Midwest Equipment Company
Beverage dispensing machine with flavor injection unit for frozen carbonated beverages and structural parts therefor
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 Application of: TRADEMARK APPLICATION
Midwest Equipment Company PRINCIPAL REGISTER
Serial No: 77/806,025 RESPONSE TO OFFICE ACTION
SUBMITTED: MAY 19, 2010
Mark: MIX EM UP
Attn: Dorritt Carroll
Filed: August 17, 2009 Law Of?ce 116
I. INTRODUCTION
Applicant Midwest Equipment Company (Applicant) hereby responds to the November
19, 2009, Of?ce Action from Examining Attorney Dorritt Carroll, Esq., preliminarily refusing to
register the mark MIX EM UP, Ser. No. 77/806,025 (the Mark) under Section 2(d) of the
Lanham Act. This Response is timely tiled and each of the points raised by the Examiner in the
Of?ce Action are addressed herein.
II. REFUSAL OF REGISTRATION UNDER TRADEMARK ACT SECTION 21D).
The Examiner has preliminarily refused to register the mark MIX EM UP as submitted by
Applicant contending that the Mark when used in connection with a beverage dispensing
machine with ?avor injection unit for frozen carbonated beverages and components thereof so
resembles the registered service mark MIX IT UP!, Reg. No. 3,658,101 (the Cited Mark), in
the name of Brien James Cook (Registrant) for the rental of machines and apparatus for
making both alcoholic and nonalcoholic iced fruit beverages, for use at special events from
house parties to galas and the like as to be likely to cause confusion, to cause mistake, or to
1618428.l
deceive. As explained herein, Applicant respectfully disagrees that the marks could create a
likelihood of confusion.
The Examiner cited the familiar case of In re El. DuPont de Nemours & Co., 476 F.2d 1357
(C.C.P.A. 1973) as support for the determination of an alleged likelihood of confusion between the
marks. The DuPont case provides factors for determining when a likelihood of confusion between
marks might be present (the DuPont factors). The Examiner alleges there is a likelihood of
confusion between Applicants Mark and the Cited Mark claiming that the marks are very similar
in sound, appearance, and meaning and that the goods and services covered by the marks are
related.
Using the DuPont factors as a guide, however, Applicant respectfully submits that the Cited
Mark and Applicants Mark can peacefully coexist without causing con?ision. As described in
greater detail below, this is based, in part, in that the marks create separate and distinct commercial
impressions and the goods and services provided under the marks are non-competitive and unrelated
and consumers would not expect that the goods and services would emanate ?om the same
producer. Accordingly, Applicant respectfully requests that the Examiner reconsider and withdraw
the refusal to register Applicants Mark.
A. APPLICANTS MARK IS SUFFICIENTLY DISSIMILAR IN
APPEARANCE, SOUND, CONNOTATION AND COMMERCIAL
IMPRESSION TO THE CITED MARK TO AVOID ANY PLAUSIBLE
LIKELIHOOD 0F CONFUSION.
In testing for likelihood of confusion, the similarity or dissimilarity of the marks with
regard to appearance, sound, connotation and commercial impression are critical considerations.
In re DuPont, 476 F.2d at 1361. However, similarity of the marks in only one respect does not
necessarily mandate a ?nding of likelihood of con?ision. In re Lamson Oil Co., 6 U.S.P.Q.2d
1041, 1043 (T.T.A.B. 1987). In order to determine the likelihood of confusion between two
marks, the marks must be compared in their entireties and they must be considered in connection
with the particular goods or services for which they are used. In re Natl Data Corp, 753 F.2d
1056, 1058 (Fed. Cir. 1985). It follows from that principle that likelihood of con?ision cannot be
predicated on dissection of a mark or on only part of a mark. I_d. Moreover, the marks should
not be viewed in isolation, outside the context or setting in which that are used or encountered by
consumers. Nabisco v. Warner-Lambert, 55 U.S.P.Q.2d 1051 (2d Cir. 2001) ([I]n determining
Whether two marks are confusingly similar, we must appraise the overall impression created by .
. . the context in which they are found and consider the totality of factors that could cause
confusion among prospective purchasers) (citation and quotation marks omitted).
The marks at issue contain important distinctions and when viewing the mark in their
entirety. The marks have different connotations and the overall commercial impression of
Applicants Mark and the Cited Mark are markedly different. Applicants MIX EM UP mark is
used in connection with the sale of a machine that injects ?avor into a frozen carbonated
beverage. Applicants Mark, when used in connection with the goods, suggests to consumers
that the machine mixes components together. Here, the product mixes a ?avor component with a
frozen carbonated beverage.
In contrast, the impression created by the Registrants service mark, MIX IT UPI, in
connection with the rental of machines for making both iced fruit drinks for use at special events
is dramatically different. Registrants mark suggests to consumers people intermingling and
mixing it up at a party. This is highlighted by the exclamation mark at the end of the Cited
Mark. Indeed, this is supported by Registrants services description. Registrants services do
not involve any kind of machine capable of mixing two components together. Rather, they
involve the rental of a machine to be used at parties. Thus, Registrants mark gives consumers
the impression that Registrants services directed towards helping consumers have fun at parties
and other social gatherings as opposed to Applicants Mark which implies a device for mixing
ingredients.
In many cases, courts have found no likelihood of confusion even where an applicants
mark is nearly identical to a registered mark for related goods. See, e.g., Astra Pharm. Prod. Inc.
V. Beckman Instruments 1110., 718 F.2d 1201, 1209 (1st Cir. 1983) (af?rming the grant of
summary judgment on the ground that there was no likelihood of confusion between the mark
ASTRA used in conjunction with defendants blood analyzer machine and plaintiffs local
anesthetic preparation); Vitarroz Corp. V. Borden, Inc, 644 F.2d 960 (2d Cir. 1981) (denying
injunctive relief after ?nding a low likelihood of confusion between BRAVOS for crackers and
BRAVOS for corn chips); Champagne Louis Roederer, S.A. v. Delicate Vineyards, 148 F.3d
1373 (Fed. Cir. 1998) (upholding dismissal of opposition by owner of CRISTAL for champagne
to CRYSTAL CREEK for wine solely due to differences between the marks). Here, while the
marks contain similar elements, the differences in the marks when combined with the signi?cant
differences in the commercial impressions created by the marks are enough to obviate any
potential likelihood of confusion.
As a result of the foregoing, a comparison of the marks in their entireties and the marks
respective commercial impressions does not support a conclusion that there is a likelihood of
confusion between the two marks.
B. APPLICANTS GOODS AND REGISTRANTS SERVICES ARE
UNRELATED AND ADDITIONALLY DISTINGUISH THE MARKS.
The Examiner alleged that the parties provide related or similar good and services.
Presumably, this was based upon the fact that the marks both involve machines that dispense
beverages. However, this alone is not suf?cient to demonstrate that the respective goods and
services are related. Reconsideration of the respective goods and services demonstrates that the
Applicants Mark and the Cited Mark provide unrelated goods and services as Applicants goods
and Registrants services are Wholly distinct.
The issue of relatedness is not one of semantics but of consumer expectations. That fact
that the services at issue may be offered in the same ?eld or industry does not itself provide
a basis for regarding them as related. W, Lang v. Retirement Living Publishing Co., Inc,
949 F.2d 576, 582 (2d Cir. 1991) (Where plaintiffs magazine catered to the interests of older
adults and defendants publishing house marketed its book and tapes to all people who seek
speci?cally to enhance their charisma, the court found that the products neither compete nor
serve the same purpose. Although both [defendants] publishing house and [plaintiff 3]
magazine are in the ?eld of publishing, this does not render them proximate); McGraw-Hill
Inc. v. Comstock Partners Inc., 743 F. Supp. 1029 , 1034 (S.D.N.Y. 1990) (while [the parties]
furnish products related to the broad ?eld of ?nance, [they] are as completely unrelated as night
and day); Electronic Data Systems Corp. v. EDSA Micro Corp, 23 U.S.P.Q.2d 1460, 1463
(T.T.A.B. 1992) (N0 likelihood of confusion for goods marketed under the similar marks EDS
and EDSA for computer programs for electrical distribution system analysis and design and
computer programming services including the design, implementation and management of
electronic data processing program respectively. [T]he issue of whether or not two products are
related does not revolve around the question of whether a term can be used that describes them
both, or Whether both can be classi?ed under the same general category); Heartsprings, Inc. v.
Heartspring, Inc., 143 F.3d 550, 558 (10th Cir. 1998) (Beyond . . . the fact the parties conduct
business within the very broad category of products for children, there is little overlap between
the parties products, services or marketing strategies).
Here, despite the Examiners allegation, the services offered under the Cited Mark and
goods offered under Applicants Mark are different. Applicants goods are a machine which is
capable of mixing ingredients to form a drink. Applicants machine is highly specialized and
only provides one type of drinka frozen carbonated beverage which may be injected with
?avor. The Cited Mark on the contrary, provides nothing at all similar to this highly specialized
machine. The services provided under the Cited Mark are rental services.
The above, when combined with the different commercial connotations of the marks,
precludes and possible confusion between the marks. Accordingly, this factor supports
registration of Applicants Mark.
C. THE REMAINING DUPONT FACTORS DO NOT SUPPORT A FINDING
OF LIKELIHOOD OF CONFUSION.
Finally, the remaining DuPont factors con?rm that there is no likelihood of confusion
between the marks. Indeed, Applicant has no logical intent or motive to have Applicants Mark
confused with the Cited Mark and there is no evidence that the Cited Mark is particularly strong or
that the Cited Mark is famous.
III. CONCLUSION
For the reasons provided herein, the Applicant respectfully requests that the USPTO
approve its application to register the mark MIX EM UP and amended identi?cation of goods and
permit the Applicants Mark to be published for opposition. In the event that the USPTO has any
further questions or concerns regarding the Applicants Mark or the subject matter addressed herein,
the Applicant requests that the PTO contact its attorney, Kirk A. Damman (314/444-7783) rather
than to issue a ?nal rejection.
Respectfully submitted,
LEWIS, RICE & EEHGERSH, L.C.
Kirk A. Damman
600 Washington, Suite 2500
St. Louis, Missouri 63101
Telephone: 3 14/4447783
Facsimile: 314/612-7783
kdamman lewisn’ce.com
Attorneysfor Applicant
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re Application of: TRADEMARK APPLICATION
Midwest Equipment Company PRINCIPAL REGISTER
Serial No: 77/806,025 RESPONSE TO OFFICE ACTION
SUBMITTED: MAY 19, 2010
Mark: MIX EM UP
Attn: Dorritt Carroll
Filed: August 17, 2009 Law Of?ce 116
I. INTRODUCTION
Applicant Midwest Equipment Company (Applicant) hereby responds to the November
19, 2009, Of?ce Action from Examining Attorney Dorritt Carroll, Esq., preliminarily refusing to
register the mark MIX EM UP, Ser. No. 77/806,025 (the Mark) under Section 2(d) of the
Lanham Act. This Response is timely tiled and each of the points raised by the Examiner in the
Of?ce Action are addressed herein.
II. REFUSAL OF REGISTRATION UNDER TRADEMARK ACT SECTION 21D).
The Examiner has preliminarily refused to register the mark MIX EM UP as submitted by
Applicant contending that the Mark when used in connection with a beverage dispensing
machine with ?avor injection unit for frozen carbonated beverages and components thereof so
resembles the registered service mark MIX IT UP!, Reg. No. 3,658,101 (the Cited Mark), in
the name of Brien James Cook (Registrant) for the rental of machines and apparatus for
making both alcoholic and nonalcoholic iced fruit beverages, for use at special events from
house parties to galas and the like as to be likely to cause confusion, to cause mistake, or to
1618428.l
deceive. As explained herein, Applicant respectfully disagrees that the marks could create a
likelihood of confusion.
The Examiner cited the familiar case of In re El. DuPont de Nemours & Co., 476 F.2d 1357
(C.C.P.A. 1973) as support for the determination of an alleged likelihood of confusion between the
marks. The DuPont case provides factors for determining when a likelihood of confusion between
marks might be present (the DuPont factors). The Examiner alleges there is a likelihood of
confusion between Applicants Mark and the Cited Mark claiming that the marks are very similar
in sound, appearance, and meaning and that the goods and services covered by the marks are
related.
Using the DuPont factors as a guide, however, Applicant respectfully submits that the Cited
Mark and Applicants Mark can peacefully coexist without causing con?ision. As described in
greater detail below, this is based, in part, in that the marks create separate and distinct commercial
impressions and the goods and services provided under the marks are non-competitive and unrelated
and consumers would not expect that the goods and services would emanate ?om the same
producer. Accordingly, Applicant respectfully requests that the Examiner reconsider and withdraw
the refusal to register Applicants Mark.
A. APPLICANTS MARK IS SUFFICIENTLY DISSIMILAR IN
APPEARANCE, SOUND, CONNOTATION AND COMMERCIAL
IMPRESSION TO THE CITED MARK TO AVOID ANY PLAUSIBLE
LIKELIHOOD 0F CONFUSION.
In testing for likelihood of confusion, the similarity or dissimilarity of the marks with
regard to appearance, sound, connotation and commercial impression are critical considerations.
In re DuPont, 476 F.2d at 1361. However, similarity of the marks in only one respect does not
necessarily mandate a ?nding of likelihood of con?ision. In re Lamson Oil Co., 6 U.S.P.Q.2d
1041, 1043 (T.T.A.B. 1987). In order to determine the likelihood of confusion between two
marks, the marks must be compared in their entireties and they must be considered in connection
with the particular goods or services for which they are used. In re Natl Data Corp, 753 F.2d
1056, 1058 (Fed. Cir. 1985). It follows from that principle that likelihood of con?ision cannot be
predicated on dissection of a mark or on only part of a mark. I_d. Moreover, the marks should
not be viewed in isolation, outside the context or setting in which that are used or encountered by
consumers. Nabisco v. Warner-Lambert, 55 U.S.P.Q.2d 1051 (2d Cir. 2001) ([I]n determining
Whether two marks are confusingly similar, we must appraise the overall impression created by .
. . the context in which they are found and consider the totality of factors that could cause
confusion among prospective purchasers) (citation and quotation marks omitted).
The marks at issue contain important distinctions and when viewing the mark in their
entirety. The marks have different connotations and the overall commercial impression of
Applicants Mark and the Cited Mark are markedly different. Applicants MIX EM UP mark is
used in connection with the sale of a machine that injects ?avor into a frozen carbonated
beverage. Applicants Mark, when used in connection with the goods, suggests to consumers
that the machine mixes components together. Here, the product mixes a ?avor component with a
frozen carbonated beverage.
In contrast, the impression created by the Registrants service mark, MIX IT UPI, in
connection with the rental of machines for making both iced fruit drinks for use at special events
is dramatically different. Registrants mark suggests to consumers people intermingling and
mixing it up at a party. This is highlighted by the exclamation mark at the end of the Cited
Mark. Indeed, this is supported by Registrants services description. Registrants services do
not involve any kind of machine capable of mixing two components together. Rather, they
involve the rental of a machine to be used at parties. Thus, Registrants mark gives consumers
the impression that Registrants services directed towards helping consumers have fun at parties
and other social gatherings as opposed to Applicants Mark which implies a device for mixing
ingredients.
In many cases, courts have found no likelihood of confusion even where an applicants
mark is nearly identical to a registered mark for related goods. See, e.g., Astra Pharm. Prod. Inc.
V. Beckman Instruments 1110., 718 F.2d 1201, 1209 (1st Cir. 1983) (af?rming the grant of
summary judgment on the ground that there was no likelihood of confusion between the mark
ASTRA used in conjunction with defendants blood analyzer machine and plaintiffs local
anesthetic preparation); Vitarroz Corp. V. Borden, Inc, 644 F.2d 960 (2d Cir. 1981) (denying
injunctive relief after ?nding a low likelihood of confusion between BRAVOS for crackers and
BRAVOS for corn chips); Champagne Louis Roederer, S.A. v. Delicate Vineyards, 148 F.3d
1373 (Fed. Cir. 1998) (upholding dismissal of opposition by owner of CRISTAL for champagne
to CRYSTAL CREEK for wine solely due to differences between the marks). Here, while the
marks contain similar elements, the differences in the marks when combined with the signi?cant
differences in the commercial impressions created by the marks are enough to obviate any
potential likelihood of confusion.
As a result of the foregoing, a comparison of the marks in their entireties and the marks
respective commercial impressions does not support a conclusion that there is a likelihood of
confusion between the two marks.
B. APPLICANTS GOODS AND REGISTRANTS SERVICES ARE
UNRELATED AND ADDITIONALLY DISTINGUISH THE MARKS.
The Examiner alleged that the parties provide related or similar good and services.
Presumably, this was based upon the fact that the marks both involve machines that dispense
beverages. However, this alone is not suf?cient to demonstrate that the respective goods and
services are related. Reconsideration of the respective goods and services demonstrates that the
Applicants Mark and the Cited Mark provide unrelated goods and services as Applicants goods
and Registrants services are Wholly distinct.
The issue of relatedness is not one of semantics but of consumer expectations. That fact
that the services at issue may be offered in the same ?eld or industry does not itself provide
a basis for regarding them as related. W, Lang v. Retirement Living Publishing Co., Inc,
949 F.2d 576, 582 (2d Cir. 1991) (Where plaintiffs magazine catered to the interests of older
adults and defendants publishing house marketed its book and tapes to all people who seek
speci?cally to enhance their charisma, the court found that the products neither compete nor
serve the same purpose. Although both [defendants] publishing house and [plaintiff 3]
magazine are in the ?eld of publishing, this does not render them proximate); McGraw-Hill
Inc. v. Comstock Partners Inc., 743 F. Supp. 1029 , 1034 (S.D.N.Y. 1990) (while [the parties]
furnish products related to the broad ?eld of ?nance, [they] are as completely unrelated as night
and day); Electronic Data Systems Corp. v. EDSA Micro Corp, 23 U.S.P.Q.2d 1460, 1463
(T.T.A.B. 1992) (N0 likelihood of confusion for goods marketed under the similar marks EDS
and EDSA for computer programs for electrical distribution system analysis and design and
computer programming services including the design, implementation and management of
electronic data processing program respectively. [T]he issue of whether or not two products are
related does not revolve around the question of whether a term can be used that describes them
both, or Whether both can be classi?ed under the same general category); Heartsprings, Inc. v.
Heartspring, Inc., 143 F.3d 550, 558 (10th Cir. 1998) (Beyond . . . the fact the parties conduct
business within the very broad category of products for children, there is little overlap between
the parties products, services or marketing strategies).
Here, despite the Examiners allegation, the services offered under the Cited Mark and
goods offered under Applicants Mark are different. Applicants goods are a machine which is
capable of mixing ingredients to form a drink. Applicants machine is highly specialized and
only provides one type of drinka frozen carbonated beverage which may be injected with
?avor. The Cited Mark on the contrary, provides nothing at all similar to this highly specialized
machine. The services provided under the Cited Mark are rental services.
The above, when combined with the different commercial connotations of the marks,
precludes and possible confusion between the marks. Accordingly, this factor supports
registration of Applicants Mark.
C. THE REMAINING DUPONT FACTORS DO NOT SUPPORT A FINDING
OF LIKELIHOOD OF CONFUSION.
Finally, the remaining DuPont factors con?rm that there is no likelihood of confusion
between the marks. Indeed, Applicant has no logical intent or motive to have Applicants Mark
confused with the Cited Mark and there is no evidence that the Cited Mark is particularly strong or
that the Cited Mark is famous.
III. CONCLUSION
For the reasons provided herein, the Applicant respectfully requests that the USPTO
approve its application to register the mark MIX EM UP and amended identi?cation of goods and
permit the Applicants Mark to be published for opposition. In the event that the USPTO has any
further questions or concerns regarding the Applicants Mark or the subject matter addressed herein,
the Applicant requests that the PTO contact its attorney, Kirk A. Damman (314/444-7783) rather
than to issue a ?nal rejection.
Respectfully submitted,
LEWIS, RICE & EEHGERSH, L.C.
Kirk A. Damman
600 Washington, Suite 2500
St. Louis, Missouri 63101
Telephone: 3 14/4447783
Facsimile: 314/612-7783
kdamman lewisn’ce.com
Attorneysfor Applicant