Response to Office Action

IN THE UNITED STATES

PATENT AND TRADEMARK OFFICE

In Re Application of:                                                     )

                                                                                    )

ALDEN SYSTEMS, INC.                                           )           TRADEMARK LAW OFFICE 102

Serial No. 76/540185                                                   )

Filed August 13, 2003                                                  )           Examining Attorney

Mark: ALDEN                                                             )           Kim Saito, Esq.

Assistant Commissioner for Trademarks

Attention: Kim Saito, Esq.

2900 Crystal Drive

Arlington, Virginia 22202-3513

Re: Amendment of Application and Response to Office Action

Dear Ms. Saito:

AMENDMENT OF APPLICATION

In response to your Office Action dated February 9, 2004, Alden Systems, Inc. (the "Applicant") amends the above application (the "Application") in the manner requested by deleting the recitation of services in Class 35 in its entirety and by substituting the following new recitation of services in Class 35:

Equipment tracking and control services for telecommunications companies.

RESPONSE TO OFFICE ACTION

The February 9, 2004 Office Action indicates that there may be a likelihood of confusion between the mark "ALDEN" as used by Applicant in connection with "computer software development for telecommunications companies" (in Class 42) and (as herein amended) "equipment tracking and control services for telecommunications companies" (in Class 35), and the mark "ALDEN" in pending Application Serial Number 76/365811 by Morcom International, Inc. ("Morcom") in connection with:

"radios; marine radios; weather radios; radio transceivers; marine radio transceivers; weather radio transceivers; weather data receivers; Navtex receivers; facsimile recorders; marine facsimile weather data receivers; printers; weather processing and forecasting software; image processing software; satellite data receiving and communications systems comprising antennas, receivers or transceivers, computers, printers, weather processing and forecasting software, and image processing software."

1.         Applicant's Class 035 Services are unlikely to be Confused with Morcom's Class 009 Goods.  It does not appear that Applicant's "equipment tracking and control services for telecommunications companies" in Class 35 are likely to be confused with Morcom's weather and marine receivers, transceivers, software or satellite systems.  Applicant provides equipment tracking and control services to telecommunications clients, while Morcom provides wireless communications and advanced weather systems to commercial, security and governmental customers (see, for example, description provided in Morcom International webpage attached as Exhibit A).  Equipment tracking and control services are completely distinct and different from, and unrelated to, communications and weather equipment, software or systems.  Applicant's services keep track of the location of equipment; Morcom provides communications and weather systems.  The fact that a telecommunications company might possibly be a customer of both Morcom and Applicant does not create any likelihood of confusion since the services provided under the Alden mark by the two companies are completely unrelated and distinct.  As noted in Kirkpatrick: Likelihood of Confusion in Trademark Law; Practicing Law Institute; at page 5-37:

Some overlap in channels of trade may be unimportant in view of other factors- for example, if the goods are different, the purchasers different and knowledgeable, and the goods expensive ..."

In the present case, Morcom's goods are completely different from Applicant's services, the goods and services of both are highly technical and expensive (e.g., weather systems, on the one hand, and equipment tracking services for telecommunications companies, on the other), and the purchasers of both are highly sophisticated and knowledgeable.  Accordingly, the services of Applicant are not likely to be confused with the goods of Morcom.

2.         Applicant's Class 042 Services are unlikely to be Confused with Morcom's Class 009 Goods.  Applicant's "computer software development for telecommunications companies" is also unlikely to be confused with Morcom's weather and marine receivers, transceivers, software or satellite systems.  Applicant's computer software development services are unlikely to be confused with Morcom's weather and marine radios, transceivers and other equipment for the same reasons discussed in Paragraph 1 above: the services of Applicant (computer software development) are completely different than and unrelated to Morcom's equipment (radios, etc.), the purchasers are acknowledgeable and the goods are expensive.  For this reason, the following discussion will focus exclusively on the likelihood of confusion between Applicant's computer software development services and the software described in Morcom's application, which consists of: (A) weather processing and forecasting software; (B) image processing software; and (C) weather processing and forecasting software that forms a part of satellite data receiving and communications systems.

Applicant provides computer software development services to the order of only a particular type of company (i.e., telecommunications companies).  Applicant is not in the business of providing computer software development services generally, nor is it in the business of selling software itself, and certainly not a narrow type of software, such as weather processing and forecasting software (A and C above) or image processing software (B above).  This distinction was pivotal in Mine Safety Appliances Company v. Management Science America, Inc., 212 U.S.P.Q. 105 (1981), in which the Applicant used the "MSA" mark for the "designing of computer software systems for others" and the opposer used the same "MSA" mark for the design, manufacture, and sale of a wide range of engineering products and services, some of which utilized computer software.  In Mine Safety, the Patent and Trademark Office Trial and Appeal Board found that there was a likelihood of confusion because "applicant has made no restriction in the identification of its services to a particular industry or channel of trade" and, accordingly, "applicant's services are intended for all potential users of this type of service which would include those to whom opposer sells its goods and services."  At 109.

In the present case Applicant provides computer software development services only to telecommunications companies.  It has restricted its services only to that very narrow industry, and type of company, and channel of trade.  In addition (and unlike in Mine Safety, supra, where the opposer provided an extremely wide range of engineering products and services), in the present case Morcom does not provide a wide range of software goods and services under the Alden mark, but rather limits itself to weather processing and forecasting software, and image processing software.  In other words, in this case the computer development services of the Applicant and the software goods of Morcom are both very narrowly focused in completely different areas (telecommunications companies versus weather and imaging software)  Accordingly, it is highly unlikely that there would be any significant overlap in the potential users of both.  In the event of even a small overlap, the purchasers from Applicant and the purchasers from Morcom are sophisticated and the products and services are expensive, so confusion is unlikely.

Accordingly, Applicant believes that there is little likelihood of confusion between Applicant's services and Morcom's goods, and Applicant respectfully requests that the Examining Attorney allow Applicant's application to proceed despite the pending application of Morcom.

DECLARATION

The undersigned being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the Application or any resulting registration, declares that he is properly authorized to execute this Amendment to Application and Response to Office Action on behalf of the Applicant; he believes the Applicant to be the owner of the mark sought to be registered, or, if the Application is being filed under 15 U.S.C. 1051(b), he believes Applicant is entitled to use such mark in commerce; to the best of his knowledge and belief, no other person, firm, corporation, or association has the right to use the above identified mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his own knowledge are true and that all statements made on information and belief are believed to be true.

Date: June 23, 2004.

                                                                               /David A.  Larsen/             

                                                                        DAVID A. LARSEN                                      

                                                                        Attorney for Alden Systems, Inc.