IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TTAB
`
`In re Application of:
`
`Schwartz, Norman S.
`
`Serial No.:
`
`78/682262
`
`Filed:
`
`Mark:
`
`July 31, 2005
`
`OOPS
`
`NOTICE OF APPEAL
`
`Applicant, Norman S. Schwartz. (the “Applicant”) hereby appeals to the Trademark Trial
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`and Appeal Board (the “Board”) from the final decision of the U.S. Patent and Trademark Office
`
`(the “PTO”) dated May 13, 2008. The appeal fee of $100.00 is submitted herewith. Applicant
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`has simultaneously filed a Response to Office Action and Request for Reconsideration with the
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`PTO. Pursuant to TMBP § 1204, TMEP §715.04, and the policies of the Board, Applicant
`
`respectfully requests that the Board suspend action on this Appeal and remand the subject
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`Application to the PTO for consideration of the Response to Office Action and Request for
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`Reconsideration.
`
`Applicant further requests that the Board suspend the time allowed by Applicant to file its
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`appeal brief pending the PTO’s decision regarding the Response to Office Action and Request
`
`for Reconsideration and reset such time in the event
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`this Appeal continues following
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`\
`
`consideration by the PTO. Should the Board have any questions, please contact the undersigned
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`at (404) 885-3652.
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`ill/19/2003 SHILSOHI 00000016 78682262
`
`‘pi rc:e4o3
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`100.00 DP
`
`
`
`Respectfully submitted,
`
`TROUTMAN LP
`
`By:
`
`2.
`-
`-
`0
`F. R chard Rimer, Jr.,
`Attorneys for Applicant
`
`.
`
`q.
`
`Bank of America Plaza
`
`600 Peachtree Street, N.E., Suite 5200
`
`Atlanta, GA 30308-2216
`
`Attomey’s facsimile:
`Attorney’ s e-mail:
`
`(404) 962-3380
`trademarks @troutmansanders.com
`
`llllllllllllHllllllllllllllllllIIIHIIIIHIHIIII
`
`11-17-2008
`
`L‘ 5 Patent
`
`:. mar:/m Mail Rep‘. Ct
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`:32
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK EXAMINING OPERATION
`
`TRADEMARK
`
`LAW OFFICE 103
`
`In re Application of:
`
`Schwartz, Norman S.
`
`Mark:
`
`OOPS
`
`Serial No.:
`
`78/682262
`
`Filed:
`
`July 31, 2005
`
`RESPONSE TO OFFICE ACTION
`and
`
`REQUEST FOR RECONSIDERATION
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`Attention:
`
`Carolyn P. Cataldo, Esq.
`Trademark Examining Attorney
`Law Office 103
`
`Honorable Commissioner:
`
`This Response to Office Action and Request for Reconsideration is submitted after
`
`issuance of the Final Office Action by the U.S. Patent and Trademark Office (the “PTO”) dated
`
`May 13, 2008.
`
`
`
`CERTIFICATE OF MAILING
`Date of Deposit: November 13, 2008
`
`I hereby certify that this Response to Office Action and accompanying exhibits are being deposited with the United States Postal
`Service with sufficient postage as first class mail in an envelope addressed to: Commissioner for Trademarks, P.0. Box 1451, Alexandria,
`Virginia 22313-1451, Attn: Carolyn P. Cataldo, Esq., Trademark Examining Attorney, Law Office 103.
`F. RICHARD R
`ER,
`ESQ.
`
`‘\
`
`2003298_ I .DOC
`
`

`
`I. INTRODUCTION
`
`The PTO has made final its refusal to register Application Serial No. 78/682262 for the
`
`mark OOPS (“Applicant’s Mark” or “Mark”) based upon the belief that, pursuant to Trademark
`
`Act Section 2(d), 15 U.S.C. § 1052(d), there is a likelihood of confusion with Registration No.
`
`3166102 for the mark OOPS (the “Cited Mark”), owned by Blissful Centany International
`
`Limited (the “Cited Registrant”). The Applicant respectfully requests that the PTO reconsider
`
`the arguments raised in the Applicant’s previously submitted Office Action Response and the
`
`additional arguments presented below. Such action is considered a proper response to the PTO’s
`
`Final Office Action. TMEP § 715.02.
`
`II. LIKELIHOOD OF CONFUSION ANALYSIS
`
`As the PTO is aware,
`
`the modern factors for determining whether a likelihood of
`
`confusion exists between two marks were articulated in In re E. I. Du Pont de Nemours & Co.,
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`476 F.2d 1357, 177 U.S.P.Q. (BNA) 563 (C.C.P.A. 1973).
`
`In particular, the factors that are of
`
`primary concern in the instant matter include (1) the similarity or dissimilarity and nature of the
`
`goods; (2) the similarity or dissimilarity in the charmels of trade through which the goods
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`identified by the respective marks travel; (3) the length of time during, and the conditions under
`
`which, there has been concurrent use without evidence of actual confusion; (4) the sophistication
`
`of the relevant purchasers of the goods identified by the respective marks; and (5) the number
`
`and nature of similar marks in use on similar goods and services. Applicant respectfully submits
`
`that an analysis of these Du Pont factors confirms that no likelihood of confusion exists between
`
`its Mark and the Cited Mark.
`
`

`
`A.
`
`Applicant’s Mark Will Not Be Confused with the Cited Mark Because the
`Marks Identify Different, Non-Competing Goods and Services.
`
`Pursuant to the second Du Pont factor, evaluation of the similarity, or in this case, the
`
`dissimilarity, between the goods identified by App1icant’s Mark and the Cited Mark is a critical
`
`consideration in a likelihood of confusion analysis. Du Pont, supra. Federal courts and the
`
`Board have held consistently that a likelihood of confusion exists between two marks only if a
`
`reasonably prudent purchaser is likely to be confused as to source or sponsorship of the goods or
`
`services. See Du Pont, 476 F.2d at 1357. The TTAB has held that even identical marks can co-
`
`exist without confusion if they are used in connection with dissimilar goods or services. See
`
`generally J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §
`
`24.107 (4th ed. 2006 update) (hereinafter “MCCARTHY § ___”). Further, because a mark is not a
`
`monopoly as applied to all products and services, identical marks often co-exist in different
`
`fields without confusion. Borg-Warner Chems., Inc. v. Helena Chem. Co., 225 U.S.P.Q. (BNA)
`
`222, 224 (T.T.A.B. 1983) (“The Board. . .has found no likelihood of confusion even with respect
`
`to identical marks applied to goods and/or services used in a common industry where such goods
`
`and/or services are clearly different from each other. . .”).
`
`In the following cases, the TTAB and other courts permitted trademark use on non-
`
`competitive goods or services even though the marks in some cases were identical or nearly
`
`identical and the goods or services shared a related feature or complementary function:
`
`ALLSTATE
`ALLSTATE
`(mortgage brokerage services)
`(insurance)
`Allstate Ins. Co. v. Allstate Inv. Corp., 328 F.2d 608, 141 U.S.P.Q. (BNA) 280 (5th Cir.
`
`1964);
`
`A0
`
`A0
`
`(ceramic tile)
`(floor coating)
`Am. Optical Corp. v. American Olean Tile C0., 185 U.S.P.Q. (BNA) 405 (S.D.N.Y.
`1974);
`
`

`
`AUTUMN
`
`AUTUMN GRAIN
`
`(bread)
`(margarine)
`Lever Bros. Co. v. American Bakeries C0., 693 F.2d 251, 216 U.S.P.Q. (BNA) 177 (2d
`
`Cir. 1982);
`
`BENEFICIAL
`
`BENEFICIAL CAPITAL
`
`(business loans)
`(consumer loans)
`Beneficial Corp. v. Beneficial Capital Corp., 529 F. Supp. 445, 213 U.S.P.Q. (BNA)
`1091 (S.D.N.Y. 1982);
`
`BLUE RIBBON
`
`BLUE RIBBON
`
`(malt extract)
`(beer)
`Pabst Brewing Co. v. Decatur Brewing Co., 284 F. 103 (7th Cir. 1922);
`
`BRAVO’S
`
`BRAVOS
`
`(tortilla chips)
`(crackers)
`Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 209 U.S.P.Q. (BNA) 969 (2d Cir. 1981);
`
`CADET
`
`CADET
`
`(lighting fixtures)
`(storage batteries)
`Pep Boys-Manny, Moe & Jack v. Edwin F. Guth Co., 197 F.2d 527, 94 U.S.P.Q. (BNA)
`158 (C.C.P.A. 1952);
`
`COLUMBIA
`
`COLUMBIA
`
`(health care services)
`(university)
`Trustees of Columbia Univ. v. Columbia/HCA Healthcare Corp., 964 F. Supp. 733, 43
`U.S.P.Q.2d (BNA) 1083 (S.D.N.Y. 1997);
`
`CONSUMERS
`CONSUMERS
`(coal and wood fuel)
`(fuel oil)
`Consumers Petroleum Co. v. Consumers Co. of Ill., 169 F.2d 153, 78 U.S.P.Q. (BNA)
`
`227 (7th Cir. 1948);
`
`DRIZZLE
`DRIZZLER
`(women’s overcoats and rain coats)
`(men’s golf jackets)
`McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 202 U.S.P.Q. (BNA) 81 (2d Cir.
`1979);
`
`ESPRIT
`ESPRIT
`(women’s clothing)
`(women’s shoes)
`H. Lubovsky, Inc. v. Esprit de Corp., 627 F. Supp. 483, 228 U.S.P.Q. (BNA) 814
`(S.D.N.Y. 1986);
`
`EXQUISITE
`EXQUISITE
`(fabrics)
`(ladies’ undergarments)
`Exquisite Form Indus., Inc. v. Exquisite Fabrics of London, 378 F. Supp. 403, 183
`U.S.P.Q. (BNA) 666 (S.D.N.Y. 1974);
`
`

`
`FEDERAL
`
`FEDERAL
`
`(television sets)
`(radio supplies)
`Fed. Tel. & Radio Corp. v. Fed. Television Corp., 180 F.2d 250, 84 U.S.P.Q. (BNA) 394
`(2d Cir. 1950);
`
`HURRICANE
`
`HURRICANE
`
`(auto engines)
`(outboard motors)
`Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 236 F.2d 423, 111 U.S.P.Q. (BNA)
`105 (C.C.P.A. 1956);
`
`KINGSFORD
`KINGSFORD
`(barbecue sauce)
`(charcoal briquettes)
`Kingsford Prods. Co. v. Kingsfords, Inc., 715 F. Supp. 1013, 11 U.S.P.Q.2d (BNA) 1350
`(D. Kan. 1989);
`
`LOGO DEVICE
`LOGO DEVICE
`(antenna rotators)
`(telephone services)
`Alliance Mfg. Co. v. Allied Tel. Co., 182 U.S.P.Q. (BNA) 237 (T.T.A.B. 1974);
`
`MICRO NAUTS
`MICRONAUTS
`(hobby items)
`(toys)
`Scott v. Mego Int’l, Inc., 519 F. Supp. 1118, 213 U.S.P.Q. (BNA) 824 (D. Minn. 1981);
`
`MINI CINEMA
`MINI CINEMA
`(erotic movie theatre)
`(family movie theaters)
`Modular Cinemas ofAm., Inc. v. Mini Cinemas Corp., 348 F. Supp. 578, 175 U.S.P.Q.
`(BNA) 355 (S.D.N.Y. 1972);
`
`OLE
`OLE
`(cigars)
`(tequila)
`Schenley Distillers, Inc. v. General Cigar Co., 427 F.2d 783, 166 U.S.P.Q. (BNA) 142
`(C.C.P.A. 1970);
`
`PLAYERS
`PLAYERS
`(men’s underwear)
`(shoes)
`In re British Bulldog, Ltd., 224 U.S.P.Q. (BNA) 854 (T.T.A.B. 1984);
`
`RIVA
`RIVA
`(motor scooters)
`(luxury power boats)
`Riva Boats Int’l S.p.a. v. Yamaha Motor Corp., 223 U.S.P.Q. (BNA) 183 (C.D. Cal.
`1983);
`
`SUNBEAM
`SUNBEAM
`(fluorescent lamps)
`(electric appliances)
`Sunbeam Lighting Co. v. Sunbeam Corp., 183 F.2d 969, 86 U.S.P.Q. (BNA) 240 (9th Cir.
`1950); and
`
`

`
`SUNKIST
`
`SUNKIST
`
`(bakery products)
`(fruits)
`Cal. Fruit Growers Exchange v. Sunkist Baking Co., 166 F.2d 971, 76 U.S.P.Q. (BNA)
`85 (7th Cir. 1947).
`
`Each of the above courts held that there is no per se rule that even identical or virtually
`
`identical marks result in a likelihood of confusion. Therefore, there is, by analogy, no per se rule
`
`that the Cited Registrant’s goods and Applicant’s goods are related.
`
`An examination of the respective goods identified by Applicant’s Mark and those
`
`identified by the Cited Mark confirms that the respective marks identify non-competing goods
`
`See Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490,
`
`1
`
`U.S.P.Q.
`
`(BNA) 1813 (Fed. Cir. 1987) (analysis based solely on goods/goods recited in
`
`applications). Specifically, the Cited Mark identifies very specific foods, namely, “crackers,
`
`biscuits, thin dry biscuits, wafers, malt biscuits.” See PTO records for the Cited Mark
`
`attached hereto as Exhibit A. In contrast, Applicant’s Mark lists “table wines.”
`
`The PTO observed that the goods identified by Applicant’s Mark are closely related to
`
`the services identified by the Cited Mark. Specifically, the PTO included “copies of printouts
`
`from the PTO’s X-Search database, which show third party registrations of marks used in
`
`connection with the same or similar goods and services as those of Applicant and Registrant in
`
`this case.” Applicant respectfully submits that while this search may have limited “probative
`
`value” to suggest that Registrant’s goods and Applicant’s goods are related, it is not sufficient
`
`evidence for at least two reasons. First, the PTO database is replete with registrations which list
`
`disparate items. To the extent the evidence offered by the PTO does show that there is a
`
`connection between the goods identified by Applicant’s Mark and those identified by the Cited
`
`Mark, it only shows that the connection exists within the registration records and not in actual
`
`use in commerce such that “purchasers would believe the product or service is within the
`
`-5-
`
`

`
`registrant’s logical zone of expansion.” CPG Products Corp. v. Perceptual Play, Inc., 221
`
`USPQ 88, 91 (TTAB 1983).
`
`In an effort to demonstrate how these searches may produce
`
`purported connections when none exist, the Applicant ran a similar search for registrations
`
`containing both batteries and baby food. See PTO records of 14 such registrations attached
`
`hereto as Exhibit B. The reason such disparate items are contained in so many registrations is
`
`that most contain long identifications. This situation is repeated in many of the registrations
`
`attached to the Final Office Action. Applicant contends that this is not sufficient evidence that
`
`these items are related. Second, many of the records attached to the Final Office Action do not
`
`list goods similar to those identified by the Cited Mark and by Applicant’s Mark. Specifically,
`
`Applicant notes, that as read in the context of the other items listed in the various identifications,
`
`the listings of “biscuits” in Reg. Nos. 2,660,121, 2,636,318, 2,776,133, 2,764,973, 2,811,500,
`
`2,802,110, 3,057,118 and 3,057,119 refers to the US definition of a small quick bread made from
`
`dough and not the British definition of a cracker as intended in the Cited Mark. As set forth in
`
`the Merriam-Webster Online Dictionary, “biscuit” means:
`
`1 a: any of various hard or crisp dry baked products: as (1)British : CRACKER 4
`(2)British : COOKIE b: a small quick bread made from dough that has been rolled
`out and cut or dropped from a spoon
`
`Copy attached as Exhibit C. See Hancock v. American Steel & Wire Co. of New Jersey,
`
`203 F.2d 737 (C.C.P.A. 1953) and University of Notre Dame du Lac v. J.C. Gourmet Food
`
`Imports Co., Inc., 213 U.S.P.Q. 594 (T.T.A.B. 1982), afi"d, 703 F.2d 1372 (Fed. Cir. 1983)
`
`(Well settled that the PTO may take judicial notice of dictionary definitions). Finally, Reg. Nos.
`
`2845347 and 2684592 each list “cooking wines,” which, unlike table wines, are not intended for
`
`direct consumption.
`
`Generally speaking, the mere fact that Applicant’s goods and the goods identified by the
`
`Cited Mark are generally related to consumable items does not mean that they are related in a
`
`-7-
`
`

`
`meaningful sense; namely, whether customers will assume that they emanate from, or are
`
`associated with, a common source. The Board has held repeatedly that rejecting an application
`
`based on a sweeping generalization, such as that two marks could be lumped within a vast field
`
`of one particular category, imperrnissibly ignores marketplace realities. See In re Quadram
`
`Corp., 228 U.S.P.Q. 863 (T.T.A.B. 1985) (per se rule regarding relatedness of hardware and
`
`software in computer industry is too rigid and ignores marketplace realities); see also Info.
`
`Resources, Inc. v. X*Press Info. Services, 6 U.S.P.Q.2d 1034 (T.T.A.B. 1988); Elec. Data Sys.
`
`Corp. v. EDSA Micro Corp. 23 U.S.P.Q.2d 1460 (T.T.A.B. 1992) (no likelihood of confusion
`
`between EDS and EDSA where the only “relationship” opposer showed between its services and
`
`applicant’s goods is that they both involve computer programs).
`
`More importantly, the different functions of the goods clearly distinguish themselves
`
`from one another so that consumer confusion as to source of origin is unlikely. See Petro
`
`Shopping Ctrs., L.P. v. James River Petroleum, Inc. 44 U.S.P.Q.2d 1921, 1927 (4th Cir. 1997),
`
`cert. denied, 523 U.S. 1095, 118 S.Ct. 1561 (1998). According to its web site,
`
`the Cited
`
`Registrant was using the Cited Mark in connection with biscuits (which, as listed in the
`
`descriptions of the specific items, are what Americans would call “crackers”). See printout from
`
`the Cited Registrant’s website attached hereto as Exhibit D. According to the website, the Cited
`
`Mark has been placed on five flavors of crackers.
`
`Id. By contrast, Applicant does not use its
`
`Mark on any type of food. Rather, its Mark is used only in connection with table wines, an item
`
`that can only be sold by licensed sellers and only be purchased by adults of legal age. Further,
`
`the cracker flavors listed on Cited Registrant’s web site are Roast Beef, Cheezy Spaghetti, Baked
`
`Chicken Tomato, Roasted Sweet Corn and Special Fried Chicken. These flavors are unusual to a
`
`U.S. consumer, and support the Cited Registrant’s statement contained in the file wrapper that
`
`

`
`the “goods are of an Asian ethinic nature [and] consist of typically Asian flavors.” And that its
`
`customers “are seeking biscuits and crackers of a particular Asian origin.” See Exhibit E. This
`
`disctinction will further serve to distinguish the goods.
`
`Therefore, the goods identified by the respective marks serve entirely different functions
`
`and purposes. Accordingly, Applicant respectfully requests that the PTO withdraw its refusal to
`
`register its Mark based on the existence of the Cited Mark and allow Applicant’s Mark to
`
`proceed to publication and registration on the PTO’s Principal Register.
`
`B.
`
`The Applicant’s Mark Will Not Be Confused with the Cited Mark because
`the Respective Goods Are Sold through Different Trade Channels.
`
`Another important factor in determining likelihood of confusion is whether the marks
`
`travel in different channels of trade. Du Pont 476 F.2d at 1361; see also Giorgio Beverly Hills,
`
`Inc. v. Revlon Consumer Prods. Corp., 33 U.S.P.Q.2d (BNA)
`
`(S.D.N.Y. 1994) (“no proximity
`
`found where one fragrance sells in a mass department store outlet while the other [fragrance]
`
`sells in more exclusive stores”) (citing Elizabeth Taylor Cosmetics Co. v. Annick Goutal,
`
`S.A.R.L., 673 F. Supp. 1238, 1246, 5 U.S.P.Q.2d (BNA) 1305 (S.D.N.Y. 1987)); In re Fesco,
`
`Inc., supra (allowing two parties to concurrently use an identical mark where their goods were
`
`different and there was insufficient evidence to establish that the goods would be encountered by
`
`the same purchasers).
`
`Applying this factor, the Applicant submits that the goods identified by the Cited Mark
`
`will not travel in the same trade channels as the Applicant’s goods. The TTAB has rejected any
`
`assumption that goods identified in an application or registration travel in the same channels of
`
`trade:
`
`Finally, of the few registrations that contain reference to both x-ray imaging
`equipment and nuclear imaging equipment, it is not clear on the record to what
`extent the goods or services therein, and their channels of trade, are similar to the
`goods herein and their respective channels of trade. Thus, we conclude that the
`
`-9-
`
`

`
`Examining Attorney has not established that applicant’s and registrant’s identified
`goods are sufficiently related that, if sold under the identical or similar marks,
`confusion is likely.
`
`In re Digirad Corp., 45 U.S.P.Q.2d (BNA) 1841, 1845 (T.T.A.B. 1998).
`
`The Applicant respectfully submits that its Mark and the Cited Mark travel in disparate
`
`channels of trade. The Applicant sells its wines through wine departments in large retail chains.
`
`Conversely, as stated by the Cited Registrant and contained in the file wrapper for the Cited
`
`Mark, the goods are sold through “specialty Asian food stores” and “the public at large is not the
`
`[Cited Registrant’s] targeted or actual consumer.” (Emphasis added.)
`
`See Exhibit E. Thus,
`
`there is no likelihood that consumers will encounter the goods identified by the Applicant’s Mark
`
`and the Cited Mark and be confused as to the source or origin of the Applicant’s goods and the
`
`goods offered under the Cited Mark because the trade channels do not overlap.
`
`In similar factual situations, the TTAB has found that such contemporaneous use of
`
`marks is not likely to cause confusion. For example, in Dynacolor Corp. v. Beckman & Whitley,
`
`Inc., 134 U.S.P.Q. (BNA) 410 (T.T.A.B. 1962), the Board held that the marks DYNAFIX and
`
`DYNAFAX were not confusingly similar because sales to photo finishers were in a different
`
`trade channel than the sale of expensive cameras to the public, even though the goods were
`
`arguably related. See also In re Shipp, 4 U.S.P.Q.2d (BNA) 1174 (T.T.A.B. 1987) (laundry and
`
`cleaning services offered to the public under the PURITAN & Design mark were not confusingly
`
`similar
`
`to dry-cleaning machine parts or cleaning preparations,
`
`including dry cleaning
`
`preparations,
`
`sold under
`
`the PURITAN mark both to laundromats
`
`and dry-cleaning
`
`establishments); Telex Corp. v. Sound Ear, Inc., 169 U.S.P.Q. (BNA) 255 (T.T.A.B. 1971)
`
`(identical marks
`
`identifying hearing aids and listening devices for
`
`television were not
`
`confusingly similar although both goods were used by people who are hard-of-hearing).
`
`-10-
`
`

`
`Instructively, the Second Circuit has held that there was no likelihood of confusion between
`
`women’s coats and unisex golf jackets. McGreg0r-Doniger Inc. v. Drizzle, Inc., 599 F.2d 1126,
`
`202 U.S.P.Q. (BNA) 81 (2d Cir. 1979) (“McGregor [Plaintiff] does not claim that DRIZZLER
`
`jackets and DRIZZLE coats are directly competitive. Customers shopping for an inexpensive
`
`golf jacket are not likely to become confused by the similarity of the marks and mistakenly
`
`purchase a fashionable and expensive woman’s coat.”). As the court observed, “[b]eyond the
`
`fact that they might both be crudely classified as outerwear, the “DRIZZLER” and defendant’s
`
`products have nothing in common. McGregor’s garment is a relatively inexpensive, lightweight,
`
`waist-length jacket a Windbreaker .
`
`.
`
`.
`
`. As is apparent from advertisements for the jacket, it is
`
`intended for casual wear, particularly in connection with sports activities.” Id. at 1135.
`
`Accordingly, the Applicant respectfully submits that, just as no consumer is going to
`
`confuse a jacket used in connection with golf with a jacket for general wear, so, too, is there no
`
`likelihood of confusion between the Applicant’s Mark and the Cited Mark because the respective
`
`products are vastly different and are sold in disparate channels of trade.
`
`C.
`
`Applicant’s Mark Will Not Be Confused with the Cited Mark Because the
`Marks Have Co-existed Without Evidence of Actual Confusion.
`
`The seventh DuPont factor is the nature and extent of any actual confusion and the eighth
`
`DuPont factor is the length of time during and conditions under which there has been concurrent
`
`use of the two marks without evidence of actual confusion. See DuPont, 476 F.2d at 1361.
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`These factors reflect
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`the realities of the marketplace, not just
`
`the theoretical exercise of
`
`comparing two words. Id.
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`In the instant case, the Applicant’s Mark and the Cited Mark have
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`existed concurrently for more than two years without any known instances of actual confusion.
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`Under the Lanham Act, the United States Patent and Trademark Office follows the same
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`standard in determining likelihood of confusion as courts follow in trademark infringement
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`-11-
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`

`
`cases. Glenwood Labs, Inc. v. American Home Prods. Corp., 455 F.2d 1384, 1387 (C.C.P.A.
`
`1972). Federal courts have held that, in the absence of evidence of actual confusion, substantial
`
`periods of concurrent use of otherwise conflicting marks raise a strong presumption against the
`
`finding of likelihood of confusion.
`
`For example, in Pignons S.A. de Mecanique v. Polaroid Corp., 657 F.2d 482 (1st Cir.
`
`1981), the First Circuit held that “absent evidence of actual confusion, when the marks have been
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`in the same market, side-by-side, for a substantial period of time, there is a strong presumption
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`that there is little likelihood of confusion.” Id. at 490. The plaintiff in Pignons brought an action
`
`against Polaroid for infringement of Pignons’ registered mark, “Alpha,” used to designate
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`photography equipment and cameras. Polaroid, a junior user, marketed a new camera under the
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`unregistered mark “SX—7O Alpha”. However, the First Circuit granted summary judgment in
`
`favor of Polaroid, based on Pignons’ inability to produce direct evidence of possible consumer
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`confusion in the four years the cameras had been marketed side-by-side. Id. at 490-491. See
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`Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 263 (5th Cir. 1980); reh’g denied, 617 F.2d
`
`295 (5th Cir. 1980), cert. denied, 449 U.S. 899 (1980); Greentree Labs, v. G. G. Bean, Inc., 718
`
`F. Supp. 998 (D. Me. 1989) (holding that defendant’s mark “Odor Kleen” did not infringe
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`plaintiff’s mark, “ODO Kleen,” in spite of evidence that the products were marketed for similar
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`purposes and targeted via similar advertising schemes to similar clientele because there existed a
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`lack of actual confusion in the five years of concurrent use of the two marks).
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`In addition, the TTAB has similarly held contemporaneous use of similar marks over a
`
`continued duration without actual confusion is strong evidence that there is no likelihood of
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`confusion between the two marks. For example, in In re General Motors Corporation, 23
`
`U.S.P.Q. 2d 1465 (T.T.A.B. 1992), the TTAB stated that “the absence of any known incident of
`
`-12-
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`

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`actual confusion in an extensive period of contemporaneous use of the marks is strong evidence
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`that confusion is not likely to occur in the future.” Id.
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`The Applicant’s Mark and the Cited Mark have co-existed for at least two years without
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`any instances, to Applicant’s knowledge, of actual confusion. Applicant respectfully submits
`
`that the lack of actual confusion during a period in which the respective marks have coexisted in
`
`the marketplace is persuasive confirmation that the marks are not likely to be confused by
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`CO1'1S11II1CI'S .
`
`D.
`
`There Is No Likelihood of Confusion between Applicant’s Mark and the
`Cited Mark Because Applicant and Cited Registrant Target Sophisticated
`Consumers with Focused Needs.
`
`Consumers who purchase goods identified by the Cited Mark will make very deliberate
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`selection decisions because they are seeking a very specific type of good. Therefore, confusion
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`between the sources of the parties’ services will not arise. See G.H. Mumm & Cie v. Desnoes &
`
`Geddes, Ltd., 917 F.2d 1292, 1295, 16 U.S.P.Q.2d (BNA) 1635, 1638 (Fed. Cir. 1990)
`
`(determining that when consumers enter the marketplace with a “focused need,” confusion
`
`between goods or services is less likely).
`
`Some courts have determined consumer sophistication to be the most critical factor in
`
`concluding that no confusion would arise between products or services identified by the same or
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`similar marks. See, e.g., Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc., 220 U.S.P.Q.
`
`(BNA) 786, 790 (1st Cir. 1983); Pignons S. A. de Mecanique de Precision v. Polaroid Corp.,
`
`212 U.S.P.Q. (BNA) 246 (1st Cir. 1981) (deciding that purchaser sophistication is dispositive in
`
`a likelihood of confusion analysis because sophisticated consumers exercise greater care in their
`
`purchasing decisions). The Cited Registrant admits that its customers are “seeking biscuits and
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`crackers of a particular Asian origin. See Exhibit E. Given the care exercised when selecting the
`
`-13-
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`

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`goods sold under the Cited Mark, there is no likelihood of confusion between App1icant’s Mark
`
`and the Cited Mark.
`
`E.
`
`AgQlicant’s Mark Will Not Be Confused with the Cited Mark Because the
`Cited Mark is Weak.
`
`Pursuant to the sixth DuPont factor, whether a mark is classified as “strong” or “weak” is
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`an important element in determining the likelihood of confusion between two marks.
`
`See
`
`Independent Grocers’ Alliance Distributing Co. v. Potter-McCune Co., 404 F.2d 622 (C.C.P.A.
`
`1968). Some courts have held that the strength of a senior user’s mark is perhaps the most
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`important factor in the likelihood of confusion analysis. See e. g., Dan Robbins & Assocs., Inc. v.
`
`Questor Corp., 599 F.2d 1009, 1013, 202 U.S.P.Q. 100, 104 (C.C.P.A. 1979)(“A mark’s fame
`
`can influence its breadth of. . .protection”).
`
`In a “crowded” field of marks, each member of the
`
`crowd is relatively weak in its ability to prevent others in the crowd from using the mark. See J.
`
`Thomas McCarthy, MCCARTI-lY’S DESK ENCYCLOPEDLA OF INTELLECTUAL PROPERTY 85 (1991).
`
`The public is not likely to be confused between any two of the marks within the crowd and may
`
`have learned to carefully pick out one mark from the other. Id; see also Angelica Corp. v. Collins
`
`& Aikman Corp., 192 U.S.P.Q. (BNA) 387, 393 (T.T.A.B. 1976)([W]here, as here, there are
`
`observable differences and the issue is whether the word ANGEL is sufficient
`
`to cause
`
`confusion, the extent to which the word has been adopted by others for incorporation in their
`
`marks is pertinent”).
`
`Quite simply, one who chooses a mark that is relatively weak because the same or similar
`
`mark has frequently been used by others must accept that the available protection is accordingly
`
`narrow. See In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 U.S.P.Q.2d (BNA) 1059, 1062-
`
`1063 (Fed. Cir. 2003) (numerous third party users and registrations establish that mark not
`
`entitled to broad protection); Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350,
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`-14-
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`

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`353, 22 U.S.P.Q.2d (BNA) 1453, 1456 (Fed. Cir. 1992) (“Where a party uses a weak mark, his
`
`competitors may come closer to his mark than would be the case with a strong mark without
`
`violating his rights”). Furthermore, terms that are commonly used by numerous unrelated parties
`
`become weak identifiers of source and thus, their scope of protection is narrow. See Wash. Nat’l
`
`Ins. Co. v. Blue Cross & Blue Shield United of Wis., 14 U.S.P.Q.2d (BNA) 1307, 1311 (N.D. Ill.
`
`1990) (“The fact that ADVANTAGE is used so extensively by other companies to identify their
`
`products is reflective of the mark’s weakness”); Ashe v. Pepsico, Inc., 205 U.S.P.Q. (BNA) 451,
`
`456 (S.D.N.Y. 1979) (“The frequent usage of [ADVANTAGE] to identify different products and
`
`goods is a good indication that the mark is a weak one.”).
`
`In Baf Indus. v. Pro-Specialties, Inc.,
`
`206 U.S.P.Q. (BNA) 166, 175 (T.T.A.B. 1980), the court stated that third party registrations
`
`containing similar marks:
`
`...are relevant to show that a particular mark has been adopted and registered by so many
`individuals in a particular field for different products embraced by said field that a registration
`of the mark in that trade is entitled to but a narrow or restricted scope of protection.
`
`The question really concerns not
`
`the marks as
`
`such, but consumer perception.
`
`“Determining that a mark is weak means that consumer confusion has been found unlikely
`
`because the mark’s components are so widely used that the public can easily distinguish slight
`
`differences in the marks, even if the goods are related.” Gen. Mills, Inc. v. Kellogg Co., 824 F.2d
`
`622, 626, 3 U.S.P.Q.2d (BNA) 1442, 1445 (8th Cir. 1987). The consumer is less likely to
`
`remember a weak mark and to associate it with another mark encountered at another place and
`
`time. “[T]he purchasing public has become conditioned to this frequent marketing situation and
`
`will not be diverted from selecting what is wanted .
`
`.
`
`. .” In re Nat’l Data Corp., 753 F.2d 1056,
`
`1060, 224 U.S.P.Q. (BNA) 749, 752 (Fed. Cir. 1985).
`
`Federal trademark law provides that third-party registrations may be relevant to show that
`
`the mark or a portion of the mark is descriptive, suggestive, or so commonly used that the public
`
`-15-
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`

`
`will look to other elements to distinguish the source of the goods or services. See, e.g., Nat’l
`
`Cable Television Ass ’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572 (Fed. Cir. 1991). Marks
`
`including the word “Oops” are used to identify a wide range of goods and services. The PTO
`
`records contain 77 live trademark registrations and pending applications that utilize the word
`
`“Oops.” A true and correct copy of this search is attached as Exhibit F. Further, and most
`
`importantly, the root word “Oop” is frequently used to identify goods and services related to
`
`food. A search of the PTO’s records for active federal registrations and approved or allowed
`
`federal applications incorporating the word “Oops” disclosed 10 such records. A true and
`
`correct copy of the print-outs showing the results of this search is attached hereto as Exhibit G.
`
`Specifically, the search revealed the following notable applications and registrations:
`
` Relevant Services
`
`
`Mark
`
`Applicationl
`Registration
`Number
`
`
`
`OOPS
`
`3446470
`
`Landrum, Michael
`
`
`
`Restaurant, bar and carry—out restaurants;
`caterin services; fast food restaurants
`Nuts, snack mixes consisting primarily of
`processed nuts;
`Candies, chocolates, snack mixes
`consistin rimaril of candied nuts
`Ready—to-eat breakfast cereal
`
`
`
`
`
`
`
`
`Dayton Nut Specialties,
`Inc.
`
`
`
`
`
`
`The Quaker Oats
`Company
`
`OOPSIES
`
`2991340
`
`CAP’N CRUNCH’S
`OOPS! ALL
`BERRIES
`A DASH OF OOPA
`IN EVERY BITE
`
`2184188
`
`1960058
`
`Grecian Delight Foods,
`Inc.
`
`Gyros meat on cones
`
`The PTO records for the above-listed marks are attached hereto as Exhibit H. The
`
`Applicant respectfully submits that the scope of protection afforded the Cited Mark is narrowly
`
`limited and properly analyzed through this prism, namely that the “Oops” component of the
`
`Cited Mark is weak. The federal registration for the Cited Mark does not change this reality.
`
`Indeed, “the registration of a mark is not itself evidence of mark strength; rather, strength is
`
`-16..
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`

`
`created by the extensive use and significant exp