| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
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|---|---|---|---|---|---|---|---|---|---|---|
| SERIAL NUMBER | 86767109 | |||||||||
| LAW OFFICE ASSIGNED | LAW OFFICE 106 | |||||||||
| MARK SECTION | ||||||||||
| MARK | http://uspto.report/TM/86767109/mark.png | |||||||||
| LITERAL ELEMENT | ANTHEM | |||||||||
| 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) | ||||||||||
| Applicant thanks the examining attorney for the thorough consideration given the present application. 2(d) Likelihood of Confusion: Applicant's ANTHEM mark is refused registration because of a likelihood of confusion with:
Applicant respectfully disagrees, but to advance prosecution of the application applicant has amended the application herein to delete the class 14 goods entirely and to delete all but "smart phones; mobile phones; wearable smart phones" from class 9. Applicant respectfully submits that the goods remaining in the application are sufficiently unrelated to those in the cited registrations to avoid a likelihood of confusion. The parties' goods, as amended, are not of a type that consumers reasonably may expect to emanate from a single source under the same mark. The parties' goods will travel through different channels of trade and their marks will not be encountered by consumers at the same time under circumstances where confusion reasonably may occur, thus the goods, as amended, are unrelated and there is no likelihood of confusion. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012) (affirming the Board’s dismissal of opposer’s likelihood-of-confusion claim, noting “there is nothing in the record to suggest that a purchaser of test preparation materials who also purchases a luxury handbag would consider the goods to emanate from the same source” though both were offered under the COACH mark); 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); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156, 1158 (TTAB 1990) (finding liquid drain opener and advertising services in the plumbing field to be such different goods and services that confusion as to their source is unlikely even if they are offered under the same marks); 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). Applicant further submits that any possible likelihood of confusion is eliminated by the nature of the goods and the circumstances under which purchasing decisions are made. Smart phones and mobile phones are expensive items that involve careful deliberation on the part of consumers. Smart phones and mobile phones often cost more than $500 and the goods are feature-specific, i.e., consumers spend considerable time evaluating phone features and functions before making a purchasing decision. In addition to being expensive and feature-laden, mobile phones and smart phones also require a multi-year cellular and/or data plan contract. These types of products, at these prices, are not the kinds of products which reasonably prudent purchasers would buy without researching the product to some degree. Rather, these are items that will be purchased with care and deliberation. See Tiffany & Co. v. Classic Motor Carriages Inc., 10 USPQ2d 1835, 1841 (TTAB 1989) (automobiles would be purchased only upon careful consideration). In making purchasing decisions regarding expensive products such as these, “the reasonably prudent person standard is elevated to the standard of the ‘discriminating purchaser.’” Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990). As a result, there is no likelihood of confusion despite any similarities in the marks as to sight, sound, and meaning. In view of the foregoing, applicant respectfully requests withdrawal of the section 2(d) refusal. |
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| GOODS AND/OR SERVICES SECTION (009)(current) | ||||||||||
| INTERNATIONAL CLASS | 009 | |||||||||
| DESCRIPTION | ||||||||||
| Smart phones; Displays for smart phones, namely, liquid crystal display (LCD) and light emitting diode (LED) displays; Mobile phones; Wearable smart phones; Wireless headsets for cellular phones and portable media players; Headsets for cellular phones and portable media players; Wireless headsets for mobile phone; Wireless headsets for smart phone; Digital set top boxes; Leather cases for mobile phone; Leather cases for smart phone; Flip covers for mobile phone; Flip covers for smart phone; Tablet computers; Monitors for computer; Commercial monitors, namely, digital signage monitors and LCD monitors; Wearable computers; Computers; Printers for use with computers; Light emitting diode (LED) Displays; Leather cases for tablet computer; Flip covers for tablet computer; Portable computers; Rechargeable batteries; Battery chargers, namely, portable chargers for mobile phone batteries; 3D spectacles; Digital cameras; Network surveillance cameras; Television receivers; Displays for television receivers, namely, liquid crystal display (LCD) and light emitting diode (LED) displays; Apparatus for recording, transmission or reproduction of sound or images; Earphones; DVD players; Portable media players | ||||||||||
| FILING BASIS | Section 44(e) | |||||||||
| FOREIGN REGISTRATION COUNTRY |
Korea, South | |||||||||
| GOODS AND/OR SERVICES SECTION (009)(proposed) | ||||||||||
| INTERNATIONAL CLASS | 009 | |||||||||
| TRACKED TEXT DESCRIPTION | ||||||||||
| Smart phones; |
||||||||||
| FINAL DESCRIPTION | Smart phones; Mobile phones; Wearable smart phones | |||||||||
| FILING BASIS | Section 44(e) | |||||||||
| FOREIGN REGISTRATION COUNTRY |
Korea, South | |||||||||
| GOODS AND/OR SERVICES SECTION (014)(class deleted) | ||||||||||
| SIGNATURE SECTION | ||||||||||
| RESPONSE SIGNATURE | /Robert J. Kenney/ | |||||||||
| SIGNATORY'S NAME | Robert J. Kenney | |||||||||
| SIGNATORY'S POSITION | Attorney of record, VA bar member | |||||||||
| SIGNATORY'S PHONE NUMBER | 703-205-8000 | |||||||||
| DATE SIGNED | 11/23/2016 | |||||||||
| AUTHORIZED SIGNATORY | YES | |||||||||
| CONCURRENT APPEAL NOTICE FILED | NO | |||||||||
| FILING INFORMATION SECTION | ||||||||||
| SUBMIT DATE | Wed Nov 23 08:56:56 EST 2016 | |||||||||
| TEAS STAMP | USPTO/RFR-XXX.XX.XXX.XX-2 0161123085656834204-86767 109-57010d7e28e97989099b3 7a1af1bbe661ff5af75408420 605586b163331acb60ae-N/A- N/A-20161123084259665620 |
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| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
2(d) Likelihood of Confusion:
Applicant's ANTHEM mark is refused registration because of a likelihood of confusion with:|
Reg. No. |
Mark |
Relevant Goods/Services |
|
4045888 |
ANTHEM |
Preamplifiers; integrated amplifiers; power amplifiers; electrical power supplies; CD players; and remote controls for CD players, surround sound processors, tuners, optical disc drives, video projectors and receivers; surround-sound processors; radio signal tuners; high definition optical disc players; video projectors; audio receivers; digital media receivers; video receivers; and MP3 players; Preamplifiers; integrated amplifiers; power amplifiers; electrical power supplies; CD players; and remote controls for CD players, surround sound processors, tuners, optical disc drives, video projectors and receivers; surround-sound processors; radio signal tuners |
|
4020506 |
ANTHEM JEWELRY |
Jewelry and watches |
Applicant respectfully disagrees, but to advance prosecution of the application applicant has amended the application herein to delete the class 14 goods entirely and to delete all but "smart phones; mobile phones; wearable smart phones" from class 9. Applicant respectfully submits that the goods remaining in the application are sufficiently unrelated to those in the cited registrations to avoid a likelihood of confusion. The parties' goods, as amended, are not of a type that consumers reasonably may expect to emanate from a single source under the same mark. The parties' goods will travel through different channels of trade and their marks will not be encountered by consumers at the same time under circumstances where confusion reasonably may occur, thus the goods, as amended, are unrelated and there is no likelihood of confusion. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012) (affirming the Board’s dismissal of opposer’s likelihood-of-confusion claim, noting “there is nothing in the record to suggest that a purchaser of test preparation materials who also purchases a luxury handbag would consider the goods to emanate from the same source” though both were offered under the COACH mark); 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); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156, 1158 (TTAB 1990) (finding liquid drain opener and advertising services in the plumbing field to be such different goods and services that confusion as to their source is unlikely even if they are offered under the same marks); 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).
Applicant further submits that any possible likelihood of confusion is eliminated by the nature of the goods and the circumstances under which purchasing decisions are made. Smart phones and mobile phones are expensive items that involve careful deliberation on the part of consumers. Smart phones and mobile phones often cost more than $500 and the goods are feature-specific, i.e., consumers spend considerable time evaluating phone features and functions before making a purchasing decision. In addition to being expensive and feature-laden, mobile phones and smart phones also require a multi-year cellular and/or data plan contract. These types of products, at these prices, are not the kinds of products which reasonably prudent purchasers would buy without researching the product to some degree. Rather, these are items that will be purchased with care and deliberation. See Tiffany & Co. v. Classic Motor Carriages Inc., 10 USPQ2d 1835, 1841 (TTAB 1989) (automobiles would be purchased only upon careful consideration). In making purchasing decisions regarding expensive products such as these, “the reasonably prudent person standard is elevated to the standard of the ‘discriminating purchaser.’” Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990). As a result, there is no likelihood of confusion despite any similarities in the marks as to sight, sound, and meaning.
In view of the foregoing, applicant respectfully requests withdrawal of the section 2(d) refusal.