IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re U.S. Application of Axiom Global Inc. )
)
Serial No.: 77/775308 ) Lourdes D. Ayala
) Examining Attorney
Filed: July 7, 2009 ) Law Office 106
) (571) 273-9106
Mark: AXIOM LAW REDEFINED (logo) )

RESPONSE TO OFFICE ACTION

This responds to the Office Action mailed October 6, 2009. Applicant Axiom Global

Inc. d/b/a Axiom Law (“Axiom” or “Applicant”) intends to respond fully to every issue raised in

the Office Action and any failure to do so is purely inadvertent.

TRADEMARK ACT 2(d) REFUSAL

The Examining Attorney issued a final refusal of registration of Applicant’s AXIOM

LAW REDEFINED (stylized with design) mark for “legal services” (the “Mark”) based on an

alleged likelihood of confusion with the U.S. Registration No. 2754381 for covering “Providing

information via a global computer information network in the fields of law and legal news.”

(“Cited Mark”).

The Examining Attorney based her initial refusal on the marks’ two common elements,

LAW, which is entirely descriptive in the case of both marks, and REDEFINED and

DEFINING, terms that are widely used and registered by third parties in connection with legal

services and other related services in International Classes 042 and 045. Applicant respectfully

disagrees and submits that these shared common elements are simply insufficient to support a

2(d) refusal.
ARGUMENT

Likelihood of confusion is a question of fact that turns on several factors. In the

preeminent likelihood of confusion case, In re E. I. DuPont de Nemours & Co., 476 F.2d 1357,

177 USPQ 563 (C.C.P.A. 1973), the court listed thirteen factors to consider when determining

whether a likelihood of confusion exists under Section 2(d) of the Trademark Act. The DuPont

factors that are relevant to the present analysis all decisively weigh in favor of Applicant,

including: (1) the similarity or dissimilarity of the marks in their entireties as to appearance,

sound, connotation and commercial impression; (2) the similarity or dissimilarity and nature of

the goods and services as described in the application or registration or in connection with which

a prior mark is used; (3) the similarity or dissimilarity of established, likely to continue trade

channels; (4) the fame of the prior mark; and (5) the number and nature of similar marks in use

on similar goods or services. But ultimately, the fundamental inquiry in determining likelihood

of confusion goes to the cumulative effect of the differences in the marks and the relevant goods

or services. Federated Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24, 29 (C.C.P.A.

1976).

The Marks Differ in Sound, Sight and Meaning:

Similarity in appearance, sound, and commercial impression arises from the overall

impression of the elements comprising the mark. In re Hearst Corp., 25 U.S.P.Q.2d 1238, 1239

(Fed. Cir. 1992)(emphasis added). “Marks tend to be perceived in their entireties, and all

components thereof must be given appropriate weight.” Id. Marks must be compared in their

entireties. A mark must not be dissected or split up into its component parts and each part then

compared with corresponding parts of the cited mark to justify a finding of a likelihood of

confusion. It is the impression that the mark as a whole creates on the average reasonably

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prudent purchaser and not the parts thereof, that is important. Estate of P.D. Beckwith, Inc. v.

Commissioner of Patents, 252 U.S. 538 (1920); see also In re National Data Corp., 224

U.S.P.Q. 749 (Fed. Cir. 1985). In the words of the Supreme Court, “[t]he commercial

impression of a trademark is derived from it as a whole, not from its elements separated and

considered in detail. For this reason it should be considered in its entirety.” Estate of P.D

Beckwith, 252 U.S. at 545-46.

Applicant’s Mark is comprised of the single literal elements AXIOM LAW

REDEFINED, the “i” in AXIOM inverted, in a stylized font in the claimed colors orange and

gray:

The Cited Mark is comprised of the literal elements “REDEFINING THE LAW.” But

the inclusion of one or more similar terms between competing marks does not necessitate a

likelihood of confusion finding. See, e.g., In re Hearst Corp., 25 U.S.P.Q.2d at 1239. In Hearst

for example, the Federal Circuit held that the marks VARGA GIRL and VARGAS, used in

connection with related goods, were sufficiently different to negate any likelihood of confusion.

Importantly, the Hearst case presented a much closer question than the one posed here. In the

Hearst case, the two marks were word marks, with absolutely no stylization or design elements,

unlike Applicant’s Mark here. Even without the kind of additional significant distinguishing

elements that are present in this case, VARGA GIRL and VARGAS still were held sufficiently

distinguishable.

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Not only do Applicant’s Mark and the Cited Mark look and sound different, they convey

entirely different commercial impressions. Primarily, the term AXIOM in Applicant’s Mark

creates an instant distinction from the Cited Mark, particularly considering that all of the

elements of the Cited Mark are relatively weak. The additional term in Applicant’s Mark,

AXIOM, means “a self-evident truth that requires no proof” or “a universally accepted principle

or rule.” See DICTIONARY.COM. The inverted or upside down “i” also connotes a counter to the

law firm establishment or status quo, turning the law firm industry on its head, so to speak.

Consequently, Applicant’s Mark has a significantly different than the Cited Mark connotation

that derives from AXIOM, the clearly dominant element in Applicant’s Mark.

Moreover, the stylization and claimed colors of Applicant’s Mark provide further

distinction from the Cited Mark. The word AXIOM appears first, in a substantially larger font,

on top of the much smaller LAW REDEFINED. And AXIOM is further emphasized in a bright

orange font whereas LAW REDEFINED appears in small gray font. For these reasons, there is

no question that AXIOM is the dominant portion of Applicant’s Mark and therefore entitled to

greater weight than the remaining elements. The bright orange and grey colors in Applicant’s

Mark are also very distinctive. Thus, when compared in their entireties, it is clear that

Applicant’s Mark and the Cited Mark look and sound differently and convey such

distinguishable commercial impressions, that there is no likelihood of confusion among them.

A legion of case law supports that there is no likelihood of confusion between

Applicant’s Mark and the Cited Mark. For example, the C.C.P.A held that the mark RED

ZINGER was not confusingly similar to the registered mark ZINGERS even when both were

used on products sold to consumers through similar channels. Interstate Brands Corp. v.

Celestial Seasonings, Inc., 576 F.2d 926, 928 (C.C.P.A. 1978). The court noted that the

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additional word element RED — just like the term AXIOM — could not be ignored, in light of

the maxim that marks be considered in their entireties. Id. The Interstate Brands case involved

two word marks, again presenting a much closer call than the one here, with one of the words

being common to both marks. The color adjective RED was sufficient to distinguish those two

marks. In this case, Applicant’s Mark has unique and distinguishing literal, design and color

elements that unquestionably distinguish it from both the Cited Mark.

The Federal Circuit’s decision in In re Electrolyte Laboratories, Inc., 929 F.2d 645 (Fed.

Cir. 1990) further indicates that there is no likelihood of confusion between Applicant’s Mark

and either the Cited Registration or the Cited Application. In Electrolyte Labs, the applicant

sought to register the composite mark K+ (and design). The Board refused to register the mark,

citing the registered mark K+EFF (and design) as confusingly similar. Id. The Federal Circuit

reversed the Board’s refusal of registration and allowed the mark to proceed to publication.

Significantly, the court expressly noted that the respective parties’ goods were similar and

traveled similar trade channels–indeed, both parties produced vitamin supplements sold in

retail channels. Id. at 647. Yet the Court once again emphasized the well-established mandate

that the marks must be considered in their entireties.

Similarly, in Tektronix, Inc. v. Daktronics, Inc., the Court of Customs and Patent Appeals

considered two marks, DAKTRONIKS and TEKTRONIX, also both design marks. 534 F.2d

915, 917 (C.C.P.A. 1976). The court noted the “obvious visual prominence” of the stylized letter

“D” in applicant Daktroniks’ mark, concluding that element helped distinguish the applicant’s

mark sufficiently from the Tektronix mark. Id. Certainly the arbitrary term AXIOM in

Applicant’s Mark is just as distinguishing as the “D” was in the Tektronix case, not to mention

the other distinguishing elements.

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In addition, the Trademark Trial and Appeal Board held IMPERIAL for automobile and

structural parts and IMPERIAL for automotive products were not confusingly similar in In re

Dayco Products-Eaglemotive Inc., 9 U.S.P.Q.2d 1910 (T.T.A.B. 1988). The Dayco case

demonstrates clearly that where a term has been used extensively in connection with a particular

category of goods and services, there is no likelihood of confusion even where an identical mark

is used on highly-related goods. If all of the marks discussed above were found to be

distinguishable, then there remains no doubt that no likelihood of confusion exists between

Applicant’s Mark and the Cited Mark.

Federal Circuit jurisprudence also supports registration of Applicant’s Mark.

Specifically, the Federal Circuit’s held that the mark CRYSTAL CREEK for wine was not

confusingly similar to CRISTAL for champagne, even though the goods were related, in the

same class and traveled in the same commercial channels, because the additional element

“CREEK” gave rise to a different commercial connotation than that of the singular “CRISTAL.”

Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 1375 (Fed. Cir. 1998).

The very same distinction can be made here. The additional literal element AXIOM, along with

color and stylization, of Applicant’s Mark creates a distinct aural and visual appearance and a

commercial impressions that differentiates it from the Cited Mark.

The entirely descriptive nature of the term LAW and the widespread third-party use and

registration of the term REDEFINED/REDEFINING when used in connection with legal and

other related International Class 042 and 045 services must be considered seriously here. As

demonstrated in detail in this Response, the term REDEFINED/REDEFINING is widely used

and registered in a number of marks for legal and other related International Class 042 and 045

and it therefore lacks any real strength with respect to those goods and services. See MCCARTHY

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ON TRADEMARKS AND UNFAIR COMPETITION, Thomas J. McCarthy, § 23:48 (4th Ed. 2004); citing

Gruner + Jahr USA Publishing v. Meredith Corp., 26 U.S.P.Q.2d 1583 (2d Cir. 1993) (confusion

not likely between PARENTS and PARENTS DIGEST for magazines due to significant

weakness of “parents” element); Nestle’s Milk Prod., Inc. v. Baker Importing Co., 86 U.S.P.Q.

80 (C.C.P.A. 1958) (HYCAFE versus NESCAFE); and Smith v. Tobacco By-Prod. & Chemical

Corp., 113 U.S.P.Q. 339 (C.C.P.A. 1958) (GREEN LEAF versus BLACK LEAF for plant

sprays).

When the components of marks are widely and commonly used, consumers easily can

distinguish the slightest differences in the marks, even if the relevant goods or services are

related. See Brewski Beer Co. v. Brewski Brothers, Inc., 47 U.S.P.Q.2d 1281 (T.T.A.B. 1998)

(confusion not likely between senior user’s BREWSKY’s for a bar and junior user’s BREWSKI

BROTHERS for sportswear because “brewski” is a common slang word for beer and

consequently is high suggestive of bar services); accord, In re Bed & Breakfast Registry, 229

U.S.P.Q. 818 (Fed. Cir. 1986) (no likelihood of confusion found between BED AND

BREAKFAST REGISTRY and BED AND BREAKFAST INTERNATIONAL because the

common elements “bed and breakfast” were descriptive and weak).

USPTO records, as discussed in further detail below, demonstrate this common use even

among simultaneously registered marks on the Principal Register. Thus, in addition to the purely

descriptive nature of LAW, the term REDEFINED/REDEFINING can only be entitled to an

extremely limited scope of protection weak when used in connection with the services at issue.

Consequently, although the Cited Mark is entitled to protection, the scope of that protection (and

the numerous other REDEFINED/REDEFINING marks cited below) is substantially and

necessarily narrowed because of the generally weak nature of the term

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REDEFINED/REDEFINING. When no other visual or aural similarities exist, the marks’

common inclusion of an inarguably weak term is not sufficient to support finding a 2(d) refusal.

Consequently, this first Du Pont factor weighs heavily and decisively in Applicant’s favor.

The Goods and Services and their Channels of Trade are Dissimilar

Applicant’s Mark covers “legal services” and the Cited Mark covers “Providing

information via a global computer information network in the fields of law and legal news.”

That both the Applicant and the Owner of the Cited Mark’s services both generally fall into the

very broad ambit of the law is grossly insufficient to declare so related that a likelihood of

confusion exists. Essentially, the owner of the Cited Mark is a news service. Applicant’s

services, however, are legal services. The practice of law is governed by strict regulation in

every state and requires passing a bar examination and maintaining a license. This is a far cry

from a news service, whether or not the subject matter of that news relates to legal issues.

Typically, legal services are not inexpensive, require an educated consumer and are

therefore not vulnerable or subject to impulse buying. Moreover, selecting and engaging an

attorney generally involves a fair amount of research, possible interviews, consideration and

comparison to other attorneys. This is the classic case of a sophisticated consumer.

Accordingly, when consumers engage Applicant for legal services, those consumers are keenly

aware that they are engaging Applicant and no one else, including the owner of the Cited Mark.

This factor thus also weighs in favor of registration of Applicant’s Mark.

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The Fame of the Prior Mark

Both the 2003 date of its first use and 2003 date of registration for Cited Mark strongly

indicate that it has not achieved any degree of fame whatsoever. In addition, the substantially

weak nature of all the elements of the Cited Mark further underscores its lack of fame. This

factors favors registration of Applicant’s Mark.

Moreover, Applicant has been using the distinctive portion of its mark, AXIOM, since at

least as early as 2001, nearly two years before that of the owner of the Cited Mark.

Number and Nature of Similar Marks in Use on Similar Goods

The widespread third-party use and federal registration of numerous

REDEFINE/REDEFINING marks on the Principal Register is powerful evidence that confusion

is unlikely here. It is this widespread use that even further demonstrates that

REDEFINE/REDEFINING is a relatively weak term when used in connection with legal and

other related International Class 042 and 045 services and that the various

REDEFINE/REDEFINING registrations are consequently afforded only a narrow scope of

protection.

USPTO online records show 24 live records for marks comprised, in whole or in part, of

the term DEFINING, REDEFINING or a derivative thereof purely in connection with law or

legal related goods and services. See Exhibit A. In addition, in International Classes 042 and

045 alone (the International Classes at issue here), that number of DEFINING, REDEFINING

(and derivatives thereof) increases to 103 live USPTO records. See Exhibit B. Review of these

USPTO records show just how predominant the use of DEFINING/REDEFINING (and

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derivatives thereof) and variations thereof is in connection with legal and other related

International Class 042 and 045 services.

The USPTO has registered, approved for publication or allowed the following marks

alongside the Cited Mark that cover the same or related goods or services and include the word

DEFINING/REDEFINING or a variation thereof. Below are only the

DEFINING/REDEFINING marks that are most comparable to the Cited Mark and Applicant’s

Mark and that best illustrate the commonness of the term DEFINING/REDEFINING in the

services at issue here. Copies of the registration certificates or applications for these marks are

attached as Exhibit C.

Mark Relevant Goods/Services Registration No. or Serial
No.
CHALLENGING. Legal services 3101755
REDEFINING.
ADVANCING.
LEGAL SERVICES Personal, social and security services 3638444
REDEFINED.
RGL FORENSICES Legal services, namely litigation support 3719476
DISCOVERING & services
DEFINING FINANCIAL
VALUE
EXPERIENCE. Consulting services and information 3566372
REDEFINED. services in the area of legal disputes and
investigations
IT’S GOOD TO BE Legal services 2591368
DEFINED BY YOUR
WORK.
DEFINING VALUE IN Legal services 2662250
LEGAL SERVICES
REDEFINING Providing temporary staffing and permanent 2392847
PROFESSIONAL job recruitment opportunities in the areas of
STAFFING accounting, banking, human resources,
legal, information technology, finance,
administration, sales, graphics and design,
and professional services.
REDEFINING SUCCESS Legal services 2471875

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Mark Relevant Goods/Services Registration No. or Serial
No.
REDEFINING THE Legal services 76/224,301
CLIENT/ATTORNEY
RELATIONSHIP

The records above make it evident that there are numerous DEFINING/REDEFINING or

a variation thereof marks that already co-exist with legal and related services. Accordingly, none

of the marks identified above can be said to be strong, including the Cited Mark.

The USPTO’s registration of numerous DEFINING/REDEFINING (or a variation

thereof) marks strongly indicates that consumers are able to readily distinguish among the

various DEFINING/REDEFINING marks so that confusion among the respective services is

avoided. Thus, this final factor also supports registration of Applicant’s Mark.

Conclusion:

For all of the foregoing reasons, the Applicant’s Mark is entitled to registration on the

Principal Register. Accordingly, Applicant requests that the likelihood of confusion refusal be

withdrawn.

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