| 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 | 87114597 |
| LAW OFFICE ASSIGNED | LAW OFFICE 104 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/87114597/mark.png |
| LITERAL ELEMENT | MOMAX |
| 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 term "MOMAX" appearing in a stylized font. |
| ARGUMENT(S) | |
|
REMARKS In an office action dated November 4, 2016, the Examining Attorney partially preliminarily refused registration of the Application as to Class 9 only on the ground that the applied-for mark is likely to be confused with MOMAX, Registration No. 4159595 for, in pertinent part, “Apparatus for recording, transmission or reproduction of sound or images; CDs, DVDs, floppy discs, DVD-Rs, DVD-RWs, DVD-RAMs, HD-DVDs, magnetic-optical discs, CD-ROMs, CD-Rs, CD-RWs, audio CDs, super audio CDs, audio cassettes, record discs, flash cards, smart cards, secure digital cards, computer memories, record mini-discs, hard disc drives, computer servers and proxy computer servers all sold blank; data processing equipment; computers; apparatus and instruments for switching, conducting, transforming, accumulating, regulating and controlling electricity, namely, conduits; blank magnetic data carriers; computer programs and software for inventory management in the field of retail sales” in Class 9 and “Retail and wholesale store services featuring CDs, DVDs, floppy discs, DVD-Rs, DVD-RWs, DVD-RAMs, HD-DVDs, magnetic-optical discs, CD-ROMs, CD-Rs, CD-RWs, audio CDs, super audio CDs, audio cassettes, record discs, flash cards, smart cards, secure digital cards, computer memories, record mini-discs, hard disc drives, computer servers and proxy computer servers, computer games, computer game consoles, computer game apparatus, books, catalogues and illustrated books; on-line retail store services featuring a wide variety of consumer goods of others; business services, namely, managing invoices; accounting for electronic order systems; managing commercial transactions, for others, via online shops; sales promotion services; procurement services for third parties, namely, business acquisition of goods and services for other companies; collection and systemization of information into computer databases in the field of business inventory; business management, professional business and business organizational consultation” in Class 35 (the “Cited Registration”).
The Cited Registration is owned by German entity Momox GmbH (the “Cited Registrant”).
For the reasons set forth in this response, Applicant respectfully submits that the involved marks and goods/services are sufficiently distinct such that consumer confusion is not likely and the Cited Registration should not bar Applicant’s application from proceeding to registration. SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
A. The Parties’ Goods/Services are Not Related
Central to the likelihood of confusion analysis is whether the marks, as applied to the respective goods/services, so resemble each other that the purchasing public would mistakenly assume that the applicant’s goods/services originate from the same source as the goods in the cited registration. See Paula Payne Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (CCPA 1973).
The Cited Registration covers, in relevant part, CDs, DVDs and other apparatus for recording, and the retail sale of these and related items. The Applicant’s mark, on the other hand, covers mobile phone products, specifically: “Mobile phones; Keyboards for mobile phones; Cases for mobile phones; Straps for mobile phones; Stands adapted for mobile phones; Leather cases for mobile phones; Dustproof plugs for jacks of mobile phones; Battery chargers for use with mobile phones; Armbands specially adapted for personal electronic devices, namely, mobile phones, MP3 players; Fitted plastic films known as skins for covering and protecting electronic apparatus, namely, mobile phones, portable media players, personal digital assistants, portable computers, tablets; Cell phone faceplates; headsets for mobile phones; Hands free devices for mobile-phones; Covers for smartphones” in Class 9.
The parties’ respective goods are limited to very particular fields and uses. Moreover, a review of the Cited Registrant’s website: http://www.momox.co.uk/ shows the mark in the Cited Registration is used for an online retail website in Europe that buys old books, CDs, DVDs and games. See Cited Registrant’s website (printouts attached as evidence). A review of the Cited Registrant’s website does not show any use to market and sell Class 9 goods branded under the MOMOX mark. Instead, the mark appears to be used to sell third party branded goods. The Cited Registration is based on an extension of an intentional registration. As a result, the Cited Registrant has not yet had to file evidence of use in U.S. commerce.
In contrast, the Applicant’s mark and underlying products are well-known in the mobile phone industry. Applicant has been recognized with numerous awards and accolades, among them:
· Red Dot Award – Product Design 2014 · Macworld Asia The Best – Best Brand in Power Category Award · Global iBrands Top 20 · Hong Kong Star Brand – Corporate Award · Hong Kong Smart Gifts Design Awards
See attached evidence.
Applicant’s clients include several well-known international brands, such as: Samsung, Apple, Softbank, Virgin Megastore, etc. (see attached evidence).
Moreover, Applicant’s MOMAX brand participated in a Mobile Accessory Partnership Program with SAMSUNG as well as in CES (a well-known consumer electronics tradeshow) since 2013 (see attached evidence). Famous celebrities who have appeared in media interacting with the “MOMAX” brand include actors Benedict Cumberbatch & Tilda Swinton (see attached evidence and Applicant’s website at http://www.momax.net/news/)
The general rule is that if goods/services 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, even if the marks are identical, confusion is not likely. TMEP 1207.01(a)(i). See, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); 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) related to the photocopying field).
Applicant respectfully submits that its mobile phone products are entirely different from the recording products and online retail services covered by the Cited Registration. Even though the goods covered by the marks at issue can be generally categorized together within Class 9, they are Class 9 goods with a very specific and specialized purpose that are marketed to, and used by, a separate and unique set of consumers.
The fact that the marks are broadly categorized in Class 9 does not mean that consumers will assume that they originate from the same
source. Applicant’s identification of goods is clear as to the manner and industry for which its goods will be used. Accordingly,
Applicant’s goods are unrelated to the goods/services covered by the Cited Registration. B. The Marks Differ in Sound, Appearance and Commercial Impression
Applicant respectfully submits that there is no likelihood of consumer confusion between its mark and the Cited Registration because the marks look and sound different and convey distinctly different commercial impressions.
In determining likelihood of confusion between two marks, the Examining Attorney must look to the appearance, sound, connotation and commercial impression of the marks in question. In re E.I. du Pont de Nemourts & Co., 476 F. 2d 1357 (CCPA 1973). It is a well-established rule of trademark law that the primary issue in an analysis of likelihood of confusion is whether the marks create the same overall commercial impression. Analysis of likelihood of confusion cannot be predicated on dissection of a mark. Franklin Mint Corp. v. Master Mfg. Co., 212 USPQ 233, 234 (CCPA 1981)(“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”).
The term MOMAX in Applicant’s mark is a fanciful combination of the words “mobile” and “maximum” – with the first two letters “MO-” derived from “mobile” and “-MAX” from “maximum.” Applicant’s website states:
“MOMAX, the name originated from the words “Mobile” and “Max”, implies that we strive to be the leading brilliant brand of mobile technology products by revealing the spirit of innovation.”
See Applicant’s website www.momax.net and attached website printout.
The different spelling in each mark creates significant differences. The marks do not appear or sound the same and Applicant’s mark has a particular meaning, creating a unique commercial impression. As a result, there is no likelihood of consumer confusion.
Applicant’s mark and the Cited Registration are distinguishable even though they may share a point of similarity. Indeed, the general rule is that the mere presence in each of two marks of the same term is not necessarily sufficient to support a holding of likelihood of confusion. Tektronix, Inc. v. Daktronics, Inc., 189 USPQ 693 (CCPA 1976) (TEKTRONIX for electronic measuring device and DAKTRONICS and Design for electronic voting systems not confusingly similar); In re Bed & Breakfast Registry, 229 USPQ 818 (Fed. Cir. 1986) (BED AND BREAKFAST REGISTRY and BED AND BREAKFAST INTERNATIONAL not confusingly similar); Colgate-Palmolive Co. v. Carter-Wallace, Inc., 167 USPQ 529 (CCPA 1970) (“mere presence of the word ‘peak’ in the trademark PEAK PERIOD does not by reason of that fact alone create a likelihood of confusion or deception [with the mark PEAK]”); In re Ferrero, 178 USPQ 167, 168 (CCPA 1973) (In finding no likelihood of confusion between TIC TAC for candy and TIC TAC TOE for ice cream, the Appeals Court stated “the Board has made too much of the indisputable fact that TIC TAC is two thirds of TIC TAC TOE”).
In assessing similarity, marks must be examined in their entireties. See, e.g., Mr. Hero Sandwich Systems, Inc. v. Roman Meal Company, 228 USPQ 364 (Fed. Cir. 1986) (ROMANBURGER not confusingly similar to ROMAN or ROMAN MEAL); Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ 2d 1321 (TTAB 1992) (MRS. FIELDS not confusingly similar to FIELDS or MARSHALL FIELDS). Furthermore, “the similarities and dissimilarities between the two marks must be considered.” See, In re Electrolyte Laboratories, Inc., 16 USPQ 2d 1239 (Fed. Cir. 1990) (“K+” not confusingly similar to “K+EFF”).
This “anti-dissection” rule is based upon the theory that it is the whole mark, rather than its component parts, which makes a commercial impression on the average consumer. See, e.g., J. Thomas McCarthy, Trademarks and Unfair Competition Sec. 23.41 at 23-173 (4th ed.):
A mark should not be dissected or split up into component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important.
Applicant respectfully submits that by focusing solely on shared letters in the respective marks, the Examining Attorney inappropriately dissected Applicant’s mark and failed to consider the differences between the marks.
A careful re-examination of the appearance, sound and overall commercial impression of Applicant’s mark and the Cited Registration, particularly in light of the arguments contained herein, compels a conclusion of no confusing similarity between them.
C. Differences in Channels of Trade and Sophistication of Consumers
Applicant’s goods travel in different channels of trade than the goods/services covered by the Cited Registration. If the goods of one party are sold to one set of buyers in a different marketing context than the goods of another seller, the likelihood that a single group of buyers will be confused by similar trademarks is less than if both parties sold their goods/services through the same channels of distribution. Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388 (Fed. Cir. 1992) (no likelihood of confusion between E.D.S. for computer services and EDS for power supplies and battery chargers.).
Applicant offers mobile phone products and markets its goods to consumers seeking mobile phone products. In contrast, the Cited Registrant resells used books, CDs, DVDs and games via an online trade-in marketplace. There is clearly no overlap in the goods and services and their respective channels of trade.
Moreover, purchasers and users of the goods/services covered by the parties’ respective marks are sophisticated. Circumstances suggesting care in purchasing may tend to minimize likelihood of confusion. TMEP 1207.01(d)(vii). Highly sophisticated and specialized goods, which are likely to be purchased only with care and deliberation after investigation to determine suitability for specific needs are less likely to be confused than if the marks were both used to purchase inexpensive over the counter items. See In re Software Design, Inc., 220 U.S.P.Q. 662, 663 (TTAB 1983) (DOX for computer programming services and DOC’S for custom manufacture of computer systems held unlikely to be confused even though services are related on ground that services were highly sophisticated, technical, relatively expensive and likely to be purchased after careful investigation and deliberation).
The goods and services covered by the parties’ respective marks all serve a particular specialized purpose. Purchasers and users of such specialized goods and services are sophisticated and will seek out the products and services with great care and deliberation, thereby minimizing any likelihood of confusion with the Applicant’s mark. Therefore, the goods and services offered by the parties appeal to different customers, exist for distinct purposes, and as a result, are in no sense likely to cause confusion.
Summary of Remarks
Applicant respectfully submits that in view of the reasons set forth above there is no likelihood of confusion between the Applicant’s mark and the Cited Registration due to (a) differences between the goods/services, (b) differences between the marks and their commercial impressions and (c) the sophistication of the parties’ customers and dissimilarity of trade channels. Therefore, the Cited Registration should not bar the Applicant’s application.
Applicant, therefore, respectfully requests that the application be approved for publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_672452481-20170502094342814533_._www-momox-co-uk.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\871\145\87114597\xml3\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\871\145\87114597\xml3\ROA0003.JPG | |
| ORIGINAL PDF FILE | evi_672452481-20170502094342814533_._momax_2017.pdf |
| CONVERTED PDF FILE(S) (27 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\871\145\87114597\xml3\ROA0004.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\871\145\87114597\xml3\ROA0005.JPG | |
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| \\TICRS\EXPORT17\IMAGEOUT17\871\145\87114597\xml3\ROA0030.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Cited Registrant's website Applicant's marketing materials |
| ADDITIONAL STATEMENTS SECTION | |
| SIGNIFICANCE OF MARK | MOMAX appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance. The word(s) MOMAX has no meaning in a foreign language. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Roberto Ledesma/ |
| SIGNATORY'S NAME | Roberto Ledesma |
| SIGNATORY'S POSITION | Attorney for Applicant, New York state bar member |
| DATE SIGNED | 05/02/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue May 02 09:49:37 EDT 2017 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.X-20 170502094937967232-871145 97-590c3f513acbe67ca44531 5bce7462221e1571f1d1c18ad 1ecfac4c9432817170-N/A-N/ A-20170502094342814533 |
| 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) |
REMARKS
In an office action dated November 4, 2016, the Examining Attorney partially preliminarily refused registration of the Application as to Class 9 only on the ground that the applied-for mark is likely to be confused with MOMAX, Registration No. 4159595 for, in pertinent part, “Apparatus for recording, transmission or reproduction of sound or images; CDs, DVDs, floppy discs, DVD-Rs, DVD-RWs, DVD-RAMs, HD-DVDs, magnetic-optical discs, CD-ROMs, CD-Rs, CD-RWs, audio CDs, super audio CDs, audio cassettes, record discs, flash cards, smart cards, secure digital cards, computer memories, record mini-discs, hard disc drives, computer servers and proxy computer servers all sold blank; data processing equipment; computers; apparatus and instruments for switching, conducting, transforming, accumulating, regulating and controlling electricity, namely, conduits; blank magnetic data carriers; computer programs and software for inventory management in the field of retail sales” in Class 9 and “Retail and wholesale store services featuring CDs, DVDs, floppy discs, DVD-Rs, DVD-RWs, DVD-RAMs, HD-DVDs, magnetic-optical discs, CD-ROMs, CD-Rs, CD-RWs, audio CDs, super audio CDs, audio cassettes, record discs, flash cards, smart cards, secure digital cards, computer memories, record mini-discs, hard disc drives, computer servers and proxy computer servers, computer games, computer game consoles, computer game apparatus, books, catalogues and illustrated books; on-line retail store services featuring a wide variety of consumer goods of others; business services, namely, managing invoices; accounting for electronic order systems; managing commercial transactions, for others, via online shops; sales promotion services; procurement services for third parties, namely, business acquisition of goods and services for other companies; collection and systemization of information into computer databases in the field of business inventory; business management, professional business and business organizational consultation” in Class 35 (the “Cited Registration”).
The Cited Registration is owned by German entity Momox GmbH (the “Cited Registrant”).
For the reasons set forth in this response, Applicant respectfully submits that the involved marks and goods/services are sufficiently distinct such that consumer confusion is not likely and the Cited Registration should not bar Applicant’s application from proceeding to registration.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
A. The Parties’ Goods/Services are Not Related
Central to the likelihood of confusion analysis is whether the marks, as applied to the respective goods/services, so resemble each other that the purchasing public would mistakenly assume that the applicant’s goods/services originate from the same source as the goods in the cited registration. See Paula Payne Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (CCPA 1973).
The Cited Registration covers, in relevant part, CDs, DVDs and other apparatus for recording, and the retail sale of these and related items. The Applicant’s mark, on the other hand, covers mobile phone products, specifically: “Mobile phones; Keyboards for mobile phones; Cases for mobile phones; Straps for mobile phones; Stands adapted for mobile phones; Leather cases for mobile phones; Dustproof plugs for jacks of mobile phones; Battery chargers for use with mobile phones; Armbands specially adapted for personal electronic devices, namely, mobile phones, MP3 players; Fitted plastic films known as skins for covering and protecting electronic apparatus, namely, mobile phones, portable media players, personal digital assistants, portable computers, tablets; Cell phone faceplates; headsets for mobile phones; Hands free devices for mobile-phones; Covers for smartphones” in Class 9.
The parties’ respective goods are limited to very particular fields and uses. Moreover, a review of the Cited Registrant’s website: http://www.momox.co.uk/ shows the mark in the Cited Registration is used for an online retail website in Europe that buys old books, CDs, DVDs and games. See Cited Registrant’s website (printouts attached as evidence). A review of the Cited Registrant’s website does not show any use to market and sell Class 9 goods branded under the MOMOX mark. Instead, the mark appears to be used to sell third party branded goods. The Cited Registration is based on an extension of an intentional registration. As a result, the Cited Registrant has not yet had to file evidence of use in U.S. commerce.
In contrast, the Applicant’s mark and underlying products are well-known in the mobile phone industry. Applicant has been recognized with numerous awards and accolades, among them:
· Red Dot Award – Product Design 2014
· Macworld Asia The Best – Best Brand in Power Category Award
· Global iBrands Top 20
· Hong Kong Star Brand – Corporate Award
· Hong Kong Smart Gifts Design Awards
See attached evidence.
Applicant’s clients include several well-known international brands, such as: Samsung, Apple, Softbank, Virgin Megastore, etc. (see attached evidence).
Moreover, Applicant’s MOMAX brand participated in a Mobile Accessory Partnership Program with SAMSUNG as well as in CES (a well-known consumer electronics tradeshow) since 2013 (see attached evidence). Famous celebrities who have appeared in media interacting with the “MOMAX” brand include actors Benedict Cumberbatch & Tilda Swinton (see attached evidence and Applicant’s website at http://www.momax.net/news/)
The general rule is that if goods/services 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, even if the marks are identical, confusion is not likely. TMEP 1207.01(a)(i). See, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); 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) related to the photocopying field).
Applicant respectfully submits that its mobile phone products are entirely different from the recording products and online retail services covered by the Cited Registration. Even though the goods covered by the marks at issue can be generally categorized together within Class 9, they are Class 9 goods with a very specific and specialized purpose that are marketed to, and used by, a separate and unique set of consumers.
The fact that the marks are broadly categorized in Class 9 does not mean that consumers will assume that they originate from the same
source. Applicant’s identification of goods is clear as to the manner and industry for which its goods will be used. Accordingly,
Applicant’s goods are unrelated to the goods/services covered by the Cited Registration.
B. The Marks Differ in Sound, Appearance and Commercial Impression
Applicant respectfully submits that there is no likelihood of consumer confusion between its mark and the Cited Registration because the marks look and sound different and convey distinctly different commercial impressions.
In determining likelihood of confusion between two marks, the Examining Attorney must look to the appearance, sound, connotation and commercial impression of the marks in question. In re E.I. du Pont de Nemourts & Co., 476 F. 2d 1357 (CCPA 1973). It is a well-established rule of trademark law that the primary issue in an analysis of likelihood of confusion is whether the marks create the same overall commercial impression. Analysis of likelihood of confusion cannot be predicated on dissection of a mark. Franklin Mint Corp. v. Master Mfg. Co., 212 USPQ 233, 234 (CCPA 1981)(“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”).
The term MOMAX in Applicant’s mark is a fanciful combination of the words “mobile” and “maximum” – with the first two letters “MO-” derived from “mobile” and “-MAX” from “maximum.” Applicant’s website states:
“MOMAX, the name originated from the words “Mobile” and “Max”, implies that we strive to be the leading brilliant brand of mobile technology products by revealing the spirit of innovation.”
See Applicant’s website www.momax.net and attached website printout.
The different spelling in each mark creates significant differences. The marks do not appear or sound the same and Applicant’s mark has a particular meaning, creating a unique commercial impression. As a result, there is no likelihood of consumer confusion.
Applicant’s mark and the Cited Registration are distinguishable even though they may share a point of similarity. Indeed, the general rule is that the mere presence in each of two marks of the same term is not necessarily sufficient to support a holding of likelihood of confusion. Tektronix, Inc. v. Daktronics, Inc., 189 USPQ 693 (CCPA 1976) (TEKTRONIX for electronic measuring device and DAKTRONICS and Design for electronic voting systems not confusingly similar); In re Bed & Breakfast Registry, 229 USPQ 818 (Fed. Cir. 1986) (BED AND BREAKFAST REGISTRY and BED AND BREAKFAST INTERNATIONAL not confusingly similar); Colgate-Palmolive Co. v. Carter-Wallace, Inc., 167 USPQ 529 (CCPA 1970) (“mere presence of the word ‘peak’ in the trademark PEAK PERIOD does not by reason of that fact alone create a likelihood of confusion or deception [with the mark PEAK]”); In re Ferrero, 178 USPQ 167, 168 (CCPA 1973) (In finding no likelihood of confusion between TIC TAC for candy and TIC TAC TOE for ice cream, the Appeals Court stated “the Board has made too much of the indisputable fact that TIC TAC is two thirds of TIC TAC TOE”).
In assessing similarity, marks must be examined in their entireties. See, e.g., Mr. Hero Sandwich Systems, Inc. v. Roman Meal Company, 228 USPQ 364 (Fed. Cir. 1986) (ROMANBURGER not confusingly similar to ROMAN or ROMAN MEAL); Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ 2d 1321 (TTAB 1992) (MRS. FIELDS not confusingly similar to FIELDS or MARSHALL FIELDS). Furthermore, “the similarities and dissimilarities between the two marks must be considered.” See, In re Electrolyte Laboratories, Inc., 16 USPQ 2d 1239 (Fed. Cir. 1990) (“K+” not confusingly similar to “K+EFF”).
This “anti-dissection” rule is based upon the theory that it is the whole mark, rather than its component parts, which makes a commercial impression on the average consumer. See, e.g., J. Thomas McCarthy, Trademarks and Unfair Competition Sec. 23.41 at 23-173 (4th ed.):
A mark should not be dissected or split up into component parts
and each part then compared with corresponding parts of the
conflicting mark to determine the likelihood of confusion. It is the
impression that the mark as a whole creates on the average
reasonably prudent buyer and not the parts thereof, that is important.
Applicant respectfully submits that by focusing solely on shared letters in the respective marks, the Examining Attorney inappropriately dissected Applicant’s mark and failed to consider the differences between the marks.
A careful re-examination of the appearance, sound and overall commercial impression of Applicant’s mark and the Cited Registration, particularly in light of the arguments contained herein, compels a conclusion of no confusing similarity between them.
C. Differences in Channels of Trade and Sophistication of Consumers
Applicant’s goods travel in different channels of trade than the goods/services covered by the Cited Registration. If the goods of one party are sold to one set of buyers in a different marketing context than the goods of another seller, the likelihood that a single group of buyers will be confused by similar trademarks is less than if both parties sold their goods/services through the same channels of distribution. Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388 (Fed. Cir. 1992) (no likelihood of confusion between E.D.S. for computer services and EDS for power supplies and battery chargers.).
Applicant offers mobile phone products and markets its goods to consumers seeking mobile phone products. In contrast, the Cited Registrant resells used books, CDs, DVDs and games via an online trade-in marketplace. There is clearly no overlap in the goods and services and their respective channels of trade.
Moreover, purchasers and users of the goods/services covered by the parties’ respective marks are sophisticated. Circumstances suggesting care in purchasing may tend to minimize likelihood of confusion. TMEP 1207.01(d)(vii). Highly sophisticated and specialized goods, which are likely to be purchased only with care and deliberation after investigation to determine suitability for specific needs are less likely to be confused than if the marks were both used to purchase inexpensive over the counter items. See In re Software Design, Inc., 220 U.S.P.Q. 662, 663 (TTAB 1983) (DOX for computer programming services and DOC’S for custom manufacture of computer systems held unlikely to be confused even though services are related on ground that services were highly sophisticated, technical, relatively expensive and likely to be purchased after careful investigation and deliberation).
The goods and services covered by the parties’ respective marks all serve a particular specialized purpose. Purchasers and users of such specialized goods and services are sophisticated and will seek out the products and services with great care and deliberation, thereby minimizing any likelihood of confusion with the Applicant’s mark. Therefore, the goods and services offered by the parties appeal to different customers, exist for distinct purposes, and as a result, are in no sense likely to cause confusion.
Summary of Remarks
Applicant respectfully submits that in view of the reasons set forth above there is no likelihood of confusion between the Applicant’s mark and the Cited Registration due to (a) differences between the goods/services, (b) differences between the marks and their commercial impressions and (c) the sophistication of the parties’ customers and dissimilarity of trade channels. Therefore, the Cited Registration should not bar the Applicant’s application.
Applicant, therefore, respectfully requests that the application be approved for publication.
