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 | 88208343 |
LAW OFFICE ASSIGNED | LAW OFFICE 122 |
MARK SECTION | |
MARK | mark |
LITERAL ELEMENT | HEYDAY |
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. |
OWNER SECTION (current) | |
NAME | Heyday Integrated Circuits SAS |
MAILING ADDRESS | 4 Traverse Dupont, InnovaGrasse |
CITY | Grasse |
ZIP/POSTAL CODE | 06130 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | France |
PHONE | 815-595-4783 |
OWNER SECTION (proposed) | |
NAME | Heyday Integrated Circuits SAS |
MAILING ADDRESS | 4 Traverse Dupont, InnovaGrasse |
CITY | Grasse |
ZIP/POSTAL CODE | 06130 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | France |
PHONE | 815-595-4783 |
XXXX | |
ARGUMENT(S) | |
This is in response to the Office Action mailed October 29, 2019. Registration of Applicant’s mark, HEYDAY was refused under §2(d) of the Trademark Act because Applicant’s mark allegedly so resembles the marks in U.S. Registration No. 5852869 for HEYDAY, U.S. Registration No. 4948604 for HAY DAY, and U.S. Registration No. 4970933 for HAY DAY Additionally, three pending applications, all for HEYDAY, were tentatively cited against Applicant’s mark. These applications are all owned by Target Brands, Inc., the owner of the above HEYDAY registration.
Applicant respectfully submits that in view of the case law and arguments set forth below, no likelihood of confusion exists between its mark and either of the registered marks. Therefore, Applicant respectfully requests reconsideration and withdrawal of the refusal to register the subject mark. Likelihood of Confusion There are a variety of factors used to determine a likelihood of confusion. See In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (determining likelihood of confusion by thirteen factors: similarity of the marks, similarity and nature of the goods or services, similarity of established trade channels, whether purchases are impulse or sophisticated, fame of the prior mark, amount and nature of similar marks on similar goods, actual confusion, length of time of concurrent use without evidence of actual confusion, variety of goods on which mark is used, market interface between Applicant and owner of prior mark, extent that Applicant has a right to exclude others from use of its mark, extent of potential confusion, and any other probative fact). There is, however, no reason why a single DuPont factor should not outweigh all the rest. Kellogg Co. v. Pack ‘Em Enters., Inc. , 951 F.2d 330, 333, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). Likelihood of confusion must be probable, not simply possible. Rodeo Collection Ltd. v. West Seventh, 2 USPQ2d 1204, 1207 (9th Cir. 1987). Applicant respectfully requests reconsideration of the refusal of registration because Applicant respectfully asserts there are clear differences between the goods of each of the parties, and thus the channels of trade of the respective products. Additionally, consumers of Applicant’s and Registrants’ goods, are sophisticated enough not to be confused as to the source of the different products of the parties. Finally, in view of the fact that the cited HEYDAY and HAY DAY marks already co-exist, Applicant respectfully submits its mark should likewise be given the same consideration for registration. A. Applicant’s Goods and the Goods of the Cited Registrations are in Different Channels of Trade In the present Office Action, it is stated that Applicant’s identification of goods is indefinite. Therefore, Applicant is amending its identification of goods to the following: Integrated circuits; integrated circuit boards; semiconductor devices; power modules for mounting on printed circuit boards; power controllers for mounting on printed circuit boards; power switches for mounting on printed circuit boards. Applicant (HeyDay Integrated Circuits) is a manufacturing company, specializing in gate drivers, which amplify the signal from the controller to the transistor in electronic products. Attached to this response are pages from Applicant’s website – www.heyday-ic.com – which illustrate the specialized products offered by Applicant. Applicant’s market and its consumers are electronic circuit manufacturers, who integrate Applicant’s components into circuit boards for use in electronic products. In contrast, the cited HEYDAY registration and pending applications, which are owned by Target Brands, Inc., list products which are directly marketed to the consumer (See the attached article). In fact, there is a possibility that Applicant’s products may be incorporated into some of the final products listed the cited registration and pending application; however, Applicant’s products are not offered to or sold directly to the consumer. Additionally, with regard to the cited HAY DAY registrations, these also appear to be all direct-to-consumer products. In fact, HAY DAY appears to be a video game (see attached snapshots of webpages for the Registrant Supercell). Of all of the items listed in the HAY DAY registrations, the only potentially similar item cited in the Office Action is “electrical power supplies.” However, again, Applicant respectfully submits the products offered under the HAY DAY mark are marketed directly to the consumer. In contrast, Applicant’s products are not marketed to the consumer, and in addition, Applicant’s products and thus its consumers are clearly distinct from those of the HAY DAY registrations. Applicant further submits its mark appears completely different from the cited registrations, and therefore, this difference combined with the distinctly different goods of the parties, consumers would not be confused as to the source of the goods of the parties. Again, Applicant is not a direct-to-the-consumer company, as its products are directed to manufacturers of electronic products potentially offered by both Registrants. B. Purchasers Of The Respective Goods Are Sophisticated When purchasers are sophisticated or knowledgeable in a particular field, the buyer can be expected to exercise greater care in his or her purchases, and the likelihood of confusion between similar marks is diminished. See Daddy's Junky Music Stores, Inc. v. Big Daddy's family Music Center, 109 F.3d 275, 285 (6th Cir. 1997). Similarly, the TMEP explains, “circumstances suggesting care in purchasing may tend to minimize likelihood of confusion.” §1208.01(d)(vii). Furthermore, the Examining Attorney must stand in the shoes of the ordinary purchaser, buying under the normal marketing conditions and giving the attention such purchasers usually give in buying that class of goods. General Mills v. Kellogg, 824 F.2d 622, 627 (8th Cir. 1987). Even for relatively inexpensive item, the standard is still that of a reasonably prudent ordinary purchaser. See McLean v. Fleming, 96 U.S. 245 (1878) (reasonably prudent buyer defined as “ordinary purchases buying with ordinary caution.”). Applicant offers sophisticated electronic components designed to meet the needs of manufacturers of electronic products. Applicant’s customers are undoubtedly sophisticated consumers, who would not be confused into believing Applicant’s products would be sourced by the two Registrants, Target or Supercell. Therefore, Applicant respectfully submits that clients would not be confused as to the source of the products of Applicant and either of the Registrants. Therefore, Applicant respectfully requests its mark be passed for publication. |
|
EVIDENCE SECTION | |
EVIDENCE FILE NAME(S) | |
ORIGINAL PDF FILE | evi_9928253135-2020022710 0047933011_._HEYDAY_websi te.pdf |
CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\882\083\88208343\xml1\ ROA0002.JPG |
\\TICRS\EXPORT18\IMAGEOUT 18\882\083\88208343\xml1\ ROA0003.JPG | |
\\TICRS\EXPORT18\IMAGEOUT 18\882\083\88208343\xml1\ ROA0004.JPG | |
ORIGINAL PDF FILE | evi_9928253135-2020022710 0047933011_._Supercell_HA Y_DAY.pdf |
CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\882\083\88208343\xml1\ ROA0005.JPG |
\\TICRS\EXPORT18\IMAGEOUT 18\882\083\88208343\xml1\ ROA0006.JPG | |
ORIGINAL PDF FILE | evi_9928253135-2020022710 0047933011_._Target_s_Bri nging_Style_to_Tech_Acces sories__Power_Up_Heyday.pdf |
CONVERTED PDF FILE(S) (6 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\882\083\88208343\xml1\ ROA0007.JPG |
\\TICRS\EXPORT18\IMAGEOUT 18\882\083\88208343\xml1\ ROA0008.JPG | |
\\TICRS\EXPORT18\IMAGEOUT 18\882\083\88208343\xml1\ ROA0009.JPG | |
\\TICRS\EXPORT18\IMAGEOUT 18\882\083\88208343\xml1\ ROA0010.JPG | |
\\TICRS\EXPORT18\IMAGEOUT 18\882\083\88208343\xml1\ ROA0011.JPG | |
\\TICRS\EXPORT18\IMAGEOUT 18\882\083\88208343\xml1\ ROA0012.JPG | |
DESCRIPTION OF EVIDENCE FILE | pages from Applicant's website, and from cited Registrants' websites |
GOODS AND/OR SERVICES SECTION (current) | |
INTERNATIONAL CLASS | 009 |
DESCRIPTION | |
integrated circuits; integrated circuit boards; semiconductor devices; power modules; power controllers; power switches; power regulating apparatus, namely, voltage regulators for electric power; switching power supply apparatus, namely, switch-mode power supply | |
FILING BASIS | Section 44(d) |
FOREIGN APPLICATION NUMBER | 017907408 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | European Union Trademark - EUTM |
FOREIGN FILING DATE | 05/29/2018 |
GOODS AND/OR SERVICES SECTION (proposed) | |
INTERNATIONAL CLASS | 009 |
TRACKED TEXT DESCRIPTION | |
integrated circuits; integrated circuit boards; semiconductor
devices; |
|
FINAL DESCRIPTION | |
integrated circuits; integrated circuit boards; semiconductor devices; power supply modules for mounting on printed circuit boards; power controllers for mounting on printed circuit boards; power switches for mounting on printed circuit boards | |
FILING BASIS | Section 44(d) |
FOREIGN APPLICATION NUMBER | 017907408 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | European Union Trademark - EUTM |
FOREIGN FILING DATE | 05/29/2018 |
INTENT TO PERFECT 44(d) |
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained. |
FILING BASIS | Section 44(e) |
FOREIGN REGISTRATION NUMBER | 017907408 |
FOREIGN REGISTRATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION DATE |
09/06/2019 |
FOREIGN EXPIRATION DATE | 05/29/2028 |
DATE FOREIGN REGISTRATION RENEWED (if applicable) |
05/29/2028 |
FOREIGN REGISTRATION FILE NAME(S) | |
ORIGINAL PDF FILE | FRU0-9928253135-100047933 _._HEYDAY-EU-REG-CERT.pdf |
CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\882\083\88208343\xml1\ ROA0013.JPG |
\\TICRS\EXPORT18\IMAGEOUT 18\882\083\88208343\xml1\ ROA0014.JPG | |
\\TICRS\EXPORT18\IMAGEOUT 18\882\083\88208343\xml1\ ROA0015.JPG | |
STANDARD CHARACTERS OR EQUIVALENT |
YES |
CORRESPONDENCE INFORMATION (current) | |
NAME | Monique A. Morneault |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | Monique@scherrerpatentlaw.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | stephen@scherrerpatentlaw.com |
DOCKET/REFERENCE NUMBER | 1-HMC-058-T |
CORRESPONDENCE INFORMATION (proposed) | |
NAME | Monique A. Morneault |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | Monique@scherrerpatentlaw.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | stephen@scherrerpatentlaw.com |
DOCKET/REFERENCE NUMBER | 1-HMC-058-T |
SIGNATURE SECTION | |
DECLARATION SIGNATURE | /Monique A. Morneault/ |
SIGNATORY'S NAME | Monique A. Morneault |
SIGNATORY'S POSITION | Attorney of record, Illinois Bar member |
SIGNATORY'S PHONE NUMBER | 815-595-4783 |
DATE SIGNED | 02/27/2020 |
RESPONSE SIGNATURE | /Monique A. Morneault/ |
SIGNATORY'S NAME | Monique A. Morneault |
SIGNATORY'S POSITION | Attorney of record, Illinois bar member |
SIGNATORY'S PHONE NUMBER | 815-595-4783 |
DATE SIGNED | 02/27/2020 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Thu Feb 27 10:37:31 ET 2020 |
TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0200227103731721029-88208 343-7109cd0db378c45ea8543 97fcf4989b36ca4cf0de1d916 2822e161c677b16619dc-N/A- N/A-20200227100047933011 |
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) |
This is in response to the Office Action mailed October 29, 2019. Registration of Applicant’s mark, HEYDAY was refused under §2(d) of the Trademark Act because Applicant’s mark allegedly so resembles the marks in U.S. Registration No. 5852869 for HEYDAY, U.S. Registration No. 4948604 for HAY DAY, and U.S. Registration No. 4970933 for HAY DAY Additionally, three pending applications, all for HEYDAY, were tentatively cited against Applicant’s mark. These applications are all owned by Target Brands, Inc., the owner of the above HEYDAY registration.
Applicant respectfully submits that in view of the case law and arguments set forth below, no likelihood of confusion exists between its mark and either of the registered marks. Therefore, Applicant respectfully requests reconsideration and withdrawal of the refusal to register the subject mark.
Likelihood of Confusion
There are a variety of factors used to determine a likelihood of confusion. See In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (determining likelihood of confusion by thirteen factors: similarity of the marks, similarity and nature of the goods or services, similarity of established trade channels, whether purchases are impulse or sophisticated, fame of the prior mark, amount and nature of similar marks on similar goods, actual confusion, length of time of concurrent use without evidence of actual confusion, variety of goods on which mark is used, market interface between Applicant and owner of prior mark, extent that Applicant has a right to exclude others from use of its mark, extent of potential confusion, and any other probative fact). There is, however, no reason why a
single DuPont factor should not outweigh all the rest. Kellogg Co. v. Pack ‘Em Enters., Inc. , 951 F.2d 330, 333, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). Likelihood of confusion must be probable, not simply possible. Rodeo Collection Ltd. v. West Seventh, 2 USPQ2d 1204, 1207 (9th Cir. 1987). Applicant respectfully requests reconsideration of the refusal of registration because Applicant respectfully asserts there are clear differences between the goods of each of the parties, and thus the channels of trade of the respective products. Additionally, consumers of Applicant’s and Registrants’ goods, are sophisticated enough not to be confused as to the source of the different products of the parties. Finally, in view of the fact that the cited HEYDAY and HAY DAY marks already co-exist, Applicant respectfully submits its mark should likewise be given the same consideration for registration.
A. Applicant’s Goods and the Goods of the Cited Registrations are in Different Channels of Trade
In the present Office Action, it is stated that Applicant’s identification of goods is indefinite. Therefore, Applicant is amending its identification of goods to the following:
Integrated circuits; integrated circuit boards; semiconductor devices; power modules for mounting on printed circuit boards; power controllers for mounting on printed circuit boards; power switches for mounting on printed circuit boards.
Applicant (HeyDay Integrated Circuits) is a manufacturing company, specializing in gate drivers, which amplify the signal from the controller to the transistor in electronic products. Attached to this response are pages from Applicant’s website – www.heyday-ic.com – which illustrate the specialized products offered by Applicant. Applicant’s market and its consumers are electronic circuit manufacturers, who integrate Applicant’s components into circuit boards for use in electronic products. In contrast, the cited HEYDAY registration and pending applications, which are owned by Target Brands, Inc., list products which are directly marketed to the consumer (See the attached article). In fact, there is a possibility that Applicant’s products may be incorporated into some of the final products listed the cited registration and pending application; however, Applicant’s products are not offered to or sold directly to the consumer.
Additionally, with regard to the cited HAY DAY registrations, these also appear to be all direct-to-consumer products. In fact, HAY DAY appears to be a video game (see attached snapshots of webpages for the Registrant Supercell). Of all of the items listed in the HAY DAY registrations, the only potentially similar item cited in the Office Action is “electrical power supplies.” However, again, Applicant respectfully submits the products offered under the HAY DAY mark are marketed directly to the consumer. In contrast, Applicant’s products are not marketed to the consumer, and in addition, Applicant’s products and thus its consumers are clearly distinct from those of the HAY DAY registrations. Applicant further submits its mark appears completely different from the cited registrations, and therefore, this difference combined with the distinctly different goods of the parties, consumers would not be confused as to the source of the goods of the parties. Again, Applicant is not a direct-to-the-consumer company, as its products are directed to manufacturers of electronic products potentially offered by both Registrants.
B. Purchasers Of The Respective Goods Are Sophisticated
When purchasers are sophisticated or knowledgeable in a particular field, the buyer can be expected to exercise greater care in his or her purchases, and the likelihood of confusion between similar marks is diminished. See Daddy's Junky Music Stores, Inc. v. Big Daddy's family Music Center, 109 F.3d 275, 285 (6th Cir. 1997). Similarly, the TMEP explains, “circumstances suggesting care in purchasing may tend to minimize likelihood of confusion.” §1208.01(d)(vii). Furthermore, the Examining Attorney must stand in the shoes of the ordinary purchaser, buying under the normal marketing conditions and giving the attention such purchasers usually give in buying that class of goods. General Mills v. Kellogg, 824 F.2d 622, 627 (8th Cir. 1987). Even for relatively inexpensive item, the standard is still that of a reasonably prudent ordinary purchaser. See McLean v. Fleming, 96 U.S. 245 (1878) (reasonably prudent buyer defined as “ordinary purchases buying with ordinary caution.”).
Applicant offers sophisticated electronic components designed to meet the needs of manufacturers of electronic products. Applicant’s customers are undoubtedly sophisticated consumers, who would not be confused into believing Applicant’s products would be sourced by the two Registrants, Target or Supercell. Therefore, Applicant respectfully submits that clients would not be confused as to the source of the products of Applicant and either of the Registrants. Therefore, Applicant respectfully requests its mark be passed for publication.
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.