| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 76655422 |
| LAW OFFICE ASSIGNED | LAW OFFICE 113 |
| MARK SECTION (current) | |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| LITERAL ELEMENT | REALTIME INLINE |
| MARK SECTION (proposed) | |
| MARK FILE NAME | \\TICRS\EXPORT3\IMAGEOUT3 \766\554\76655422\xml1\RO A0002.JPG |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| LITERAL ELEMENT | REALTIME INLINE |
| COLOR MARK | NO |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the words "RealTime" and "InLine" separated by a dot with half circles that are above and below dot. |
| PIXEL COUNT ACCEPTABLE | YES |
| PIXEL COUNT | 884 x 250 |
| ARGUMENT(S) | |
|
The Office Action refused registration of Applicant’s mark under Section 2(d) of the Trademark Act as allegedly likely to be confused with the mark in U.S. Registration No. 2841898. The Office Action also refused registration of Applicant’s mark as allegedly merely descriptive under Section 2(e)(1) of the Trademark Act. Further, the Office Action required clarification whether color is a feature of the mark. Finally, the Office Action held that the identification of goods is allegedly vague and does not clearly identify the goods. As an initial matter, color is not a claimed feature of the mark as indicated on page 1 of the application. As required by the Office Action, however, Applicant has submitted herewith a substitute drawing page presenting the mark in black and white. Applicant respectfully submits that the substitute black and white drawing adds no new matter. Accordingly, Applicant respectfully requests entry and consideration of the substitute black and white drawing. In further response to the Office Action, Applicant has amended the identification of goods as indicated herein as suggested by the Examiner to clarify the identification of goods. Applicant respectfully submits that the amendment obviates the vagueness rejection without adding any goods not within the scope of goods as originally filed. Thus, Applicant respectfully requests entry of the amended identification of goods and publication of the mark for opposition for the following reasons. As noted above, registration has been refused on grounds that Applicant’s REALTIME INLINETM mark, when used on or in connection with optical computing products, namely, optical spectroscopy measurement apparatus and devices, so resembles the mark REALTIMEâ (Registration No. 2841898) for a computer network patching system that a potential consumer is likely to be misled into believing that the source of origin for the REALTIME INLINETM goods is the same as the source of origin for the REALTIMEâ goods. Applicant respectfully disagrees and traverses the refusal to register its mark for the following reasons. The registrant provides under its REALTIMEâ mark a “computer network patching system consisting of copper and fiber optic patch panels, patch cords, integration sensor strips, interface cables, monitors that monitor the connections of the system and convey monitoring information to the cable management software, and cable management software to continuously monitor, track, document and alarm the connection points of a structured cabling system”. (Registration No. 2841898, emphasis added). Such computer network and cable monitoring components and software goods 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 network and cable monitoring components and software goods in a very specific channel of trade. In contrast to the registrant’s goods, Applicant provides optical computing products that include optical spectroscopy measurement apparatus and devices under its mark REALTIME INLINETM. 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 goods are entirely different from the registrant’s goods. Moreover, 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 goods 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 goods in two very different channels of trade. Accordingly, Applicant respectfully requests withdrawal of the rejection under Section 2(d) of the Trademark Act. The Office Action further rejected Applicant’s mark REALTIME INLINETM as being “merely descriptive.” The Office Action states that the mark “merely describes the purpose or function of applicant's goods, namely, optical computer products featuring real time inline capability.” Applicant respectfully traverses this rejection for the following reasons. As set forth in §1209.01(b) of the Trademark Manual of Examining Procedure, the determination of whether a mark is merely descriptive must be made not in the abstract, but rather, in relation to the goods for which registration is sought; the context in which the mark is used or intended to be used in connection with those goods and services; and the possible significance which the mark would have, because of that context, to the average purchaser of the goods in the marketplace. Thus, the underlying issue is whether the mark, considered in its entirety, possesses a merely descriptive significance as applied to the goods in question, i.e., whether it conveys a readily understood meaning to the average purchaser of the goods. For example, in In re Shutts, 217 U.S.P.Q. 363, the court held that the mark SNO-RAKE was not merely descriptive of a snow removal tool. Additionally, the mark SUGAR & SPICE was held to be not merely descriptive of bakery products. See In re Colonial Stores Inc., 157 U.S.P.Q. 382 (C.C.P.A. 1968). In the present case, the Office Action defines REALTIME as: “Of or relating to computer systems that update information at the same rate as they receive data, enabling them to direct or control a process such as an automatic pilot.” The Office Action further defines the term “INLINE” as referring to “(computing) of source code of a different type written in the body of a program.” The Office Action therefore concludes that the wording REALTIME INLINE refers to the automatic updating of information in the form of inline coding. Inasmuch as Applicant’s goods are directed to optical computing products, namely, optical spectroscopy measurement apparatus and devices, and are not directed to automatic updating of coding in a computer program, Applicant respectfully submits that the mark REALTIME INLINETM clearly is not merely descriptive of optical spectroscopy measurement apparatus and devices used by consumable producers for measuring compound concentrations throughout manufacturing processes to ensure final product quality.
Moreover, Applicant respectfully submits that the mark REALTIME INLINETM is, at the very least, suggestive as to the nature of the goods used in conjunction with the mark. Suggestive marks are those which require imagination, thought, or perception to reach a conclusion as to the nature of the goods. Thus, a suggestive term differs from a merely descriptive term in that the merely descriptive term immediately tells something about the goods.
Applicant respectfully submits that its mark is at the very least suggestive because it requires some imagination, thought, or perception to reach a conclusion as to the nature of the goods. As stated, Applicant’s mark REALTIME INLINETM is used in this case in connection with optical computing products such as optical spectroscopy measurement apparatus and devices. Even if the one of the words in the mark is a descriptive word when viewed separately, a great deal of imagination or thought is required to associate the combination of the words “real”, “time”, and “inline” with optical spectroscopy measurement apparatus and devices, if at all. As the Office Action admits, the combination of the words “real” and “time” can be associated with different meanings unrelated to the present goods; e.g., unrelated computer systems that update information at the same rate as they receive data enabling them to direct or control a process such as an automatic pilot. Likewise, the Office Action admits that the word “inline” means “(computing) of source code of a different type written in the body of a program”, which is unrelated to the present goods. Thus, the words “real”, “time”, and “inline” do not convey a single, readily understood meaning, particularly with respect to the goods in question -- optical computing products such as optical spectroscopy measurement apparatus and devices. Since the Office Action erroneously concludes that the mark REALTIME INLINETM relates to “automatic updating of coding in a computer program”, the mark must at the very least be suggestive.
For at least the foregoing reasons, Applicant respectfully submits that an average purchaser would not proscribe a merely descriptiveness significance to the mark REALTIME INLINETM when used in conjunction with optical computing products including optical spectroscopy measurement apparatus and devices. Accordingly, Applicant respectfully submits that the mark is at least suggestive and respectfully requests removal of the merely descriptive rejection and registration of the mark on the Principle Register.
With respect to Prior Pending Application Serial No. 78/771708 referenced in the Office Action, Applicant respectfully submits that there is no likelihood of confusion between the present mark and the mark in Prior Pending Application Serial No. 78/771708 for at least the foregoing reasons; i.e., the channels of trade, consumer classes and the types of goods are completely different from Applicants’. For instance, videographers who purchase the Prior Applicant’s “high-speed digital video cameras for high speed recording and analysis of high-speed processes and events” (see Application Serial No. 78/771708) will purchase the high-speed digital video cameras in a completely different channel of trade and are not likely to confuse Applicant with the source of the high-speed digital video cameras. Accordingly, Applicant respectfully submits that there is no reason to suspend action on the present application pending final disposition of the Prior Pending Application Serial No. 78771708. Applicant reserves the right to further address this issue as necessary at a later time. 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 submits that the application to register the mark REALTIME INLINETM should be published for opposition. Please charge any additional fees required by this Amendment to Deposit Account No. 04-1403. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | optical computing products |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 11/28/2005 |
| FIRST USE IN COMMERCE DATE | At least as early as 11/28/2005 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Optical computing products, namely, optical spectroscopy measurement apparatus and devices for measuring compound concentrations throughout manufacturing processes to ensure final product quality, in International Class 9 | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 11/28/2005 |
| FIRST USE IN COMMERCE DATE | At least as early as 11/28/2005 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /bernard s. klosowski, jr./ |
| SIGNATORY'S NAME | Bernard S. Klosowski, Jr. |
| SIGNATORY'S POSITION | Attorney |
| DATE SIGNED | 09/26/2006 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Sep 26 16:57:15 EDT 2006 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20060926165715370067-766 55422-340caa5d575cce1dc6a 5e7f5224ccd61dff-N/A-N/A- 20060926162503450838 |
| 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 as allegedly likely to be confused with the mark in U.S. Registration No. 2841898. The Office Action also refused registration of Applicant’s mark as allegedly merely descriptive under Section 2(e)(1) of the Trademark Act. Further, the Office Action required clarification whether color is a feature of the mark. Finally, the Office Action held that the identification of goods is allegedly vague and does not clearly identify the goods.
As an initial matter, color is not a claimed feature of the mark as indicated on page 1 of the application. As required by the Office Action, however, Applicant has submitted herewith a substitute drawing page presenting the mark in black and white. Applicant respectfully submits that the substitute black and white drawing adds no new matter. Accordingly, Applicant respectfully requests entry and consideration of the substitute black and white drawing.
In further response to the Office Action, Applicant has amended the identification of goods as indicated herein as suggested by the Examiner to clarify the identification of goods. Applicant respectfully submits that the amendment obviates the vagueness rejection without adding any goods not within the scope of goods as originally filed. Thus, Applicant respectfully requests entry of the amended identification of goods and publication of the mark for opposition for the following reasons.
As noted above, registration has been refused on grounds that Applicant’s REALTIME INLINETM mark, when used on or in connection with optical computing products, namely, optical spectroscopy measurement apparatus and devices, so resembles the mark REALTIMEâ (Registration No. 2841898) for a computer network patching system that a potential consumer is likely to be misled into believing that the source of origin for the REALTIME INLINETM goods is the same as the source of origin for the REALTIMEâ goods. Applicant respectfully disagrees and traverses the refusal to register its mark for the following reasons.
The registrant provides under its REALTIMEâ mark a “computer network patching system consisting of copper and fiber optic patch panels, patch cords, integration sensor strips, interface cables, monitors that monitor the connections of the system and convey monitoring information to the cable management software, and cable management software to continuously monitor, track, document and alarm the connection points of a structured cabling system”. (Registration No. 2841898, emphasis added). Such computer network and cable monitoring components and software goods 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 network and cable monitoring components and software goods in a very specific channel of trade.
In contrast to the registrant’s goods, Applicant provides optical computing products that include optical spectroscopy measurement apparatus and devices under its mark REALTIME INLINETM. 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 goods are entirely different from the registrant’s goods.
Moreover, 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 goods 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 goods in two very different channels of trade. Accordingly, Applicant respectfully requests withdrawal of the rejection under Section 2(d) of the Trademark Act.
The Office Action further rejected Applicant’s mark REALTIME INLINETM as being “merely descriptive.” The Office Action states that the mark “merely describes the purpose or function of applicant's goods, namely, optical computer products featuring real time inline capability.” Applicant respectfully traverses this rejection for the following reasons.
As set forth in §1209.01(b) of the Trademark Manual of Examining Procedure, the determination of whether a mark is merely descriptive must be made not in the abstract, but rather, in relation to the goods for which registration is sought; the context in which the mark is used or intended to be used in connection with those goods and services; and the possible significance which the mark would have, because of that context, to the average purchaser of the goods in the marketplace. Thus, the underlying issue is whether the mark, considered in its entirety, possesses a merely descriptive significance as applied to the goods in question, i.e., whether it conveys a readily understood meaning to the average purchaser of the goods. For example, in In re Shutts, 217 U.S.P.Q. 363, the court held that the mark SNO-RAKE was not merely descriptive of a snow removal tool. Additionally, the mark SUGAR & SPICE was held to be not merely descriptive of bakery products. See In re Colonial Stores Inc., 157 U.S.P.Q. 382 (C.C.P.A. 1968).
In the present case, the Office Action defines REALTIME as: “Of or relating to computer systems that update information at the same rate as they receive data, enabling them to direct or control a process such as an automatic pilot.” The Office Action further defines the term “INLINE” as referring to “(computing) of source code of a different type written in the body of a program.” The Office Action therefore concludes that the wording REALTIME INLINE refers to the automatic updating of information in the form of inline coding. Inasmuch as Applicant’s goods are directed to optical computing products, namely, optical spectroscopy measurement apparatus and devices, and are not directed to automatic updating of coding in a computer program, Applicant respectfully submits that the mark REALTIME INLINETM clearly is not merely descriptive of optical spectroscopy measurement apparatus and devices used by consumable producers for measuring compound concentrations throughout manufacturing processes to ensure final product quality.
Moreover, Applicant respectfully submits that the mark REALTIME INLINETM is, at the very least, suggestive as to the nature of the goods used in conjunction with the mark. Suggestive marks are those which require imagination, thought, or perception to reach a conclusion as to the nature of the goods. Thus, a suggestive term differs from a merely descriptive term in that the merely descriptive term immediately tells something about the goods.
Applicant respectfully submits that its mark is at the very least suggestive because it requires some imagination, thought, or perception to reach a conclusion as to the nature of the goods. As stated, Applicant’s mark REALTIME INLINETM is used in this case in connection with optical computing products such as optical spectroscopy measurement apparatus and devices. Even if the one of the words in the mark is a descriptive word when viewed separately, a great deal of imagination or thought is required to associate the combination of the words “real”, “time”, and “inline” with optical spectroscopy measurement apparatus and devices, if at all. As the Office Action admits, the combination of the words “real” and “time” can be associated with different meanings unrelated to the present goods; e.g., unrelated computer systems that update information at the same rate as they receive data enabling them to direct or control a process such as an automatic pilot. Likewise, the Office Action admits that the word “inline” means “(computing) of source code of a different type written in the body of a program”, which is unrelated to the present goods. Thus, the words “real”, “time”, and “inline” do not convey a single, readily understood meaning, particularly with respect to the goods in question -- optical computing products such as optical spectroscopy measurement apparatus and devices. Since the Office Action erroneously concludes that the mark REALTIME INLINETM relates to “automatic updating of coding in a computer program”, the mark must at the very least be suggestive.
For at least the foregoing reasons, Applicant respectfully submits that an average purchaser would not proscribe a merely descriptiveness significance to the mark REALTIME INLINETM when used in conjunction with optical computing products including optical spectroscopy measurement apparatus and devices. Accordingly, Applicant respectfully submits that the mark is at least suggestive and respectfully requests removal of the merely descriptive rejection and registration of the mark on the Principle Register.
With respect to Prior Pending Application Serial No. 78/771708 referenced in the Office Action, Applicant respectfully submits that there is no likelihood of confusion between the present mark and the mark in Prior Pending Application Serial No. 78/771708 for at least the foregoing reasons; i.e., the channels of trade, consumer classes and the types of goods are completely different from Applicants’. For instance, videographers who purchase the Prior Applicant’s “high-speed digital video cameras for high speed recording and analysis of high-speed processes and events” (see Application Serial No. 78/771708) will purchase the high-speed digital video cameras in a completely different channel of trade and are not likely to confuse Applicant with the source of the high-speed digital video cameras. Accordingly, Applicant respectfully submits that there is no reason to suspend action on the present application pending final disposition of the Prior Pending Application Serial No. 78771708. Applicant reserves the right to further address this issue as necessary at a later time.
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 submits that the application to register the mark REALTIME INLINETM should be published for opposition.
Please charge any additional fees required by this Amendment to Deposit Account No. 04-1403.
