To the Commissioner for Trademarks:

There is no likelihood of confusion between Applicant’s Mark and the Referenced Mark

Applicant believes that there is no likelihood of confusion between applicant’s mark SPARK and the cited mark SPARQ.

1.                  The Marks at Issue are Different as to
Appearance, Connotation and Commercial Impression

As pointed out by the examining attorney, the relevant standard was set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973), stating the proposition that one must examine potentially conflicting marks for similarities in “appearance, sound, connotation and commercial impression,” and then consider the goods or services related to the marks and certain other factors.

The examining attorney has stated that SPARK and SPARQ are similar in sound, appearance and commercial impression because the marks are phonetic equivalents.  However, phonetic similarity is not a sufficient basis for finding a likelihood of confusion.  Phonetic similarly is only one element to consider in the similarity of marks analysis.  Even if the marks are phonetically alike, the other elements of the sight, sound and meaning trinity could lead to a finding of no confusion, Standard Brands, Inc. v. Eastern Shore Canning Co., 172 F.2d 144, 80 U.S.P.Q. 318 (4^th Cir. 1949) (no likelihood of confusion between V8 vegetable juice and VA tomato juice).  TMEP § 1201.01(b)(iii), cited by the examining attorney, properly states that similarity of sound is [only] “one factor” in determining whether there is a likelihood of confusion between marks.

The analysis of two marks for likelihood of confusion requires that the appearance connotation and commercial expression of the two marks also be compared.  Here, as set forth in detail below, it is clear that the appearance of the marks at issue, as well as their connotation and commercial impression, differ significantly when they are compared.

a.                  The Marks are Different in Appearance

The Examining Attorney is permitted to find that a difference in appearance is dispositive and need not consider any other Du Pont factor.  See Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 1375, 47 U.S.P.Q. 2d 1459 (Fed. Cir. 1998); J. Thomas McCarthy, Trademarks and Unfair Competition (4th Ed.) (hereinafter “McCarthy”), § 23.25 (it is proper for the Board to rely solely on the dissimilarity of the marks [in appearance] in finding no likelihood of confusion).

(i)                 The Marks are Different Under the Subjective Eyeball Reaction Test

[S]imilarity of appearance between marks is really nothing more than a ‘subjective’ eyeball’ test”), McCarthy, § 23.25 citing Plough, Inc. v. Kreis Laboratories, 314 F.2d 635, 136 U.S.P.Q. 560 (9th Cir. 1963).  Numerous cases have relied on the “subjective eyeball reaction” test to find that minor differences preclude a likelihood of confusion.  See Fossil, Inc. v. Fossil Group, 49 U.S.P.Q.2d 1451 (T.T.A.B. 1998) (no infringement of FOSSIL watches by THE FOSSIL GROUP clocks); Miss World (UK) Ltd., 856 F.2d 1445, 1451, 8 U.S.P.Q.2d 1237 (9th Cir. 1988) (no confusion between MS. WORLD and MRS. OF THE WORLD beauty contests); Exxon Corp. v. Texas Motor Exchange, Inc., 628 F.2d 500, 208 U.S.P.Q. 384 (5^th Cir. 1980) (no likelihood of confusion between EXXON and TEX-ON);.

Applying the subjective eyeball reaction test, SPARK is clearly different than SPARQ.  When there are only five letters in a word, changing one letter changes the appearance of the word, especially if the letter changed is changed to an eye catching letter like “Q” that completely changes a familiar term (SPARK) to an to an uncommon, unfamiliar one (SPARQ), because the mind has little difficulty in distinguishing them.  E.I. du Pont de Nemours & Co. v. Sunlyra Int’l, Inc. 35 U.S.P.Q. 2d 1987 ((T.T.A.B. 1996).  Conversely, that which is unfamiliar requires close scrutiny and in this way is distinguished. R. Kirkpatrick, Likelihood of Confusion in Trademark Law, § 4.12.

(ii)               A Minor Difference in Appearance Will Preclude Confusion

Even where goods are competing, even minor dissimilarities will preclude confusion.  See Checkpoint Systems, Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270, 60 U.S.P.Q. 2d 1609 (3d Cir. 2001) (no infringement of CHECKPOINT physical asset security products by CHECK POINT computer network security products); CCBN.com, Inc. v. c-­call.com, Inc., 73 F. Supp.2d 106, 53 U.S.P.Q.2d 1132 (D. Mass. 1999) (no infringement of Streetevents.com by StreetFusion.com even though both offered similar stock market information); Heartsprings, Inc. v. Heartspring, Inc., 143 F.3d 550, 46 U.S.P.Q.2d 1481 (10^th  Cir. 1998) (no infringement of HEARTSPRINGS educational material by HEARTSPRING school for disabled children because of different marketing campaigns targeting different consumers); Fossil, Inc. v. Fossil Group, 49 U.S.P.Q.2d 1451 (T.T.A.B. 1998) (no infringement of FOSSIL watches by THE FOSSIL GROUP clocks); Windsor, Inc. v. Intravco Travel Centers, Inc., 799 F. Supp. 1513, 25 U.S.P.Q. 1840 (S.D.N.Y. 1992) (no infringement of INTRAV travel business by INTRAVCO travel business); McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 202 U.S.P.Q. 81 (2d Cir. 1979) (no infringement of DRIZZLER golf jackets by DRIZZLE women’s overcoats and raincoats); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 U.S.P.Q. 693 (C.C.P.A. 1976) (no infringement of TEKTRONIX electronic equipment by DAKTRONICS electrical devices); Sun-Maid Raisin Growers v. Sunaid Food Products, Inc., 356 F.2d 467, 149 U.S.P.Q. 238 (5`^h Cir. 1966) (no infringement of SUN-MAID raisins by SUNAID fruit products); Pump, Inc. v. Collins Management, 746 F.Supp 1159, 15 U.S.P.Q.2d 1716 (D. Mass. 1990) (no infringement of Plaintiff band’s senior mark “PUMP” by Defendant Aerosmith’s album “PUMP”).

Clearly, even nearly identical marks may co-exist without resulting in a likelihood of confusion.  Rite Aid Corp. v. Rite-Wav Discount Corp., 508 F.2d 828, 184 U.S.P.Q. 351 (C.C.P.A. 1975) (no infringement of RITE AID retail drugstore by RITE-WAY retail drugstore); Golden Gate Salami Co. v. Gulf States Paper Corp., 332 F.2d 184, 186, 141 U.S.P.Q. 661 (C.C.P.A. 1964) (E.Z. OPEN PAK not confusing with E.Z. PAK for packaged luncheon meats in a cellophane tear open package); Prime Media, Inc. Y. Primedia, Inc. 33 F.Supp.2d 932 (D. Kan. 1998) (PRIME MEDIA multimedia publisher not confusing with PRIMEDIA magazine publisher.

The marks at issue here are far more dissimilar than the marks at issue in the cited cases because the change from the expected “K” to the unexpected “Q” is immediately noticeable to the average consumer.  See Kirkpatrick, supra.

b.                  The Marks are not Similar in Connotation

If two conflicting marks each have an aura of suggestion, by each suggesting something different to the buyer, it tends to indicate a lack of likelihood of confusion.  McCarthy, § 23.28, Smith v. Tobacco By-Products & Chemical Corp., 243 F.2d 188, 113 U.S.P.Q. 339 (C.C.P.A. 1957).  The marks SPARK and SPARQ are entirely different in meaning.  Nike’s SPARQ line of athletic bags and clothing is the line of Nike goods that is directed to competitive and intensely devoted athletes who seek to measure themselves by undergoing a competition whereby they test five attributes of athleticism.  SPARQ is an acronym standing for Speed, Power, Agility, Reaction, and Quickness.  See the attached Wikipedia definition of SPARQ annexed hereto as Exhibit 1.  When the words of the phrase are descriptive, the acronym is descriptive.  Anheuser-Busch, Inc. v. The Stroh Beverage Company, 750 F.2d 631, 224 U.S.P.Q. 657 (9^th Cir. 1984).  Annexed hereto as Exhibit 2 are pages from the Nike SPARQ website which indicates that the high-end SPARQ products being sold are marketed to the dedicated competitive athlete and the five words of the acronym are suggestive of the use or purpose of the goods – all purpose athletic bags. 

In view of the fact that SPARQ is an acronym and that its meaning is clear to the purchasers of SPARQ branded Nike goods, it is obvious that the connotation of the marks SPARK and SPARQ are entirely different.  SPARK suggests a particle of burning substance or in a colloquial sense a burst of light while SPARQ connotes something entirely different, a series of tests of athleticism.  This difference in connotation will be very apparent to prospective purchasers of the respective goods.  Those using or seeing SPARQ branded articles, likely avid sports minded athletes, would not think that applicant’s SPARK brand diaper bags emanate from the same source or are somehow related to the SPARQ athletic bags due to the entirely different connotation of the marks in addition to the different appearance of the marks.  Applicable law provides that a difference of connotation between two marks alone is sufficient to avoid likelihood of confusion.  Top Tobacco, L.P. v. North Atlantic Operating, Inc., 509 F.3d 380, 85 U.S.P.Q. 1251 (7^th Cir. 2007).  Clearly, this is the case with the entirely different meaning marks SPARK and SPARQ.

c.                   The Conditions Under Which and Buyers to Whom Sales are Made

This Du Pont factor considers “impulse” versus “careful, sophisticated purchasing.”  McCarthy, § 23:79 at 23-220.  Purchaser sophistication is extremely important and often dispositive.  Electronic Design & Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 718, 21 U.S.P.Q. 2d 1388 (Fed. Cir. 1992); Cunningham v. Laser Golf Corp., 222 F.3d 943, 948, 55 U.S.P.Q.2d 1842 (Fed. Cir. 2000).  The sophistication of consumers is one of the DuPont factors.

Exhibit 2 clearly shows the type of sophisticated buyer that the SPARQ line of products is directed to.  They are highly conscious of the athletic criteria which the mark SPARQ connotes and will stop and examine any product with a slightly similar brand to establish whether or not it emanates from the same source as the SPARQ brand, especially if they see the SPARK product in an entirely different settling – a baby and toddler shop or baby and toddler department in a department store.  While diaper bags and athletic bags are not high cost items, the Nike SPARQ brand products are directed to consumers for whom athletic prowess is a priority and in view of the acronym SPARQ they are not going to believe that applicant’s SPARK diaper bags emanate from the same source.  There can be no likelihood of confusion between goods bearing the respective marks.

2.                  The Goods are Unrelated

a.                  The Cited Mark SPARK is Weak and should not be Expanded to Different Goods.

The cited mark SPARQ is weak because it is suggestive, in that it is an acronym for the five part athletic test connoted by the initials SPARQ, which suggests the high performance athletic characteristics of Nike’s bags.  (See Self Insurance Institute of America, Inc. v. Software and Information Industry Association, 208 F.Supp. 2d 1058 (C.D. Calif. 2000).  See Exhibit 2, only cite for examples of the performance related Nike SPARQ branded equipment. 

Descriptive marks are weak.  Enterpreneur Media, Inc. v. Smith, 279 F.3d 1135, 61 U.S.P.Q. 2d 1705 (9^th Cir. 2002).  It is axiomatic that the weaker the mark, the less scope it has in covering differing goods.  AMF Inc. v. Slickcraft Boats, 599 F.2d 341, 204 U.S.P.Q. 808 (9^th Cir. 1979); and J. McCarthy, Trademarks and Unfair Competition (4^th Ed.), §§24.31-24.43.

b.                  The Goods are Different and Not Related.

Applicant has amended the description of goods to limit the description to diaper bags only.  The goods with which applicant’s mark SPARK is used in connection with and those to which the cited mark SPARQ is applied are unrelated.  The cited mark is applied to athletic bags associated with a line of products for use by athletic individuals who do or would like to measure their athletic prowess by the five factor test denoted by the SPARQ acronym.  These goods are sold online in connection with other high performance athletic wear and gear (See Exhibit 2.) and in the sports sections of department stores.

In contrast, applicant’s goods, diaper bags, are sold to parents or parents to be in shops or departments that sell products for use with babies and toddlers.  Thus, the respective goods of applicant and Nike are sold in different channels of commerce, an element of the relatedness of goods analysis.

The examining attorney cited over 65 trademark registrations where it was asserted there was overlap between the previous description of applicant’s goods and athletic bags.  However, only three of the registrations recite descriptions of goods with both diaper bags and athletic bags.  In any event, these registrations are not considered persuasive because there is no evidence that the respective marks are in use in connection with both kinds of goods.

Thus, it is clear that gym bags and diaper bags are not related goods and the weakness of the SPARQ brand is such that even if the respective goods are both bags, the scope of the SPARQ brand should not be extended from one special purpose bag to another. 

3.                  Applicant’s Goods are for Sophisticated Consumers

“In every case turning on likelihood of confusion, it is the duty of the examiner, the Board and this court to find, upon consideration of all of the evidence, whether or not confusion appears likely.”  DuPont, 476 F.2d 1357, 1362, 177 U.S.P.Q. 563, 568 (emphasis in the original).  The U.S. Court of Appeals for the Federal Circuit has held that the sophistication of consumers is an important element in the DuPont analysis.  See Electronic Design & Sales v. Electronic Systems, 954 F.2d 713, 21 U.S.P.Q. 2d 1388, 1392 (Fed. Cir. 1992) where no likelihood of confusion was found where both Opposer and Respondent were using the same mark (EDS) and in part selling to the same customers.

Products for use with and for babies and children are looked at carefully by parents.  Each purchase is usually the result of a careful study.  “Confusion is less likely where goods are purchased after careful consideration,” Magnaflux Corp. v. Sonoflux Corp. 231 F.2d 669, 103 U.S.P.Q. 363, 365 (CCPA 1956) (two marks with the suffix FLUX held not confusingly similar).  See also Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 U.S.P.Q. 2d 1840, 1841 (Fed. Cir. 1990), and McCarthy, § 23.96.

Where goods are unrelated and sold to discriminating customers, even identical marks (not the case here) would not create confusion.  Dynamics Research Corp. v. Langenau Mfg. Co., 704 F.2d 1525, 217 U.S.P.Q. 649 (Fed. Cir. 1983) (DRC vs. DRC).   In re Unilever, 222 U.S.P.Q. 981 (TTAB 1982).  This is true even if the channels of commerce are the same (not the case here), Coopers Indus., Inc. v. Repcoparts USA, Inc., 218 U.S.P.Q. 81 (TTAB 1983).

Even if the customer is aware of applicant’s goods and the bags sold under the cited mark SPARQ, there would be no confusion as to source since the products are used for completely different purposes, and a sophisticated consumer purchasing a product knows what he wants and takes care to obtain it.

4.                  Summary

Applicant believes that there is no likelihood of confusion between applicant’s mark and the cited mark SPARQ because the two marks are different and the respective goods of the applicant and the registrant are not related.  Applicant requests that the examining attorney reconsider his position and pass this application forward to publication.