| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 76691821 |
| LAW OFFICE ASSIGNED | LAW OFFICE 116 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
The Examining Attorney has required Applicant to amend the identification of goods. In response thereto, Applicant has complied with the Examining Attorney's request. In addition the Examiner has inquired into the significance of SOFTLAB in the industry in which the goods are manufactured or provided, or if such wording is a term of art within the Applicant's industry; or if the wording identifies a geographic place. To Applicant's knowledge, the mark has no significance in Applicant's industry, is not a term of art within the industry, and has no geographic significance. The Examining Attorney has also required that Applicant submit a substitute specimen indicating that the submitted specimen is not acceptable because it consists of advertising materials for the goods. In response Applicant has submitted a substitute specimen with a supporting declaration indicating that the specimen was in use in commerce at least as early as the filing date of this application, August 4, 2008. Finally, the Examiner has refused registration of the mark SOFTLAB for "computer software programs used for workflow efficiency and production in a laboratory, hospital clinic or allied health environment," on the ground of likelihood of confusion with U.S. Registration Numbers 2909853, 2909854, 2905857 and 2905858. Registration Nos. 2909853 and 2905858 are for the marks SOFTLAB & Design and SOFTLAB respectively, for "business consultation services." Registration Nos. 2905857 and 2909854 are for the marks SOFTLAB & Design and SOFTLAB, for "information technology consulting services." All of these marks are owned by Cirquent GmbH. The Applicant respectfully traverses this refusal to register. There are distinct differences in each of the cited marks to preclude confusion. It is noted that "confusion is related not to the nature of the mark but to its affect when applied to the goods or services of the Applicant. [Therefore] the only relevant application is made in the marketplace." In re E.I. DuPont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). TMEP 1207.01. It is respectfully suggested that sufficient weight has not been given to the distinct differences in the goods sold under Applicant's mark and the services rendered by the cited Registrations. The cited marks are used in association with services that are distinctly different from Applicant's goods. Applicant uses its mark in connection with computer software, by contrast, the cited Registrant offers business and IT consulting services under its marks. These goods and services are entirely different and travel through different channels of trade. In the case at hand, there is no overlap between the identification of services for the cited Registrations and Applicant's identification of goods. Applicant's offers highly specialized software that is used for used for workflow efficiency and productivity in labs, hospital clinics and/or allied health environments. On the other hand, the cited mark's services relate to business and IT consulting. Because of the wholly different uses of the goods and services, and the wholly different markets for the goods and services sold under the respective marks, there is no chance for confusion as to source by the average consumer. The conditions under which the goods and services are encountered in the marketplace must also be considered when evaluating the likelihood that a mark sought to be registered in an application might be confused with a registered mark. T.M.E.P. § 1207.01. The channels of trade in which the Applicant's goods and the cited services travel and the conditions under which the goods are encountered are significantly dissimilar. Applicant's goods are targeted to labs, hospital clinics and allied health environments in order to improve their workflow and productivity. Applicant's consumers are looking for a software product that promotes enterprise-wide connectivity and allows for the incorporation of new technologies for efficiency. Based on the foregoing, consumers would not accidentally purchase Applicant's software goods when they mean to purchase Registrant's business and IT consulting services. These goods do not move in the same channels of trade, and as such, there is no likelihood of confusion between Applicant's mark and the cited registrations. Furthermore, Applicant's goods and Registrant's services have co-existed on the market years without any known instances of confusion. Another factor in determining likelihood of confusion is the sophistication of the likely consumer. See du Pont, 476 F.2d at 1361. Applicant's software products are costly and perform a highly specialized function. The purchaser of Applicant's products will be highly trained and will carefully select the product based on technical specifications and how these specifications meet his or her needs. Applicant's software targets high level personnel, whereas the cited Registrations offer business and IT consulting services. The substantial investment in both time and money by the purchaser of Applicant's software lessens the likelihood of confusion based on the respective marks at issue. See Electronic Design and Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 718-19 (Fed. Cir. 1992) (holding that expensive goods purchased by persons highly knowledgeable about the goods substantially lessons likelihood of confusion); Astra Pharmaceutical Prods., Inc. v. Beckman Instr., Inc., U.S.P.Q. 786, 790 (1st Cir. 1983) ("There is always less likelihood of confusion where goods are expensive and purchased after careful consideration."). In this case, there is no likelihood that Applicant's software would be purchased on impulse because of the sophistication, specialization and expense of the products, and therefore, there is no likelihood that Applicant's software product would be confused with the Registrant's business and IT consulting services. Moreover, courts have consistently interpreted the likelihood of confusion standard as requiring much more than a "possibility" of confusion. McGregor- Doniger Inc. v. Drizzle, Inc., 599 F.2d 1126 (2d Cir. 1979) (an "appreciable number of ordinary prudent purchasers are likely to be misled, or indeed simply confused "); International Association of Machinists & Aerospace Workers v. Winship Green Nursing Center, 103 F.3d 196 (1st Cir. 1996) ("the law has long demanded a showing that the allegedly infringing conduct carries with it a likelihood of confounding an appreciable number of reasonably prudent purchasers exercising ordinary care"); Estee Lauder Inc. v. The Gap, Inc., 108 F.3d 1503 (2d Cir. 1997) ("likelihood of confusion means a probability of confusion; it is not sufficient if confusion is merely 'possible' "); Elvis Presley Enterprises Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998) (" likelihood of confusion is synonymous with a probability of confusion, which is more than a mere possibility of confusion"). The present mark, therefore, can be distinguished from the cited registrations based on the dissimilarity of the Applicant's goods and Registrant's services, the dissimilarity of the channels of trade, and the sophistication of Applicant's consumers. These factors eliminate the probability (not possibility) of confusion between Applicant's mark and the cited registration. If the Examining Attorney has any outstanding issues, Applicant's undersigned counsel encourages a telephone call. In view of the foregoing, the Applicant believes the application is in condition for publication. Such action is solicited. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | Computer software programs |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 06/01/1990 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/01/1990 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| computer software programs used for workflow efficiency and production in a laboratory, hospital clinic or allied health environment | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 06/01/1990 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/01/1990 |
| STATEMENT TYPE | 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 FILE NAME(S) |
\\TICRS\EXPORT6\IMAGEOUT6 \766\918\76691821\xml1\RO A0002.JPG |
| SPECIMEN DESCRIPTION | splash screen |
| SIGNATURE SECTION | |
| ORIGINAL PDF FILE | HS_124525566-145202714_._S1685.20000US00.DEC.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT6\IMAGEOUT6\766\918\76691821\xml1\ROA0003.JPG |
| SIGNATORY'S NAME | Gilbert Hakim |
| SIGNATORY'S POSITION | CEO |
| RESPONSE SIGNATURE | /lwm/ |
| SIGNATORY'S NAME | Lisa W. Martin |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 04/28/2009 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Apr 28 15:01:40 EDT 2009 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 090428150140163384-766918 21-430da4ebaa34728cdfbf02 be8786d7f9962-N/A-N/A-200 90428145202714710 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
The Examining Attorney has required Applicant to amend the identification of goods. In response thereto, Applicant has complied with the Examining Attorney's request.
In addition the Examiner has inquired into the significance of SOFTLAB in the industry in which the goods are manufactured or provided, or if such wording is a term of art within the Applicant's industry; or if the wording identifies a geographic place. To Applicant's knowledge, the mark has no significance in Applicant's industry, is not a term of art within the industry, and has no geographic significance.
The Examining Attorney has also required that Applicant submit a substitute specimen indicating that the submitted specimen is not acceptable because it consists of advertising materials for the goods. In response Applicant has submitted a substitute specimen with a supporting declaration indicating that the specimen was in use in commerce at least as early as the filing date of this application, August 4, 2008.
Finally, the Examiner has refused registration of the mark SOFTLAB for "computer software programs used for workflow efficiency and production in a laboratory, hospital clinic or allied health environment," on the ground of likelihood of confusion with U.S. Registration Numbers 2909853, 2909854, 2905857 and 2905858. Registration Nos. 2909853 and 2905858 are for the marks SOFTLAB & Design and SOFTLAB respectively, for "business consultation services." Registration Nos. 2905857 and 2909854 are for the marks SOFTLAB & Design and SOFTLAB, for "information technology consulting services." All of these marks are owned by Cirquent GmbH. The Applicant respectfully traverses this refusal to register.
There are distinct differences in each of the cited marks to preclude confusion. It is noted that "confusion is related not to the nature of the mark but to its affect when applied to the goods or services of the Applicant. [Therefore] the only relevant application is made in the marketplace." In re E.I. DuPont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). TMEP 1207.01.
It is respectfully suggested that sufficient weight has not been given to the distinct differences in the goods sold under Applicant's mark and the services rendered by the cited Registrations. The cited marks are used in association with services that are distinctly different from Applicant's goods. Applicant uses its mark in connection with computer software, by contrast, the cited Registrant offers business and IT consulting services under its marks. These goods and services are entirely different and travel through different channels of trade.
In the case at hand, there is no overlap between the identification of services for the cited Registrations and Applicant's identification of goods. Applicant's offers highly specialized software that is used for used for workflow efficiency and productivity in labs, hospital clinics and/or allied health environments. On the other hand, the cited mark's services relate to business and IT consulting. Because of the wholly different uses of the goods and services, and the wholly different markets for the goods and services sold under the respective marks, there is no chance for confusion as to source by the average consumer.
The conditions under which the goods and services are encountered in the marketplace must also be considered when evaluating the likelihood that a mark sought to be registered in an application might be confused with a registered mark. T.M.E.P. § 1207.01. The channels of trade in which the Applicant's goods and the cited services travel and the conditions under which the goods are encountered are significantly dissimilar. Applicant's goods are targeted to labs, hospital clinics and allied health environments in order to improve their workflow and productivity. Applicant's consumers are looking for a software product that promotes enterprise-wide connectivity and allows for the incorporation of new technologies for efficiency. Based on the foregoing, consumers would not accidentally purchase Applicant's software goods when they mean to purchase Registrant's business and IT consulting services. These goods do not move in the same channels of trade, and as such, there is no likelihood of confusion between Applicant's mark and the cited registrations. Furthermore, Applicant's goods and Registrant's services have co-existed on the market years without any known instances of confusion.
Another factor in determining likelihood of confusion is the sophistication of the likely consumer. See du Pont, 476 F.2d at 1361. Applicant's software products are costly and perform a highly specialized function. The purchaser of Applicant's products will be highly trained and will carefully select the product based on technical specifications and how these specifications meet his or her needs. Applicant's software targets high level personnel, whereas the cited Registrations offer business and IT consulting services. The substantial investment in both time and money by the purchaser of Applicant's software lessens the likelihood of confusion based on the respective marks at issue. See Electronic Design and Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 718-19 (Fed. Cir. 1992) (holding that expensive goods purchased by persons highly knowledgeable about the goods substantially lessons likelihood of confusion); Astra Pharmaceutical Prods., Inc. v. Beckman Instr., Inc., U.S.P.Q. 786, 790 (1st Cir. 1983) ("There is always less likelihood of confusion where goods are expensive and purchased after careful consideration."). In this case, there is no likelihood that Applicant's software would be purchased on impulse because of the sophistication, specialization and expense of the products, and therefore, there is no likelihood that Applicant's software product would be confused with the Registrant's business and IT consulting services.
Moreover, courts have consistently interpreted the likelihood of confusion standard as requiring much more than a "possibility" of confusion. McGregor- Doniger Inc. v. Drizzle, Inc., 599 F.2d 1126 (2d Cir. 1979) (an "appreciable number of ordinary prudent purchasers are likely to be misled, or indeed simply confused "); International Association of Machinists & Aerospace Workers v. Winship Green Nursing Center, 103 F.3d 196 (1st Cir. 1996) ("the law has long demanded a showing that the allegedly infringing conduct carries with it a likelihood of confounding an appreciable number of reasonably prudent purchasers exercising ordinary care"); Estee Lauder Inc. v. The Gap, Inc., 108 F.3d 1503 (2d Cir. 1997) ("likelihood of confusion means a probability of confusion; it is not sufficient if confusion is merely 'possible' "); Elvis Presley Enterprises Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998) (" likelihood of confusion is synonymous with a probability of confusion, which is more than a mere possibility of confusion"). The present mark, therefore, can be distinguished from the cited registrations based on the dissimilarity of the Applicant's goods and Registrant's services, the dissimilarity of the channels of trade, and the sophistication of Applicant's consumers. These factors eliminate the probability (not possibility) of confusion between Applicant's mark and the cited registration.
If the Examining Attorney has any outstanding issues, Applicant's undersigned counsel encourages a telephone call. In view of the foregoing, the Applicant believes the application is in condition for publication. Such action is solicited.
