| 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 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87417463 |
| LAW OFFICE ASSIGNED | LAW OFFICE 102 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87417463/mark.png |
| LITERAL ELEMENT | AEON |
| 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) | |
|
1. Likelihood of Confusion Rejection The Examining Attorney has refused registration of Applicant’s AEON mark (the “Mark”) as being purportedly likely to cause confusion with the marks and associated goods of US Registrations 3736572 and 2018236 for EON in character format and typed form (“Registrant’s Marks”). Applicant respectfully asserts that there is minimal likelihood of confusion with respect to this registration based on the goods as amended in this response, and therefore requests that the application be allowed for at least the reasons below. The question of likelihood of confusion between marks is “not related to the nature of the mark,” but rather to its effect “when applied to the goods of the applicant.” The only relevant application is made in the marketplace. The words ‘when applied’ do not refer to a mental exercise, but to all of the known circumstances surrounding the use of a mark.” In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1360-61 (C.C.P.A. 1973). In determining whether there is a likelihood of confusion, the law looks to many factors, particularly those enunciated in In re E.I. du Pont, e.g., the similarity of the marks; the similarity of the goods or services such that one party’s goods will be mistaken for those of the other party; the channels of distribution of the goods and services; the crowding of the field/strength of senior user’s mark; as well as other factors. Id. No single factor is dispositive in all cases and “each [factor] may from case to case play a dominant role.” Id. at 1357. Application of the most relevant du Pont factors in this case demonstrates that little to no likelihood of confusion exists between the Applicant’s Mark (with goods as amended) and Registrant’s marks.
A. Applicant’s Mark Conveys a Significantly Different Commercial Impression From Both of Registrant’s Marks; Therefore Confusion Between the Two is Unlikely Applicant’s AEON mark is distinctly different in appearance, pronunciation, and connotation from Registrant’s EON marks. Initially it must be noted that, although the marks share some letters, Applicant’s mark starts with a different letter, A, which changes its appearance when viewed visually, as well as its meaning and pronunciation. Relevant to this rejection, the Trademark Trial and Appeal Board (TTAB) has held that there can be cases where there is no likelihood of confusion between two marks even if they differ by a single letter. See, e.g., In re Reach Electronics, 175 U.S.P.Q. 734 (T.T.A.B. 1972) (holding that REACH and REAC are not likely to be confused, even though the goods associated with each mark were in the same general industry and the marks were similar). Here, Applicant’s Mark and Registrant’s Mark differ significantly more than those in In re Reach Electronics, making confusion even less likely. Specifically, the terms AEON and EON, when viewed as text, provide an entirely different visual impression. The first letter of a word is typically the most significant in imputing meaning and impression, and in this case the first letters “A” and “E,” respectively, are distinctly different. In addition, the lengths of the two words are different as in In re Reach Electronics, which further distinguishes them. In this era of common use of online resources for purchasing information such as pricing and reviews, a user will likely see these marks in visual form, and such seeing is very likely to cause a user to receive them as two entirely different words. Further, AEON and EON can have distinctly different connotations. Differences in connotation between the two marks contribute to their overall
dissimilarity and detract from any likelihood of confusion. See Revlon, Inc. v. Jerrell, Inc.. 11 U.S.P.Q.2d 1612, 1616 (S.D.N.Y. 1989) (“… differences of connotation and
meaning are key factors in determining the likelihood of confusion. Differing connotations themselves can be determinative, even where identical words with identical meanings are used.”) Aeon is
commonly defined in, for example, dictionary.com as: “one of a class of powers or beings ... emanating from the Supreme Being ...” (http://www.dictionary.com/browse/aeon), thereby connoting something
of a higher power or divinity. The word eon, on the other hand, connotes something about a long temporal period – a long time; many years. These are distinctly different connotations, which further
support little to no likelihood of confusion. Even, as in Revlon, Inc., where identical words with identical meanings are used (in this case the words are different in spelling
and appearance, and can also have separate and distinct meanings). Applicant notes that the term “aeon” can also have a time related meaning in some dictionary definitions. However, in American English, grammatical references state that eon is preferred in the United States and Canada (see, e.g., http://grammarist.com/spelling/aeon-eon/) for temporal uses (thereby at least implying that aeon should be afforded other definitions if used at all in American language). Further, Applicant acknowledges that while there can be overlap in meaning between aeon and eon, in Applicant’s intended usage and connotations, the term is intended to suggest a particular high quality performance quality or characteristic, as if, for example, the devices could be seen as emanating from a supreme being or the divine, which is the standard philosophical definition of aeon (see, e.g., the Oxford English Dictionary at http://en.oxforddictionaries.com/definition/aeon, which defines aeon as “2 Philosophy (in Neoplatonism, Platonism, and Gnosticism) a power existing from eternity; an emanation or phase of the supreme deity.” Eon, on the other hand, merely connotes a long time period - it does not connote higher power, divinity, and the like. As such, the two marks are sufficiently distinguishable as to present minimal likelihood of confusion based on their visual appearance and associated connotations, and the application should be allowed for at least this reason.
B. Registrant’s EON Marks Are Only Entitled to a Narrow Scope of Protection DuPont also mandates that the strength of Registrant’s mark and the scope of protection to which it is entitled be examined. According to TESS, there are at least 64 marks currently registered with the United States Patent and Trademark Office which contain the term "EON,” and over 40 which contain the term “AEON,” as well as dozens of other pending registrations using these terms. Further, dozens of these registrations and pending applications are in Class 9 (where both Applicant’s AEON and Registrant’s EON are filed). Case law holds that a mark that contains a term frequently used in connection with similar services is less likely to create a likelihood of confusion. See In re August Storck KG, 218 USPQ 823, 825 (TTAB 1983). In this case both EON and AEON are frequently used and their registrations allowed on marks for similar goods. As leading commentators have stated, a trademark is weak if “it ha[s] been used many times by other businesses to identify many types of products and services.” J. Gilson, 1 Trademark Protection and Practice §5.05[6], p. 5-84 (1995 ed.), citing Triumph Hosiery Mills, Inc. v. Triumph International Corp., 308 F.2d 196 (2d Cir. 1962). “[A] mark which is hemmed in on all sides by similar marks on similar goods cannot be very ‘distinctive.’ It is merely one of a crowd of marks. In such a crowd, customers will not likely be confused between any two of the crowd and may have learned to carefully pick out one from the other. . . . Thus, “[i]n a ‘crowded’ field of similar marks, each member of the crowd is relatively ‘weak’ in its ability to prevent use by others in the crowd.” See J. McCarthy, McCarthy on Trademarks and Unfair Competition, §11.85, at 11-1451 (4th ed. 1996); Int’l Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d at 819, 325, citing Miss World (UK), Ltd. v. Mrs. America Pageants, Inc., 856 F.2d 1445, 1449 (9th Cir. 1988). There is a similar crowding of the field in this application. As such, the number of marks similar to those of Registrant’s serve to weaken Registrant's marks and afford them a very narrow scope of protection. This is evidenced by, for example, the fact that the USPTO has examined numerous EON and AEON-based marks and has found many such marks registerable despite the existence of numerous similar marks for similar goods or services in related fields.This demonstrates the PTO’s acknowledgement of the weakness of EON and AEON-based marks and their entitlement to only a narrow scope of protection. The result is that there are many sellers in the market using similar registered marks for similar products. Considered in context, Registrant’s Marks should be afforded such narrow protection that they cannot exclude the right of others, such as Applicant, to use and register the visually and definitionally distinctive AEON mark for different products (different as reflected by the goods listing as amended in this response solely to headphone goods). In this case, both AEON and EON are in crowded fields, and the therefore the scope of protection of EON should be limited accordingly, and the application should be allowed for at least this reason.
C. Registrant’s and Applicant’s Goods (As Amended) are Sufficiently Different to Avoid Confusion Even where two marks are identical, the Board frequently holds that there is no likelihood of confusion “if the goods or services in question are
not related 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.” TMEP § 1207.01(a)(i) (citing Local Trademarks, Inc. v. Handy Boys, Inc., 16 U.S.P.Q.2d 1156 (T.T.A.B. 1990) (LITTLE PLUMBER for drain opener not
confusingly similar to LITTLE PLUMBER and Design for advertising services). As noted previously herein, the marks in this case are not identical, and are in fact distinctive for the reasons described
previously. Applicant has amended the goods in this response to narrow them solely to headphones to further distinguish them from Registrant’s goods. The proper
analysis is of the respective goods listed by the Applicant (as amended) and those listed in Registrant's marks. See TMEP § 1207.091(a)(iii) (“The nature and scope of a party’s goods or services must
be determined on the basis of the goods or services recited in the application or registration.”) Here, while the goods as initially listed in the application had
some overlap, as amended, there is no overlap. The fact that both marks’ goods may include audio equipment, by itself, is not sufficient for a finding of likelihood of confusion. In a similar case, the TTAB held that for confusion to be likely, “there must be some similarity between the goods and services at issue . . . beyond the fact that each involves the use of computers.” Reynolds & Reynolds v. I.E. Systems, Inc., 5 U.S.P.Q.2d 1749, 1751 (TTAB 1987). While Reynolds & Reynolds involved computers, this application is analogous since both Applicant and Registrant’s goods are in the general class of audio equipment. It is well established that there is no “per se” rule mandating that likelihood of confusion is to be found in all cases where the goods or services in question involve the same general category of goods. See, e.g., Information Resources v. X*Press Information, 6 U.S.P.Q.2d 1034, 1038 (TTAB 1988). As the TTAB stated in X*Press, such a rule would ignore the “almost limitless number of specialized products and specialized uses in the [] industry,” would “fail[] to consider the realities of the marketplace,” and would, therefore, be “too rigid and restrictive an approach.” Id. Because mere involvement with audio electronics is insufficient to find marks confusingly similar, registrations are routinely granted to even identical marks owned by different parties both in connection with similar products with different functions. See, e.g., Reg. Nos. 1,574,456 and 1,590,652 (CADENCE registered by one party for “computer programs and accompanying manuals sold as a unit for a scheduling system for health care and public health institutions and programs” and another party for “computer software for the design, testing, fabrication and installation of integrated circuits”). Similarly, Applicant’s Mark (solely with headphone goods as amended) can coexist without confusion with those of Registrant. For at least the above-described reasons, Applicant respectively asserts that differences between the mark, the goods, their commercial presentation, and crowding of the field are sufficient to make confusion unlikely. Applicant therefore requests that the reject be withdrawn and the application be allowed. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Audio amplifiers; Audio headphones; Audio speakers; Headphones; Pre-amplifiers; Audio headphones; Protective cases for audio equipment in the nature of headphones; Stereo headphones | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | Stereo headphones |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Steven C. Tietsworth/ |
| SIGNATORY'S NAME | Steven C. Tietsworth, Esq. |
| SIGNATORY'S POSITION | Attorney of Record, CA State Bar Member |
| SIGNATORY'S PHONE NUMBER | 858 224-5939 |
| DATE SIGNED | 01/18/2018 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Jan 18 20:59:28 EST 2018 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 180118205928322484-874174 63-510a6a148a6d8f0e09aee2 3db3456645d83f764c48f4547 1cb1c62c7d83147f0-N/A-N/A -20180118204103173626 |
| 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 09/20/2020) |
1. Likelihood of Confusion Rejection
The Examining Attorney has refused registration of Applicant’s AEON mark (the “Mark”) as being purportedly likely to cause confusion with the marks and associated goods of US Registrations 3736572 and 2018236 for EON in character format and typed form (“Registrant’s Marks”). Applicant respectfully asserts that there is minimal likelihood of confusion with respect to this registration based on the goods as amended in this response, and therefore requests that the application be allowed for at least the reasons below.
The question of likelihood of confusion between marks is “not related to the nature of the mark,” but rather to its effect “when applied to the goods of the applicant.” The only relevant application is made in the marketplace. The words ‘when applied’ do not refer to a mental exercise, but to all of the known circumstances surrounding the use of a mark.” In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1360-61 (C.C.P.A. 1973). In determining whether there is a likelihood of confusion, the law looks to many factors, particularly those enunciated in In re E.I. du Pont, e.g., the similarity of the marks; the similarity of the goods or services such that one party’s goods will be mistaken for those of the other party; the channels of distribution of the goods and services; the crowding of the field/strength of senior user’s mark; as well as other factors. Id. No single factor is dispositive in all cases and “each [factor] may from case to case play a dominant role.” Id. at 1357. Application of the most relevant du Pont factors in this case demonstrates that little to no likelihood of confusion exists between the Applicant’s Mark (with goods as amended) and Registrant’s marks.
A. Applicant’s Mark Conveys a Significantly Different Commercial Impression From Both of Registrant’s Marks; Therefore Confusion Between the Two is Unlikely
Applicant’s AEON mark is distinctly different in appearance, pronunciation, and connotation from Registrant’s EON marks. Initially it must be noted that, although the marks share some letters, Applicant’s mark starts with a different letter, A, which changes its appearance when viewed visually, as well as its meaning and pronunciation. Relevant to this rejection, the Trademark Trial and Appeal Board (TTAB) has held that there can be cases where there is no likelihood of confusion between two marks even if they differ by a single letter. See, e.g., In re Reach Electronics, 175 U.S.P.Q. 734 (T.T.A.B. 1972) (holding that REACH and REAC are not likely to be confused, even though the goods associated with each mark were in the same general industry and the marks were similar). Here, Applicant’s Mark and Registrant’s Mark differ significantly more than those in In re Reach Electronics, making confusion even less likely.
Specifically, the terms AEON and EON, when viewed as text, provide an entirely different visual impression. The first letter of a word is typically the most significant in imputing meaning and impression, and in this case the first letters “A” and “E,” respectively, are distinctly different. In addition, the lengths of the two words are different as in In re Reach Electronics, which further distinguishes them. In this era of common use of online resources for purchasing information such as pricing and reviews, a user will likely see these marks in visual form, and such seeing is very likely to cause a user to receive them as two entirely different words.
Further, AEON and EON can have distinctly different connotations. Differences in connotation between the two marks contribute to their overall
dissimilarity and detract from any likelihood of confusion. See Revlon, Inc. v. Jerrell, Inc.. 11 U.S.P.Q.2d 1612, 1616 (S.D.N.Y. 1989) (“… differences of connotation and
meaning are key factors in determining the likelihood of confusion. Differing connotations themselves can be determinative, even where identical words with identical meanings are used.”) Aeon is
commonly defined in, for example, dictionary.com as: “one of a class of powers or beings ... emanating from the Supreme Being ...” (http://www.dictionary.com/browse/aeon), thereby connoting something
of a higher power or divinity. The word eon, on the other hand, connotes something about a long temporal period – a long time; many years. These are distinctly different connotations, which further
support little to no likelihood of confusion. Even, as in Revlon, Inc., where identical words with identical meanings are used (in this case the words are different in spelling
and appearance, and can also have separate and distinct meanings).
Applicant notes that the term “aeon” can also have a time related meaning in some dictionary definitions. However, in American English, grammatical references state that eon is preferred in the United States and Canada (see, e.g., http://grammarist.com/spelling/aeon-eon/) for temporal uses (thereby at least implying that aeon should be afforded other definitions if used at all in American language).
Further, Applicant acknowledges that while there can be overlap in meaning between aeon and eon, in Applicant’s intended usage and connotations, the term is intended to suggest a particular high quality performance quality or characteristic, as if, for example, the devices could be seen as emanating from a supreme being or the divine, which is the standard philosophical definition of aeon (see, e.g., the Oxford English Dictionary at http://en.oxforddictionaries.com/definition/aeon, which defines aeon as “2 Philosophy (in Neoplatonism, Platonism, and Gnosticism) a power existing from eternity; an emanation or phase of the supreme deity.” Eon, on the other hand, merely connotes a long time period - it does not connote higher power, divinity, and the like. As such, the two marks are sufficiently distinguishable as to present minimal likelihood of confusion based on their visual appearance and associated connotations, and the application should be allowed for at least this reason.
B. Registrant’s EON Marks Are Only Entitled to a Narrow Scope of Protection
DuPont also mandates that the strength of Registrant’s mark and the scope of protection to which it is entitled be examined. According to TESS, there are at least 64 marks currently registered with the United States Patent and Trademark Office which contain the term "EON,” and over 40 which contain the term “AEON,” as well as dozens of other pending registrations using these terms. Further, dozens of these registrations and pending applications are in Class 9 (where both Applicant’s AEON and Registrant’s EON are filed). Case law holds that a mark that contains a term frequently used in connection with similar services is less likely to create a likelihood of confusion. See In re August Storck KG, 218 USPQ 823, 825 (TTAB 1983). In this case both EON and AEON are frequently used and their registrations allowed on marks for similar goods.
As leading commentators have stated, a trademark is weak if “it ha[s] been used many times by other businesses to identify many types of products and services.” J. Gilson, 1 Trademark Protection and Practice §5.05[6], p. 5-84 (1995 ed.), citing Triumph Hosiery Mills, Inc. v. Triumph International Corp., 308 F.2d 196 (2d Cir. 1962). “[A] mark which is hemmed in on all sides by similar marks on similar goods cannot be very ‘distinctive.’ It is merely one of a crowd of marks. In such a crowd, customers will not likely be confused between any two of the crowd and may have learned to carefully pick out one from the other. . . . Thus, “[i]n a ‘crowded’ field of similar marks, each member of the crowd is relatively ‘weak’ in its ability to prevent use by others in the crowd.” See J. McCarthy, McCarthy on Trademarks and Unfair Competition, §11.85, at 11-1451 (4th ed. 1996); Int’l Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d at 819, 325, citing Miss World (UK), Ltd. v. Mrs. America Pageants, Inc., 856 F.2d 1445, 1449 (9th Cir. 1988).
There is a similar crowding of the field in this application. As such, the number of marks similar to those of Registrant’s serve to weaken Registrant's marks and afford them a very narrow scope of protection. This is evidenced by, for example, the fact that the USPTO has examined numerous EON and AEON-based marks and has found many such marks registerable despite the existence of numerous similar marks for similar goods or services in related fields.This demonstrates the PTO’s acknowledgement of the weakness of EON and AEON-based marks and their entitlement to only a narrow scope of protection. The result is that there are many sellers in the market using similar registered marks for similar products. Considered in context, Registrant’s Marks should be afforded such narrow protection that they cannot exclude the right of others, such as Applicant, to use and register the visually and definitionally distinctive AEON mark for different products (different as reflected by the goods listing as amended in this response solely to headphone goods).
In this case, both AEON and EON are in crowded fields, and the therefore the scope of protection of EON should be limited accordingly, and the application should be allowed for at least this reason.
C. Registrant’s and Applicant’s Goods (As Amended) are Sufficiently Different to Avoid Confusion
Even where two marks are identical, the Board frequently holds that there is no likelihood of confusion “if the goods or services in question are
not related 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.” TMEP § 1207.01(a)(i) (citing Local Trademarks, Inc. v. Handy Boys, Inc., 16 U.S.P.Q.2d 1156 (T.T.A.B. 1990) (LITTLE PLUMBER for drain opener not
confusingly similar to LITTLE PLUMBER and Design for advertising services). As noted previously herein, the marks in this case are not identical, and are in fact distinctive for the reasons described
previously. Applicant has amended the goods in this response to narrow them solely to headphones to further distinguish them from Registrant’s goods. The proper
analysis is of the respective goods listed by the Applicant (as amended) and those listed in Registrant's marks. See TMEP § 1207.091(a)(iii) (“The nature and scope of a party’s goods or services must
be determined on the basis of the goods or services recited in the application or registration.”) Here, while the goods as initially listed in the application had
some overlap, as amended, there is no overlap.
The fact that both marks’ goods may include audio equipment, by itself, is not sufficient for a finding of likelihood of confusion. In a similar case, the TTAB held that for confusion to be likely, “there must be some similarity between the goods and services at issue . . . beyond the fact that each involves the use of computers.” Reynolds & Reynolds v. I.E. Systems, Inc., 5 U.S.P.Q.2d 1749, 1751 (TTAB 1987). While Reynolds & Reynolds involved computers, this application is analogous since both Applicant and Registrant’s goods are in the general class of audio equipment. It is well established that there is no “per se” rule mandating that likelihood of confusion is to be found in all cases where the goods or services in question involve the same general category of goods. See, e.g., Information Resources v. X*Press Information, 6 U.S.P.Q.2d 1034, 1038 (TTAB 1988). As the TTAB stated in X*Press, such a rule would ignore the “almost limitless number of specialized products and specialized uses in the [] industry,” would “fail[] to consider the realities of the marketplace,” and would, therefore, be “too rigid and restrictive an approach.” Id.
Because mere involvement with audio electronics is insufficient to find marks confusingly similar, registrations are routinely granted to even identical marks owned by different parties both in connection with similar products with different functions. See, e.g., Reg. Nos. 1,574,456 and 1,590,652 (CADENCE registered by one party for “computer programs and accompanying manuals sold as a unit for a scheduling system for health care and public health institutions and programs” and another party for “computer software for the design, testing, fabrication and installation of integrated circuits”). Similarly, Applicant’s Mark (solely with headphone goods as amended) can coexist without confusion with those of Registrant.
For at least the above-described reasons, Applicant respectively asserts that differences between the mark, the goods, their commercial presentation, and crowding of the field are sufficient to make confusion unlikely. Applicant therefore requests that the reject be withdrawn and the application be allowed.