| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 76618391 |
| 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 REAL TIME 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. Applicant notes that the Examining Attorney's references to Applicant's web site only include the term GIS and not the complete mark presently at issue. 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 have issued on the Supplemental Register which include the term "REAL TIME" and an additional term which may be considered descriptive. For example, U.S. Registration No. 2,872,979 for REAL TIME BUSINESS issued on the Supplemental Register in classes 16, 35, and 41 for print publications, conducting trade shows and business conferences, and providing online information services. U.S. Registration No. 2,799,544 for REAL TIME TARGETED MARKETING issued on the Supplemental Register in classes 9 and 42 for software and computer software design for others. U.S. Registration No. 2,793,335 for REAL TIME CUSTOMER SERVICE issued on the Supplemental Register in classes 9 and 42 for software and computer software design for others. U.S. Registration No. 2,793,334 for REAL TIME CUSTOMER MARKETING issued on the Supplemental Register in classes 9 and 42 for software and computer software design for others. U.S. Registration No. 2,241,363 for REAL TIME CUSTOMER INTELLIGENCE issued on the Supplemental Register in classes 9 and 35 for software and data base management and other services. U.S. Registration No. 1,974,394 for REAL TIME RETAILING issued on the Supplemental Register in class 42 for product research services. U.S. Registration No. 2,863,843 for REAL TIME INFORMATION TECHNOLOGY issued on the Supplemental Register in class 42 for computer management system services. U.S. Registration No. 2,739,253 for REAL TIME INFORMATION PROTECTION issued on the Supplemental Register in class 42 for computer system security services. U.S. Registration No. 2,229,766 for REAL TIME PAGE MANAGEMENT issued on the Supplemental Register in class 42 for creating and editing network web pages for others. U.S. Registration No. 2,572,262 for REAL TIME CUSTOMER CARE issued on the Supplemental Register in classes 35 and 41 for business marketing consulting services pertaining to customer relationship management for others, and training and educational instruction. U.S. Registration No. 2,306,694 for REAL TIME ORDER MANAGEMENT issued on the Supplemental Register in class 35 for consulting services for business use in the field of supply chain and inventory management. Applicant submits that the present mark is similarly suitable for registration on the Supplemental Register. Notably, a disclaimer of exclusive rights in the term "REAL TIME" was not required in any of these 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 09:09:11 EST 2005 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XX.XX-20 051208090911107967-766183 91-320814af892e741bc45085 afa0f5f379c-N/A-N/A-20051 208090610258780 |
| 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 REAL TIME 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. Applicant notes that the Examining Attorney's references to Applicant's web site only include the term GIS and not the complete mark presently at issue. 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 have issued on the Supplemental Register which include the term "REAL TIME" and an additional term which may be considered descriptive. For example, U.S. Registration No. 2,872,979 for REAL TIME BUSINESS issued on the Supplemental Register in classes 16, 35, and 41 for print publications, conducting trade shows and business conferences, and providing online information services. U.S. Registration No. 2,799,544 for REAL TIME TARGETED MARKETING issued on the Supplemental Register in classes 9 and 42 for software and computer software design for others. U.S. Registration No. 2,793,335 for REAL TIME CUSTOMER SERVICE issued on the Supplemental Register in classes 9 and 42 for software and computer software design for others. U.S. Registration No. 2,793,334 for REAL TIME CUSTOMER MARKETING issued on the Supplemental Register in classes 9 and 42 for software and computer software design for others. U.S. Registration No. 2,241,363 for REAL TIME CUSTOMER INTELLIGENCE issued on the Supplemental Register in classes 9 and 35 for software and data base management and other services. U.S. Registration No. 1,974,394 for REAL TIME RETAILING issued on the Supplemental Register in class 42 for product research services. U.S. Registration No. 2,863,843 for REAL TIME INFORMATION TECHNOLOGY issued on the Supplemental Register in class 42 for computer management system services. U.S. Registration No. 2,739,253 for REAL TIME INFORMATION PROTECTION issued on the Supplemental Register in class 42 for computer system security services. U.S. Registration No. 2,229,766 for REAL TIME PAGE MANAGEMENT issued on the Supplemental Register in class 42 for creating and editing network web pages for others. U.S. Registration No. 2,572,262 for REAL TIME CUSTOMER CARE issued on the Supplemental Register in classes 35 and 41 for business marketing consulting services pertaining to customer relationship management for others, and training and educational instruction. U.S. Registration No. 2,306,694 for REAL TIME ORDER MANAGEMENT issued on the Supplemental Register in class 35 for consulting services for business use in the field of supply chain and inventory management. Applicant submits that the present mark is similarly suitable for registration on the Supplemental Register. Notably, a disclaimer of exclusive rights in the term "REAL TIME" was not required in any of these 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.