| PTO Form 1960 (Rev 9/2007) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86295091 |
| LAW OFFICE ASSIGNED | LAW OFFICE 116 |
| MARK SECTION | |
| MARK FILE NAME | http://tmng-al.gov.uspto.report/resting2/api/img/86295091/large |
| LITERAL ELEMENT | OPPO |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| OWNER SECTION (current) | |
| NAME | Oppo Medical Inc. |
| INTERNAL ADDRESS | 823 Van Ness Avenue |
| STREET | Suite 603 |
| CITY | San Francisco |
| STATE | California |
| ZIP/POSTAL CODE | 94109 |
| COUNTRY | United States |
| OWNER SECTION (proposed) | |
| NAME | Oppo Medical Inc. |
| INTERNAL ADDRESS | 825 Van Ness Avenue |
| STREET | Suite 603 |
| CITY | San Francisco |
| STATE | California |
| ZIP/POSTAL CODE | 94109 |
| COUNTRY | United States |
| PHONE | 206-682-8100 |
| FAX | 206-224-0779 |
| XXXX | |
| AUTHORIZED TO COMMUNICATE VIA E-MAIL | Yes |
| ARGUMENT(S) | |
|
I. INTRODUCTION This submission is made in response to the final Office Action mailed April 7, 2015. The Examining Attorney has refused registration based on the likelihood of confusion with Registration No. 4508756. Applicant respectfully requests reconsideration of the present application. II. APPLICANT'S MARK Applicant has applied to register its design mark set forth below for the following goods: Shoes and boots; hats and caps; socks, and stockings; shoe inserts for primarily non-orthopedic purposes; gloves as clothing accessories; cold-proof gloves; sleeping eye masks; puttees, namely, leg wrappings; underclothing, undergarments, sports clothes, namely, tight fitted clothing, namely, shorts, tights, athletic support tops, tops, girdles, compression shirts, compression shorts, compression pants, athletic sleeves, leggings, wrist bands. III. THE CITED REGISTRATION The Examining Attorney refuses registration under Section 2(d) of the Trademark Act on the basis of a likelihood of confusion with the mark OPPO SUITS and Design in U.S. Registration 4508756, as shown below for clothing, namely suits, blazers, trousers, pants, waistcoats, shirts, T-shirts, ties, bow ties, socks and underwear; footwear, namely shoes and sneakers; headwear, namely hats and caps. IV. THE MARKS THEMSELVES ARE NOT SUFFICIENTLY SIMILAR TO FIND A LIKELIHOOD OF CONFUSION In rejecting the present application, the Examining Attorney has simply cited the "standard doctrine" that the word portion of a composite mark is often considered the dominant feature in the mark. No actual analysis of the present mark versus the cited mark was provided when making the statement. The Examining Attorney does concede that composite marks must be compared in their entirety and be compared with the putative conflicting marks. In the present situation, the design element of applicant's mark is very significant. The design element consists of a human-shaped torso wearing a hat or headwear with a circular brim. Moreover, a circular head shape is positioned above the human torso. Further, the head shape and torso are bisected vertically to divide the shapes into a white color on the left side and a black color on the right side. Further, the human torso and head shape are positioned above the word OppO in stylized lettering and thus a viewer's eyes are drawn to the first design. In the present situation, the design element of applicant's mark should be considered with at least as much, if not more, weight as a word portion. "[W]ords or portions of words do not always dominate over design features. The issue turns on the facts of each case." In re Elbaum, 211 U.S.P.Q. 639, 641 (T.T.A.B. 1981). "The design, particularly if prominent . . . may dominate or at least be a significant factor in distinguishing the marks." Richard L. Kirkpatrick, Likelihood of Confusion In Trademark Law, § 4:9.2 (2006). Indeed, "differences in designs may outweigh similarity of words." Id. Professor McCarthy remarks that: It has sometimes been stated that in a word-design composite mark, the words are always presumed to be the "dominant" portion. This might be labeled the "literacy" presumption, in that it assumes that words have more impact than designs, a dubious generalization. That this "rule" of word-dominance is merely a guideline is shown by cases finding that a design element is dominant if more conspicuous than accompanying words. 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 23:47 (4th ed. 2006). In the present situation, applicant's design is at least as conspicuous and striking as the wording of the mark. As noted above, the design portion of the mark is in the form of a unique torso with a circular head shape positioned above the torso. This design is of a height that is higher than the letters comprising the word portion of the mark. Applicant respectfully submits that this is a situation in which the design portion of a mark dominates the mark. See In re Computer Communications, Inc., 485 F.2d 1392 (CCPA 1973); and Association of Co‑Operative Members, Inc. v. Farmland Industries, Inc., 684 F.2d 1134 (5th Cir. 1982). Moreover, the present situation is distinguishable from the cases cited by the Examining Attorney for the proposition that the word portion of a mark may likely be more impressed on a purchaser's memory than the design portion. In the case of CBS, Inc. v. Morrow, 708 F.2d 1579 (Fed. Cir. 1983), the design portion of the mark consists of a small stylistic light bulb forming the dot over the word "Thinker." The design portion of the mark in the CBS, Inc. case was much smaller in scale than the mark in question. Further, in the case of In re Viterra Inc., 671 F.3d 1358 (Fed. Cir. 2012), the design potion of the mark is simply the letter "X". Moreover, in the case of Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565 (Fed. Cir. 1983), the design portion of the mark was simply the letter "Y". In Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ 2d 1424,1431, the design in question was a wave, and the goods were bottled water. As such, the design was considered to be descriptive of the goods. In the present situation, applicant's design is not descriptive of its goods. In the In re Dakin's Miniatures, Inc. case, applicant filed two trademark applications. The first application included the mark DAKIN'S in large font, superimposed over a design of the heads of three horses. The TTAB held that this design could be merely mistaken for one of the registrant's designs since the registrant utilized designs in conjunction with its mark DAKIN's for toys, including stuffed toy animals. The applicant's second application included a B within a circle following the mark DAKIN'S CIRCLE. The TTAB held that the inclusion of the "Circle B" design was not significant. Applicant notes that the Circle B design followed the words DAIKIN'S CIRCLE, and also was of the same size as the font used in the word mark DAIKIN'S CIRCLE. The situation with respect to the two marks in the In re Daikin's Miniatures, Inc. case do not apply to the present application. In the present situation, on the other hand, the design portion of applicant's mark is in the form of a stylized torso with a circular head shape positioned above the torso. This design portion above dominates the term "OppO" shown in stylized lettering. Accordingly, the "literacy" presumption being espoused by the Examining Attorney does not apply in the present situation. Overall, the differences in the appearance of the parties' marks results in the marks conveying two different commercial impressions. It is unlikely that a consumer would encounter applicant's mark and assume that it designates the same source as the cited registered mark. V. OTHER THIRD PARTY REGISTRATION Applicant notes the existence of Registration No. 4523343 for the mark OPPOS for girls' clothing, namely, leggings, jeggings, pants, tops and skirts, registered April 29, 2014; as well as Registration 4519206 for the mark OPPOS and Design for girls' clothing, namely, leggings, jeggings, pants, tops and skirts, issued April 22, 2014. The TESS records for these two registrations are attached. These two registrations co-exist with the cited Registration 4508756. Applicant respectfully submits that if the cited Registration 4508756 can co-exist with Registration Nos. 4523343 and 4519206, such that consumers can distinguish the OPPOS and OPPOS and Design marks from the OPPO SUITS and Design mark, then surely in the present situation the public can also distinguish applicant's very distinctive OppO and Logo mark from the OPPO SUITS and Design mark. VI. CONCLUSION For the foregoing reasons, applicant respectfully submits that there is no likelihood of confusion between applicant's mark and the registered mark, and requests that the refusal to register be withdrawn. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_6713915899-20151007102307472955_._TESS_4519206_OPPOS_and_Design__Color_.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\862\950\86295091\xml12\RFR0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\862\950\86295091\xml12\RFR0003.JPG | |
| ORIGINAL PDF FILE | evi_6713915899-20151007102307472955_._TESS_4523343_OPPOS__Block_Letters_.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\862\950\86295091\xml12\RFR0004.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\862\950\86295091\xml12\RFR0005.JPG | |
| ORIGINAL PDF FILE | evi_1-6713915899-20151007123435189783_._54628AM_Reconsideration_Request_Print_Version.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\862\950\86295091\xml12\RFR0006.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\862\950\86295091\xml12\RFR0007.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\862\950\86295091\xml12\RFR0008.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\862\950\86295091\xml12\RFR0009.JPG | |
| DESCRIPTION OF EVIDENCE FILE | TESS Record 4519206 TESS Record 4523343 Print Version of Response |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Jerald E. Nagae, Reg. No. 29,418/ |
| SIGNATORY'S NAME | Jerald E. Nagae, Reg. No. 29,418 |
| SIGNATORY'S POSITION | Attorney of record, Washington bar member |
| SIGNATORY'S PHONE NUMBER | 206-682-8100 |
| DATE SIGNED | 10/07/2015 |
| RESPONSE SIGNATURE | //Jerald E. Nagae, Reg. No. 29,418// |
| SIGNATORY'S NAME | Jerald E. Nagae, Reg. No. 29,418 |
| SIGNATORY'S POSITION | Attorney of record, Washington bar member |
| SIGNATORY'S PHONE NUMBER | 206-682-1800 |
| DATE SIGNED | 10/07/2015 |
| AUTHORIZED SIGNATORY | YES |
| CONCURRENT APPEAL NOTICE FILED | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Oct 07 12:54:57 EDT 2015 |
| TEAS STAMP | USPTO/RFR-XX.XXX.XXX.XX-2 0151007125457636598-86295 091-54028d7fa73888ebaadff de3c8f41e94982bd11b6877b8 5a63c8575f55f35b7-N/A-N/A -20151007123435189783 |
| PTO Form 1960 (Rev 9/2007) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
I. INTRODUCTION
This submission is made in response to the final Office Action mailed April 7, 2015. The Examining Attorney has refused registration based on the likelihood of confusion with Registration No. 4508756. Applicant respectfully requests reconsideration of the present application.
II. APPLICANT'S MARK
Applicant has applied to register its design mark set forth below for the following goods: Shoes and boots; hats and caps; socks, and stockings; shoe inserts for primarily non-orthopedic purposes; gloves as clothing accessories; cold-proof gloves; sleeping eye masks; puttees, namely, leg wrappings; underclothing, undergarments, sports clothes, namely, tight fitted clothing, namely, shorts, tights, athletic support tops, tops, girdles, compression shirts, compression shorts, compression pants, athletic sleeves, leggings, wrist bands.
III. THE CITED REGISTRATION
The Examining Attorney refuses registration under Section 2(d) of the Trademark Act on the basis of a likelihood of confusion with the mark OPPO SUITS and Design in U.S. Registration 4508756, as shown below for clothing, namely suits, blazers, trousers, pants, waistcoats, shirts, T-shirts, ties, bow ties, socks and underwear; footwear, namely shoes and sneakers; headwear, namely hats and caps.
IV. THE MARKS THEMSELVES ARE NOT SUFFICIENTLY SIMILAR TO FIND A LIKELIHOOD OF CONFUSION
In rejecting the present application, the Examining Attorney has simply cited the "standard doctrine" that the word portion of a composite mark is often considered the dominant feature in the mark. No actual analysis of the present mark versus the cited mark was provided when making the statement. The Examining Attorney does concede that composite marks must be compared in their entirety and be compared with the putative conflicting marks.
In the present situation, the design element of applicant's mark is very significant. The design element consists of a human-shaped torso wearing a hat or headwear with a circular brim. Moreover, a circular head shape is positioned above the human torso. Further, the head shape and torso are bisected vertically to divide the shapes into a white color on the left side and a black color on the right side. Further, the human torso and head shape are positioned above the word OppO in stylized lettering and thus a viewer's eyes are drawn to the first design.
In the present situation, the design element of applicant's mark should be considered with at least as much, if not more, weight as a word portion. "[W]ords or portions of words do not always dominate over design features. The issue turns on the facts of each case." In re Elbaum, 211 U.S.P.Q. 639, 641 (T.T.A.B. 1981). "The design, particularly if prominent . . . may dominate or at least be a significant factor in distinguishing the marks." Richard L. Kirkpatrick, Likelihood of Confusion In Trademark Law, § 4:9.2 (2006). Indeed, "differences in designs may outweigh similarity of words." Id. Professor McCarthy remarks that:
It has sometimes been stated that in a word-design composite mark, the words are always presumed to be the "dominant" portion. This might be labeled the "literacy" presumption, in that it assumes that words have more impact than designs, a dubious generalization. That this "rule" of word-dominance is merely a guideline is shown by cases finding that a design element is dominant if more conspicuous than accompanying words.
3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 23:47 (4th ed. 2006).
In the present situation, applicant's design is at least as conspicuous and striking as the wording of the mark. As noted above, the design portion of the mark is in the form of a unique torso with a circular head shape positioned above the torso. This design is of a height that is higher than the letters comprising the word portion of the mark. Applicant respectfully submits that this is a situation in which the design portion of a mark dominates the mark. See In re Computer Communications, Inc., 485 F.2d 1392 (CCPA 1973); and Association of Co‑Operative Members, Inc. v. Farmland Industries, Inc., 684 F.2d 1134 (5th Cir. 1982).
Moreover, the present situation is distinguishable from the cases cited by the Examining Attorney for the proposition that the word portion of a mark may likely be more impressed on a purchaser's memory than the design portion. In the case of CBS, Inc. v. Morrow, 708 F.2d 1579 (Fed. Cir. 1983), the design portion of the mark consists of a small stylistic light bulb forming the dot over the word "Thinker." The design portion of the mark in the CBS, Inc. case was much smaller in scale than the mark in question. Further, in the case of In re Viterra Inc., 671 F.3d 1358 (Fed. Cir. 2012), the design potion of the mark is simply the letter "X". Moreover, in the case of Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565 (Fed. Cir. 1983), the design portion of the mark was simply the letter "Y". In Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ 2d 1424,1431, the design in question was a wave, and the goods were bottled water. As such, the design was considered to be descriptive of the goods. In the present situation, applicant's design is not descriptive of its goods.
In the In re Dakin's Miniatures, Inc. case, applicant filed two trademark applications. The first application included the mark DAKIN'S in large font, superimposed over a design of the heads of three horses. The TTAB held that this design could be merely mistaken for one of the registrant's designs since the registrant utilized designs in conjunction with its mark DAKIN's for toys, including stuffed toy animals. The applicant's second application included a B within a circle following the mark DAKIN'S CIRCLE. The TTAB held that the inclusion of the "Circle B" design was not significant. Applicant notes that the Circle B design followed the words DAIKIN'S CIRCLE, and also was of the same size as the font used in the word mark DAIKIN'S CIRCLE. The situation with respect to the two marks in the In re Daikin's Miniatures, Inc. case do not apply to the present application.
In the present situation, on the other hand, the design portion of applicant's mark is in the form of a stylized torso with a circular head shape positioned above the torso. This design portion above dominates the term "OppO" shown in stylized lettering. Accordingly, the "literacy" presumption being espoused by the Examining Attorney does not apply in the present situation.
Overall, the differences in the appearance of the parties' marks results in the marks conveying two different commercial impressions. It is unlikely that a consumer would encounter applicant's mark and assume that it designates the same source as the cited registered mark.
V. OTHER THIRD PARTY REGISTRATION
Applicant notes the existence of Registration No. 4523343 for the mark OPPOS for girls' clothing, namely, leggings, jeggings, pants, tops and skirts, registered April 29, 2014; as well as Registration 4519206 for the mark OPPOS and Design for girls' clothing, namely, leggings, jeggings, pants, tops and skirts, issued April 22, 2014. The TESS records for these two registrations are attached. These two registrations co-exist with the cited Registration 4508756. Applicant respectfully submits that if the cited Registration 4508756 can co-exist with Registration Nos. 4523343 and 4519206, such that consumers can distinguish the OPPOS and OPPOS and Design marks from the OPPO SUITS and Design mark, then surely in the present situation the public can also distinguish applicant's very distinctive OppO and Logo mark from the OPPO SUITS and Design mark.
VI. CONCLUSION
For the foregoing reasons, applicant respectfully submits that there is no likelihood of confusion between applicant's mark and the registered mark, and requests that the refusal to register be withdrawn.
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
