Sample Office Action Responses — Likelihood of Confusion

Example #1: TRANXITION
Example #2: FOREVER ART
Example #3: SPS
Example #4: REDNECK RAMPAGE

Example #1: TRANXITION

Applicant believes it would assist the Examining Attorney to have a better understanding of the purpose and function of its goods. As the Examining Attorney undoubtedly is aware, computers and computer software, including operating systems, office suites, and other programs, rapidly become obsolete and must be updated or replaced. Each time a user obtains a new computer, she must laboriously re-create her "desktop" and reconfigure numerous programs to suit her personal preferences. This process, covering everything from the margins of new documents to the screen saver is enormously time-consuming and error prone. Applicant's goods ease this arduous process.

The purpose of Applicant's software is to allow a user to replace an old computer with a new one without losing the collected knowledge and user preferences that make her more comfortable and productive. Applicant's software provides a methodology and system that enables the easy migration of a user's preferences and user created resources, such as user's customized application settings, desktop look and feel, Internet bookmarks, and formats for word processing documents, from one computer to another. Applicant's software first captures (records) in detail the myriad personal settings from the user's present computer. This information tends to be scattered over many folders and configuration files, and throughout the highly sensitive Windows registry database. Then, taking into account the differences between the hardware and software on the user's old and new computers, Applicant's software comprehensively reconfigures the new machine to re-create, as closely as possible, the user's preferred working environment. Applicant's goods thus speed the user's changeover from her old computer to her new computer.

Although the capturing and configuring process may involve the transfer of computer files, it is incidental to the purpose of Applicant's software. The real functionality of Applicant's software is the ability to find and record various system and application preference settings that are embedded in various files and folders scattered throughout a computer's hard drive and recreate that data on the hard drive of a new computer.

Refusal of Registration. The Examining Attorney refused registration of the Applicant's mark TRANXITION based on an earlier registration for TRANXIT. The Examining Attorneys reasons that the Applicant's mark incorporates the Registrant's mark, and that the goods of the Applicant and Registrant are sufficiently related and marketed through all normal trade channels, and therefore potential purchasers might believe that the goods originate from the same source. With all due respect to the Examining Attorney, the Office did not meet its burden of proof in this case. Because the two marks have very different connotations and create substantially different commercial impressions, and because the purpose and use of the respective goods is wholly different, it is very unlikely that relevant consumers of the respective goods will believe there is any connection between the two companies.

Connotation of the Marks. The Examining Attorney correctly notes that the Applicant's mark incorporates the letter string "TRANXIT." However, Applicant respectfully disagrees with the Examining Attorney's opinion that the addition of "ION" does "not appear to create a commercial impression different than the Registrant's mark." At the outset, Applicant notes that the Examining Attorney has not introduced any evidence as to the likely commercial impression of the two marks. Applicant is aware that in many cases the addition of the "ion" suffix to a root word may change a verb to a noun and may not profoundly change the meaning of the word. However, in other cases the word ending "ion" has a meaning easily distinguishable from the root word. For example, the term "tract" commonly refers to a parcel of land or a religious text, while the term "traction" commonly refers to a tire's grip on the road or to immobilization following a serious back or neck injury. There can be no presumption that two words differing in this manner will project the same commercial impression.

Applicant believes that relevant consumers are likely to perceive and pronounce Applicant's TRANXITION mark as "transition," and the cited mark as "transit." While "transit" and "transition," like "tract" and "traction," may share an ancient ancestor, as commonly used today, the words express very different concepts. The word "transit" means the "act or process of going" (FN1: The Oxford English Dictionary and Thesaurus, Oxford University Press, 1996.) or to travel, and also is commonly used in the phrases "public transit," "mass transit" and "rapid transit." "Transit" conveys the relatively simple idea of transfer or the physical movement of an object from one place to another. On the other hand, the term "transition" means "passing or change." (FN2: Id.) "Transition" conveys a more complex idea of development, evolution or metamorphosis. It is this connotation that Applicant seeks to associate with its computer software.

Such differences in connotation and meaning are key factors in determining the likelihood of confusion. Differing connotations themselves can be determinative, even where identical words with identical meanings are used. Revlon, Inc. v. Jerrell, Inc., 713 F. Supp. 93, 11 U.S.P.Q. 2d 1612, 1616 (S.D.N.Y. 1989) (No likelihood of confusion because the meaning and connotation of the marks THE NINES and INTO THE NINETIES are not related. THE NINES suggests the number nine, or nine of something in a group. INTO THE NINETIES is a reference to the decade of the 1990's, and more generally the future; Plaintiff's motion for preliminary injunction is denied.); citing Clarks of England, Inc. v. Glen Shoe Company, 465 F. Supp. 375, 379, 209 USPQ 852, 854-55, (S.D.N.Y. 1960) (TREK and STAR TREK for shoes; TREK connotes hiking across the Himalayas; STAR TREK connotes space travel.) Just as one would never mistake the meaning of the phrase "in transit" and "in transition," it is unlikely that consumers would view Applicant's mark as a variation on or extension of Registrant's mark.

Differences in purpose and function. Registrant's TRANXIT mark is registered for "computer programs for accessing, transferring, synchronizing and managing files." Registr ant's software addresses the discrete problem of keeping data files stored simultaneously on multiple computing devices in sync with one another. It was "designed specifically to transport and synchronize information between desktop and notebook PCs using wireless infrared connections." (FN3: Puma Technology, Inc., About Puma Technology, Inc., http://www.pumatech.com/profilemarket.html. (Attached hereto as Exhibit A).) The narrow scope of functionality of Registrant's software is in sharp contrast to the functionality of Applicant's software. (FN4: Applicant notes that the terms "computer programs for accessing . . . and managing files" could be interpreted to refer to software that duplicates standard operating system functions. Giving Registrant's identification this interpretation renders the possibility of confusion even more remote.)

Registrant's software enhances the basic functionality of a computer, facilitating the coordinated bi-directional movement (or transit) of data files from one storage medium to another. Registrant's software would be used regularly to ensure that the mobile device always contained the latest information from the stationary device, and that any changes made on the mobile device were backed up to the stationary device. The software would be useful for as long as the user needs to synchronize data on multiple computing devices. Applicant's software, by contrast, tackles a wholly different problem: capturing user preferences, laboriously collected over time, from one computer that will no longer be used, and using those settings to personalize the new one. Wholesale copying of files would be completely ineffective in addressing these needs.

As the foregoing discussion makes clear, Registrant's file transfer software and Applicant's computer preference migration software solve different problems in a very different manner. Due to the functional differences between Applicant's and Registrant's products, it is unlikely that a prospective purchaser of either company's product would believe there is any relationship between the two companies or their respective goods.

Where the goods of the Applicant and Registrant are different, the Examining Attorney bears the burden of showing that Applicant's and Registrant's different goods would commonly be provided by the same source. E.g., In re Shipp, 4 U.S.P.Q.2d 1174, 1176 (TTAB 1987) (Examining Attorney's argument that small segment of market would be familiar with both Applicant's use of PURITAN in connection with dry cleaning services and Registrants' uses of PURITAN in connection with dry cleaning equipment and dry cleaning chemicals rejected due to lack of proof of trade practices and failure to show likelihood, rather than possibility, of confusion; refusal reversed). There is no evidence of record that the two companies' respective goods are in any way related for purposes of the likelihood of confusion analysis.

Sophisticated users of Registrant's goods. Furthermore, although on its face Registrant's identification does not limit the class of purchasers for its computer software, in fact, file synchronization implies coordination among computing devices, and therefore would be purchased by those who use multiple devices on a regular basis. Such users are particularly sophisticated and would not be confused by the use of TRANXITION on functionally different software.

For these reasons, the Examining Attorney should withdraw his refusal of registration under Section 2(d). The mere possibility that relevant consumers might relate the two different marks does not meet the statutorily established test of likelihood of confusion. E.g., In re Hughes Aircraft Company, 222 U.S.P.Q. 263, 264 (TTAB 1984) ("the Trademark Act does not preclude registration of a mark where there is a possibility of confusion as to source or origin, only where such confusion is likely") (emphasis added).


Example #2: FOREVER ART

The Examining Attorney has refused registration of Applicant's mark FOREVER ART for goods in International Classes 14 and 25 based on earlier registrations for the marks FOREVER SILVER, FOREVER DIAMOND, and FOREVER LACE. The Examining Attorney states that "the wording FOREVER is the dominant feature of the marks."

With all due respect to the Examining Attorney, this conclusion rests on an improper dissection of Applicant's mark. In fact, there is no likelihood of confusion between the registered FOREVER SILVER, FOREVER DIAMOND, and FOREVER LACE marks and Applicant's FOREVER ART mark. It is well established that "likelihood of confusion cannot be predicated on dissection of a mark . . . the ultimate conclusion rests on consideration of the marks in their entireties." In re National Data Corp., 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(iv). When the marks are compared in their entireties, they are significantly different in visual and aural impression, in meaning, and in overall commercial impression.

The Word FOREVER Is Not Dominant. The Examining Attorney asserts that the word FOREVER is the dominant element of Applicant's mark. However, the Examining Attorney has not presented any argument or evidence in support of her position. Furthermore, the records of the Patent and Trademark Office demonstrate that many entities have used FOREVER in relation to the Registrants' goods, making it unlikely that consumers would give significant weight to this term in ascertaining the source of such goods.

As reflected in the Trademark Electronic Search System, the Trademark Office has routinely registered marks containing FOREVER and a second term in connection with the specific goods listed in the cited registrations — "jewelry" and different types of clothing. Examples of this practice are set forth in the following tables, along with the registrations cited by the Examining Attorney:

JEWELRY
Mark/Owner Goods Reg. No./Date
FOREVER SILVER/ 
Erwin Pearl, Inc.
Jewelry made wholly or in part of silver. 1,922,884/09/26/1995
FOREVER DIAMOND/ 
Leo Schachter Diamonds
Diamonds and fine jewelry made wholly or in part of diamonds. 2,358,181/06/13/2000
FOREVER FIRE/
Susan Eisen, Inc.
Diamonds, precious and semi-precious gemstones, and jewelry. 2,413,226/12/12/2000
FOREVER COLORLESS/
Leo Schachter Diamonds
Diamonds and fine jewelry. 2,388,226/09/19/2000
FOREVER FRIENDS/ 
The Donley Company
Costume jewelry, namely ear rings, rings and necklaces. 2,062,627/05/20/1997
FOREVER ROSES/ 
Donald Bruce & Co.
Pendants, earrings, bracelets, pins, charms, rings. 1,717,955/09/22/1992
 
CLOTHING
Mark/Owner Goods Reg. No./Date
FOREVER LACE/
Playtex Apparel, Inc.
Brassieres, panties, lingerie and foundation garments 1,996,194/08/20/1996
FOREVER SPORT/
Adidas International
Sports and leisure wear, namely, shorts, pants, t-shirts, jerseys, tights, socks, gloves, jackets, swimwear, sweaters, caps and hats, pullovers, warm-up suits, rain suits, boots, slippers, sandals, specific purpose athletic shoes and general purpose sports shoes. Cited pending application
FOREVER BLUE/
Stamor Corporation
Clothing, namely, bathing trunks, belts, blazers, etc. 2,196,581/10/13/1998
FOREVER FREE/
Marathon Corporation
Clothing, namely, shorts, shirts, pants, blouses, sweat shirts and sweat pants. 2,283,646/10/05/1999
FOREVER SUMMER/
Michael J. Wahl
Clothing, namely, tee shirts, blouses, shirts, shorts. 1,516,445/12/13/1987

As can be seen from the illustrative registrations (and the cited pending application) above, use of the word "forever" in conjunction with both jewelry and clothing is quite common. As a result of being exposed to numerous marks containing FOREVER, relevant consumers are likely to consider the entire mark in ascertaining the source of the goods, and to differentiate goods and services using the entire mark. Therefore, Applicant maintains that FOREVER is not the dominant portion of Applicant's mark and should not be given special weight in comparing Applicant's mark to the cited marks.

Strength of the Cited Marks. In comparing Applicant's mark with previously registered marks, one factor that must be considered is the impact of prior registrations on the strength of the registered marks. TMEP § 1207.01 ("In testing for likelihood of confusion under Sec. 2(d), therefore, the following, when of record, must be considered: . . .6. The number and nature of similar marks in use on similar goods.")

In light of the foregoing evidence that many entities have used FOREVER-based marks in connection with jewelry and clothing, it would be disingenuous to claim that the cited registration are strong marks. Indeed, the mere fact that the Examining Attorney was able to cite three such registrations is a clear indication of the lack of strength of the marks. "[I]n a 'crowded' field of similar marks, each member of the crowd, is relatively 'weak' in its ability to prevent use by others in the crowd." J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 11:85 at 11-163 (4th Ed. 2001). Accordingly, the cited FOREVER registrations should be given a narrow scope of protection, in light of their coexistence, barring registration of only virtually identical marks.

Visual Impression. Applicant's mark is drastically different in its visual appearance from the marks cited by the Examining Attorney. Because the marks must be considered in their entirety, the term FOREVER ART creates a markedly different visual appearance from FOREVER SILVER, FOREVER DIAMOND, FOREVER LACE, and FOREVER SPORT. While all of the marks contain the word "forever," the change in the second term is telling: "SILVER," "DIAMOND," "LACE," "SPORT," and "ART" do share any visual similarities. This makes consumer confusion highly unlikely.

Aural Impression. Spoken aloud, FOREVER ART does not sound similar to FOREVER SILVER, FOREVER DIAMOND, FOREVER LACE, or FOREVER SPORT. Due to the lack of aural similarity between the cited marks and Applicant's mark, there is no likelihood of confusion among consumers who hear the cited marks and Applicant's marks.

Meaning.The meaning of Applicant's mark and the cited marks are also very different. While the words silver, diamond, and lace name a specific chemical, mineral and fabric, "what is art" is a question for the ages.

While silver, diamond, and lace are common commercial terms, "art" can only be understood in a particular social and cultural context. It could mean the work of the great master, Matisse, Monet, Picasso and the like, it could mean the scrap metal sculpture of a weekend enthusiast, or it could mean the drawings of a pre-school child playing with crayons. Applicant's mark conveys this ineffable quality, requiring consumers to re-evaluate their own individual notions of "what is art" in relation to Applicant's goods. None of the cited marks trigger such introspection, and thus they cannot be remotely similar in meaning to Applicant's mark.

With regard to the cited pending application, the meaning of sport, while somewhat less definite than silver, diamond, and lace, is still specific enough to convey a fairly certain meaning one that involves a raised heart rate, some physical exertion, and muscle. Art is generally considered the antithesis of sport. Picture the reed thin, suffering artist, often visualized smoking or drinking. Sport on the other hand conjures up an image of toned, in shape, healthy people with a certain amount of muscle mass. The National Hockey League is sport. An opera is Art. Accordingly, the cited pending application and Applicant's FOREVER ART mark are not at all similar in meaning.

Taken together with the visual and aural differences between the marks, it is clear that the marks are not likely to be confused in the marketplace. The cited FOREVER-based marks are different from Applicant's FOREVER ART mark in sight, sound, and meaning, as well in overall commercial impression. The protection afforded the cited marks has been tightly circumscribed by the extensive third party use of FOREVER based marks for similar goods. Accordingly, there is no likelihood of confusion between the marks cited by the Examining Attorney and Applicant's FOREVER ART mark.


Example #3: SPS

The Examining Attorney has refused registration of Applicant's mark for goods in International Classes 9 and 16 based on earlier service mark registrations in International Classes 35 and 36. As the two companies' respective goods and services are quite different, the Examining Attorney founds her refusal of registration on the bare assertion that "the applicant's goods are complementary in nature and in the normal field of expansion of the registrant." There is no evidence in the record other than the parties' respective identification of good and recitations of services. A thorough analysis of the significant differences in the goods and services, and consideration of the differences in the marks themselves, leads inexorably to the conclusion that the Office has not carried its burden of establishing a likelihood of confusion in this case.

Applicant's Goods. Applicant's goods consist of computer software and related manuals in the field of relationship management and sales force automation. Such systems integrate all of the information in an organization that is related to the selling process and to the management of that process, including customers, prospects, leads, and vendors, product features, inventory, and pricing, detailed account histories (sales, sales calls, requests for proposal, and so forth), and follow-up ("to do") items. By its very nature, such software is purchased for use by an entire organization ("enterprise-wide") so that information can easily be shared among its employees and managers. Because no two companies are the same, such software must be customized to the particular needs and business processes of its customers. The entire process of evaluating the potential benefits of such software, obtaining bids, negotiating license agreements, converting existing data, and implementing the customized system, builds a close relationship and fosters an intimate familiarity between customer and software vendor.

Registrant's Services. According to the printouts provided by the Examining Attorney, Registrant provides the following services in connection with one or the other of the cited marks:

Mark Class  Service
SPS and Design 36 "Credit card services; namely, the development, implementation and administration of credit card programs for the businesses of others"
SPS and Design 36 "Electronic processing of financial transactions and operational services for the businesses of others"
SPS CUSTOM CONNECT  35 "Business and sales support services in the nature of contracting out to businesses to provide order processing, customer assistance, customer credit evaluation, dealer locator services, technical assistance and financial information processing through telephone interaction with customers of businesses"

As the registrations use several terms of art from Registrant's industry, they can best be understood by reference to Registrant's business activities. Applicant is aware that Registrant is entitled to the full scope of its registrations; equally, however, the interests of the public are ill served by an overbroad reading of the recitation of services which extends Registrant's monopoly beyond the scope of its field. Industry-specific terms should not be given an ambiguous interpretation. Instead, having chosen industry terms to delimit its services, Registrant should be bound by the actual meaning of those terms within its industry.

Development, implementation and administration of credit card programs for the businesses of others. The nature of these services is clear. Department and specialty stores often issue "private label" credit cards to their customers, both to increase customer loyalty and to earn interest income. Due to the financial risk involved, however, such ventures would not be undertaken without serious consideration, and, to ensure that customers receive excellent service, the card issuer and transaction processor undoubtedly would be chosen with great care.

Electronic processing of financial transactions . . . for the businesses of others. Registrant uses the phrase "financial transactions," rather than simply "transactions," because the relevant services relate to clearing check, debit card, and credit card transactions rather than actually buying and selling goods and services. On its web site, Registrant describes the following "electronic transaction processing services": "authorization and settlement processing for most non-cash payment options, including credit, debit, fleet and private label cards, and check verification and guarantee." See Exhibit A hereto. (FN1: Undersigned counsel for Applicant downloaded and printed the web page set forth as Exhibit A. The page bears top and bottom banners supplied by The Anonymizer, but in every other respect accurately reflects the information available in the document http://www.spspay.com/netpro.htm on Registrant's site as of 3:55PM on August 3, 1998.) Such transaction clearing services are a function wholly external to a typical business. Such services would be selected carefully, as the business is relying on the vendor's assurance of the creditworthiness of the business' customers. However, once the system is in place, and assuming it functions properly, the choice of clearinghouse should be as invisible in daily operation as a company's long distance telephone carrier. Only the person charged with contracting for clearance services is likely to be aware of the brands associated with that service.

Operational services for the businesses of others. The term "operational services" is highly ambiguous. As evidenced by Registrant's web site, however, it refers to services peripheral to a company's core business that can be outsourced to a "teleservices" organization. See Exhibit B hereto. (FN2: Undersigned counsel for Applicant downloaded and printed the web page set forth as Exhibit B. The page bears top and bottom banners supplied by The Anonymizer, but in every other respect accurately reflects the information available in the document http://www.spspay.com/netpro.htm on Registrant's site as of 3:55PM on August 3, 1998.) Companies typically outsource activities which entail high personnel costs, yet add little value to the companies' core business. To maximize efficiency, a teleservices firm would be assigned a discrete, tightly defined set of functions that minimally overlap the activities of company personnel. While the teleservices firm intercepts calls from the public, company personnel focus on the core business and there is little interaction between the two. Naturally, the service provider must be chosen with care to avoid alienating a company's customers or prospective customers; as the firm will operate largely autonomously, its references must be impeccable. Because retaining such services involves a large commitment of funds over an extended period, and usually occasions layoffs of company employees, the entire process would receive the utmost attention. (FN3: Registrant's SPS CUSTOM CONNECT mark is registered for the same services, but the specific types of teleservice activities are spelled out in detail in the identification: "contracting out to businesses to provide order processing, customer assistance, customer credit evaluation, dealer locator services, technical assistance and financial information processing through telephone interaction with customers of businesses.")

Based on the foregoing, Applicant must respectfully disagree with the Examining Attorney's position. The supposition that "the applicant's goods are complementary in nature" is not true unless one so enlarges the concept of complementarity that long distance telephone service and a computerized calendar, for example, are considered "complementary." Such an overbroad definition would grossly distort the meaning of "related" goods for purposes of assessing likelihood of confusion. Furthermore, the public will not necessarily be confused if even "related" goods and services are supplied by different entities. The Examining Attorney bears the burden of showing that Applicant's and Registrant's services would commonly be provided by the same source. E.g., In re Shipp, 4 U.S.P.Q.2d 1174, 1176 (TTAB 1987) (Examining Attorney's argument that small segment of market would be familiar with both Applicant's use of PURITAN in connection with dry cleaning services and Registrants' uses of PURITAN in connection with dry cleaning equipment and drying cleaning chemicals rejected due to lack of proof of trade practices and failure to show likelihood, rather than possibility, of confusion; refusal reversed). There is no evidence of record that the two companies' respective goods and services are related for purposes of the likelihood of confusion analysis.

Nor does Applicant agree that "the applicant's goods are . . . in the normal field of expansion of the registrant." There is no evidence in the record that such expansion would be normal. Moreover, there is no logical reason to expect an outsourcing business to develop software unrelated to the functions being outsourced.

A review of the relevant facts makes clear that there is no likelihood of confusion between Applicant's and Registrant's respective uses of SPS. Applicant's goods and Registrant's services address entirely different needs within an organization, would be exposed to different personnel, and simply are not related. There is no reason that relevant consumers for Applicant's goods would have any greater need than other businesses for Registrant's rather specialized services. Even if there were cases in which the same personnel within an organization entertained the purchase of Applicant's goods and Registrant's services, the nature of the purchasing process virtually ensures that there would be no confusion as to source, sponsorship or affiliation, and that any "initial" doubt about the true identity of either company would rapidly be dispelled.

Finally, Applicant notes that Registrant has not been granted exclusive rights to Applicant's mark. Instead, Registrant has obtained registration of SPS with a prominent design, and of the phrase SPS CUSTOM CONNECT. It is well established that "likelihood of confusion cannot be predicated on dissection of a mark . . . the ultimate conclusion rests on consideration of the marks in their entireties." In re National Data Corp., 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(iv). Accordingly, the commercial impression of the whole marks must be considered. The Examining Attorney does not explain the rationale for considering SPS the dominant portion of the mark SPS CUSTOM CONNECT. It appears to Applicant that SPS does not dominate the commercial impression of the mark. The other elements of the mark are pronounceable English words with an attractive alliteration that create the impression of personalized service. In the context of outsourcing teleservices, CUSTOM CONNECT conveys a considerably stronger impression than SPS, which appears to be a house mark or trade name. Thus, equating SPS CUSTOM CONNECT with Applicant's mark is particularly inappropriate.

For these reasons, the Examining Attorney should withdraw her refusal based on likelihood of confusion. The mere possibility that relevant purchasers might relate the two different marks does not meet the statutorily established test of likelihood of confusion. E.g., In re Hughes Aircraft Company, 222 U.S.P.Q. 263, 264 (TTAB 1984) ("the Trademark Act does not preclude registration of a mark where there is a possibility of confusion as to source or origin, only where such confusion is likely") (emphasis added).


Example #4: REDNECK RAMPAGE

[The application covered "video and computer games and instruction manuals sold as a unit with the programs" while the cited marks, owned by two different companies, covered "video game machines and toy vehicles" and "toy action figures," respectively.]

The Examining Attorney has refused registration of Applicant's mark REDNECK RAMPAGE, for goods in International Class 9, based on two earlier registrations for RAMPAGE for goods in International Class 28. With all due respect to the Examining Attorney, there is no likelihood of confusion between Applicant's mark and the registered marks. Applicant's mark creates a wholly different commercial impression, which is reinforced by Applicant's use of REDNECK RAMPAGE as the common element of a family of marks. The coexistence of the cited marks on the register and in the marketplace demonstrates that those marks are weak, and therefore the common element of the respective marks is entitled to little weight. As the cases cited by the Examining Attorney are inapposite here, the Office has not carried its burden of establishing a likelihood of confusion in this case.

It is well established that "likelihood of confusion cannot be predicated on dissection of a mark . . . the ultimate conclusion rests on consideration of the marks in their entireties." In re National Data Corp., 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(iv). Accordingly, the commercial impression of the whole marks must be considered. The Examining Attorney asserts, without explanation, that "[t]he respective marks create the same overall commercial impression." Because Applicant's mark combines two terms that conjure up entirely different images, it is inconceivable that consumers will view Applicant's mark and Registrants' marks as essentially the same mark.

Registrants' marks consist of the term RAMPAGE, which the American Heritage College Dictionary defines as "a course of violent frenzied action or behavior." (FN1: The American Heritage College Dictionary 1130 (3d ed. 1993).) The news media, through their obsessive focus on violence, have indelibly associated the term RAMPAGE with episodes of extreme violence, such as shooting sprees by disgruntled former employees or customers, genocidal "ethnic cleansing" in Bosnia, and rioting mobs protesting against authoritarian regimes. The term carries strong "emotional baggage."

The first word in Applicant's mark, by contrast, is REDNECK. Described by the American Heritage College Dictionary as "offensive slang," the term is typically understood to be a pejorative reference to an uneducated, poor, white, working class person from the South. (FN2: Id. at 1144.) Jeff Foxworthy's widely known comedy routine "You Might be a Redneck If..." and television series The Jeff Foxworthy Show popularized the modern stereotype of a redneck as a lazy, stupid, but essentially harmless "hick." Combining REDNECK with RAMPAGE, then, creates an incongruous phrase or oxymoron. Insofar as the modern redneck is perceived to be a good natured but dimwitted beer drinking couch potato whose idea of physical exercise is disassembling automobiles, the image conveyed by the mark REDNECK RAMPAGE is humorous and bizarre — and completely different from that created by the term RAMPAGE alone.

Unlike the overused term RAMPAGE, Applicant's mark is obviously new, coined, fanciful, and different. It stands out from other marks because it is such an odd combination. A relevant consumer is immediately going to recognize the REDNECK RAMPAGE brand as something unique and special, and is not likely to believe there is a relationship of source or sponsorship among Applicant and one or both of the Registrants. Accordingly, there is no likelihood of confusion between Applicant's mark and the cited marks.

Applicant's family of REDNECK RAMPAGE marks reinforces this overall commercial impression. These include three "sequels" or "add-ons" to the original REDNECK RAMPAGE product:

Mark Serial No. Status
REDNECK RAMPAGE SUCKIN' GRITS ON ROUTE 66 75/383,140 Notice of Allowance Issued (Jan. 12, 1999)
REDNECK RAMPAGE RIDES AGAIN  75/421,395 Notice of Allowance Issued (Jan. 12, 1999)
REDNECK RAMPAGE POSSUM BAYOU 75/562,007 Pending

All of these products have been sold in the marketplace, as evidenced by the current product list from Applicant's web site and search result from its online store (both attached hereto as Exhibit A). As a result, relevant consumers recognize the subject mark as a unifying feature of Applicant's family of marks, and therefore view it as a whole rather than dissecting it. To the extent that any portion of the mark is given more weight by Applicant and the public, it is the first word, REDNECK, which Applicant has reinforced with its new product sold under the mark REDNECK DEER HUNTIN'. Because Applicant's use of its mark — both alone and in its other marks — reinforces the mark's unique commercial impression, there is no likelihood of confusion between Applicant's mark and the cited marks.

The Examining Attorney cites a number of cases for the proposition that "[t]he mere addition of a term to a registered mark is not sufficient to overcome a likelihood of confusion." With all due respect, those cases are inapposite here because the marks at issue in those cases failed to create a different commercial impression from the cited marks. In the Coca-Cola case, for example, the CCPA held that BENGAL LANCER (and Design) created the same commercial impression as the registered mark BENGAL, namely, that the products originate from the province of Bengal (now part of India and Bangladesh). (FN3: Coca-Cola Bottling Co. of Memphis, Tennessee v. Joseph E. Seagram & Sons, 188 U.S.P.Q. (BNA) 105, 106 (C.C.P.A. 1975).) The BENGAL LANCER mark was inspired by a book and movie about a member of an elite military corps in Bengal (a "lancer"), and thus the addition of the word LANCER merely reinforced the mark's geographic significance. The facts here are completely different. Applicant's mark contains a different word at the beginning of the mark, which the Office and the Board have viewed as making a greater difference in a mark's commercial impression, and the resulting combination of words is incongruous rather than reinforcing. Therefore, the Coca-Cola decision is inapplicable here. Analyzed as a whole, in the context of its use in the marketplace, Applicant's mark is entitled to registration. (FN4: The other cases cited by the Examining Attorney also concerned facts significantly different from this Application. Two involved applications that shortened a registered mark, rather than adding a word to a registered mark (In re The United States Shoe Corporation, 229 U.S.P.Q. (BNA) 707 (CREST CAREER IMAGES® and CAREER IMAGES); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 153 U.S.P.Q. (BNA) 406 (LILLI ANN® and THE LILLY, held to be an abbreviation of Lillian and therefore to create the same impression)), a third involved adding a house mark in a configuration which did not yield an overall different commercial impression (In re Cosvetic Laboratories, 202 U.S.P.Q. (BNA) 842 (HEAD START® and COSVETIC HEAD START (and Design) where Cosvetic appeared in small print perpendicular to the rest of the mark)), and another involved preceding the registered mark with a famous celebrity name, which did not change the commercial impression of the mark and was deemed likely to cause reverse confusion (In re Riddle, 225 U.S.P.Q. (BNA) 630 (ACCU-TUNE® and RICHARD PETTY'S ACCU TUNE (and Design)). In none of these cases did the junior mark create a commercial impression different from the registered mark.)

For these reasons, the Examining Attorney should withdraw her refusal based on likelihood of confusion. The mere possibility that relevant purchasers might relate the two different marks does not meet the statutorily established test of likelihood of confusion. E.g., In re Hughes Aircraft Company, 222 U.S.P.Q. 263, 264 (TTAB 1984) ("the Trademark Act does not preclude registration of a mark where there is a possibility of confusion as to source or origin, only where such confusion is likely") (emphasis added).


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