How to Position a Trademark Application to Avoid Conflict with a Similar Mark

US_TM_Reg4137026Nikon Corporation filed a trademark application to register the mark MMD for the goods of (1) laser scanners for industrial inspection and for geometrical measurement, and not for use with land surveying equipment, and (2) software for collection and interpretation of data in the operation of laser scanners, not for use with land surveying equipment. The USPTO trademark examining attorney refused registration based on prior registration no. 4137026 of the mark MMD (and dog design, shown to the right of this paragraph) for land surveying equipment.

The Trademark Trial and Appeals (Board) found that the marks were similar because while the prior registration contained a graphical dog, words “are normally accorded greater weight because the words are likely to make an impression upon purchasers.”

The Board also found the goods of both marks were related because evidence showed that non-land surveying laser scanners are sold by the same entities that provide land surveying instruments.

However, the Board found that Nikon’s laser scanners for industrial inspection and the registrant’s surveying equipment move in different channels of trade.

The Board also found that laser scanners and surveying instruments are purchased by customers that exercise a high degree of care in purchasing. Where customers take great care in purchasing, confusion is less likely.

The Board concluded that the goods will not be encountered by the same consumers under circumstances likely to give rise to the mistaken belief that the products emanate from the same source. Therefore, the Board reversed the Examiner’s refusal and allowed Nikon’s application for the MMD mark to proceed to registration.

By amending the description to exclude land surveying equipment, Nikon was able to convince the Board that the goods were sold in different channels of trade despite the fact the goods were related. If Nikon did not add the exclusion of land surveying equipment to the description, it would have lost this appeal. Sometimes narrowing the description of good/services is an important step to avoid a conflict with a nearly identical mark.

Sophisticated Purchasers and Expensive Services: Responding to Trademark Cease and Desist

ChannelsOfTradeIn my last post, I discussed the case of EDS versus EDS. In that case, one company that used the EDS mark opposed another company’s registration of the mark EDS. Identical trademarks. Sales to the same customers. But no conflict.

One reason for the result was that goods/services provided by the respective companies were sold in different channels of trade to different purchasers.

Another reason–the focus of this post–is that the customers that purchased the goods/services of each company were sophisticated purchasers.

First, a quick recap of parties and their products/services. Electronic Design & Sales, Inc. (“Electronic Design”) filed an application to register the mark E.D.S. for power supplies or battery chargers.Electronic Data System Corp. (“Electronic Data”) opposed Electronic Design’s trademark application for E.D.S in Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713 (Fed. Cir. 1992). Electronic Data used the mark EDS for the sale of computer programming and installation services. Both companies sold to some of the same customers.

Sophisticated Purchasers and Expensive Services

The chance of conflict (i.e. “a likelihood of confusion”) between two trademarks is reduced where the goods/services are expensive and purchased after careful consideration. Sophisticated consumers may be expected to exercise greater care in making purchasing decisions.

When a purchaser exercises greater care in making purchasing decisions it is more likely the purchaser will notice differences between the respective marks, the respective goods/services, and the respective sources of those goods/services. Therefore it is less likely the purchaser will be confused to believe that the goods/services of one company originate from the other company.

In this case, Electronic Data’s computer services are “expensive and are purchased only by experienced corporate officials after significant study and contractual negotiation.” When a customer is making an expensive purchase after a contractual negotiation, it is very likely the customer will know the service provider negotiating the contract. Therefore, the purchaser is less likely to be confused as to the source of those services.

Likewise, evidence showed that the evaluation process used in selecting Electronic Design’s battery and power products by customers required significant knowledge and scrutiny.

In this case conflict was avoided, in part, because the parties’ goods/services were usually purchased after careful consideration by persons who were highly knowledgeable about the goods or services and their source.

Responding to a Trademark Cease and Desist Letter

When both parties’ customers are sophisticated purchasers the chance of confusion as to the source of the parties’ goods/services is reduced. Therefore the chance of a conflict between the marks is reduced. Further, when the goods/services are expensive, customers are more likely to take greater care in making purchasing decisions.

When your goods and the plaintiff’s goods are expensive and/or purchased by sophisticated customers, you have a better chance of defending against claims of trademark infringement.

See other posts in this How to Respond to a Trademark Cease and Desist series: