Response to Office Action

PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

---

PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76628904 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

            The Examining Attorney has additionally issued a refusal of registration with respect to the services in Class 41 based upon prior Registration No. 2,558,643 for the mark THE POWER OF LEADERSHIP as used to identify "educational services, namely conducting individual coaching sessions, seminars and workshops which provide executives with information about business management."  Reconsideration and withdrawal of the refusal is requested for the following reasons.

 

            It is well-settled that in determining likelihood of confusion, the Examining Attorney must look at the marks, in their entireties, for similarities in appearance, sound, connotation and commercial impression.  In re E.I. du Pont de Nemours & Co., F.2d 1357, 177 USPQ 563 (CCPA 1973).  As stated by the Court of Appeals for the Federal Circuit in the recent case In re Hearst Corp., 25 USPQ2d 1238,1239 (CAFC 1992) "Marks tend to be perceived in their entireties, and all components thereof must be given appropriate weight."  In the Hearst case, the Court found that the trademarks VARGAS and VARGA GIRL, both for calendars, were sufficiently different in sound, appearance, connotation and commercial impression to negate any likelihood of confusion.

 

            Conflicting marks must be compared by looking at them as a whole, rather than breaking the marks up into their component parts, for comparison.  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.  As the Supreme Court observed:  "The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail.  For this reason it should be considered in its entirety...."  Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538 (1920).

 

            It is respectfully submitted that when viewed in their entireties, the marks are not so similar as to cause consumers to mistake the applicant’s goods and services for those services of the prior registrant, or to believe either that the applicant’s goods and services emanate from the prior registrant, or that the services of the prior registrant emanate from the applicant.

 

            In comparing the marks in their entireties, the marks THE POWER OF INCLUSIVE LEADERSHIP and THE POWER OF LEADERSHIP are at least as different from each other than the marks VARGAS and VARGA GIRL in In re Hearst Corp., supra.  The mark THE POWER OF INCLUSIVE LEADERSHIP calls to mind services that encourage leaders to be diverse and accepting of others.  The mark THE POWER OF LEADERSHIP simply implies that with leadership comes power.

 

 

            The result is that the marks THE POWER OF INCLUSIVE LEADERSHIP and THE POWER OF LEADERSHIP are not only different in appearance, but are also different in commercial impression..

 

            In any event, regardless as to any similarity perceived similarity between the applicant's mark and the cited mark, the Class 41 services of the applicant are, to a great extent, different from those services listed in the cited registration.

 

            The applicant's mark covers a wide array of services in Class 41 that have nothing to do with "individual coaching sessions, seminars and workshops" and which have nothing to do with providing "executives with information about business management."

 

            The applicant's Class 41 services focus on "diversity in the workplace" and "providing public recognition and awards for corporations and individuals who demonstrate leadership in advancing diversity in corporate America" and "arranging and conducting essay and business case analysis competitions."

 

            Only a small portion of the applicant's Class 41 services even come close to being related to those services listed in the cited registration.  And even those services, such as

"one-on-one mentoring in the field of professional development in corporations;" and "mentoring programs, for African American undergraduate and graduate students" deal with helping advance minorities in the workplace, and not with "providing executives with information about business."

 

            In order to maintain a rejection under Section 2(d), it is not sufficient if confusion is merely “possible.”  A higher standard is required.  Shatel Corp. v. Mao Ta Lumber & Yacht Corp., 697 F.2d 1352, n.2, 220 U.S.P.Q. 412 (11th Cir. 1983) (likelihood is synonymous with probability); Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 2 U.S.P.Q.2d 1204, 1206 (9th Cir. 1987) (“Likelihood of confusion requires that confusion be probable, not simply a possibility.”); Blue Bell  Bio-Medical v. Cin-Bad, Inc., 864 F.2d 1253, 9 U.S.P.Q.2d 1870, 1875 (5th Cir. 1989) (“[Plaintiff] must show, however, that confusion is probable; a mere possibility that some customers might mistakenly identify the [defendant's product] as [plaintiff's] product is not sufficient.”).

 

            In the present case, it is respectfully submitted that in view of the combination of the differences between the applicant's services and those services in the cited registration, and the differences between the applicant's mark and the mark covered in the cited registration, there would be no likelihood of confusion.

 

            And in any event, there is certainly no likelihood of confusion between all of the applicant's services listed in Clas 41 and those listed in the cited registration.

 

         It is therefore requested that the Examining Attorney withdraw the refusal of registration and forward this mark for publication in the Official Gazette.

 

         If the Examining Attorney determines not to withdraw the refusal of registration, applicant requests that the Examining Attorney indicate which of the services presently listed in Class 41 may be deleted to resolve the refusal.

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 016 for Printed instructional, teaching and educational materials in the field of diversity in the workplace for businesses, communities and other organizations

Proposed: Class 016 for Printed instructional, teaching and educational materials in the field of diversity in the workplace for businesses, communities and other organizations.
New/Additional Basis:

Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/2004 and first used in commerce at least as early as 00/00/2004, and is now in use in such commerce.
Applicant hereby submits a specimen for Class 016.
For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application."
Specimen-1

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 035 for Association services, namely promoting the interests of African American managers and business executives; advocacy services, namely promoting diversity in the workplace for businesses, communities and other organizations; arranging and conducting business conferences and seminars in the field of diversity in the workplace for businesses, communities and other organizations; charitable services, namely, distribution of computer equipment to schools

Proposed: Class 035 for Association services, namely, promoting the interests of African American managers and business executives; advocacy services, namely, information, advisory and consultancy services in the field of diversity in the workplace for businesses, communties and other organizations; arranging and conducting business conferences and seminars in the field of leadeship and diversity in the workplace for businesses, communities and other organizations.
New/Additional Basis:

Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/2004 and first used in commerce at least as early as 00/00/2004, and is now in use in such commerce.
Applicant hereby submits a specimen for Class 035.
For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application."
Specimen-1

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 036 for Charitable fund raising; accepting and administering monetary charitable contributions

Proposed: Class 036 for Charitable fund raising; Accepting and administering monetary charitable contributions; Charitable services, namely, facilitating the distribution of scholarships
New/Additional Basis:

Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/2004 and first used in commerce at least as early as 00/00/2004, and is now in use in such commerce.
Applicant hereby submits a specimen for Class 036.
For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application."
Specimen-1

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 037 for Charitable services, namely, maintenance of a computer network associated with technology initiatives

Proposed: Class 037 for Charitable services, namely, maintenance of a computer network associated with technology initiatives
New/Additional Basis:

Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/2004 and first used in commerce at least as early as 00/00/2004, and is now in use in such commerce.

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 041 for Educational services, namely, providing training in the form of workshops, seminars, symposia and courses in the field of diversity in the workplace for businesses, communities and other organizations and distributing printed informational and course materials in connection therewith; organization of conferences and symposia in the field of professional development and diversity for diverse mid-level and senior executives in the workplace for businesses, communities and other organizations; education services namely, one-on-one mentoring in the field of professional development in corporations; arranging and conducting essay and business case analysis competitions for African American undergraduate and graduate students; providing public recognition and awards for corporations and individuals who demonstrate leadership in advancing diversity in corporate America; charitable services, namely, facilitating the distribution of scholarships to schools

Proposed: Class 041 for Educational services, namely, providing training in the form of workshops, seminars, symposia and courses in the field of diversity in the workplace for businesses, communities and other organizations, and developing and distributing printed informational and course materials in connection therewith; organization of educational conferences, leadership summits, and symposia in the field of professional career development for minorities and diversity in the workplace for mid-level and senior executives in businesses, communities and other organizations; Educational services namely, one-on-one mentoring in the field of professional development in corporations; arranging and conducting essay and business case analysis competitions, mentoring programs, for African American undergraduate and graduate students; Providing public recognition and awards for corporations and individuals who demonstrate leadership in advancing diversity in corporate America; providing educational information online in the field of diversity in the workplace for businesses, communities and other organizations
New/Additional Basis:

Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/2004 and first used in commerce at least as early as 00/00/2004, and is now in use in such commerce.
Applicant hereby submits a specimen for Class 041.
For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application."
Specimen-1
Specimen-2

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 042 for Charitable services, namely, design of a computer network associated with technology Initiatives

Proposed: Class 042 for Charitable services, namely, facilitating the distribution of computer equipment to schools, and design and maintenance of computer network associated with technology initiatives.
New/Additional Basis:

Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/2004 and first used in commerce at least as early as 00/00/2004, and is now in use in such commerce.
Applicant hereby submits a specimen for Class 042.
For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application."
Specimen-1

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 045 for Providing information online in the field of diversity in the workplace for businesses, communities and other organizations

Proposed: Class 045 for Providing information online in the field of diversity in the workplace for businesses, communities and other organizations
New/Additional Basis:

Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/2004 and first used in commerce at least as early as 00/00/2004, and is now in use in such commerce.


Declaration Signature



Signatory's Name: Carl Brooks
Signatory's Position: President & CEO
Signature
Response Signature

Signature: /MARK HARRISON/     Date: 03/02/2006
Signatory's Name: MARK HARRISON
Signatory's Position: ATTORNEY OF RECORD
        
Serial Number: 76628904
Internet Transmission Date: Thu Mar 02 16:46:23 EST 2006
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20060302164623
023873-76628904-32029ee6ec460fbab1f542c9
1656a7e7a-N/A-N/A-20060302155810872895