Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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PTO Form 1957 (Rev 9/2005)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76655433 has been amended as follows:
Mark
Applicant proposes to amend the mark as follows:
Original: OMETRIC BEYOND MEASURE. (Stylized and/or with Design)
Proposed: OMETRIC BEYOND MEASURE. (Stylized and/or with Design, see mark)
The applicant is not claiming color as a feature of the mark.

Argument(s)
In response to the substantive refusal(s), please note the following:

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.

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 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 OMETRIC BEYOND MEASURE ^TM 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 OMETRIC BEYOND MEASURE ^TM 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 OMETRIC BEYOND MEASURE ^TM.  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.  The registered mark has a distinctive graphic design element (–) disposed between two portions of the mark.  This graphic design element (–) encourages a pause in pronunciation between the “O” and the “METRIC“ portions of the mark.  Further, the O-METRICâ mark is a singular mark while Applicant’s mark contains a plurality of words.  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.

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 042 for Optical computing services, namely, testing, analysis and evaluation of the goods and services of others for the purpose of quality control
Original Filing Basis: 1(a).
Proposed: Class 042 for 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: 1(a).

Response Signature
Signature: /bernard s. klosowski, jr./     Date: 09/27/2006
Signatory's Name: Bernard S. Klosowski, Jr.
Signatory's Position: Attorney
        
Serial Number: 76655433
Internet Transmission Date: Wed Sep 27 11:24:17 EDT 2006
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20060927112417
791690-76655433-340d02a52221bdbfe852a4f4
5baf73fe59e-N/A-N/A-20060927111513483862