IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`,__‘-r- .
`
`_J
`
`.
`
`HELEN OF TROY LIMITED
`Opposer,
`
`v.
`CONAIRCIP, INC.
`Applicant.
`
`)
`i
`i
`i
`3
`
`Opposition No. 91160544
`
`mg
`
`09-01-2006
`
`. an
`u.s. Patent 3. TMOtcITM mu FIGDIDI 32
`
`APPLICAN'l"S BRIEF IN SUPPORT OF TRADEMARK APPROVAL
`
`Introduction
`
`Applicant Conair Corporation, successor-in-interest to ConairC]P, Inc., hereby submits
`
`this brief in support of its application for registration of the trademark “CERAMIC PULSE,”
`
`application Serial No. 78/ 133,197. As more fully set forth below, Applicant believes that its
`
`application for registration should be approved, as Applicant's mark is clearly distinguishable
`
`from Opposer’s “PULSE TECHNOLOGY” mark, there is no evidence of consumer confusion
`
`between the marks, and Opposer’s mark is a descriptive and generic term, notwithstanding its
`
`registration. For these reasons, registration of “CERAMIC PULSE” will not cause consumer
`
`confusion or dilute Opposer’s “PULSE TECHNOLOGY” mark.
`
`Opposer’s Mark and Applicant’s Mark Are Clearly Different
`
`Both Applicant’s “CERAMIC PULSE” mark and Opposer’s “PULSE TECHNOLOGY”
`
`mark are unitary marks and should be viewed as such.
`
`In their entirety, the appearance and
`
`sound of the marks are markedly different, as there is a major differentiation in the phonetic flow
`
`of “CERAMIC PULSE” and “PULSE TECHNOLOGY” when the marks are read and spoken.
`
`1
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`,__‘-r- .
`
`_J
`
`.
`
`HELEN OF TROY LIMITED
`Opposer,
`
`v.
`CONAIRCIP, INC.
`Applicant.
`
`)
`i
`i
`i
`3
`
`Opposition No. 91160544
`
`mg
`
`09-01-2006
`
`. an
`u.s. Patent 3. TMOtcITM mu FIGDIDI 32
`
`APPLICAN'l"S BRIEF IN SUPPORT OF TRADEMARK APPROVAL
`
`Introduction
`
`Applicant Conair Corporation, successor-in-interest to ConairC]P, Inc., hereby submits
`
`this brief in support of its application for registration of the trademark “CERAMIC PULSE,”
`
`application Serial No. 78/ 133,197. As more fully set forth below, Applicant believes that its
`
`application for registration should be approved, as Applicant's mark is clearly distinguishable
`
`from Opposer’s “PULSE TECHNOLOGY” mark, there is no evidence of consumer confusion
`
`between the marks, and Opposer’s mark is a descriptive and generic term, notwithstanding its
`
`registration. For these reasons, registration of “CERAMIC PULSE” will not cause consumer
`
`confusion or dilute Opposer’s “PULSE TECHNOLOGY” mark.
`
`Opposer’s Mark and Applicant’s Mark Are Clearly Different
`
`Both Applicant’s “CERAMIC PULSE” mark and Opposer’s “PULSE TECHNOLOGY”
`
`mark are unitary marks and should be viewed as such.
`
`In their entirety, the appearance and
`
`sound of the marks are markedly different, as there is a major differentiation in the phonetic flow
`
`of “CERAMIC PULSE” and “PULSE TECHNOLOGY” when the marks are read and spoken.
`
`1
`
`
`
`Clearly, a reasonable person would be able to ascertain the difference between these two marks,
`
`and it is Applicant’s contention that there is no likelihood of consumer confusion between the
`
`marks.
`
`Opposer argues in its brief that Applicant’s mark cannot be distinguished from Opposer’s
`
`mark because Opposer markets products using the word “ceramic” concurrently with its “PULSE
`
`TECHNOLOGY” mark. Opposer’s argument is without merit, as Opposer is using the word
`
`“ceramic” in a strictly descriptive way to describe a product feature, in contrast to the suggestive
`
`nature of Applicant’s mark.
`
`Taken as a whole, Applicant’s mark is clearly distinguishable from Opposer’s mark in
`
`sound and appearance. Consequently, the fact that both marks may be used in conjunction with
`
`hair styling appliances and may appear in similar trade channels is not a dispositive factor.
`
`There Is No Evidence Of Consumer Confusion Between the Two Marks
`
`Applicant has been using its “CERAMIC PULSE” mark since approximately June 2002,
`
`so for over four (4) years the marks “CERAMIC PULSE” and “PULSE TECHNOLOGY” have
`
`co-existed in the marketplace. During this period, Applicant is not aware of any evidence of
`
`consumer confusion with respect to the source of the goods bearing the marks, nor has Opposer
`
`alleged any actual confusion.
`
`In addition, the documents attached as Exhibit 2 to Applicant’s Response to Opposer’s
`
`First Request for Production of Documents indicate that Applicant’s “CERAMIC PULSE” mark
`
`is used on the packaging of the products in conjunction with other, more prominent marks of
`
`
`
`Applicant identifying the product’s primary brand and/or trade name (i.,e, “Jilbere de Paris"'‘’’,
`
`“Ceramic ToolsTM”, “Babyliss®PRO”). Under these circumstances, a consumer can readily
`
`ascertain the differences between Applicant and Opposer’s product lines.
`
`Opposer has not demonstrated any injury, damage or actual harm to Opposer’s business
`
`since Applicant introduced products bearing its “CERAMIC PULSE” mark into the marketplace.
`
`Given that Opposer apparently has been using its “PULSE TECHNOLOGY” mark since March
`
`1995 (Opposer’s Brief, p. 2), consumers would readily know the difference between Opposer’s
`
`products and Applicant’s products.
`
`Opposer’s Mark Is A Generic Term
`
`Notwithstanding its registration, there is nothing inherently protectible about Opposer’s
`
`mark, as it is merely a descriptive and generic term used to describe a quality, feature or function
`
`of Opposer’s products. “Pulse technology’ is a term that describes the engineering concept of
`
`proportional power control, a common type of electronic power regulation used to regulate
`
`temperature but is employed in a variety of other applications as well. An intemet search of
`
`“pulse technology” reveals other companies touting the benefits of their own “pulse technology”
`
`techniques and applications.
`
`It should be noted that Opposer’s mark was initially refused registration on descriptive
`
`grounds. The USPTO in its Office Action asked Opposer to indicate whether the term “pulse
`
`technology” had any significance in the relevant
`
`trade or industry, and whether “pulse
`
`technology” is used in the goods. Opposer stated in response that the only significance was as a
`
`trademark to identify the goods and type of heat controller used, without mentioning the
`
`significance of the term as an engineering concept that is utilized in a variety of applications.
`
`
`
`As confirmed by Opposer’s Response to Applicant’s Interrogatory No. 10, as well as the
`
`marketing materials attached as Exhibit A to Opposer’s brief, Opposer utilizes the following
`
`language on the packaging of its products: “with Pulse Technology®,” “features Pulse
`
`Techr1ology®,” or “ Pulse Technology®,” (emphasis added), all presumably to call
`
`attention to the temperature control feature within the product.
`
`Under these circumstances, App1icant’s mark should proceed to registration, as Opposer
`
`should not have the exclusive right to utilize the term “pulse” in connection with the products
`
`covered by its registration given the descriptive and generic nature of Opposer’s mark.
`
`Conclusion
`
`Applicant’s “CERAMIC PULSE” mark and Opposer’s “PULSE TECHNOLOGY” mark
`
`are clearly different and Opposer has not proven consumer confusion or dilution in value of its
`
`“PULSE TECHNOLOGY” mark since the entry of Applicant’s “CERAMIC PULSE” mark into
`
`the marketplace. Therefore, for the foregoing reasons, Applicant respectfully requests that the
`
`registration of its “CERAMIC PULSE” mark be approved.
`
`Respectfully submitted,
`
`6-(
`
`Richard A. Margul es
`Vice President & General Counsel
`
`Conair Corporation
`1 Cummings Point Road
`Stamford CT 06902
`
`(203) 351-9088
`Richard Margulies@,conair.com
`
`Date:
`
`06
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing Applicant’s Brief In Support of
`Trademark Approval was served on Counsel for Opposer, by regular mail, postage prepaid, this
`15‘ day of September, 2006, as follows:
`
`Stewart L. Gitler, Esq.
`Hoffman, Wasson & Gitler, PC
`
`2461 South Clark Street, Suite 522
`Arlington, VA 22202
`
`Date:
`
`"
`
`(QL
`
`(
`
`Richard A. Marguli s
`Vice President & General Counsel
`
`Conair Corporation
`1 Cummings Point Road
`Stamford CT 06902
`
`(203) 351-9088
`Richard MarguIies@conair.com
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