Edward White
265 Big Valley Ln.
Mount Solon, VA 22843
Date:
Barnes & Thornburg LLP
11 South Meridian Street
Indianapolis, IN 46204-3535
(317) 236-1313
Fax (317) 231-7433
Re: Use of and Application for WISHMAY Trademark.
Dear Byczko,
We refer to your file number 53337-500.
This letter serves as a response to your letter to me dated November 30, 2021, in which letter you opposed my trademark application (Serial No.90538889).
On or about February 22, 2021, we filed an application for the registration of our trademark “Wishmay”. Consequently, you requested an extension of time to file an opposition with the Trademark Trial and Appeal Board.
Upon our reasonable information and belief, nothing precludes us from registering our business under the name. While we do not dispute your ownership and rights in and to your trademark “Wish”, we contend that my trademark “Wishmay” does not in any way violate your trademark rights.
There is no likelihood of confusion
First, we aver that the common law trademark rights in and to your mark “Wish” does not prevent us from registering and using “Wishmay”. We understand that common law trademark ownership is acquired by actual use of the mark in a given market. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97-98 (1918)); see also Review Directories, Inc. v. McLeodUSA Publ’g Co., No. 1:99CV958, 2001 WL 34054527, at *2 (W.D.Mich. Aug. 6, 2001). Further, we are cognizant of the fact that you have “both the right to use [the] particular mark and the right to prevent others from using the same or a confusingly similar mark.” See Homeowners Group, Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1106 (6th Cir. 1991). However, we contend that our mark, “Wishmay” DOES NOT amount to a confusing similar mark.
The likelihood of confusion is the basic test of both common law trademark infringement and federal statutory trademark infringement. See J. McCarthy, McCarthy on Trademarks § 23:1 (4th ed. 2004). See also Kason Industries, Inc. v. Component Hardware Group, Inc., 120 F.3d 1199, 1203 (11th Cir. 1997) (holding likelihood of confusion is the critical element for a common law trademark infringement claim). The test of “likelihood of confusion” was aptly articulated by the United States Supreme Court in McLean v. Fleming, 96 U.S. 245, 251, 24 L.Ed. 828 (1877) where the Court stated thus:
What degree of resemblance is necessary to constitute an infringement is incapable of exact definition, as applicable to all cases. All that courts of justice can do, in that regard, is to say that no trader can adopt a trademark so resembling that of another trader, as that ordinary purchasers, buying with ordinary caution, are likely to be misled. (Emphasis added).
We therefore maintain that no likelihood of confusion exists between “Wish” and “Wishmay”. The two marks do not look similar. They are two entirely different words. The two marks also mean very different things. Accordingly, the public IS NOT likely to be deceived or confused by the two of the marks. It is also instrumental to note that our mark, “Wishmay”, properly reflects our company’s purpose. Essentially, nothing is for sale in our domain. We only post goods and services that people are looking for.
“Wish” is not a generic name.
A trademark is generic when “it ceases to function to identify a single source of that generic thing. J. McCarthy, McCarthy on Trademarks 3 § 17:8 (4th ed. 2004). Further, the appropriate `test for genericness is whether the public perceives the term primarily as the designation of the article. See Bath Body Works, Inc. v. Luzier Personalized Cosmetics, Inc., 76 F.3d 743, 748 (6th Cir. 1996).
Further, in the landmark case of Adidas v OHIM — Shoe Branding Europe (T‑145/14, EU:T:2015:303), the European Court of Justice observed that the reputation of a mark must be taken into account in the assessment of whether there exists a likelihood of confusion. See also Ferrero Deutschland v OHIM, C‑108/07 P, EU:C:2008:234, paragraphs 32 and 33. It follows; therefore, one who claims the infringement of trademark must prove the reputation of a mark.
In the instant scenario, you have failed to provide proof of the reputation of your mark. The reputation due to your mark cannot be inferred from the number of subscribers to your services, or to how many people have downloaded your application. Instead, proof of reputation is done by conducting an independent survey that seeks to look at the possibility of confusion between the two marks. Therefore, since no proof of reputation has been done, it is evident your mark lacks a generic nature and we are thus not precluded to use our mark.
Our Demands
In light of the foregoing, we hold that your demands in your letter dated November 30, 2021, are null and void. For that reason, we demand that you cease and desist from claiming any rights in and to our mark. In the alternative, at least, we demand that you purchase our mark and domain name and in addition to the said purchase, compensate us for costs and expenses incurred in forming our trademark.
If you don’t comply to our demand, we will have no choice but to resort to legal actions. This option may seriously impact your company’s reputation.
If you have any questions, feel free to contact us at: [ENTER CONTACT].
Sincerely,
Edward White
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