Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1100086

Filing date: 12/07/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 92073245

Party DefendantHangzhou Johnson Tech Co., Ltd

CorrespondenceAddress

JONATHAN G MORTONHANGZHOU JOHNSON TECH CO LTD1395 BRICKELL DRIVE SUITE 900MIAMI, FL 33131UNITED STATESPrimary Email: 75213932@qq.comSecondary Email(s): jmlawchina@gmail.com305-764-9179

Submission Opposition/Response to Motion

Filer's Name Jacob Ong

Filer's email jacob@ongslaw.com, jacobong@gmail.com

Signature /Jacob Ong/

Date 12/07/2020

Attachments registrant_reply_opposition.pdf(93334 bytes )EXHIBIT_A.pdf(3455030 bytes )exhibit_B.pdf(607915 bytes )v2_20201204_Registrant_Memo_of_law.pdf(600368 bytes )

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

HANGZHOU ZHAOHU TECHNOLOGY

CO. LTD.

Petitioner

v.

HANGZHOU JOHNSON TECH CO.,

LTD

Registrant

Opposition Number: 92073245

Registration No: 5,744,318

Mark: PROHEAR

Registered: May 7, 2019

REGISTRANT’S RESPONSE IN OPPOSITION TO PETITIONER’S MOTION FOR

SUMMARY JUDGMENT UNDER FEDERAL RULE OF CIVIL PROCEDURE 56

Registrant Hangzhou Johnson Tech Co., Ltd, (hereinafter “Registrant”), by and through

its attorneys, hereby provides its Response in Opposition to the Motion for Summary Judgment

Under Federal Rule of Civil Procedure 56 (the “Motion”) filed by Hangzhou Zhaohu

Technology Co. Ltd, (hereinafter “Petitioner”). In support thereof, Registrant submits

Registrant’s Memorandum of Law. In addition, pursuant to T.B.M.P. § 528.03 and 37 C.F.R. §

2.127(d), Registrant requests that the Board suspend all deadlines pending a decision on the

Motion.

Dated: December 7, 2020 /Jacob Ong/

Jacob Ong

Ongs Law Firm, PLLC

PO Box 403

Lehi, UT 84043

(801) 404-4816

jacob@ongslaw.com

Attorney for Registrant

2

CERTIFICATE OF SERVICE

I hereby certify that a true and accurate copy of the foregoing REGISTRANT’S

RESPONSE IN OPPOSITION TO PETITIONER’S MOTION FOR SUMMARY

JUDGMENT UNDER FEDERAL RULE OF CIVIL PROCEDURE 56 has been served on

counsel for Petitioner by forwarding said copy on December 7, 2020 via email to:

Shiyong Ye

REID & WISE, LLC

250 West 34th Street

One Penn Plaza, Suite 2015

New York, NY 10119

Tel: (212) 858-9978

Fax: (516) 821-8978

sye@reidwise.com

syetm@reidwise.com

by /Jacob Ong/

December 7, 2020

EXHIBIT A

URL https://www.collinsdictionary.com/dictionary/english/prot accessed on Dec. 1, 2020

URL https://www.merriam-webster.com/dictionary/Prot accessed on Dec. 1, 2020

URL https://www.dictionary.com/browse/prot?s=t accessed on Dec. 1, 2020

TextText

URL https://www.urbandictionary.com/define.php?term=Prot on Dec. 1, 2020

URL https://www.thefreedictionary.com/prot accessed on Dec. 1, 2020

URL https://www.google.com/search?

source=hp&ei=HgrHX9CdAa6S0PEPz9W-2Aw&q=prot%3F&oq=p

rot%3F&gs_lcp=CgZwc3ktYWIQAzILCAAQsQMQgwEQyQMyC

AgAELEDEIMBMgUIABCxAzIICAAQsQMQgwEyCAgAELEDE

IMBMggIABCxAxCDATIICAAQsQMQgwEyCAgAELEDEIMBM

ggIABCxAxCDATICCAA6AgguOgsILhCxAxDHARCjAjoICC4Qx

wEQowI6BQguEJMCOggILhCxAxCDAToICC4QxwEQrwE6Dggu

EMcBEKMCEMkDEJMCOgUILhCxA1D7C1iFH2DdIWgAcAB4A

IABcIgB6QOSAQM0LjGYAQCgAQGqAQdnd3Mtd2l6&sclient=ps

y-ab&ved=0ahUKEwjQpILRra7tAhUuCTQIHc-

qD8sQ4dUDCAk&uact=5 accessed on Dec. 1, 2020

Exhibit B

SINCE 1828

GAMESBROWSE THESAURUSWORD OF THE DAYWORDS AT PLAY

LOG INREGISTER

settingsSAVED WORDS

pro

dictionarythesaurus

view recents

Login or RegisterHello,

GAMESBROWSE THESAURUSWORD OF THE DAYWORDS AT PLAYSETTINGS

SAVED WORDS view recents

pronoun

URL https://www.merriam-webster.com/dictionary/pro (accessed on Dec. 7, 2020)

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Log In \ prō \plural pros

Definition of pro (Entry 1 of 7)

1 : an argument or evidence in affirmation an appraisal of the pros and cons2 : the affirmative side or one holding it

pro

adverb

Definition of pro (Entry 2 of 7)

: on the affirmative side : in affirmation much has been written pro and con

pro

preposition

Definition of pro (Entry 3 of 7)

: in favor of : for

pro

noun or adjective

Definition of pro (Entry 4 of 7)

: professional

PRO

abbreviation

Definition of PRO (Entry 5 of 7)

public relations officer

pro-

prefix (1)

Definition of pro- (Entry 6 of 7)

URL https://www.merriam-webster.com/dictionary/pro (accessed on Dec. 7, 2020)

1a : earlier than : prior to : before prothalamionb : rudimentary : prot- pronucleusc : precursory proinsulin2a : located in front of or at the front of : anterior to procephalicb : front : anterior prothorax3 : projecting prognathous

pro-

prefix (2)

Definition of pro- (Entry 7 of 7)

1 : taking the place of : substituting for procathedral procaine2 : favoring : supporting : championing pro-American

Examples of pro in a SentenceNoun He is a pro when it comes to household repairs. She handled that tricky situation like an old pro.Recent Examples on the Web: Noun The third-year pro is having the best season of his Colts career, posting 3.5 sacks and six quarterback hits despite playing just 33.9 percent of thesnaps so far. — Joel A. Erickson, The Indianapolis Star, "Insider: 21 things to watch for as Colts take on Titans for control of AFC South," 28 Nov. 2020 Kiser, a third-year pro, has ateam-best 77 tackles for a defense that ranks No. 1 in the NFL, allowing the fewest yards per game. — Los Angeles Times, "With Micah Kiser sidelined, Troy Reeder tackles middle ofRams’ defense," 26 Nov. 2020

These example sentences are selected automatically from various online news sources to reflect current usage of the word 'pro.' Views expressed in the examples do not represent theopinion of Merriam-Webster or its editors. Send us feedback.

See More

First Known Use of proNoun

15th century, in the meaning defined at sense 1

Adverb

15th century, in the meaning defined above

Preposition

1817, in the meaning defined above

Noun or adjective

1856, in the meaning defined above

History and Etymology for proNoun

URL https://www.merriam-webster.com/dictionary/pro (accessed on Dec. 7, 2020)

Middle English, from Latin, preposition, for — more at for

Adverb

pro-

Preposition

Latin

Prefix (1)

New Latin, from Latin, from Greek, before, forward, forth, for, from pro — more at for

Prefix (2)

Latin pro in front of, before, for, forward — more at for

Keep scrolling for more

Learn More about proShare pro

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Time Traveler for pro

The first known use of pro was in the 15th centurySee more words from the same century

From the Editors at Merriam-Webster

Pro-Verb: The Complement to the Pronoun

Pro-Verb: The Complement to the PronounThe pro-verb, like the pronoun, is a meaningful substitute.

Dictionary Entries near pro

URL https://www.merriam-webster.com/dictionary/pro (accessed on Dec. 7, 2020)

Pr Man

prn

prntr

pro

PRO

pro-

proa

See More Nearby Entries 

Phrases Related to propro and con

pros and cons

the pros

turn pro

Statistics for proLast Updated

30 Nov 2020

Look-up Popularity

Top 1% of words

Cite this Entry

“Pro.” Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam-webster.com/dictionary/pro. Accessed 7 Dec. 2020.

Keep scrolling for more

More Definitions for pro

pro

adverb

Style: MLA

URL https://www.merriam-webster.com/dictionary/pro (accessed on Dec. 7, 2020)

English Language Learners Definition of pro (Entry 1 of 2)

: in favor of something

pro

adjective

English Language Learners Definition of pro (Entry 2 of 2)

: paid to participate in a sport or activity: done by people who are paid to play or compete in a sport or activity

See the full definition for pro in the English Language Learners Dictionary

pro

noun\ prō \plural pros

Kids Definition of pro (Entry 1 of 4)

: an argument or evidence in favor of something We weighed the pros and cons of wind power.

pro

adverb

Kids Definition of pro (Entry 2 of 4)

: in favor of something We heard arguments pro and con.

pro

noun or adjective

Kids Definition of pro (Entry 3 of 4)

: professional pro athletes He sank the putt like a pro.

pro-

prefix

Kids Definition of pro-

URL https://www.merriam-webster.com/dictionary/pro (accessed on Dec. 7, 2020)

: approving : in favor of

Pro

abbreviation

Medical Definition of Pro (Entry 1 of 2)

proline; prolyl

PRO

abbreviation

Medical Definition of PRO (Entry 2 of 2)

peer review organization

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Nglish: Translation of pro for Spanish Speakers

Britannica English: Translation of pro for Arabic Speakers

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What made you want to look up pro? Please tel l us where you read or heard it ( including the quote, if possible).

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lucrative

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URL https://www.merriam-webster.com/dictionary/pro (accessed on Dec. 7, 2020)

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

HANGZHOU ZHAOHU TECHNOLOGY

CO. LTD.

Petitioner

v.

HANGZHOU JOHNSON TECH CO.,

LTD

Registrant

Opposition Number: 92073245

Registration No: 5,744,318

Mark: PROHEAR

Registered: May 7, 2019

REGISTRANT’S MEMORANDUM OF LAW IN SUPPORT OF ITS RESPONSE IN

OPPOSITION TO PETITIONER’S MOTION FOR SUMMARY JUDGMENT UNDER

FEDERAL RULE OF CIVIL PROCEDURE 56

2

I. Introduction

Petitioner has submitted a Motion for Summary Judgment under Federal Rule of Civil

Procedure 56 (the “Motion”) based on Petitioner’s assumption that there is no triable issue of

material fact on the issue of likelihood of confusion. Petitioner offers no survey or other

supporting evidence showing a likelihood of confusion. Petitioner’s evidence, on its face, does

not support a finding of likelihood of confusion.

This proceeding involves two distinct trademarks used in conjunction with a wide variety

of goods in multiple classifications. Petitioner uses the PROTEAR mark for: 1) Anti-theft locks

specially adapted to personal electronic devices, namely, laptops; 2) Chargers for electric

batteries; 3) Computer peripheral devices; 4) Couplings, electric; 5) Data processing apparatus;

6) Earphone accessories, namely, earphone cushions, earphone pads, cord management systems,

earphone cases, and earphone extension cords; 7) Earphones; 8) Earphones and headphones; 9)

Electric couplings; 10) Galvanic cells; 11) Headphones; 12) Loudspeakers; 13) Microphones;

14) Radios; 15) Sound transmitting apparatus; 16) Wires, electric; 17) Dust proof plugs for

earphone jacks; 18) Electric navigational instruments; and, 19) Electrical plugs and sockets, all

of which are in international class 009.

Registrant uses the PROHEAR mark for 1) Audio headphones; 2) Audio recorders; 3)

Audio speaker enclosures; 4) Beeper carrying cases; 5) Blank integrated circuit cards for

recording, transmitting, and reproducing sound and images in mobile telephone services; 6) CD

players; 7) Computer programs for processing digital music files; 8) Converters, electric; 9)

Electric bark control dog collars; 10) Electric and electronic effects units for musical

instruments; 11) Electrical annunciators; 12) Fitted plastic films known as skins for covering and

providing a scratch proof barrier or protection for electronic devices, namely, 13) MP3 players,

3

mobile telephones, smart telephones, digital cameras, global positioning systems and personal

digital assistants; 14) Headsets for mobile telephones; 15) Internet radios; 16) Lenses for welding

helmets; 17) Microphone cables; 18) Microphones; 19) Protection masks; 20) Protective carrying

cases for portable music players; 21) Protective ear covering shields; 22) Protective helmets; 23)

Protective spectacles; 24) Radio transmitters; 25) Remote control transmitter for radio-controlled

devices; 26) Speaker microphones; 27) Sports equipment for boxing and martial arts, namely,

protective helmets; 28) Stands for digital electronic devices, namely, cell phones, MP3 players,

personal digital assistants; 29) Telescopic sights; 30) USB charging ports; and 31) Welding

masks, all of which are in international class 009.

Petitioner’s arguments are centered largely on three elements of the test for determining

the likelihood of confusion, set out in In Re E. I. DuPont de Nemours, 76 F.2d 1357 (C.C.P.A.

1973): similarity of goods, similarity of marks, and similarity in the channels of trade. The

evidence supplied by Petitioner relative to the alleged similarity of the marks falls short of the

standard required to adequately demonstrate a likelihood of confusion sufficient to sustain a

Motion for Summary Judgment, when all facts are construed in favor of Registrant as the non-

moving party.

The Office properly recognized that there was no likelihood of confusion and, while not

dispositive, issued U.S. Registration No. 5,744,318 for the stylized mark PROHEAR

(Registrant’s Mark”), in spite of Petitioner’s prior U.S. Registration No. 5,241,109 for the

standard character mark PROTEAR (“Petitioner’s Mark”) (emphasis added). On the element of

actual confusion, Petitioner has failed to provide a scintilla of evidence of actual consumer

confusion. The record Petitioner has placed before the Board cannot support any finding of

actual confusion and, based on the totality of the factors set out in In Re E. I. DuPont de

4

Nemours, a finding of likelihood of confusion similarly cannot be sustained, when all facts are

construed in favor of Registrant as the non-moving party.

Accordingly, and based on the evidence presented by Petitioner in the Motion for

Summary Judgment and by Registrant in this Cancellation Proceeding, the Motion should be

denied.

II. Statement of Material Facts

In the Motion, Petitioner provided a list entitled “Statement of Material Facts Not in

Dispute” and these facts, numbered as presented in the Motion, are as indicated below.

1. Petitioner is the owner of U.S. Registration No. 5,241,109 (“Petitioner’s

Registration”) for use of Petitioner’s Mark with Petitioner’s Goods.

2. Registrant is the owner of U.S. Registration No. 5,744,318 (“Registrant’s

Registration”) for use of Registrant’s Mark with Registrant’s Goods.

3. On April 27, 2020, Petitioner’s (sic) served Petitioner’s Rule 26(a)(1) Initial

Disclosures on Registrant.

4. Petitioner filed this motion for summary judgment before the November 8, 2020

deadline for pretrial disclosures for the first testimony period.

5. Petitioner has continuously used the PROTEAR mark with Petitioner’s Goods

since at least as early as August 19, 2011 to the present.

6. Registrant responded that Registrant’s Mark is a brand founded by Registrant in

2018.

5

7. Registrant responded that the date on which it offered, sold or provided

Registrant’s Goods under or in connection with Registrant’s Mark was May 27, 2018.

8. Petitioner is a major manufacturer of personal protective equipment in Hangzhou,

Zhejiang Province, China.

9. Registrant is a company committed to the development and production of hearing

protection equipment in Hangzhou, Zhejiang Province, China.

10. Not included in Motion.

11. Petitioner’s U.S. Registration is for use of Petitioner’s Mark with Petitioner’s

Goods.

12. Petitioner’s Mark is a standard character mark with a wording of “PROTEAR”.

13. Petitioner’s Mark “PROTEAR” is the abbreviation of “PROTECTION for EAR”

and means to protect your ears. Registrant disputes this fact and does not concede Petitioner’s

assertion as an undisputed material fact.

14. Petitioner sells Petitioner’s Goods in connection with Petitioner’s Mark to its

customers through the online shopping website Amazon.com.

15. Petitioner sells Petitioner’s Goods in connection with Petitioner’s Mark mainly to

customers who are hunting lovers, factory workers, construction workers and gardeners.

16. Registrant’s U.S. Registration is for use of Registrant’s Mark with Registrant’s

Goods.

17. Registrant’s Mark is a stylized mark with a wording of “PROHEAR”.

6

18. Registrant’s Mark “PROHEAR” is the abbreviation of the brand slogan “Protect

Your Hearing”, which is our goal to protect our users’ hearing.

19. Registrant responded that it has offered the following items for sale, sold, or

provided under or in connection with the Registrant Mark in the United States: safety ear muffs,

hunting & shooting earmuffs, ear plugs, ear pads, cases, protective ear covering shields,

protective spectacles, protection masks, audio headphones, headsets for mobile telephones and

protective helmets.

20. Registrant responded that the channels of trade through which it has offered for

sale, sold, or intends to offer for sale or sell goods or services under or in connection with

Registrant’s Mark include the Amazon.com e-commerce platform, exhibitions at Shotshow and

the NSC, the official website (www.zh-safe.com) and the Alibaba e-commerce platform

(www.zh-safety.com).

21. Registrant responded that its customer groups include shooting enthusiasts,

hunting enthusiasts (or hunters), military, police, workers in a noisy working environment, lawn

mower enthusiasts, teenagers, autistic patients and sports spectators.

22. There are no limitations as to the consumers or channels of trade in Petitioner’s

U.S. Registration No. 5,241,109.

23. There are no limitations as to the consumers or channels of trade in Registrant’s

U.S. Registration No. 5,744,318.

III. Arguments

A. Standard for Summary Judgment

7

Summary judgment is only appropriate where there are no genuine issues of material fact

in dispute, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c). The

Board does not resolve issues of fact on summary judgment; it only determines whether a

genuine issue exists. Meyers v. Brooks Shoe Inc., 912 F.2d 1459, 1461, 16 U.S.P.Q.2d 1055,

1056 (Fed. Cir. 1990), overruled on other grounds by A.C. Aukerman Co. v. R.L. Chaides

Constr. Co., 960 F.2d 1020, 1038-39, 22 U.S.P.Q.2d 1321, 1333 (Fed. Cir. 1992).

Petitioner, as the party moving for summary judgment, has the burden of demonstrating

the absence of any genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317,

322-37 (1986). To prevail on its motion, Petitioner must establish that there is no genuine issue

of fact regarding the issues at hand by clear and convincing evidence. See H. Marvin Ginn Corp.

v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).

For its part, in order to have the opportunity to submit proofs at trial, Registrant need only

show that, on the evidence of record, a reasonable fact finder could resolve the matter in its

favor. See Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 850, 23 U.S.P.Q.2d

1471, 1472-73 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 202, 22

U.S.P.Q.2d 1542, 1544 (Fed. Cir. 1992); see also Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc.,

220 U.S.P.Q. 740, 742 (T.T.A.B. 1983) (on a summary judgment motion, “nonmoving party is

not required to adduce evidence sufficient to prove its case . . . “; it need only show “that there is

a genuine issue as to a material fact and that, therefore, there is a need for a trial”). The evidence

should be viewed in a light most favorable to Registrant as the nonmovant, and all justifiable

inferences should be drawn in Registrant’s favor. See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987

F.2d 766, 767, 25 U.S.P.Q.2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 970 F.2d at 850, 23

U.S.P.Q.2d at 1472.

8

B. The Marks Must be Considered in Their Entirety

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), the Court of Customs and Patent Appeals (CCPA) announced thirteen factors relevant for

determining likelihood of confusion under §2(d). These factors are:

1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound,

connotation and commercial impression.

2. The similarity or dissimilarity and nature of the goods or services as described in an

application or registration in connection with which a prior mark is in use.

3. The similarity or dissimilarity of established, likely-to-continue trade channels.

4. The conditions under which and buyers to whom sales are made, i.e., “impulse” vs.

careful, sophisticated purchasing.

5. The fame of the prior mark (sales, advertising, length of use).

6. The number and nature of similar marks in use on similar goods.

7. The nature and extent of any actual confusion.

8. The length of time during and conditions under which there has been concurrent use

without evidence of actual confusion.

9. The variety of goods on which a mark is or is not used (house mark, “family” mark,

product mark);

10. The market interface between applicant and the owner of a prior mark: (a) a mere

“consent” to register or use, (b) agreement provisions designed to preclude confusion,

i.e., limitations on continued use of the marks by each party, (c) assignment of mark,

application, registration and good will of the related business, or (d) laches and

estoppel attributable to the owner of the prior mark and indicative of lack of

9

confusion;

11. The extent to which the applicant has a right to exclude others from use of its mark on

its goods;

12. The extent of potential confusion, i.e., whether de minimis or substantial; and

13. Any other established fact probative of the effect of use.

It is generally accepted that the first factor is one of the most important factors for a

determination of likelihood of confusion. Petitioner has acknowledged this but has neglected to

provide the proper analysis. Specifically, the similarity or dissimilarity of the marks as to

appearance, sound, connotation and commercial impression must always be made by considering

the marks in their entireties.

Petitioner erred in failing to give due weight to the differences between Petitioner’s Mark

and Registrant’s Mark, when viewed in their entirety. Petitioner has improperly dissected each

mark in a self-serving attempt to find some level of similarity when none exists for the marks as

a whole.

Specifically, Petitioner has postulated that a difference of a single letter is not enough of a

difference to overcome the likelihood of confusion between Petitioner’s Mark and Registrant’s

Mark, stating that “[i] t is also undisputed that Registrant’s Mark merely uses a letter ‘H’ in

replace of the letter ‘T in Petitioner’s Mark.” (See Petitioner’s Memo. of Law in Support of Its

Motion for Summary Judgment).

This short-sighed analysis is incorrect because a one letter difference between two marks

does not guarantee a likelihood of confusion; a more holistic analysis of the similarity or

dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial

10

impression is warranted. While not dispositive, a point reference for consideration is a

comparison of U.S. Registration No. 1,945,654 (for “Nike”) and U.S. Registration Nos.

1,390,000; 1,710,117; 2,303,776; and 1,511,036 (for the word “Bike” as a standard word mark

and as a stylized mark). As in the present situation, the marks in question have a superficially

related appearance. Additionally, the marks are identical except for a single letter in each word.

And, the sounds associated with the two marks are certainly similar in many respects. For

example, Nike and Bike may even appear to rhyme, making the two words even more similar in

sound.

Further, in the case of Nike and Bike, the two marks are applied to directly competitive

goods and services, sold to the exact same consumers in the exact same markets and channels.

In spite of these similarities in appearance, sound, markets, consumers, channels, and in the

nature of the goods and services, Applicant notes that both marks co-existed as registered

trademarks for decades and both marks were used by successful businesses selling substantially

similar goods and services, all while functioning as distinct trademarks for purposes of

identifying the source of goods for their respective owners. This is precisely because marks must

be compared in their entirety, as encountered by the relevant consumers.

Accordingly, when comparing Petitioner’s Mark and Registrants’ Mark, the marks must

be compared in their entireties. A mark should not be dissected or split up into its component

parts and each part then compared with corresponding parts of the conflicting mark to determine

the likelihood of confusion. It is the impression that the mark as a whole creates on the average

reasonably prudent buyer and not the parts thereof, that is important. See e.g., Massey Junior

College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 1402, 181 U.S.P.Q. 272, 273

(C.C.P.A. 1974) (“It is axiomatic that a mark should not be dissected and considered piecemeal;

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rather, it must be considered as a whole in determining likelihood of confusion.”); Dreyfus Fund,

Inc. v. Royal Bank of Canada, 525 F. Supp. 1108, 213 U.S.P.Q. 872 (S.D.N.Y. 1981) (quoting

treatise); In re National Data Corp., 753 F.2d 1056, 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985)

(“[L]ikelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of

a mark.”); General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 3 U.S.P.Q.2d 1442, 1445 (8th Cir.

1987) (“[I]n analyzing the similarities of sight, sound and meaning between two marks, a court

must look to the overall impression created by the marks and not merely compare individual

features.”); Duluth News-Tribune v. Mesabi Publ. Co., 84 F.3d 1093, 38 U.S.P.Q.2d 1937 (8th

Cir. 1996) (“Rather than consider the similarities between the component parts of the marks, we

must evaluate the impression that each mark in its entirety is likely to have on a purchaser

exercising the attention usually given by purchasers of such products.”).

A significantly different display of the same term or an addition of a distinctive element

(i.e. term or design) can avoid a likelihood of confusion with the use of a design element

minimizing or eliminating any likelihood of confusion. First Savings Bank, F.S.B. v. First Bank

Systems, Inc., 40 U.S.P.Q.2d 1865 (10th Cir. 1996) (no confusion between FIRST BANK and

FIRST BANK SYSTEM (and design)). The use of a design as part of a mark minimizes any

likelihood of confusion. Harlem Wizards, 952 F. Supp. At 1096 (citing McCarthy at §23:15[5]).

See also, In re NBA Properties, Inc., 2000 TTAB LEXIS 863 (TTAB 2000) (when considered in

their entireties, the marks differ in appearance and create distinctly different commercial

impressions; applicant’s mark is a composite consisting of a word and a design, both of which

must be considered in determining the overall commercial impression the mark conveys).

“Marks tend to be perceived in their entireties, and all components thereof must be given

appropriate weight.” In re Hearst, 982 F.2d 493, 494 (Fed. Cir. 1992). In Hearst, the Applicant

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sought to register VARGA GIRL for calendars. The Trademark Trial and Appeal Board refused

registration in light of the prior registration VARGAS, registered for posters, calendars, greeting

cards” and related goods. Id. On Appeal, the Federal Circuit reversed the Board’s refusal. Id.

The Federal Circuit determined that the appearance, sound, sight, and commercial impression of

VARGA GIRL derived significant contribution from the component “girl” Id. Furthermore, by

stressing the first portion, which was “VARGA”, and diminishing the second portion, which was

“GIRLl”, the Board had inappropriately changed the mark. Although the weight given the

respective words is not entirely free of subjectivity, the Federal Circuit believe[d] that the Board

erred in its diminution of the contribution of the word “GIRL”. When GIRL is given fair weight,

along with VARGA, confusion with VARGAS becomes less likely. Id. Likewise, when the

HEAR portion of the PROHEAR mark is given fair weight, along with the PRO portion,

confusion with PROTEAR becomes less likely.

Petitioner alleges that Petitioner’s Mark “PROTEAR” is the abbreviation of

“PROTECTION for EAR” and means to protect your ears (See Yu Declaration, at ¶3). In

summary, Petitioner is arguing that the fractional portion of the mark “PROT” is a kind of

shorthand for “protect”. However, there is no evidence in the record, other than from Petitioner,

that the “PROT” portion of Petitioner’s Mark is representative of the word. There is, however,

ample reason to believe that “PROT” is not, in fact, some well recognized shorthand for the word

“protect”. For example, a search of leading online dictionaries for the word “PROT” yields a

number of interesting definitions, none of which are proffered as a shortening of the word

“protect”, as asserted by Petitioner (see Exhibit A).

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Further, Petitioner has routinely used a distinctive coloring scheme to present Petitioner’s

Mark to the consuming public. Specifically, as shown below and in Petitioners’ Motion at

Exhibit A, p. 338, filed on November 7, 2020 with a tracking number of ESTTA1093982

(the “Exhibit”), Petitioner has routinely presented Petitioner’s Mark with the letters “PRO” in a

white color on a dark gray background and the letters “TEAR” presented in a dark gray color on

a light grey background, effectively presenting the mark as “PRO” and “TEAR”, not “PROT”

and “EAR” (see Exhibit at p. 338). Petitioner has also presented Petitioner’s Mark with the

letters “PRO” in white on a dark grey background and the letters “TEAR” in yellow on a dark

grey background, effectively presenting the mark as “PRO” and “TEAR”, not “PROT” and

“EAR” (see Exhibit at p. 338). Further, the clear delineation and separation of the fragments

“PRO” and “TEAR” is further enforced by the inclusion of the word “PROTECTION”

positioned beneath the fragment “PRO”, suggesting that “PRO”, and not “PROT, is an

abbreviation of the word protection and that the “TEAR” fragment refers to something else

entirely. Thus, the Petitioner’s usage of PROTEAR casts doubt on its assertion that

“PROTEAR” is the abbreviation of “PROTECTION for EAR”.

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Petitioner’s Mark

As shown above, the two marks as used in commerce are also readily distinguishable.

When considering whether two marks are confusingly similar, it is appropriate to consider how

the marks are used in commerce and how consumers will encounter the two marks. See Russell v.

Caesar, 62 U.S.P.Q.2d 1125, 1129 (N.D. Cal. 2001) (“While the Court agrees that the first term

of a composite mark fosters confusion, this characteristic alone does not resolve the similarity

analysis .... [T]he similarity of the marks must also be considered in light of the way the marks

are encountered in the market place.”).

In this case, Petitioner has made a conscious decision to display Petitioner’s Mark in a

conspicuous way that creates the appearance of two separate words, “PRO” and “TEAR”.

Registrant respectfully submits that a conclusory statement in a self-serving affidavit cannot

overcome the stark reality of Petitioner’s advertising choices. Enzo Biochem, Inc. v. Gen-Probe

Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed.Cir.2005) (“Attorney argument is no substitute

for evidence”).

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Is Petitioner’s Mark pronounced as “Prot Ear” (unlikely given Petitioner’s advertising

materials) or “Pro Tear” (where “Tear” rhymes with the word “pear”) or “Pro Tier” (where

“Tear” rhymes with the word “tier”). Given that there is no evidence in the record to support any

particular pronunciation and given that “Pro” is a generally accepted prefix, the consumers in the

relevant market are more likely to select a “Pro Tear” (where “Tear” rhymes with the word

“pear”) or “Pro Tier” (where “Tear” rhymes with the word “tier”) (See Exhibit B for a screenshot

from a leading dictionary for “Pro”.

C. Summary

The uncertainty surrounding the meaning, pronunciation, and commercial impression

associated with Petitioner’s Mark, particularly when compared to the commercial impression

associated with Registrant’s Mark, is a disputed material fact. As set forth above, the exact

meaning of Petitioner’s Mark “PROTEAR” and how the mark is perceived by the relevant

consumers in the marketplace is a disputed material fact. Whether or not the relevant consumers

will perceive Petitioner’s Mark and Registrant’s Mark in the manner alleged by Petitioner is

unknown. Petitioner has offered no evidence to support Petitioner’s self-serving interpretation of

Petitioner’s Mark when compared to Registrant’s Mark but uses the unsubstantiated meaning of

“PROTEAR” and assumed commercial impression to summarily conclude that likelihood of

confusion has been firmly established as a matter of law. Registrant respectfully disagrees.

WHEREFORE, Registrant prays that the Trademark Trial and Appeal Board deny

Petitioner’s Motion for Summary Judgment Under Federal Rule of Civil Procedure 56 and

proceed to trial for a decision on the merits.

)

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Dated: December 7, 2020 /Jacob Ong/

Jacob Ong, Esq.

Ongs Law Firm, PLLC

PO Box 403

Lehi, UT 84043

(801) 404-4816

jacob@ongslaw.com

Attorney for Registrant

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CERTIFICATE OF SERVICE

I hereby certify that a true and accurate copy of the foregoing REGISTRANT’S

MEMORANDUM OF LAW IN SUPPORT OF ITS RESPONSE IN OPPOSITION TO

PETITIONER’S MOTION FOR SUMMARY JUDGMENT UNDER FEDERAL RULE

OF CIVIL PROCEDURE 56 has been served on counsel for Petitioner by forwarding said

copy on December 7, 2020 via email to:

Shiyong Ye

REID & WISE, LLC

250 West 34th Street

One Penn Plaza, Suite 2015

New York, NY 10119

Tel: (212) 858-9978

Fax: (516) 821-8978

sye@reidwise.com

syetm@reidwise.com

by /Jacob Ong/

December 7, 2020