To the Commissioner for Trademarks:

The examiner has refused registration of the mark PERFECTO + design on the basis that it is likely to cause confusion with seven (7) marks, all for variations of words that mean “perfect” in English (PERFECTO and PERFECTA).  Only three of these marks are owned by a single entity, the others co-existing even though the registrants are different.

Applicant respectfully disagrees with this rejection for the following reasons:

1. Variations of the term PERFECT have relatively weak trademark significance and are entitled to a very narrow scope of protection because a) the term is diluted, and b) the term is highly suggestive of most goods and services, including the ones in the current application and cited registrations.

2. In light of the weakness of all the cited marks, slight differences take on greater significance, and distinctions in goods that might not be sufficient to negate likely confusion in other situations, are sufficient here to eliminate the likelihood of consumers being confused (i.e., consumers are so used to seeing this mark on different goods sold by different parties that they are less likely to think all the goods and services emanate from the same party).

3. Based on dilution, the inherent weakness of marks meaning “perfect,” and distinctions between the fields of use for each mark, Applicant’s mark will be used without serious challenge, and the register should reflect that use.

1. The Cited Marks Have Relatively Weak Trademark Significance And Are Entitled To A Very Narrow Scope of Protection

   
   

1. Dilution 

          Before analyzing the numbers involved, Applicant points out that under US law and PTO practice, foreign language words must be translated and treated as their English language equivalents. The rationale is that foreign words will be translated and perceived in the same way as corresponding  English words. Therefore, all marks meaning or derived from “PERFECT” are relevant to analyzing whether this marks is diluted. 

With the above in mind, a PTO search for marks containing variations of the word PERFECT yields 12,704  “hits.”  Even when that search is limited to class 30 there are 683 listings, with 507 listings for class 29 (classes 29 and 30 are the main “food” classes, the latter being the only class in this application).  See the first attachment to this Response.  Based on this dilution, the threshold question must be answered:  if all of these similar marks have been active and co-existing at some time, and all are “food” items that under the examiner’s analysis here would be considered “commercially related,” why should Applicant’s mark suddenly be rejected now when used on goods distinct from those listed in the cited registrations?

(Note: it would be impractical to submit complete TESS copies of thousands of marks. However, if the examiner deems such an extra submission necessary, Applicant readily will make that filing.) 

Moreover, the examiner himself has cited seven “PERFECT” variations all for food items that in a typical situation (i.e., stronger marks than present here) might be “commercially related” under typical circumstances: rice; vegetable oil; sweeteners used as ingredients in foods and beverages; dairy products; shortening and peanut oil for cooking; and corn, peanut and soybean oil.  Only three of these registrations are owned by the same entity, which means that there are five owners of nearly identical trademarks all able to co-exist on the PTO register. For example, the first mark cited by the examiner, PERFECTO for “rice” (Reg No. 4224334) was allowed despite the existence of three registrations owned by the same entity: 0973541, 0614002 and 3325852 (the second, sixth and seventh marks cited by the examiner, all for the identical mark PERFECTO used in connection with food products. Why was that possible?  The answer is obvious: this mark is diluted and slightly differences in goods, even those that all could be considered “food,” were sufficient to negate likely confusion. The same is true here: none of the cited registrations contain goods similar to those in the current application (coffee; cocoa; coffee and cocoa-based beverages; chocolate-based beverages; tea; iced tea; confectionery, namely, candy, bonbons, sweets and chocolates; Turkish delight; biscuits; crackers; wafers; chewing gums; ice cream and edible ice), so confusion is unlikely.  

Based on dilution alone, each mark containing the similar spelling must be considered relatively week.  As a result, the scope of protection for each mark is extremely narrow, and slight differences take on greater significance.  As stated in Baf Industries, v. Pro-Specialties, Inc., 206 USPQ 166, 175 (TTAB 1980), third party registrations containing similar marks, 

. . .  are relevant to show that a particular mark has been adopted and registered by so many different products embraced by said field that a registration of the mark in that trade is entitled to a narrow or restricted scope of protection.

Also See Puma v. Superaga, S.p.a., 204 USPQ 688, 691 (TTAB 1980) (narrow scope of protection for sneaker designs due to common usage).   

          While an examiner should not allow a mark on the basis of dilution alone, the proliferation of marks containing variations of the term PERFECT tends to indicate that at some point in time different entities have selected and used these terms in connection with a wide range of products.  This conclusion about selection and use is accurate despite the TTAB's frequent holdings that third party registrations are not "probative of use."  While registrations may not prove the extent of use, or if there is current use, the filing of applications and Section 8 affidavits does establish that the marks were in use at those times and to a degree more than mere token use.  Also See Spraying Systems Co. v. Delavan, Inc., 19 USPQ2d 1121, 1125 (N.D.Ill. 1991) and In re Dayco Products-Eagle Motive, Inc., 9 USPQ2d 1910, 1911 (TTAB 1988).  

          In short, marks containing variations of PERFECT are diluted and entitled to a narrow scope of protection, and distinctions in goods between the marks of Applicant and those in the cited are sufficient to eliminate a likelihood of confusion.

      b. PERFECT Is A Highly Suggestive Term With Limited Trademark Significance 

          In addition to being diluted and therefore “weak,” variations of PERFECT also are entitled to a narrow scope of protection because the word itself is highly suggestive and of limited trademark significance.  The word “perfect” is a somewhat vague (which is why it is not “descriptive”) but highly laudatory term referring to a person or “thing” that has no flaws, functions in an ideal way, provides exactly what a user is seeking, etc.  It is a word someone would use to express the sentiment that “This is exactly what I am looking for.”  In short, it is a commonly used and recognizable word in many languages, which probably is why so many trademark owners (more than 12,000 marks on file at the PTO) have adopted and used the term. However, it is not word of strong trademark significance, which is why each trademark containing a variation of PERFECT is entitled to a narrow scope of protection.           

In summary, the marks in the cited registrations are relatively weak, and distinctions in the goods of the parties (discussed below) should be sufficient to negate any likelihood of confusion. 

2.  Goods Travel in Different Channels of Trade 

          The distinctions in goods have been discussed above: Applicant’s list of goods does not contain any of the items in those cited registrations (rice; vegetable oil; sweeteners used as ingredients in foods and beverages; diary products; shortening and peanut oil for cooking; and corn, peanut and soybean oil). The converse also is true: none of the goods in the instant application (coffee; cocoa; coffee and cocoa-based beverages; chocolate-based beverages; tea; iced tea; confectionery, namely, candy, bonbons, sweets and chocolates; Turkish delight; biscuits; crackers; wafers; chewing gums; ice cream and edible ice) can be found in any of the cited registrations. 

Again, Applicant understands the general rule that goods do not have to be identical to be “commercially related,” but the principle does not apply in situations where large numbers of similar marks co-exist, each mark is entitled to a narrow scope of protection, and the distinctions in goods are clear, as they are here.  Stated simply, none of the cited registrations contain goods similar to Applicant’s chocolate and confectionery products.  

 In short, the only superficial similarity between the goods of these parties is that the classes are the same. However, these different types of products travel in distinguishable channels of trade. Therefore, for this refusal to be continued, the Examiner must be able to explain why the goods of the parties are related, as merely having something superficial to do with the same subject matter or being in the same class is not a sufficient basis for an Examiner to issue a rejection, especially when marks are diluted.  Examples abound in many areas: 

1) There is no per se rule that all food or beverage-related products are related.  See Steve's Ice Cream v. Steve's Famous Hot Dogs, 3 USPQ2d 1477 (TTAB 1987) (ice cream not related to restaurants featuring hot dogs); Jacobs v. International Multifoods, Corp., 212 USPQ 641, 642 (CCPA 1982) (restaurant services unrelated to tea); The Nestle Company, Inc., v. Nash-Finch Co., 4 USPQ2d 1085 (TTAB 1987) (delicatessen not related to chocolate milk powders); Hi-Country Foods Corp. v. Hi Country Beef Jerky, 4 USPQ 1169 (TTAB 1987) (fruit juices not related to beef snack food). 

          The essence of all these cases is that merely having something to do with food or beverages does not establish that products or services are commercially related.  That is especially true here where the marks under consideration are diluted and relatively weak. 

2)  There is no per se rule that all computer-related items are related.  In Rey­nolds & Reynolds v. I.E. Systems, Inc., 5 USPQ2d 1749 (TTAB 1987), the Board found no likelihood of confusion between "ACCULINK" and a family of "ACCU" marks because computer software used to make microcomputers "dumb terminals" were unrelated to application software for tax programs.  The Board stated: 

                   In view of the fact that computers are useful and/or are used in almost every facet of the world of business, commerce, medicine, law, etc., it is obvious that distinc­tions must be made. 

          In the case In re Quadrum Corp., 228 USPQ 863 (TTAB 1985), the Board held that there was no likelihood of confusion between "MICROFASER" for peripheral computer hardware and "FASER" for applications software in the field of energy conservation and management.      

          3)  No likelihood of confusion was found between the marks DIAMOND ESSENCE for jewelry and ESSENCE for a magazine advertising jewelry.  E­ssence Communications, Inc. v. Singh Industries, Inc., 10 USPQ2d 1036 (S.D.N.Y. 1988). 

           4)  In Glen Raven Cotton Mills, Inc. v. Jayvee Brand, Inc., 165 USPQ 791 (TTAB 1970), a distinction was drawn between products that seemed at first glance to be commercially related.  The mark CANDEE CANE was used in connection with infant's garments.  The mark CANDY CANE was used for a variety of fabrics sold in the piece for fabrication into upholstery fabrics, awnings, draperies, wearing apparel and various accessories.  Although cases have held that fabrics and clothing items are related, in this case, the TTAB found no likelihood of confusion because the fabrics were not the type used in the manufacture of infant's garments.    

          5) No likelihood of confusion was found between the ASTRA mark for use on pharmaceutical preparations and syringes and the ASTRA mark for use on blood analysis machines.   Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 220 USPQ 786 (1^st Cir. 1983).  Specifically, the Court noted that “[t]he ‘hospital community’ is not a homogeneous whole, but is composed of separate departments with diverse purchasing requirements, which, in effect, constitute different markets for the parties’ respective products.”  Astra Pharmaceutical Products, Inc., 220 USPQ at 791.   This decision was later cited in Hewlett-Packard Co. v. Human Performance Measurement Inc., 23 USPQ2d 1390, 1395 (TTAB 1991)(holding that there was no likelihood of confusion between HPM + Design for medical instruments for clinical measurement of human performance functions and HP + Design for use on a wide variety of medical and computer equipment).

          6) In the case In re American Olean Tile Co., Inc., 1 USPQ2d 1823 (TTAB 1986), the Trademark Trial and Appeal Board found that there was no likelihood of confusion between ceramic tile and wood doors for exterior and interior use.  Despite the fact that both these materials could be used during construc­tion of a building, they were products that were so dissimilar that they were not considered commercially related.

          7) In the case In re W.W. Henry Co., 82 USPQ2d 1213 (TTAB 2007), the Trademark Trial and Appeal Board held that Applicant’s PATCH & GO mark used in connection with a cement-based product used in repairing or smoothing wall and floor surfaces is not likely to cause confusion with the Registrant’s PATCH ‘N GO mark used in connection with chemical filler preparations used in cosmetic repair of polyolefin surfaces.  Even though the marks are virtually identical, Applicant’s product is of a type offered to do-it-yourselfers and contractors through home improvement hardware stores, and the Registrant’s products are purchased by plastics manufacturers.

           8) No likelihood of confusion was found between the M2 mark for use on CD-ROMS for healthcare and the M2 COMMUNICATIONS mark for use on CD-ROMS for film and music.  M2 Software Inc. v. M2 Communications, Inc., 78 USPQ2d 1944 (CAFC 2006).

          9)  Also see Andy Warhol v. Time, 9 USPQ2d 1455 (S.D.N.Y. 1988) (no likelihood of confusion between two magazines with the title INTER­VIEW);  American Cyanamid Corp. v. Connaught Laborato­ries, Inc., 800 F.2d 306, 231 USPQ2d 128 (2nd Cir. 1986), (no likelihood of confusion between HIBBVAX and HIBIMUNE);  Lang v. Retirement Living Publishing Co., 21 USPQ2d 1041 (2d Cir. 1991) (no likelihood of confusion between NEW CHOICES FOR THE BEST YEARS and NEW CHOICES PRESS, both used for magazines, because the intended markets of each magazine was different).

          In short, an examiner cannot rely on superficial similarities between products or classification, especially when the field is diluted, the mark is inherently weak due to its nature, and consumers are used to seeing very similar marks used often.     

3.  Register Should Reflect Actual Use 

          Despite the unjust harm that will result if Applicant cannot obtain a federal registration, despite decades where many marks containing similar terms were registered, the reality is that Applicant will continue to use its mark.  Dilution in the field, the nature of the mark, and distinctions in goods will preclude serious challenges to Applicant's use.  With this in mind, the Examiner should consider the words of the Court of Appeals for the Federal Circuit in Bongrain International v. Delice de France, 1 USPQ 2d 1775 (Fed. Cir. 1987): 

The primary purpose of the Trademark Act of 1946 is to give Federal procedural augmentation to the common law rights of trademark owners -- which is to say legitimate users of trademarks.  One of the policies sought to be implemented by the Act was to encourage the presence on the register of trademarks of as many as possible of the marks in actual use so that they are available for search purposes (emphasis added). 

          Applicant's mark will be used and should be registered.

           In sum, Applicant respectfully requests that the examiner withdraw the likelihood of confusion refusal.