Reply to office action for Amazon's Trademark MadeMark for clothing - Likelihood of Confusion rejection

The office action is here.

By Brad Behar of Brad M. Behar and Associates in Mineola, NY.

This is a response to the Non-Final Office Action dated February 8, 2020 concerning U.S. Application Serial No. 88/672,277 for the mark MADEMARK for "Clothing, namely, shirts, t-shirts, sweatshirts, tank tops" in Class 25.

The Office Action refuses registration under Section 2(d) of the Trademark Act, 15 U.S.C. ?1052(d) based on a likelihood of confusion with MADE, US Registration No. 3,059,279. The Office Action states MADE is similar to MADEMARK: "Applicant has merely added the highly descriptive, if not generic, wording "Mark", short for trademark, to the registered MADE mark. ... Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d)."

Applicant respectfully disagrees that consumers will dissect Applicant's trademark into two component parts MADE and MARK and also disagrees that consumers will understand MARK to be a "short[hand] for trademark." Applicant submits the unitary, single word, MADEMARK, creates a visually distinct commercial impression that contradicts the suggested dissection. Likelihood of confusion cannot be predicated on dissection of a mark, that is, on only a part of a mark." In re National Data Corp., 753 F.2d at 1058. The Anti-Dissection Rule reinforces the idea that marks are to be compared as the consumer perceives them in the marketplace. See In re Hearst Corp., 25 U.S.P.Q.2d 1238 (Fed. Cir. 1992). Consumers will likely view MADEMARK as one word with no specific meaning.

Alternatively, if consumers do seek to assign a connotation, the existence of so many different meanings for the word "mark" as evidenced in the dictionary printout attached to the Office Action, supports registration. The Merriam-Webster dictionary lists "trademark" as just one of many different definitions which include "a conspicuous object serving as a guide for travelers", "a target", "a goal" or "object", "a standard of performance, quality, or condition", etc. It is incorrect to state consumers will assign one specific meaning, namely a shortened form of the word "trademark."

Applicant furthermore submits that where the relevant field is highly crowded with marks containing a common term (here MADE), the addition of another term does obviate a finding of a likelihood of confusion under Section 2(d). There are about 650 live registrations containing MADE in Class 25, one for MADE alone (US 5,460,926) and six comprising MADE with one additional letter/character (C MADE, V MADE, W MADE, T MADE, X MADE, MADEX). Of the about 650 live registrations containing MADE in Class 25, about 170 begin with the word MADE (e.g., MADE FOR, MADE GOLD, MADE FREE, MADE IN, MADE-TO-BE, MADE-TO-WEAR, MADE FAMOUS, MADE & CRAFTED).

Of the 650 live registrations containing MADE in Class 25, 498 contain either shirt or tank top in the goods identification; see Exhibit A containing a listing of those registrations, copies of the registration certificates and for more than 230 of them where use was found online, the website URLs).

Attached as Exhibit B are printouts of the 230+ uses. With so many other coexisting uses and registrations for MADE (and formatives) for the same goods in Class 25, the cited registration must be afforded a very narrow scope of protection and, accordingly, should not prevent registration of MADEMARK. Trademark law is well settled that when a trademark, such as the trademark cited here, exists in a crowded field, the public is presumed to be able to distinguish it from other trademarks which have only slight differences. See King Candy Co. v. Eunice King's Kitchen Inc., 182 U.S.P.Q. 108, 109-10 (CCPA 1974) ("the expressions 'weak' and 'entitled to limited protection' are but other ways of saying . . . that confusion is unlikely because the marks are of such nonarbitrary nature or so widely used that the public easily distinguishes slight differences in the marks under consideration as well as differences in goods . . . even though the goods of the parties may be considered 'related'"). See General Mills Inc. v. Kellogg Co., 3 U.S.P.Q.2d 1442, 1445 (8th Cir. 1987) ("[d]etermining that a mark is weak means that consumer confusion has been found unlikely because the mark's components are so widely used that the public can easily distinguish slight differences in the marks, even if the goods are related"); Telemed Corp. v. Tel-Med Inc., 200 U.S.P.Q. 427 (7th Cir. 1978). Likewise, here, consumers are conditioned to and can differentiate between the applied for trademark MADEMARK and the cited MADE trademark. The additional word component (MARK) does indeed distinguish Applicant's trademark in the highly crowded field.

The fact that two trademarks contain identical words does not automatically mean that the marks are confusingly similar. See General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627 (8th Cir. 1987) (citing Freedom Sav. & Loan v. Way, 757 F.2d 1176, 1183 (11th Cir. 1985)) (finding that OATMEAL RAISIN CRISP was not confusingly similar to APPLE RAISIN CRISP). In many cases, courts have found that two marks sharing common terms but combined with other elements are sufficiently different in their entireties to avoid a likelihood of confusion. See, e.g., Plus Prods. v. General Mills, Inc., 188 U.S.P.Q. 520 (T.T.A.B. 1975) (PROTEIN PLUS for breakfast cereal and PLUS for vitamin and mineral products and food supplements not confusingly similar); Marshall Field & Co. v. Mrs. Fields Cookies, 25 U.S.P.Q.2d 1321 (T.T.A.B. 1992) (holding that MARSHALL FIELD'S and FIELD'S, both for department store services including baked goods, created no likelihood of confusion with MRS. FIELDS, for cookies and brownies).

Here, the differences in the appearances and pronunciations distinguishes Applicant's trademark from the cited MADE trademark. MADE is one-syllable whereas MADEMARK is 2-syllables. The likelihood of confusion determination under Section 2(d) is based on an analysis of all the probative facts in evidence that are relevant to the factors set forth in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). Applicant respectfully submits that here, when taking all of the facts into consideration, there would not be any likelihood of confusion and Applicant's trademark should be allowed to co- exist on the principal register. Applicant respectfully requests withdrawal of the refusal.