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. 88518954 BLACKOUT(Standard Characters, see http://uspto.report/TM/88518954/mark.png) has been amended as follows:

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

RESPONSE TO OFFICE ACTION

This responds to the Office Action dated October 4, 2019.  Applicant Nufarm Americas Inc. (“Applicant”) intends to respond to all issues raised in the Office Action and any failure to do so is inadvertent.

 

2(d) REFUSAL-LIKELIHOOD OF CONFUSION

            The Examining Attorney’s refused registration of Applicant’s BLACKOUT mark (“Applicant’s Mark”) for goods in International Class 005, namely, “Biocides; Fungicides; Herbicides; Insecticides; Nematicides; Parasiticides; Pesticides,” (“Applicant’s Goods”) based on a purported likelihood of confusion with Registration No. 4404327 for the mark BLACKOUT BEDBUG DETECTOR for “bedbug detection device, namely, an electric device for attracting and killing bedbugs” (“Registered Goods”) in International Class 021, and “pest control” in International Class 037 (“Cited Registration”) and a prior pending, Serial No. 87854319 for the BLACK-OUT MOLD & STAIN REMOVER mark (“Cited Application”), for “Antibacterial cleaners; Antimicrobial coatings to treat the growth of mold, mildew, bacteria and fungus on various surfaces; Antimicrobial preparations for inhibiting mold” in International Class 005 (“Pending Goods and Services”) The Cited Registration and Cited Applicant are collectively referred to as the “Cited Marks” in this Response.

            In addition to the substantive arguments pertaining to the Cited Registration presented below, Applicant notes that the Cited Registration was due for a Section 8 & 9 Declaration on September 17, 2019 but that registrant failed to timely renew Registration No. 4404327.  The grace period now expires March 17, 2020.

            The relevant DuPont factors make it unequivocally clear that no likelihood of confusion exists between Applicant’s Mark and the Cited Marks.  Most obviously, the marks at issue look and sound quite differently phonetically and signal distinct messages to consumers.  In addition, the Applicant’s Goods are sufficiently distinct from the goods and services covered by both of the Cited Marks.  Simply because Applicant’s Goods and the goods and services covered by both of the Cited Marks all fall under the broad ambit of controlling pests or mold/fungus, such tangential relationship is insufficient to support a Section 2(d) refusal in light of the other factors

ARGUMENT

Likelihood of confusion is a question of fact that turns on several factors.  In the preeminent likelihood of confusion case, In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court listed thirteen factors to consider when determining whether a likelihood of confusion exists under Section 2(d) of the Trademark Act.   The DuPont factors that are relevant to the present analysis all decisively weigh in favor of Applicant, including:  (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression;  (2) the differences in the goods and services as identified in the applications and registrations at issue; and (3) the conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing. But ultimately, the fundamental inquiry in determining likelihood of confusion goes to the cumulative effect of the differences in the marks and the relevant goods or services.  Federated Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24, 29 (C.C.P.A. 1976).   

The Marks Differ in Sound, Sight and Meaning:

Similarity in the appearance, sound, and commercial impression arises from the overall impression of the elements comprising the mark.  In re Hearst Corp., 25 U.S.P.Q.2d 1238, 1239 (Fed. Cir. 1992) (emphasis added).  “Marks tend to be perceived in their entireties, and all components thereof must be given appropriate weight.”  Id.  Marks must be compared in their entireties.  A mark must not be dissected or split up into its component parts and each part then compared with corresponding parts of the cited mark to justify a finding of a likelihood of confusion.  It is the impression that the mark as a whole creates on the average reasonably prudent purchaser and not the parts thereof, that is important.  Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538 (1920); see also In re National Data Corp., 224 U.S.P.Q. 749 (Fed. Cir. 1985).  In the words of the Supreme Court, “[t]he commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail.  For this reason it should be considered in its entirety.”  Estate of P.D Beckwith, 252 U.S. at 545-46.

Applicant’s Mark is comprised of a compound of two literal elements  -- BLACKOUT --  compared to the Cited Marks, BLACKOUT BEDBUG DETECTOR and BLACK-OUT MOLD & STAIN REMOVER.  Here, though the marks share the same first term, the additional literal elements “BEDBUG DETECTOR” and “MOLD & STAIN REMOVER” have sharply different appearances and sound firmly distinct when spoken and heard.  Plus, those terms and phrases, although disclaimed, nevertheless send strong and clear messages to consumers regarding the nature, use, qualities, and characteristics.  For instance, “BEDBUG DETECTOR” tells consumers that the products are not just for any insect or pest, but specifically for bedbugs and that the goods provide detectionof those bedbugs.  Similarly, “MOLD & STAIN REMOVER” informs customers that the Pending Goods are designed and intended to be used to do just that, remove mold and stains.  Thus, these visual and phonetic elements convey clear and sound information to consumers that avoid any likelihood of confusion with Applicant’s Mark.

 

In fact, the disclaimed elements “BEDBUG DETECTOR” and “MOLD & STAIN REMOVER” are important to the overall visual and phonetic impressions of the Cited Marks.  “A disclaimer does not remove the disclaimed matter from the mark. The mark must still be regarded as a whole, including the disclaimed matter, in evaluating similarity to other marks.”  TMEP § 1213.10 citing  In re Nat'l Data Corp., 753 F.2d 1056, 1059, 224 USPQ 749, 751 (Fed. Cir. 1985); Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570, 218 USPQ 390, 395 (Fed. Cir. 1983); Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 144 USPQ 433 (C.C.P.A. 1965); In re MCI Commc'ns Corp., 21 USPQ2d 1534, 1538-39 (Comm’r Pats. 1991).

Similarly adding matter to a registered mark is not necessarily enough to overcome a likelihood of confusion, but it is here.  Additions or deletions to marks may be sufficient to avoid a likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted.”  See TMEP §1201.001(b)(iii) citing Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011) (affirming TTAB’s holding that contemporaneous use of applicant’s CAPITAL CITY BANK marks for banking and financial services, and opposer’s CITIBANK marks for banking and financial services, is not likely to cause confusion, based, in part, on findings that the phrase "City Bank" is frequently used in the banking industry and that "CAPITAL" is the dominant element of applicant’s marks, which gives the marks a geographic connotation as well as a look and sound distinct from opposer’s marks); Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1857-58 (TTAB 2008) (finding that, although cancellation petitioner’s and respondent’s marks were similar by virtue of the shared descriptive wording "SPORTSMAN’S WAREHOUSE," this similarity was outweighed by differences in terms of sound, appearance, connotation, and commercial impression created by other matter and stylization in the respective marks); In re Shawnee Milling Co., 225 USPQ 747, 749 (TTAB 1985) (holding GOLDEN CRUST for flour, and ADOLPH’S GOLD’N CRUST and design (with "GOLD’N CRUST" disclaimed) for coating and seasoning for food items, not likely to cause confusion, noting that, because "GOLDEN CRUST" and "GOLD’N CRUST" are highly suggestive as applied to the respective goods, the addition of "ADOLPH’S" is sufficient to distinguish the marks); In re S.D. Fabrics, Inc., 223 USPQ 54, 55-56 (TTAB 1984) (holding DESIGNERS/FABRIC (stylized) for retail fabric store services, and DAN RIVER DESIGNER FABRICS and design for textile fabrics, not likely to cause confusion, noting that, because of the descriptive nature of "DESIGNERS/FABRIC" and "DESIGNER FABRICS," the addition of "DAN RIVER" is sufficient to avoid a likelihood of confusion). In this case, the addition of literal elements “BEDBUG DETECTOR” and “MOLD & STAIN REMOVER” in the Cited Marks are prominent and sufficiently negate any likelihood of confusion both because they such an instant visual and phonetic distinction and send entirely different messages to consumers.   

In a case that presented a much closer question than here, the Trademark Trial and Appeal Board held IMPERIAL for automobile and structural parts and IMPERIAL for automotive products were not confusingly similar in In re Dayco Products-Eaglemotive Inc., 9 U.S.P.Q.2d 1910 (T.T.A.B. 1988). The Dayco case demonstrates clearly that where a term has been used extensively in connection with a particular category of goods and services, there is no likelihood of confusion even where an identical mark is used on highly-related goods.  If the two IMPERIAL marks were found to be sufficiently distinguishable, then there remains no doubt that the Applicant’s Mark is sufficiently distinguishable from the Cited Marks.

Furthermore, in Tektronix, Inc. v. Daktronics, Inc., the Court of Customs and Patent Appeals considered whether two marks, DAKTRONIKS and TEKTRONIX, were confusingly similar.  534 F.2d 915, 917 (C.C.P.A. 1976).   The suffix “-TRONICS” (or its equivalent “-TRONIX”) is used to convey the ordinary suggestion that the products or services are electronic in nature.  McCarthy, §23:48 at 23-238.   The Court noted the “obvious visual prominence” of the stylized letter “D” in applicant Daktroniks’ mark, concluding that element helped distinguish the applicant’s mark sufficiently from the Tektronix mark.  Id.   The same is true for the leading and dominant word “BERRY” that readily distinguish Applicant’s Mark from the Cited Marks so that Applicant’s Mark is not likely to be confused. 

It is important to note that Federal Circuit jurisprudence is clear that the inclusion of one or more similar terms between competing marks does not necessitate a likelihood of confusion finding.  See, e.g., In re Hearst Corp., 25 U.S.P.Q.2d at 1239.  In Hearst, for example, the Federal Circuit held that the marks VARGA GIRL and VARGAS, used in connection with related goods, were sufficiently different to negate any likelihood of confusion. The Hearst case presented a closely analogous question to the one posed here.  The marks in the Hearst case also involved word marks without any stylization, color or design elements and the first elements were identical (one singular, one plural).  Yet VARGA GIRL and VARGAS still were held sufficiently distinguishable.   And here, the additional literal elements “BEDBUG DETECTOR” and “MOLD & STAIN REMOVER” are significant because they look and sound so differently from Applicant’s Mark and signal to consumers the very nature, purpose and use of the Cited Goods.

A legion of case law supports that there is no likelihood of confusion between SCJ’s Mark and the Cited Mark.  For example, the C.C.P.A held that the mark RED ZINGER was not confusingly similar to the cited mark ZINGERS even when both were used on products sold to consumers through similar channels.  Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 928 (C.C.P.A. 1978).  The court noted that the additional word element RED could not be ignored in light of the maxim that marks be considered in their entireties.  Id.   The Interstate Brands case involved two word marks, again presenting a very similar question to the one here, with one of the words being common to both marks.  The color adjective RED was enough to distinguish those two marks.  Just like the color RED, the additional literal elements “BEDBUG DETECTOR” and “MOLD & STAIN REMOVER” present in the Cited Marks are is sufficient to negate any likelihood of confusion.  

The Federal Circuit’s decision in re Electrolyte Labs., Inc., 929 F.2d 645 (Fed. Cir. 1990) is also instructive and further indicates that there is no likelihood of confusion between SCJ’s Mark and the Cited Mark.   In Electrolyte Labs, the applicant sought to register the composite mark K+ (and design).  The Board refused to register the mark, citing the K+EFF (and design) mark as confusingly similar.  Id.  The Federal Circuit reversed the Board’s refusal of registration and allowed the mark to proceed to publication.  Significantly, the court expressly noted that the respective parties’ goods were similar and traveled similar trade channels--indeed, both parties produced vitamin supplements sold in retail channels, arguably just like goods at issue in the present analysis.   Id. at 647.   Yet the Court once again emphasized the axiom that the marks must be considered in their entireties.

Also highly relevant to this analysis is the Federal Circuit’s holding that the mark CRYSTAL CREEK for wine was not confusingly similar to CRISTAL for champagne, even though the goods were related, in the same class, and traveled in the same commercial channels, because the additional element “CREEK” gave rise to a different commercial connotation than that of the singular “CRISTAL.”  Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 1375 (Fed. Cir. 1998).   Once again, the same distinction can be made here and even more because the Cited Marks consist of important, additional elements -- “BEDBUG DETECTOR” and “MOLD & STAIN REMOVER.” Therefore, the overall differences between Applicant’s Mark and both of the Cited Marks readily distinguishes them to easily negate any likelihood of confusion.  

Comparing the marks in the entireties, Applicant’s Mark looks and sounds differently and conveys a different commercial impression than the Cited Marks, which is more than sufficient to negate any likelihood of confusion.  Consequently, this first and most significant DuPont factor weighs heavily in favor of registration of Applicant’s Mark.  

The Goods and Services are Sufficiently Dissimilar:

            Applicant’s Goods are various biocide, fungicides, herbicides, insecticides, nematicides, parasiticides, pesticides are all intended to be used for crop protection and/or turf and ornamental protection in commercial settings.  In other words, Applicant’s Goods are not products that average consumers have any need for or be able to purchase at their local hardware, lawn and garden or big-box store.   On the contrary, the Registered Goods are obviously intended for the domestic user because they are focused on bed bugs.  Similarly, the Pending Goods do not rid any pests at all but rather serve clean and inhibit nuisances such as mold, mildew, bacteria, and fungus.  While Applicant’s Goods include fungicides, products sprayed on surfaces (such as countertops) to clean or protect against mold and mildew.  See http://www.blackout4mold.com/.

Conditions Under Which Purchases are Made:

            Closely related to the differences among the goods themselves are the conditions under which the relevant goods are purchases.  As discussed above, Applicant’s Goods are commercial grade products that are sold through distributors to most commonly farmers and other agricultural producers and commercial and industrial operations such as factories and golf courses.   On the other hand, the Registered Goods are designed to detect bedbugs, which strongly indicates a domestic use and purpose.   This notion is further substantiated because the Registered Goods also include pest control services, which are typically provided for domestic consumption rather than agricultural or industrial purposes like Applicant’s Goods.  The same can be said for the Pending Goods that are designed and used as an application to clean or inhibit mold, mildew and fungus.  Given the overall visual, phonetic, commercial connotation differences, the settings and circumstances under which all of the relevant goods and services are

            perhaps most compelling is the level of sophistication of those who purchase Applicant’s Goods.   More specifically, Applicant’s Goods are heavily regulated by the Environmental Protection Agency (“EPA”) and require testing, approval, and registration before they can be sold.  That is not the case with any of the Registered or Pending Goods which could be purchased at a local lawn and garden store or from a big box retailer.  Under these distinct purchasing environments, there is no reasonable basis to conclude that consumers will likely be confused between Applicant’s Mark and either of the Cited Marks.

 

CONCLUSION:

            For all of the reasons set forth above, Applicant requests that the Section 2(d) refusal based on both the Registered Mark and the Cited mark be withdrawn.

                                               

Respectfully submitted,

Dianne M. Smith-Misemer

Hovey Williams LLP

Attorney for Applicant

The applicant's current attorney information: Dianne M. Smith-Misemer. Dianne M. Smith-Misemer of HOVEY WILLIAMS LLP, is located at

      10801 MASTIN BLVD., SUITE 1000
      OVERLAND PARK, Kansas 66210
      US
The docket/reference number is 52594/5182.

The phone number is 913-647-9050.

The fax number is 913-647-9057.

The email address is tmdocketing.misemer@hoveywilliams.com

The applicants proposed attorney information: Dianne M. Smith-Misemer. Other appointed attorneys are John M. Collins, Thomas B. Luebbering, Andrew G. Colombo, Scott R. Brown, Tracy L. Bornman, Michael B. Hurd, Joan O. Herman, Kameron D. Kelly, Gregory J. Skoch, Cheryl L. Burbach, Michael Elbein, Randall W. Schwartz, Crissa A. Cook, Matthew Walters, Paul J. Walker, Chad Kyle, Stephen Huggins, Kyle Mendenhall, C. Blair Barbieri, Chris Dawson, Darin McCollum, Chandler E. Schmidt and Jonathan L. Hines. Dianne M. Smith-Misemer of HOVEY WILLIAMS LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      10801 MASTIN BLVD., SUITE 1000
      OVERLAND PARK, Kansas 66210
      United States
The docket/reference number is 52594/5182.

The phone number is 913-647-9050.

The fax number is 913-647-9057.

The email address is tmdocketing.misemer@hoveywilliams.com

Dianne M. Smith-Misemer 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: DIANNE M. SMITH-MISEMER. DIANNE M. SMITH-MISEMER of HOVEY WILLIAMS LLP, is located at

      10801 MASTIN BLVD., SUITE 1000
      OVERLAND PARK, Kansas 66210
      US
The docket/reference number is 52594/5182.

The phone number is 913-647-9050.

The fax number is 913-647-9057.

The email address is tmdocketing.misemer@hoveywilliams.com; rnichols@hoveywilliams.com

The applicants proposed correspondence information: Dianne M. Smith-Misemer. Dianne M. Smith-Misemer of HOVEY WILLIAMS LLP, is located at

      10801 MASTIN BLVD., SUITE 1000
      OVERLAND PARK, Kansas 66210
      United States
The docket/reference number is 52594/5182.

The phone number is 913-647-9050.

The fax number is 913-647-9057.

The email address is tmdocketing.misemer@hoveywilliams.com; rnichols@hoveywilliams.com

SIGNATURE(S)
Response Signature
Signature: /dsmisemer/     Date: 01/07/2020
Signatory's Name: Dianne M. Smith-Misemer
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 913647 9050

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:    DIANNE M. SMITH-MISEMER
   HOVEY WILLIAMS LLP
   
   10801 MASTIN BLVD., SUITE 1000
   OVERLAND PARK, Kansas 66210
Mailing Address:    Dianne M. Smith-Misemer
   HOVEY WILLIAMS LLP
   10801 MASTIN BLVD., SUITE 1000
   OVERLAND PARK, Kansas 66210
        
Serial Number: 88518954
Internet Transmission Date: Tue Jan 07 17:14:53 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020010717145386
7035-88518954-70079204b893edc10d681465a3
6dccf743bfd6ea7c8d0c43a381f3cc5c568ed482
-N/A-N/A-20200107160024679841