| PTO Form 1960 (Rev 9/2007) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
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| SERIAL NUMBER | 85952677 | ||||||||||||||||
| LAW OFFICE ASSIGNED | LAW OFFICE 110 | ||||||||||||||||
| MARK SECTION | |||||||||||||||||
| MARK | http://uspto.report/TM/85952677/mark.png | ||||||||||||||||
| LITERAL ELEMENT | RAZOR | ||||||||||||||||
| 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) | |||||||||||||||||
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The Examining Attorney has issued a final refusal against registration of Applicant’s mark under Section 2(d) of the Trademark Act based on Registration No. 2861793 for the mark RAZERTHIN covering “optoelectronic devices, namely, light emitting diodes, photodiodes, laser diodes, silicon carbide semiconductor wafers” in Class 9. The Examining Attorney alleges that Applicant’s mark, when applied to the identified goods, so resembles the cited mark as to be likely to cause confusion, mistake, or deception. For the reasons discussed below, Applicant requests reconsideration and withdrawal of the refusal.
A determination of likelihood of confusion under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the thirteen factors set forth in In re E.I. du Pont de Nemours & Co., 177 USPQ 563, 567 (CCPA 1973). The Examining Attorney need not consider all factors, but may consider those factors that are most relevant to the case at hand. See In re Dixie Restaurants, Inc., 41 USPQ2d 1531, 1533 (Fed. Cir. 1997); Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., 227 USPQ 541, 542 (Fed. Cir. 1985).
The relevant du Pont factors in this case include the differences in appearance, pronunciation, meaning, and overall commercial impression between the marks; the differences between the goods; the weakness of the senior mark; and the number and nature of similar “RAZOR” marks registered and used for arguably similar goods. See In re E.I. du Pont de Nemours & Co., 177 USPQ 563, 567 (CCPA 1973). In the present case, the cumulative effect of the differences between Applicant’s mark and the cited mark with respect to each of these factors are sufficient to avoid a likelihood of confusion.
1. The Senior Mark is Merely Descriptive and Entitled to a Narrow Scope of Protection
As an initial matter, the cited registration issued on the Supplemental Register, indicating that the PTO found it to be descriptive of the identified goods. The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that marks that are registered on the Supplemental Register may be cited under Section 2(d), but may be entitled to a narrower scope of protection than an entirely arbitrary or coined word. See In re Clorox Co., 578 F.2d 305, 308-09, 198 USPQ 337, 341 (CCPA 1978); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1026 (TTAB 2009); In re Box Solutions Corp., 79 USPQ2d 1953, 1957-58 (TTAB 2006); In re Central Soya Co., 220 USPQ 914, 916 (TTAB 1984) (POSADA not confusingly similar to LA POSADA & Design for related goods/services in part because senior mark was on Supplemental Register).
As the Board set forth in Land-O-Nod Co. v. Paulison, 220 USPQ 61 (TTAB 1983):
It is well established that the scope of protection afforded a merely descriptive or highly suggestive term is less than that accorded an arbitrary or coined mark. A merely descriptive or highly suggestive term falls within the general category of weak marks, and the scope of protection extended to these marks has been so limited as to permit the subsequent use and/or registration of substantially identical notation for different goods or of a composite mark comprising this term plus other matter, whether such matter be equally suggestive or even descriptive, for substantially similar goods. Thus the addition of other matter to a merely descriptive or highly suggestive designation may result in the creation of a mark which is distinguishably different therefrom so as to avoid confusion in trade.
Id. at 66-67 (emphasis added). See also Plus Prods. v. Redken Labs., Inc., 199 USPQ 111, 116 (TTAB 1978) (no likelihood of confusion between PLUS and PH PLUS for the same goods due to, among other things, the highly suggestive and weak nature of “PLUS”).
In the present case, the weakness of the cited mark, coupled with the additional factors discussed below, render confusion unlikely.
2. The Parties’ Marks Are Sufficiently Dissimilar to Avoid a Likelihood of Confusion
In discussing the alleged similarities between the marks, the Examining Attorney states that the marks are essentially the same except for removal of the word “THIN” from the Registrant’s mark, resulting in a “highly similar” commercial impression. Applicant respectfully disagrees.
The meanings and connotations conveyed by the two marks are completely different. Registrant’s mark, as the Examining Attorney states, describes a feature or characteristic of its semiconductor wafers and other recited goods, namely, that they are as “thin as a razor.” Indeed, this was the basis for initial refusal of Registrant’s mark, resulting in its amendment to the Supplemental Register. Applicant’s RAZOR mark conveys no similar message, given the absence of the word “THIN” from Applicant’s mark. If anything, Applicant’s RAZOR mark conjures the image of a semiconductor device that is sharp, fast, accurate, and strong. But there is no evidence in the record to support the conclusion that consumers will associate Applicant’s RAZOR mark as being descriptive or even suggestive of the thickness or thinness of Applicant’s semiconductor devices. It is only the inclusion of the term “THIN” in the cited registration that causes the composite mark RAZERTHIN to convey its descriptive meaning as to the thinness of the Registrant’s goods.
The Examining Attorney concedes that Applicant’s mark may not immediately bring to mind the thickness of its goods, but states that consumers familiar with the types of goods at issue under both parties’ marks are aware that they must be thin in order to be used for their intended purposes. There is no survey or other evidence in the record to support this position.
To the contrary, and despite that neither of the marks are limited to a particular channel of trade or category of consumer, the consumers of these particular goods at issue are a highly sophisticated and discerning population of individuals involved in the manufacturing of electronics, computers, and other electrical and high-tech products. These purchasers are very unlikely to be confused as to the source of any two marks given the nature of their reliance on the parties’ products to build their own goods. Certainly, the differences between the marks in this case are more than sufficient to avoid any such likelihood of confusion.
And while Applicant does not dispute the general proposition that a likelihood of confusion cannot be avoided simply by adding terms to or removing terms from a registered mark, there is an exception to this principle when the marks in their entireties convey significantly different commercial impressions, as they clearly do here. TMEP 1207.01(b)(iii); see also Shen Mfg. Co. v. Ritz Hotel Ltd., 73 USPQ2d 1350 (Fed. Cir. 2004) (holding that RITZ and THE RITZ KIDS create different commercial impressions).
3. The Co-Existence of Third-Party “RAZOR” Marks in Other Product Categories Demonstrates that Consumers Can Distinguish Between Them
The PTO has already faced the question of whether various marks comprised of or containing the term “RAZOR” can coexist on the Register for similar goods. Specifically, the following marks have been registered on the Principal Register in Class 8 for hair cutting scissors and shears:
Copies of TSDR records for these registrations, together with website printouts showing current use in commerce of each of the marks, are attached as Exhibit A.
While the above marks cover goods that are admittedly dissimilar to the goods at issue in the present case, they demonstrate that consumers are not likely to be confused as to the source of identical or related goods when one is labeled with the mark RAZOR or RAZER per se, and the other is labeled with a RAZOR-formative mark such as RAZORLINE, RAZOR JAW, or RAZERTHIN. The same holds true in the case of Applicant’s mark and the cited registration.
In summary, given the weakness of the cited mark, the overall differences between the parties’ marks, and the PTO’s own precedent acknowledging that various marks comprised of or containing the term “RAZOR” can coexist within a product category, it is clear that confusion between the marks is unlikely and that the Section 2(d) refusal should be withdrawn. Applicant respectfully requests that the Examining Attorney reconsider the refusal and approve the application for publication. |
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| EVIDENCE SECTION | |||||||||||||||||
| EVIDENCE FILE NAME(S) | |||||||||||||||||
| ORIGINAL PDF FILE | evi_64223176200-20141009182433191984_._ibit_A_to_RAZOR_Request_for_Reconsideration__W4529175x7AC2E_.pdf | ||||||||||||||||
| CONVERTED PDF FILE(S) (16 pages) |
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| \\TICRS\EXPORT16\IMAGEOUT16\859\526\85952677\xml7\RFR0017.JPG | |||||||||||||||||
| DESCRIPTION OF EVIDENCE FILE | Exhibit A: TSDR and website printouts for third-party marks | ||||||||||||||||
| SIGNATURE SECTION | |||||||||||||||||
| RESPONSE SIGNATURE | /jonathan gelchinsky/ | ||||||||||||||||
| SIGNATORY'S NAME | Jonathan M. Gelchinsky | ||||||||||||||||
| SIGNATORY'S POSITION | Attorney of record, Maine bar member | ||||||||||||||||
| SIGNATORY'S PHONE NUMBER | 207-791-1100 | ||||||||||||||||
| DATE SIGNED | 10/09/2014 | ||||||||||||||||
| AUTHORIZED SIGNATORY | YES | ||||||||||||||||
| CONCURRENT APPEAL NOTICE FILED | YES | ||||||||||||||||
| FILING INFORMATION SECTION | |||||||||||||||||
| SUBMIT DATE | Thu Oct 09 18:37:33 EDT 2014 | ||||||||||||||||
| TEAS STAMP | USPTO/RFR-XX.XXX.XXX.XXX- 20141009183733330730-8595 2677-5009f742b3e449563f5f 6c1263b21433fdb781713c518 9c7a4ac86dfa551b96c60-N/A -N/A-20141009182433191984 |
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| PTO Form 1960 (Rev 9/2007) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
The Examining Attorney has issued a final refusal against registration of Applicant’s mark under Section 2(d) of the Trademark Act based on Registration No. 2861793 for the mark RAZERTHIN covering “optoelectronic devices, namely, light emitting diodes, photodiodes, laser diodes, silicon carbide semiconductor wafers” in Class 9. The Examining Attorney alleges that Applicant’s mark, when applied to the identified goods, so resembles the cited mark as to be likely to cause confusion, mistake, or deception. For the reasons discussed below, Applicant requests reconsideration and withdrawal of the refusal.
A determination of likelihood of confusion under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the thirteen factors set forth in In re E.I. du Pont de Nemours & Co., 177 USPQ 563, 567 (CCPA 1973). The Examining Attorney need not consider all factors, but may consider those factors that are most relevant to the case at hand. See In re Dixie Restaurants, Inc., 41 USPQ2d 1531, 1533 (Fed. Cir. 1997); Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., 227 USPQ 541, 542 (Fed. Cir. 1985).
The relevant du Pont factors in this case include the differences in appearance, pronunciation, meaning, and overall commercial impression between the marks; the differences between the goods; the weakness of the senior mark; and the number and nature of similar “RAZOR” marks registered and used for arguably similar goods. See In re E.I. du Pont de Nemours & Co., 177 USPQ 563, 567 (CCPA 1973). In the present case, the cumulative effect of the differences between Applicant’s mark and the cited mark with respect to each of these factors are sufficient to avoid a likelihood of confusion.
1. The Senior Mark is Merely Descriptive and Entitled to a Narrow Scope of Protection
As an initial matter, the cited registration issued on the Supplemental Register, indicating that the PTO found it to be descriptive of the identified goods. The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that marks that are registered on the Supplemental Register may be cited under Section 2(d), but may be entitled to a narrower scope of protection than an entirely arbitrary or coined word. See In re Clorox Co., 578 F.2d 305, 308-09, 198 USPQ 337, 341 (CCPA 1978); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1026 (TTAB 2009); In re Box Solutions Corp., 79 USPQ2d 1953, 1957-58 (TTAB 2006); In re Central Soya Co., 220 USPQ 914, 916 (TTAB 1984) (POSADA not confusingly similar to LA POSADA & Design for related goods/services in part because senior mark was on Supplemental Register).
As the Board set forth in Land-O-Nod Co. v. Paulison, 220 USPQ 61 (TTAB 1983):
It is well established that the scope of protection afforded a merely descriptive or highly suggestive term is less than that accorded an arbitrary or coined mark. A merely descriptive or highly suggestive term falls within the general category of weak marks, and the scope of protection extended to these marks has been so limited as to permit the subsequent use and/or registration of substantially identical notation for different goods or of a composite mark comprising this term plus other matter, whether such matter be equally suggestive or even descriptive, for substantially similar goods. Thus the addition of other matter to a merely descriptive or highly suggestive designation may result in the creation of a mark which is distinguishably different therefrom so as to avoid confusion in trade.
Id. at 66-67 (emphasis added). See also Plus Prods. v. Redken Labs., Inc., 199 USPQ 111, 116 (TTAB 1978) (no likelihood of confusion between PLUS and PH PLUS for the same goods due to, among other things, the highly suggestive and weak nature of “PLUS”).
In the present case, the weakness of the cited mark, coupled with the additional factors discussed below, render confusion unlikely.
2. The Parties’ Marks Are Sufficiently Dissimilar to Avoid a Likelihood of Confusion
In discussing the alleged similarities between the marks, the Examining Attorney states that the marks are essentially the same except for removal of the word “THIN” from the Registrant’s mark, resulting in a “highly similar” commercial impression. Applicant respectfully disagrees.
The meanings and connotations conveyed by the two marks are completely different. Registrant’s mark, as the Examining Attorney states, describes a feature or characteristic of its semiconductor wafers and other recited goods, namely, that they are as “thin as a razor.” Indeed, this was the basis for initial refusal of Registrant’s mark, resulting in its amendment to the Supplemental Register. Applicant’s RAZOR mark conveys no similar message, given the absence of the word “THIN” from Applicant’s mark. If anything, Applicant’s RAZOR mark conjures the image of a semiconductor device that is sharp, fast, accurate, and strong. But there is no evidence in the record to support the conclusion that consumers will associate Applicant’s RAZOR mark as being descriptive or even suggestive of the thickness or thinness of Applicant’s semiconductor devices. It is only the inclusion of the term “THIN” in the cited registration that causes the composite mark RAZERTHIN to convey its descriptive meaning as to the thinness of the Registrant’s goods.
The Examining Attorney concedes that Applicant’s mark may not immediately bring to mind the thickness of its goods, but states that consumers familiar with the types of goods at issue under both parties’ marks are aware that they must be thin in order to be used for their intended purposes. There is no survey or other evidence in the record to support this position.
To the contrary, and despite that neither of the marks are limited to a particular channel of trade or category of consumer, the consumers of these particular goods at issue are a highly sophisticated and discerning population of individuals involved in the manufacturing of electronics, computers, and other electrical and high-tech products. These purchasers are very unlikely to be confused as to the source of any two marks given the nature of their reliance on the parties’ products to build their own goods. Certainly, the differences between the marks in this case are more than sufficient to avoid any such likelihood of confusion.
And while Applicant does not dispute the general proposition that a likelihood of confusion cannot be avoided simply by adding terms to or removing terms from a registered mark, there is an exception to this principle when the marks in their entireties convey significantly different commercial impressions, as they clearly do here. TMEP 1207.01(b)(iii); see also Shen Mfg. Co. v. Ritz Hotel Ltd., 73 USPQ2d 1350 (Fed. Cir. 2004) (holding that RITZ and THE RITZ KIDS create different commercial impressions).
3. The Co-Existence of Third-Party “RAZOR” Marks in Other Product Categories Demonstrates that Consumers Can Distinguish Between Them
The PTO has already faced the question of whether various marks comprised of or containing the term “RAZOR” can coexist on the Register for similar goods. Specifically, the following marks have been registered on the Principal Register in Class 8 for hair cutting scissors and shears:
|
Mark |
Reg. No. |
Reg. Date |
Goods |
|
RAZER |
3533639 |
Nov. 18, 2008 |
Hair cutting scissors in Class 8 |
|
RAZORLINE & Design |
3532423 |
Nov. 22, 2008 |
Hair cutting scissors, electric hair clipper and nonelectric hair clipper, garden tools, namely, shears and scissors, hand tools, namely, pliers and wrenches in Class 8 |
|
RAZOR JAW |
2419782 |
Jan. 9, 2001 |
Hand-operated shears in Class 8 |
Copies of TSDR records for these registrations, together with website printouts showing current use in commerce of each of the marks, are attached as Exhibit A.
While the above marks cover goods that are admittedly dissimilar to the goods at issue in the present case, they demonstrate that consumers are not likely to be confused as to the source of identical or related goods when one is labeled with the mark RAZOR or RAZER per se, and the other is labeled with a RAZOR-formative mark such as RAZORLINE, RAZOR JAW, or RAZERTHIN. The same holds true in the case of Applicant’s mark and the cited registration.
In summary, given the weakness of the cited mark, the overall differences between the parties’ marks, and the PTO’s own precedent acknowledging that various marks comprised of or containing the term “RAZOR” can coexist within a product category, it is clear that confusion between the marks is unlikely and that the Section 2(d) refusal should be withdrawn. Applicant respectfully requests that the Examining Attorney reconsider the refusal and approve the application for publication.
