| 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 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87058052 |
| LAW OFFICE ASSIGNED | LAW OFFICE 103 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87058052/mark.png |
| LITERAL ELEMENT | ARIES |
| 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, L-3 Communications Integrated Systems L.P., respectfully submits this Response to the Office Action that issued on July 1, 2016, with respect to U.S. Trademark Application Serial No. 87/058,052. I. Request for Information The Examining Attorney has requested information from the Applicant about the goods that Applicant intends to provide under its mark (hereinafter, “Applicant’s Mark”). Specifically, the Examining Attorney has requested that Applicant indicate whether or not Applicant’s goods are intended to be used in connection with aircraft, and even more specifically whether Applicant’s goods may be used in connection with unmanned aircraft or whether or not such goods are, in general, used in connection with unmanned aircraft. In response, Applicant hereby submits that its goods are not specifically associated with unmanned aircraft, but could potentially be used in connection with aircraft and unmanned aircraft, as the product is capable of use with a wide variety of vehicles. II. Identification of Goods and Services As requested by the Examining Attorney, Applicant has amended the goods covered by the Application and submits that the described goods are now definite and indicate the specific goods to be offered under Applicant’s Mark.
III. Likelihood of Confusion The Examining Attorney has noted that the present Application is likely to cause confusion with U.S. Registration No. 4,761,990 for ARIES (“Cited Mark”) covering “[u]nmanned aerial vehicles (UAVs)” in Class 12. That confusion is unlikely is underscored by at least the following factors: (1) the differences in the goods sold under the respective marks; (2) the differences in channels of trade of the goods offered under the respective marks; and (3) the sophistication of purchasers of the goods sold under Applicant’s Mark. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Accordingly, Applicant respectfully requests that the Examining Attorney reconsider his position.
1. The Dissimilarity of Goods and Services Applicant respectfully submits that its goods are so different from the products covered by the Cited Mark as to preclude any likelihood of confusion between the respective marks. Applicant is a top ten worldwide defense contractor and provides its services primarily to the United States government and military, as well as other large corporations. It specializes in developing and providing products and solutions directed toward tactical intelligence, surveillance, and reconnaissance. Applicant’s largest market is defense, and its advanced solutions support global security for the U.S. government, including the military, on land, at sea, or in the air. See Exhibit A for additional information regarding Applicant’s products and services. The goods relevant to the present application relate in part to an electro-optical/infrared (“EO/IR”) sensor and associated computing system for tactical intelligence, surveillance, and reconnaissance purposes. EO/IR sensors play a tremendously important role for deployed military forces and are often crucial to the security and safety of U.S. troops. As such, Applicants goods relate to advanced, technical solutions that provide security and support to the United States and its allies. By contrast, Registrant’s business and relevant products and services are wholly unrelated to those of Applicant. Specifically, Registrant is a commercial cargo carrier. See Exhibit B for information regarding Registrant. Registrant’s goods covered under the mark relate to a consumer-level drone called the Aries BlackBird X10 Drone. See Exhibit C for more information on Registrant’s drone, including the specimen filed in connection with the Cited Mark. Thus, while Applicants goods relate to national (and international) defense and security, Registrant’s relevant goods relate to a consumer product intended for entertainment purposes. Indeed, Registrant’s product comes unassembled and, once assembled by the user, is controlled via an app downloadable on the user’s smartphone. By comparison, Applicant’s security and defense focused solutions and systems offered under Applicant’s Mark are far more technically complex and are not capable of use by the average consumer. As such, there is no overlap between Registrant’s goods and Applicant’s products. Due to these significant differences, it is unlikely that purchasers would mistakenly believe that the respective goods emanate from the same source. 2. The goods offered under Applicant’s Mark and the Cited Mark, respectively, are provided in differing channels of trade. The goods covered by Applicant’s Mark are highly technical and are offered to sophisticated and knowledgeable consumers consisting predominantly of U.S. government agencies, including the U.S. military. Indeed, the U.S. military accounts for a significant portion of Applicant’s sale of goods and services. By comparison, Registrant’s drone is intended for the average consumer looking for an entertainment-focused device and, thus, does not compete with Applicant’s goods and services. It is well-recognized that where Applicant’s goods do not compete with those covered under the Cited Mark, the court must look beyond the trademark to the context in which they are marketed and sold. Checkpoint Systems, Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270, 60 U.S.P.Q.2d 1609, 1615 (3d Cir. 2001) (citing Fisons Horticulture, Inc. v. Vigro Indus., Inc., 30 F.3d 466, 473, 31 USPQ2d 1592, 1596 (3d Cir. 1994)). Registrant’s product, which is marketed to average consumers, is not intended for military usage, as evidenced by its limited functionality and durability when compared to Applicant’s products. Indeed, the flight time for Registrant’s drone is limited to 20-25 minutes, which would likely be insufficient for typical military operation requirements. See Exhibit C. Moreover, as noted above, Registrant’s product is operated via a user’s smartphone, which would not provide the level of security required of military missions. Thus, Applicant’s and Registrant’s respective products are marketed and sold in distinct trade channels to entirely different consumers. As a result, confusion is not likely. 3. Consumers of Applicant’s goods are sophisticated Due to the expensive and technical nature of Applicant’s intelligence, surveillance, and reconnaissance related products and solutions, as well as the motivations behind purchasing such products, consumers of Applicant’s goods are sophisticated and highly discerning in their purchasing decisions, thereby negating any likelihood of confusion between Applicant’s Mark and the Cited Mark. Case law clearly recognizes that confusion is less likely where the buyer has expertise or is otherwise more discriminating and where the goods at issue are expensive and only purchased after thorough consideration and deliberation. See e.g., Magnaflux Corp. v. Sonoflux Corp., 231 F.2d 669, 671 109 U.S.P.Q. 313, 315 (C.C.P.A 1956); Homeowners Group, Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1111, 18 U.S.P.Q.2d 1587, 1596 (6th Cir. 1991). Applicant’s goods, which relate to sensors and associated computing systems for intelligence, surveillance, and reconnaissance purposes, are by their nature extremely sophisticated, complex, and expensive systems. Such systems are very unlikely to be purchased on a whim or without significant diligence on the part of the purchaser. Moreover, the U.S. government and military are highly educated and exercise extreme caution when evaluating potential solutions, particularly when those products and services relate to national defense and/or security. Accordingly, when goods are sold to such sophisticated, discerning purchasers, there is less likelihood of confusion. Not only are Applicant’s products expensive, but they also directly impact the safety of the citizens of the United States and other countries. Such high stakes purchasing decisions are certain to be carefully and thoughtfully evaluated. As a result, Applicant’s products inspire thorough deliberation and scrutiny before purchase, which eliminates any possibility for consumer confusion. Consumers of Applicant’s goods, such as the U.S. government, will easily distinguish between Applicant’s precisely engineered products and Registrant’s drone intended for the everyday consumer. Moreover, the average consumer will just as easily determine that the consumer product he/she is seeking is not the precisely engineered, expensive sensor and associated computing system to be offered by Applicant. In fact, consumers of Registrant’s goods would likely be unable to purchase Applicant’s goods and services due to cost barriers as well as possible national defense implications. Thus, any chance for confusion between Applicant’s Mark and the Cited Mark is negated due to the sophistication of Applicant’s customers. CONCLUSION In summary, because of the differences in the goods provided under each mark and their respective trade channels, as well as the sophistication of the purchasers of Applicant’s goods, no confusion is likely in the case at hand. Therefore, Applicant requests that the Examining Attorney allow this application to proceed to publication on the Principal Register. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_1659735197-20170102140705189819_._Exhibit_A_-_Applicants_Goods_and_Services_-_87058052.pdf |
| CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\870\580\87058052\xml1\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\870\580\87058052\xml1\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\870\580\87058052\xml1\ROA0004.JPG | |
| ORIGINAL PDF FILE | evi_1659735197-20170102140705189819_._Exhibit_B_-_H_S_Miller_Group_LLC_USDOT_2190564_-_87058052.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\870\580\87058052\xml1\ROA0005.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\870\580\87058052\xml1\ROA0006.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\870\580\87058052\xml1\ROA0007.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\870\580\87058052\xml1\ROA0008.JPG | |
| ORIGINAL PDF FILE | evi_1-1659735197-20170102140705189819_._Exhibit_C_-_Registrants_Product.pdf |
| CONVERTED PDF FILE(S) (6 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\870\580\87058052\xml1\ROA0009.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\870\580\87058052\xml1\ROA0010.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\870\580\87058052\xml1\ROA0011.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\870\580\87058052\xml1\ROA0012.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\870\580\87058052\xml1\ROA0013.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\870\580\87058052\xml1\ROA0014.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Screen shots from Applicant's website containing information related to Applicant's goods and services. Information pertaining to Registrant of the Cited Mark and Registrant's product. |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Electric sensors, cameras, navigation systems, and computer hardware and computer software, all for use in the fields of intelligence, surveillance, and reconnaissance | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Electric sensors, cameras, sensor systems comprised of electro-optical/infrared sensors and navigation systems for collecting high resolution imagery, and computer hardware and computer software for remote observation of targets, objects of interest, image enhancement, and associated image metadata, all for use in the fields of intelligence, surveillance, and reconnaissance | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Ellie F. Simpson/ |
| SIGNATORY'S NAME | Ellie F. Simpson |
| SIGNATORY'S POSITION | Associate Attorney, Haynes & Boone, LLP, Texas Bar Member |
| SIGNATORY'S PHONE NUMBER | 214-651-5318 |
| DATE SIGNED | 01/02/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jan 02 14:58:57 EST 2017 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XX.XXX-2 0170102145857519363-87058 052-57076bc5b312ef58dfaf2 a5c18dd0e6b8ec74dd42205ac d83175361b8c84c4d2214-N/A -N/A-20170102140705189819 |
| 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 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
Applicant, L-3 Communications Integrated Systems L.P., respectfully submits this Response to the Office Action that issued on July 1, 2016, with respect to U.S. Trademark Application Serial No. 87/058,052.
I. Request for Information
The Examining Attorney has requested information from the Applicant about the goods that Applicant intends to provide under its mark (hereinafter, “Applicant’s Mark”). Specifically, the Examining Attorney has requested that Applicant indicate whether or not Applicant’s goods are intended to be used in connection with aircraft, and even more specifically whether Applicant’s goods may be used in connection with unmanned aircraft or whether or not such goods are, in general, used in connection with unmanned aircraft. In response, Applicant hereby submits that its goods are not specifically associated with unmanned aircraft, but could potentially be used in connection with aircraft and unmanned aircraft, as the product is capable of use with a wide variety of vehicles.
II. Identification of Goods and Services
As requested by the Examining Attorney, Applicant has amended the goods covered by the Application and submits that the described goods are now definite and indicate the specific goods to be offered under Applicant’s Mark.
III. Likelihood of Confusion
The Examining Attorney has noted that the present Application is likely to cause confusion with U.S. Registration No. 4,761,990 for ARIES (“Cited Mark”) covering “[u]nmanned aerial vehicles (UAVs)” in Class 12.
That confusion is unlikely is underscored by at least the following factors: (1) the differences in the goods sold under the respective marks; (2) the differences in channels of trade of the goods offered under the respective marks; and (3) the sophistication of purchasers of the goods sold under Applicant’s Mark. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Accordingly, Applicant respectfully requests that the Examining Attorney reconsider his position.
1. The Dissimilarity of Goods and Services
Applicant respectfully submits that its goods are so different from the products covered by the Cited Mark as to preclude any likelihood of confusion between the respective marks.
Applicant is a top ten worldwide defense contractor and provides its services primarily to the United States government and military, as well as other large corporations. It specializes in developing and providing products and solutions directed toward tactical intelligence, surveillance, and reconnaissance. Applicant’s largest market is defense, and its advanced solutions support global security for the U.S. government, including the military, on land, at sea, or in the air. See Exhibit A for additional information regarding Applicant’s products and services. The goods relevant to the present application relate in part to an electro-optical/infrared (“EO/IR”) sensor and associated computing system for tactical intelligence, surveillance, and reconnaissance purposes. EO/IR sensors play a tremendously important role for deployed military forces and are often crucial to the security and safety of U.S. troops. As such, Applicants goods relate to advanced, technical solutions that provide security and support to the United States and its allies.
By contrast, Registrant’s business and relevant products and services are wholly unrelated to those of Applicant. Specifically, Registrant is a commercial cargo carrier. See Exhibit B for information regarding Registrant. Registrant’s goods covered under the mark relate to a consumer-level drone called the Aries BlackBird X10 Drone. See Exhibit C for more information on Registrant’s drone, including the specimen filed in connection with the Cited Mark. Thus, while Applicants goods relate to national (and international) defense and security, Registrant’s relevant goods relate to a consumer product intended for entertainment purposes. Indeed, Registrant’s product comes unassembled and, once assembled by the user, is controlled via an app downloadable on the user’s smartphone. By comparison, Applicant’s security and defense focused solutions and systems offered under Applicant’s Mark are far more technically complex and are not capable of use by the average consumer. As such, there is no overlap between Registrant’s goods and Applicant’s products.
Due to these significant differences, it is unlikely that purchasers would mistakenly believe that the respective goods emanate from the same source.
2. The goods offered under Applicant’s Mark and the Cited Mark, respectively, are provided in differing channels of trade.
The goods covered by Applicant’s Mark are highly technical and are offered to sophisticated and knowledgeable consumers consisting predominantly of U.S. government agencies, including the U.S. military. Indeed, the U.S. military accounts for a significant portion of Applicant’s sale of goods and services. By comparison, Registrant’s drone is intended for the average consumer looking for an entertainment-focused device and, thus, does not compete with Applicant’s goods and services.
It is well-recognized that where Applicant’s goods do not compete with those covered under the Cited Mark, the court must look beyond the trademark to the context in which they are marketed and sold. Checkpoint Systems, Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270, 60 U.S.P.Q.2d 1609, 1615 (3d Cir. 2001) (citing Fisons Horticulture, Inc. v. Vigro Indus., Inc., 30 F.3d 466, 473, 31 USPQ2d 1592, 1596 (3d Cir. 1994)).
Registrant’s product, which is marketed to average consumers, is not intended for military usage, as evidenced by its limited functionality and durability when compared to Applicant’s products. Indeed, the flight time for Registrant’s drone is limited to 20-25 minutes, which would likely be insufficient for typical military operation requirements. See Exhibit C. Moreover, as noted above, Registrant’s product is operated via a user’s smartphone, which would not provide the level of security required of military missions. Thus, Applicant’s and Registrant’s respective products are marketed and sold in distinct trade channels to entirely different consumers. As a result, confusion is not likely.
3. Consumers of Applicant’s goods are sophisticated
Due to the expensive and technical nature of Applicant’s intelligence, surveillance, and reconnaissance related products and solutions, as well as the motivations behind purchasing such products, consumers of Applicant’s goods are sophisticated and highly discerning in their purchasing decisions, thereby negating any likelihood of confusion between Applicant’s Mark and the Cited Mark.
Case law clearly recognizes that confusion is less likely where the buyer has expertise or is otherwise more discriminating and where the goods at issue are expensive and only purchased after thorough consideration and deliberation. See e.g., Magnaflux Corp. v. Sonoflux Corp., 231 F.2d 669, 671 109 U.S.P.Q. 313, 315 (C.C.P.A 1956); Homeowners Group, Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1111, 18 U.S.P.Q.2d 1587, 1596 (6th Cir. 1991).
Applicant’s goods, which relate to sensors and associated computing systems for intelligence, surveillance, and reconnaissance purposes, are by their nature extremely sophisticated, complex, and expensive systems. Such systems are very unlikely to be purchased on a whim or without significant diligence on the part of the purchaser. Moreover, the U.S. government and military are highly educated and exercise extreme caution when evaluating potential solutions, particularly when those products and services relate to national defense and/or security. Accordingly, when goods are sold to such sophisticated, discerning purchasers, there is less likelihood of confusion.
Not only are Applicant’s products expensive, but they also directly impact the safety of the citizens of the United States and other countries. Such high stakes purchasing decisions are certain to be carefully and thoughtfully evaluated.
As a result, Applicant’s products inspire thorough deliberation and scrutiny before purchase, which eliminates any possibility for consumer confusion. Consumers of Applicant’s goods, such as the U.S. government, will easily distinguish between Applicant’s precisely engineered products and Registrant’s drone intended for the everyday consumer. Moreover, the average consumer will just as easily determine that the consumer product he/she is seeking is not the precisely engineered, expensive sensor and associated computing system to be offered by Applicant. In fact, consumers of Registrant’s goods would likely be unable to purchase Applicant’s goods and services due to cost barriers as well as possible national defense implications.
Thus, any chance for confusion between Applicant’s Mark and the Cited Mark is negated due to the sophistication of Applicant’s customers.
CONCLUSION
In summary, because of the differences in the goods provided under each mark and their respective trade channels, as well as the sophistication of the purchasers of Applicant’s goods, no confusion is likely in the case at hand. Therefore, Applicant requests that the Examining Attorney allow this application to proceed to publication on the Principal Register.
