| 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 | 87075878 |
| LAW OFFICE ASSIGNED | LAW OFFICE 105 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87075878/mark.png |
| LITERAL ELEMENT | FOX |
| 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) | |
|
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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Applicant: Twentieth Century Fox Film Corporation
Application Serial No.: 87075878
Filing Date: June 17, 2016
Mark: FOX
Class: 28
Examining Attorney: Kristin M. Dahling
Law Office: 105
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APPLICANT’S RESPONSE TO OFFICE ACTION
Pursuant to 37 C.F.R. §2.62(a) and TMEP § 711, Applicant Twentieth Century Fox Film Corporation (“Applicant”), by and through its attorneys, respectfully submits this Response to Office Action (the “Response”) regarding Application Serial No. 87075878 (the “Application”) for the mark FOX (“Applicant’s Mark”). Applicant is responding to the Office Action dated September 23, 2016 (the “Office Action”). Applicant responds to each of the issues identified in the Office Action as follows:
I. Amendment to Identification of Goods
To resolve the issues raised by the Examining Attorney concerning the Class 28 identification of goods, and to clarify Applicant’s goods in view of the refusal under Section 2(d) of the Trademark Act, Applicant hereby amends the identification of goods from:
Christmas tree decorations; Christmas tree ornaments; toys, games, playthings, sporting goods, slot machines
to:
Christmas tree decorations; Christmas tree ornaments; toys, games, and playthings, namely, dolls, doll clothing, doll furniture, doll accessories, toy figures, plush toys, puppets, bathtub toys, rubber character toys, bendable toys, wind-up toys, toy building blocks, jigsaw and manipulative puzzles, toy action figures and accessories therefor, collectable toy figures, play sets for action figures, party games, parlor games, role playing games, board games, action skill games, card games, playing cards, kaleidoscopes, kites, flying discs, toy jewelry, toy watches, dart boards, toy vehicles and accessories therefor, sit-in and ride-on toy vehicles, hand held puppets, toy banks, water squirting toys, toy weapons, pinball and arcade game machines, balls for games, balloons, costume masks, party favors made of paper; slot machines.
II. Likelihood of Confusion Refusal Under Section 2(d)
The Examining Attorney refused registration of Applicant’s Mark under Section 2(d) of the Trademark Act citing U.S. Trademark Registration Nos. 4142918, 2622588, and 1342864 (the “Cited Registrations”), arguing the Cited Registrations give rise to confusion with Applicant’s Mark. Applicant respectfully requests that the Examining Attorney reconsider and withdraw the refusal to register, based on the above amendment to the identification of goods and the following arguments.
At the outset, it must be borne in mind that under the Trademark Act, a refusal to register based upon a likelihood of confusion requires that confusion as to the source of the goods or services be likely, not merely possible; as the Second Circuit has stated, “likelihood of confusion means a probability of confusion; it is not sufficient if confusion is merely ‘possible.’” Estee Lauder, Inc. v. The Gap, Inc., 42 USPQ2d 1228 (2nd Cir. 1997) (internal quotations omitted) quoting 2 J. McCarthy, Trademarks and Unfair Competition, Section 23:3. A likelihood of confusion is based on the cumulative effect of the differences in the goods and the differences in the marks themselves. See Federated Foods, Inc. v. Fort Howard Paper, Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976).
The standard for determining whether two marks are likely to be confused is set forth in In re E.I. DuPont de Nemours & Co., 177 USPQ 563 (C.C.P.A. 1973); see also TMEP § 1207.01. The DuPont case establishes a number of factors to be considered in the analysis of whether two marks are likely to be confused under Trademark Act Section 2(d). Each factor may play a more dominant or diminished role, depending on the facts of each case. DuPont, 177 USPQ at 567. No single factor is dispositive. Id. The Examining Attorney need not consider all factors, but may consider those factors that are most relevant to the case at hand. See In re Dixie Restaurants, Inc., 41 USPQ2d 1531, 1533 (Fed. Cir. 1997); Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., 227 USPQ 541, 542 (Fed. Cir. 1985).
The most relevant DuPont factors in this case are: (1) the dissimilarities between the respective goods; and (2) the differences in the respective channels of trade.
A. Applicant’s Goods and the Goods Covered by the Cited Registrations Are Different and Unrelated.
Settled law holds that for a likelihood of confusion to exist, the goods must be related in some manner or “that the conditions surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that, because of the marks used in connection therewith, would lead to the mistaken belief that they originate from the same source.” TMEP § 1207.01(a)(i) (emphasis added); and cases cited therein. The specific goods, as amended herein, are so dissimilar that it is unlikely consumers will confuse the source of these products. In this regard, the threshold requirement of relatedness has not been met, and as a result it cannot be said that there is a likelihood of confusion.
The Examining Attorney cites “playthings, sporting goods” within Applicant’s prior identification of goods as similar to the Cited Registrations’ fishing equipment and tennis racquets. Applicant submits that the deletion of “sporting goods” from its identification eliminates any overlapping goods. Additionally, Applicant’s above identification amendments clarify the Class 28 “playthings” item. This clarification does not include fishing equipment or tennis racquets. As a result, the products offered under the respective marks are clearly distinct.
Where the goods and services are dissimilar, no likelihood of confusion will be found even if the marks are similar. See e.g. Shen Mfg. Co., Inc. v. Ritz Hotel Ltd., 73 USPQ2d 1350 (Fed Cir. 2004) (RITZ for cooking classes and RITZ for kitchen textiles not related); Aries Systems Corp. v. World Book Inc., 26 USPQ2d 1926 (TTAB 1993) (computer programs sold under KNOWLEDGE FINDER not similar to computer programs sold under INFORMATION FINDER); Flow Technology Inc. v. Picciano, 18 USPQ2d 1970 (TTAB 1991) (OMNITRAX for computer programs for video store management not likely to be confused with OMNITRAK for flowmeter calibrator); Local Trademarks, Inc. v. Handy Boys, Inc., 16 USPQ2d 1156 (TTAB 1990) (confusion not likely between LITTLE PLUMBERS for liquid drain opener and the identical mark for advertising services marketed to plumbing contractors); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g. lamps, tubes) relating to the photocopying field).
Furthermore, it must be borne in mind that even "a tiny percentage" of crossover business "is a very weak evidentiary basis for a finding of relatedness." In re Coors Brewing Co., 68 USPQ2d 1059 (Fed. Cir. 2003) (degree of overlap in the sources of BLUE MOON for beer and BLUE MOON for restaurant was de minimis, no likelihood of confusion). Given the unique markets in which the parties' goods move, it is highly doubtful the offerings of the respective parties will even be encountered together by prospective purchasers at all, let alone in a context-giving rise to confusion. Thus, even if there were some overlap, confusion is nonetheless unlikely to occur among consumers. See Fruit of the Loom Inc. v. Fruit of the Earth Inc., 3 USPQ2d 1531, 1533 (T.T.A.B. 1987).
Further militating against any likelihood of confusion are the differences between Applicant’s and Registrants’ trade channels in which they market and offer their goods. The conditions and activities surrounding the marketing of Applicant’s and the Cited Registrations’ respective goods are such that they would not be encountered by the same persons under circumstances that could give rise to the mistaken belief that they originate from the same source. See 1207.01(a)(i); In re Hal Leonard Publishing Corp. d/b/a Hal Leonard Books, 15 USPQ2d 1574, 1575 (TTAB 1990); In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). The threshold significance of the trade channels is whether the same class of persons is exposed to the marks at issue under circumstances likely to result in confusion. Jeanne-Marc, Inc. v. Cluett, Peabody & Co., Inc., 221 USPQ 58, 61 (TTAB 1984); TCPIP Holding Co. v. Haar Communications, 57 USPQ2d 1969 (2d Cir. 2001) (similar buyers targeted). Where, as here, the parties subject to a confusion analysis "operate in distinctly different markets, sell distinctly different products, and contact, for the most part, very different people in their marketing efforts," confusion is unlikely to result. Heartsprings, Inc. v. Heartspring, Inc., 143 F.3d 550, 557 (10th Cir. 1998) (finding no likelihood of confusion between HEARTSPRINGS for educational materials and HEARTSPRING for residential school for disabled children).
Fox International Group Limited, owner of Cited Registration Nos. 4142918 and 2622588, is a specialty fishing company. See Exhibit A. Their specialty fishing equipment is marketed towards a specific type of consumer. Cited Registration No. 1342864 is for “tennis racquets.” Again, this is a specialized product for a narrow range of consumers. Presumably this is why the two FOX marks are able to co-exist on the Principal Register. Similarly, Applicant’s products are distinguishable from the Cited Registrations’ goods, and this lends support to the idea that the addition of Applicant’s Mark is not likely to cause consumer confusion.
Additionally, the degree of consumer sophistication and conditions under which the sale is made is yet another DuPont factor that weighs in favor of Applicant. Dupont, 476 F.2d at 1361-1362, 177 USPQ at 567. Where consumers exercise a higher degree of care any possibility of confusion is substantially mitigated. A purchaser who has a “reasonably focused need” or “specific purpose” or plan for the product, an added duty of care, or the product is essential to his or her business, will exercise a higher degree of care in selecting the product. See e.g. Haydon Switch & Instr., Inc. v. Rexnord, Inc., 4 USPQ2d 1510, 1517 (D. Conn. 1987) (specific products for specific industrial purpose); G.H. Mumm & Cie v. Desnoes & Geddes, Ltd., 917 F.2d 1292, 16 USPQ2d 1635, 1638 (Fed. Cir. 1990) (“focused need” for champagne); Cliffs Notes, Inc. v. Bantam Doubleday Dell Publi’g Group, Inc., 886 F.2d 490, 496, 12 USPQ2d 1289, 1293 (2d Cir. 1989) (reader of Cliffs Notes probably has specific book in mind); Barre-Nat’l, Inc. v. Barr Labs., Inc., 773 F.Supp. 735, 21 USPQ2d 1755, 1761 (D.N.J. 1991) (pharmacist ordering pharmaceuticals). As previously stated, the Cited Registrations’ products are specialty sporting equipment. As a result, the relevant consumers will have a “focused need” for quality of the product they purchase. This sophistication results in an elevated level of care when selecting a product to purchase, therefore making confusion as to source unlikely.
It is clear from the foregoing that the respective offerings move in distinct channels of trade. Since there is no connection between the respective trade channels or consumers, and Applicant’s and the Cited Registrations’ goods are not competitive, related or interchangeable, confusion is unlikely.
C. Conclusion
In light of the foregoing, Applicant respectfully submits that the refusal under Trademark Act Section 2(d) is incorrect because the threshold of a “probability” of confusion has not been met. Applicant therefore respectfully requests that the Examining Attorney withdraw the refusal under Section 2(d) of the Trademark Act and approve the Application for publication.
III. Conclusion
Applicant submits that with this Response, all of the issues raised by the Examining Attorney in the Office Action have been resolved. Applicant therefore respectfully requests that the Section 2(d) refusal be withdrawn, and the Application be approved for publication.
The Examining Attorney is invited to contact the undersigned with any remaining questions or concerns.
Respectfully submitted, /Curtis Krechevsky/
Curtis Krechevsky Cantor Colburn LLP
Attorneys for Applicant Twentieth Century Fox Film Corporation Our Ref: FEG3876TUS
Curtis Krechevsky Cantor Colburn LLP 20 Church Street 22nd Floor Hartford, Connecticut 06103-3207 U.S.A. Phone: 860-286-2929 Fax: 860-286-0115 Email: TM-CT@cantorcolburn.com |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_12227902-20170321162829941908_._FEG3876TUS_-_Exhibit_A.PDF |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\870\758\87075878\xml3\ROA0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | Extract from Fox International Group's website |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 028 |
| DESCRIPTION | |
| Christmas tree decorations; Christmas tree ornaments; toys, games, playthings, sporting goods, slot machines | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 028 |
| TRACKED TEXT DESCRIPTION | |
| Christmas tree decorations; Christmas tree ornaments; |
|
| FINAL DESCRIPTION | |
| Christmas tree decorations; Christmas tree ornaments; toys, games, and playthings, namely, dolls, doll clothing, doll furniture, doll accessories, toy figures, plush toys, puppets, bathtub toys, rubber character toys, bendable toys, wind-up toys, toy building blocks, jigsaw and manipulative puzzles, toy action figures and accessories therefor, collectable toy figures, play sets for action figures, party games, parlor games, role playing games, board games, action skill games, card games, playing cards, kaleidoscopes, kites, flying discs, toy jewelry, toy watches, dart boards, toy vehicles and accessories therefor, sit-in and ride-on toy vehicles, hand held puppets, toy banks, water squirting toys, toy weapons, pinball and arcade game machines, balls for games, balloons, costume masks, party favors made of paper; slot machines | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Curtis Krechevsky/ |
| SIGNATORY'S NAME | Curtis Krechevsky |
| SIGNATORY'S POSITION | Attorney of Record; Massachusetts State Bar Member |
| SIGNATORY'S PHONE NUMBER | (860)286-2929 |
| DATE SIGNED | 03/21/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Mar 21 16:41:21 EDT 2017 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.X-201 70321164121572960-8707587 8-580578f70a8f04b29946a89 d7491d1ff45aa4455e27dc918 77b5da4d13606840-N/A-N/A- 20170321162829941908 |
| 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) |
************************************************************************
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Applicant: Twentieth Century Fox Film Corporation
Application Serial No.: 87075878
Filing Date: June 17, 2016
Mark: FOX
Class: 28
Examining Attorney: Kristin M. Dahling
Law Office: 105
************************************************************************
APPLICANT’S RESPONSE TO OFFICE ACTION
Pursuant to 37 C.F.R. §2.62(a) and TMEP § 711, Applicant Twentieth Century Fox Film Corporation (“Applicant”), by and through its attorneys, respectfully submits this Response to Office Action (the “Response”) regarding Application Serial No. 87075878 (the “Application”) for the mark FOX (“Applicant’s Mark”). Applicant is responding to the Office Action dated September 23, 2016 (the “Office Action”). Applicant responds to each of the issues identified in the Office Action as follows:
I. Amendment to Identification of Goods
To resolve the issues raised by the Examining Attorney concerning the Class 28 identification of goods, and to clarify Applicant’s goods in view of the refusal under Section 2(d) of the Trademark Act, Applicant hereby amends the identification of goods from:
Christmas tree decorations; Christmas tree ornaments; toys, games, playthings, sporting goods, slot machines
to:
Christmas tree decorations; Christmas tree ornaments; toys, games, and playthings, namely, dolls, doll clothing, doll furniture, doll accessories, toy figures, plush toys, puppets, bathtub toys, rubber character toys, bendable toys, wind-up toys, toy building blocks, jigsaw and manipulative puzzles, toy action figures and accessories therefor, collectable toy figures, play sets for action figures, party games, parlor games, role playing games, board games, action skill games, card games, playing cards, kaleidoscopes, kites, flying discs, toy jewelry, toy watches, dart boards, toy vehicles and accessories therefor, sit-in and ride-on toy vehicles, hand held puppets, toy banks, water squirting toys, toy weapons, pinball and arcade game machines, balls for games, balloons, costume masks, party favors made of paper; slot machines.
II. Likelihood of Confusion Refusal Under Section 2(d)
The Examining Attorney refused registration of Applicant’s Mark under Section 2(d) of the Trademark Act citing U.S. Trademark Registration Nos. 4142918, 2622588, and 1342864 (the “Cited Registrations”), arguing the Cited Registrations give rise to confusion with Applicant’s Mark. Applicant respectfully requests that the Examining Attorney reconsider and withdraw the refusal to register, based on the above amendment to the identification of goods and the following arguments.
At the outset, it must be borne in mind that under the Trademark Act, a refusal to register based upon a likelihood of confusion requires that confusion as to the source of the goods or services be likely, not merely possible; as the Second Circuit has stated, “likelihood of confusion means a probability of confusion; it is not sufficient if confusion is merely ‘possible.’” Estee Lauder, Inc. v. The Gap, Inc., 42 USPQ2d 1228 (2nd Cir. 1997) (internal quotations omitted) quoting 2 J. McCarthy, Trademarks and Unfair Competition, Section 23:3. A likelihood of confusion is based on the cumulative effect of the differences in the goods and the differences in the marks themselves. See Federated Foods, Inc. v. Fort Howard Paper, Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976).
The standard for determining whether two marks are likely to be confused is set forth in In re E.I. DuPont de Nemours & Co., 177 USPQ 563 (C.C.P.A. 1973); see also TMEP § 1207.01. The DuPont case establishes a number of factors to be considered in the analysis of whether two marks are likely to be confused under Trademark Act Section 2(d). Each factor may play a more dominant or diminished role, depending on the facts of each case. DuPont, 177 USPQ at 567. No single factor is dispositive. Id. The Examining Attorney need not consider all factors, but may consider those factors that are most relevant to the case at hand. See In re Dixie Restaurants, Inc., 41 USPQ2d 1531, 1533 (Fed. Cir. 1997); Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., 227 USPQ 541, 542 (Fed. Cir. 1985).
The most relevant DuPont factors in this case are: (1) the dissimilarities between the respective goods; and (2) the differences in the respective channels of trade.
Settled law holds that for a likelihood of confusion to exist, the goods must be related in some manner or “that the conditions surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that, because of the marks used in connection therewith, would lead to the mistaken belief that they originate from the same source.” TMEP § 1207.01(a)(i) (emphasis added); and cases cited therein. The specific goods, as amended herein, are so dissimilar that it is unlikely consumers will confuse the source of these products. In this regard, the threshold requirement of relatedness has not been met, and as a result it cannot be said that there is a likelihood of confusion.
The Examining Attorney cites “playthings, sporting goods” within Applicant’s prior identification of goods as similar to the Cited Registrations’ fishing equipment and tennis racquets. Applicant submits that the deletion of “sporting goods” from its identification eliminates any overlapping goods. Additionally, Applicant’s above identification amendments clarify the Class 28 “playthings” item. This clarification does not include fishing equipment or tennis racquets. As a result, the products offered under the respective marks are clearly distinct.
Where the goods and services are dissimilar, no likelihood of confusion will be found even if the marks are similar. See e.g. Shen Mfg. Co., Inc. v. Ritz Hotel Ltd., 73 USPQ2d 1350 (Fed Cir. 2004) (RITZ for cooking classes and RITZ for kitchen textiles not related); Aries Systems Corp. v. World Book Inc., 26 USPQ2d 1926 (TTAB 1993) (computer programs sold under KNOWLEDGE FINDER not similar to computer programs sold under INFORMATION FINDER); Flow Technology Inc. v. Picciano, 18 USPQ2d 1970 (TTAB 1991) (OMNITRAX for computer programs for video store management not likely to be confused with OMNITRAK for flowmeter calibrator); Local Trademarks, Inc. v. Handy Boys, Inc., 16 USPQ2d 1156 (TTAB 1990) (confusion not likely between LITTLE PLUMBERS for liquid drain opener and the identical mark for advertising services marketed to plumbing contractors); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g. lamps, tubes) relating to the photocopying field).
Furthermore, it must be borne in mind that even "a tiny percentage" of crossover business "is a very weak evidentiary basis for a finding of relatedness." In re Coors Brewing Co., 68 USPQ2d 1059 (Fed. Cir. 2003) (degree of overlap in the sources of BLUE MOON for beer and BLUE MOON for restaurant was de minimis, no likelihood of confusion). Given the unique markets in which the parties' goods move, it is highly doubtful the offerings of the respective parties will even be encountered together by prospective purchasers at all, let alone in a context-giving rise to confusion. Thus, even if there were some overlap, confusion is nonetheless unlikely to occur among consumers. See Fruit of the Loom Inc. v. Fruit of the Earth Inc., 3 USPQ2d 1531, 1533 (T.T.A.B. 1987).
Further militating against any likelihood of confusion are the differences between Applicant’s and Registrants’ trade channels in which they market and offer their goods. The conditions and activities surrounding the marketing of Applicant’s and the Cited Registrations’ respective goods are such that they would not be encountered by the same persons under circumstances that could give rise to the mistaken belief that they originate from the same source. See 1207.01(a)(i); In re Hal Leonard Publishing Corp. d/b/a Hal Leonard Books, 15 USPQ2d 1574, 1575 (TTAB 1990); In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). The threshold significance of the trade channels is whether the same class of persons is exposed to the marks at issue under circumstances likely to result in confusion. Jeanne-Marc, Inc. v. Cluett, Peabody & Co., Inc., 221 USPQ 58, 61 (TTAB 1984); TCPIP Holding Co. v. Haar Communications, 57 USPQ2d 1969 (2d Cir. 2001) (similar buyers targeted). Where, as here, the parties subject to a confusion analysis "operate in distinctly different markets, sell distinctly different products, and contact, for the most part, very different people in their marketing efforts," confusion is unlikely to result. Heartsprings, Inc. v. Heartspring, Inc., 143 F.3d 550, 557 (10th Cir. 1998) (finding no likelihood of confusion between HEARTSPRINGS for educational materials and HEARTSPRING for residential school for disabled children).
Fox International Group Limited, owner of Cited Registration Nos. 4142918 and 2622588, is a specialty fishing company. See Exhibit A. Their specialty fishing equipment is marketed towards a specific type of consumer. Cited Registration No. 1342864 is for “tennis racquets.” Again, this is a specialized product for a narrow range of consumers. Presumably this is why the two FOX marks are able to co-exist on the Principal Register. Similarly, Applicant’s products are distinguishable from the Cited Registrations’ goods, and this lends support to the idea that the addition of Applicant’s Mark is not likely to cause consumer confusion.
Additionally, the degree of consumer sophistication and conditions under which the sale is made is yet another DuPont factor that weighs in favor of Applicant. Dupont, 476 F.2d at 1361-1362, 177 USPQ at 567. Where consumers exercise a higher degree of care any possibility of confusion is substantially mitigated. A purchaser who has a “reasonably focused need” or “specific purpose” or plan for the product, an added duty of care, or the product is essential to his or her business, will exercise a higher degree of care in selecting the product. See e.g. Haydon Switch & Instr., Inc. v. Rexnord, Inc., 4 USPQ2d 1510, 1517 (D. Conn. 1987) (specific products for specific industrial purpose); G.H. Mumm & Cie v. Desnoes & Geddes, Ltd., 917 F.2d 1292, 16 USPQ2d 1635, 1638 (Fed. Cir. 1990) (“focused need” for champagne); Cliffs Notes, Inc. v. Bantam Doubleday Dell Publi’g Group, Inc., 886 F.2d 490, 496, 12 USPQ2d 1289, 1293 (2d Cir. 1989) (reader of Cliffs Notes probably has specific book in mind); Barre-Nat’l, Inc. v. Barr Labs., Inc., 773 F.Supp. 735, 21 USPQ2d 1755, 1761 (D.N.J. 1991) (pharmacist ordering pharmaceuticals). As previously stated, the Cited Registrations’ products are specialty sporting equipment. As a result, the relevant consumers will have a “focused need” for quality of the product they purchase. This sophistication results in an elevated level of care when selecting a product to purchase, therefore making confusion as to source unlikely.
It is clear from the foregoing that the respective offerings move in distinct channels of trade. Since there is no connection between the respective trade channels or consumers, and Applicant’s and the Cited Registrations’ goods are not competitive, related or interchangeable, confusion is unlikely.
C. Conclusion
In light of the foregoing, Applicant respectfully submits that the refusal under Trademark Act Section 2(d) is incorrect because the threshold of a “probability” of confusion has not been met. Applicant therefore respectfully requests that the Examining Attorney withdraw the refusal under Section 2(d) of the Trademark Act and approve the Application for publication.
III. Conclusion
Applicant submits that with this Response, all of the issues raised by the Examining Attorney in the Office Action have been resolved. Applicant therefore respectfully requests that the Section 2(d) refusal be withdrawn, and the Application be approved for publication.
The Examining Attorney is invited to contact the undersigned with any remaining questions or concerns.
Respectfully submitted,
/Curtis Krechevsky/
Curtis Krechevsky
Cantor Colburn LLP
Attorneys for Applicant Twentieth Century Fox Film Corporation
Our Ref: FEG3876TUS
Curtis Krechevsky
Cantor Colburn LLP
20 Church Street
22nd Floor
Hartford, Connecticut 06103-3207 U.S.A.
Phone: 860-286-2929
Fax: 860-286-0115
Email: TM-CT@cantorcolburn.com
