| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85308858 |
| LAW OFFICE ASSIGNED | LAW OFFICE 114 |
| MARK SECTION | |
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85308858 |
| LITERAL ELEMENT | WILDCAT |
| 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) | |
|
A. No Confusion as to Reg. Nos. 1686516, 3950962, 3490382, 3580465, 3561054 and 3554107. The Applicant respectfully disagrees with the Examiner’s conclusion that the Applicant’s mark will likely be confused with the cited registrations. If a mark is entitled to protection, then the inquiry turns to whether ordinary prudent purchasers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of the Applicant’s mark. See e.g. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). The issue of likelihood of confusion typically revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or services. Not all of the DuPont factors may be relevant or of equal weight in a given case and “any one of the factors may control a particular case.” Id. (emphasis not original - quoting In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)); In re National Novice Hockey League, Inc., 222 USPQ 638, 640 (TTAB 1984). There is no mechanical test for determining likelihood of confusion. The issue is not whether the actual goods or services are likely to be confused; rather, whether there is a likelihood of confusion as to the source of the goods or services. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (citing cases). B. Controlling DuPont Factors Confirms That No Likelihood of Confusion Exists. The facts in the instant case demonstrate that there is no likelihood of confusion as to the source of the services. 1. The cited Registration No. 1686516 and Nos. 3950962, 3490382, 3580465, 3561054 and 3554107 are not entitled to strong protection. Where a term in a mark is shared similarly by others in the same industry the mark is generally considered weak and afforded minimal protection. See Bost Bakery, Incorporated v. Roland Industries, Inc., 216 USPQ 799 (TTAB 1982) (holding probative the third party use of just a few marks with a shared term and found the shared term an “insufficient basis on which to predicate a [finding] of likelihood of confusion”). The USPTO database has many third-party registrations using the term “cat” or “wildcats” on a variety of clothing goods in International Class 25. See Exhibit A. Thus, because the Registrant’s mark is only entitled to a narrow scope of protection, the Examiner must look at the differences between the marks. These differences alone create the necessary different commercial impression to distinguish the marks. See e.g. Daddy’s Junky Music Stroes, Inc. v Big Daddy’s Family Music Ctr., 109 F.3d 275, U.S.P.Q.2d 1173 (6th Cir. 1997). The differences here are clear. The registered mark is a design mark with a stylized display of a cat and the term “wildcat.” The Sabertooth marks incorporate the term “wildcat.” Given the weakness of the mark, such common use of a similar term (“cat” or “wildcats”) argues against confusion and supports that consumers do distinguish between the marks and look to other indicia of the mark and as such these types of marks do not function as strong source identifiers and thus are only entitled to a narrow scope of protection. 2. Similarity of the Sabertooth marks Reg. Nos. 3950962, 3580465, 3561054 and 3554107 - The distinguishing features of the marks give the marks a different connotation and commercial impression. The Applicant’s mark and the marks cited by the Examiner are sufficiently dissimilar such that this element favors the Applicant. Turning to a consideration of the marks, it is well settled that marks must be considered in their entireties, not dissected or split into component parts and each part compared with other parts. This is so because it is the entire mark that is perceived by the purchasing public and, therefore, it is the entire mark that must be compared to any other mark. It is the impression created by the involved marks, each considered as a whole that is important. See Kangol Ltd. V. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992). Furthermore, a determination of whether Applicant’s mark and the cited marks are similar is made by comparing the appearance, sound, connotation and commercial impression of the marks. DuPont, 476 F.2d 1357, 177 USPQ 563. Each mark must be viewed as a whole, and each case turns on its own facts. TMEP § 1207.01(b)(iv). Differences between the marks lead to a different overall commercial impression of the marks to the relevant public, which is the foundational test for likelihood of confusion. Here when viewed in their entireties and not dissected, the marks are indeed sufficiently dissimilar so as to avoid a finding of likelihood of confusion. The marks connote visually and aurally different commercial impressions. The Applicant’s mark evokes a new and unique commercial impression. See e.g. Kellogg Co. v. Toucan Golf, Inc., 337 F.3d 616 (6th Cir. Mich. 2003). The addition, subtraction, or rearrangement of parts of a mark can create a distinctly different commercial impression, thus moving the evaluation of likelihood of confusion toward a lack of confusion. In re Electrolyte Labs. Inc., 913 F.2d 645, 16 U.S.P.Q.2d 1239, 1240 (Fed. Cir. 1990) (“No element of a mark is ignored simply because it is less dominant, or would not have trademark significance if used alone.”). With regard to the Applicant’s mark, Sabertooth’s addition of the “X”, “427X”, “427”, and “Sabertooth Midnight” clearly distinguish the Applicant’s mark from the cited marks. The additional terms invoke a clearly different commercial impression than that associated with Applicant’s mark. The differences between the marks are dispositive. The cited marks look different, sound dissimilar, have different connotations, and thus create a different commercial impression, leading to the conclusion that the Applicant’s mark is dissimilar rather than similar to the cited mark. Thus, this sufficient dissimilarity demonstrates that no likelihood of confusion can be found and this is even more evident given the type of sophisticated consumer is involved in the purchase of motorcycle products. 3. Sophisticated purchasers – thus no confusion with any Sabertooth mark.
The goods offered by Sabertooth are motorcycles costing in the tens of thousands of dollars. It is well conceivable that purchasers of such motorcycles are sophisticated consumers. Sophisticated purchasers may be expected to exercise greater care. See e.g. Playtex Prods. v. First Quality Hygienic, 965 F. Supp. 339 (D.N.Y. 1996). These types of purchases are not impulsive, but rather are the kind of purchases done after consideration of the source, quality, characteristics and value of the motorcycle. The same is true as to the consumer of Applicant’s recreational off-highway vehicles and related parts and accessories. Thus, given the type of buyer – sophisticated and discerning – it is clear that no source confusion can be found. The Examiner cites to other companies that sell both motorcycles and off-highway vehicles as proof that the respective goods are capable of selling in the same channels of trade. Respectfully, such a conclusion is not proper and thus not dispositive here. The nature and scope of a party’s goods or services must be determined on the basis of the goods or services recited in the application or registration. See, e.g. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1463, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991); Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1493, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); Paula Payne Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (C.C.P.A. 1973); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011); and, In re Iolo Techs., LLC, 95 USPQ2d 1498, 1500 (TTAB 2010). The Examiner must determine the scope of Registrant’s goods on basis of the goods cited in the Registrant’s registrations. The goods are not as broadly identified as the Examiner indicates. The goods are identified with one word – motorcycles. The Examiner cannot permissibly add into such a discreet identification of goods the possibility of off-highway vehicles. Such a conclusion is an impermissible expansion of the goods identified by Sabertooth in its registrations. Thus, given the sophistication of the buyers relative to the respective goods offered by each party and the clear differences in goods, no likelihood of confusion can be found. C. Conclusion.
The Applicant respectfully submits that in the instant case no likelihood of confusion can be found where the one of the cited marks is not particularly strong and where there exists with regard to all the marks cited sufficiently different commercial impressions. Furthermore, given the realities of the marketplace and the clear care given by consumers of very expensive motorcycles and off-highway vehicles, the use of the Applicant’s mark would not give rise to the mistaken belief that the Applicant’s goods come from the same source as those associated with the cited Registrants. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_7099136106-180233183_._ROA_EX._A.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\859\792\85979276\LM2Copy\85308858\1\ROA6\ROA2.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\859\792\85979276\LM2Copy\85308858\1\ROA6\ROA3.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit of third party use. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Richard Alaniz/ |
| SIGNATORY'S NAME | Richard Alaniz |
| SIGNATORY'S POSITION | Attorney of record, Lowe Graham Jones, Washington state bar member |
| SIGNATORY'S PHONE NUMBER | 206.381.3300 |
| DATE SIGNED | 03/12/2012 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Mar 12 18:08:51 EDT 2012 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0120312180851821651-85308 858-490ebb938c2d01428b782 19dbc2253efdcc-N/A-N/A-20 120312180233183808 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
A. No Confusion as to Reg. Nos. 1686516, 3950962, 3490382, 3580465, 3561054 and 3554107.
The Applicant respectfully disagrees with the Examiner’s conclusion that the Applicant’s mark will likely be confused with the cited registrations.
If a mark is entitled to protection, then the inquiry turns to whether ordinary prudent purchasers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of the Applicant’s mark. See e.g. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). The issue of likelihood of confusion typically revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or services. Not all of the DuPont factors may be relevant or of equal weight in a given case and “any one of the factors may control a particular case.” Id. (emphasis not original - quoting In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)); In re National Novice Hockey League, Inc., 222 USPQ 638, 640 (TTAB 1984).
There is no mechanical test for determining likelihood of confusion. The issue is not whether the actual goods or services are likely to be confused; rather, whether there is a likelihood of confusion as to the source of the goods or services. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (citing cases).
B. Controlling DuPont Factors Confirms That No Likelihood of Confusion Exists.
The facts in the instant case demonstrate that there is no likelihood of confusion as to the source of the services.
1. The cited Registration No. 1686516 and Nos. 3950962, 3490382, 3580465, 3561054 and 3554107 are not entitled to strong protection.
Where a term in a mark is shared similarly by others in the same industry the mark is generally considered weak and afforded minimal protection. See Bost Bakery, Incorporated v. Roland Industries, Inc., 216 USPQ 799 (TTAB 1982) (holding probative the third party use of just a few marks with a shared term and found the shared term an “insufficient basis on which to predicate a [finding] of likelihood of confusion”). The USPTO database has many third-party registrations using the term “cat” or “wildcats” on a variety of clothing goods in International Class 25. See Exhibit A.
Thus, because the Registrant’s mark is only entitled to a narrow scope of protection, the Examiner must look at the differences between the marks. These differences alone create the necessary different commercial impression to distinguish the marks. See e.g. Daddy’s Junky Music Stroes, Inc. v Big Daddy’s Family Music Ctr., 109 F.3d 275, U.S.P.Q.2d 1173 (6th Cir. 1997). The differences here are clear. The registered mark is a design mark with a stylized display of a cat and the term “wildcat.” The Sabertooth marks incorporate the term “wildcat.” Given the weakness of the mark, such common use of a similar term (“cat” or “wildcats”) argues against confusion and supports that consumers do distinguish between the marks and look to other indicia of the mark and as such these types of marks do not function as strong source identifiers and thus are only entitled to a narrow scope of protection.
2. Similarity of the Sabertooth marks Reg. Nos. 3950962, 3580465, 3561054 and 3554107 - The distinguishing features of the marks give the marks a different connotation and commercial impression.
The Applicant’s mark and the marks cited by the Examiner are sufficiently dissimilar such that this element favors the Applicant.
Turning to a consideration of the marks, it is well settled that marks must be considered in their entireties, not dissected or split into component parts and each part compared with other parts. This is so because it is the entire mark that is perceived by the purchasing public and, therefore, it is the entire mark that must be compared to any other mark. It is the impression created by the involved marks, each considered as a whole that is important. See Kangol Ltd. V. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992). Furthermore, a determination of whether Applicant’s mark and the cited marks are similar is made by comparing the appearance, sound, connotation and commercial impression of the marks. DuPont, 476 F.2d 1357, 177 USPQ 563. Each mark must be viewed as a whole, and each case turns on its own facts. TMEP § 1207.01(b)(iv). Differences between the marks lead to a different overall commercial impression of the marks to the relevant public, which is the foundational test for likelihood of confusion.
Here when viewed in their entireties and not dissected, the marks are indeed sufficiently dissimilar so as to avoid a finding of likelihood of confusion. The marks connote visually and aurally different commercial impressions. The Applicant’s mark evokes a new and unique commercial impression. See e.g. Kellogg Co. v. Toucan Golf, Inc., 337 F.3d 616 (6th Cir. Mich. 2003). The addition, subtraction, or rearrangement of parts of a mark can create a distinctly different commercial impression, thus moving the evaluation of likelihood of confusion toward a lack of confusion. In re Electrolyte Labs. Inc., 913 F.2d 645, 16 U.S.P.Q.2d 1239, 1240 (Fed. Cir. 1990) (“No element of a mark is ignored simply because it is less dominant, or would not have trademark significance if used alone.”).
With regard to the Applicant’s mark, Sabertooth’s addition of the “X”, “427X”, “427”, and “Sabertooth Midnight” clearly distinguish the Applicant’s mark from the cited marks. The additional terms invoke a clearly different commercial impression than that associated with Applicant’s mark. The differences between the marks are dispositive. The cited marks look different, sound dissimilar, have different connotations, and thus create a different commercial impression, leading to the conclusion that the Applicant’s mark is dissimilar rather than similar to the cited mark. Thus, this sufficient dissimilarity demonstrates that no likelihood of confusion can be found and this is even more evident given the type of sophisticated consumer is involved in the purchase of motorcycle products.
3. Sophisticated purchasers – thus no confusion with any Sabertooth mark.
The goods offered by Sabertooth are motorcycles costing in the tens of thousands of dollars. It is well conceivable that purchasers of such motorcycles are sophisticated consumers. Sophisticated purchasers may be expected to exercise greater care. See e.g. Playtex Prods. v. First Quality Hygienic, 965 F. Supp. 339 (D.N.Y. 1996). These types of purchases are not impulsive, but rather are the kind of purchases done after consideration of the source, quality, characteristics and value of the motorcycle. The same is true as to the consumer of Applicant’s recreational off-highway vehicles and related parts and accessories. Thus, given the type of buyer – sophisticated and discerning – it is clear that no source confusion can be found.
The Examiner cites to other companies that sell both motorcycles and off-highway vehicles as proof that the respective goods are capable of selling in the same channels of trade. Respectfully, such a conclusion is not proper and thus not dispositive here. The nature and scope of a party’s goods or services must be determined on the basis of the goods or services recited in the application or registration. See, e.g. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1463, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991); Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1493, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); Paula Payne Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (C.C.P.A. 1973); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011); and, In re Iolo Techs., LLC, 95 USPQ2d 1498, 1500 (TTAB 2010).
The Examiner must determine the scope of Registrant’s goods on basis of the goods cited in the Registrant’s registrations. The goods are not as broadly identified as the Examiner indicates. The goods are identified with one word – motorcycles. The Examiner cannot permissibly add into such a discreet identification of goods the possibility of off-highway vehicles. Such a conclusion is an impermissible expansion of the goods identified by Sabertooth in its registrations. Thus, given the sophistication of the buyers relative to the respective goods offered by each party and the clear differences in goods, no likelihood of confusion can be found.
C. Conclusion.
The Applicant respectfully submits that in the instant case no likelihood of confusion can be found where the one of the cited marks is not particularly strong and where there exists with regard to all the marks cited sufficiently different commercial impressions. Furthermore, given the realities of the marketplace and the clear care given by consumers of very expensive motorcycles and off-highway vehicles, the use of the Applicant’s mark would not give rise to the mistaken belief that the Applicant’s goods come from the same source as those associated with the cited Registrants.
