RESPONSE TO OFFICE ACTION FOR APPLICATION SERIAL NO. 77/806,142

This responds to the Office Action dated November 24, 2009, in which the Trademark

Examining Attorney refused registration of the mark OPTIMIX (“Applicant’s Mark”) on

grounds that there is a likelihood of confusion with the following U.S. Registration Nos. owned

by ITT Corporation (the “Registrant”):

1. 2,854,330 (OPTIMIX for “dynamic high turbulence mixer that effectively mixes

liquids and/or gaseous elements into a flowing stream of medium consistency

cellulose pulp”);

2. 2,856,325 (OPTIMIX & Design for “dynamic high turbulence mixer that

effectively mixes liquids and/or gaseous elements into a flowing stream of

medium consistency cellulose pulp”)

(together, the “Cited Registrations”).

The Examining Attorney also requested that the Applicant clarify its identification of

goods and entity type.

Identification of Goods

In response to the Examining Attorney’s requests, Applicant hereby amends its

identification of goods, as follows:

Original Identification of Goods:

“submersible, motor-driven agitator systems for mixing, stirring,
homogenizing and pumping liquid manure and waste water for
agricultural purposes and/or for the production of biogas” in
International Class 7.

Amended Identification of Goods:

“submersible, motor-driven agitators for circulating liquid media,
namely, agitators for mixing, stirring and homogenizing liquid
manure and waste water for producing biogas through circulation;
pumps as part of agitators for circulating liquid media, namely,
agitators for mixing, stirring and homogenizing liquid manure and
waste water for producing biogas through circulation” in
International Class 7.

Entity Clarification

In response to the Examining Attorney’s requests, Applicant hereby amends the

application to clarify that its entity type is a limited partnership, with the sole general partner

being a limited liability company as is indicated by the suffix “GmbH & Co. KG.”

There is No Likelihood of Confusion with the Cited Registrations

Applicant respectfully requests that the Section 2(d) refusal with respect to the Cited

Registrations be withdrawn. Consumer confusion is completely unlikely because the goods at

issue are different in nature and purpose, purchasers of both Applicant’s and Registrant’s goods

are sophisticated, and the marks in the Cited Registrations are weak. For all of these reasons, the

2(d) refusal should be withdrawn.

Introduction & Legal Standard

For confusion between two marks to be likely, it must be probable; it is not relevant that

confusion is merely possible. Trademark law is “not concerned with mere theoretical

possibilities of confusion, deception, or mistake or with de minimus situations but with the

practicalities of the commercial world, with which the trademark laws deal.” Electronic Design

& Sales Inc. v. Electronic Data Systems Corp., 21 U.S.P.Q.2d 1388 (Fed Cir. 1992), quoting

Witco Chem. Co. v. Whitfield Chem. Co., 164 U.S.P.Q. 43, 44-45 (C.C.P.A. 1969).

2
As such, no per se rule exists that confusion is automatically likely between marks

merely because they share similar—or even identical—wording. Indeed, the Trademark Trial &

Appeal Board (the “Board”) frequently reverses refusals to register identical marks when the

totality of the circumstances indicate there is no likelihood of confusion. For example, in each of

the following recent cases, the Board reversed an Examiner’s refusal to register, finding there

was no likelihood of confusion between the following:

a. APOLLO for color pigments in the graphic arts industry and APOLLO for dye and
pigments used in the leather and textile industry (In re Apollo Colors, Inc., App. Ser. No.
75/942,300, 2005 WL 1787221, *2 (T.T.A.B. July 7, 2005));

b. VERSAPRO for weed killer and VERSAPRO for garden tools (In re Hagemeyer
North America, Inc., App. Ser. No. 78/582,349, 2007 WL 2698300 (T.T.A.B. Aug. 30,
2007));

c. LUXE for salon furniture and LUXE for furniture (In re Kaemark, Inc., App. Ser. No.
77/091,033, 2008 WL 5256390 (T.T.A.B. Nov. 28, 2008));

d. AMERISTAR for metal fences and gates and AMERISTAR for non-metal windows,
doors and window coverings (In re Wood., App. Ser. No. 77/487,119, 2009 WL 5194993,
*5 (T.T.A.B. Dec. 22, 2009));

e. ECHELON for automobiles and ECHELON for automotive tires (In re Hyundai
Motor America, App. Ser. No. 78/889340, 2009 WL 4086577 (T.T.A.B. June 3, 2009));
and

f. PAL for a patient-lifting medical device and PAL for lithotomy medical devices and
patient support mattress pumps (In re Itec Mfg., Ltd., App. Ser. No. 78/621722, 2008 WL
885926, *4-5 (T.T.A.B. Feb. 13, 2008)).1

1
See also McGraw-Hill, Inc. v. Comstock Partners, Inc., 743 F. Supp. 1029 (S.D.N.Y. 1990) (confusion not likely
between COMSTOCK stock and commodity trade information services and COMSTOCK for money management
services); Astra Pharm. Products, Inc. v. Beckman Instruments, Inc., 220 U.S.P.Q. 786 (1st Cir. 1983) (no confusion
between ASTRA local anesthetic preparation and ASTRA blood analysis machines); Franklin Resources, Inc. v.
Franklin Credit Mgmt. Corp., 988 F. Supp. 322 (S.D.N.Y. 1997) (confusion not likely between FRANKLIN for
investment services and FRANKLIN for debt collection services); In re Meritek Electronics Corp., App. Ser. No.
76/587,046, 2007 WL 878340 (T.T.A.B. Mar. 13, 2007) (no confusion although dominant portion of applicant’s
MERITEK sounded identical to registrant’s MERITEC); In re Nexgen Resources Corp., App. Ser. Nos. 76/334,331
and 76/334,334, 2006 WL 2557987 (T.T.A.B. Aug. 10, 1986) (no confusion between NEXGEN for transportation
and processing of coal in Classes 39-40 and NEXGEN for supply and generation of electricity, in those same
classes; reversing refusal to register); In re Dayco Products-Eaglemotive Inc., 9 U.S.P.Q.2d 1910 (T.T.A.B. 1988)
(no confusion between IMPERIAL for automotive products and identical mark for automobiles).

3
The ultimate question of likelihood of confusion is one of fact and numerous factors are

relevant in making such a determination. The Examining attorney is correct that the similarity

(here, identity of the word portions) of the marks should be considered, but it is just one of many

relevant factors. Equally significant here are the dissimilarity and nature of the goods on which

the marks are used; the conditions under which and buyers to whom sales are made, i.e., careful,

sophisticated, professional purchasers; the different trade channels used by Applicant and

Registrant; and the inherent weakness of the Cited Registrations. In re E.I. DuPont Nemours &

Co., 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973); see also Trademark Manual of Examining

Procedure § 1207.01. Applicant respectfully submits that here, a proper comparison of the

marks—looking to the totality of the DuPont factors and the specific industries to which

Applicant’s and Registrant’s respective goods are actually directed—reveals that consumer

confusion between them is unlikely. As such, the likelihood of confusion refusal should be

withdrawn.

Registrant’s Arguments During Prosecution

When Registrant was prosecuting its two OPTIMIX marks in 2001, it also received

Office Actions initially refusing registration of each mark based on a perceived likelihood of

confusion between Registrant’s marks and a prior registration – namely, OPTI-MIXER for use

on “machines for mixing plastic materials.” In responding to those Office Actions, Registrant

argued that despite the similarity between the marks, confusion was not likely because of the

differences between the goods and the highly specialized industry to which Registrant’s

equipment is directed. The following is a screen capture (with emphasis added) of Registrant’s

response to the Office Action on its Application Ser. No. 76/292,130 (see also Declaration of

Jami A. Gekas, ¶¶ 3-4 and Exs. A and B thereto):

4
Registrant continued, pointing out that the expensive nature of its goods, the sophistication of its

purchasers, and the relative weakness of the “diluted” OPTIMIX mark further weighed against a

likelihood of confusion:

(See id.)

5
Argument

I. The Goods Associated With Applicant’s Mark and The Cited Registrations Are Too
Different To Warrant A Finding Of A Likelihood Of Confusion

Consumer confusion is unlikely because the goods at issue are completely dissimilar in

nature and purpose, and used in totally different industries. Registrant’s goods are, in

Registrant’s own words, solely for “mixing liquids and/or gases in the pulp industry.” (See

above). Indeed, Registrant’s website makes clear that Registrant’s “Optimix” brand mixer is

designed specifically for use in bleach plants, for mixing chemicals into wood pulp prior to

making paper. (Gekas Decl., ¶¶ 5-7 and Exs. C-E thereto.) To contrast, Applicant’s goods are

“distinctly different and are used for specifically different purposes.” In re Itec, 2008 WL

885926 at *5 (reversing refusal to register identical PAL marks). Specifically, Applicant’s

submersible agitators—which are customized to the needs of Applicant’s individual clients—are

used only at high-tech biogas production facilities to mix renewable raw materials (“RRM’s”),

manure, sewage sludge and other waste for the creation of biogas. See generally, Applicant’s

website, available at URL www.suma.de/EN/01_Startseite/home.php; see also Gekas Decl., ¶

14.2

a. There is No “Commercial or Technical Relationship” Between the Goods.

The Examining Attorney believes Applicant’s and Registrant’s goods are related because

they can both be described as “industrial machines for mixing liquids.” But Applicant

respectfully disagrees that the goods are in any way related, or that this broad statement

appropriately captures the true nature of Registrant’s and Applicant’s differing goods. To quote

the Board: “to demonstrate that goods are related, it is not sufficient that a particular term may be

2
The attachments to the Gekas Declaration relate to Applicant’s “OPTIMIX” agitators as sold in Europe. Applicant
intends to use the OPTIMIX mark in the U.S. to sell these same products, for the same uses and to the same class of
customers. (Gekas Decl. ¶ 13.)

6
found which may broadly describe the goods.” In re W.W. Henry Co., 82 U.S.P.Q. 2d 1213,

1215 (T.T.A.B. 2007) (reversing refusal to register). Rather, more “must be shown; that is, a

commercial or technological relationship must exist between the goods.” General Electric Co.

v. Graham Magnetics Inc., 197 U.S.P.Q. 690, 694 (T.T.A.B. 1977) (emphasis added).

Accordingly, the Board recently found that although brandy and tequila can both be described

generally as “alcoholic beverages,” there was no likelihood of confusion between similar marks

used on those products because there was no evidence that they were “complementary products

that would be bought and used together.” Martell & Co. (S.A.) v. Tequila Cuervo La Rojena,

S.A. de C.V., Opp. No. 91177477, 2009 WL 1017291, *6 (T.T.A.B. Mar. 24, 2009). In another

recent case, the Board found that there was no likelihood of confusion between DUAL-LOKT

and DUAL-LOK, both for goods “broadly defined as metal fasteners” in Class 6, where the

applicant’s and registrant’s respective products were “specifically different types of fasteners,

i.e., metal buckles on the one hand, and self-locking bolts and screws on the other.” In re Band-

It-IDEX, Inc., App. Ser. No. 77/363240, 2009 WL 4081687, *3 (T.T.A.B. Oct. 20, 2009).

Here, similar to Martell and Band-It-Idex, despite the fact that the goods may fall into the

same International Class, there is simply no evidence of any “commercial or technical

relationship” between the goods. Instead, Applicant’s and Registrant’s respective applications

make clear that Applicant’s and Registrant’s goods are totally unrelated—Applicant’s goods are

used for one purpose only, to circulate liquid manure in the production of biogas, while

Registrant’s goods are used for a single totally different purpose related to the pulp and paper

industry. C.f. In re Band-It-IDEX, 2009 WL 4081687 at *3 (fact that applicant’s goods were

identified in application as “used for a specific purpose” different than registrant’s weighed

against a likelihood of confusion, even though marks were nearly identical and goods were in the

7
same International Class); see also In re Wood., App. Ser. No. 77/487,119, 2009 WL 5194993,

*5 (T.T.A.B. Dec. 22, 2009) (although both registrant’s and applicant’s respective goods could

broadly be described as “building or home improvement materials,” there was no evidence of a

relationship between “metal fences and gates” and non-metal windows, doors and window

coverings; holding no likelihood of confusion between identical AMERISTAR marks).

b. There is No Overlap Between the Fields In Which the Goods Are Used.

The Examining Attorney also believes the goods are related because “applicant’s good

are used in the field of agriculture, and registrant’s goods appear to be used in the field of

agriculture.” Again, Applicant respectfully disagrees that the goods are used in the same field,

and notes that it has amended its identification of goods to avoid confusion about the primary

purpose of its agitators. Applicant also points out that while Registrant—“one of the largest

American manufacturing companies,” according to the internet evidence relied on by the

Examining Attorney—may offer some goods for use by businesses traditionally considered to be

in the “field of agriculture,” the OPTIMIX brand “dynamic high turbulence mixer” identified in

the Cited Registrations is marketed only by Registrant’s “Goulds Pumps” division and is

intended for use in bleach plants operating in the pulp and paper industry, not in the field of

agriculture. (Gekas Decl., ¶¶ 5-7 and Exs. C-E thereto.)

Nevertheless, even if both Applicant’s and Registrant’s goods could be considered to be

in the same broad category of “industrial mixers,” the essential differences in their nature and

purpose prevent a likelihood of confusion. Simply put, there is no overlap between Applicant’s

biogas agitator systems and Registrant’s pulp mixers, and these goods would never be used in

the same facilities or in the manufacture of the same products. See In re Apollo, 2005 WL

1787221 at *2 (no confusion between APOLLO for color pigments in the graphic arts industry

and APOLLO for dye and pigments used in the leather and textile industry); In re Nexgen, 2006

8
WL 2557987 at *4 (no confusion between identical NEXGEN marks in the same classes due to

“the distinct differences” in the coal and electricity services at issue); In re Hyundai, 2009 WL

4086577 at *6 (finding no confusion between identical ECHELON marks because “automobiles

and automotive tires are not closely-related goods”) (emphasis in original); Modular Cinemas of

Am., Inc. v. Mini Cinemas Corp., 175 U.S.P.Q. 355 (S.D.N.Y. 1972) (no likelihood of confusion

between MINI CINEMA for family movie theaters and MINI CINEMA for erotic movie

theater); The Nestle Co., Inc. v. Nash-Finch Co., 4. U.S.P.Q.2d 1085 (T.T.A.B. 1987) (DELI

QUIK for deli foods not likely to cause confusion with QUIK for flavored milk); Interstate

Brands Corp. v. Celestial Seasoning, Inc., 198 U.S.P.Q. 151 (C.C.P.A. 1978) (ZINGER for herb

tea not likely to cause confusion with ZINGERS for cakes that may be consumed together); In re

Intelistaf Healthcare Management, L.P., App. Ser. No. 78/387,294, 2006 WL 936990, *5

(T.T.A.B. Mar. 29, 2006) (no likelihood of confusion between INTELICASH for consumer debit

card services and INTELECASH for business services involving debit cards); In re Meritek,

2007 WL 878340 (despite sound-alike marks, no likelihood of confusion due to dissimilarity

between applicant’s services (distribution of electronic components) and registrant’s electrical

connectors and electrical engineering services).

To summarize, the notable differences between the goods prevent any likelihood of

consumer confusion. See In re Itec, 2008 WL 885926 at *4-6 (finding no confusion despite

overlap of hospital customers due to different uses of various medical devices all marketed under

the PAL mark). There is no “viable relationship” between the goods, and so even though the

word portions of the marks are identical, this factor alone “is dispositive in this case, out-

weighing all… other du Pont factors.” In re Hagemeyer, 2007 WL 2698300 at *3, citing

Kellogg Co. v. Pack’Em Enter. Inc., 951 F.2d 330 (Fed. Cir. 1991).

9
II. Purchasers Of Applicant’s And Registrant’s Goods Are Sophisticated, And the
Goods Are Expensive and Important, Further Obviating A Likelihood Of Confusion

Although the Examining Attorney has not discussed the sophistication of the relevant

purchasers, Applicant respectfully suggests that factor is of key importance here. Where the

relevant buyer class is composed solely of professionals or people who must possess a high level

of knowledge to purchase the product (such as commercial buyers), it is reasonable to set a

higher standard of care than exists for consumers, and to assume buyers will be sophisticated

enough to not be confused even by similar trademarks. Alpharma Inc. v. Advanced Animal

Nutrition, Inc., Opp. No. 91164763, 2009 WL 273252 (T.T.A.B. Jan. 27, 2009) (high degree of

care exercised by farmers, veterinarians and nutritionists made confusion unlikely); Astra, 220

U.S.P.Q. 786 (the care with which hospitals buy medical carts for operating rooms makes

purchaser confusion unlikely even in connection with identical ASTRA marks); Munters Corp.

v. Matsui America, Inc., 14 U.S.P.Q.2d 1993 (N.D. Ill. 1989), aff’d., 15 U.S.P.Q.2d 1666 (7th

Cir. 1990), cert. denied, 11 S. Ct. 591 (1990) (professional buyers of dehumidifiers used in

molding plastics are “sophisticated and discriminating” and will not be confused by similar

marks); In re Orphan Pharmaceuticals, U.S.A., Inc., App. Ser. No. 76/207,867, 2006 WL

2066571, *3 (T.T.A.B. July 14, 2006) (“sophistication and care” by professional purchasers is

dispositive of no likelihood of confusion, despite “identical” services in Class 42).

Here, both Registrant and Applicant have a “fairly detailed purchasing process,” meaning

buyer of their respective goods must have a “high level of knowledge” and are sophisticated

purchasers. Arrow Fastener Co., Inc. v. Stanley Works, 35 U.S.P.Q. 2d 1449, 1459 (2d Cir.

1995). Registrant’s purchasing process is detailed, because—as Registrant notes in its online

newsletters (Gekas Decl., Ex. C, p. 2)—Registrant’s customers use professional engineering

consultants prior to purchasing Registrant’s OPTIMIX equipment, who make detailed

10
calculations as to energy savings and mixing efficiency. Similarly, Applicant offers dozens of

different agitator configurations (including mobile and stationary installations, adjustable

models, and even custom made agitators), which are designed for use under varying conditions

in order to produce biogas, and each of which has a multitude of available accessories and

options. (Gekas Decl. ¶ 13). Further, Applicant’s agitators are sold only to professionals in the

field of biogas. Thus, purchasers of both Applicant’s and Registrant’s goods require a high level

of knowledge in order to decide which of the many pumps or agitators serve their needs. See

Alpharma, 2009 WL 273252 at *9 (when purchases “involve considerable planning that requires

purchasers to have a specific purpose or plan for the products,” confusion is unlikely). This

knowledge, in conjunction with the fact that the buyers of Applicant’s goods are professionals,

supports the conclusion that the relevant consumers are highly sophisticated and unlikely to be

confused between Applicant’s and Registrant’s marks. See In re Nexgen, 2006 WL 2557987 at

*12 (no confusion between identical marks because applicant’s purchasers must enter into formal

contracts and “know the service provider intimately”).

Confusion is further unlikely where, as here, the goods at issue are expensive and not

impulse items. See e.g., Full Speed Ahead, Inc. v. SRAM Corp., Opp. No. 91171889, 2008 WL

5256412, *4-8 (T.T.A.B. Dec. 10, 2008) (no likelihood of confusion because bicycle parts are

“relatively expensive, and not impulse items”); McGraw-Hill, 743 F. Supp. at 1036-1037

(purchasers of expensive goods and services are sophisticated and will not be confused even

when items marketed under the same mark are somewhat related); In re Nexgen, 2006 WL

2557987 at *13 (“there is always less likelihood of confusion where goods… are expensive and

purchased and used by highly specialized individuals after careful consideration”) (internal

quotation omitted). In the instant case, Registrant’s goods are, in Registrant’s own words,

11
“expensive, specific use items which would be purchased and used by sophisticated purchasers.”

(See above). Applicant’s agitators are also very expensive, and currently sell in Europe for

anywhere from EUR 3,638 to EUR 9,970 (? $4,957 to $13,585 USD); they will be priced

similarly in the U.S. (Gekas Decl. ¶¶ 13, 15). Thus the substantial amount of money that

purchasers are required to pay, together with the level of knowledge required to choose the

appropriate piece of equipment, makes both Registrant’s and Applicant’s respective buyers

highly sophisticated and unlikely to confuse Applicant’s Mark with the Cited Registrations.

Finally, the “more important the use of a product, the more care that must be exercised in

its selection.” Western Chem. Pumps, Inc. v. Superior Mfg., Inc., 989 F. Supp. 1112, 1125 (D.

Kan. 1997), quoting Versa Prods. Co., Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 204 (3d. Cir.

1995). Here, Applicant’s equipment is “essential to the proper handling and processing” of

biogas, while Registrant’s equipment appears to be similarly “essential to the proper handling

and processing” of paper manufacturing, meaning that both Applicant’s and Registrant’s

respective customers “likely will exercise a high level of care to ensure that valuable [end]

products do not become contaminated or require re-processing.” Western, 989 at 1125 (finding

no likelihood of confusion between competing chemical injection pumps due, inter alia, to

sophistication of customers and high price and importance of equipment).

In sum, “the [goods] at issue on their face are not only distinctly different, but they

clearly are very expensive and would be bought… only by highly knowledgeable, discriminating

and sophisticated purchasers after thorough deliberation rather than on impulse.” In re Nexgen,

2006 WL 2557987 at *13. As the Board has noted, such “sophistication is important and often

dispositive.” Id., quoting Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 722

(Fed. Cir. 1992); see also In re Crosswalk, Inc., App. Ser. No. 78424189, 2007 WL 2344684, *8

12
(T.T.A.B. Aug. 2 2007) (reversing refusal of registration where marketing targets were

professionals who were not likely to be confused as to source). When combined with differing

goods, as here, it outweighs identity between marks. In re Itec, 2008 WL 885926 at *5 (no

confusion despite identical marks because hospital purchasers are sophisticated).

III. Applicant’s and Registrant’s Goods Do Not Travel In the Same Trade Channels.

Registrant markets the goods identified in the Cited Registrations to members of the

“Pulp & Paper Industry” (Gekas Decl. ¶ 6), and advertises in the “Buyers Guide” of the Paper

Industry Management Association (“PIMA”), a trade association.3 To contrast, Applicant’s

goods are marketed only to those interested in launching a biogas production facility. For these

reasons, and because the products are so different and the relevant buyer class is composed of

sophisticated professionals who are not likely to be confused as to source, Applicant’s and

Registrant’s respective goods cannot be considered to travel in the same channels of trade. See

In re Apollo, 2005 WL 1787221 (“Because of the different industries in which applicant’s and

the registrant’s pigments are used, and the different customers, the channels of trade must also be

considered to be different”); In re Intelistaf, 2006 WL 936990 at *4-5 (finding no overlap in

trade channels, services, or purchasers). This is yet another DuPont factor weighing against a

likelihood of confusion.

IV. The Marks in the Cited Registrations Are Not Famous.

The fame (or lack thereof) of the registered mark is yet another DuPont factor relevant to

the likelihood of confusion analysis. A mark is considered to be famous when “a significant

portion of the relevant consuming public…recognizes the mark as an indicator or source.” Palm

Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1374

3
See, e.g., http://www.pimaweb.org/guide/PIMA05BuyGd.pdf, at p. 25 thereto.

13
(Fed. Cir. 2005). To determine whether a mark is famous, courts look to both indirect and

circumstantial evidence, including recognition of a mark in the media. Id. at 1376 (finding that

recognition of registrant’s marks by well-known publications such as The New York Times, the

Boston Globe, Money magazine and Detroit News served as evidence that registrant’s marks

were famous). Unlike the mark at issue in Veuve Clicquot, which was widely acknowledged in

the media, a search for “OPTIMIX” on the popular Internet search engine “Yahoo! News” does

not yield a single hit. (Gekas Decl., ¶ 8, and Ex. F thereto). The absence of articles/publications

mentioning the Cited Registrations is highly indicative of their lack of fame.

V. The Marks in the Cited Registrations Are Weak, and so the Scope of Protection
Afforded to Them is Narrow

Where there is evidence of third party use of similar marks on similar goods or services,

the field of marks is deemed to be crowded and the marks within that field are entitled to only a

narrow scope of protection, meaning confusion is unlikely. Palm Bay Imports, Inc, 396 F.3d at

1373.

As Registrant itself pointed out in response to Office Actions on the Cited Registrations

in 2002, there are multiple parties using the OPTIMIX mark, meaning the mark is “diluted and,

therefore, the area of protection given to any use thereof should be narrowly construed.” (See

above.) The situation has not changed much in the intervening years, as a search on the popular

Internet search engine “Google” reveals that multiple third parties are currently using the phrase

“OPTIMIX” as a trademark or brand name in connection with commercial and industrial goods.

(Gekas Decl., ¶ 9 and Ex. G thereto). Indeed, the first page of the search results do not reveal a

single reference to Registrant; rather, the references are all to third party using the term

“OPTIMIX,” including to sell mutual funds (www.optimixnet.com), dental equipment

(www.ormco.com/index/kerrdental-smallequipment-optimix-2), production process software

14
(www.optimaldesign.com/OptiMix/OptiMix.htm), real estate coaching and consulting services

(www.optimix.com), feed distributors (www.uop.com/objects/FCC%20Optimix.pdf), reagents

for research use (www.msg.ucsf.edu/XRayLab/Fluidigm/OM1.27VC.pdf), and graph rewriting

tools (optimix.sourceforge.net). See id; see also Moose Creek, Inc. v. Abercrombie & Fitch Co.,

331 F.Supp.2d 1214 (C.D. Cal. 2004) (holding Internet evidence is an appropriate means to

determine whether a crowded field exists).

Similarly, a search on the Trademark Office website reveals numerous third parties using

the term “OPTIMIX” as a trademark or brand name. As of the date of this filing, there are

multiple “Live” or active registrations and applications incorporating the term “OPTIMIX”

available on the Trademark Office’s website, including many owned by third parties for use on

goods in the industrial and commercial arenas (most of which could fit within the Examining

Attorney’s broad categorization of “industrial machines for mixing liquids”):

1. OPTIMIX for “faucet mixing valves” (Reg. No. 2072262).

2. OPTIMIX (stylized) for “mixing dishes” and other goods and equipment made of
metal for use with chemical reactors (Reg. No. 2544463).

3. OPTIMIX for “plastic nozzles used for mixing and extruding components of
multi-component substances” for use in the construction industry (Reg. No.
3013577).

4. OPTIMIX for “medical syringes” (Reg. No. 2241229).

5. OPTI-MIXER for “machines for mixing plastic materials” (Reg. 2276710).

Given the abundance of “OPTIMIX” trademarks, most (if not all) sold in connection with

goods or equipment for commercial use, as well as the highly suggestive nature of the OPTIMIX

mark (a contraction of “optimum” or “optimal” and “mix”), purchasers of goods bearing that

phrase are accustomed to differentiating between different types of goods and not attributing all

of them to the same source. See In re Dayco, 9 U.S.P.Q. at 1911-12 (submission of third party

15
registrations was probative on weakness of registrant’s mark; reversing refusal to register); see

also In re W.W. Henry, 82 U.S.P.Q. 1213, 1215-16 (T.T.A.B. 2007) (when marks are highly

suggestive, purchasers are unlikely to assume that products offered under them emanate from the

same source). Thus the marks in the Cited Registrations are weak and are only entitled to a

narrow scope of protection, making confusion between Applicant’s Mark and the Cited

Registrations all but impossible.

Conclusion

Given (1) the differences between Applicant’s Mark and the Cited Registrations in terms

of the nature and purpose of the respective goods, (2) the sophistication of the relevant

purchasers, (3) the differing trade channels, and (4-5) the lack of fame and relative weakness of

the Cited Registrations, consumer confusion is unlikely. Therefore, Applicant respectfully

requests that the Section 2(d) refusal be withdrawn. Applicant believes it has responded to all of

the issues raised in the Office Action and submits that its application is ready for publication.

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