Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA666474
`ESTTA Tracking number:
`04/14/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91220956
`Defendant
`Sanjay Agarwal
`SANJAY AGARWAL
`AEGIS VISION LIMITED BOUNDARY HOUSE
`LONDON W7 2QE,
`UNITED KINGDOM
`Opposition/Response to Motion
`Sanjay Agarwal
`zlatinzlatev@yahoo.com
`/Sanjay Agarwal/
`04/14/2015
`response three.pdf(186256 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`Sanjay Agarwal
`Aegis Vision Limited
`Boundary House,
`Boston Road,
`London W7 2QE
`United Kingdom
`
`14 April 2015
`
`
`Opposition Number: 91220956
`US Serial Number: 79153014
`Register: Principal
`Mark Type: Trademark
`
`I. Introduction
`
`
`
`Response to the notice of opposition
`
`) was registered on 8 December 2009 in
`The trademark Uunique (reproduced as
`the United Kingdom and soon after that in the European Union. Since its registration it has been used
`actively in the commercial activities in Aegis Vision Limited, including advertising campaigns, public
`presentations, direct sales via special website (www.uunique.uk.com) and other internet retailers. For
`this period of time there were no disputes with any other legal entities with regard to any possible
`conflicts related to usage of the applied-for trademark. Our trademark Uunique is part of our corporate
`identity and we believe that its registration in the applied-for jurisdiction will be in best interest in our
`potential customers therein.
`
`We consider that there is no likelihood of confusion with regard to the applied-for registration trademark
`Uunique and the opposer’s marks. ‘Likelihood of confusion’ is caused only by similarity to previously
`registered mark. There is a likelihood of confusion only if the respective marks and goods or services
`are sufficiently similar. Evaluation of similarity of marks depends on the degree of similarity of the three
`main criteria, taken in context. In order to assess the degree of similarity between the marks concerned,
`the degree of visual, aural, or conceptual similarity between them must be determined and, where
`appropriate, evaluation of the importance to be attached to those different elements should be done,
`taking account of the category of goods or services in question and the circumstances in which they are
`marketed. In such respect none of the opposer’s previous registrations satisfies the requirement of
`similarity simultaneously with regard to the respective marks and goods or services that are offered. The
`products that are offered are not similar to those described in the application of the applicant company.
`Therefore we consider that in none of the above cases there is similarity of the marks and simultaneous
`similarity of the nature of the goods. Conceptual similarity by itself is not of tantamount to confusion.
`Where the earlier mark consists of an image with little imaginative content that in itself does not bear
`significant meaning beyond the words that are used, the mere fact that the two marks are conceptually
`similar is not in itself sufficient to give rise to a likelihood of confusion.
`
`II. Similarity of the Marks
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`The only common element of the applied-for marks and the opposer’s marks is the word ‘unique’. This
`hypothetically can only lead to association of these marks, but the other elements that distinguish them
`prevent any similarity. The mere association of two marks does not necessarily lead to similarity of the
`marks and therefore cannot in any cases cause ‘confusion’. The mere ‘association’ of two marks by
`virtue of their ‘analogous semantic content’ is insufficient ground for concluding that there is ‘similarity’
`or even ‘confusion’ between them. ‘Likelihood of association’ is not an alternative to ‘likelihood of
`confusion’ but a subcategory of it. ‘Association’ of marks is not therefore an infringement or a bar to
`registration in the absence of confusion. The fact that some of the marks that are enlisted in the
`opposition contain the word ‘unique’ does not in itself lead to confusion. Even though the marks contain
`the word ‘unique’, the opposer does not prove that this leads at least to association of the marks. The
`availability of common word in two marks is not considered to be hindering condition for their
`registration as it is not leading to association of the marks or to further consequences like similarity.
`This can be best demonstrated by the fact that so many marks having the word ‘unique’ have already
`been registered in the United States and no grounds for specific treatment of the mark Uunique can be
`substantiated on this ground.
`
`The opposer allegations of likelihood of confusion are not proved in any of its elements. The connotation
`of the applied-for mark is opposite to the one that can be implied from the other marks: the presence of
`the first letter ‘U’ in the mark specifies the uniqueness of the consumers rather than the uniqueness of
`the products. Therefore there is even no semantic similarity between the applied-for mark and the marks
`in the opposition. Without any similarity of the marks no conclusion about likelihood of confusion can
`be drawn.
`
`Furthermore, comparison of marks should be made from the standpoint of the average relevant
`consumer. Global appreciation of marks must be based on the overall impression given by them, bearing
`in mind their distinctive and dominant components. We think that the perception of marks in the mind
`of the average consumer of the relevant goods or services plays a decisive role in the global appreciation
`of the likelihood of confusion, since the average consumer normally perceives a mark as a whole and
`does not proceed to analyse its various elements. The applied-for mark in that respect has no similar
`elements in its global appreciation with the other marks enlisted in the opposition. Its graphical and
`semantic perception is generally different than those of the other marks where even without knowledge
`of their additional elements like the relatedness of goods, imply different visual perception.
`
`
`By the doctrine of the impression conveyed, where it is necessary to determine the similarity of an earlier
`mark and a later mark that comprises the earlier mark together with another integer such as the company
`name or house mark of the proprietor of the later sign, one should consider the overall impression
`conveyed by each of the latter two signs in order to ascertain whether the component shared by the two
`marks characterizes the latter composite mark to the extent that the other components are largely
`secondary to its overall impression. Once this comparison is made, no likelihood of confusion will be
`said to exist where that common component merely contributes to the overall impression of the later
`sign, regardless of whether the common component still has an independent distinctive role in the
`composite sign. In this case the earlier mark (and thus the common component of both parties’ marks)
`was the word UNIQUE. The doctrine dictates that, when UNIQUE is not the dominant element of the
`latter sign (UNIQUE PHOTO, UNIQUE TOTS etc.) the composite sign could not be said to be
`confusingly similar to the earlier mark.
`
`The trademark ‘UNIQUE’ contains one single adjective which meaning can only be related to the
`products that are sold. Being an adjective, its function is just to provide additional meaning to the noun
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`to which it is used. As in the trademark there is no noun, the nearest possible object to which this word
`can be associated are the products sold under the trademark. In all other marks the word ‘unique’ appears
`just as an adjective whose function is to provide additional meaning to the noun which is bearing the
`main semantic burden and therefore defines the general connotation of the mark. In both cases the
`distinctive and dominant component will be the noun and the adjective should be merely supplementing
`the main meaning. The applied-for trademark contains the words “UUunique” which stands for “You
`are unique” and in that respect the adjective is related to the qualities of the recipient of the mark rather
`than the products that are offered.
`
`Therefore we consider that the applied-for trademark is not similar to any of the previously registered
`marks as there is no similarity in its appearance, sound, connotation, and commercial impression. With
`regard to such conclusion we are asking that the opposition should be dismissed.
`
`III. Relatedness of the Goods
`
`The opposer states that the goods and services that are offered under its trademarks. However no
`evidence in this respect is provided. Our goods neither move in similar trade channels, nor they are
`legally identical or closely related to registrants’ goods and therefore there is no likelihood of confusion
`as to the source of goods. There is no registrant that offers similar aggregation of goods that we offer
`under the applied-for trade mark. Moreover, there is not even a single product overlap with some of the
`opposer’s marks. Therefore it cannot be concluded that the products are either moving in similar trade
`channels or there is any single element of identity between the applied-for mark and the opposer’s marks.
`The fact that all products are in international class 9 does not in any case mean that the products are
`identical. The opposer does not substantiate its claim about similarity of the products but merely
`mentions that its products are in international class 9 too. If it is assumed that in all cases where the
`products are merely within one international class there is similarity of the marks, this would lead to
`significant restriction of the principles of the free trade and market economy and would allow for
`registration of only one trademark per class. On the contrary, the requirement for identical or closely
`related to goods is applied only in cases where (i) there is similarity in the marks and (ii) the aggregation
`of goods is identical. For none of the enlisted previously registered marks these conditions, even if taken
`separately, are met.
`
`Our understanding is that likelihood of confusion should be appreciated globally, taking all relevant
`factors into account. The likelihood of confusion should depend on numerous elements and, in
`particular, on the recognition of the trade mark on the market, of the association which can be made with
`the used or registered sign, of the degree of similarity between the trade mark and the sign and between
`the relevant goods or services. The likelihood of confusion must therefore be appreciated globally,
`taking into account all factors relevant to the circumstances of each case. In that respect our trademark
`has been registered in various jurisdictions, including European Union and the United Kingdom, where
`we are well-known on the market with our products sold under the applied-for trade mark. Our products
`are also sold in Japan, Middle East, South Africa and Australia, where we are using UUnique trademark.
`In addition to that our trademark is not unknown to the consumers in the United States as well. The
`trademark UUnique was represented at CES 2015 organised by our US distributor Brightstar in Las
`Vegas – one of the biggest consumer electronic shows in the world. The applied-for trademark was also
`advertised in few leading American newspapers, including New York Times.
`
`Commercial Impression is one of the four factors (along with appearance, sound and meaning that were
`discussed above) considered when comparing trademarks for similarities. Once a consumer has had an
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`opportunity to encounter the trademark with its goods or services in the market place and it has observed
`the appearance of the mark, perhaps heard the sound of the mark, and considered the meaning of the
`mark, it now has developed a “commercial impression” of the mark along with the goods or services.
`This main image or idea that has developed is considered to be the commercial impression or consumer
`impression and it should weigh as part of the likelihood of confusion analysis. In that respect UUnique
`trademark is significantly distinctive compared to the trademarks that the opposer represents.
`
`We think that the distinctiveness of the mark should be construed in its regular meaning. When
`considering the distinctive character of the earlier mark for the purposes of assessing the degree of
`protection against a similar mark to which it is entitled, we believe that the standard of distinctiveness
`is that employed in determining whether a trade mark has the capacity to identify the goods or services
`for which it is registered as coming from a single origin. For the purpose of registration, the criterion is
`one of whether an applied-for sign has the necessary degree of distinctiveness to enable it to identify
`goods or services as coming from a single origin, not that of how much surplus distinctiveness there
`exists over the minimal level at which a sign becomes sufficiently distinctive to be registered. Every
`trade mark that is the basis upon which opposition or infringement proceedings are brought is a mark
`which has already satisfied, at the point of registration, these criteria of distinctiveness.
`
`However, everything that indicates distinctiveness for registration purposes is now to be taken into
`account again: inherent characteristics such as the presence or absence of descriptors; market share;
`length and geographical spread of use; the amount of money spent in promoting the mark; the proportion
`of the relevant consuming public that identifies it as a trade mark; and so on. In that respect the goods
`that are intended to be sold under the applied-for mark are in no aspect identical to any of the opposer’s
`ones. Any single product and the aggregation of all goods attaches different character of the goods that
`are to be offered under the applied-for mark. Therefore UUnique trademark should be subject to
`registration as requested as it in no aspect represents any form of similarity with the products related to
`the opposer’s trademarks.
`
`IV. Conclusion
`
`From the overall visual and semantic appearance of the applied-for registration mark there is no
`similarity to any of the opposer’a marks. Moreover, none of the opposer’s goods are identical to those
`that are to be offered under the applied-for mark. Therefore we consider that the opposition should be
`quashed as there is no likelihood of confusion with the applied-for trademark. The trademark Uunique
`was registered about 5 years ago in the United Kingdom and European Union and since then it has
`become part of the corporate identity of Aegis Vision Limited as it is invariably and actively used in its
`all commercial activities and it is widely associated with the products that it sells.
`
`By: /Sanjay Agarwal/
`Sanjay Agarwal