IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Application of

Mozilla Foundation

Mark: FIREBUG
Examining Attorney
Serial No.: 77/652,367 Maureen Dall Lott
Law Office 117
Class: 9

Filed: January 20, 2009

RESPONSE TO OFFICE ACTION

In response to the Office Action issued on February 28, 2009 in connection with the

above-captioned application, Mozilla Foundation (the “Applicant”), by and through counsel,

submits the following.

I. CONSUMER CONFUSION IS NOT LIKELY.

The Examining Attorney has cited Registration No. 2,905,789 for the mark FIREBUGY

A TOTAL SOLUTION OF 3C ACCESSORIES & Design (the “Cited Mark”) owned by

Powersync Technology Co., Ltd. (the “Registrant”) as a barrier to the registration of Applicant’s

FIREBUG mark (the “Applicant’s Mark”) on the ground that the concurrent registration of the

Applicant’s Mark and the Cited Mark may lead to consumer confusion as to the source of the

identified goods. As discussed in more detail below, consumer confusion is not likely because

(a) the Applicant’s Mark and the Cited Mark differ in appearance, sound, and connotation and

convey distinct commercial impressions, and (b) the goods at issue are different, travel in

varying channels of trade, and are offered to disparate and knowledgeable consumers who

carefully choose their products. Accordingly, it is unlikely that consumers will be confused as to

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the source of the goods offered by the Applicant and the Registrant under their respective

trademarks.

a) Applicant’s Mark Differs in Appearance, Sound, And Connotation from
the Cited Mark and Creates a Distinct Commercial Impression to
Consumers.

A critical factor in evaluating whether there is a likelihood of confusion as to the source

of the goods offered under Applicant’s Mark and the Cited Mark is the similarity or dissimilarity

of the marks in their entireties. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177

U.S.P.Q. 563, 567 (C.C.P.A. 1973). In addition, when assessing whether there is a likelihood of

confusion in the marketplace, the marks should be considered by viewing each mark as a whole,

rather than dissecting the marks into their component parts. See TMEP §1207.01(b); 4 J.

McCarthy, McCarthy on Trademarks and Unfair Competition § 23.41 (4th ed. 2008) (citing

Estate of P.D. Beckwith, Inc., v. Commissioner of Patents, 252 U.S. 538, 345–46 (1920)). The

Applicant’s Mark differs in appearance, sound, and meaning from the Cited Mark and creates a

distinct commercial impression to consumers.

There are several marked visible disparities between the Cited Mark and the Applicant’s

Mark. First, the Cited Mark consists of a seven-word phrase (“FIREBUGY A TOTAL

SOLUTION OF 3C ACCESSORIES”), while Applicant’s Mark is comprised only of the single

word “FIREBUG”. In addition, the Cited Mark contains distinctive design components and must

be assessed in its entirety – specifically, a winged insect at the center of a circle with the phrase

“A TOTAL SOLUTION OF 3 ACCESSORIES” at the top of the circle, and a banner displaying

“FIREBUGY” beneath the insect (see image below of the Cited Mark).

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Conversely, the Applicant’s Mark lacks any design element at all. As a result, the Cited

Mark’s multiple-word phrase and distinctive design elements visually distinguish it from the

Applicant’s Mark single word mark.

In addition, the Applicant’s Mark differs phonetically from the Cited Mark. The Cited

Mark consists of seven words, none of which is phonetically identical to the Applicant’s single

word mark. In fact, only one of the seven words comprising the Cited Mark sounds remotely

similar to the Applicant’s Mark.

The Examining Attorney noted that the term FIREBUGY is the dominant portion of the

Cited Mark. However, in light of the Cited Mark’s multiple words and distinctive design

components, the one word, FIREBUGY, is not visually or phonetically dominant in the Cited

Mark. Rather, when the Cited Mark is correctly viewed in its entirety (i.e., words plus design),

the FIREBUGY word component is tempered if not overshadowed by the unique design

elements and the six other words that comprise the Cited mark. As a result, the visual and

phonetic disparities between the marks at issue also become more marked, and the likelihood of

consumer confusion as to the goods offered under the marks is reduced. See TMEP

1207.01(c)(ii) (noting that “[t]here is no general rule as to whether letters or designs will

dominate in composite marks; nor is the dominance of letters or design dispositive of the issue”

(citing In re Electrolyte Laboratories Inc., 929 F.2d 645, 647, 16 U.S.P.Q.2d 1239, 1240 (Fed.

Cir. 1990)). See also Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1358, 56

U.S.P.Q.2d 1351, 1354 (Fed. Cir. 2000) (finding error when the Board “only considered the

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similar commercial impression of part of the marks—the shared word PACKARD—before

concluding that the marks were similar…,” and holding “[t]he ultimate conclusion of similarity

or dissimilarity of the marks must rest on consideration of the marks in their entirety”).

Applicant’s Mark and the Cited Mark also communicate different meanings to

consumers. The meaning or connotation of a mark must be determined in relation to the goods

offered under the mark. See TMEP § 1207.01(b)(v) (citation omitted). The “Y” at the end of the

“FIREBUGY” component of the Cited Mark arguably renders the term meaningless. Even if

considered suggestive, however, the Cited Mark brings to mind an insect that lights up,

evidenced by the image of the winged insect depicted in the design element of the Cited Mark.

In addition, unlike Applicant’s Mark, the Cited Mark plainly refers to a certain type of

accessories, demonstrated by the phrase: “A TOTAL SOLUTION OF 3C ACCESSORIES”

(italics added). Regardless of whether Applicant’s Mark incidentally conjures up images of

insects, when properly examined in relation to the goods offered under the mark, Applicant’s

Mark also refers to an entirely different type of bug — a technology-based “bug” that corrupts

computers’ functionality. Indeed, Applicant’s Mark will be used in connection with computer

software that can be used to get rid of these specific “bugs.”

Significantly, Applicant already owns an arguably famous U.S. registration for the

FIREFOX mark in connection with computer programs and network access services. See United

States Trademark Registration Number 2,974,321. Thus, Applicant’s Mark also communicates

to consumers that the products sold under the FIREBUG mark (italics added) originate from the

same source or company as the products sold under the FIREFOX mark (italics added), further

supporting the position that the Applicant’s Mark connotes a technology-based “bug” that infects

computer software to consumers.

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When viewed as a whole, stark differences distinguish Applicant’s Mark from the Cited

Mark. Given the differences in visual appearance, sound, and meaning of the marks at issue, the

overall commercial impression of the Applicant’s mark is distinct from that of the Cited Mark,

and the concurrent registration of the trademarks at issue will not lead to consumer confusion.

(b) The Goods At Issue are Different And Are Sold in Varying Channels of
Trade to Disparate and Sophisticated Consumers.

Another key factor to consider in the likelihood of confusion analysis is the relatedness of

the goods or services offered under the marks at issue, the channels of trade in which the goods

travel, and the consumers that encounter the marks. In re E.I. du Pont de Nemours & Co., 476

F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). There are significant disparities

between the goods offered under Applicant’s Mark and the Cited Mark, the trade channels in

which the goods travel, and the consumers encountering the marks at issue.

Applicant’s Mark will be used in connection with a very specific type of “computer

software, namely, a web development tool that allows users to edit, debug, and monitor web

pages” (“Applicant’s Goods”). In contrast, the Cited Mark is used in connection with a wide

variety of technological products (“Registrants’ Goods”). See Class 9 Identification of Goods in

United States Registration No. 2,905,789.1 Unlike the often expensive goods sold under the

Cited Mark, the software offered under the Applicant’s Mark also will be “open source,”

1
Specifically, Registration No. 2,905,789 covers the following goods in Class 9: “computer peripherals equipment,
namely, computers, computer keyboards, uninterrupted power supply device, interface cards, computer mainframe,
microcomputers, computer mouse, network working equipment for computer, light pen, computer dust-proof covers,
disc cases, portable computer bag, blank CD mouse pad for computer, keyboard hand-pad, computer interface cards
network card, floating-point operation chips, printer control card, plotter control card, video card, computer
hardware, computer software, loudspeakers, video dividing devices, video amplifiers devices, computer selector;
electronic instruments and apparatus, namely, condensers, relays, distributors, electronic connectors, circuit
breakers, AC/DC current transformers, collector electrode, thermostats, television video enhance devices, audio
speakers, amplifiers, battery, alkali battery, extension lines, power lines, telephone lines, data transmission lines,
video signal lines, parallel cable wires, cables, antennas, distributors, plugs, terminals, transformers, voltage
regulator, rectifiers, power stabilizers, power supply device, uninterrupted power supply device, chargers, electrical
timing devices for use in controlling electrical power, ozonizer, namely, ozone generating or deodorizing apparatus
for industrial and household use, electrical power saving device, triple-function electronic meters, power stabilizers,
power frequency changers, power supply and equipment for video, namely, video cameras and video recorders.”

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meaning that anyone can download use the software without cost. The very narrow type of

computer software associated with the Applicant’s Mark differs considerably from the vast array

of technological products, and primarily hardware, associated with the Cited mark. See Class 9

Identification of Goods in United States Registration No. 2,905,789 for confirmation that most of

the Registrant’s Goods appear to be hardware. The unique and targeted nature of Applicant’s

“open source” goods (i.e. no associated costs or expenses) thus distinguishes Applicant’s Goods

from Registrant’s Goods in the mind of the consumer.

In addition, the trade channels and consumers of the goods at issue are fundamentally

different. Applicant’s Goods are only accessible via Internet download, while the technological

goods bearing the Cited Mark are not downloadable at all; rather, Registrant’s Goods are

presumably available in retail stores and/or through direct sales. See

http://www.powersync.com.tw/com/index.html (showing the types goods offered under the Cited

Mark, which are generally sold in retail stores and none of which are downloadable). As such,

the consumers looking to download Applicant’s “open source” goods to remedy computer

problems will not be the same consumers that are visiting stores to pay money to purchase

Registrant’s Goods. Moreover, since Applicant is arguably one of the few distributors of high

quality “open source” computer software under the FIREFOX mark (italics added), consumers of

Applicant’s Goods will be keenly aware of the particular company that is offering the “open

source” goods distributed under Applicant’s FIREBUG mark (italics added). Accordingly, the

goods offered under Applicant’s Mark and the Cited Mark are not “so related that the

circumstances surrounding their marketing are such that [the marks at issue] are likely to be

encountered by the same persons under circumstances that would give rise to the mistaken belief

that they originate from the same source.” TMEP § 1207.01(a)(i).

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Even if the same consumers do happen to encounter both Applicant’s Mark and the Cited

Mark, the consumers of the goods at issue are sophisticated and exercise care in choosing their

products, which further reduces any likelihood of confusion as to the source of the products they

choose. Consumers of the range of technological goods sold under the Cited Mark will be

knowledgeable about the products for which they are paying often-high prices, because each of

these products serves a very particular technology-based purpose, whether it be speakers, a video

camera, or extension line. Likewise, consumers interested in specialized computer products such

as Applicant’s Goods understand how computers work and have a need for a particular type of

computer software. The consumers who will choose to use Applicant’s Goods will also be

especially discriminating as to the source of the goods due to the narrow function of the

Applicant’s particular goods. Consequently, the computer software offered under the

Applicant’s Mark will be encountered by consumers (a) who are experienced in the field of

computers and able to recognize certain types of computer issues (e.g., computer “bugs”,

corruption of computer programs, website editing issues), and (b) must therefore exercise a

heightened degree of care in choosing a product to treat the particular type of computer

problem(s). As such, the knowledgeable consumers who encounter the marks at issue take great

care in choosing their products and therefore, even if they happen to encounter both Applicant’s

Mark and the Cited Mark, the consumers will not be misled regarding the source of the goods at

issue.

(c) Extrinsic Evidence Further Demonstrates the Dissimilarity Between the
Goods Offered Under the Marks at Issue.

According to the TMEP, “[w]here the terminology in the identification is unclear, the

Trademark Trial and Appeal Board has permitted an applicant to provide extrinsic evidence to

show that the registrant’s identification has a specific meaning to members of the trade. The

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Board noted that in light of such evidence it is improper to consider the identification in a

vacuum and attach all possible interpretations to it.” TMEP § 1207.01(a)(iii) (citing In re

Trackmobile Inc., 15 U.S.P.Q.2d 1152, 1154 (T.T.A.B. 1990)). According to the identification

of goods in the Cited Mark’s registration, the goods associated with the Cited Mark fall under the

general umbrella of “computer peripherals equipment;” the identification then lists a wide range

of goods that appears to extend well beyond “computer peripherals,” which makes the

identification unclear (as noted by the Examining Attorney). See United States Trademark

Registration No. 2,905,789.

In light of TMEP § 1207.01(a)(iii) and based on extrinsic evidence, “computer

peripherals” does have a specific meaning when used in conjunction with “equipment” and

refers to goods that are “peripheral” or “supplementary” to computers. See “peripheral,”

Merriam-Webster Online Dictionary, available at http://www.merriam-

webster.com/dictionary/peripheral. Indeed, Registrant’s own website lists a variety of goods

which can accurately be described as “supplementary” to computers (e.g. UPS, power protector,

computer device cable, switch, headphones, speakers, communication accessories, or other

consumer electronics). See http://www.powersync.com.tw/com/index.html. Moreover, an

investigation into the Registrant’s use of the Cited Mark further supports the position that the

Cited Mark is being used in connection with goods that are “supplementary” to computers, rather

than any type of computer software. See Exhibit A.

Given this extrinsic evidence, it appears that the identification of goods in the registration

for the Cited Mark accurately cites that the Cited Mark is used in connection with “computer

peripherals equipment” – goods that are supplementary or accessories to computers, rather than

computer programs or software. Thus, although “computer software” is listed as a type of

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“computer peripherals equipment” in the identification, extrinsic evidence reveals that the Cited

Mark is not used in connection with computer software but rather accessories for computers,

confirming that the goods offered under the marks at issue are unrelated.

II. RESPONSE TO REQUEST FOR ADDITIONAL INFORMATION.

The Examining Attorney has requested that Applicant specify whether the wording

“FIREBUG” or “FIRE BUG” has any significance in the computer industry or as applied to the

goods described in the application. Applicant is not aware that the term “FIREBUG” or “FIRE

BUG” has any significance in the computer industry, and the only significance of the term

“FIREBUG” as applied to Applicant’s Goods has been described above in the discussion of the

connotation of Applicant’s Mark.

III. CONCLUSION

Applicant has addressed the issues raised by the Examining Attorney in the Office Action

dated February 28, 2009. Based on the foregoing, Applicant respectfully requests that the

Examining Attorney’s Section 2(d) refusal be withdrawn, and that the Application be allowed to

proceed to publication.

Respectfully submitted,

COOLEY GODWARD KRONISH LLP

Date: August 28, 2009 By: /Catherine A. Cayce/____

Peter J. Willsey, Esq.
Nishan Kottahachchi, Esq.
Catherine A. Cayce, Esq.
COOLEY GODWARD KRONISH LLP
777 6th Street, NW
Washington, DC 20001
Telephone: (202) 842-7800
Facsimile: (202) 842-7899
Email: [email protected]

Counsel for Mozilla Foundation

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