| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 76655421 |
| LAW OFFICE ASSIGNED | LAW OFFICE 113 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
The Office Action refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, with respect to Class 42 only, as allegedly likely to be confused with the mark in U.S. Registration No. 2750718. The Office Action was silent as to Applicant’s mark with respect to Class 9; presumably, the Examiner found no similar registered or pending mark that would bar registration of Applicant’s mark with respect to Class 9. In response to the Office Action, as an initial matter, Applicant respectfully submits that Applicant’s optical computing services, namely, testing, analysis and evaluation of the goods and services of others for the purpose of quality control, in International Class 42 (as amended in the Office Action), is entirely different from Registrant’s computer consultation and computer diagnostic services as recited in U.S. Registration No. 2750718. Nevertheless, merely to move the application forward, Applicant proposes further amending the identification of services as indicated herein for additional clarification of the identification of services. Applicant respectfully submits that the amendment is permissible under TMEP 1402.07(e)(1) because the recited services were intended to cover services relating to optical computing products as originally filed and as discussed with the Examiner on August 22, 2006 and as reflected in the amended Class 9 goods. Accordingly, Applicant respectfully requests entry of the amended identification of services and publication of the mark for both Class 9 and Class 42 for opposition for the following reasons. As noted above, registration has been refused, with respect to Class 42 only, on grounds that Applicant’s OMETRICTM mark, when used on or in connection with optical computing services, so resembles the mark O-METRICâ (Registration No. 2750718) for computer consultation and computer diagnostic services that a potential consumer is likely to be misled into believing that the source of origin for the OMETRICTM services is the same as the source of origin for the O-METRICâ services. Applicant respectfully disagrees and traverses the refusal to register its mark with respect to Class 42 for the following reasons. The registrant provides under its O-METRICâ mark “computer consultation and computer diagnostic services in the field of functionability, usability and effectiveness of web-based applications; monitoring of computer systems in the field of functionability, usability and effectiveness of web-based applications.” (Registration No. 2750718, emphasis added). Such computer consultation and computer diagnostic services are clearly directed to information technology (IT) engineers and professionals. Applicant respectfully submits that IT professionals are a very specific class of consumer who “shop” for computer consultation and computer diagnostic services in a very specific channel of trade. In contrast to the registrant’s services, Applicant provides optical computing services, namely, optical spectroscopy testing, analysis and evaluation of the goods and services of others for the purpose of quality control under its mark OMETRICTM. These goods are employed by sophisticated manufacturers and producers of consumable products found in pharmaceutical industries, petroleum industries, food processing industries and the like for measuring compound concentrations throughout manufacturing processes to ensure final product quality. Clearly, Applicant’s services are entirely different from the registrant’s services. As suggested above, Applicant’s target audience is a very specific, sophisticated class of consumer that is completely different from the registrant’s class of consumer. Applicant respectfully submits that there simply would be no tendency by registrant’s and Applicant’s consumers to expect that the registrant’s and Applicant’s completely different types of services originate from the same source. Stated another way, Applicant respectfully submits that there is no probable confusion between the two marks as to source by the two very different consumer classes who perceive the marks relative to two very different types of services in two very different channels of trade. Moreover, Applicant’s mark is sufficiently distinct from the O-METRICâ mark so as to preclude any likelihood of customer confusion as to the source of origin of the services associated with Applicant’s mark and the source of origin of the services associated with the registered mark. More specifically, Applicant’s mark is singular in appearance while the O-METRICâ mark has three distinct elements (“O” and “–” and “METRIC“). The distinctive graphic design element (–) of the registered mark is positioned between the other two portions of the mark, which encourages a pause in pronunciation between the “O” and “METRIC“ portions of the mark. Furthermore, Applicant’s mark is an arbitrary word as admitted by the Office Action. In contrast, the registrant’s mark clearly sets the word “METRIC“ apart from the other two elements of the mark. Applicant respectfully submits that the arrangement and appearance of the registrant’s mark will invite the average IT professional purchasing the registrant’s services to recall the ordinary meaning of “METRIC“; i.e., a standard of measurement (see, e.g., Merriam-Webster Online, http://www.m-w.com/). Thus, the two marks differ significantly in appearance, sound, spelling and meaning. Accordingly, based on distinctions between the marks themselves, in addition to the very different services, customers and channels of trade involved, the likelihood of confusion that is required under § 2(d) of the statute simply is not present. Accordingly, Applicant respectfully requests withdrawal of the rejection as to Class 42 under Section 2(d) of the Trademark Act. Applicant respectfully submits that all issues raised in the Office Action have been fully addressed, and the grounds for refusal of registration have been overcome. Accordingly, Applicant respectfully requests publication of the application for opposition to the mark as to both Class 9 and Class 42. Please charge any additional fees required by this Amendment to Deposit Account No. 04-1403. |
|
| GOODS AND/OR SERVICES SECTION (009)(no change) | |
| GOODS AND/OR SERVICES SECTION (042)(current) | |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION | |
| Optical computing services, namely, testing, analysis and evaluation of the goods and services of others for the purpose of quality control | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 04/07/2005 |
| FIRST USE IN COMMERCE DATE | At least as early as 04/07/2005 |
| GOODS AND/OR SERVICES SECTION (042)(proposed) | |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION | |
| Optical computing services, namely, optical spectroscopy testing, analysis and evaluation of the goods and services of others for the purpose of quality control | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 04/07/2005 |
| FIRST USE IN COMMERCE DATE | At least as early as 04/07/2005 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /bernard s. klosowski, jr./ |
| SIGNATORY'S NAME | Bernard S. Klosowski, Jr. |
| SIGNATORY'S POSITION | Attorney |
| DATE SIGNED | 09/27/2006 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Sep 27 10:52:47 EDT 2006 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20060927105247316451-766 55421-340ee37637879e88208 64cf0765c37b74e-N/A-N/A-2 0060927104828603282 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
The Office Action refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, with respect to Class 42 only, as allegedly likely to be confused with the mark in U.S. Registration No. 2750718. The Office Action was silent as to Applicant’s mark with respect to Class 9; presumably, the Examiner found no similar registered or pending mark that would bar registration of Applicant’s mark with respect to Class 9.
In response to the Office Action, as an initial matter, Applicant respectfully submits that Applicant’s optical computing services, namely, testing, analysis and evaluation of the goods and services of others for the purpose of quality control, in International Class 42 (as amended in the Office Action), is entirely different from Registrant’s computer consultation and computer diagnostic services as recited in U.S. Registration No. 2750718. Nevertheless, merely to move the application forward, Applicant proposes further amending the identification of services as indicated herein for additional clarification of the identification of services. Applicant respectfully submits that the amendment is permissible under TMEP 1402.07(e)(1) because the recited services were intended to cover services relating to optical computing products as originally filed and as discussed with the Examiner on August 22, 2006 and as reflected in the amended Class 9 goods. Accordingly, Applicant respectfully requests entry of the amended identification of services and publication of the mark for both Class 9 and Class 42 for opposition for the following reasons.
As noted above, registration has been refused, with respect to Class 42 only, on grounds that Applicant’s OMETRICTM mark, when used on or in connection with optical computing services, so resembles the mark O-METRICâ (Registration No. 2750718) for computer consultation and computer diagnostic services that a potential consumer is likely to be misled into believing that the source of origin for the OMETRICTM services is the same as the source of origin for the O-METRICâ services. Applicant respectfully disagrees and traverses the refusal to register its mark with respect to Class 42 for the following reasons.
The registrant provides under its O-METRICâ mark “computer consultation and computer diagnostic services in the field of functionability, usability and effectiveness of web-based applications; monitoring of computer systems in the field of functionability, usability and effectiveness of web-based applications.” (Registration No. 2750718, emphasis added). Such computer consultation and computer diagnostic services are clearly directed to information technology (IT) engineers and professionals. Applicant respectfully submits that IT professionals are a very specific class of consumer who “shop” for computer consultation and computer diagnostic services in a very specific channel of trade.
In contrast to the registrant’s services, Applicant provides optical computing services, namely, optical spectroscopy testing, analysis and evaluation of the goods and services of others for the purpose of quality control under its mark OMETRICTM. These goods are employed by sophisticated manufacturers and producers of consumable products found in pharmaceutical industries, petroleum industries, food processing industries and the like for measuring compound concentrations throughout manufacturing processes to ensure final product quality. Clearly, Applicant’s services are entirely different from the registrant’s services.
As suggested above, Applicant’s target audience is a very specific, sophisticated class of consumer that is completely different from the registrant’s class of consumer. Applicant respectfully submits that there simply would be no tendency by registrant’s and Applicant’s consumers to expect that the registrant’s and Applicant’s completely different types of services originate from the same source. Stated another way, Applicant respectfully submits that there is no probable confusion between the two marks as to source by the two very different consumer classes who perceive the marks relative to two very different types of services in two very different channels of trade.
Moreover, Applicant’s mark is sufficiently distinct from the O-METRICâ mark so as to preclude any likelihood of customer confusion as to the source of origin of the services associated with Applicant’s mark and the source of origin of the services associated with the registered mark. More specifically, Applicant’s mark is singular in appearance while the O-METRICâ mark has three distinct elements (“O” and “–” and “METRIC“). The distinctive graphic design element (–) of the registered mark is positioned between the other two portions of the mark, which encourages a pause in pronunciation between the “O” and “METRIC“ portions of the mark.
Furthermore, Applicant’s mark is an arbitrary word as admitted by the Office Action. In contrast, the registrant’s mark clearly sets the word “METRIC“ apart from the other two elements of the mark. Applicant respectfully submits that the arrangement and appearance of the registrant’s mark will invite the average IT professional purchasing the registrant’s services to recall the ordinary meaning of “METRIC“; i.e., a standard of measurement (see, e.g., Merriam-Webster Online, http://www.m-w.com/). Thus, the two marks differ significantly in appearance, sound, spelling and meaning. Accordingly, based on distinctions between the marks themselves, in addition to the very different services, customers and channels of trade involved, the likelihood of confusion that is required under § 2(d) of the statute simply is not present. Accordingly, Applicant respectfully requests withdrawal of the rejection as to Class 42 under Section 2(d) of the Trademark Act.
Applicant respectfully submits that all issues raised in the Office Action have been fully addressed, and the grounds for refusal of registration have been overcome. Accordingly, Applicant respectfully requests publication of the application for opposition to the mark as to both Class 9 and Class 42.
Please charge any additional fees required by this Amendment to Deposit Account No. 04-1403.