From: Mittler, Kevin
`
`
`
`Sent: 7/10/2014 9:54:34 AM
`
`
`
`To: TTAB EFiling
`
`
`
`CC:
`
`
`
`Subject: U.S. TRADEMARK APPLICATION NO. 79122787 - PAIN AWAY PAIN RELIEF THERAPY - SPR004
`T301 - EXAMINER BRIEF
`
`
`
`*************************************************
`
`Attachment Information:
`
`Count: 1
`
`Files: 79122787.doc
`
`
`
`
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`
`
`
`
`
`
`
`
`*79122787*
`
`
`
`GENERAL TRADEMARK INFORMATION:
`
`http://www.uspto.gov/trademarks/index.jsp
`
` U.S. APPLICATION SERIAL NO. 79122787
`
`
`
` MARK: PAIN AWAY PAIN RELIEF THERAPY
`
`
`
` CORRESPONDENT ADDRESS:
` AARON J WONG
`
`
` PRICE HENEVELD LLP
`
`
`
` 695 KENMOOR SE PO BOX 2567
`
`
`
` GRAND RAPIDS, MI 49501
`
`TTAB INFORMATION:
`
`
`
`
`
`http://www.uspto.gov/trademarks/process/appeal/index.jsp
`
` APPLICANT: One Zero Pty Limited
`
`
`
`
`
` CORRESPONDENT’S REFERENCE/DOCKET NO:
`
`
`
`
`
` SPR004 T301
`
` CORRESPONDENT E-MAIL ADDRESS:
`
` ptomail@priceheneveld.com
`
`EXAMINING ATTORNEY’S APPEAL BRIEF
`
`
`
`
`
`INTERNATIONAL REGISTRATION NO. 1141862
`
`
`
`
`
`

`
`Applicant has appealed the examining attorney’s refusal to register applicant’s mark under
`
`Section §2(d) of the Trademark Act of 1946 (as amended) (hereinafter “the Trademark Act”), 15 U.S.C.
`
`§1052(d).
`
`
`
`FACTS
`
`Applicant seeks registration based on a request for extension of protection based on an
`
`Australian registration (Reg. No. 1141862 registered October 25, 2012), thereby giving the present
`
`application an effective filing date of October 25, 2012 for the mark PAIN AWAY PAIN RELIEF THERAPY
`
`(and design) for the following goods in International Class 005 as amended: “Pharmaceutical
`
`preparations for topical use being herbal creams and sprays for the treatment of arthritis, pain,
`
`circulation and inflammation.” The examining attorney has refused registration of applicant’s mark
`
`based on a likelihood of confusion under Section 2(d) of the Trademark Act, citing Registration No.
`
`1881813 for PAIN-AWAY in stylized text with a small diamond design, registered March 7, 1995 and
`
`most recently renewed on May 6, 2014, for the following goods in International Class 005: “oral
`
`analgesics.” This appeal follows the trademark examining attorney’s first refusal under Section 2(d) of
`
`March 1, 2013 wherein a disclaimer of “PAIN RELIEF THERAPY”, an amended color claim and description
`
`of the mark, and a new copy of the drawing omitting the TM symbol were also required, applicant’s
`
`response of September 3, 2013 arguing against the refusal wherein the phrase “PAIN RELIEF THERAPY”
`
`was disclaimed and a proper color claim, description of the mark, and drawing of the mark were
`
`provided, and the trademark examining attorney’s final refusal under Section 2(d) of September 16,
`
`2013.
`
`
`
`
`
`ISSUE ON APPEAL
`
`

`
`The sole issue on appeal is whether applicant’s mark so resembles the registered mark, when
`
`used in connection with their respective identified goods, as to be likely to cause confusion under
`
`Section 2(d) of the Trademark Act.
`
`
`
`
`
`ARGUMENT
`
`
`
`APPLICANT’S MARK IS LIKELY TO CAUSE CONFUSION WITH THE REGISTERED MARK WHEN USED IN
`CONNECTION WITH THE SPECIFIED GOODS
`
`
`
`Applicant’s mark is highly similar to registrant’s mark and, when combined with the relatedness
`
`of the associated goods, is likely to cause confusion in consumers who are likely to mistakenly believe
`
`that applicant’s goods and registrant’s goods come from the same source or are affiliated goods from
`
`the same entity.
`
`Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a
`
`registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the
`
`source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A
`
`determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the
`
`factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid
`
`in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d
`
`1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56
`
`USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of
`
`equal weight, and any one of the factors may control in a given case, depending upon the evidence of
`
`

`
`record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic
`
`Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de
`
`Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
`
`In this case, the following factors are the most relevant: similarity of the marks, similarity and
`
`nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d
`
`1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593,
`
`1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
`
`
`
`
`
`A. The Marks Provide a Similar Commercial Impression
`
`Applicant’s mark creates a confusingly similar impression to that of registrant’s marks based on
`
`common dominant wording.
`
`Marks are compared in their entireties for similarities in appearance, sound, connotation, and
`
`commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
`
`(quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973));
`
`TMEP §1207.01(b)-(b)(v). Similarity in any one of these elements may be sufficient to find the marks
`
`confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty
`
`Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).
`
`When comparing marks, the test is not whether the marks can be distinguished in a side-by-side
`
`comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to
`
`the source of the goods and/or services offered under applicant’s and registrant’s marks is likely to
`
`result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d
`
`1435, 1440 (Fed. Cir. 2012); Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012); TMEP
`
`

`
`§1207.01(b). The focus is on the recollection of the average purchaser, who normally retains a general
`
`rather than specific impression of trademarks. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB
`
`2012); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).
`
`Although marks are compared in their entireties, one feature of a mark may be more significant
`
`or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101
`
`USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751
`
`(Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature
`
`when determining whether marks are confusingly similar. See In re Nat’l Data Corp., 753 F.2d at 1058,
`
`224 USPQ at 751.
`
`Disclaimed matter that is descriptive of or generic for an applicant’s goods and/or services is
`
`typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d
`
`1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224
`
`USPQ at 752 ; TMEP §1207.01(b)(viii), (c)(ii). In this case, applicant has disclaimed the highly descriptive
`
`wording “PAIN RELIEF THERAPY” from the mark. As discussed in the initial Office Action, this wording is
`
`merely descriptive of a function or purpose of applicant’s goods, i.e. to provide a form of treating pain or
`
`suffering by alleviating or relieving that pain. Thus, the term “PAIN AWAY” is the more dominant term
`
`in the mark and, being more prominently displayed in larger font, creates the dominant consumer
`
`impression of the mark.
`
`Additionally, for a composite mark containing both words and a design, the word portion may
`
`be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods
`
`and/or services. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013)
`
`(citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii); see In re
`
`Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v.
`
`

`
`Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)). Thus, although such marks must
`
`be compared in their entireties, the word portion is often considered the dominant feature and is
`
`accorded greater weight in determining whether marks are confusingly similar, even where the word
`
`portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012)
`
`(citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed.
`
`Cir. 1983)).
`
`In this case, the design portion of registrant’s mark is a minor diamond design that adds no
`
`commercial impression. In applicant’s mark, there are two design features – a design of Australia with
`
`an approximation of part of the Australian flag and a rectangle. The rectangle is merely a carrier design
`
`that adds no commercial impression. The Australia design, while providing some commercial impression,
`
`does not change the overall commercial impression of the mark sufficient to differentiate it from the
`
`registered mark. While it may signal to the consumer that the goods may be of Australian origin, or may
`
`be popular in Australia, or may contain specific ingredients found in Australia, this does not differentiate
`
`the mark from the registered mark which has no obvious limitations provided to the consumer. The
`
`dominant portion of applicant’s mark, both in terms of being the largest in size and prominently placed
`
`in the center of the mark, is the literal phrase “PAIN AWAY.”
`
`Even if potential purchasers realize the apparent differences between the marks, they could still
`
`reasonably assume, due to the overall similarities in sound, appearance, connotation, and commercial
`
`impression in the respective marks, that applicant's goods sold under applicant’s mark constitute a new
`
`or additional product line from the same source as the goods sold under the “PAIN-AWAY” mark with
`
`which they are acquainted or familiar, and that applicant’s mark is merely a variation of the registrant’s
`
`mark. See, e.g., SMS, Inc. v. Byn-Mar Inc. 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO
`
`

`
`ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer's
`
`preexisting mark [ANDREA SIMONE] for its established line of clothing.”).
`
`Accordingly, the dominant portion of each mark, and the strongest consumer commercial
`
`impression, is identical in terms of appearance and sound, i.e. “PAIN AWAY”. In addition, the
`
`connotation and commercial impression of the marks do not differ when considered in connection with
`
`applicant’s and registrant’s respective goods. Therefore, the marks are confusingly similar.
`
`Applicant argues against the finding of similarity of the marks in its brief, relying on the phrase
`
`PAIN RELIEF THERAPY and the design elements to distinguish the marks. Adding matter to a registered
`
`mark generally does not obviate the similarity between the compared marks, as in the present case, nor
`
`does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E.
`
`Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and
`
`BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269
`
`(TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9
`
`USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP
`
`§1207.01(b)(iii). In the present case, the marks are identical in part.
`
`Further, as noted above, although marks must be compared in their entireties, the word portion
`
`generally may be the dominant and most significant feature of a mark because consumers will request
`
`the goods and/or services using the wording. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d
`
`1905, 1908 (Fed. Cir. 2012); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1247 (TTAB 2010). For this
`
`reason, greater weight is often given to the word portion of marks when determining whether marks are
`
`confusingly similar. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB
`
`2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii).
`
`The design here (an outline of Australia with a decorative representation of a portion of the Australian
`
`

`
`flag) is not sufficiently unique as to provide a consumer with a commercial impression that dominates
`
`that of the phrase PAIN AWAY. Where the word portions of the marks are nearly identical in
`
`appearance, sound, connotation, and commercial impression, as they are here, the addition of a design
`
`element does not obviate the similarity of the marks. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26
`
`USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
`
`Applicant also argues in its brief that the marks are found within a “crowded market” where
`
`there are so many other marks as to make small differences sufficient to prevent a finding of similarity.
`
`To support this argument, applicant has provided lists of registered and applied-for marks. As a primary
`
`matter, the trademark examining attorney objects to this improper attempt to add evidence. The mere
`
`submission of a list of registrations or a copy of a private company search report does not make such
`
`registrations part of the record. In re Promo Ink, 78 USPQ2d 1301, 1304 (TTAB 2006); TBMP §1208.02;
`
`TMEP §710.03. To make third party registrations part of the record, an applicant must submit copies of
`
`the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to
`
`appeal. In re Jump Designs LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006); In re Ruffin Gaming, 66 USPQ2d,
`
`1924, 1925 n.3 (TTAB 2002); TBMP §1208.02; TMEP §710.03.
`
`There is insufficient evidence provided to show that the phrase PAIN AWAY is so common as to
`
`make the application and registration “merely one of a crowd of marks.” Additionally, while there is no
`
`evidence to show that registrant’s mark is weak, the Court of Appeals for the Federal Circuit and the
`
`Trademark Trial and Appeal Board have recognized that marks deemed “weak” or merely descriptive are
`
`still entitled to protection against the registration by a subsequent user of a similar mark for closely
`
`related goods and/or services. In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982); TMEP
`
`§1207.01(b)(ix); see King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108,
`
`109 (C.C.P.A. 1974).
`
`

`
`
`
`
`
`B. The Goods are Closely Related
`
`The goods identified by the applicant and registrant are closely related to each other and are
`
`often found provided in the same trade channels under the same mark. The trademark examining
`
`attorney notes that the goods and/or services of the parties need not be identical or even competitive
`
`to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56
`
`USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898
`
`(Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another
`
`in kind, the same goods can be related in the mind of the consuming public as to the origin of the
`
`goods.”); TMEP §1207.01(a)(i). The respective goods and/or services need only be “related in some
`
`manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to
`
`the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc.
`
`v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven
`
`Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA,
`
`100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).
`
`Applicant has applied for “Pharmaceutical preparations for topical use being herbal creams and
`
`sprays for the treatment of arthritis, pain, circulation and inflammation” in International Class 005 as
`
`amended.
`
`Registrant’s identification of goods is for “oral analgesics” in International Class 005.
`
`The evidence of record provided shows that applicant’s goods are closely related to registrant’s
`
`goods and are commonly provided by the same entity under the same mark. For example, the Final
`
`Action issued on September 16, 2013 included web printouts showing the goods of various entities that
`
`feature goods of the type identified in the application and registration, including:
`
`

`
`•
`
`• Vicks.com website (pp. 4-5)
`o Vicks website offering products to help with aches and pains, including oral liquids,
`topical ointments, and oral caplets, all under the Vicks trademark
`• Magnilife.com website (pp. 6-9)
`o Magnilife website offering products to help with aches and pains, including oral
`tablets and topical creams, both under the Magnilife trademark
`Isagenix.com website (pp. 10-13)
`o
`Isagenix website offering products to help with aches and pains, including oral
`supplements and topical cream, both under the Isagenix trademark
`• Noxicare.com website (pp. 14-16)
`o Noxicare website offering products to help with aches and pains, including oral
`capsuls and topical cream, both under the Noxicare trademark
`• Traumeel.com website (pp. 17-18)
`o Traumeel website offering products to help with aches and pains, including topical
`ointment and gels and oral tablets and drops, all under the Traumeel trademark
`
`The record also contains numerous third-party registrations showing the relatedness of the
`
`
`
`applied-for goods and the cited goods, including,
`
`• QUALITY CARE
`Registration No. 2061739
`
`Class 005 goods including: oral analgesics; topical gel for medical and therapeutic use; topical
`analgesics and anesthetics
`
` •
`
`
`[curved design]
`Registration No. 2362493
`
`Class 005 goods: over-the-counter pharmaceuticals, namely, topical analgesics, antiseptic skin
`care preparations, analgesic skin care preparations, medicated sunburn lotions, medicated skin
`care preparations, oral analgesics, premenstrual syndrome preparations, aspirin, antibacterial
`lotions, topical gels for medical and therapeutic use and medicated powders for external use
`
` •
`
` MENTHOLATUM MENTHOLATUM MENTHOLATUM M
`Registration No. 2732863
`
`Class 005 goods including: topical analgesics, oral analgesics, medicated skin lotions, topical
`analgesics for toothache sufferers
`
`
`
`

`
`• DIRECT SAFETY
`Registration No. 4324628
`
`Class 005 goods including: medications, namely, ibuprofen for use as an oral analgesic,
`acetaminophen, aspirin; topical analgesics; antibiotics and antiseptics
`
` •
`
` HNP PHARMACEUTICALS
`Registration No. 3701435
`
`Class 005 goods including: pain relief medication; topical gel for medical and therapeutic
`treatment of inflammation and pain; medicinal creams for skin care; topical analgesics; oral
`analgesics
`
` •
`
` ULTRA AID
`Registration No. 3804648
`
`Class 005 goods including: Anti-inflammatory ointments; Anti-inflammatory sprays;
`Hemorrhoidal ointments; Herbal topical creams, gels, salves, sprays, powder, balms, liniment
`and ointments for the relief of aches and pain; Ibuprofen for use as an oral analgesic; Pain relief
`medication
`
` •
`
` ZILACTIN
`Registration No. 2905201
`
`Class 005 goods including: topical and oral analgesics; swabs impregnated with topical and oral
`treatment preparations
`
` •
`
` COBROXIN
`Registration No. 4388475
`
`Class 005 goods including: analgesics; capsules containing analgesics; oral analgesics, namely,
`oral drinks and oral sprays for pain relief; nasal spray preparations; topical gels, sprays and
`lotions for medical and therapeutic treatment of pain
`
` •
`
` BUDPAK
`Registration No. 3974043
`
`

`
`Class 005 goods including: medicated creams for treating dermatological conditions; anti-itch
`creams; antifungal creams for medical use; hydrocortisone creams; antibiotic creams;
`preparations for the relief of pain; pain reliever creams and ointments; oral analgesics;
`medicated oral care gel
`
` •
`
` PERRIGO
`Registration No. 4262523
`
`Class 005 goods including: oral analgesics, topical analgesics, topical antibiotic creams and
`ointments, topical preparations for the treatment of alopecia
`
`
`
`This market evidence shows that applicant’s and registrant’s goods, namely, pharmaceutical
`
`preparations for topical use being herbal creams and sprays for the treatment of arthritis, pain,
`
`circulation and inflammation and oral analgesics, are closely related.
`
`Applicant argues in response to this finding of relatedness of the goods that the goods are not
`
`sufficiently related. Applicant claims that the evidence shows “registrations containing a wide variety of
`
`goods and are not limited to the goods in question.” It is true that several of the marks provided include
`
`goods beyond the goods in applicant’s and registrant’s identification. However, these marks do not
`
`contain “a wide variety of goods” as would be likened to a superstore or a broad all-encompassing brand
`
`name. It is not a requirement that the goods be limited to only those goods found in the application and
`
`cited registration. Such a requirement would make a finding of 2(d) likelihood of confusion avoidable by
`
`merely deleting an item from one’s own identification that is commonly found in the evidence of related
`
`goods. Of note, applicant did, in fact, delete goods from its original identification of goods, specifically
`
`“Pharmaceutical products in the form of tablets and capsules for the treatment of arthritis, pain,
`
`circulation and inflammation” in International Class 005. See applicant’s amendment of
`
`September 3, 2013.
`
`

`
`Further, the web page evidence provided shows that the goods are closely related, being sold
`
`together and advertised together under the same mark, often without additional types of goods. Again,
`
`the proper consideration is that the respective goods need only be “related in some manner and/or if
`
`the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief
`
`that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning
`
`LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83
`
`USPQ2d 1715, 1724 (TTAB 2007)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584,
`
`1597 (TTAB 2011); TMEP §1207.01(a)(i). The evidence clearly shows this is the case here.
`
`
`
`
`
`C. The Trade Channels are Unrestricted and Therefore Presumed the Same
`
`Absent restrictions in an application and/or registration, the identified goods and/or services are
`
`“presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc.,
`
`671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard
`
`Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). In this case, the identification
`
`set forth in the application and registration has no restrictions as to nature, type, channels of trade, or
`
`classes of purchasers. Therefore, it is presumed that these goods travel in all normal channels of trade,
`
`and are available to the same class of purchasers.
`
`
`
`When the marks are considered in light of all the factors discussed above, confusion as to the
`
`source is likely.
`
`The trademark examining attorney must resolve any doubt as to a likelihood of confusion
`
`determination in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press,
`
`

`
`Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837
`
`F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988). In this case, based on the high similarity of the
`
`marks, the relatedness of the goods, and the common trade channels, consumers are likely to
`
`mistakenly believe that applicant’s goods provided under the applied-for mark and registrant’s mark
`
`come from the same source.
`
`
`
`
`
`CONCLUSION
`
`For the foregoing reasons, the trademark examining attorney respectfully requests that the
`
`refusal based on Section 2(d) of the Trademark act be affirmed.
`
`Respectfully submitted,
`
`
`
`
`
`

`
`/Kevin A. Mittler/
`
`Examining Attorney
`
`Law Office 107
`
`571-272-6003
`
`kevin.mittler@uspto.gov
`
`
`
`
`
`
`
`J. Leslie Bishop
`
`Managing Attorney
`
`Law Office 107