In the Office Action, the Examining Attorney refused registration based on a likelihood of
confusion with Registration No. 3773883 for the mark DUCKNEWS for “multimedia publishing of
books, magazines, journals, software, games, music, and electronic publications” in Class 41. Applicant
respectfully submits that its DUCKS mark is not likely to cause confusion with the cited mark due to the
differences between the parties’ respective goods and services, the significant differences in likely
consumers, and the differences in the marks themselves. Accordingly, this refusal is respectfully
traversed, and reconsideration is requested, as more fully set forth below.
In re E.I. DuPont de Nemours & Co., 177 U.S.P.Q. 56 (CCPA 1973), cited by the Examining
Attorney, stands for the proposition that likelihood of confusion depends upon whether the purchasing
public would mistakenly assume that an applicant’s goods or services originate from, are sponsored by, or
are in some way associated with goods or services provided under a cited registration. In DuPont, the
court enunciated several factors relevant to determining likelihood of confusion.
The mere similarity or even identity between two marks can never alone be decisive of likelihood
of confusion. McGregor-Doniger, Inc. v. Drizzle Inc., 202 U.S.P.Q. 81 (2d Cir. 1979). Thus, in holding
the mark “DRIZZLE” for women’s overcoats was not likely to cause confusion with “DRIZZLER” for
golf jackets, the Court of Appeals for the Second Circuit stated “[f]irst, even close similarity between two
marks is not dispositive of the issue of likelihood of confusion. ‘Similarity in and of itself is not the acid
test. Whether the similarity is likely to provoke confusion is the crucial question.’” Id. at 89 (citations
omitted). Further, the basic principle in determining confusion between marks is that the marks must be
compared in their entireties. It follows from that principle that likelihood of confusion cannot be
predicated on dissection of a mark, that is, on only part of a mark. In re Nat’l Data Corp., 224 U.S.P.Q.
749, 850-51 (Fed. Cir. 1985) (citations omitted); TMEP § 1207.01. For example, the Board in Hart
Schaffner & Marx v. Marks Ltd., 229 U.S.P.Q. 544 (TTAB 1986) held that even though the goods of the
parties were closely related, the mark “MARKS LTD” was not likely to create confusion with a
composite mark “HART SCHAFFNER & MARX” stating that:
[a]lthough “MARKS” and “MARX” might be likely to create confusion if they were used
by themselves as marks for the goods and services of the parties, we see no likelihood of
confusion in the case presently before us, where these words are only one element of
marks which are otherwise not at all alike in meaning, appearance or sound.

Id. at 546.
The same analysis employed in the foregoing cases is required here. In the present case, if one
views the marks side-by-side, there are similarities. The test, however, is not a side-by-side comparison
of the marks, but whether the marks are sufficiently similar such that confusion as to the source of the
relevant goods and services is likely. “All relevant facts pertaining to appearance, sound, and connotation
must be considered before similarity as to one or more of those factors may be sufficient to support a

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finding that the marks are similar or dissimilar.” Recot, Inc. v. M.C. Becton, 54 U.S.P.Q.2d 1894, 1899
(Fed. Cir. 2000); TMEP § 1207.01(b).
As will be detailed more fully, when viewed in connection with their respective goods and
services, one must conclude that confusion between these marks is wholly unlikely. The cited mark
DUCKNEWS is visually and phonetically different from Applicant’s DUCKS mark. While they share
the element “DUCK,” Applicant’s mark is presented in the plural while the cited mark shows “DUCK” in
singular form. Moreover, the cited registration includes the suggestive element “NEWS.” Not only does
this element differentiate the marks in sight and sound, it gives the cited registration a different overall
impression from that of Applicant’s DUCKS mark. DUCKNEWS, when read in its entirety and
considered in connection with the services of the cited registration, suggests to consumers that the
information provided will be in the form of news. And, in fact, the news information provided by the
cited registrant relates to the Oregon Ducks athletics programs. Applicant’s DUCKS mark presents no
such impression. Instead, Applicant’s mark, when viewed in connection with its goods and services,
suggests to consumers that the magazines and information services will be of general interest to pet
owners. Coupled with the differences in the services and target consumers, the differences in the marks
themselves make confusion between Applicant’s mark and the cited mark unlikely.
In this case, while the marks both relate to the broad penumbra of conveying information in some
aspect, the goods and services have important differences that differentiate the parties’ marks and
minimize the opportunity for confusion. In particular, the consumers of Applicant’s magazines and online
information related to pets and animals are those seeking information that is significantly different than
the cited registrant’s multimedia publishing services related to a college athletics program. This
distinction in likely consumers further cuts against any opportunity for confusion. These important
factors, coupled with the differences in the marks themselves, make confusion unlikely.
Although true that the goods and services of the parties do not need to be identical or directly
competitive to find a likelihood of confusion, they must be likely to be encountered by consumers under
circumstances that could give rise to the mistaken belief that they emanate from the same source. On-line
Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000). The Examining
Attorney argues that the parties’ goods and services are likely to emanate from the same source because
consumers of Applicant’s magazines and information services and the cited registrants multimedia
publishing in various forms are “seeking magazines and information via the Internet.” In support of this
argument, the Examining Attorney included several registrations which cover multimedia publishing,
magazines, and information services. In addition, the Examining Attorney provided links to three
websites, at least two of which provide information and access to online magazines apparently related to
horses (Applicant was unable to access the website at www.fridofriendly.com). The Examining Attorney

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determined that the third party registrations, coupled with these websites, “conclusively demonstrate” that
Applicant’s goods and services and the services associated with the cited registration are marketed and
sold to the same consumers through the same channels of trade. Applicant respectfully disagrees.
Applicant submits that nearly all purchasers in this day and age are “seek information via the
Internet.” However, obviously not all information provided via the Internet is related or likely to emanate
from the same source. The websites cited as evidence by the Examining Attorney offer goods and
services through the same channels of trade to the same types of consumers because the content of the
information relates to the same subject matter. By contrast, the content of Applicant’s magazines and
information is entirely different than the content of the multimedia publishing associated with the cited
mark. Applicant’s subject matter, as set forth in the Application, is pets or animals. The content
associated with the registered mark is the collegiate athletic programs of the University of Oregon. The
specimens associated with the parties’ marks further highlight the difference in their goods and services,
and thus, their respective intended consumers.

The DUCKNEWS specimen clearly and closely relates the mark to Oregon college athletics. The
duck in the specimen is adorned in the Oregon Ducks green jersey as it juggles various sports balls and a
track symbol. The duck in no way resembles a pet or wild duck. On the other hand, Applicant’s
specimen clearly shows that its magazines and information services relate to actual animals and topics of
interest to pet owners – not college sports.
The cited registrant’s website further clarifies that its target consumers are seeking the University
of Oregon’s various athletic programs. The DUCKNEWS mark is closely associated with the tagline “All

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Duck Sports – All The Time.” In addition, the several athletic programs offered at the University of
Oregon are enumerated down the side of the website. Consumers of the news information offered by the
cited registrant will not, at the same time, be seeking information related to ducks, as wild animals or pets.

It is clear that in this case, the parties’ goods and services are targeted to such different consumers
that no consumer would encounter one party’s goods and services while looking for those of the other
party and mistakenly conclude that the goods and services emanate from the same source. Since the
goods and services are not related or marketed such that consumers might assume they originate from the
same source, confusion is not likely even if the marks are identical. Shen Manufacturing Co. v. Ritz Hotel
Ltd, 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004). But, in this case, the marks are not identical.
Finally, Applicant also notes that a mere possibility of confusion is an insufficient basis for
refusal under § 2(d). In re Massey-Ferguson, Inc., 222 U.S.P.Q. 367, 368; Witco Chem. Corp. v.
Whitfield Chem. Co., 164 U.S.P.Q. 43 (CCPA 1969). In other words, a refusal to register based on
likelihood of confusion as to the source of goods or services must not be merely possible, but likely. “We
are not concerned with mere theoretical possibilities of confusion, deception or mistake or with de
minimis situations but with the practicalities of the commercial world with which trademark laws deal.”
Witco at 44.
Inasmuch as all outstanding issues have been resolved, Applicant requests withdrawal of the
refusal to register and submits that the mark is in condition for publication.

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