| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86245712 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/86245712/mark.png |
| LITERAL ELEMENT | PLEX |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
Color is not claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the capital letters "P", "L" and three horizontal lines to form the letter "E" and the letter "X". |
| ARGUMENT(S) | |
|
In an office action, mailing date July 22, 2014, the examining attorney refused registration. For the reasons set forth below, Applicant respectfully requests that this application be reconsidered for registration on the Principal Register. I. Likelihood of Confusion The examining attorney noted that there may be a likelihood of confusion under Section 2(d) of the Act between Applicant’s mark and Registration No. 3165114. Applicant submits that there is no likelihood of confusion between Applicant’s mark and the Registration for the reasons discussed below. The examining attorney found that a likelihood of confusion existed based on the similarity of the marks and the relatedness of the goods and/or services. A. Applicant’s and Registrant’s Goods Are Distinct And Do Not Travel in The Same Trade Channels; Thus, There is No Likelihood of Confusion
The first factor in determining whether there is a likelihood of confusion is to compare the marks in their entireties for similarities in their appearance, sound, connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973); see also TMEP § 1207.01(b). 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 goods are identical or closely related. In re Lamson Oil Co., 6 U.S.P.Q.2d 1041, 1043 (TTAB 1987); see also TMEP § 1207.01(b)(i). The second part of the analysis in determining whether there is a likelihood of confusion is to compare the goods and/or services to determine whether they are similar or commercially related or travel in the same trade channels. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 U.S.P.Q. 1375, 1380 (Fed. Cir. 2002). The test is whether the goods are similar enough that a customer would assume they were offered by the same source. Checkpoint Systems, Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270 (3rd Cir. 2001) (finding no likelihood of marketplace confusion where two companies used identical marks in same industry). Mere use of identical marks, even if used in the same broad industry, does not demonstrate likelihood of confusion. Id., see also Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718 F.2d 1201 (1st Cir. 1983). In Astra, applicant applied for registration of the mark “ASTRA” in connection with computerized blood analyzer machines and products associated therewith. Registrant had five active registrations for “ASTRA” in connection with pharmaceutical products and syringes. The Registrant sued for trademark infringement and the District Court’s dismissal of the suit on summary judgment was upheld by the Court of Appeals, who agreed that there was no likelihood of confusion of the source of the products, even though those products emanated from the same broad category of products used in the medical health field. Id. at 1205-1206. Similarly, there is no likelihood of confusion as to the source of Applicant’s and Registrant’s respective goods. While Applicant’s mark and the Registrant’s mark are similar and both are used in the very broad category of computer software, they do not travel in the same trade channels. Registration No. 3165114 is for the mark “PLEX” for “software directed to the travel industry” in Class 9. It is owned by HyperTech Solutions, Inc., which according to its website, http://www.hypertechsoluctions.com, is a leading software provider to the global leisure travel industry, delivering applications that automate complex travel reservations and feature the market’s most advanced functionality. See Exhibit 1. Applicant’s mark is for “PLEX” in stylized form for “computer software in the areas of enterprise resource planning, business intelligence, quality management systems, manufacturing execution systems, supply chain management and customer relationship management” in Class 9 and “Software as a Service (SaaS) services, namely, providing Enterprise Resource Planning (ERP) solutions for manufacturers” in Class 42. While Applicant’s mark and the Registrant’s marks may be nearly identical, they are both used in the very broad category of computer software and they do not travel in the same trade channels. Thus, consumers are unlikely to be confused as to the source of origin of the goods. Further, the presence of multiple marks that use the word “PLEX” for software, is evidence that “it is merely one of a crowd of marks.” 2 McCarthy on Trademarks, § 11:85 (4th ed. 2008). In such a crowd, consumers will not be confused between any two similar marks and may have learned to carefully pick out one from the other. Standard Brands, Inc. v. RJR Foods, Inc., 192 U.S.P.Q. 383, 385 (T.T.A.B. 1976). Such a finding applies to this case, as evidenced by the following list of registered marks which contain the term “PLEX” for goods in the broad category of computer software: · PLEX, Registration No. 4521345, for “…computer software in the field of digital media management for use in playing, organizing indexing, searching and transcoding digital video, audio and images” in Class 9; · NOTA PLEX, Registration No. 4325572, for “computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information” in Class 9; · PLEX ID & Design, Registration No. 3893759, for “…computer software and hardware for identification and analysis of nucleic acid sequences, nucleic acids, genetic materials, infectious agents and/or pathogens” in Class 9; and · E-PLEX, Registration No. 3725613, for software for “electric power distribution control and monitoring systems” in Class 9. In addition, it is unlikely that Applicant and Registrant share actual or potential purchasers sufficient to cause confusion. Not only are the actual goods of the Registrant and Applicant very different, but those goods likewise travel in different channels of trade and are not likely to be encountered by the same consumers. There is no likelihood of confusion when similar marks are used in different markets of the same broad field. Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 716 (Fed. Cir. 1992). Even where the marks are identical, if the goods or services in question are not 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 confusion is not likely. Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1244-45, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of RITZ for cooking and wine selection classes and RITZ for kitchen textiles is likely to cause confusion, because the relatedness of the respective goods and services was not supported by substantial evidence); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668, 1669 (TTAB 1986) (holding QR for coaxial cable and QR for various apparatus used in connection with photocopying, drafting, and blueprint machines not likely to cause confusion because of the differences between the parties’ respective goods in terms of their nature and purpose, how they are promoted, and who they are purchased by). Registration no. 3165114 is for software used in the travel industry, specifically in the global leisure travel industry for use in automating complex travel reservations. See Exhibit 1. Applicant’s mark, on the other hand, is for a completely different type of software marketed to a different industry in a different channel of trade. Applicant’s software consists of software for Enterprise Resource Planning (ERP), business intelligence, quality management systems, manufacturing execution systems, supply chain management and customer relationship management. It is marketed to manufacturers of goods and is purchased by them for use in accounting and finance, customer and sales management, human resources management, production management, quality management, inventory management, product management and supply chain management. See Exhibit 2. Although Registrant’s and Applicant’s goods fall within the broad field of computer software, those goods could not be more different and are each marketed to, and purchased by, a completely different class of purchasers. B. Purchasers of Applicant’s and Registrant’s Services Are Sophisticated And Thus, Would Not Likely Be Confused
The purchasers of Applicant’s and Registrant’s services are sophisticated purchasers, further undercutting any likelihood of confusion. The purchasers of Registrant’s travel industry software are sophisticated purchasers who are seeking very specific and distinct goods offered by Registrant and thus, are unlikely to be confused by Applicant’s mark. “Where the … buyer class consists of sophisticated or professional purchasers, courts have generally not found Lanham Act violations.” Checkpoint Systems, Inc., v. Check Point Software Tech., Inc., 269 F.3d 270, 284 (3rd Cir. 2001). “Sophisticated consumers may be expected to exercise greater care.” Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713 (Fed. Cir. 1992) (citations omitted). Likelihood of confusion must be shown to exist in an actual or potential purchaser. Id. at 717. Sophisticated consumers would not overlook the marked and distinct differences between Applicant’s Enterprise Resource Planning (ERP) software marketed to manufacturers of goods and Registrant’s travel industry software. Thus, they are unlikely to be confused about Registrant’s and Applicant’s marks. Further, “[t]here is always less likelihood of confusion where goods are expensive and purchased after careful consideration.” Astra Pharm. Prods., Inc., v. Beckman Instruments, Inc., 220 USPQ 786, 791 (1st Cir. 1983). Sophisticated consumers purchasing expensive products exercise a greater level of care in distinguishing the source of products and services. Jet Inc. v. Sewage Aeration Systems, 165 F.3d 419, 49 USPQ2d 1355, 1358 (6th Cir. 1999); Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546, 1548, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990) (in making purchasing decisions regarding expensive goods, the reasonably prudent person standard is elevated to the standard of “discriminating purchaser.”). Finally, when the nature of the product or service is usually complex or specialized, confusion is unlikely. Astra, 718 F.2d 1201 (1st Cir. 1983); Homeowners Group Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 18 USPQ2d 1587 (6th Cir. 1991). Purchasers exercise a higher degree of care when purchasing goods specifically to satisfy a focused need. G.H. Mumm & Cie v. Desnoes & Geddes, Ltd., 917 F.2d 1292, 16 USPQ2d 1635, 1638 (Fed. Cir. 1990) (high degree of care when satisfying “focused need”); Originals, Inc. v. Stride Rite Corp., 656 F.Supp. 484, 2 USPQ2d 1934, 1941 (S.D.N.Y. 1987) (high degree of care exercised when buying shoes); Edison Bros. Stores, Inc. v. Cosmair, Inc., 651 F.Supp. 1547, 2 USPQ2d 1013, 1024 (S.D.N.Y. 1987) (high degree of care when purchasing apparel). The TTAB found no confusion between the use of the mark HPM and the mark HP for medical instruments due to the nature of the consumers, stating that this audience consists of “highly educated, sophisticated purchasers who know their equipment needs and would be expected to exercise a great deal of care in its selection.” Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 USPQ2d 1390 (1991). Further, as noted above, if apparel and shoe buyers are considered careful purchasers, then Applicant respectfully submits that purchasers of its expensive software systems are extremely discriminating. In sum, there is no likelihood of confusion sufficient to prevent registration of Applicant’s mark. Based upon the marked and distinct differences between Applicant’s goods and services and Registrant’s goods, the fact that they travel in different trade channels and the fact that they are sold to different, sophisticated purchasers, Applicant respectfully requests the examining attorney reconsider the allowance of this application on the Principal Register. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_172191164-20141021133306392537_._PlexEx1.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT16\IMAGEOUT16\862\457\86245712\xml5\ROA0002.JPG |
| ORIGINAL PDF FILE | evi_172191164-20141021133306392537_._PlexEx2.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\862\457\86245712\xml5\ROA0003.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\862\457\86245712\xml5\ROA0004.JPG | |
| ORIGINAL PDF FILE | evi_172191164-20141021133306392537_._PlexEx2-1.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\862\457\86245712\xml5\ROA0005.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\862\457\86245712\xml5\ROA0006.JPG | |
| ORIGINAL PDF FILE | evi_172191164-20141021133306392537_._PlexEx2-2.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\862\457\86245712\xml5\ROA0007.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\862\457\86245712\xml5\ROA0008.JPG | |
| ORIGINAL PDF FILE | evi_172191164-20141021133306392537_._PlexEx2-3.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT16\IMAGEOUT16\862\457\86245712\xml5\ROA0009.JPG |
| DESCRIPTION OF EVIDENCE FILE | Ex. 1 - website pages for Registrant Ex. 2 - website pages for Applicant |
| GOODS AND/OR SERVICES SECTION (009)(current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Computer software in the areas of enterprise resource planning, business intelligence, quality management systems, manufacturing execution systems, supply chain management and customer relationship management | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 11/30/2013 |
| FIRST USE IN COMMERCE DATE | At least as early as 11/30/2013 |
| GOODS AND/OR SERVICES SECTION (009)(proposed) | |
| INTERNATIONAL CLASS | 009 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Computer software for enterprise resource planning, business intelligence, quality management , manufacturing execution , supply chain management and customer relationship management | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 11/30/2013 |
| FIRST USE IN COMMERCE DATE | At least as early as 11/30/2013 |
| GOODS AND/OR SERVICES SECTION (042)(no change) | |
| ADDITIONAL STATEMENTS SECTION | |
| ACTIVE PRIOR REGISTRATION(S) | The applicant claims ownership of U.S. Registration Number(s) 4320122, 4374719, 4382279, and others. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Kimberly A. Berger/ |
| SIGNATORY'S NAME | Kimberly A. Berger |
| SIGNATORY'S POSITION | Attorney of record |
| SIGNATORY'S PHONE NUMBER | 3134967912 |
| DATE SIGNED | 10/21/2014 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Oct 21 13:37:50 EDT 2014 |
| TEAS STAMP | USPTO/ROA-XXX.XX.X.XXX-20 141021133750536289-862457 12-500ad7a1b121933d275933 3e9fe1d536dc603a7475df16e df66db6e8ac263793d-N/A-N/ A-20141021133306392537 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
In an office action, mailing date July 22, 2014, the examining attorney refused registration. For the reasons set forth below, Applicant respectfully requests that this application be reconsidered for registration on the Principal Register.
I. Likelihood of Confusion
The examining attorney noted that there may be a likelihood of confusion under Section 2(d) of the Act between Applicant’s mark and Registration No. 3165114. Applicant submits that there is no likelihood of confusion between Applicant’s mark and the Registration for the reasons discussed below. The examining attorney found that a likelihood of confusion existed based on the similarity of the marks and the relatedness of the goods and/or services.
A. Applicant’s and Registrant’s Goods Are Distinct And Do Not Travel in The Same Trade Channels; Thus, There is No Likelihood of Confusion
The first factor in determining whether there is a likelihood of confusion is to compare the marks in their entireties for similarities in their appearance, sound, connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973); see also TMEP § 1207.01(b). 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 goods are identical or closely related. In re Lamson Oil Co., 6 U.S.P.Q.2d 1041, 1043 (TTAB 1987); see also TMEP § 1207.01(b)(i).
The second part of the analysis in determining whether there is a likelihood of confusion is to compare the goods and/or services to determine whether they are similar or commercially related or travel in the same trade channels. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 U.S.P.Q. 1375, 1380 (Fed. Cir. 2002).
The test is whether the goods are similar enough that a customer would assume they were offered by the same source. Checkpoint Systems, Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270 (3rd Cir. 2001) (finding no likelihood of marketplace confusion where two companies used identical marks in same industry). Mere use of identical marks, even if used in the same broad industry, does not demonstrate likelihood of confusion. Id., see also Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718 F.2d 1201 (1st Cir. 1983).
In Astra, applicant applied for registration of the mark “ASTRA” in connection with computerized blood analyzer machines and products associated therewith. Registrant had five active registrations for “ASTRA” in connection with pharmaceutical products and syringes. The Registrant sued for trademark infringement and the District Court’s dismissal of the suit on summary judgment was upheld by the Court of Appeals, who agreed that there was no likelihood of confusion of the source of the products, even though those products emanated from the same broad category of products used in the medical health field. Id. at 1205-1206.
Similarly, there is no likelihood of confusion as to the source of Applicant’s and Registrant’s respective goods. While Applicant’s mark and the Registrant’s mark are similar and both are used in the very broad category of computer software, they do not travel in the same trade channels.
Registration No. 3165114 is for the mark “PLEX” for “software directed to the travel industry” in Class 9. It is owned by HyperTech Solutions, Inc., which according to its website, http://www.hypertechsoluctions.com, is a leading software provider to the global leisure travel industry, delivering applications that automate complex travel reservations and feature the market’s most advanced functionality. See Exhibit 1. Applicant’s mark is for “PLEX” in stylized form for “computer software in the areas of enterprise resource planning, business intelligence, quality management systems, manufacturing execution systems, supply chain management and customer relationship management” in Class 9 and “Software as a Service (SaaS) services, namely, providing Enterprise Resource Planning (ERP) solutions for manufacturers” in Class 42. While Applicant’s mark and the Registrant’s marks may be nearly identical, they are both used in the very broad category of computer software and they do not travel in the same trade channels. Thus, consumers are unlikely to be confused as to the source of origin of the goods.
Further, the presence of multiple marks that use the word “PLEX” for software, is evidence that “it is merely one of a crowd of marks.” 2 McCarthy on Trademarks, § 11:85 (4th ed. 2008). In such a crowd, consumers will not be confused between any two similar marks and may have learned to carefully pick out one from the other. Standard Brands, Inc. v. RJR Foods, Inc., 192 U.S.P.Q. 383, 385 (T.T.A.B. 1976). Such a finding applies to this case, as evidenced by the following list of registered marks which contain the term “PLEX” for goods in the broad category of computer software:
· PLEX, Registration No. 4521345, for “…computer software in the field of digital media management for use in playing, organizing indexing, searching and transcoding digital video, audio and images” in Class 9;
· NOTA PLEX, Registration No. 4325572, for “computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information” in Class 9;
· PLEX ID & Design, Registration No. 3893759, for “…computer software and hardware for identification and analysis of nucleic acid sequences, nucleic acids, genetic materials, infectious agents and/or pathogens” in Class 9; and
· E-PLEX, Registration No. 3725613, for software for “electric power distribution control and monitoring systems” in Class 9.
In addition, it is unlikely that Applicant and Registrant share actual or potential purchasers sufficient to cause confusion. Not only are the actual goods of the Registrant and Applicant very different, but those goods likewise travel in different channels of trade and are not likely to be encountered by the same consumers. There is no likelihood of confusion when similar marks are used in different markets of the same broad field. Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 716 (Fed. Cir. 1992).
Even where the marks are identical, if the goods or services in question are not 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 confusion is not likely. Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1244-45, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of RITZ for cooking and wine selection classes and RITZ for kitchen textiles is likely to cause confusion, because the relatedness of the respective goods and services was not supported by substantial evidence); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668, 1669 (TTAB 1986) (holding QR for coaxial cable and QR for various apparatus used in connection with photocopying, drafting, and blueprint machines not likely to cause confusion because of the differences between the parties’ respective goods in terms of their nature and purpose, how they are promoted, and who they are purchased by).
Registration no. 3165114 is for software used in the travel industry, specifically in the global leisure travel industry for use in automating complex travel reservations. See Exhibit 1. Applicant’s mark, on the other hand, is for a completely different type of software marketed to a different industry in a different channel of trade. Applicant’s software consists of software for Enterprise Resource Planning (ERP), business intelligence, quality management systems, manufacturing execution systems, supply chain management and customer relationship management. It is marketed to manufacturers of goods and is purchased by them for use in accounting and finance, customer and sales management, human resources management, production management, quality management, inventory management, product management and supply chain management. See Exhibit 2.
Although Registrant’s and Applicant’s goods fall within the broad field of computer software, those goods could not be more different and are each marketed to, and purchased by, a completely different class of purchasers.
B. Purchasers of Applicant’s and Registrant’s Services Are Sophisticated And Thus, Would Not Likely Be Confused
The purchasers of Applicant’s and Registrant’s services are sophisticated purchasers, further undercutting any likelihood of confusion. The purchasers of Registrant’s travel industry software are sophisticated purchasers who are seeking very specific and distinct goods offered by Registrant and thus, are unlikely to be confused by Applicant’s mark.
“Where the … buyer class consists of sophisticated or professional purchasers, courts have generally not found Lanham Act violations.” Checkpoint Systems, Inc., v. Check Point Software Tech., Inc., 269 F.3d 270, 284 (3rd Cir. 2001). “Sophisticated consumers may be expected to exercise greater care.” Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713 (Fed. Cir. 1992) (citations omitted). Likelihood of confusion must be shown to exist in an actual or potential purchaser. Id. at 717. Sophisticated consumers would not overlook the marked and distinct differences between Applicant’s Enterprise Resource Planning (ERP) software marketed to manufacturers of goods and Registrant’s travel industry software. Thus, they are unlikely to be confused about Registrant’s and Applicant’s marks.
Further, “[t]here is always less likelihood of confusion where goods are expensive and purchased after careful consideration.” Astra Pharm. Prods., Inc., v. Beckman Instruments, Inc., 220 USPQ 786, 791 (1st Cir. 1983). Sophisticated consumers purchasing expensive products exercise a greater level of care in distinguishing the source of products and services. Jet Inc. v. Sewage Aeration Systems, 165 F.3d 419, 49 USPQ2d 1355, 1358 (6th Cir. 1999); Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546, 1548, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990) (in making purchasing decisions regarding expensive goods, the reasonably prudent person standard is elevated to the standard of “discriminating purchaser.”).
Finally, when the nature of the product or service is usually complex or specialized, confusion is unlikely. Astra, 718 F.2d 1201 (1st Cir. 1983); Homeowners Group Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 18 USPQ2d 1587 (6th Cir. 1991). Purchasers exercise a higher degree of care when purchasing goods specifically to satisfy a focused need. G.H. Mumm & Cie v. Desnoes & Geddes, Ltd., 917 F.2d 1292, 16 USPQ2d 1635, 1638 (Fed. Cir. 1990) (high degree of care when satisfying “focused need”); Originals, Inc. v. Stride Rite Corp., 656 F.Supp. 484, 2 USPQ2d 1934, 1941 (S.D.N.Y. 1987) (high degree of care exercised when buying shoes); Edison Bros. Stores, Inc. v. Cosmair, Inc., 651 F.Supp. 1547, 2 USPQ2d 1013, 1024 (S.D.N.Y. 1987) (high degree of care when purchasing apparel).
The TTAB found no confusion between the use of the mark HPM and the mark HP for medical instruments due to the nature of the consumers, stating that this audience consists of “highly educated, sophisticated purchasers who know their equipment needs and would be expected to exercise a great deal of care in its selection.” Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 USPQ2d 1390 (1991). Further, as noted above, if apparel and shoe buyers are considered careful purchasers, then Applicant respectfully submits that purchasers of its expensive software systems are extremely discriminating.
In sum, there is no likelihood of confusion sufficient to prevent registration of Applicant’s mark. Based upon the marked and distinct differences between Applicant’s goods and services and Registrant’s goods, the fact that they travel in different trade channels and the fact that they are sold to different, sophisticated purchasers, Applicant respectfully requests the examining attorney reconsider the allowance of this application on the Principal Register.
