Response to Office Action

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)

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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

To the Commissioner for Trademarks:

Application serial no. 88197796 NANO DRUM(Standard Characters, see http://uspto.report/TM/88197796/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Mark: NANO DRUM

U.S. Serial No. - 88197796

Response to Final Office Action Dated February 27, 2019

A.    Likelihood of Confusion

In the above-identified office action, the Examining Attorney issued a refusal in the subject application for registration of NANO DRUM.  The examining attorney also advised Applicant must disclaim the wording “DRUM” because, she opined, “...it merely describes a feature applicant’s goods, and thus is an unregistrable component of the mark.”  The Examining Attorney contends that there is a likelihood of confusion with the mark of U.S. Registration No. 2514349 (MICRO DRUM).  

In her refusal, the examining attorney first argues states that the registered mark and applicant’s mark “...share the common second term DRUM, rendering the marks similar in appearance and overall commercial impression.”  Having “tied” the registered mark and applicant’s mark with the in-common term “DRUM,” the examining attorney states:

“Further, the wordings NANO and MICRO as featured in the respective marks are highly similar in connotation, rendering the applied-for and registered marks similar in overall commercial impression, in light of distinctions in appearance and sound. Namely, the wording NANO, as featured in the applied-for mark, is defined as “a combining form with the meaning ‘very small, minute,’ used in the formation of compound words.” The wording MICRO, as featured in the registered mark, is similarly defined as “a combining form with the meanings ‘small’.” See attached evidence from Dictionary.com. The respective wordings NANO and MICRO, when paired with the common term DRUM, therefore elicit a highly similar mental image of a DRUM that is small or very small in size.”

While the examining attorney specifically mentions appearance and overall commercial impression, and concludes these marks are “highly similar in connotation,” she has not provided any evidence with respect to these factors, except three pages from the web site “dictionary.com.”  These pages show each of the three words found in the two compared marks, “nano” and “micro” and “drum.”  The crux of the examining attorney’s objection appears to be in the perceived “highly similar in connotation” meaning she cites, as she opines:

“Namely, the wording NANO, as featured in the applied-for mark, is defined as “a combining form with the meaning ‘very small, minute,’ used in the formation of compound words.”

B.    Descriptive, Generic, and/or Otherwise Functional Portions of Marks Should be Given Less Weight in Likelihood of Confusion Analysis

It is well established that there are five levels of distinctiveness in trademark law, i.e., generic, descriptive, suggestive, arbitrary, and fanciful. Generic or descriptive terms by themselves are not considered inherently distinctive and may not be entitled to registration. See, e.g., TMEP 1209.01(c), 1209.03, 1213.05(g)(ii), 1202.05(b), etc. This is because generic or descriptive terms are “functional” in nature. Functionality is the antithesis of trademark weight and scope of protection. See, e.g., Valu Engineering v. Rexnord Corp, 278 F.3d 1268 (Fed. Cir. 2002); see also http://en.wikipedia.org/wiki/Functionality_doctrine.

In addition, as alluded to in Applicant’s previous papers, terms which are in common use by many sellers  (i.e., “drum”) are not entitled to the same scope of protection as distinctive (e.g., suggestive, arbitrary, or fanciful) marks.  J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, 4th ed. §11:86. Thus, evidence of third party use of similar (or even identical) terms on similar goods is admissible and relevant to show that the term as a trademark is either extremely weak or should be ignored as carrying nonexistent weight in the context of trademark law.   The purpose of introducing third party uses is to show that customers have become so conditioned by a plethora of such similar marks that customers “have been educated to distinguish between different marks on the basis of [effectively non-weighted] distinctions.” See, e.g., Standard Brands, Inc. v. RJR Foods, Inc., 192 USPQ 383 (TTAB 1976).

Because the Examining Attorney required Applicant to disclaim the term “drum” in the previous office action, she has effectively taken the position that the term “drum” is descriptive, generic, or otherwise functional relative to the goods/services associated with MICRO DRUM and NANO DRUM.  With such a disclaimer required, and entered, the examining attorney also, and inconsistently, contends that the shared term “drum” between the two marks is something that would contribute to likelihood of confusion between these marks in the minds of the ordinary purchaser.

To so contend--which is apparently the examining attorney’s position--is akin to contending that average consumers would likely confuse “PEPSI COLA” with “COCA COLA.”  After all, both “PEPSI COLA” and “COCA COLA” both share the functional term COLA.   PEPSI, like MICRO, has five letters, and COCA, like NANO, has four letters.  Applicant contends that no consumer would confuse PEPSI COLA and COCA COLA based on the presence of the word “cola” in each of these marks (nor do consumers find the word “cola” has any source-identifying part in these marks).

Applicant notes here that the companies which hold these marks routinely “police” these brands where their products may be purchased, to insure bar tenders and others use both terms of each full mark, rather than shorten their order to the word “coke,” just to eliminate confusing consumers.  Similarly, the average purchaser of cleaners, in “drums,” would not find MICRO DRUM and NANO DRUM confusingly similar based on the presence of the word “drum” in each of these marks (even if those purchasers were consumers).

In other words, the terms “micro” and “nano” are dominant in each of these marks, the term “drum” being, largely, a “throw away” as prospective purchasers consider their prospective purchase.  The proper analysis for the likelihood of confusion test with respect to the matter at hand is to focus more on whether MICRO and NANO possess the same meaning in the mind of the average consumer, when these words are used to modify the term DRUM, given the differences in the identification of goods for each of the marks MICRO DRUM and NANO DRUM.  

C.    Connotation Does not Trump Denotation with Respect to Commercial Impression

Applicant disagrees with the Examining Attorney’s contention that the terms “MICRO DRUM” and “NANO DRUM” possess the same “highly similar connotation” to the average purchaser (which connotation the examining attorney says gives rise to a likelihood of confusion in the mind of said average purchaser).

First, Applicant notes that the asserted similarity in connotation which the examining attorney has identified she has not supported with evidence.  It is true that dictionary.com does use the word “small” on two pages of the examining attorney’s evidence.  However, neither MICRO nor NANO mean “small.”  Each of these terms have definite, specific, meaning, as modifiers of units of measurement.  Many similar terms share these characteristics, terms which also do not mean “small.”

If we look at additional pages of dictionary.com for similar modifiers, we see, for terms which might connote “smallness” in the way the examining attorney sees “smallness”:

1.    Milli
2.    Micro
3.    Nano
4.    Pico
5.    Femto
6.    Atto
7.    Zepto
8.    Yocto

See first attachment from dictionary.com, which show such modifiers.

If “micro” and “nano” (2 and 3 above) connote “smallness,” as the examining attorney suggests (and bases her analysis on), then the other terms which are modifiers of units of measurement which denote a smaller measurement (4 through 8 above) must also connote “smallness.”  In fact, they should be better at providing such meaning than “micro” and “nano.”  Yet dictionary.com does not use the word “small” in relation to these other modifiers.

And if we consider “bigness,” we might also look for terms which might connote “bigness” in the way the examining attorney sees “smallness.”  Such modifiers include:

9.      Kilo
10.    Mega
11.    Giga
12.    Tera
13.    Peta
14.    Exa
15.    Zetta
16.    Yotta

See second attachment from dictionary.com which show such modifiers.

Again, we note that dictionary.com does not use the word “big” in the entry for these modifiers.  Instead, as with the “smallness” modifiers, dictionary.com talks of the real meaning of these modifiers, and avoids the introduction of “big.”  Applicant contends that dictionary.com avoids the characterizations “big” and “small” because these modifiers do not mean “big” or “small.”  In fact, dictionary.com does not list “big” or “small” as “nearby words.”

Turning to another, perhaps more relevant, source for guidance, applicant files herewith a third attachment, this being web pages taken from a Merriam-Webster thesaurus showing synonyms for “mini” and “micro” and “nano.”  If “micro” and “nano” mean “small,” and the examining attorney contends, then certainly this well-known authority on words will show that meaning in at least one, and perhaps many, similar words.  Tanking these entries in turn:

MINI - We see in this entry a reference to the commonly-known “Mini” automobile, and a short explanatory note that the “Mini” is “a very small automobile.”  Below that we see the only synonyms the Merriam-Webster thesaurus is willing to provide, and all of those synonyms relate to the “very small automobile.”

MICRO - The Merriam-Webster thesaurus does not provide any synonym for “micro.”  We take this to mean the word “micro” has its own, well-established meaning, a meaning which is not the same meaning as the word “small.”

NANO - The Merriam-Webster thesaurus does not provide any synonym for “nano.”  We take this to mean the word “nano” has its own, well-established meaning, a meaning which is not the same meaning as the word “small.”

Thus, we see that both dictionary.com and the Merriam-Webster thesaurus suggest strongly that the words “micro” and “nano” have their own meanings, which are not the same meaning, and these authorities also suggest that neither of these words mean “small.”

D.    Examining Attorney’s Analysis

Examining Attorney’s Analysis, on the other hand, relies on a perceived meaning in common between NANO and MICRO.  The largest single difficulty with this “in common” meaning is that the perceived meaning is not present in either NANO or MICRO.  These two words are carefully defined by scientists, and readily understood by others (even consumers).  In the rush to find common meaning, the examining attorney has largely ignored these defined meanings, and instead relied on a connotation of “small” which might be found in these terms (at least for some of the general public), as shown in one of eight (at least) pages taken from dictionary.com (see references 1 through 8 above)

If we were to apply the reasoning of the examining attorney to similar references, we would end up with conclusions such as:

“The respective wordings ZEPTO and MICRO, when paired with the common term DRUM, therefore elicit a highly similar mental image of a DRUM that is small or very small in size.”

Employing the analysis of the examining attorney, we could also find the registered mark and applicant’s mark are each also confusingly similar (because they are each “highly similar in connotation”) to: DECI DRUM, CENTI DRUM, MILLI DRUM, PICO DRUM, and FEMTO DRUM (all of which first words have defined scientific meanings and, we assume the examining attorney would suggest, a connotation of smallness).  However, we need not limit ourselves to scientific terms, as the following words also have “highly similar connotation” (because they truly mean “small”):

“little, compact, tiny, miniature, minuscule, modest, paltry, slight, small-scale, diminutive,   minute, petite, petty, scanty, trifling, wee, bitty, inconsiderable, picayune, piddling, pint-sized, pitiful, puny, runty, teensy, teeny, trivial, undersized"

Thus, using the examining attorney’s analysis, PETITE DRUM and MICRO DRUM would be confusingly similar (as would other marks be if then contained the words set forth above along with the word DRUM).

The applicant believes the examining attorney has “divined” meaning where none exists, and applied that devined meaning to the perceptions of potential purchasers.  The asserted similarity in connotation, which the Applicant can recognize on some level in a number of words, has brought the examining attorney to a conclusion about what prospective purchasers may think of that perceived similarity.  This conclusion (which Applicant specifically rejects) is thus a matter of opinion, and not well based on authority.

E.    Similarity of NANO and MICRO

Turning to the meaning of these terms, as discussed previously, MICRO is a metric prefix that signifies something is of a certain size (as it happens 1,000 times larger than NANO).  However, neither of these words mean “small,” as the examining attorney asserts.  Since these words are also quite different in sight and sound, the purchasers of  “drums” containing cleaners would no sooner confuse MICRO with NANO than such purchasers would confuse “one thousand” with “one.”

Or, if we wish to stay with technical terms of measurement (in the English measurement system), the purchasers of  “drums” containing cleaners would no sooner confuse MICRO (even when combined with DRUM) with NANO (also combined with DRUM), than such purchasers would confuse HECTARE (also combined with DRUM) with ACRE (again combined with DRUM),” despite the fact that each of these words refer to the size of a piece of land.

Aapplicant requests the examining attorney withdraw here refusal of applicant’s application for registration of NANO DRUM for opposition.




EVIDENCE
Evidence in the nature of 1. Web pages taken from dictionary.com which show such "small" modifiers. . 2. Web pages taken from dictionary.com which show such "large" modifiers. . 3. Web pages taken from a Merriam-Webster thesaurus showing synonyms for "mini" and "micro" and "nano." has been attached.
Original PDF file:
evi_76102218220-20190827184015949995_._2019_08_27_-_Small.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_76102218220-20190827184015949995_._2019_08_27_-_Large.pdf
Converted PDF file(s) ( 9 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Original PDF file:
evi_76102218220-20190827184015949995_._2019_08_27_-_Synonyms.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

The applicant's current attorney information: Thomas W. Cook. Thomas W. Cook of THOMAS COOK INTELLECTUAL PROPERTY ATTORNEYS, is located at

      P.O. BOX 1989
      SAUSALITO, California 94965
      US

The phone number is 415-339-8550.

The email address is tom@thomascooklaw.com

The applicants proposed attorney information: Thomas W. Cook. Thomas W. Cook of THOMAS COOK INTELLECTUAL PROPERTY ATTORNEYS, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      P.O. BOX 1989
      SAUSALITO, California 94965
      United States
The docket/reference number is 3DIN/NANO2.

The phone number is 415-339-8550.

The email address is tom@thomascooklaw.com

Thomas W. Cook submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: THOMAS W. COOK. THOMAS W. COOK of THOMAS COOK INTELLECTUAL PROPERTY ATTORNEYS, is located at

      P.O. BOX 1989
      SAUSALITO, California 94965
      US

The phone number is 415-339-8550.

The email address is tom@thomascooklaw.com

The applicants proposed correspondence information: Thomas W. Cook. Thomas W. Cook of THOMAS COOK INTELLECTUAL PROPERTY ATTORNEYS, is located at

      P.O. BOX 1989
      SAUSALITO, California 94965
      United States
The docket/reference number is 3DIN/NANO2.

The phone number is 415-339-8550.

The email address is tom@thomascooklaw.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use DRUM apart from the mark as shown.


Miscellaneous Statement
Applicant's goods are packaged in cylindrical containers or receptacles.


SIGNATURE(S)
Response Signature
Signature: /Thomas W. Cook/     Date: 08/27/2019
Signatory's Name: Thomas W. Cook
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 415-339-8550

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    THOMAS W. COOK
   THOMAS COOK INTELLECTUAL PROPERTY ATTORNEYS
   
   P.O. BOX 1989
   SAUSALITO, California 94965
Mailing Address:    Thomas W. Cook
   THOMAS COOK INTELLECTUAL PROPERTY ATTORNEYS
   P.O. BOX 1989
   SAUSALITO, California 94965
        
Serial Number: 88197796
Internet Transmission Date: Tue Aug 27 18:52:54 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201908271852547
35584-88197796-610934622d96a7aa2415a5775
eb23836d603af4529324f76f2257088bab931f25
f-N/A-N/A-20190827184015949995