| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85702763 |
| LAW OFFICE ASSIGNED | LAW OFFICE 117 |
| MARK SECTION | |
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85702763 |
| LITERAL ELEMENT | QUARRY |
| 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) | |
|
This is in response to the first Office Action, dated December 18, 2012, which issued in connection with the above-identified application.
REMARKS The Examining Attorney has inquired as to whether Applicant’s mark QUARRY has any meaning or significance in the industry in which it is used. Applicant respectfully submits that its QUARRY mark has no meaning in the industry and is simply a coined term for its goods. Applicant seeks to register the mark QUARRY for software for automated processing of data and workflow management. The Examining Attorney, however, has refused registration under Section 2(d) of the Trademark Act on the basis that Applicant’s mark is likely to be confused with the mark in Application Serial No. 85106047 for QUIRY for PC-based software for use with microprocessor-based electr4onic hardware for measurement, data acquisition, monitoring, communication, measurement and control of process in a measurement and control system and Application Serial No. 85676147 for QUIRI for computer software, namely, an application allowing mobile employees to retrieve data stored in an enterprise’s computer applications and databases in real time, using a mobile device, with full telephony integration with the telephone and/or software features of the mobile device. In view of the following remarks, Applicant respectfully requests that the Examining Attorney withdraw the refusal under Section 2(d) of the Trademark Act. SECTION 2(D) REFUSAL A. Confusion is Not Likely Between Applicant’s Mark and the Cited Marks
Under the Trademark Act, a refusal to register grounded in likelihood of confusion requires that the confusion as to the source of the goods not merely be possible, but likely. A mere possibility of confusion is an insufficient basis for rejection under Section 2(d). We are not concerned with mere theoretical possibilities of confusion, deception or mistake or with de minimis situations but with the practicalities of the commercial world, with which trademark laws deal. In re Massey-Ferguson Inc., 222 U.S.P.Q. 367, 368 (T.T.A.B. 1983) (quoting Witco Chemical Co. v. Whitfield Chemical Co., Inc., 164 U.S.P.Q. 43, 44 (C.C.P.A. 1969)). See also Merritt Foods Co. v. Americana Submarine, 209 U.S.P.Q. 591, 599 (T.T.A.B. 1980) and In re P. Ferrero & C.S.p.A., 178 U.S.P.Q. 167, 168 (C.C.P.A. 1973) (that the goods “might both emanate from a single source [is not sufficient to establish that the marks are] likely to cause confusion as to the source, or to cause mistake, or to deceive.”) Moreover, mere similarity or even identity between two marks can never alone be decisive of likelihood of confusion. McGregor-Doniger, Inc. v. Drizzle Inc., 202 U.S.P.Q. 81, 89 (2d Cir. 1979). Thus, in holding that the mark “DRIZZLE” for women’s overcoats was not likely to cause confusion with “DRIZZLER” for golf jackets, the Court of Appeals for the Second Circuit stated: First, even close similarity between two marks is not dispositive of the issue of likelihood of confusion. “Similarity in and of itself is not the acid test. Whether the similarity is likely to provoke confusion is the crucial question.” (Citation omitted). McGregor-Doniger, 202 U.S.P.Q. at 89. The principle that the mere similarity between the Applicant’s mark and the cited marks is not a sufficient basis for a finding of likelihood of confusion is aptly demonstrated by Jacobs v. Int’l Multifoods Corp., 212 U.S.P.Q. 641 (C.C.P.A. 1982). In that case, the court stated that “[t]o establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and for restaurant services.” (Emphasis added; footnote omitted.) Id. at 642. See also Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 111 U.S.P.Q. 105 (C.C.P.A. 1956) (“HURRICANE” for outboard motors and “HURRICANE” for automotive engines not confusingly similar.); Triumph Machinery Co. v. Kentmaster Mfg. Co., Inc., 1 U.S.P.Q.2d 1826, 1829 (T.T.A.B. 1987) (“HYDRO-CLIPPER” for a power-operated cattle de-horning shear is not confusingly similar to “HYDRO-CLIPPER” for a power mower attachment as it was not a normal practice for dealers in the applicant’s equipment to handle machinery of the type sold by the opposer); and In re Shipp, 4 U.S.P.Q.2d 1174, 1176 (T.T.A.B. 1987) (holding “PURITAN” for laundry and dry cleaning services did not conflict with “PURITAN” for commercial dry cleaning machine filters and cleaning preparations despite the products and services being broadly related, as the applicant’s services were directed to consumers while the opposer’s goods were directed to professional cleaning establishments.) In this case, it is submitted that both of the marks in the cited applications are intended to evoke either the term “query” which is defined as “question, inquiry” in the Merriam-Webster online dictionary or “inquiry” which is defined as “examination into facts or principles, a request for information, or a systematic investigation often of a matter of public interest” in the Merriam-Webster online dictionary. Thus, the cited applications for the marks QUIRI and QUIRY are likely to evoke “searching” when used in connection with software that is used for measurement and control (QUIRY) and software that is used for searching (QUIRI). In stark contrast, Applicant’s mark QUARRY was chosen for its association with rocks and the cartoon “The Flintstones.” Thus, the QUARRY mark is used for a software engine that works in conjunction with another piece of software called RUBBLE. Both QUARRY and RUBBLE have an association with the Flintstones, e.g. Barnie Rubble who worked in the Bedrock Quarry. Applicant’s mark is therefore different in sound and connotation from the marks in the cited applications. As a result, there can be no likelihood of confusion. Indeed, more than a mere similarity of Applicant’s QUARRY mark and the cited marks, QUIRY and QUIRI, is necessary for a likelihood of confusion to exist as to the sources of the respective goods. B. The Differences in the Goods and the Channels of Trade Obviate a Likelihood of Confusion
Applicant submits that its goods and those in the cited applications are completely different, do not perform the same functions, are not alternatives for each other, do not operate in the same way and are not rendered in the same channels of trade to the same consumers. Thus, there is no basis for finding a likelihood of confusion. Applicant’s goods are for software for automated processing of data and workflow management. In contrast, neither of the cited applications are for marks to be used on goods related to Applicant’s goods. The only similarity between the goods of Applicant and the cited applications are that they are all software. Beyond that, however, the differences are obvious. The two cited marks QUIRY and QUIRI both appear to relate more to what they do and are at least partially descriptive, i.e. measuring and searching, while Applicant’s goods are designed to automate the processing of data and workflow. Marks for goods and services far more similar to each other than the goods involved here have been found not to be confusingly similar. In Lenox Inc. v. Ranmaru U.S.A. Corp., 17 U.S.P.Q.2d 1696, 1701 (S.D.N.Y. 1990), each party used the mark “TUXEDO” on dinner plate designs. After noting that the two marks were identical, the court addressed the similarity between the products: The closeness of the products, however, begins and ends with their shared membership in the plate family. ... Plaintiff’s “Tuxedo” is part of Lenox’s “Presidential Collection” and is among the most elegant china available. Defendants’ “Tuxedo” is a casual dinnerware pattern and sells for approximately $235 less than Plaintiff’s “Tuxedo.” The Court does not find that the products are sufficiently proximate to engender a likelihood of confusion. [Transcript citations omitted].
In McGraw-Hill Inc. v. Comstock Partners Inc., 17 U.S.P.Q.2d 1599, 1602 (S.D.N.Y. 1990), both parties used the term “COMSTOCK” with the plaintiff denoting its service linking a customer to a commodity and stock exchange database. Defendant used the mark for investment advisory services. Addressing competitive proximity, the court stated:
ComStock and the defendants, while they furnish products related to the broad field of finance, are as completely unrelated as night and day.
ComStock is in the business of leasing access time to a computer data base. Defendants are money managers for multimillion dollar operations. Comstock Partners Strategy Fund, Inc., a closed end mutual investment fund of over $1 billion, is not remotely similar to the ComStock product line.
In each of the above cases, the marks were identical, or nearly so, and the products could be generally characterized as falling within a related class of goods or services. Yet, in each case, the differences between the goods and/or services resulted in the recognition that confusion was unlikely. The differences between Applicant’s goods and the goods listed in the cited applications are far more pronounced than were the differences between the goods and services in the cases cited above. This fact argues strongly against finding a likelihood of confusion between Applicant’s mark and the mark in the cited applications. See also, In re Sydel Lingerie Co., Inc., 197 U.S.P.Q. 629 (T.T.A.B. 1977)(“BOTTOMS UP” for men’s suits, coats and trousers not confusingly similar with ladies’ and children’s underwear); In re Dominion Auto Accessories Ltd., 200 U.S.P.Q. 389 (T.T.A.B.1978)(“SHOCK-FREE” for vehicle lamps not confusingly similar with same mark for motor vehicles). In the case of American Optical Corp. v. Autotrol Corp., 175 U.S.P.Q. 725, 730 (T.T.A.B. 1972), the Board dismissed a trademark opposition due to the overwhelming differences in goods and non-overlapping trade channels between the applicant’s controls for water treatment equipment and the opposer’s wide array of medical instruments and equipment offered under a similar mark. In dismissing the opposition, the Board stated: Although some of these products include controls of some sort or another, and opposer has indicated that they are used for testing fluid, it is apparent that they are designed for the most part, if not exclusively, to test blood for various factors and other bodily fluids and that neither the controls nor the equipment could be deemed in any way related to applicant’s controls or to the water treatment equipment in connection with which they are used.
Id. at 730.
As noted above, Applicant’s goods are related to automating the processing of data and workflow, while the cited applications are related to measurement and searching. This type of remote and far-reaching connection between an Applicant’s goods or services and those of the cited applications was expressly rejected in American Optical Corp. as supportive of a finding of likelihood of confusion. See also Amcor, Inc. v. Amcor Business Industries, Inc., 210 U.S.P.Q. 63, 70 (T.T.A.B. 1981) (holding no likelihood of confusion between HTI and design for electronic water treaters and HTH for chemicals). In addition to the separate trade channels for Applicant’s goods and those of the cited applications, the purposes of the goods are distinctly different. Clearly, Applicant’s goods could not be interchangeable with either of the cited applications’ services. In sum, Applicant’s goods and the goods of the cited applications are not interchangeable, do not perform the same functions, do not operate in a similar manner, and are not rendered through the same channels of trade. The relevant consumers would have no trouble distinguishing between Applicant’s goods and those of the cited applications or the source of these goods. Thus, there is no likelihood of confusion. C. The Sophistication of the Purchasers of the Goods Further Obviates a Likelihood of Confusion The nature of the goods sold by Applicant and those of the cited applications also precludes a finding of likelihood of confusion. Purchasers of the Applicant’s goods would clearly be a sophisticated class of customers. The Board recognized this in In re American Olean Tile Co., 1 U.S.P.Q.2d 1823 (T.T.A.B. 1986), where it reversed a rejection of an application for registration of “MILANO” for ceramic tile based upon an identical mark registered for woods doors for exterior and interior use. Holding that the applicant’s goods clearly went to sophisticated purchasers, the Board concluded that ...these purchasers are far too familiar with the separate manufacturing sources of those products to be confused even where the marks applied to them are identical. American Olean, 1 U.S.P.Q.2d at 1826. Similarly, in Haydon Switch & Instrument v. Rexnord, Inc., 4 U.S.P.Q.2d 1510, 1517 (D. Conn. 1987), the court held that “PLANETGEAR” used for digital clocks, timers and counters was not infringed by “PLANET-GEAR” used for speed reducers between motors and drive shafts. The court held that in view of the differences in the goods and their channels of trade, as well as the expertise of the users of the goods, there could be no likelihood of confusion. Thus, the court stated: It is thus evident that the sophisticated purchasers of the products of plaintiffs or Rexnord enter the marketplace in search of specific products for specific industrial purposes. The sophistication of these purchasers makes the likelihood of confusion remote. Haydon Switch, 4 U.S.P.Q.2d at 1517. The principle enunciated in In re Massey-Ferguson Inc. is also apt here. In that case, the Trademark Trial and Appeal Board found that there was no likelihood of confusion between the applicant’s “E-COM” service for an on-line computer system used to locate, order and ship farm equipment and the registrant’s goods which were computer hardware items, also marketed under the mark “ECOM.” In so deciding, the Board noted: While it is not impossible that a farmer familiar with computer components, upon seeing “E-COM” on applicant’s computer terminal when he goes to his QUARRYtor dealership to get a replacement part for his farm QUARRYtor, could associate the terminal used to locate and order the part with the magnetic core memory systems identified by the mark “ECOM”, we do not think it is likely. Massey-Ferguson, 222 U.S.P.Q. 367, 367-68 (T.T.A.B. 1983). The recognition of the sophistication of customers and different channels of trade that resulted in findings of no confusing similarity in the above-cited cases applies with equal force here. In view of the different nature of the Applicant’s goods and those of the cited applications, it is extremely unlikely that a purchaser of Applicant’s goods would believe that Applicant is sponsored by or associated with either of the applicants of the cited applications. Clearly, purchasers of Applicant’s goods and the goods set forth in the cited applications are capable of inquiring into and understanding information about the sources of the goods and making a careful selection of such goods. That Applicant and the applicants of the cited applications provide their respective customers with highly specialized and completely different goods provides an even more persuasive reason for finding an absence of likelihood of confusion. D. Conclusion It is well settled that when determining likelihood of confusion, each case must be decided on its own facts. In re Quadram Corp., 228 U.S.P.Q. 863 (T.T.A.B. 1985). Applicant submits that there is no likelihood of confusion between Applicant’s mark and marks of the cited applications due to the differences in the trade channels, the overall distinctions in the nature of the software provided under their respective marks, and the sophistication of the customers. It is only the likelihood, not a mere possibility, of confusion that bars registration under the Trademark Act, the Board stated in Triumph Machinery Co. v. Kentmaster Mfg. Co., Inc., 1 U.S.P.Q.2d 1826, 1829 (T.T.A.B. 1987): [I]t is our belief that the possibility of confusion is a remote one. The Trademark Act, however, does not talk to terms of remote possibilities of confusion but, rather, the likelihood of such confusion’s occurring in the market place. See: In re Chalet Chocolates, Inc. 212 U.S.P.Q. 968 (T.T.A.B.1982). In view of the foregoing, Applicant respectfully requests that the Examining Attorney withdraw the refusal of registration under Section 2(d) of the Trademark Act and that this application be passed to publication and, in due course, to registration. |
|
| ADDITIONAL STATEMENTS SECTION | |
| SIGNIFICANCE OF MARK | QUARRY appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as applied to the goods/services listed in the application, or any geographical significance. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Nancy Rubner Frandsen/ |
| SIGNATORY'S NAME | Nancy Rubner Frandsen |
| SIGNATORY'S POSITION | Attorney of Record, Pennsylvania bar member |
| SIGNATORY'S PHONE NUMBER | 215-568-3100 |
| DATE SIGNED | 06/18/2013 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Jun 18 23:35:01 EDT 2013 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 130618233501156121-857027 63-50066306e97b5df5e492da b4dc7471da4a63294ddbbb728 fab3c80a46d8b5c480-N/A-N/ A-20130618232837218249 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
This is in response to the first Office Action, dated December 18, 2012, which issued in connection with the above-identified application.
REMARKS
The Examining Attorney has inquired as to whether Applicant’s mark QUARRY has any meaning or significance in the industry in which it is used. Applicant respectfully submits that its QUARRY mark has no meaning in the industry and is simply a coined term for its goods.
Applicant seeks to register the mark QUARRY for software for automated processing of data and workflow management. The Examining Attorney, however, has refused registration under Section 2(d) of the Trademark Act on the basis that Applicant’s mark is likely to be confused with the mark in Application Serial No. 85106047 for QUIRY for PC-based software for use with microprocessor-based electr4onic hardware for measurement, data acquisition, monitoring, communication, measurement and control of process in a measurement and control system and Application Serial No. 85676147 for QUIRI for computer software, namely, an application allowing mobile employees to retrieve data stored in an enterprise’s computer applications and databases in real time, using a mobile device, with full telephony integration with the telephone and/or software features of the mobile device.
In view of the following remarks, Applicant respectfully requests that the Examining Attorney withdraw the refusal under Section 2(d) of the Trademark Act.
SECTION 2(D) REFUSAL
A. Confusion is Not Likely Between Applicant’s
Mark and the Cited Marks
Under the Trademark Act, a refusal to register grounded in likelihood of confusion requires that the confusion as to the source of the goods not merely be possible, but likely. A mere possibility of confusion is an insufficient basis for rejection under Section 2(d).
We are not concerned with mere theoretical possibilities of
confusion, deception or mistake or with de minimis situations but with the practicalities of the commercial world, with which trademark laws deal.
In re Massey-Ferguson Inc., 222 U.S.P.Q. 367, 368 (T.T.A.B. 1983) (quoting Witco Chemical Co. v. Whitfield Chemical Co., Inc., 164 U.S.P.Q. 43, 44 (C.C.P.A. 1969)). See also Merritt Foods Co. v. Americana Submarine, 209 U.S.P.Q. 591, 599 (T.T.A.B. 1980) and In re P. Ferrero & C.S.p.A., 178 U.S.P.Q. 167, 168 (C.C.P.A. 1973) (that the goods “might both emanate from a single source [is not sufficient to establish that the marks are] likely to cause confusion as to the source, or to cause mistake, or to deceive.”)
Moreover, mere similarity or even identity between two marks can never alone be decisive of likelihood of confusion. McGregor-Doniger, Inc. v. Drizzle Inc., 202 U.S.P.Q. 81, 89 (2d Cir. 1979). Thus, in holding that the mark “DRIZZLE” for women’s overcoats was not likely to cause confusion with “DRIZZLER” for golf jackets, the Court of Appeals for the Second Circuit stated:
First, even close similarity between two marks is not dispositive of the issue of likelihood of confusion. “Similarity in and of itself is not the acid test. Whether the similarity is likely to provoke confusion is the crucial question.” (Citation omitted).
McGregor-Doniger, 202 U.S.P.Q. at 89.
The principle that the mere similarity between the Applicant’s mark and the cited marks is not a sufficient basis for a finding of likelihood of confusion is aptly demonstrated by Jacobs v. Int’l Multifoods Corp., 212 U.S.P.Q. 641 (C.C.P.A. 1982). In that case, the court stated that “[t]o establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and for restaurant services.” (Emphasis added; footnote omitted.) Id. at 642. See also Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 111 U.S.P.Q. 105 (C.C.P.A. 1956) (“HURRICANE” for outboard motors and “HURRICANE” for automotive engines not confusingly similar.); Triumph Machinery Co. v. Kentmaster Mfg. Co., Inc., 1 U.S.P.Q.2d 1826, 1829 (T.T.A.B. 1987) (“HYDRO-CLIPPER” for a power-operated cattle de-horning shear is not confusingly similar to “HYDRO-CLIPPER” for a power mower attachment as it was not a normal practice for dealers in the applicant’s equipment to handle machinery of the type sold by the opposer); and In re Shipp, 4 U.S.P.Q.2d 1174, 1176 (T.T.A.B. 1987) (holding “PURITAN” for laundry and dry cleaning services did not conflict with “PURITAN” for commercial dry cleaning machine filters and cleaning preparations despite the products and services being broadly related, as the applicant’s services were directed to consumers while the opposer’s goods were directed to professional cleaning establishments.)
In this case, it is submitted that both of the marks in the cited applications are intended to evoke either the term “query” which is defined as “question, inquiry” in the Merriam-Webster online dictionary or “inquiry” which is defined as “examination into facts or principles, a request for information, or a systematic investigation often of a matter of public interest” in the Merriam-Webster online dictionary. Thus, the cited applications for the marks QUIRI and QUIRY are likely to evoke “searching” when used in connection with software that is used for measurement and control (QUIRY) and software that is used for searching (QUIRI).
In stark contrast, Applicant’s mark QUARRY was chosen for its association with rocks and the cartoon “The Flintstones.” Thus, the QUARRY mark is used for a software engine that works in conjunction with another piece of software called RUBBLE. Both QUARRY and RUBBLE have an association with the Flintstones, e.g. Barnie Rubble who worked in the Bedrock Quarry.
Applicant’s mark is therefore different in sound and connotation from the marks in the cited applications. As a result, there can be no likelihood of confusion. Indeed, more than a mere similarity of Applicant’s QUARRY mark and the cited marks, QUIRY and QUIRI, is necessary for a likelihood of confusion to exist as to the sources of the respective goods.
B. The Differences in the Goods and the Channels of Trade Obviate a Likelihood of Confusion
Applicant submits that its goods and those in the cited applications are completely different, do not perform the same functions, are not alternatives for each other, do not operate in the same way and are not rendered in the same channels of trade to the same consumers. Thus, there is no basis for finding a likelihood of confusion.
Applicant’s goods are for software for automated processing of data and workflow management. In contrast, neither of the cited applications are for marks to be used on goods related to Applicant’s goods. The only similarity between the goods of Applicant and the cited applications are that they are all software. Beyond that, however, the differences are obvious. The two cited marks QUIRY and QUIRI both appear to relate more to what they do and are at least partially descriptive, i.e. measuring and searching, while Applicant’s goods are designed to automate the processing of data and workflow.
Marks for goods and services far more similar to each other than the goods involved here have been found not to be confusingly similar. In Lenox Inc. v. Ranmaru U.S.A. Corp., 17 U.S.P.Q.2d 1696, 1701 (S.D.N.Y. 1990), each party used the mark “TUXEDO” on dinner plate designs. After noting that the two marks were identical, the court addressed the similarity between the products:
The closeness of the products, however, begins and ends with their shared membership in the plate family. ... Plaintiff’s “Tuxedo” is part of Lenox’s “Presidential Collection” and is among the most elegant china available. Defendants’ “Tuxedo” is a casual dinnerware pattern and sells for approximately $235 less than Plaintiff’s “Tuxedo.” The Court does not find that the products are sufficiently proximate to engender a likelihood of confusion. [Transcript citations omitted].
In McGraw-Hill Inc. v. Comstock Partners Inc., 17 U.S.P.Q.2d 1599, 1602 (S.D.N.Y. 1990), both parties used the term “COMSTOCK” with the plaintiff denoting its service linking a customer to a commodity and stock exchange database. Defendant used the mark for investment advisory services. Addressing competitive proximity, the court stated:
ComStock and the defendants, while they furnish products related to the broad field of finance, are as completely unrelated as night and day.
ComStock is in the business of leasing access time to a computer data base. Defendants are money managers for multimillion dollar operations. Comstock Partners Strategy Fund, Inc., a closed end mutual investment fund of over $1 billion, is not remotely similar to the ComStock product line.
In each of the above cases, the marks were identical, or nearly so, and the products could be generally characterized as falling within a related class of goods or services. Yet, in each case, the differences between the goods and/or services resulted in the recognition that confusion was unlikely.
The differences between Applicant’s goods and the goods listed in the cited applications are far more pronounced than were the differences between the goods and services in the cases cited above. This fact argues strongly against finding a likelihood of confusion between Applicant’s mark and the mark in the cited applications. See also, In re Sydel Lingerie Co., Inc., 197 U.S.P.Q. 629 (T.T.A.B. 1977)(“BOTTOMS UP” for men’s suits, coats and trousers not confusingly similar with ladies’ and children’s underwear); In re Dominion Auto Accessories Ltd., 200 U.S.P.Q. 389 (T.T.A.B.1978)(“SHOCK-FREE” for vehicle lamps not confusingly similar with same mark for motor vehicles).
In the case of American Optical Corp. v. Autotrol Corp., 175 U.S.P.Q. 725, 730 (T.T.A.B. 1972), the Board dismissed a trademark opposition due to the overwhelming differences in goods and non-overlapping trade channels between the applicant’s controls for water treatment equipment and the opposer’s wide array of medical instruments and equipment offered under a similar mark. In dismissing the opposition, the Board stated:
Although some of these products include controls of some sort or another, and opposer has indicated that they are used for testing fluid, it is apparent that they are designed for the most part, if not exclusively, to test blood for various factors and other bodily fluids and that neither the controls nor the equipment could be deemed in any way related to applicant’s controls or to the water treatment equipment in connection with which they are used.
Id. at 730.
As noted above, Applicant’s goods are related to automating the processing of data and workflow, while the cited applications are related to measurement and searching. This type of remote and far-reaching connection between an Applicant’s goods or services and those of the cited applications was expressly rejected in American Optical Corp. as supportive of a finding of likelihood of confusion. See also Amcor, Inc. v. Amcor Business Industries, Inc., 210 U.S.P.Q. 63, 70 (T.T.A.B. 1981) (holding no likelihood of confusion between HTI and design for electronic water treaters and HTH for chemicals).
In addition to the separate trade channels for Applicant’s goods and those of the cited applications, the purposes of the goods are distinctly different. Clearly, Applicant’s goods could not be interchangeable with either of the cited applications’ services.
In sum, Applicant’s goods and the goods of the cited applications are not interchangeable, do not perform the same functions, do not operate in a similar manner, and are not rendered through the same channels of trade. The relevant consumers would have no trouble distinguishing between Applicant’s goods and those of the cited applications or the source of these goods. Thus, there is no likelihood of confusion.
C. The Sophistication of the Purchasers of the Goods
Further Obviates a Likelihood of Confusion
The nature of the goods sold by Applicant and those of the cited applications also precludes a finding of likelihood of confusion. Purchasers of the Applicant’s goods would clearly be a sophisticated class of customers. The Board recognized this in In re American Olean Tile Co., 1 U.S.P.Q.2d 1823 (T.T.A.B. 1986), where it reversed a rejection of an application for registration of “MILANO” for ceramic tile based upon an identical mark registered for woods doors for exterior and interior use. Holding that the applicant’s goods clearly went to sophisticated purchasers, the Board concluded that
...these purchasers are far too familiar with the separate manufacturing sources of those products to be confused even where the marks applied to them are identical.
American Olean, 1 U.S.P.Q.2d at 1826.
Similarly, in Haydon Switch & Instrument v. Rexnord, Inc., 4 U.S.P.Q.2d 1510, 1517 (D. Conn. 1987), the court held that “PLANETGEAR” used for digital clocks, timers and counters was not infringed by “PLANET-GEAR” used for speed reducers between motors and drive shafts. The court held that in view of the differences in the goods and their channels of trade, as well as the expertise of the users of the goods, there could be no likelihood of confusion. Thus, the court stated:
It is thus evident that the sophisticated purchasers of the products of plaintiffs or Rexnord enter the marketplace in search of specific products for specific industrial purposes. The sophistication of these purchasers makes the likelihood of confusion remote.
Haydon Switch, 4 U.S.P.Q.2d at 1517.
The principle enunciated in In re Massey-Ferguson Inc. is also apt here. In that case, the Trademark Trial and Appeal Board found that there was no likelihood of confusion between the applicant’s “E-COM” service for an on-line computer system used to locate, order and ship farm equipment and the registrant’s goods which were computer hardware items, also marketed under the mark “ECOM.” In so deciding, the Board noted:
While it is not impossible that a farmer familiar with computer components, upon seeing “E-COM” on applicant’s computer terminal when he goes to his QUARRYtor dealership to get a replacement part for his farm QUARRYtor, could associate the terminal used to locate and order the part with the magnetic core memory systems identified by the mark “ECOM”, we do not think it is likely.
Massey-Ferguson, 222 U.S.P.Q. 367, 367-68 (T.T.A.B. 1983).
The recognition of the sophistication of customers and different channels of trade that resulted in findings of no confusing similarity in the above-cited cases applies with equal force here. In view of the different nature of the Applicant’s goods and those of the cited applications, it is extremely unlikely that a purchaser of Applicant’s goods would believe that Applicant is sponsored by or associated with either of the applicants of the cited applications.
Clearly, purchasers of Applicant’s goods and the goods set forth in the cited applications are capable of inquiring into and understanding information about the sources of the goods and making a careful selection of such goods. That Applicant and the applicants of the cited applications provide their respective customers with highly specialized and completely different goods provides an even more persuasive reason for finding an absence of likelihood of confusion.
D. Conclusion
It is well settled that when determining likelihood of confusion, each case must be decided on its own facts. In re Quadram Corp., 228 U.S.P.Q. 863 (T.T.A.B. 1985).
Applicant submits that there is no likelihood of confusion between Applicant’s mark and marks of the cited applications due to the differences in the trade channels, the overall distinctions in the nature of the software provided under their respective marks, and the sophistication of the customers.
It is only the likelihood, not a mere possibility, of confusion that bars registration under the Trademark Act, the Board stated in Triumph Machinery Co. v. Kentmaster Mfg. Co., Inc., 1 U.S.P.Q.2d 1826, 1829 (T.T.A.B. 1987):
[I]t is our belief that the possibility of confusion is a remote one. The Trademark Act, however, does not talk to terms of remote possibilities of confusion but, rather, the likelihood of such confusion’s occurring in the market place. See: In re Chalet Chocolates, Inc. 212 U.S.P.Q. 968 (T.T.A.B.1982).
In view of the foregoing, Applicant respectfully requests that the Examining Attorney withdraw the refusal of registration under Section 2(d) of the Trademark Act and that this application be passed to publication and, in due course, to registration.