Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA679239
`ESTTA Tracking number:
`06/19/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`79142478
`iRezQ AB
`IREZQ
`SARAH E NAGAE
`CHRISTENSEN OCONNOR JOHNSON KINDNESS
`1201 THIRD AVENUE, SUITE 3600
`SEATTLE, WA 98101
`UNITED STATES
`efiling@cojk.com
`Appeal Brief
`53359 Appeal Brief 061915.pdf(103728 bytes )
`Sarah E. Nagae
`sarah.nagae@cojk.com
`/Sarah E. Nagae/
`06/19/2015
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`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
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`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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` In re iRezQ AB,
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` Applicant
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`INTRODUCTION
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`I.
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`Application Serial No. 79142478
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`APPLICANT’S EX PARTE
`APPEAL BRIEF
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`Applicant iRezQ AB ("applicant") hereby appeals the decision of the Trademark Office
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`refusing registration of its trademark, IREZQ.
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`AWAP-2-53359 Appeal Brief.doc
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`FEDERAL CASES
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`TABLE OF AUTHORITIES
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`Page
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`Association of Co-Operative Members, Inc. v. Farmland Industries, Inc.,
`684 F.2d 1134 (5th Cir. 1982) .............................................................................................6
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`CBS, Inc. v. Morrow, 708 F.2d 1579 (Fed. Cir. 1983) ....................................................................7
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`Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565 (Fed. Cir. 1983) ............................7
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`In re Computer Communications, Inc., 485 F.2d 1392 (CCPA 1973) ............................................6
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`In re Elbaum, 211 U.S.P.Q. 639 (T.T.A.B. 1981) ...........................................................................5
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`In re Viterra Inc., 671 F.3d 1358 (Fed. Cir. 2012) ..........................................................................7
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`OTHER
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`3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition,
`§ 23:47 (4th ed. 2006). ..........................................................................................................6
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`Richard L. Kirkpatrick, Likelihood of Confusion In Trademark Law, § 4:9.2 (2006) ....................6
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`II.
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`APPLICANT'S MARK
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`Applicant has applied to register the mark IREZQ for “Computer software and
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`application software for controlling the operation of audio devices, mobile phones, and the
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`transmission of data, for use in the fields of safety, and prevention of personal injuries, and
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`protection of property; computer software and application software to detect vehicle and personal
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`locations; computer software and application software for provision of traffic information;
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`downloadable databases in the fields of safety, and prevention of personal injuries, and
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`protection of property; temperature sensors; optical sensors; movement sensors; acceleration
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`sensors; humidity sensors; alarm sensors” in International Class 9.
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`III.
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`THE EXAMINING ATTORNEY'S REFUSAL
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`The Examining Attorney refuses registration under Section 2(d) of the Trademark Act on
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`the basis of a likelihood of confusion with the mark IREZ and Design in U.S. Registration
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`No. 3526573 as shown below for “Video cameras; Webcams; Computer programs for driving,
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`operating and interfacing video cameras with computers; Computer peripherals.”
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`IV. Marks Themselves Are Not Sufficiently Similar to Find a Likelihood of Confusion
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`Applicant’s mark is the five-letter word, IREZQ. The registered mark is the four-letter
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`word IREZ. The registered mark has two syllables (“i-rez”) while applicant’s mark has three
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`(“i-rez-q”). Overall, the marks do not look alike or sound alike due to the presence of the letter
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`Q in the applicant’s mark.
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`During prosecution, applicant presented quantitative evidence of the relative rareness of
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`marks having word(s) ending with the letter Q. Specifically, applicant submitted the results of a
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`TESS search for live applications/registrations for marks containing words ending in Q which
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`have goods in class 9. The search returned 1395 live marks (see Exhibit A to 8/25/14 Response
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`to Office Action). To compare the relative frequency of marks in class 9 having word(s) that end
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`in Q with marks in class 9 that end in other letters, we conducted searches for a sampling of
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`marks ending in other letters. For this sample, we chose the first five letters of the alphabet, A,
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`B, C, D and E, and the letter Z because it also appeared to be a less-commonly used last letter.
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`These searches returned the following:
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`Last Letter of
`Word(s) in Mark
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`Number of Marks
`Returned
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`Comparison with Number of
`Marks Returned With Word(s)
`Ending in Q
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`Exhibit Number in
`Response to Office
`Action
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`A
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`B
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`21053
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`3825
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`15.09
`There are 1509% more marks that
`end in A than there are marks that
`end in Q.
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`2.74
`There are 274% more marks that end
`in B than there are marks that end in
`Q.
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`Exhibit B
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`Exhibit C
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`C
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`D
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`E
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`Z
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`15982
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`29668
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`80909
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`2622
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`11.46
`There are 1146% more marks that
`end in C than there are marks that
`end in Q.
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`21.27
`There are 2127% more marks that
`end in D than there are marks that
`end in Q.
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`58.00
`There are 5800% more marks that
`end in E than there are marks that
`end in Q.
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`1.88
`There are 188% more marks that end
`in Z than there are marks that end in
`Q.
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`Exhibit D
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`Exhibit E
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`Exhibit F
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`Exhibit G
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`These numbers1 reflect the relative infrequency of marks covering goods in class 9 that
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`include a word that ends in the letter Q on the Trademark Register. Accordingly, the uniqueness
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`of the ending of applicant’s mark would cause consumers to pay particular attention to the mark,
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`and would serve as a basis by which consumers would distinguish applicant’s mark from
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`registrant’s mark.
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`1 The Examining Attorney has indicated that the quantitative data cited above has not been made of record, and presumably not
`considered by the Examining Attorney in reaching her decision, because applicant has not filed copies of the registrations or the
`complete electronic equivalent from the USPTO’s automated systems. The data relied on by applicant for this argument is all
`from the USPTO online database. Because it is not practical to print out TESS or TSDR records for each of the over 150,000
`marks referenced, applicant instead attached to its 8/25/14 Office Action response the TESS reports showing the search strings
`used and the “Record List Display” pages for each of the searches.
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`Because applicant is relying on the USPTO’s own database and because applicant’s argument is based on the sheer number of
`active applications and registrations located by the particular queries, it does not seem reasonable for the Examining Attorney to
`require that each USPTO electronic record be submitted to the USPTO by applicant before the evidence is considered. Because
`this data is pulled directly from the USPTO database, applicant submits that it is sufficiently proven as valid for the purposes of
`the Board considering the argument to which the data pertains.
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`During prosecution, the Examining Attorney stated that the letter Q in applicant’s mark
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`results only in a “slight difference in sound” between the marks, and this difference “is not
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`sufficient to prevent confusion between the marks.” 9/17/14 Office Action. The Examining
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`Attorney also argued that “the applied-for mark is entirely comprised of the wording ‘IREZQ’
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`and the cited registered mark contains the wording ‘IREZ.’ Thus, marks are confusingly similar
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`in appearance because they contain nearly identical wording, except for one letter that appears at
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`the end of the applied-for mark.” 4/18/15 Reconsideration Letter. The Examining Attorney
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`diminishes the importance of the letter Q in applicant’s mark without explaining why it is
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`assumed that consumers would disregard the letter. In applicant’s view, the addition of the letter
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`Q changes the appearance of the marks and their pronunciations to such a degree that this
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`difference alone enables consumers to tell one mark from the other. There is not adequate
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`reasoning or evidence to support the Examining Attorney’s conclusion that consumers would not
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`be able to differentiate between a mark that ends with a Q and one that does not in this situation.
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`In addition to its lack of evidentiary support, the Examining Attorney’s argument is also
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`weak because it relies on an artificial separation of applicant’s mark into two pieces. The
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`Examining Attorney focuses only on the wording “IREZ” in applicant’s mark, compares this to
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`the registered mark, and claims that that the marks are confusingly similar on this basis. In
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`taking this approach, the Examining Attorney dissects applicant’s mark into two parts with no
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`explanation as to why she does so or why the public would do so. There is only one word in
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`applicant’s mark, and it is IREZQ. There is no basis for assuming that consumers would, sua
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`sponte, break down the mark into the word “IREZ” and the letter “Q.” Assuming such behavior
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`with no rationale behind the assumption goes against the principle that marks must be considered
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`in their entireties and not be parsed.
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`While consumers can distinguish
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`the marks based on
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`their appearances and
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`pronunciation, consumers can further distinguish the marks based on their meanings. The
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`registration record for the registered mark indicates that wording in the registered mark is a play
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`on the word "iris." Specifically, the “Description of Mark" for the registered mark is "The mark
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`consist[sic] of an abstract depiction of an eye over the word 'IREZ'." Given that the iris is a part
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`of the eye (see Exhibit 1 to 3/12/15 Request for Reconsideration) and the mark is a design of an
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`eye, consumers would assume that the wording "IREZ" in the registered mark is a play on the
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`word “iris.” This conclusion is especially logical because registrant’s goods include cameras.
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`Thus, the registered mark creates a unique commercial impression that allows consumers to
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`distinguish the registered mark from applicant’s mark.
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`The cited mark, as set forth above, consists of a design plus the word "IREZ." The
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`Examining Attorney has simply cited the "standard doctrine" that the word portion of a
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`composite mark is often considered the dominant feature in the mark. No actual analysis of the
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`present mark was provided when making this statement. The Examining Attorney does concede
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`that composite marks must be compared in their entirety when being compared with the putative
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`conflicting marks.
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`In this case, the design element in Registrant’s mark is significant, and should be
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`considered with at least as much, if not more, weight as the word portion. “[W]ords or portions
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`of words do not always dominate over design features. The issue turns on the facts of each
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`case.” In re Elbaum, 211 U.S.P.Q. 639, 641 (T.T.A.B. 1981). “The design, particularly if
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`prominent . . . may dominate or at least be a significant factor in distinguishing the
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`marks.” Richard L. Kirkpatrick, Likelihood of Confusion In Trademark Law, § 4:9.2
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`(2006). Indeed, “differences in designs may outweigh similarity of words.” Id. Professor
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`McCarthy remarks that:
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`It has sometimes been stated that in a word-design composite mark, the
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`words are always presumed to be the “dominant” portion. This might be labeled
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`the “literacy” presumption, in that it assumes that words have more impact than
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`designs, a dubious generalization. That this “rule” of word-dominance is merely a
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`guideline is shown by cases finding that a design element is dominant if more
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`conspicuous than accompanying words.
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` J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 23:47
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`(4th ed. 2006).
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`In this case, the design is more conspicuous and striking than the wording itself. The
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`design portion of the mark is in the form of a unique abstract depiction of an eye. Such depiction
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`is positioned above the word "IREZ," extends the full length of the combined mark, and is of a
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`height over three times the height of the letters comprising the word portion of the mark. If there
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`ever is a situation in which the design portion of a mark dominates, the cited mark is such a case.
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`See In re Computer Communications, Inc., 485 F.2d 1392 (CCPA 1973); and Association of
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`Co-Operative Members, Inc. v. Farmland Industries, Inc., 684 F.2d 1134 (5th Cir. 1982).
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`Moreover, the present situation is distinguishable from the cases cited by the Examining
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`Attorney for the proposition that the word portion of a mark may likely be more impressed on a
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`purchaser's memory than the design portion. In the case of CBS, Inc. v. Morrow, 708 F.2d 1579
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`(Fed. Cir. 1983), the design portion of the mark consists of a small stylistic light bulb forming
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`the dot over the word "Thinker." The design portion of the mark in the CBS, Inc. case was much
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`smaller in scale than the mark in question. Further, in the case of In re Viterra Inc., 671 F.3d
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`1358 (Fed. Cir. 2012), the design potion of the mark is simply the letter "X". Moreover, in the
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`case of Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565 (Fed. Cir. 1983), the
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`design portion of the mark was simply the letter "Y".
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`In the present situation, on the other hand, the design portion of the registered mark is a
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`striking abstract depiction of an eye that dominates above the letters "IREZ." Accordingly, the
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`"literacy" presumption being espoused by the Examining Attorney does not apply in the present
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`situation.
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`Overall, the differences in the appearances, pronunciations and meanings of the parties’
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`marks result in the marks conveying two different commercial impressions. It is unlikely that a
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`consumer would encounter applicant’s mark, IREZQ, and assume that it designates the same
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`source as the registered mark, IREZ and Design.
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`V.
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`Goods Are Not Sufficiently Related to Support a Likelihood of Confusion
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`The Examining Attorney argues that the registrant’s “computer peripherals” are
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`commercially related to applicant’s goods. However, in today’s technology marketplace, the
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`term “computer peripherals” is so broad that it could encompass virtually any device that is
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`plugged in to a computer. Further, these devices are computer hardware, so, if hardware and
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`software are considered related, then “computer peripherals” are related to every type of
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`hardware and software for purposes of a likelihood of confusion comparison.2 Accordingly,
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`making these assumptions renders a comparison of the goods virtually meaningless, as every
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`product related to computers would be related to registrant’s products.
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`Looking at the identifications more realistically, the registered mark covers video
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`cameras, webcams and computer programs relating to these items. It is a logical assumption that
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`the registrant’s “computer peripherals” also relate to registrant’s video cameras and webcams. It
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`is these goods that should be compared to applicant’s goods.
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`When this comparison is made, registrant’s webcam and associated software/accessories
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`can be seen as unrelated to applicant’s goods. Applicant’s computer software and application
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`software for controlling the operation of audio devices, mobile phones, and the transmission of
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`data, computer software and application software to detect vehicle and personal locations and
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`computer software and application software for provision of traffic information do not relate to
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`webcams. Applicant’s various types of sensors are also not products that can be said to be
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`related to registrant’s webcams, other than they all have something to do with computers, or all
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`are operated by a computer device.
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`2 The cases being relied upon by the Examining Attorney that computer hardware products are related to computer
`software products are all over 25 years old. Such decisions come from a bygone era and likely do not apply to the
`current computer age.
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`Regarding the evidence submitted by the Examining Attorney showing that some third
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`parties sell goods contained in both the current application and the cited registration, it is to be
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`expected that certain companies sell a variety of computer-related products. Indeed, many
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`companies sell computer-related products and, as mentioned above, in today’s marketplace, these
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`products are ubiquitous. Consumers have grown savvy about what type of computer-related
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`products they are looking for and, if shopping for applicant’s software or sensors, will be
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`specifically seeking these items and are not likely to also be considering other products,
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`including registrant’s products.
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`VI.
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`CONCLUSION
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`For the foregoing reasons, applicant submits that there is no likelihood of confusion
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`between applicant’s mark and the registered mark and requests that the refusal to register be
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`withdrawn.
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`Respectfully submitted,
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`Sarah E. Nagae
`Jerry E. Nagae
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`Attorneys for Applicant
`Direct Dial No. 206.695.1660
`E-Mail Address: sarah.nagae@cojk.com
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