014.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\060\85606056\xml4\ROA0015.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Website of Applicant Website of Registrant USPTO Search - Records - ACORN Google Search - ACORN |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Downloadable software application for mobile and web enabled devices relating to financial services | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 04/09/2012 |
| FIRST USE IN COMMERCE DATE | At least as early as 04/09/2012 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Downloadable software application for the purpose of allowing consumers to track the profitability of their financial portfolios and process investments in small increments, the foregoing for use with mobile and web-enabled devices | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 04/09/2012 |
| FIRST USE IN COMMERCE DATE | At least as early as 04/09/2012 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Andrew D. Skale/ |
| SIGNATORY'S NAME | Andrew D. Skale |
| SIGNATORY'S POSITION | Attorney of record |
| SIGNATORY'S PHONE NUMBER | 858-314-1506 |
| DATE SIGNED | 09/11/2012 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Sep 11 08:21:37 EDT 2012 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.X-201 20911082137164416-8560605 6-4907cc185388687e6bff537 81fb3e789f6d-N/A-N/A-2012 0911081522089607 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
The Examiner has initially refused registration of Applicant’s Mark on grounds of likely confusion with two registrations owned by ACORN PERFORMANCE GROUP, INC. for the Marks ACORN SYSTEMS No. 3128305 for “computer hardware and software for use in measuring, managing, and optimizing activity costs in order to improve business profits” and ACORN PERFORMANCE ANALYZER No. 3276718 registered for “computer software for tracking, managing, and optimizing costs and profits for businesses.” (Emphasis added). For the reasons noted below, this refusal of registration should be withdrawn.
In analyzing likely confusion, there are a number of factors to be considered:
· similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression;
· the relatedness of the goods or services as described in the application and registration;
· the similarity or dissimilarity of the established - likely - to continue trade channels;
· the buyers to whom sales are made, i.e., impulse vs. careful sophisticated purchasers;
· the strength or weakness of the marks/the number and nature of similar marks in use on similar goods or/for similar services;
· any actual confusion between the marks; and
· the relative fame of the marks.
With respect to determining likelihood of confusion, “[t]here is no litmus rule which can provide a ready guide to all cases,” In re, DuPont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563,566 (C.C.P.A. 1973), not all of the factors are relevant, and only those relevant factors for which there is evidence in the record must be considered. Id. at 3651-62, 177 USPQ 568. When all of the above factors are analyzed and applied to the facts and evidence of record in this case, it is evident that confusion is unlikely to occur and the refusal of registration should be withdrawn.
The Marks Are Dissimilar.
Marks are to be considered in their entirety when being analyzed for likely confusion, and all relevant facts pertaining to sound, appearance and connotation must be considered. Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 U.S.P.Q. 2d 1894 (Fed. Cir. 2000). Similarity of marks in one respect--sight, sound, or meaning--will not automatically result in a determination that confusion is likely even if the goods are identical or closely related. See In re Thor Tech., Inc. 90 USPQ 2d 1634, 1635 (TTAB 2009).
Applicant’s mark is ACORNS. Registrant's marks consist of composed marks of the word ACORN (singular) with SYSTEMS and PERFORMANCE ANALYZER (ACORN SYSTEMS / ACORN PERFORMANCE ANALYZER). The marks are dissimilar visually and phonetically and in the commercial impression they each convey. Applicant’s mark consists of one word, whereas Registrant’s marks are two and three. Although the latter one and two words in Registrant’s marks have been disclaimed, these words are not removed from the mark for purposes of a likely confusion analysis. See In re Nat'l Data Corp., 753 F.2d 1056, 1059, 224 U.S.P.Q. 749 USPQ 749, 751 (Fed.Cir.1985). The mark must still be regarded as a whole, including disclaimed matter, in evaluating similarity to other marks. Id. The disclaimed words in Registrant’s mark convey to the public the nature of the services Registrant provides and create a distinct commercial impression associated with Registrant’s marks. Applicant's mark does not convey this or any type of particular or unique commercial impression. Thus, when considered in their entireties, Applicant’s ACORNS mark is significantly different in appearance, sound, meaning, and commercial impression from the cited ACORN SYSTEMS and ACORN PERFORMANCE ANALYZER marks to avoid any likelihood of confusion.
The Board has held, and the Federal Circuit has affirmed, that dissimilarities between marks can outweigh all other factors which might be relevant in a likely confusion analysis. See Kellogg Co. v. Pack’em Enterprises, Inc. 951 F.2d 330, 21 U.S.P.Q. 2d 1142 (Fed. Cir. 1991); Keebler Co. v. Murray Bakery Products 9 U.S.P.Q 2d 1736 (Fed. Cir. 1989). In the Kellogg case, the Board held that [t]he similarity or dissimilarity of the marks [FROOT LOOPS and FROOTIE ICE] in their entireties as to appearance, sound, connotation, and commercial impressions was dispositive of the likelihood of confusion issue. The Board held that even if the opposer in that case had offered evidence that it used its mark on the same products as did Applicant, that its products traveled in the same channels of trade, to the same purchasers, that its goods were purchased casually and without care by unsophisticated purchasers, and that its mark was strong and famous, that it would still have rendered a decision in favor of Applicant finding no likelihood of confusion between the two marks based on the distinct dissimilarity between the marks themselves. That reasoning should be followed here.
The Keebler case is also highly relevant. In that case, despite the fact that Applicant admitted the opposer’s prior and extensive use of its mark, admitted the existence of opposer’s registrations, admitted the similarity of the goods, namely, cookies, admitted the similarities in the channels of trade, and admitted sales to the same class of purchasers, the Board nevertheless found that due to the “dissimilarity in commercial impression” and “the readily distinguishable appearance” of the [PECAN SANDIES and PECAN SHORTEES] marks, as well as the fact that the only point of similarity between the two marks was the word PECAN, that the dissimilarities between the marks would, alone, support a finding that confusion was unlikely between them. In the Board’s opinion, the case turned on the “dissimilarity in appearance, pronunciation, and connotation of the words ‘SANDIES’ and ‘SHORTEES.’”
If the Board can find the above marks to be sufficiently dissimilar that there is no likely confusion between them, then the Examiner should have no difficulty in this case finding that the differences between Applicant’s mark ACORNS and Registrant’s ACORN SYSTEMS and ACORN PERFORMANCE ANALYZER marks warrant a finding of no likely confusion. Although both use “ACORN (singular) and ACORNS (plural),” they are otherwise different visually, phonetically, and connotatively.
The Services Are Dissimilar.
Applicant’s business revolves around consumer services, by definition, consumer services are a range of services provided to consumers of a product by the company that produces, markets, or supports the product or service. Applicant’s product is a downloadable software application for the purpose of allowing consumers to track the profitability of their financial portfolios and process investments in small increments. See Exhibit A. Registrant is a global management consulting firm, specializing in delivering operational insight and performance improvement for lasting competitive advantage, revolving around business services, which by definition is a general term that describes work that supports a business but does not produce a tangible commodity as opposed to consumer services. See Exhibit B and http://www.acornpg.com/. These two types of goods and services are not likely to be confused by the relevant target customers.
If the 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 they are identical, confusion is not likely See Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1244-45, 73 USPQ 2d 1350, 1356 (Fed.Cir.2004) (emphasis added).
The Target Customers are Dissimilar.
The nature of the products and services which Applicant provides is very focused. Applicant’s target customers are and will be consumers interested in micro-investing. Thus, Applicant’s target customers are very specific.
The Registrant markets its consulting services to businesses that need help with operational insight and performance improvement for lasting competitive advantage.
Individuals and entities involved in these kind of services are very well educated, highly sophisticated, and well-informed. It is extremely unlikely, if not completely unlikely, that the target customers for each entity would ever confuse the services and/or products provided by Applicant and Registrant. The individuals seeking these services, and who would be the persons responsible for engaging the services or purchasing the products of each entity or themselves, are highly detail oriented given the nature of their work in the industries in which they operate. Such individuals would not be likely to confuse these two companies and accidentally purchase products or services from the wrong one.
The Channels of Trade Are Dissimilar.
Applicant will provide its products and services through distribution channels directed to consumers. Registrant’s services will be advertised and promoted to businesses looking for insights into profitability, cost and capacity and its relation to their strategic initiatives to that industry. These channels of trade are quite dissimilar, do not overlap, and will not result in a likelihood of confusion between the marks at issue.
There has been no actual confusion between the marks.
Applicant began operations in April 2012 and is not aware of any instances of actual confusion between its company and Registrant.
The Mark ACORN.
The mark ACORN is not famous. In fact, the mark ACORN is used by a variety of entities across a wide variety of industries. Customers are accustomed to encountering marks that consist of or contain this word in a variety of places for a variety of goods and services. There are 97 live U.S. applications or registrations consisting of or containing “acorn.” See Exhibit C. A Google® search of “acorn” retrieved 47,600,000 results, and in none of the first three pages of results is Registrant even referenced. See Exhibit D.
Conclusion
The refusal based on Section 2(d) should be withdrawn since the above demonstrates that there is no likelihood of confusion between Applicant’s mark and Registrant's marks.
