| PTO Form 1822 (Rev 11/2007) |
| OMB No. 0651-0050 (Exp. 4/30/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 76659294 |
| LAW OFFICE ASSIGNED | LAW OFFICE 117 |
| FOREIGN REGISTRATION | |
| The applicant herein submits a digitized image of a copy, a certification, or a certified copy of a registration in the applicant's country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. If the foreign registration is not in English, an English translation thereof is being submitted. The applicant hereby request removal of this application from suspension for further action by the examining attorney. | |
| FOREIGN REGISTRATION COUNTRY |
Canada |
| FOREIGN REGISTRATION NUMBER | TMA667,070 |
| FOREIGN REGISTRATION DATE |
07/07/2006 |
| FOREIGN EXPIRATION DATE | 07/07/2021 |
| FOREIGN REGISTRATION FILE NAME(S) | |
| ORIGINAL PDF FILE | FR_66177163184-220950713_._CA_Reg_for_OMNICAST.pdf |
| CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT3\IMAGEOUT3\766\592\76659294\xml3\RSI0002.JPG |
| \\TICRS\EXPORT3\IMAGEOUT3\766\592\76659294\xml3\RSI0003.JPG | |
| \\TICRS\EXPORT3\IMAGEOUT3\766\592\76659294\xml3\RSI0004.JPG | |
| STANDARD CHARACTERS OR EQUIVALENT |
YES |
| COMMENT(S)/REMARK(S) | |
|
ARGUMENTS In response to the substantive refusal, please note the following: Refusal – Likelihood of Confusion The Examining Attorney has refused registration of the proposed mark based on a likelihood of confusion with the mark set forth in Reg. No. 2862697. Applicant disagrees that there is a likelihood of confusion, and, therefore, respectfully requests that the refusal be withdrawn. It is well settled that the issue of likelihood of confusion between marks must be determined based on an analysis of the goods or services recited in applicant’s application vis-à-vis the goods or services recited in the registration. Canadian Imperial Bank v. Wells Fargo Bank, 1 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North Am. Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). The goods at issue in the application are computer software for the management of video, audio, and information related thereto, namely, real-time and forensic switching, display, and recording thereof in the fields of physical security of people, property, and assets, video surveillance, process control, covert investigations, and remote monitoring. In contrast, the goods at issue in the cited registration are computer programs, computer software, namely computer programs for communications and data transmission; devices for the transmission and reproduction of sounds and images, namely, personal computers, workstations and servers, set top boxes (STB), digital and analog television. In the suspension letter dated December 28, 2007, the Examining Attorney argues that the Registrant’s identification of goods includes “computer programs without any limitation as to function” and that these goods are closely related to Applicant’s goods. However, Applicant asserts that the Examining Attorney’s interpretation of the identification is incorrect and directly contradicts an examination guide issued by the PTO on May 3, 1999. Examination Notes - 99/1 states that the terms “computer programs and computer software are generally interchangeable” and requires that identifications using these terms must indicate function or purpose of the program and if the program is content or field specific, the field of use. (Examination Notes - 99/1, pp. 1, 3). Because the Registrant’s trademark application was filed on March 26, 2003, the Registrant’s application was presumably in compliance with Examination Notes 99/1. Therefore, for the Registrant’s identification to be considered acceptable in accordance with Examination Notes 99/1, the identification must be read so that all of the description of goods that occurs before the limiting wording “namely” is limited by all of the description of goods that occurs after the limiting wording “namely.” Accordingly, the identification must be read such that both “computer programs” and “computer software” are limited to “computer programs” the function of which is to transmit communications and data. This reading is also consistent with the fact that the description of goods following the limiting wording “namely” is “computer programs for” rather than “computer software for”. In the Office Action dated September 26, 2006, the Examining Attorney argues that the parties’ goods are closely related because they both can be described as types of computer software for “communications and transmission”. However, this type of generalization is improper and is, in fact, inaccurate. With respect to the former point, Applicant avers that it is settled in this regard that while a term may be found which encompasses the goods at issue, such does not mean that customers will view the respective goods as commercially or otherwise closely related in the sense that they will assume that they emanate from or are associated with a common source. See, e.g., General Electric Co. v. Graham Magnetics Inc., 197 USPQ 690, 694 (TTAB 1977). With respect to the latter point, Applicant notes that the primary purpose of the Applicant’s goods is not to transmit or control the transmission of data and communications. Instead, the primary purpose of Applicant’s goods is to manage video and audio information from connected sources and to integrate those sources as part of a video surveillance system. Any transmission of data is completely incidental and ancillary to performing this function. Information about Applicant’s goods is submitted herewith. On the other hand, the primary purpose of Registrant’s computer programs is to transmit communications and data. Such software is used to assist IT departments with the distribution of computer software for downloading to the personal computers of the company’s employees. Thus, the parties’ computer software/programs perform very different functions and are, naturally, used in entirely different applications. Moreover, the purchasers and users of the parties’ computer software/programs are entirely different. The TMEP states that there can be no rule that certain goods are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto. See TMEP 1207.01(a)(iv). While Applicant does not dispute the similarity of the marks, it does point out that the “no per se” rule on the relatedness of goods is especially pertinent in the computer program/software fields. It is common knowledge in this age that similar marks can be used on software in different fields without a likelihood of confusion. See, e.g., Information Resources Inc. v. X*Press Information Services, 6 USPQ2d 1034, 1038 (TTAB 1988) (regarding computer hardware and software, “As a result of the veritable explosion of technology in the computer field over the last several years and the almost limitless number of specialized products and specialized uses in this industry, we think that a per se rule relating to source confusion vis-a-vis computer hardware and software is simply too rigid and restrictive an approach and fails to consider the realities of the marketplace.”). In this case, Applicant’s computer software is in the field of video surveillance and the registrant’s computer software is in the unrelated field of communications and data transmission. The Examining Attorney has the burden of making a prima facie showing that the parties’ goods are related in some manner or that the circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons under situations that would give rise, because of the marks employed in connection therewith, to the mistaken belief that they originate from or are in some way associated with the same entity or provider. By failing to provide any evidence to establish that the parties’ goods are related, the instant refusal is per se deficient. Moreover, as previously explained, the parties’ goods are not likely to be encountered by the same persons given their very different functions and applications. Applicant respectfully requests that the likelihood of confusion refusal be withdrawn. |
|
| REMARKS FILE NAME(S) | |
| ORIGINAL PDF FILE | FRR_66177163184-220950713_._Use_of_OMNICAST.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT3\IMAGEOUT3\766\592\76659294\xml3\RSI0005.JPG |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /acm/ |
| SIGNATORY'S NAME | Amy C. Menker |
| SIGNATORY'S POSITION | Attorney of Record |
| DATE SIGNED | 08/06/2008 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Aug 06 22:42:08 EDT 2008 |
| TEAS STAMP | USPTO/RSI-XX.XXX.XXX.XXX- 20080806224208568669-7665 9294-420c2091373868e3ad3a 96b1e0d5a546b9-N/A-N/A-20 080806220950713693 |
| PTO Form 1822 (Rev 11/2007) |
| OMB No. 0651-0050 (Exp. 4/30/2009) |
ARGUMENTS
In response to the substantive refusal, please note the following:
Refusal – Likelihood of Confusion
The Examining Attorney has refused registration of the proposed mark based on a likelihood of confusion with the mark set forth in Reg. No. 2862697. Applicant disagrees that there is a likelihood of confusion, and, therefore, respectfully requests that the refusal be withdrawn.
It is well settled that the issue of likelihood of confusion between marks must be determined based on an analysis of the goods or services recited in applicant’s application vis-à-vis the goods or services recited in the registration. Canadian Imperial Bank v. Wells Fargo Bank, 1 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North Am. Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). The goods at issue in the application are computer software for the management of video, audio, and information related thereto, namely, real-time and forensic switching, display, and recording thereof in the fields of physical security of people, property, and assets, video surveillance, process control, covert investigations, and remote monitoring. In contrast, the goods at issue in the cited registration are computer programs, computer software, namely computer programs for communications and data transmission; devices for the transmission and reproduction of sounds and images, namely, personal computers, workstations and servers, set top boxes (STB), digital and analog television.
In the suspension letter dated December 28, 2007, the Examining Attorney argues that the Registrant’s identification of goods includes “computer programs without any limitation as to function” and that these goods are closely related to Applicant’s goods. However, Applicant asserts that the Examining Attorney’s interpretation of the identification is incorrect and directly contradicts an examination guide issued by the PTO on May 3, 1999. Examination Notes - 99/1 states that the terms “computer programs and computer software are generally interchangeable” and requires that identifications using these terms must indicate function or purpose of the program and if the program is content or field specific, the field of use. (Examination Notes - 99/1, pp. 1, 3). Because the Registrant’s trademark application was filed on March 26, 2003, the Registrant’s application was presumably in compliance with Examination Notes 99/1. Therefore, for the Registrant’s identification to be considered acceptable in accordance with Examination Notes 99/1, the identification must be read so that all of the description of goods that occurs before the limiting wording “namely” is limited by all of the description of goods that occurs after the limiting wording “namely.” Accordingly, the identification must be read such that both “computer programs” and “computer software” are limited to “computer programs” the function of which is to transmit communications and data. This reading is also consistent with the fact that the description of goods following the limiting wording “namely” is “computer programs for” rather than “computer software for”.
In the Office Action dated September 26, 2006, the Examining Attorney argues that the parties’ goods are closely related because they both can be described as types of computer software for “communications and transmission”. However, this type of generalization is improper and is, in fact, inaccurate. With respect to the former point, Applicant avers that it is settled in this regard that while a term may be found which encompasses the goods at issue, such does not mean that customers will view the respective goods as commercially or otherwise closely related in the sense that they will assume that they emanate from or are associated with a common source. See, e.g., General Electric Co. v. Graham Magnetics Inc., 197 USPQ 690, 694 (TTAB 1977). With respect to the latter point, Applicant notes that the primary purpose of the Applicant’s goods is not to transmit or control the transmission of data and communications. Instead, the primary purpose of Applicant’s goods is to manage video and audio information from connected sources and to integrate those sources as part of a video surveillance system. Any transmission of data is completely incidental and ancillary to performing this function. Information about Applicant’s goods is submitted herewith. On the other hand, the primary purpose of Registrant’s computer programs is to transmit communications and data. Such software is used to assist IT departments with the distribution of computer software for downloading to the personal computers of the company’s employees. Thus, the parties’ computer software/programs perform very different functions and are, naturally, used in entirely different applications. Moreover, the purchasers and users of the parties’ computer software/programs are entirely different.
The TMEP states that there can be no rule that certain goods are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto. See TMEP 1207.01(a)(iv). While Applicant does not dispute the similarity of the marks, it does point out that the “no per se” rule on the relatedness of goods is especially pertinent in the computer program/software fields. It is common knowledge in this age that similar marks can be used on software in different fields without a likelihood of confusion. See, e.g., Information Resources Inc. v. X*Press Information Services, 6 USPQ2d 1034, 1038 (TTAB 1988) (regarding computer hardware and software, “As a result of the veritable explosion of technology in the computer field over the last several years and the almost limitless number of specialized products and specialized uses in this industry, we think that a per se rule relating to source confusion vis-a-vis computer hardware and software is simply too rigid and restrictive an approach and fails to consider the realities of the marketplace.”). In this case, Applicant’s computer software is in the field of video surveillance and the registrant’s computer software is in the unrelated field of communications and data transmission.
The Examining Attorney has the burden of making a prima facie showing that the parties’ goods are related in some manner or that the circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons under situations that would give rise, because of the marks employed in connection therewith, to the mistaken belief that they originate from or are in some way associated with the same entity or provider. By failing to provide any evidence to establish that the parties’ goods are related, the instant refusal is per se deficient. Moreover, as previously explained, the parties’ goods are not likely to be encountered by the same persons given their very different functions and applications.
Applicant respectfully requests that the likelihood of confusion refusal be withdrawn.
