| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86085734 |
| LAW OFFICE ASSIGNED | LAW OFFICE 108 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/86085734/mark.png |
| LITERAL ELEMENT | ORIGAMI |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
This responds to the Office Action dated January 30, 2014.
In that Office Action, the Examining Attorney raised the following issues:
· Section 2(d) Likelihood of Confusion Refusal; and · Identification of Services.
Applicant’s response follows.
INFORMALITIES
Identification of Services
In order to respond to the Examining Attorney’s refusal and in order to distinguish Applicant’s services from those in the Cited Registrations, Applicant amends its services in the instant application as follows:
Online retail store featuring furniture, home furniture, office furniture, computer desks and tables, shelves and shelving, trunks, storage trunks and pet crates in Class 35.
ARGUMENTS
Likelihood of Confusion
The Examining Attorney has refused registration of the applied-for mark because, according to the Examining Attorney, “a likelihood of confusion with the mark in U.S. Registration Nos. 4237325 and 4170416.” Trademark Act Section 2(d), 15 U.S.C. § 1052(d); see TMEP §§ 1207.01 et seq.
Applicant respectfully disagrees with the Examining Attorney’s refusal and, for the reasons that follow, respectfully requests that the Examining Attorney reconsider and withdraw her § 2(d) refusal.
In refusing registration, the Examining Attorney engaged in a necessarily limited analysis of the similarity of marks and of the relatedness of the parties’ respective offerings. Such limited analysis was based on the broad nature of Applicant’s services, as originally filed. However, review of the pertinent DuPont factors in light of Applicant’s amended services demonstrates there is no likelihood of confusion between Applicant’s Mark and Registrants’ Marks. Application of E.I. DuPont De Nemours & Co., (“Dupont”), 476 F.2d 1357 (C.C.P.A. 1973); see also In re Martin’s Famous Pastry Shoppe, Inc., 223 U.S.P.Q. 1289, 1290 (Fed. Cir. 1984) (evaluating several DuPont factors other than similarity of marks and goods in review of marks and goods in review of an ex parte decision).
In particular, Applicant maintains that, in light of its above-cited amendment of the Application, the objections under § 2(d) should be withdrawn.
Registration No. 4237325 covers the mark ORIGAMI for retail store services featuring musical sound recordings, CDs, LPs, DVDs, audio tapes, posters, clothing, tote bags, audio accessories, slipmats for turntables, printed materials, patches, postcards; issuing gift certificates which may then be redeemed for goods; online retail store services featuring musical sound recordings, CDs, LPs, DVDs, audio tapes, posters, clothing, tote bags, audio accessories, slipmats for turntables, printed materials, patches, postcards; mail order services featuring services featuring musical sound recordings, CDs, LPs, DVDs, audio tapes, posters, clothing, tote bags, audio accessories, slipmats for turntables, printed materials, patches, postcards; providing information on record store offerings related to music-related merchandise for retail purposes in Class 35, in the name of Origami Music, LLC.
Registration No. 4170416 covers the mark ORIGAMI OWL for On-line wholesale and retail store services featuring Jewelry; Online retail services through direct solicitation by distributors directed to end-users featuring Jewelry; Retail services through direct solicitation by distributors directed to end-users featuring Jewelry; Street vendor services featuring Jewelry; Vending in the field of Jewelry in Class 35, in the name of Origami Owl, LLC.
First, in light of Applicant’s amendment of its services, Applicant submits that no likelihood of confusion exists between Applicant’s mark and the cited marks.
Applicant’s services are now limited to “furniture, home furniture, office furniture, computer desks and tables, trunks, storage trunks and pet crate”.
The courts and the Trademark Trial and Appeal Board (TTAB) routinely hold that, even in a situation where two marks are identical, consumer confusion is unlikely “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 ...” TMEP § 1207.0l(a)(i) (citing Local Trademarks, Inc. v. Handy Boys, Inc., 16 U.S.P.Q.2d 1156 (T.T.A.B. 1990) (LITTLE PLUMBER for drain opener not confusingly similar to LITTLE PLUMBER & Design for advertising services)).
That two highly-similar or identical marks are both for use in online store (or retail) services does not mean confusion is inevitable or even likely. Many different types of software offerings are unlikely to be encountered in similar market conditions as each other and such software offerings are unlikely to be related in the minds of consumers. See In re Quadram Corp., 228 U.S.P.Q. 863 (TTAB 1985) (“[I]n order to support a holding of likelihood of confusion, there must be some similarity between the goods and services at issue ... beyond the fact that each involves the use of computers.”); see also Reynolds & Reynolds Co. v. I.E. Systems, Inc., 5 U.S.P.Q.2d 1749, 1752 (T.T.A.B. 1987) (finding no likelihood of confusion between identical marks used on different kinds of software).
As in Quadram, here, the Examining Attorney must some similarity between the services beyond the fact that each involves retail sales. Although both Applicant and Registrants provide online retail services, the retail offerings are in unrelated fields and for unrelated purposes. Consumers understand that not all types of retail store services are related.
The services covered by Registration No. 4237325 are limited to music and music-related products.
The services covered by Registration No. 4170416 is limited to jewelry.
Applicant submits that musical products are wholly unrelated to furniture and pet products. Similarly, jewelry is wholly unrelated to Applicant’s furniture and pet products. For those reasons, there is no likelihood of confusion between Applicant’s mark and the marks cited by the Examining Attorney.
This fact is established by the fact that both marks cited by the Examining Attorney coexist for online retail services. The U.S. Patent & Trademark Office clearly believes that no likelihood of confusion exists between the two cited marks – which stand in the name of different owners.
Interestingly, Origami Owl, LLC, the owner of Registration No. 4170416, also owns Registration No. 4430806 for the mark O2 ORIGAMI OWL & Design for the same services, namely, “On-line retail store services featuring jewelry; On-line wholesale store services featuring jewelry; Online retail services through direct solicitation by distributors directed to end-users featuring jewelry; Retail services through direct solicitation by distributors directed to end-users featuring jewelry; Street vendor services featuring jewelry; Vending in the field of jewelry” in Class 35.
In light of the fact that the Examining Attorney did not also cite Registration No. 4430806 against the subject application, the Examining Attorney has taken the position the design element of the O2 ORIGAMI OWL & Design mark is sufficient to distinguish that mark from Applicant’s mark.
Moreover, Applicant’s mark comprises a design element comprising an origami paper crane and a stylized font, which distinguishes it from the cited marks.
Additionally, Application Serial No. 85756179 for the word mark ORIGAMI was approved for publication despite the existence of the marks cited by the Examining Attorney for, inter alia, promoting and marketing the goods of others by distributing advertising material and providing website links to the online retail stores of other merchants in Class 35, with no restriction as to fields.
Finally, Applicant is also the owner of the following:
· Reg. No. 4027537 for ORIGAMI & Design for foldable furniture, mainly, shelves and computer desks in Class 20; · Reg. No. 4458355 for ORIGAMI & Design for cages for pets in Class 21; · Reg. No. 4458360 for ORIGAMI & Design for shoe racks in Class 20; · Reg. No. 4458362 for ORIGAMI & Design for computer workstations comprising laptop trolleys in Class 20; · Reg. No. 4461646 for ORIGAMI & Design for laptop table in Class 20; · Reg. No. 4466470 for ORIGAMI & Design for kitchen island cart in Class 20; and · Application Serial No. 85920345 [published] for ORIGAMI & Design for foldable trunk in Class 18. See Exhibit A.
To be clear, Applicant’s ORIGAMI & Design marks mentioned above are for the same design as that covered by the subject application.
It is therefore clear that Applicant’s ORIGAMI & Design mark is on the market for the same products that are covered by its instant online retail store services.
Insofar as Applicant’s mark covers the retail store services that offer the goods for which Applicant already has federal trademark protection, confusion is in fact unlikely. Surely, if Applicant’s already-registered ORIGAMI & Design marks for the goods that are the also subject of Applicant’s Class 35 services coexist with the cited marks, Applicant’s online retail store services for those same goods can also coexist with the cited marks without confusion.
The respective consumers and the respective channels of trade are sufficiently unrelated so as to make confusion unlikely.
Consumers in the market for Applicant’s furniture sales services are not likely to be confused with Registrants’ marks for jewelry- and music-related services. Similarly, while the services of the parties may be available online, the fact that the goods that are the subject of their online retail services are so different means that the channels of trade are in fact different.
Indeed, no consumer would confuse jewelry sales for furniture sales, and vice-versa. Likewise, no consumer would confuse music sales for furniture sales, and vice-versa.
For the foregoing reasons, Applicant submits that confusion is in fact unlikely.
Possibility of Confusion vs. Likelihood of Confusion
The question is not whether there is a possibility of confusion; it is whether a likelihood of confusion exists. A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 166 F.3d 197, 49 U.S.P.Q.2d 1481 (3d Cir. 1999) (“We take this opportunity to hold that the appropriate standard for determining trademark infringement under the Lanham Act is the likelihood of confusion.”). On remand: 57 F. Supp. 2d 155, 52 U.S.P.Q. 2d 1143 (E.D. Pa. 1999) aff’d on point, reversed on other grounds, 237 F.3d 198, 57 U.S.P.Q.2d 1097 (3rd Cir. 2000) (after previously finding a possibility of confusion, the court on remand found no likelihood of confusion between plaintiff’s MIRACLE SUIT swimwear and defendant’s MIRACLE BRA swimwear). While there is almost always the possibility of confusion between the marks, WE Media, Inc. v. General Elec. Co., 218 F. Supp. 2d 463, 68 U.S.P.Q.2d 1108 (S.D. N.Y. 2002), judgment aff’d, 94 Fed. Appx. 29 (2d Cir. 2004) (“Some confusion is always possible: but there must be some threshold quantum that crosses from mere possibility into a probability.”), likelihood of confusion requires more. Applicant submits that “HORUS” in the marks at issue is no stronger or more distinctive than “MIRACLE” in the MIRACLE SUIT and MIRACLE BRA marks – for identical goods.
Likelihood of confusion is synonymous with “probable” confusion—it is not sufficient if confusion is merely “possible.” American Steel Foundries v. Robertson, 269 U.S. 372, 46 S. Ct. 160, 70 L. Ed. 317 (1926) (“probably confuse”); Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway and Sons, 523 F.2d 1331, 1342 n.20, 186 U.S.P.Q. 436 (2d Cir. 1975) (“A mere possibility [of confusion] would not be enough.”); Estee Lauder Inc. v. The Gap, Inc., 108 F.3d 1503, 42 U.S.P.Q.2d 1228 (2d Cir. 1997) (“Likelihood of confusion means a probability of confusion; it is not sufficient if confusion is merely ‘possible,’” quoting treatise); Brennan’s Inc. v. Brennan's Restaurant, L.L.C., 360 F.3d 125, 69 U.S.P.Q.2d 1939 (2d Cir. 2004) (“To succeed on an infringement claim, plaintiff must show that it is probable, not just possible, that consumers will be confused”); Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794, 167 U.S.P.Q. 713 (9th Cir. 1970) (“likelihood” means more than mere “possibility”); Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 2 U.S.P.Q.2d 1204 (9th Cir. 1987) (“Likelihood of confusion requires that confusion be probable, not simply a possibility.”)
The test of infringement cannot be a mere “possibility” of confusion, because “[m]any consumers are ignorant or inattentive, so some are bound to misunderstand no matter how careful a producer is.” August Storck K.G. v. Nabisco, Inc., 59 F.3d 616, 35 U.S.P.Q.2d 1211 (7th Cir. 1995).
Given the overall differences between the services, the nature of the consumers and the channels of trade in connection with the services/goods at issue, Applicant contends that, at most, the Examining Attorney has established that a possibility of confusion exists. As the above discussion establishes, a possibility of confusion is insufficient to conclude that the marks are confusingly similar.
For trademark evaluation purposes, “likely” means “probably”. Applicant suggests that there is no way that there is a probability that the marks at issue would be confused with each other.
Therefore, Applicant requests that the Examining Attorney withdraw her refusal.
Applicant has responded to all issues raised by the Examining Attorney. Accordingly, Applicant respectfully requests that the Examining Attorney approve the subject application for publication as soon as practicable.
If a telephone conference will advance the prosecution of the subject application, the Examining Attorney is invited to call the undersigned at 917.779.9967.
Respectfully submitted,
/g mathew lombard/ G. Mathew Lombard Attorney for Applicant, NYS Bar Member |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_1746223749-094930840_._Exhibt_A.pdf |
| CONVERTED PDF FILE(S) (20 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\860\857\86085734\xml7\ROA0002.JPG |
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| DESCRIPTION OF EVIDENCE FILE | Applicant's prior registrations of ORIGAMI & Design |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | online retail store |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 04/01/2010 |
| FIRST USE IN COMMERCE DATE | At least as early as 04/01/2010 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 035 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Online retail store featuring furniture, home furniture, office furniture, computer desks and tables, shelves and shelving, trunks, storage trunks and pet crates | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 04/01/2010 |
| FIRST USE IN COMMERCE DATE | At least as early as 04/01/2010 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /g mathew lombard/ |
| SIGNATORY'S NAME | G. Mathew Lombard |
| SIGNATORY'S POSITION | Attorney for Applicant, NYS Bar Member |
| SIGNATORY'S PHONE NUMBER | 917.779.9967 |
| DATE SIGNED | 03/26/2014 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Mar 26 09:53:19 EDT 2014 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XXX.XX-2 0140326095319980605-86085 734-500403acc95cc21bf6a93 f9f6ab9671f9793acc2fcfade 2b348882ed4d4c5598f71-N/A -N/A-20140326094930840541 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
This responds to the Office Action dated January 30, 2014.
In that Office Action, the Examining Attorney raised the following issues:
· Section 2(d) Likelihood of Confusion Refusal; and
· Identification of Services.
Applicant’s response follows.
INFORMALITIES
Identification of Services
In order to respond to the Examining Attorney’s refusal and in order to distinguish Applicant’s services from those in the Cited Registrations, Applicant amends its services in the instant application as follows:
Online retail store featuring furniture, home furniture, office furniture, computer desks and tables, shelves and shelving, trunks, storage trunks and pet crates in Class 35.
ARGUMENTS
Likelihood of Confusion
The Examining Attorney has refused registration of the applied-for mark because, according to the Examining Attorney, “a likelihood of confusion with the mark in U.S. Registration Nos. 4237325 and 4170416.” Trademark Act Section 2(d), 15 U.S.C. § 1052(d); see TMEP §§ 1207.01 et seq.
Applicant respectfully disagrees with the Examining Attorney’s refusal and, for the reasons that follow, respectfully requests that the Examining Attorney reconsider and withdraw her § 2(d) refusal.
In refusing registration, the Examining Attorney engaged in a necessarily limited analysis of the similarity of marks and of the relatedness of the parties’ respective offerings. Such limited analysis was based on the broad nature of Applicant’s services, as originally filed. However, review of the pertinent DuPont factors in light of Applicant’s amended services demonstrates there is no likelihood of confusion between Applicant’s Mark and Registrants’ Marks. Application of E.I. DuPont De Nemours & Co., (“Dupont”), 476 F.2d 1357 (C.C.P.A. 1973); see also In re Martin’s Famous Pastry Shoppe, Inc., 223 U.S.P.Q. 1289, 1290 (Fed. Cir. 1984) (evaluating several DuPont factors other than similarity of marks and goods in review of marks and goods in review of an ex parte decision).
In particular, Applicant maintains that, in light of its above-cited amendment of the Application, the objections under § 2(d) should be withdrawn.
Registration No. 4237325 covers the mark ORIGAMI for retail store services featuring musical sound recordings, CDs, LPs, DVDs, audio tapes, posters, clothing, tote bags, audio accessories, slipmats for turntables, printed materials, patches, postcards; issuing gift certificates which may then be redeemed for goods; online retail store services featuring musical sound recordings, CDs, LPs, DVDs, audio tapes, posters, clothing, tote bags, audio accessories, slipmats for turntables, printed materials, patches, postcards; mail order services featuring services featuring musical sound recordings, CDs, LPs, DVDs, audio tapes, posters, clothing, tote bags, audio accessories, slipmats for turntables, printed materials, patches, postcards; providing information on record store offerings related to music-related merchandise for retail purposes in Class 35, in the name of Origami Music, LLC.
Registration No. 4170416 covers the mark ORIGAMI OWL for On-line wholesale and retail store services featuring Jewelry; Online retail services through direct solicitation by distributors directed to end-users featuring Jewelry; Retail services through direct solicitation by distributors directed to end-users featuring Jewelry; Street vendor services featuring Jewelry; Vending in the field of Jewelry in Class 35, in the name of Origami Owl, LLC.
First, in light of Applicant’s amendment of its services, Applicant submits that no likelihood of confusion exists between Applicant’s mark and the cited marks.
Applicant’s services are now limited to “furniture, home furniture, office furniture, computer desks and tables, trunks, storage trunks and pet crate”.
The courts and the Trademark Trial and Appeal Board (TTAB) routinely hold that, even in a situation where two marks are identical, consumer confusion is unlikely “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 ...” TMEP § 1207.0l(a)(i) (citing Local Trademarks, Inc. v. Handy Boys, Inc., 16 U.S.P.Q.2d 1156 (T.T.A.B. 1990) (LITTLE PLUMBER for drain opener not confusingly similar to LITTLE PLUMBER & Design for advertising services)).
That two highly-similar or identical marks are both for use in online store (or retail) services does not mean confusion is inevitable or even likely. Many different types of software offerings are unlikely to be encountered in similar market conditions as each other and such software offerings are unlikely to be related in the minds of consumers. See In re Quadram Corp., 228 U.S.P.Q. 863 (TTAB 1985) (“[I]n order to support a holding of likelihood of confusion, there must be some similarity between the goods and services at issue ... beyond the fact that each involves the use of computers.”); see also Reynolds & Reynolds Co. v. I.E. Systems, Inc., 5 U.S.P.Q.2d 1749, 1752 (T.T.A.B. 1987) (finding no likelihood of confusion between identical marks used on different kinds of software).
As in Quadram, here, the Examining Attorney must some similarity between the services beyond the fact that each involves retail sales. Although both Applicant and Registrants provide online retail services, the retail offerings are in unrelated fields and for unrelated purposes. Consumers understand that not all types of retail store services are related.
The services covered by Registration No. 4237325 are limited to music and music-related products.
The services covered by Registration No. 4170416 is limited to jewelry.
Applicant submits that musical products are wholly unrelated to furniture and pet products. Similarly, jewelry is wholly unrelated to Applicant’s furniture and pet products. For those reasons, there is no likelihood of confusion between Applicant’s mark and the marks cited by the Examining Attorney.
This fact is established by the fact that both marks cited by the Examining Attorney coexist for online retail services. The U.S. Patent & Trademark Office clearly believes that no likelihood of confusion exists between the two cited marks – which stand in the name of different owners.
Interestingly, Origami Owl, LLC, the owner of Registration No. 4170416, also owns Registration No. 4430806 for the mark O2 ORIGAMI OWL & Design for the same services, namely, “On-line retail store services featuring jewelry; On-line wholesale store services featuring jewelry; Online retail services through direct solicitation by distributors directed to end-users featuring jewelry; Retail services through direct solicitation by distributors directed to end-users featuring jewelry; Street vendor services featuring jewelry; Vending in the field of jewelry” in Class 35.
In light of the fact that the Examining Attorney did not also cite Registration No. 4430806 against the subject application, the Examining Attorney has taken the position the design element of the O2 ORIGAMI OWL & Design mark is sufficient to distinguish that mark from Applicant’s mark.
Moreover, Applicant’s mark comprises a design element comprising an origami paper crane and a stylized font, which distinguishes it from the cited marks.
Additionally, Application Serial No. 85756179 for the word mark ORIGAMI was approved for publication despite the existence of the marks cited by the Examining Attorney for, inter alia, promoting and marketing the goods of others by distributing advertising material and providing website links to the online retail stores of other merchants in Class 35, with no restriction as to fields.
Finally, Applicant is also the owner of the following:
· Reg. No. 4027537 for ORIGAMI & Design for foldable furniture, mainly, shelves and computer desks in Class 20;
· Reg. No. 4458355 for ORIGAMI & Design for cages for pets in Class 21;
· Reg. No. 4458360 for ORIGAMI & Design for shoe racks in Class 20;
· Reg. No. 4458362 for ORIGAMI & Design for computer workstations comprising laptop trolleys in Class 20;
· Reg. No. 4461646 for ORIGAMI & Design for laptop table in Class 20;
· Reg. No. 4466470 for ORIGAMI & Design for kitchen island cart in Class 20; and
· Application Serial No. 85920345 [published] for ORIGAMI & Design for foldable trunk in Class 18.
See Exhibit A.
To be clear, Applicant’s ORIGAMI & Design marks mentioned above are for the same design as that covered by the subject application.
It is therefore clear that Applicant’s ORIGAMI & Design mark is on the market for the same products that are covered by its instant online retail store services.
Insofar as Applicant’s mark covers the retail store services that offer the goods for which Applicant already has federal trademark protection, confusion is in fact unlikely. Surely, if Applicant’s already-registered ORIGAMI & Design marks for the goods that are the also subject of Applicant’s Class 35 services coexist with the cited marks, Applicant’s online retail store services for those same goods can also coexist with the cited marks without confusion.
The respective consumers and the respective channels of trade are sufficiently unrelated so as to make confusion unlikely.
Consumers in the market for Applicant’s furniture sales services are not likely to be confused with Registrants’ marks for jewelry- and music-related services. Similarly, while the services of the parties may be available online, the fact that the goods that are the subject of their online retail services are so different means that the channels of trade are in fact different.
Indeed, no consumer would confuse jewelry sales for furniture sales, and vice-versa. Likewise, no consumer would confuse music sales for furniture sales, and vice-versa.
For the foregoing reasons, Applicant submits that confusion is in fact unlikely.
Possibility of Confusion vs. Likelihood of Confusion
The question is not whether there is a possibility of confusion; it is whether a likelihood of confusion exists. A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 166 F.3d 197, 49 U.S.P.Q.2d 1481 (3d Cir. 1999) (“We take this opportunity to hold that the appropriate standard for determining trademark infringement under the Lanham Act is the likelihood of confusion.”). On remand: 57 F. Supp. 2d 155, 52 U.S.P.Q. 2d 1143 (E.D. Pa. 1999) aff’d on point, reversed on other grounds, 237 F.3d 198, 57 U.S.P.Q.2d 1097 (3rd Cir. 2000) (after previously finding a possibility of confusion, the court on remand found no likelihood of confusion between plaintiff’s MIRACLE SUIT swimwear and defendant’s MIRACLE BRA swimwear). While there is almost always the possibility of confusion between the marks, WE Media, Inc. v. General Elec. Co., 218 F. Supp. 2d 463, 68 U.S.P.Q.2d 1108 (S.D. N.Y. 2002), judgment aff’d, 94 Fed. Appx. 29 (2d Cir. 2004) (“Some confusion is always possible: but there must be some threshold quantum that crosses from mere possibility into a probability.”), likelihood of confusion requires more. Applicant submits that “HORUS” in the marks at issue is no stronger or more distinctive than “MIRACLE” in the MIRACLE SUIT and MIRACLE BRA marks – for identical goods.
Likelihood of confusion is synonymous with “probable” confusion—it is not sufficient if confusion is merely “possible.” American Steel Foundries v. Robertson, 269 U.S. 372, 46 S. Ct. 160, 70 L. Ed. 317 (1926) (“probably confuse”); Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway and Sons, 523 F.2d 1331, 1342 n.20, 186 U.S.P.Q. 436 (2d Cir. 1975) (“A mere possibility [of confusion] would not be enough.”); Estee Lauder Inc. v. The Gap, Inc., 108 F.3d 1503, 42 U.S.P.Q.2d 1228 (2d Cir. 1997) (“Likelihood of confusion means a probability of confusion; it is not sufficient if confusion is merely ‘possible,’” quoting treatise); Brennan’s Inc. v. Brennan's Restaurant, L.L.C., 360 F.3d 125, 69 U.S.P.Q.2d 1939 (2d Cir. 2004) (“To succeed on an infringement claim, plaintiff must show that it is probable, not just possible, that consumers will be confused”); Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794, 167 U.S.P.Q. 713 (9th Cir. 1970) (“likelihood” means more than mere “possibility”); Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 2 U.S.P.Q.2d 1204 (9th Cir. 1987) (“Likelihood of confusion requires that confusion be probable, not simply a possibility.”)
The test of infringement cannot be a mere “possibility” of confusion, because “[m]any consumers are ignorant or inattentive, so some are bound to misunderstand no matter how careful a producer is.” August Storck K.G. v. Nabisco, Inc., 59 F.3d 616, 35 U.S.P.Q.2d 1211 (7th Cir. 1995).
Given the overall differences between the services, the nature of the consumers and the channels of trade in connection with the services/goods at issue, Applicant contends that, at most, the Examining Attorney has established that a possibility of confusion exists. As the above discussion establishes, a possibility of confusion is insufficient to conclude that the marks are confusingly similar.
For trademark evaluation purposes, “likely” means “probably”. Applicant suggests that there is no way that there is a probability that the marks at issue would be confused with each other.
Therefore, Applicant requests that the Examining Attorney withdraw her refusal.
Applicant has responded to all issues raised by the Examining Attorney. Accordingly, Applicant respectfully requests that the Examining Attorney approve the subject application for publication as soon as practicable.
If a telephone conference will advance the prosecution of the subject application, the Examining Attorney is invited to call the undersigned at 917.779.9967.
Respectfully submitted,
/g mathew lombard/
G. Mathew Lombard
Attorney for Applicant, NYS Bar Member
