| 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 | 87958414 |
| LAW OFFICE ASSIGNED | LAW OFFICE 114 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87958414/mark.png |
| LITERAL ELEMENT | EXCITE |
| 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) | |
|
RESPONSE TO OFFICE ACTION EXCITE – US Serial No. 87/958,414
The Examining Attorney has refused registration of the mark EXCITE based upon an assertion under Section 2(d) that the Applicant’s mark is likely to be confused with U.S. Registration No. 2,513,259 for the mark EXCITE. Applicant respectfully submits that confusion with the cited mark is unlikely, for the reasons discussed below. THERE IS NO LIKELIHOOD OF CONFUSION Applicant submits that under the factors set forth for determining whether a mark would create confusion among consumers in the marketplace, as established in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973), there is no likelihood of confusion between its trademark and the cited registration. No one factor listed in DuPont is to be considered more important than the other, and from case to case, each factor may play a dominant role. In testing for likelihood of confusion under Section 2(d), therefore, the DuPont court established a number of factors to be considered, including: (1) similarity or dissimilarity of the marks; (2) similarity or dissimilarity of the goods or services; (3) similarity of dissimilarity of the trade channels (4) sophistication of the customers; (5) existence of prior, similar marks; and, (6) nature and extent of any actual confusion and the length any concurrent use without evidence of actual confusion. The evidentiary elements are not listed above in order of merit, and each may from case to case play a dominant role. Id. at 1361-62. It is improper to reach a conclusion on a likelihood of confusion analysis on less than all factors for which evidence and/or argument are submitted. Jada Toys, Inc. v. Mattel, Inc., 2008 U.S. App. LEXIS 3627 at *6-10 (9th Cir. 2008). In deciding on the issue of likelihood of confusion, the court or fact finder should be mindful that "likelihood of confusion" is synonymous with “probable confusion.” It is not enough if confusion is merely possible. McCarthy on Trademarks, §23:3, p. 13 & n.1 (citing numerous cases). The Applicant respectfully submits that is EXCITE mark is not confusing to consumers as it covers distinct goods in different channels of trade to that of the cited mark. The Applicant’s Mark covers a sexual stimulant in the form of a gel for women. The goods are distinct from those of the cited mark and are sold to a different consumer that the cited mark. Therefore, based on highly distinctive goods, the Applicant’s mark will not likely be confusing and will not create adverse commercial impact upon the cited mark. The Goods are Not Necessarily Related or Competing The goods covered by Applicant’s mark do not necessarily relate to, or compete with, those listed in the cited registration. The goods provided by the Applicant and the cited registrant are very dissimilar. Applicant’s goods identification covers the following goods in Class 3: “Female sexual stimulant gel”. In contrast, the cited registration covers the following very different goods in Class 5: “Male sexual performance enhancer supplement”. Applicant's goods and those of the cited registration are only generally related, if at all. See e.g. General Electric Company v. Graham Magnetics, Inc., 197 USPQ 690 (TTAB 1977) (simply because a term may be found that generically describes both parties' goods or services is not a sufficient basis for finding goods or services to be related). Further, the fact that both Applicant’s goods and those of the cited registration are related to sexual stimulant/enhancer does not mean that confusion is likely in this case. Moreover, the goods serve different purposes. Applicant’s goods are related to female stimulant. The cited registrant’s goods, in contrast, are confined to a male enhancer. Applicant’s goods are a topical gel. The cited registrant’s goods are confined to an oral supplement. Applicant’s goods are sold to female consumers seeking a topical stimulant. The cited registrant’s goods are sold to a male consumer seeking an oral supplement. As such, the respective goods are clearly unrelated, obviating any likelihood of confusion. The Purchasers are Sophisticated Likelihood of confusion is less likely to be found where purchasers are sophisticated and, therefore, discriminating. McGregor-Donniger, Inc. v. Drizzle Inc., 202 U.S.P.Q. 81 (2d Cir. 1979). Applicant contends that, given the highly specialized nature of the goods offered under the respective marks, the purchasers of those goods are undoubtedly highly knowledgeable and discerning in their purchasing decisions. The parties’ respective goods are sophisticated items, the purchasers of which are highly knowledgeable with respect to the specific commercial niche to which the goods are directed. As such, the goods at issue would not normally be encountered by the same purchasers under circumstances that might give rise to the mistaken belief that they emanated from the same source. The cited Registrant, Dymatize Enterprises, Inc. specializes in dietary and nutritional supplements for athletic performance and recovery. The cited mark EXCITE is the registrant’s sole mark in the field of sexual enhancement products and the mark is used in relation to supplements. The C.A.F.C. has cautioned the US-PTO not to overlook the great importance of such consumer sophistication in deciding whether confusion is likely. In Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992), the C.A.F.C. strongly stressed that the sophistication of discriminating customers is an extremely important likelihood of confusion factor, even in cases where the marks are identical. Indeed, the C.A.F.C. reversed the Board’s finding of likely confusion because the Board "apparently failed to consider, and certainly failed to address, the sophistication of buyers." Electronic Design & Sales, 21 U.S.P.Q.2d at 1392. The Applicant’s goods specifically recite the consumer is female. In contrast, the cited registrant’s consumer is specifically recited in the goods to be male. A likelihood of confusion between marks must be based on the confusion of some “relevant person”, i.e., a customer or purchaser. In the present case, the Applicant’s female consumer seeking a stimulant gel is not going to be confused and purchase a male enhancement supplement. Nor is the cited registrant’s consumer, a man looking for an oral enhancement supplement, going to be confused into purchasing a female stimulant gel. Lastly, and most importantly, the purchaser of a female sexual stimulant gel will in no way mistakenly believe they are purchasing from registrant, a producer of protein powders as dietary and nutritional supplements for athletic performance and recovery. CONCLUSION The distinguishable channels of trade to sophisticated consumers weighs in its favor finding an absence of likelihood of confusion in this case. With the above, Applicant submits that all questions are now answered, and respectfully requests that the Examining Attorney pass the mark for publication. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Eileen M. Hansen/ |
| SIGNATORY'S NAME | Eileen M. Hansen |
| SIGNATORY'S POSITION | Attorney of record, New Jersey bar member |
| SIGNATORY'S PHONE NUMBER | 7329357100 |
| DATE SIGNED | 02/08/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Feb 08 11:41:23 EST 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XX- 20190208114123755251-8795 8414-620666881fe37d3cb93c 3127410bc5d56d99719d0b291 5a8363eb61a3a877dd0-N/A-N /A-20190208113807909366 |
| 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) |
RESPONSE TO OFFICE ACTION
EXCITE – US Serial No. 87/958,414
The Examining Attorney has refused registration of the mark EXCITE based upon an assertion under Section 2(d) that the Applicant’s mark is likely to be confused with U.S. Registration No. 2,513,259 for the mark EXCITE. Applicant respectfully submits that confusion with the cited mark is unlikely, for the reasons discussed below.
THERE IS NO LIKELIHOOD OF CONFUSION
Applicant submits that under the factors set forth for determining whether a mark would create confusion among consumers in the marketplace, as established in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973), there is no likelihood of confusion between its trademark and the cited registration. No one factor listed in DuPont is to be considered more important than the other, and from case to case, each factor may play a dominant role.
In testing for likelihood of confusion under Section 2(d), therefore, the DuPont court established a number of factors to be considered, including: (1) similarity or dissimilarity of the marks; (2) similarity or dissimilarity of the goods or services; (3) similarity of dissimilarity of the trade channels (4) sophistication of the customers; (5) existence of prior, similar marks; and, (6) nature and extent of any actual confusion and the length any concurrent use without evidence of actual confusion.
The evidentiary elements are not listed above in order of merit, and each may from case to case play a dominant role. Id. at 1361-62. It is improper to reach a conclusion on a likelihood of confusion analysis on less than all factors for which evidence and/or argument are submitted. Jada Toys, Inc. v. Mattel, Inc., 2008 U.S. App. LEXIS 3627 at *6-10 (9th Cir. 2008). In deciding on the issue of likelihood of confusion, the court or fact finder should be mindful that "likelihood of confusion" is synonymous with “probable confusion.” It is not enough if confusion is merely possible. McCarthy on Trademarks, §23:3, p. 13 & n.1 (citing numerous cases).
The Applicant respectfully submits that is EXCITE mark is not confusing to consumers as it covers distinct goods in different channels of trade to that of the cited mark. The Applicant’s Mark covers a sexual stimulant in the form of a gel for women. The goods are distinct from those of the cited mark and are sold to a different consumer that the cited mark. Therefore, based on highly distinctive goods, the Applicant’s mark will not likely be confusing and will not create adverse commercial impact upon the cited mark.
The Goods are Not Necessarily Related or Competing
The goods covered by Applicant’s mark do not necessarily relate to, or compete with, those listed in the cited registration. The goods provided by the Applicant and the cited registrant are very dissimilar. Applicant’s goods identification covers the following goods in Class 3: “Female sexual stimulant gel”. In contrast, the cited registration covers the following very different goods in Class 5: “Male sexual performance enhancer supplement”.
Applicant's goods and those of the cited registration are only generally related, if at all. See e.g. General Electric Company v. Graham Magnetics, Inc., 197 USPQ 690 (TTAB 1977) (simply because a term may be found that generically describes both parties' goods or services is not a sufficient basis for finding goods or services to be related). Further, the fact that both Applicant’s goods and those of the cited registration are related to sexual stimulant/enhancer does not mean that confusion is likely in this case. Moreover, the goods serve different purposes. Applicant’s goods are related to female stimulant. The cited registrant’s goods, in contrast, are confined to a male enhancer. Applicant’s goods are a topical gel. The cited registrant’s goods are confined to an oral supplement. Applicant’s goods are sold to female consumers seeking a topical stimulant. The cited registrant’s goods are sold to a male consumer seeking an oral supplement. As such, the respective goods are clearly unrelated, obviating any likelihood of confusion.
The Purchasers are Sophisticated
Likelihood of confusion is less likely to be found where purchasers are sophisticated and, therefore, discriminating. McGregor-Donniger, Inc. v. Drizzle Inc., 202 U.S.P.Q. 81 (2d Cir. 1979). Applicant contends that, given the highly specialized nature of the goods offered under the respective marks, the purchasers of those goods are undoubtedly highly knowledgeable and discerning in their purchasing decisions. The parties’ respective goods are sophisticated items, the purchasers of which are highly knowledgeable with respect to the specific commercial niche to which the goods are directed. As such, the goods at issue would not normally be encountered by the same purchasers under circumstances that might give rise to the mistaken belief that they emanated from the same source. The cited Registrant, Dymatize Enterprises, Inc. specializes in dietary and nutritional supplements for athletic performance and recovery. The cited mark EXCITE is the registrant’s sole mark in the field of sexual enhancement products and the mark is used in relation to supplements.
The C.A.F.C. has cautioned the US-PTO not to overlook the great importance of such consumer sophistication in deciding whether confusion is likely. In Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992), the C.A.F.C. strongly stressed that the sophistication of discriminating customers is an extremely important likelihood of confusion factor, even in cases where the marks are identical. Indeed, the C.A.F.C. reversed the Board’s finding of likely confusion because the Board "apparently failed to consider, and certainly failed to address, the sophistication of buyers." Electronic Design & Sales, 21 U.S.P.Q.2d at 1392.
The Applicant’s goods specifically recite the consumer is female. In contrast, the cited registrant’s consumer is specifically recited in the goods to be male. A likelihood of confusion between marks must be based on the confusion of some “relevant person”, i.e., a customer or purchaser. In the present case, the Applicant’s female consumer seeking a stimulant gel is not going to be confused and purchase a male enhancement supplement. Nor is the cited registrant’s consumer, a man looking for an oral enhancement supplement, going to be confused into purchasing a female stimulant gel. Lastly, and most importantly, the purchaser of a female sexual stimulant gel will in no way mistakenly believe they are purchasing from registrant, a producer of protein powders as dietary and nutritional supplements for athletic performance and recovery.
CONCLUSION
The distinguishable channels of trade to sophisticated consumers weighs in its favor finding an absence of likelihood of confusion in this case. With the above, Applicant submits that all questions are now answered, and respectfully requests that the Examining Attorney pass the mark for publication.