| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85857492 |
| LAW OFFICE ASSIGNED | LAW OFFICE 106 |
| MARK SECTION | |
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85857492 |
| LITERAL ELEMENT | EON |
| 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) | |
|
To: Christopher W. Wells, Examining Attorney, USPTO From: KPPB LLP Date: December 9, 2013 Re: EON Office Action, 06/10/2013 Application No.: 85857492 Filed: February 22, 2013 Docket No.: N11:2839
REMARKS/ARGUMENTS In determining if EON is confusingly similar to pending marks AEON, the USPTO failed to consider the EON mark as a whole and focused only on the meaning of the mark, and not the difference in the visual or aural properties of the mark. When properly considering EON in its entirety, the mark is not confusingly similar to the AEON mark. First, AEON and EON are spelled differently. In addition, how a mark would be pronounced and experienced must be looked at from the perspective of the average consumer, and here the average consumer would not pronounce or experience the EON and AEON marks in the same way. Thus, when considered in its entirety, there is no likelihood of confusion between the applicant’s EON mark and AEON, and the applicant respectfully requests that the Office reconsider its rejection and grant registration of the EON mark. Discussion Likelihood of confusion is a question of law, and DuPont established several factors for making this determination. In re E.I. DuPont De Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). The factor at issue in the present case is “the similarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” Similarity in Sound, Appearance, Connotation and Commercial Impression The Office erred in its determination that EON is confusingly similar to the pending marks AEON. In particular, the first syllable, “Ae” vs “E”, distinguishes EON phonetically and visually from AEON. It is axiomatic that in analyzing marks for similarity with respect to appearance, sound, connotation, and commercial impression, the marks should be considered “in their entireties.” DuPont, 476 F.2d at 1361. The courts have made clear that marks are used in the marketplace as a whole, and “juxtaposing fragments of each mark does not demonstrate whether marks as a whole are confusingly similar.” Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 117 (2d Cir. 1984). Although one part of a mark may be more dominant, Kangol Ltd. v. Kangaroos U.S.A., Inc., 974 F.2d 161, 163 (Fed. Cir. 1992), "[e]ach syllable of each mark generates an 'impact,' but the only impact to be considered is that of the whole." San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 685 (CCPA 1977). Furthermore, an element of a mark is not less dominant simply because it is a generic or descriptive word; instead, it is an essential piece in consideration of the mark as a whole. Opryland USA Inc. v. Great Am. Music Show, Inc., 970 F.2d 847, 851 (Fed Cir. 1992). In the instant application, the Office Action focuses on the meaning of Applicant’s mark. Indeed, nowhere does the latest Office Action ever conduct an analysis of how the “A” at the front of the “eon” word would change how a consumer would relate to and experience the marks. The importance of analyzing marks in their entirety was demonstrated in In re Hearst Corp., 982 F.2d 493 (Fed. Cir. 1992). There, the Federal Circuit found that the TTAB erred in rejecting a trademark for VARGA GIRL, alleging it was confusingly similar to the registered VARGAS mark. Id. at 494. The Board had found that “varga” was the dominant element of VARGA GIRL since “girl” is descriptive. Id. However, the court held that if “girl” was assigned its “fair weight” as a “significant” element of VARGA GIRL, the mark was sufficiently different from VARGAS in sight, sound, and commercial impression. Id. Similarly, in Universal, the Second Circuit upheld summary judgment against an entertainment company because it failed to show there was a likelihood of confusion between its registered mark, KING KONG, and the applicant’s mark, DONKEY KONG. Universal, 746 F.2d at 115. The company argued that the identical “kong” element in the two marks to show likelihood of confusion, but the Second Circuit held that the marks were appropriately considered only in their entirety. Id. at 117. Under this approach, the Second Circuit held that since “king” and “donkey” were similar neither in meaning nor in sound, there was no triable issue of likelihood of confusion. Id. at 117-18. Furthermore, cases such as Universal and Kellogg Co. v. Pack’Em Enters., Inc., 951 F.2d 330 (Fed Cir. 2012) indicate that when marks contain overlapping words or phrases, the similarity inquiry turns to the connotations and mental impressions that arise from these marks as a whole. See Universal, 746 F.2d at 117-18; Kellogg, 951 F.2d at 333. As discussed above, the Universal court found there was no likelihood of confusion between the marks DONKEY KONG and KING KONG because “donkey” and “king” gave rise to completely different mental impressions. Universal, 746 F.2d at 117-18. Likewise, the Federal Circuit in Kellogg noted that the “only similarity” between the applicant’s FROOTEE ICE mark and the registered FROOT LOOPS mark was that they both started with “froot.” Kellogg, 951 F.2d at 333. Thus, the Kellogg court agreed with the TTAB that the marks were “dissimilar in appearance.” Id. In the case at hand, the applicant’s EON mark, when properly considered, is not confusingly similar to AEON. The Office erred by focusing its similarity analysis on only one portion of the “AEON”, however, this does not mean that the initial “A” in the mark can be disregarded in the similarity analysis. Indeed, as demonstrated in Hearst and Universal, the “A” must be given its “fair weight” in assessing the EON mark. See Hearst, 982 F.2d at 494; Universal, 746 F.2d at 117-18. For example, in Hearst, the Federal Circuit held that “girl,” although having an established meaning, was an essential element in the mark VARGA GIRL and found no likelihood of confusion with the VARGA mark. Hearst, 982 F.2d at 494. Similarly, in Universal, the Second Circuit focused on the connotations of generic terms “donkey” and “king” in finding that the DONKEY KONG and KING KONG marks were not confusingly similar. Universal, 746 F.2d at 117-18. Thus, the Office should consider the AEON mark as a whole, including the “A” portion, to determine if it is confusingly similar to EON. Considering the mark in its entirety, EON is not sufficiently similar in sound to AEON, as the Office suggests, for finding a likelihood of confusion based on sound alone. First, in Viterra and Energy Telecomm., where the marks were found confusingly similar principally due to sound, the registered mark and the applicant’s mark were comprised of nearly identical syllables. See Viterra, 671 F.3d at 1367 (X-SEED and XCEED); Energy Telecomm., 222 U.S.P.Q. (BNA) at 350 (INTELECT and ENTELEC). This is not the situation here; the “ae” phoneme does not appear in the EON mark. Additionally, counter to the Office’s contention, the EON mark is not confusingly similar in appearance to the AEON mark. Universal and Kellogg indicate that overlapping terms or phrases between two marks this is not sufficient for finding similarity in appearance. First, in Kellogg’s, the Federal Circuit remarked that the “only similarity” between the FROOTEE ICE and FROOT LOOPS marks were that they began with “froot,” and it found the marks were “dissimilar in appearance.” Kellogg’s, 951 F.3d at 333. Likewise, in the present case, the cited AEON mark includes an important initial “a”. Thus, overlapping presence of “eon” is insufficient in this case to establish confusingly similar appearance between the marks. CONCLUSION When considered as a whole, the EON mark is distinct in both sound and appearance from the AEON mark, particularly in how an average consumer would view and pronounce the initial phoneme in the two marks: “ae” vs “e”. Given that EON is not confusingly similar in appearance or sound to AEON, there is no likelihood of consumer confusion, and applicants respectfully request that the Office reconsider its rejection and grant registration of the EON mark. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /John W. Peck/ |
| SIGNATORY'S NAME | John W. Peck |
| SIGNATORY'S POSITION | Attorney of Record, CA Bar Member |
| SIGNATORY'S PHONE NUMBER | (949) 852-0000 |
| DATE SIGNED | 12/10/2013 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Dec 10 20:48:13 EST 2013 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20131210204813355868-858 57492-500a519452e4e66b36b baada12a96e14f92e3dc692b2 27a5b12fcef37259adfedb8-N /A-N/A-201312102019404290 44 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
To: Christopher W. Wells, Examining Attorney, USPTO
From: KPPB LLP
Date: December 9, 2013
Re: EON Office Action, 06/10/2013
Application No.: 85857492
Filed: February 22, 2013
Docket No.: N11:2839
REMARKS/ARGUMENTS
In determining if EON is confusingly similar to pending marks AEON, the USPTO failed to consider the EON mark as a whole and focused only on the meaning of the mark, and not the difference in the visual or aural properties of the mark. When properly considering EON in its entirety, the mark is not confusingly similar to the AEON mark. First, AEON and EON are spelled differently. In addition, how a mark would be pronounced and experienced must be looked at from the perspective of the average consumer, and here the average consumer would not pronounce or experience the EON and AEON marks in the same way. Thus, when considered in its entirety, there is no likelihood of confusion between the applicant’s EON mark and AEON, and the applicant respectfully requests that the Office reconsider its rejection and grant registration of the EON mark.
Discussion
Likelihood of confusion is a question of law, and DuPont established several factors for making this determination. In re E.I. DuPont De Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). The factor at issue in the present case is “the similarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.”
Similarity in Sound, Appearance, Connotation and Commercial Impression
The Office erred in its determination that EON is confusingly similar to the pending marks AEON. In particular, the first syllable, “Ae” vs “E”, distinguishes EON phonetically and visually from AEON.
It is axiomatic that in analyzing marks for similarity with respect to appearance, sound, connotation, and commercial impression, the marks should be considered “in their entireties.” DuPont, 476 F.2d at 1361. The courts have made clear that marks are used in the marketplace as a whole, and “juxtaposing fragments of each mark does not demonstrate whether marks as a whole are confusingly similar.” Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 117 (2d Cir. 1984). Although one part of a mark may be more dominant, Kangol Ltd. v. Kangaroos U.S.A., Inc., 974 F.2d 161, 163 (Fed. Cir. 1992), "[e]ach syllable of each mark generates an 'impact,' but the only impact to be considered is that of the whole." San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 685 (CCPA 1977). Furthermore, an element of a mark is not less dominant simply because it is a generic or descriptive word; instead, it is an essential piece in consideration of the mark as a whole. Opryland USA Inc. v. Great Am. Music Show, Inc., 970 F.2d 847, 851 (Fed Cir. 1992).
In the instant application, the Office Action focuses on the meaning of Applicant’s mark. Indeed, nowhere does the latest Office Action ever conduct an analysis of how the “A” at the front of the “eon” word would change how a consumer would relate to and experience the marks. The importance of analyzing marks in their entirety was demonstrated in In re Hearst Corp., 982 F.2d 493 (Fed. Cir. 1992). There, the Federal Circuit found that the TTAB erred in rejecting a trademark for VARGA GIRL, alleging it was confusingly similar to the registered VARGAS mark. Id. at 494. The Board had found that “varga” was the dominant element of VARGA GIRL since “girl” is descriptive. Id. However, the court held that if “girl” was assigned its “fair weight” as a “significant” element of VARGA GIRL, the mark was sufficiently different from VARGAS in sight, sound, and commercial impression. Id. Similarly, in Universal, the Second Circuit upheld summary judgment against an entertainment company because it failed to show there was a likelihood of confusion between its registered mark, KING KONG, and the applicant’s mark, DONKEY KONG. Universal, 746 F.2d at 115. The company argued that the identical “kong” element in the two marks to show likelihood of confusion, but the Second Circuit held that the marks were appropriately considered only in their entirety. Id. at 117. Under this approach, the Second Circuit held that since “king” and “donkey” were similar neither in meaning nor in sound, there was no triable issue of likelihood of confusion. Id. at 117-18.
Furthermore, cases such as Universal and Kellogg Co. v. Pack’Em Enters., Inc., 951 F.2d 330 (Fed Cir. 2012) indicate that when marks contain overlapping words or phrases, the similarity inquiry turns to the connotations and mental impressions that arise from these marks as a whole. See Universal, 746 F.2d at 117-18; Kellogg, 951 F.2d at 333. As discussed above, the Universal court found there was no likelihood of confusion between the marks DONKEY KONG and KING KONG because “donkey” and “king” gave rise to completely different mental impressions. Universal, 746 F.2d at 117-18. Likewise, the Federal Circuit in Kellogg noted that the “only similarity” between the applicant’s FROOTEE ICE mark and the registered FROOT LOOPS mark was that they both started with “froot.” Kellogg, 951 F.2d at 333. Thus, the Kellogg court agreed with the TTAB that the marks were “dissimilar in appearance.” Id.
In the case at hand, the applicant’s EON mark, when properly considered, is not confusingly similar to AEON. The Office erred by focusing its similarity analysis on only one portion of the “AEON”, however, this does not mean that the initial “A” in the mark can be disregarded in the similarity analysis. Indeed, as demonstrated in Hearst and Universal, the “A” must be given its “fair weight” in assessing the EON mark. See Hearst, 982 F.2d at 494; Universal, 746 F.2d at 117-18. For example, in Hearst, the Federal Circuit held that “girl,” although having an established meaning, was an essential element in the mark VARGA GIRL and found no likelihood of confusion with the VARGA mark. Hearst, 982 F.2d at 494. Similarly, in Universal, the Second Circuit focused on the connotations of generic terms “donkey” and “king” in finding that the DONKEY KONG and KING KONG marks were not confusingly similar. Universal, 746 F.2d at 117-18. Thus, the Office should consider the AEON mark as a whole, including the “A” portion, to determine if it is confusingly similar to EON.
Considering the mark in its entirety, EON is not sufficiently similar in sound to AEON, as the Office suggests, for finding a likelihood of confusion based on sound alone. First, in Viterra and Energy Telecomm., where the marks were found confusingly similar principally due to sound, the registered mark and the applicant’s mark were comprised of nearly identical syllables. See Viterra, 671 F.3d at 1367 (X-SEED and XCEED); Energy Telecomm., 222 U.S.P.Q. (BNA) at 350 (INTELECT and ENTELEC). This is not the situation here; the “ae” phoneme does not appear in the EON mark.
Additionally, counter to the Office’s contention, the EON mark is not confusingly similar in appearance to the AEON mark. Universal and Kellogg indicate that overlapping terms or phrases between two marks this is not sufficient for finding similarity in appearance. First, in Kellogg’s, the Federal Circuit remarked that the “only similarity” between the FROOTEE ICE and FROOT LOOPS marks were that they began with “froot,” and it found the marks were “dissimilar in appearance.” Kellogg’s, 951 F.3d at 333. Likewise, in the present case, the cited AEON mark includes an important initial “a”. Thus, overlapping presence of “eon” is insufficient in this case to establish confusingly similar appearance between the marks.
CONCLUSION
When considered as a whole, the EON mark is distinct in both sound and appearance from the AEON mark, particularly in how an average consumer would view and pronounce the initial phoneme in the two marks: “ae” vs “e”. Given that EON is not confusingly similar in appearance or sound to AEON, there is no likelihood of consumer confusion, and applicants respectfully request that the Office reconsider its rejection and grant registration of the EON mark.