To the Commissioner for Trademarks:

ARGUMENTS IN RESPONSE TO LIKELIHOOD OF CONFUSION:

In the Office Action of September 13, 2013 the Examining Attorney refused registration under Trademark Act Section 2(d), on the ground that the Applicant’s mark, when used in connection with the identified services, so resembles the marks in U.S. Registration No. 3914789 and prior filed serial number 85814771 as to be likely to cause confusion, to cause mistake, or to deceive. The Applicant does not agree with this conclusion and in further support of its original application (“Application”), hereby submits this Response and requests that the Examining Attorney reconsider the refusal of the Application.

The marks Concluded by the Examining Attorney That Could Lead to Confusion, Mistake, or Deception under 15 U.S.C. 1052(d) are as follows:

1)         U.S. Registration No. 3914789

 The mark covered by this registration is a word mark containing the words, “VUDU”

 The application fits into International Class 034, “Cigars”

1)         U.S. Serial No. 85814771

 The mark covered by this registration is a word mark containing the words, “BLACK VOODOO”

 The application fits into International Class 034, “Cigars; chewing tobacco; hand rolling tobacco; pipe tobacco; cigarettes; cigarettes containing tobacco substitutes not for medical purposes; smokeless tobacco; smoking tobacco; tobacco pouches; tobacco tin”

A.    Explanation of the duPont Multi-Factor Test for the purpose of determining whether Confusion, Mistake, or Deception is Likely.

The test for likelihood of confusion is whether a ‘reasonably prudent consumer’ in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks. In re E.I. duPont de Nemours and Co., 177 U.S.P.Q. 563 (C.C.P.A 1973).  Consequently, the Federal Circuit Court of Appeals articulated thirteen factors for the purpose of deciding likelihood of confusion on a case-by-case basis, otherwise known as the duPont factors. 

B.    Application of the duPont Factors to the Pending Application

Applying the duPont factors to the instant case, Applicant hereby submits the following arguments in response to Examiner’s potential refusal to register Serial No. 85940323.

1)      Similarity as to Appearance, Sound, Connotation, and Commercial Impression

It is well established that in comparing two trademarks for confusing similarity, the Examining Attorney must compare the marks for resemblances in sound, appearance and meaning or connotation.  In re E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). Similarity of the marks in one respect – sight, sound, or meaning – will not automatically result in a finding of likelihood of confusion, even if the services are identical or closely related. TMEP §1207.01(b)(i). It is also accepted that the use of identical, even dominant, words in common does not necessarily mean that two marks are similar. See General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 687 (8th Cir. 1987) (holding defendant’s OATMEAL RAISIN CRISP did not infringe plaintiff’s APPLE RAISIN CRISP trademark). This is because marks must be considered in their entireties. See, e.g., TMEP §1207.01.

The examining attorney is required to look at to the overall impression created by the marks, rather than merely comparing individual features. Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1029, 10 USPQ2d 1961 (2d Cir. 1989). In this respect, the examining attorney must determine whether the total effect conveyed by the two marks is confusingly similar, not simply whether the marks sound alike or look alike First Savings Bank F.S.B. v. First Bank System Inc., 101 F.3d at 645, 653, 40 USPQ2d 1865, 1870 (10th Cir. 1996) (recognizing that while the dominant portion of a mark is given greater weight, each mark still must be considered as a whole) (citing Universal Money Centers, Inc. v. American Tel. & Tel. Co., 22 F.3d 1527, 1531, 30 USPQ2d 1930 (10th Cir. 1994)). Even the use of identical dominant words or terms does not automatically mean that two marks are similar. Also, in First Savings Bank F.S.B. v. First bank System Inc., 101 F.3d at 645, 653, 40 USPQ2d 1865, 1874 (10th Cit. 1996), marks for "FirstBank" and for "First Bank Kansas" were found not to be confusingly similar. Furthermore, in Luigino's Inc. v. Stouffer Corp.,170 F.3d 827 50 USPQ2d 1047(8th Cir. 1999), the mark "Lean Cuisine" was found not be confusingly similar to "Michelina's Lean 'N Tasty" even though both marks use the word "Lean" and are in the same class of goods, namely, low-fat frozen food.

a)      Appearance

            In the present case, Applicant’s mark VOODOO is not similar in appearance with the cited marks VUDU and BLACK VOODOO. The Applicant’s single worded mark spells voodoo with two sets of double “OO”s. The cited serial number 85814771 contains the word “BLACK” which makes it different in appearance, also altering its connotation. Similarly, cited registered mark is spelt differently from the Applicant’s mark.

2)      Similarity as to Nature of Goods and Services/ Trade Channels

Examiner also notes the similarities in goods and services as a basis for refusal.  However, even where marks are placed within the; same class, it is possible to avoid likelihood of confusion where the goods and/or services vary.  See, e.g., Taj Mahal Enterprises, Ltd. v. Trump, 16 U.S.P.Q. 2d 1577 (D.N.J. 1990).  In Taj Mahal, the marks under scrutiny were TAJ MAHAL for an Indian restaurant and TAJ MAHAL for a casino-hotel resort.  The court held that the mark TAJ MAHAL for restaurants is suggestive of Indian food, while TAJ MAHAL for casino-hotels evokes images of grandeur, opulence and extravagance.   Therefore, despite both marks falling under the same class of services for the purposes of registration, the Taj Mahal court found that there was no likelihood of any confusion.

Furthermore, if the goods or 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 the marks are identical, confusion is not likely. See, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field); see also Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978), cert denied, 439 US 1116 (1979)

            The goods offered under the Applicant’s mark are Smoking pipes; water pipes; glass pipes. Smoking pipes are devices made to allow the user to inhale or taste smoke or vapor derived from the burning or vaporization of some substance. Therefore, goods under the Applicant’s mark are articles made to facilitate smoking for the consumer. On the other hand, the cited registration provides Cigars. Cigar is a tightly-rolled bundle of dried and fermented tobacco that is ignited so that its smoke may be drawn into the mouth. The prior pending application as well provides tobacco and tobacco related products. There is thin line of difference between the goods in the marks at issue. The bowls of tobacco pipes are commonly made of briar wood, meerschaum, corncob or clay. Whereas the cigar is tobacco wrapped up in a leaf. The basic difference in the type of smoker’s articles make them different.

The lack of overlap in targeted trade channels and markets further diffuses any potential likelihood of confusion between the marks.  Therefore, given the differences in targeted consumer bases, it is unlikely that consumers will place services of the Applicant and the products of the prior mark holder within the same space.  But even if that were the case, the sophistication of the customers will likely alleviate such concerns.

3)   The Degree of Care/Sophistication Likely to be Exercised by Consumers

As analyzed in duPont., (supra): to the extent that a customer is likely to exercise a high degree of care and/or sophistication when selecting goods or services, the less chance that confusion, mistake, or deception will occur between two or more competing marks. See also TCPIP Holding Co., Inc. v. Haar Communications, Inc., 244 F.3d 88, 102 (2d Cir.2001) ("The more sophisticated the consumers, the less likely they are to be misled by similarity in marks."); Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 480 (2d Cir.1996) ("The sophistication factor recognizes that the likelihood of confusion between the products at issue depends in part on the sophistication of the relevant purchasers.").  Furthermore, the degree of care factor plays a significant role in minimizing potential confusion where the subject goods fail to constitute “impulse” goods.  See, e.g., Astra Pharm. Prods. Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206 (1st Cir. 1983) (finding that blood analyzers that cost between $35,000 to $60,000 require careful consideration likely to result in added consumer scrutiny and examination)

While the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are immune from source confusion, circumstances suggesting care in purchasing may tend to minimize the likelihood of confusion. TMEP § 1207.01(vii). Here, Applicant and Registrant's services both are not "impulse" goods as discussed in Astra Pharm, as consumers will research and spend time on a service such as those provided by Applicant. The experience consumer is likely to receive and the expense incurred is likely to be the driving force for the consumers of smoking pipes to do a thorough research before making a choice. In the process it is highly unlikely that consumers and enthusiasts of different smoker’s articles will get confused as to the source of the product.

The consumer will take into consideration all factors such as the type, the use etc while buying the smoking pipe. In such a case, it will not be unreasonable to presume that the consumer will take his time, weigh the positive and negative aspects of all service providers and then, with proper care and consideration, take a rationale decision based on his best judgment. The time spent by the consumers on making a rational decision about their hard earned money, will make such consumers sophisticated for the purpose of analyzing whether or not there will be any confusion between the marks.

CONCLUSION:

In the office action, the Examiner contends that likelihood of confusion exist because the Applicant’s mark shares similarities in appearance, sound, and commercial impression.  However, the Applicant asserts that an examination of the duPont factors shows clear differentiation between the mark and services of the Applicant and the goods and services of the cited Registrant. Thus, for all of the reasons set forth above, the Applicant contends that there is no likelihood of confusion, mistake, or deception in the marketplace. The Examiner may henceforth approve the mark for publication in the Official Gazette.