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. 77006382 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

The Examining Attorney has refused registration of the mark "Liaison" and design ("Applicant's Mark"), owned by Liaison Technologies, LLC (“Applicant”) due to a likelihood of confusion between the Applicant's Mark and the prior registered mark, "Liaison" (and design) registration number 2427938 (the "Registered Mark") owned by Avnet, Inc. (“Registrant”).  In her refusal, the Examining Attorney takes the position that because the literal portions of the marks are identical and the goods related, registration is refused.

As further described herein, the Applicant’s services, as amended in this response, are demonstratively distinctive from the Registrant’s services, such that when considered along with the differences between the two marks, there is no likelihood of confusion among the relevant consumer market between the two marks.  In addition, the sale of Applicant’s services involves a high degree of care with sophisticated buyers so that consumer confusion as to the source of the services is not likely.  Finally, the Applicant is not aware of any actual instances of confusion between the Applicant’s Mark and the Registered Mark.  Accordingly, the Applicant respectfully requests that the objection to registration of the Applicant's Mark due to a likelihood of confusion with the Registered Mark be withdrawn.

THE SERVICES ARE DISTINCTIVE.

The Applicant has amended its identification of services so as to more specifically describe those services.  The resulting services are distinctive from the Registrant’s services such that confusion by consumers as to the source of the services is not likely.  The amended description of Applicant’s services reads:

Class 35 Business consulting services regarding business strategies, process flow, architecture, and data management for electronic business to business communications

Class 38 - Electronic communication services, namely electronic exchange of transactions between trading partners via telecommunication networks

Class 42 - Technical services for businesses in the fields of data and information cleansing, transcription, integration, conversion, maintenance and updating for others

The nature and scope of the Registrant’s services must be determined by the description contained in the application or certificate of registration. TMEP 1207.01(a)(iii).  As contained in its registration, the description of Registrant’s services is specifically limited to the field of “electrical, electronic and computer components and equipment for electronic management of inventory, information and production for others.”  The Registrant has chosen to narrow the scope of its services by limiting those services with which the Registered Mark is used to the field of electrical, electronic and computer components and equipment.  In addition, Registrant’s description does not describe communication or networking services between different business entities.  As further examined herein below, and taken at its literal interpretation, the Registered Mark is used in connection with services that enable Registrant’s customers to manage their own inventory of electronic and computer components and equipment.  This is quite different from the communication and related services provided by the Applicant under the Applicant’s Mark.

As amended, the description of Applicant’s services is readily distinguishable from Registrant’s services.  The Applicant provides communication services for exchange of data and information between trading partners, as well as certain business and technical data services.  In contrast, Registrant’s service involves inventory management for its customers in the limited field of computer parts and accessories.  Viewed in this context, it is not likely that consumers would encounter both marks under circumstances in which the consumer would be confused as to the source or origin of the respective services.  The services are directed at very different needs.  The issue is not whether the services are related (or even competitive), but rather are the services in question related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source. TEMP 1207.01(a)(i).

The examining attorney takes the position that the services are related because they are sold to “businesses seeking to integrate diverse computer systems and to allow information flow between them.”  Because integration and communication between computer systems is such a common, almost universal, component of any computer-related or communications services, consumers in the marketplace will simply not believe that all “integration services” would emanate from the same source simply because they are marketed under similar marks.  Similar marks used within the same broad category of services are not necessarily likely to cause confusion among consumers.  See e.g., Electronic Data Sys. Corp. v. EDSA Micro Corp., 23 USPQ2d 1460, 1463 (TTAB 1992)(“all computer programs process data, but it does not necessarily follow that all computer programs are related”). 

The integration (or networking) of different computer systems is involved as a component of virtually any computer or communications services.  As a result, the Registrant’s specific limitation of its services to the field of computer and computer components is particularly distinguishing in this instance.  In addition, Applicant’s communication services, which essentially provide a network through which trading partners can conduct transactions, and other services are readily distinguishable in the relevant industry in which consumers understand that integration and communication between different systems is a common component of any computer-related or communication services. 

The distinction between Applicant’s services and those of the Registrant are more clearly demonstrated, and Registrant’s description of services more clearly understood when the Registered Mark is viewed as it is actually being used.  Examples of how a mark is currently being used in commerce can be used to clarify industry interpretations for particular terms used in descriptions of services.  See, e.g., In re Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990), 1207.01(a)(iii).

It is significant to note that after diligent search (including a phone call to the Registrant’s customer service line), that the undersigned was not able to locate the Registered Mark anywhere on the Registrant’s web site, despite the fact that the specimens of use submitted with the Registrant’s initial application for registration, and the more recent Combined Declaration of Use and Incontestability (the “Declaration of Use”) were both purported to be copies of pages from the Registrant’s web site.  Nevertheless, attached as Exhibit A is a copy of the specimen of use recently submitted by Registrant as support for the Declaration of Use.  The specimen shows the Registered Mark being used in connection with “material management solutions.”  Further, the specimen of use describes the service with which the Registered Mark is used as a “step by step implementation process that helps customers transition an existing Avnet IMS material management solution from a customer’s site in one global region to another.” 

It is commonly understood in the industry that “integration of computer systems” as listed in the Registrant’s description of services could involve services to a customer’s own divergent systems or computers.  This interpretation is supported by the Registrant’s own specimen of use, which shows that integration of computers in this instance means to integrate different instances of Registrant’s own product solutions across different locations of its own customers to help its customers manage their own inventories.  When viewed in combination with the limitation to the field of computer and computer components as described in the Registrant’s description of services, the likelihood of confusion as to the source of Applicant’s services and Registrant’s services is even further diminished.

DISSIMILARITY OF MARKS

In the Office Action the Examining Attorney notes that the “literal” portions of the marks are identical.  Competing marks are compared in their entirety with regard to the overall commercial impression of the marks to the relevant public. TMEP 1207.01(b).  Both the Applicant’s Mark and the Registrant’s Marks are designs.  Visual dissimilarity is particularly relevant because consumers are likely to recall an overall general impression of the design.  There is no general rule as to whether letters or design will dominate in composite marks; nor is the dominance of letters or design dispositive of the issue. In re Electrolyte Laboratories, Inc., 929 F.2d 645, 16 USPQ2d 1239 (Fed. Cir. 1990).

When compared in their entireties, the Applicant’s Mark and the Registered Mark create significantly different commercial impressions.  The Registered Mark contains a hemisphere image that is arguably the dominant portion of the mark.  It is likely that the dominant hemisphere image is what will be recalled by consumers.  In contrast, the Applicant’s Mark contains a dotted line intersecting the literal portion of the mark.  In addition, the letter “I” in the center of the literal portion is represented as the interconnection of the dotted line.  The two marks create distinctive and different commercial impressions.  

THE HIGH DEGREE OF CARE TAKEN TO PURCHASE APPLICANT’S SERVICES

As described in the Declaration of Applicant’s CFO, Catherine Chandler, a copy of which is attached hereto as Exhibit B (the “Chandler Declaration”), and incorporated herein, consumers of Applicant’s services employ a high degree of care when purchasing the services.  Typically, the average Applicant consumer contemplates for 6 to 9 months before purchasing Applicant’s services.  In addition, the sales process involves multiple presentations, collaborative meetings with potential clients, and extensive written proposals.  Finally, the consumers of Applicant’s services are sophisticated buyers, who are mostly company officers or executives, with experience and expertise in computer and networking systems.  Where there is a high degree of care taken in a purchase decision, there is less likelihood of confusion. TMEP 1207.01(d)(vii).  The high degree of care taken to purchase Applicant’s services, particularly when the purchasers of the services are sophisticated buyers, serves to further lessen the likelihood of confusion between the Applicant’s Mark and the Registered Mark.

NO ACTUAL INSTANCES OF CONFUSION

As provided in the Chandler Declaration, Applicant is not aware of any instances of claimed or actual confusion between the Applicant’s Mark and the Registered Mark, or any other mark.

Evidence
Evidence in the nature of Copy of specimen of use from Avnet, Inc. (Registrant) Combined Declaration of Use and Incontestability ; Declaration of Catherine N. Chandler has been attached.
Original PDF file:
evi_6632137156-174057833_._8_15_Specimen.pdf
Converted PDF file(s) (1 page)
Evidence-1
Original PDF file:
evi_6632137156-174057833_._Chandler_declaration_77006382.pdf
Converted PDF file(s) (1 page)
Evidence-1

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 035 for Electronic communication services, namely, providing online and electronic network and software application services for the exchange and integration of electronic transactions, product data, records and information among businesses
Original Filing Basis: 1(a).
Proposed: Class 035 for Business consulting services regarding business strategies, process flow, architecture, and data management for electronic business to business communications
Filing Basis: 1(a).
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 042 for Business consulting services, namely, the development and implementation of strategies, software, architectures and processes for business to business electroinc transactions and product information repositories and exchanges
Original Filing Basis: 1(a).
Proposed: Class 042 for Technical services for businesses in the fields of data and information cleansing, transcription, integration, conversion, maintenance and updating for others
Filing Basis: 1(a).
Applicant hereby adds the following class of goods/services to the application:
New:
Class 038 for Electronic communication services, namely electronic exchange of transactions between trading partners via telecommunication networks
Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/28/2004 and first used in commerce at least as early as 04/28/2004, and is now in use in such commerce.
Applicant hereby submits a specimen for Class 038.
The specimen(s) submitted consists of Scanned image of brochure.
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."
Original PDF file:
SPN0-3-6632137156-174057833_._Specimen_Class_38.pdf
Converted PDF file(s) (2 pages)
Specimen File1
Specimen File2

Fees
Fee(s) in the amount of $325 is being submitted.


Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /BDAnthony/      Date: 05/07/2007
Signatory's Name: Brannon D Anthony
Signatory's Position: Attorney

Response Signature
Signature: /BDAnthony/     Date: 05/07/2007
Signatory's Name: Brannon D Anthony
Signatory's Position: Attorney

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
        
RAM Sale Number: 846
RAM Accounting Date: 05/08/2007
        
Serial Number: 77006382
Internet Transmission Date: Mon May 07 18:34:56 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2007050718345699
6766-77006382-37053af1dc6493679649f4871b
835d243e0-CC-846-20070507174057833131