| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 76618387 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Applicant hereby amends the present application to the Supplemental Register. Applicant submits that this should resolve the single issue from the Office Action regarding the refusal of the present application under Trademark Act Section 2(e)(1). Applicant further submits that the mark in the present application is capable of distinguishing Applicant's services and is not generic, contrary to the Examining Attorney's assertion.
Generic terms are terms that the relevant purchasing public understands primarily as the common name for the goods or services. See TMEP 1209.01. GIS is an understood abbreviation for "geographic information systems". However, Applicant has not applied for the mark GIS in connection with a geographic information system. Rather, Applicant has applied for the mark HIGH PERFORMANCE GIS in connection with "computer software development and design for others; computer consultation pertaining to spatial data and database systems." Where a mark is a composite mark, the Court of Appeals for the Federal Circuit has held that the composite mark must be generic for the genus of services that the Applicant provides. See TMEP 1209.01(c) and cases cited therein. Because Applicant's complete mark is not generic for Applicant's computer software development and consultation services, Applicant submits that the present mark is not generic for the identified services.
Applicant notes that several U.S. Registrations exist which include the term "HIGH PERFORMANCE" and an additional term which may be considered descriptive, wherein these registrations are either Principal or Supplemental Register registrations. For example, U.S. Registration No. 2,177,201 for HIGH PERFORMANCE NUTRITION issued on the Principal Register in class 42 for "writing of programs, articles and books for others in the field of nutrition." U.S. Registration No. 2,305,133 for HIGH PERFORMANCE TECHNOLOGY issued on the Principal Register in class 35 for "business management consulting services." U.S. Registration No. 2,950,505 for HIGH PERFORMANCE WORKPLACE issued on the Supplemental Register in class 36 for "real estate services, namely the leasing of commercial, residential and retail property." U.S. Registration No. 2,682,014 for HIGH PERFORMANCE FLOORING issued on the Supplemental Register in class 27 for plastic floor coverings. U.S. Registration No. 2,629,528 for INDUSTRY'S FIRST HIGH PERFORMANCE TRUCK issued on the Supplemental Register in class 28 for "toy trucks." U.S. Registration No. 2,771,445 for YOUR HIGH PERFORMANCE LENDER issued on the Principal Register in class 36 for "mortgage lending services." U.S. Registration No. 2,303,267 for HIGH PERFORMANCE SAFETY issued on the Principal Register in class 35 for "business management consulting services." U.S. Registration No. 2,948,758 for THE HIGH PERFORMANCE BUSINESS CARD issued on the Principal Register in class 16 for business cards. Applicant submits that the present mark is similarly suitable for registration on the Supplemental Register. Notably, a disclaimer of exclusive rights in the term "HIGH PERFORMANCE" was not required in any of the above registrations.
Because Applicant's mark as a whole is not generic for Applicant's identified services, Applicant submits that the present application may be appropriately registered on the Supplemental Register, and an early notice to that effect is respectfully solicited. |
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| ADDITIONAL STATEMENTS SECTION | |
| SUPPLEMENTAL REGISTER | "The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register')." |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Thomas F. Bergert/ |
| SIGNATORY NAME | Thomas F. Bergert |
| SIGNATORY POSITION | Attorney for Applicant |
| SIGNATURE DATE | 12/08/2005 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Dec 08 09:04:56 EST 2005 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XX.XX-20 051208090456590966-766183 87-320c7de6049b5ad5574ee5 6c2f025a25360-N/A-N/A-200 51208085330866788 |
| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Applicant hereby amends the present application to the Supplemental Register. Applicant submits that this should resolve the single issue from the Office Action regarding the refusal of the present application under Trademark Act Section 2(e)(1). Applicant further submits that the mark in the present application is capable of distinguishing Applicant's services and is not generic, contrary to the Examining Attorney's assertion.
Generic terms are terms that the relevant purchasing public understands primarily as the common name for the goods or services. See TMEP 1209.01. GIS is an understood abbreviation for "geographic information systems". However, Applicant has not applied for the mark GIS in connection with a geographic information system. Rather, Applicant has applied for the mark HIGH PERFORMANCE GIS in connection with "computer software development and design for others; computer consultation pertaining to spatial data and database systems." Where a mark is a composite mark, the Court of Appeals for the Federal Circuit has held that the composite mark must be generic for the genus of services that the Applicant provides. See TMEP 1209.01(c) and cases cited therein. Because Applicant's complete mark is not generic for Applicant's computer software development and consultation services, Applicant submits that the present mark is not generic for the identified services.
Applicant notes that several U.S. Registrations exist which include the term "HIGH PERFORMANCE" and an additional term which may be considered descriptive, wherein these registrations are either Principal or Supplemental Register registrations. For example, U.S. Registration No. 2,177,201 for HIGH PERFORMANCE NUTRITION issued on the Principal Register in class 42 for "writing of programs, articles and books for others in the field of nutrition." U.S. Registration No. 2,305,133 for HIGH PERFORMANCE TECHNOLOGY issued on the Principal Register in class 35 for "business management consulting services." U.S. Registration No. 2,950,505 for HIGH PERFORMANCE WORKPLACE issued on the Supplemental Register in class 36 for "real estate services, namely the leasing of commercial, residential and retail property." U.S. Registration No. 2,682,014 for HIGH PERFORMANCE FLOORING issued on the Supplemental Register in class 27 for plastic floor coverings. U.S. Registration No. 2,629,528 for INDUSTRY'S FIRST HIGH PERFORMANCE TRUCK issued on the Supplemental Register in class 28 for "toy trucks." U.S. Registration No. 2,771,445 for YOUR HIGH PERFORMANCE LENDER issued on the Principal Register in class 36 for "mortgage lending services." U.S. Registration No. 2,303,267 for HIGH PERFORMANCE SAFETY issued on the Principal Register in class 35 for "business management consulting services." U.S. Registration No. 2,948,758 for THE HIGH PERFORMANCE BUSINESS CARD issued on the Principal Register in class 16 for business cards. Applicant submits that the present mark is similarly suitable for registration on the Supplemental Register. Notably, a disclaimer of exclusive rights in the term "HIGH PERFORMANCE" was not required in any of the above registrations.
Because Applicant's mark as a whole is not generic for Applicant's identified services, Applicant submits that the present application may be appropriately registered on the Supplemental Register, and an early notice to that effect is respectfully solicited.