TRADEMARK TIPS – RESPONDING TOP THE TRADEMARK EXAMINER AT USPTO FOLLOWING REFUSAL TO REGISTER.
To the Trademark Examiner and/or Commissioner for Trademarks:
Application serial no. XXXXX (“Superstar Software Company”) has been amended as follows:
In response to the substantive refusal(s), please note the following:
Request to withdraw refusal as to trademark application #XXXXXXX
We respectfully request a reconsideration of the USPTO’s refusal of the above-referenced trademark application.
There is no likelihood of consumer confusion applying the DuPont factors.
There is no likelihood of confusion based on the factors established in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) because Applicant Superstar Software (“SUPERSTAR”) does not sell its products in the same channels of trade as the other registered marks set forth in the response from the trademark examiner. Applicant sells its software via strictly online sales (e.g. to businesses looking for Superstar Software for their employees). The Applicant does not sell, distribute, or market their goods through retail channels, and there is no likelihood that any consumers would be confused, respectfully with other giant software companies such as Microsoft or Adobe, Corel, Rosetta Stone or Autodesk for example.
If the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See, e.g.,Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012).
In addition, retail sales versus online digital downloads prevents the likelihood of confusion. If one mark user sells exclusively at retail and the other exclusively to commercial buyers, then there may be little likelihood of confusion since no one buyer ever buys both products. Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358, 121 U.S.P.Q. 430 (2d Cir. 1959) (wholesale doughnut mix versus retail doughnut sales). See also Joseph Tetley & Co. v. Fant Milling Co., 111 F.2d 485, 45 U.S.P.Q. 433 (C.C.P.A. 1940). For example, if one user sells food only at retail to consumers and the other sells only to commercial food brokers (and the product never reaches consumers under the mark), then there is no one buyer who will be faced with both products, and hence no confusion. David Crystal, Inc. v. Soo Valley Co., 471 F.2d 1245, 176 U.S.P.Q. 326 (C.C.P.A. 1973) (sales to industrial users and to consumers).
Applicant SUPERSTAR does not sell software in the same channels as the other registered marks referenced in the refusal letter. They do not have a retail store, outlet or manufacturing facility. SUPERSTAR makes amazing productivity software for real estate agents, architects, and engineers and this product is not available in commercial retail stores. There is no likelihood of consumer confusion as consumers will not be faced with similar labels. Consumers will never find the SUPERSTAR BRAND in retails stores and thus the commercial impression on consumers precludes a finding of likelihood of consumer confusion. Applicant offers the following disclaimer nonetheless:
Applicant disclaims any rights as it may relate to retail channels in the software category.
The applicant disclaims any exclusive right to use the mark in regard to retail channels of trade wherein the other marks set forth in the refusal are believed to conduct business.
The English translation of the word “SUPERSTAR” is something amazing, incredible, fantastic, fabulous, outstanding and above all others.
No claim is made to the exclusive right to use “SUPERSTAR” apart from the mark as shown.
For the reasons set forth above, there is no likelihood of confusion in granting the trademark in its disclaimed format. Applicant respectfully requests the trademark be granted and the refusal withdrawn. We can be reached at (877) 276-5084 for further comments or clarifications.
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