IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re: Trademark Application of ) Examining Attorney:
)
Sapphire Energy, Inc. ) Ms. Julie M. Guttadauro
)
Serial No.: 77/711469 ) Law Office 106
)
Filed: April 10, 2009 ) Amendment and Response
)
Mark: SAPPHIRE ENERGY & DESIGN )
)
Classes: 4, 16 & 40 )
)
Revised Classes: 4, 40, & 42

AMENDMENT AND RESPONSE TO OFFICE ACTION

TO THE COMMISSIONER OF PATENTS AND TRADEMARKS:

This communication responds to the Office Action dated June 27, 2009.

I. EXAMINER’S COMMUNICATION: The Examiner has initially refused to register

this multiple class application because the Applicant’s mark, when used on or in connection with

the identified goods and services, so resembles the mark in U.S. Registration No. 0766218 (the

“Cited Mark”) owned by Chevron Intellectual Property, LLC (the “Registrant”) as to be likely to

cause confusion, to cause mistake, or to deceive. Applicant respectfully requests reconsideration

of such refusal, in view of the following amendments and remarks:

II. AMENDMENTS.

Pursuant to the Examiner’s observations, the Applicant hereby amends the application as
follows:

1. The description of the goods in Class 4 is amended in its entirety to read as

follows: “`Alternative fuels, namely biofuels, bioenergy fuels and energy fuels derived from

photosynthetic microorganisms, namely fossil fuel substitutes,” in International Class 4.

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2. The goods described in Class 16 are deleted form the Application in their entirety.

3. The description of the services in Class 40 is amended in its entirety to read as

follows: “Production, treatment and refinement for others of alternative fuels, namely, biofuels,

bioenergy fuels and energy fuels derived from photosynthetic microorganisms, namely, fossil

fuel substitutes,” in International Class 40.

4. A new class of services (covering services previously categorized in Class 40) is

added to read as follows: “Scientific and research consultation in the field of alternative fuels,

namely biofuels, bioenergy fuels and energy fuels derived from photosynthetic microorganisms,

namely fossil fuel substitutes,” in International Class 42.

5. The Applicant believes that no additional fee is required by virtue of the

recharacterization of services described in Paragraphs 3 and 4 above, and the deletion of the

goods described in Paragraph 2 above, since the number of classes that are the subject of the

Application as originally submitted (three) has remained the same.

6. The mark consists of a faceted square having a diagonal perpendicular to the

horizontal in shades of light blue, blue and white to the left of the stylized word “Sapphire” in

black with the stylized word “Energy” underneath in the color gray: The colors light blue, blue,

white, black and gray are claimed as a feature of the mark.

7. Please insert the following disclaimer:

“No claim is made to the exclusive right to use “Energy” apart from the mark as shown.”

III. RESPONSE TO SECTION 2(d) REFUSAL: In addition to the aforementioned

amendments, the Applicant submits the following remarks in support of reconsideration of the

2(d) refusal:

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A. Introduction.

Applicant contends that there is no likelihood of confusion between Applicant’s mark, as

amended hereby, and the Cited Mark. The Court of Customs and Patent Appeals decision in In

re E.I. du Pont de Nemours and Co., 177 USPQ 563 (C.C.P.A. 1973), lists the factors to be

considered when determining likelihood of confusion. Analysis of the relevant du Pont factors

shows that there is no likelihood of confusion between Applicant’s alternative fuels, biofuels,

bioenergy fuels and energy fuels derived from photosynthetic microorganisms; the production,

treatment and refinement thereof; and scientific and research consideration in connection

therewith, on the one hand, and Registrant’s lubricating oil.

B. Different Marks.

First, Applicant submits that Applicant’s mark and the Cited Mark are readily

distinguishable in their entireties in sight, sound and commercial impression.

The Applicant’s mark is a multicolor design mark comprised of two components, namely

the words “SAPPHIRE ENERGY” in stylized writing and a distinctive square adjacent to the

words of the mark. On the other hand, the Cited Mark is merely a word mark consisting of the

word “SAPHIRE” without any stylization or design.

APPLICANT’S MARK: CITED MARK:

SAPHIRE

We contend that the Applicant’s composite mark creates a different commercial

impression and sound than the Cited Mark. Under the anti-dissection rule, a mark is tested for its

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distinctiveness by looking at it as a whole, rather than dissecting it into its component parts. 2 J.

McCarthy, Trademarks and Unfair Competition, § 11:27 at 49 (1997). The United States

Supreme Court has stated: “The commercial impression of a trademark is derived from it as a

whole, not from its elements separated and considered in detail. For this reason it should be

considered in its entirety.” Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538,

545-46, 64 L.Ed. 705, 40 S.Ct. 414 (1920).

The overall impression of Applicant’s mark, consisting of multicolors, stylized words and

a fanciful design, is clearly different than that of the Cited Mark, and it is the impression of a

mark as a whole, and not the divisible parts in isolation, that control. Clairol, Inc. v Roux

Laboratories, Inc., 169 USPQ 589 (C.C.P.A. 1971); 2 J. McCarthy, Trademarks and Unfair

Competition § 23:15 at 80 (1984). The visual and phonetic distinctions between the marks as a

whole are readily apparent.

We concede that the marks share the word “sapphire”, even though the spelling is not

identical. As the Eighth Circuit Court of Appeals has ruled, however, “The use of identical

dominant words does not automatically mean that two marks are similar.” Luigino’s, Inc. v.

Stouffer Corporation,”170 F. 3d 827, 830 (8th Cir. 1999), citing General Mills, Inc. v. Kellogg

Co., 824 F. 2d 622, 627 (8th Cir. 1987) (determining that Oatmeal Apple Crisp and Apple Raisin

Crisp are not confusingly similar). In Luigino’s, the Court found that the marks “Lean Cuisine”

and “Lean ‘N Tasty” were not confusingly similar, notwithstanding the shared dominant term

“lean”, based in part on evidence that diet-conscious consumers are “a special class of purchasers

who may be expected, at least, to examine the front of the packages in order to determine what

kind of entrée is contained therein and its caloric content.” Id. 831.

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Similarly, the Trademark Trial and Appeal Board has overturned refusals to register other

marks that have minor spelling changes or punctuation issues, such as EXTEND for medical

apparatus and X-TEND for carpal tunnel supports, elbow supports, thumb/wrist supports and

back braces (In re Wright Medical Technology, Inc., 1998 TTAB Lexis 392); RESI-LINK for

power, voice, data management, security and audio network products and RESLINK for

telephone communication and cable television transmission services (In re Novus Technologies,

Inc., 2004 TTAB Lexis 315); and MARK for electrical conduits and MARK 75 for circuit

breakers (Clayton Mark & Co. v. Westinghouse Electric Corp., 356 F.2d 943 (C.C.P.A. 1966)).

Based on the foregoing and the differences in the commercial impression, sight and sound

of Applicant’s composite mark and the Cited Mark, we contend that there is no likelihood of

confusion between the marks.

C. Different Goods/Services.

In addition to the disparities between the marks, Applicant is engaged in the development

of alternative, renewable, green energy sources and biofuels that are vastly different from the

lubricating oils marketed under the Cited Mark. The Applicant respectfully submits that its

development of renewable energy sources constitutes an entirely new industrial category. The

United Sates Department of Energy appears to agree. In a December 4, 2009 press release

announcing the award of more than $500 million in federal funding to nineteen (19) biorefinery

projects, including $50 million to the Applicant, the Department of Energy declared that:

“The projects – in fifteen (15) states – will validate refining technologies and help
lay the foundation for full commercial scale development of a biomass industry in
the United States. The projects selected today will produce advanced biofuels,
biopower and bioproducts using biomass feedstocks at the pilot, demonstration
and full commercial scale. The projects selected today are part of the ongoing
effort to reduce U.S. dependence on foreign oil, spur the creation of the domestic

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bio-industry and provide new jobs in many rural areas of the country.” (Copy of
release is attached as Exhibit A.)

We contend that it is not simply a self-serving marketing ploy for the Applicant to

describe itself on its website (www.sapphireenergy.com) as being “at the forefront of an entirely

new industrial category with the potential to radically change America’s landscape”. The

Department of Energy, among others, certainly agrees.

As a result, the Applicant contends that purchasers of its goods and services will readily

recognize, and in fact embrace, the vast differences between Applicant’s renewable energy

products and services and a traditional fossil fuel lubricating oil sold by the Registrant. In that

regard, we urge the Examiner to limit the “berth” afforded the Cited Mark by avoiding an overly

broad categorization of the parties’ respective goods and services. While we concede that

Applicant’s renewable energy fuels and services are related, in the broadest sense, to Registrant’s

lubricating oils, as the Trademark Trial and Appeal Board has declared, “the mere fact that the

products involved in this case (or any products with significant differences in character) are sold

in the same industry does not of itself provide an adequate basis to find the required

‘relatedness’”. Cooper Indus., Inc. v. Repcoparts USA, Inc., 218 USPQ 81, 84 (TTAB 1983).

See, for example, In re Novus Technologies, Inc., 2004 TTAB Lexis 315 (goods not related even

though each could be broadly described as telecommunications equipment and services).

We believe that the holding in Safeguard Business Systems, Inc. v. New England Bus.

Systems, 696 F. Supp. 1041 (E.D. Pa. 1988) is particularly relevant to this matter. The products

in question were traditional manual business forms and a computer software program that

compiled the same business information, albeit electronically. The court noted that the products

shared a similarity in function, since both were intended to record business information.

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Notwithstanding this similarity “in the broadest sense”, the court concluded that similarity in one

general category was not adequate to prove product relatedness, since computer software and

paper forms “are plainly different things, different in size, shape, concept, purpose, appearance

and price.” 696 F. Supp. at 1046. We submit that the court’s recognition of the differences

between an “old school” manual product, on the one hand, and an emerging, newer technology,

on the other, are just as applicable to the instant proceeding. The contrasts between Applicant’s

merging renewable energy products and Registrant’s lubricating oil are significant, for all of the

reasons discussed above.

By way of another analogy, the courts and the TTAB have rejected a rule that “all

computer products and services are related”, See Toro Co. v. Torohead, 61 USPQ 2d 1164

(TTAB 2001); Electronic Design and Sales, Inc. v. Electronic Data Systems, Inc., 954 F. 2d 713

(Fed. Cir. 1992). In a similar vein, we submit that especially in this day and age, not all fuel

products are related. Purchasers have developed the ability to distinguish between the sources of

green, natural, organic, renewable and eco-friendly goods and services and their less

environmentally safe predecessors.

D. Degree of Care.

In addition to the aforementioned dissimilarities in the marks and the differences in the

goods and services marketed by the Applicant and the Registrant’s lubricating oils, courts and

commentators agree that purchasers exercise an increased degree of care, resulting in a reduction

of the likelihood of confusion, when the buyer has “a reasonably focused need” or “specific

purpose” involving the relevant goods or services By way of example, in Luigino’s v. Stouffer

Corporation, 170 F. 3d 827 (8th Cir. 1999), the court found that diet-conscious purchasers of

frozen foods are likely to thoroughly examine product labels “in order to determine what kind of

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entrée is contained therein and its caloric content”. We contend that buyers of alternative

biofuels will seek to transact business with Applicant largely because of the Applicant’s

revolutionary green technology and renewable energy platform, heightening the degree of care

such buyers will exercise (at least to the same or a higher degree of care than that exercised by

purchasers of frozen diet entrees – See Luigino’s, Id., at 831). We submit that parties doing

business with Applicant are likely to be exercising a heightened degree of care, reducing any

threat of confusion. See First Savings Bank, F.S.B. v. First Bank System, Inc., 101 F. 3d 645

(10th Cir. 1996); Hayden Switch & Instrument v. Rexnord Inc., 4 USPQ 2d 1510 (D. Conn.

1987).

E. Other Relevant du Pont Factors.

1. The fame of the prior mark.

In the present case there is no indication of fame of the Cited Marks.

2. The nature and extent of any actual confusion.

In the present case there is no indication of actual confusion.

3. Any other established fact probative of the effect of use.

Applicant believes all facts necessary to a determination of likelihood of confusion are of

record.

F. Conclusion to Section 2(d) Response.

It is respectfully submitted that doubts should be resolved in the Applicant’s favor on the

theory that any person who believes he or she would be damaged by the registration will have an

opportunity to oppose the registration. In re Gourmet Bakers, 173 U.S.P.Q. 565 (1972).

We contend that the foregoing analysis illustrates that there is little likelihood of

confusion between the two marks. This matter should follow well-established authority requiring

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an “unbroken insistence upon likelihood of confusion and rejection of the notion that a trademark

is an owner’s property to be protected irrespective of its role in the operation of our markets.”

Reddy Communications, Inc. v. Environmental Action Foundation, 203 USPQ 144, 153 (D.Col.

1979). For these reasons, and the cases cited, Applicant respectfully submits that its mark is

entitled to registration. Applicant accordingly requests that its application be approved for

publication.

Applicant respectfully declares that all matters raised in the Office Action have been duly

addressed and requests that the Application be passed to registration.

Respectfully submitted,

____________________________________
Jeffrey E. Fine, Esq.
Polsinelli Shughart P.C.
100 South Fourth Street, Suite 1100
St. Louis, Missouri 63102
Telephone: (314) 552-6824
Facsimile: (314) 231-1776

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