Axiom Global, Inc.
Legal services
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
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 Applicants 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
2
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.
Applicants 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 Applicants 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.
3
Not only do Applicants Mark and the Cited Mark look and sound different, they convey
entirely different commercial impressions. Primarily, the term AXIOM in Applicants 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 Applicants 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, Applicants Mark has a significantly different than the Cited Mark connotation
that derives from AXIOM, the clearly dominant element in Applicants Mark.
Moreover, the stylization and claimed colors of Applicants 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 Applicants Mark and therefore entitled to
greater weight than the remaining elements. The bright orange and grey colors in Applicants
Mark are also very distinctive. Thus, when compared in their entireties, it is clear that
Applicants 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
Applicants 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
4
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, Applicants Mark has unique and distinguishing literal, design and color
elements that unquestionably distinguish it from both the Cited Mark.
The Federal Circuits decision in In re Electrolyte Laboratories, Inc., 929 F.2d 645 (Fed.
Cir. 1990) further indicates that there is no likelihood of confusion between Applicants 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 Boards 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 applicants
mark sufficiently from the Tektronix mark. Id. Certainly the arbitrary term AXIOM in
Applicants Mark is just as distinguishing as the D was in the Tektronix case, not to mention
the other distinguishing elements.
5
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
Applicants Mark and the Cited Mark.
Federal Circuit jurisprudence also supports registration of Applicants Mark.
Specifically, the Federal Circuits 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 Applicants 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
6
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); Nestles 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 users BREWSKYs for a bar and junior users 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
7
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 Applicants favor.
The Goods and Services and their Channels of Trade are Dissimilar
Applicants 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 Marks 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. Applicants
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 Applicants Mark.
8
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 Applicants 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
9
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 Applicants
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
ITS 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
10
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 USPTOs 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 Applicants Mark.
Conclusion:
For all of the foregoing reasons, the Applicants Mark is entitled to registration on the
Principal Register. Accordingly, Applicant requests that the likelihood of confusion refusal be
withdrawn.
11
12
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 Applicants 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
2
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.
Applicants 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 Applicants 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.
3
Not only do Applicants Mark and the Cited Mark look and sound different, they convey
entirely different commercial impressions. Primarily, the term AXIOM in Applicants 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 Applicants 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, Applicants Mark has a significantly different than the Cited Mark connotation
that derives from AXIOM, the clearly dominant element in Applicants Mark.
Moreover, the stylization and claimed colors of Applicants 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 Applicants Mark and therefore entitled to
greater weight than the remaining elements. The bright orange and grey colors in Applicants
Mark are also very distinctive. Thus, when compared in their entireties, it is clear that
Applicants 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
Applicants 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
4
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, Applicants Mark has unique and distinguishing literal, design and color
elements that unquestionably distinguish it from both the Cited Mark.
The Federal Circuits decision in In re Electrolyte Laboratories, Inc., 929 F.2d 645 (Fed.
Cir. 1990) further indicates that there is no likelihood of confusion between Applicants 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 Boards 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 applicants
mark sufficiently from the Tektronix mark. Id. Certainly the arbitrary term AXIOM in
Applicants Mark is just as distinguishing as the D was in the Tektronix case, not to mention
the other distinguishing elements.
5
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
Applicants Mark and the Cited Mark.
Federal Circuit jurisprudence also supports registration of Applicants Mark.
Specifically, the Federal Circuits 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 Applicants 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
6
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); Nestles 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 users BREWSKYs for a bar and junior users 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
7
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 Applicants favor.
The Goods and Services and their Channels of Trade are Dissimilar
Applicants 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 Marks 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. Applicants
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 Applicants 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 Applicants 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 Applicants
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
ITS 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 USPTOs 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 Applicants Mark.
Conclusion:
For all of the foregoing reasons, the Applicants Mark is entitled to registration on the
Principal Register. Accordingly, Applicant requests that the likelihood of confusion refusal be
withdrawn.
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