INTERNETSAFETY.COM, L.L.C.

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re: Application of )
)
InternetSafety.com, Inc. ) Trademark Law Office: 117
)
For: SAFE EYES ) Attorney: Georgia A. Carty
)
Serial No. 77/095784 )
)
Filed: January 31, 2007 )
———-
Sirote & Permutt, P.C.
P.O. Box 55727
Birmingham, AL 35255-5727
November 17, 2006

AMENDMENT UNDER 37 C.F.R. § 2.71

Dear Madame:

In response to the Office Action of May 21, 2007, please amend the above identified

application as follows:

1. Please enter the following disclaimer:

No claim is made to the exclusive right to use “SAFE” apart form the mark as

shown.

2. On page 2 of the application under “Description of Goods,” please delete the

current description and insert the following:

009: Software for facilitating Internet parental control, namely, software that provides

an Internet content filter.

REMARKS

This is in response to the Office Action of May 21, 2007.

The examining attorney has refused registration of Applicant’s mark under Trademark

Act Section 2(d), 15 U.S.C. Section 1052(d) on the grounds that there is a likelihood of confusion

between Applicant’s mark SAFE EYES (the “Applicant Mark”) and the mark in U.S.

Registration No. 2685406 for SAFETY EYE (the “Registered Mark”). Applicant respectfully

requests that the trademark attorney reconsider and withdraw the citation to the Registered Mark

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on the grounds that there is no likelihood of confusion between the Applicant Mark and the

Registered Mark for the reasons set forth hereafter.

The test for determining the applicability of § 2(d) of the Trademark Act is whether an

appreciable number of ordinarily prudent purchasers are likely to be misled or confused as to the

source of the products or services. McGregor-Doniger, Inc., v. Drizzle, Inc., 202 USPQ 81 (2nd

Cir. 1979) (holding no likelihood of confusion between DRIZZLE for women’s overcoats and

DRIZZLER for golf jackets). In considering the issue of likelihood of confusion, the trademarks

must be compared in their entireties and must be considered in conjunction with the particular

goods with which they are used. In re National Data Corp., 753 F.2d 1056, 1058 (Fed. Cir.

1985). The use of identical, even dominant, words in common does not automatically mean that

two marks are similar. Freedom Saving & Loan Assoc. v. Way, 757 F. 2d 1176, 1183 (11th Cir.

1985). Further, the Trademark Office must take into consideration the scope of protection to be

accorded the marks.

While the Applicant Mark and the Registered Mark both include the root words “safe”

and “eye”, there are differences between them that obviate any likelihood of confusion. The

Applicant Mark is for SAFE EYES while the Registered Mark is for SAFETY EYE. The

respective marks therefore look different and are spelled different. Each component word of the

respective marks are even spelled differently. Furthermore, the marks sound different. Thus, the

respective marks create different commercial impressions.

These differences, when taken together, are sufficient to preclude a likelihood of

confusion. See EZ Loader Boats Trailers, Inc. v. Cox Trailers, Inc., 706 F.2d 1213 (Fed. Cir.

1983)(finding SUPERLOADER not confusingly similar to EZ LOADER or MINI LOADER for

boat trailers). “[T]he mere fact that the marks in issue share elements, even dominant elements,

does not compel a conclusion of likely confusion.” General Mills, Inc., v. Kellogg Co., 824 F.2d

622, 627 (8th Cir. 1987), citing Freedom Savings & Loan Assoc. v. Way, 757 F.2d 1176, 1183

(11th Cir. 1985). Thus, the Trademark Trial and Appeal Board and the courts have held in a

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number of cases that even though trademarks may be similar or the same in sound and

appearance, where the goods/services are different, the channels of trade are different or the

purchasers of the goods/services are sophisticated, there will be no likelihood of confusion. See

e.g. Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 220 USPQ 786 (1st Cir.

1983) (holding no likelihood of confusion between the trademark ASTRA for computerized

blood analyzer machine and other products related to the machine and ASTRA for

pharmaceutical preparations and syringes); Information Resources, Inc. v. X*Press Information

Services, 6 USPQ 1034 (TTAB 1988) (holding no likelihood of confusion between EXPRESS for

computer software and services relating to the analysis of information, including financial

information, and X*PRESS for transmitting news and general information and data to home and

business computers via satellite and cable television lines); C.E. Jamieson & Co. v. Drug

Specialties Inc., 61 USPQ 381 (1944) (finding LEVO-BEL for a nervine sedative and

antispasmodic and LEVENOL for a preparation for the treatment of intestinal autointoxication

and constipation not confusingly similar since the goods differ in essential characteristics and are

used for unrelated purposes and are noncompetitive); Wyeth Inc. v. Injectables Research Corp.,

100 USPQ 445 (1954) (finding LENASORB for an analgesic and narcotic for intra-muscular use

for relief of pre- and post-operative pain and ESORB for a medicinal vitamin E preparation not

confusingly similar due to the difference in the marks and the goods); Reedco Inc. v. Hoffmann-

LaRoche Inc., 2 USPQ2d 1994 (1987) (finding TEGRIN for medicated soaps and salves and

TEGISON for drugs for treating psoriasis not confusingly similar since, inter alia, products’

treatment uses make them distinguishable); Pharmacia & Upjohn Co. v. Generation Health, 44

USPQ2d 1091 (1997) (finding COLESTID for prescription drugs and CHOLESTIN for over the

counter food supplements not confusingly similar); Endo Products, Inc. v. National Package

Drugs, Inc., 100 USPQ 250 (1954) (finding HISTAPRO for anti-histamine and HISTAPON for

medicine for treating gastric ulcers not confusingly similar).

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In the instant case, the differences between the goods and services associated with the

Applicant Mark and those of the Registered Mark and the differences in the channels of trade of

the goods and services associated with the Applicant Mark and those of the Registered Mark,

alone or in combination, are sufficient to prevent of likelihood of confusion in view of the

differences in the parties’ respective marks. The Applicant Mark is associated with Parental

control software to be used for the Internet (the “Applicant Product”). It is entirely a software

product that is marketed and sold over the Internet and in retail stores to the general public for use

on computers that are owned by the product’s end users. There is no hardware component

involved with the Applicant Product. The only physical component of the product at all is the

media used to hold the software, which is not even always used if the software is directly

downloaded from the Applicant.

The Registered Mark, on the other hand, is associated with a safe camera system for

three-dimensional zone monitoring that is generally customized for an end user and designed

mostly for industrial or factory automation uses and security systems (the “Registered Product”).

See Registered Owner’s Web Site for product description associated with Registered Mark

(http://www.pilz.de/company/press/messages/sub/products/articles/00951/index.en.jsp),

a screen shot of which is attached hereto as Exhibit A. Such product is principally a hardware

component consisting of a camera system that is designed “to safely monitor and control

potentially hazardous work processes for safeguarding man and machine (safety) and to protect

objects from unauthorised access (security).” Id. Registered Product sales literature describes the

product as follows: “The overall SafetyEYE system is made up of various components that

combine to form one safety unit. It comprises a sensing device, an analysis unit and a

programmable safety and control system. The sensing device consists of three cameras, which

observe what’s happening and transmit greyscale images. The analysis unit, a high performance

computer, receives and processes the image data. In doing so it generates the signals – detection

zone violations for example – for the integrated programmable safety and control system. This in

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turn forms the interface with the actuator technology. As soon as the safety and control system

receives the signal that the closest detection zone has been violated, it immediately shuts down

the relevant machine. Other reactions are also a possibility in the area of security. The

programmable safety and control system is part of the analysis unit, with an optional SafetyBUS

p/SafetyNET p interface.” See SafetyEYE Product leaflet attached as Exhibit B. The product

descriptions for the Registered Product all make it clear that this product is an integrated system

that merely contains a specific software component.

Just because the Registered Product contains a software component to its sophisticated

camera system and the application for the Registered Mark contains a very broad description of

goods and services that includes a software component does not result in a likelihood of

confusion to the general public. A side by side review of these products makes this analysis very

clear. In today’s increasingly electronic and digital world, more and more products contain some

form of electronic or computer system. Electronics and computer expertise is widespread and not

confined to only certain companies and individuals. Just having an electronic or computer

component to a product does not mean that an appreciable number of ordinarily prudent

purchasers of the Applicant Product and the Registrant Product are going to be confused as to

source of goods. Since the Registrant Product is primarily a hardware product and the Applicant

Product is primarily a software product, it is extremely unlikely that they will ever be confused

for one another or as having come from a common source.

Furthermore, the sale and marketing of the respective goods is entirely different. The

Registered Product is apparently sold only through authorized representatives who discuss the

end consumer’s needs and customize such product to such needs. Purchasers of such products are

almost always going to be very sophisticated and searching for a product that meets their specific

industrial or security needs. The nature of the Registered Product and its hardware components

also strongly suggest that the price of such a system is going to be significantly higher than that of

the Applicant Product. It is simply not a product that is mass marketed to the public as an off the

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shelf product. The Applicant Product, on the other hand, is a standard software product that is

marketed and sold over the Internet and in retail stores to the general public for use on computers

that are owned by the product’s end users. Customization by the Applicant is not the norm. As

such, the Applicant Product and the Registrant Product differ in use, function, customer base,

marketing appeal and conditions and circumstances surrounding their sale and promotion. Thus,

they are different and unlikely to be confused for purposes of trademark law. See, e.g.,

Anheuser- Busch, Incorporated v The Florists Association of Greater Cleveland, Inc. et al., 224

USPQ 493 (DC N Ohio 1984) (Finding that beer and flowers are totally unrelated goods as to

which no consumer could be confused); The Proctor & Gamble Company v. Weiss Noodle

Company, 55 USPQ 195 (ComrPats 1942)(Finding that a preparation for making noodle soup

does not have same descriptive properties as flower seeds). Moreover, the Trademark Trial and

Appeal Board and the courts have held in a number of cases that even though trademarks may be

similar or the same in sound and appearance, where the goods/ services are different, the channels

of trade are different or the purchasers of the goods/ services are sophisticated, there will be no

likelihood of confusion. See, e.g., Morton-Norwich Products, Inc. v. N. Siperstein, Inc., 222

USPQ 735 (TTAB 1984) (holding use of FANTASTIC for paints not confusingly similar to

FANTASTIK for spot remover, laundry starch cleaners); Haydon Switch and Instrument Inc. v.

Rexnord, Inc., 4 USPQ2d 1510 (D. Conn. 1987) (holding no likelihood of confusion between

PLANETGEAR for mechanical drum wheel digital display time counters and PLANETGEAR

for planetary gear speed reducers and motor drive shafts).

Due to, inter alia, the differences in the marks, the nature of the parties’ respective

services and relevant case law, it is clear that Applicant Mark and Registered Mark are not

confusingly similar as an appreciable number of ordinarily prudent purchasers of the parties’

respective goods and services are not likely to be misled or confused as to the source of the

respective good and services. Therefore, Applicant respectfully requests that the examining

attorney reconsider and withdraw the citation to the registration for the Applicant Mark.

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If the trademark attorney requires further information from the Applicant, it is

respectfully requested that she contact the undersigned to expedite the matter.

Publication is respectfully requested.

Respectfully Submitted,

INTERNETSAFETY.COM, INC.

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