IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

APPLICANT: OVERSTOCK.COM, INC. )
)
MARK: 0.DE )
)
SERIAL NO.: 77/800,072 )
) RESPONSE A
FILED: AUGUST 7, 2009 )
)
TRADEMARK )
ATTORNEY LEIPZIG, MARC J. )
)
LAW OFFICE: 115 )

In response to the communication issued on November 17, 2009, please reconsider the above

captioned application in view of the remarks provided below.

I. RESPONSE TO PRIOR PENDING APPLICATIONS CITED IN OFFICE ACTION

In regard to U.S. Trademark Application Serial Nos. 78/554,262; 78/670,630; 78/670,640;

and 77/642,111 cited in the Office Action, Applicant hereby elects not to submit arguments at this

time.

II. RESPONSE TO REQUIREMENT FOR CLAIM OF OWNERSHIP

Applicant states that it is the owner of U.S. Registration Nos. 3,042,536 and 3,265,584.

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III. RESPONSE TO REQUEST FOR INFORMATION/SIGNIFICANCE INQUIRY

Applicant hereby states that, to its knowledge, the term “0” does not have any meaning or

significance within the industry in which the services/goods are provided. Applicant further states

that, to its knowledge, the term “0” is not a term of art within the Applicant’s industry.

Applicant further states that it intends to register the number zero “0” and not the letter “O.”

IV. RESPONSE TO REFUSAL TO REGISTER BASED ON LIKELIHOOD OF CONFUSION

Pursuant to the most recent Office Action, registration of Applicant’s proposed mark was

refused under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), because of an alleged likelihood

of confusion with the previously registered mark in U.S. Registration No. 3,446,799 (“Registered

Mark”). Applicant respectfully disagrees and requests removal of the rejection based on the new

evidence presented herein that demonstrates that the Registered Mark is a “weak” mark and,

therefore, is entitled to only a very limited scope of protection. In particular, the Applicant submits

that proper application of the first and sixth factors established in In re E.I. Du Pont de Nemours &

Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973), establishes that there is no likelihood of confusion between

the Applicant’s proposed mark and the Registered Mark. (Because of the bearing of the sixth

DuPont factor on the application of the first DuPont factor, the Applicant will address the sixth

DuPont factor first, and then the first DuPont factor, below.)

A. Analysis under the Sixth DuPont Factor

Under the sixth Du Pont factor, “[e]vidence of third-party use of similar marks on similar

goods is relevant to show that a [registered] mark is relatively weak and entitled to only a narrow

scope of protection.” Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,

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73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see also First Savings Bank F.S.B. v. First Bank System,

Inc, 40 USPQ2d 1865 (10th Cir. 1996) (recognizing “the well-established principle that extensive

third-party use of the disputed term indicates that the term itself deserves only weak protection”).

The narrow scope of protection afforded for a weak mark is premised on the fact that because

customers become so conditioned to the plethora of such similar marks in the marketplace that the

customers are educated in distinguishing between different such marks on the basis of minute

distinctions. Palm Bay Imports, 73 USPQ2d at 1694.

In the present case, the Registered Mark is a “weak” mark due to the widespread use of the

letter “O” in the marketplace for identical and similar goods. As evidence of the weak nature of the

Registered Mark, attached hereto as Exhibit A is evidence in the form of copies of multiple U.S.

trademark registrations, 34 in all, that incorporate the letter “O” in conjunction with a stylization or

design. It will be noted that the U.S. trademark registrations identified in Exhibit A have similar or

related goods to that of the Registered Mark. Clearly, the registration of so many marks with similar

or related goods that utilize the letter “O” demonstrates that the Trademark Office has already

determined that the letter “O” itself is a weak mark to begin with and that no single registered

trademark having a stylized letter “O” may prevent a subsequent applicant from registering a mark

using the letter “O” on that basis alone. Thus, the scope of the trademark rights afforded each of the

identified registrations in Exhibit A and the cited Registered Mark is unquestionably limited to its

individual stylization and design and not in the use of the letter “O” itself.

It is further important to note that the Trademark Office has previously approved the

registration of different stylized versions of the letter “O” for the same or similar goods that have

only very minor differences between them. For example, a comparison of U.S. Registration Nos.

2,859,374 and 2,322,643, shown side-by-side in Exhibit B, demonstrates that the Trademark Office

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has deemed that even minor variations in the use of the letter “O” are in fact registrable on the

Principal Register. In particular, from a visual comparison of U.S. Registration Nos. 2,859,374 and

2,322,643 shown in Exhibit B it is clear that the Trademark Office has conceded that even a minor

variation in the appearance of the letter “O” will negate any confusion of similarity between two

different “O” based marks.

As further proof of the weak nature of the Registered Mark, attached hereto as Exhibits C-L

is additional evidence showing extensive and widespread third-party use of letter “O” based marks

on goods identical or related to the goods of the Registered Mark in the marketplace. In particular,

the evidence in Exhibits C-L consists of multiple online webpages featuring advertisements for

actual articles of clothing that bear different stylized letter “O” marks. Each exhibit in Exhibits C-L

represents a different third-party website offering articles of clothing that bear different stylized letter

“O” marks, including large universities and major corporations, such as Oakley, Inc. (“Oakley”).

The evidence in Exhibits C-L strongly demonstrates that the use of stylized letter “O” marks is

widespread in the marketplace and that the relevant consumers have become so conditioned by the

plethora of such marks that they have been educated to distinguish between such different marks

based on minute distinctions. For example, Exhibit C is a printout of various webpages from the

website for Oakley, www.oakley.com. As will be noted, the Oakely website features various articles

of clothing that bear a stylized “O” mark. Further, in the top left hand corner of the webpage, there

is prominently displayed a stylized “O” mark. The other printouts in Exhibits D-L also feature

similar items. Thus, it is proper to conclude that stylized “O” marks for articles of clothing and for

retail and wholesale store services are in widespread use in the marketplace.

Therefore, based on the Applicant’s market evidence regarding the widespread use of stylized

letter “O” marks by third-parties, it is clear that the Registered Mark is weak and, therefore, it is

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entitled to only a very narrow scope of protection. That is, consumers will be able to distinguish

between Applicant’s proposed mark and the Registered Mark because they are already accustomed

to distinguishing between stylized letter “O” marks in the marketplace as demonstrated by the strong

evidence presented herein. In fact, Applicant respectfully submits that the differences between its

proposed mark and the Registered Mark are more significant in nature than some of the marks that

the consumers are already distinguishing in the marketplace. For this reason, Applicant submits that

there is no likelihood of confusion between its proposed mark and the Registered Mark.

B. Analysis under the First DuPont Factor

Generally, the first DuPont factor requires examination of “the similarity or dissimilarity of

the marks in their entireties as to appearance, sound, connotation and commercial impression.”

DuPont, 476 F.2d at 1361. However, widespread use of similar marks in the same field results in

the trademark rights of each of the marks being limited to “substantially the identical mark as set

forth in its registration.” Puma-Sportschuhfabriken Rudolf Dassler K.G. v. Superga S.p.A., 210

USPQ 316, 317 (T.T.A.B. 1980) (finding that a registered mark for stripes on a sport shoe was

limited to its identical design due to the widespread use of stripes on sport shoes). Further,

trademark rights in the stylized appearance of text are distinct from the trademark rights in the

underlying text itself. Time, Inc. v. Petersen Pub. Co., 50 USPQ2d 1474 (2d. Cir. 1999). In

particular, if the underlying text of a stylized mark is itself a weak mark, then a display of the same

text with minor variations from the stylized mark will avoid a likelihood of confusion. First Sav.

Bank, F.S.B. v. First Bank System, 40 USPQ2d 1865 (10th Cir. 1996) (“When the primary term is

weakly protected to begin with, minor alterations may effectively negate any confusing similarity

between the two marks.”).

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As established above in regard to the sixth DuPont factor, the underlying letter “O” text in

the Registered Mark is “weak” due to the widespread use of the letter “O” in the marketplace for

identical and similar goods. Therefore, the protective scope of the appearance of the Registered

Mark must be limited to its identical stylized design. As will be shown below, Applicant’s proposed

mark and the Registered mark are not identical, and, therefore, there can be no likelihood of

confusion.

As an initial matter, the newly presented evidence in the attached exhibits demonstrates that

the Trademark Office erred in finding that the letter “O” was the dominant portion of the Registered

Mark. In particular, the widespread use of the letter “O” for articles of clothing in the marketplace

strongly militates against a finding that the dominant portion of the Registered Mark is the letter “O”

as suggested in the Office Action. In fact, the Trademark Office has already determined by allowing

the Registered Mark and those additional registrations identified by the Applicant in Exhibit A that

no single registration has the exclusive rights to the use of the letter “O.” Therefore, the letter “O”

itself cannot be perceived by consumers as “dominant” in distinguishing the source of goods.

Contrary to being “dominant,” the use of the letter “O” for a mark is weak, or “diluted,” due to its

widespread use in the marketplace.

Next, Applicant’s proposed mark and the Registered Mark are not identical, or even close

thereto. The Registered Mark consists of a stylized “O” encased in a square background.

Applicant’s proposed mark, 0.DE, consists of the number “0” (i.e., the number zero) followed by

“.DE”. Clearly, there are several major differences between the Registered Mark and Applicant’s

proposed mark such that they are not identical. First, Applicant’s proposed mark does not include

the letter “O” as it instead uses the number “0”. Second, Applicant’s proposed mark does not

include a square background. In fact, Applicant’s proposed mark has no background design

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whatsoever.

Finally, Applicant’s proposed mark includes the term “.DE” which is not found in the

Registered Mark. While the Office Action states that the term “.DE”, as a top level domain, provides

“no meaningful source-identifying significance,” Applicant respectfully disagrees due to the weak

nature of the Registered Mark. As an initial matter, Applicant submits that it is improper to dissect

its proposed mark, and that its mark must be considered as a whole. Further, although directed to

the concept of descriptiveness, T.M.E.P. § 1215.04 states that a top level domain name (TLD) can

have trademark significance, as follows (some citations omitted and emphasis added):

The TLD will be perceived as part of an Internet address, and typically does not add
source identifying significance to the composite mark. . . .

However, there is no bright-line, per se rule that the addition of a TLD to an
otherwise descriptive mark will never under any circumstances operate to create a
registrable mark. The Federal Circuit has cautioned that in rare, exceptional
circumstances, a term that is not distinctive by itself may acquire some additional
meaning from the addition of a TLD such as “.com” or “.net.” In re
Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)
(STEELBUILDING.COM highly descriptive, but not generic, for “computerized
on-line retail services in the field of pre-engineered metal buildings and roofing
systems”), citing In re Oppedahl & Larson, 373 F.3d at 1175-1176, 71 USPQ2d at
1373.

Thus, when examining domain name marks, it is important to evaluate the
commercial impression of the mark as a whole to determine whether the composite
mark conveys any distinctive source-identifying impression apart from its individual
components. The examining attorney should introduce evidence as to the
significance of the individual components, including the TLD, but must also consider
the significance of the composite term (e.g., “Sportsbetting” in the mark
SPORTSBETTING.COM), to determine whether the addition of a TLD has resulted
in a mark that conveys a source-identifying impression.

A similar conclusion is reached in the context of generic terms. See T.M.E.P. § 1215.05. More

pointedly, T.M.E.P. § 1215.09 states (emphasis added): “When analyzing whether a domain name

mark is likely to cause confusion with another pending or registered mark, the examining attorney

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must consider the marks as a whole, but generally should accord little weight to the TLD portion of

the mark.” Therefore, the T.M.E.P. states in multiple contexts that top level domain name portions

of marks can have trademark significance. Applicant respectfully submits that the TLD has

trademark significance in this application due to the weak nature of the Registered Mark. While the

conclusion stated in the Office Action may conform to the general rule in a traditional likelihood of

confusion analysis, it is not the case when the similar elements between a cited registered mark and

the proposed mark are weak. In particular, T.M.E.P. § 1207.01(b)(iii) states that an exception to this

general rule may arise if “the matter common to the marks is not likely to be perceived by purchasers

as distinguishing source because it is . . . diluted.” Thus, when this exception applies, as it does in

this case, the addition of a peripheral term, even if arguably descriptive or generic, to the common

element of a registered mark will serve to avoid a likelihood of confusion. See, e.g., In Re Hamilton

Bank, 222 USPQ 174 (TTAB) (Stylized “KEY” mark for banking services was deemed registrable

where over twenty registered marks for banking services used term “KEY” as well).

Based on the above, it is clear that the appearance of the Applicant’s proposed mark is not

identical to the Registered Mark as the use the number “0″ instead of the letter “O” as well as the

addition of the term “.DE” is at least a minor variation sufficient to allow registration under a weak

mark analysis. Further, Applicant’s mark lacks the square background, which is likely the dominant

portion of the Registered Mark given the weakness of the letter “O” text in the mark. Therefore,

Applicant submits that its proposed mark is sufficiently varied in appearance from the Registered

Mark to avoid a likelihood of confusion under the required “crowded field” or “weak mark” analysis.

In regard to the similarities in sound between the proposed mark and the Registered Mark,

Applicant submits that the sound of its proposed mark and the Registered Mark are significantly

different. As a principle matter, for the same reasons outlined above, the Trademark Office has

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already determined that no single registration has exclusive rights to the sound of the pronounced

letter “O” as evidenced by the multiple registrations of stylized “O” marks, which all have the same

pronunciation. Thus, the sound of the pronounced letter “O” in the Registered Mark is extremely

weak and is likely not entitled to any protection. (Otherwise, why would the Trademark Office have

allowed so many marks with the same sound?) It follows that due to the weak nature of trademark

protection afforded in the sound of the letter “O” in the Registered Mark that a proposed mark with

even a minor variation in pronunciation will in fact be registrable.

Applicant’s mark is pronounced “zero-dot-d-e” while the Registered Mark is pronounced

simply as “oh.” Further, Applicant’s mark is pronounced as five syllables, while the Registered

Mark is pronounced as a single syllable. In short, the Applicant’s mark does not have the “oh” sound

and includes the additional sounds of “zero” and “dot-d-e.” Thus, Applicant submits that the

differences in sound between its proposed mark and the Registered Mark are of a sufficient character

to avoid a likelihood of confusion. Applicant further submits that the same reasoning above applies

to the connotation and commercial impression of the proposed mark and the Registered Mark. That

is, the connotation and commercial impression of the proposed mark and the Registered Mark are

not identical.

Therefore, in view of the differences between Applicant’s proposed mark and the Registered

Mark with respect to appearance, pronunciation, connotation, and commercial impression, it is

respectfully submitted that there would be no likelihood of confusion. Accordingly, withdrawal of

the refusal to register and allowance of this application for publication is respectfully requested.

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V. CONCLUSION

Applicant’s proposed mark includes at least minor, if not major, variations of sufficient

character so as to be entitled to registration, especially in light of the extremely narrow scope of

protection afforded to the Registered Mark cited in the Office Action. Indeed, the use of the letter

“O” in the Registered Mark is weak due to the widespread use of the letter “O” in the relevant

marketplace. As demonstrated by the extensive evidence submitted by Applicant of actual

conditions in the marketplace, consumers have long been educated to distinguish between the

different stylized uses of the letter “O” on the basis of very minute variations. Thus, the Registered

Mark is simply not strong enough to preclude others from using the letter “O” let alone the number

“0” in combination with a TLD. The addition of Applicant’s proposed mark to the already crowded

marketplace will not, therefore, cause any confusion, especially in light of the significant differences

in appearance and sound between the proposed mark and the Registered Mark. For these reasons,

and the others stated herein, Applicant therefore respectfully requests that the present application be

allowed.

S:CHC FilesT12–T121–T12147Response A.FINAL.T12147.wpd

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