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

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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 Applicant’s 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 Applicant’s 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 Applicant’s Mark.

A. APPLICANT’S 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 Nat’l 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

Applicant’s Mark and the Cited Mark are markedly different. Applicant’s MIX EM UP mark is

used in connection with the sale of a machine that injects ?avor into a frozen carbonated

beverage. Applicant’s 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 Registrant’s 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. Registrant’s 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 Registrant’s services description. Registrant’s 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, Registrant’s mark gives consumers
the impression that Registrant’s services directed towards helping consumers have fun at parties

and other social gatherings as opposed to Applicant’s Mark which implies a device for mixing

ingredients.

In many cases, courts have found no likelihood of confusion even where an applicant’s

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 defendant’s blood analyzer machine and plaintiff’s 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 BRAVO’S 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. APPLICANT’S 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

Applicant’s Mark and the Cited Mark provide unrelated goods and services as Applicant’s goods

and Registrant’s 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 defendant’s 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 [defendant’s] 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 Examiner’s allegation, the services offered under the Cited Mark and

goods offered under Applicant’s Mark are different. Applicant’s goods are a machine which is

capable of mixing ingredients to form a drink. Applicant’s machine is highly specialized and

only provides one type of drink—a 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 Applicant’s 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 Applicant’s 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 Applicant’s Mark to be published for opposition. In the event that the USPTO has any

further questions or concerns regarding the Applicant’s 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 14/444—7783
Facsimile: 314/612-7783
kdamman lewisn’ce.com

Attorneysfor Applicant