| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 77009251 |
| LAW OFFICE ASSIGNED | LAW OFFICE 105 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
The examining attorney has refused registration under Section 2(d), citing a likelihood of confusion with the mark in Registration No. 2,623,046 because “data storage devices are related to the registrant’s ‘computerized database management and data processing’ services [in that] they are computer data-related products and services likely to travel through the same channels of trade to the same class of purchasers.” For the foregoing reasons, applicant asserts that the data storage devices identified by its mark are not sufficiently related to the “computerized database management and data processing” services identified by registrant’s mark such that a likelihood of confusion exists.
Goods or services are not related simply because they coexist in the same broad industry; rather, goods or services are related if they are marketed and consumed such that buyers are likely to believe that the goods come from the same source. Homeowners Group, Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1109 (6th Cir. 1991). The key issue in the likelihood of confusion analysis is whether both parties’ marks will be encountered by the same persons under circumstances giving rise to the mistaken belief that the goods originate from the same source. See Quartz Radiation Corp. v. Comm/Scope Co., 1 U.S.P.Q.2d 1668 (TTAB 1986). Moreover, with regard to computer products and services, the TTAB and courts have found that there is no per se rule that all computer products and services are related. The Toro Company v. ToroHead, Inc., 61 U.S.P.Q.2d 1164, 1168 (2001). In fact, the TTAB and courts have found against a likelihood of confusion in certain cases comparing products that are generally within the computer field. In re Quadram Corp., 228 U.S.P.Q. 863 (1985). For example, in Electronic Data Systems Corp. v. EDSA Micro Corp., in which the TTAB found that there was no likelihood of confusion between “computer programming services including the design, implementation and management of electronic data processing programs” and “computer programs for electrical distribution system analysis and design,” the Board stated the following, “All computer software programs process data, but it does not necessarily follow that all computer programs are related. Given the ubiquitous use of computers in all aspects of business in the United States today, this Board and its reviewing Court have rejected the view that a relationship exists between goods and services simply because each involves the use of computers. In particular, the fact that both parties provide computer programs does not establish a relationship between the goods or services, such that consumers would believe that all computer software programs emanate from the same course simply because they are sold under similar marks.” 23 U.S.P.Q.2d 1460, 1463 (1992).
In this case, the goods and services at issue are applicant’s “data storage devices” and registrant’s “computerized database management and data processing” services. The only point of commonalty between the goods and services is that, on a very broad level, both marks identify products and services that generally relate to “computer data.” Nevertheless, applicant’s goods and registrant’s services are completely different. The goods and services being compared are targeted at different consumers, travel through different channels of trade and are not in direct competition in the marketplace. Applicant’s products specifically are portable hard disk drives. These disk drives are used by a user of a personal computer to store and transport digital data such as pictures, music and videos. In fact, given that the examiner has declared applicant’s initial description of “data storage device” as indefinite, applicant is going to amend its description to clarify the products identified by its mark. This product will be marketed toward the average consumer with media and personal computer products.
Registrant’s services, on the other hand, are marketed towards sophisticated and highly educated consumers in the field of clinical and medical research. In reviewing registrant’s online file at in the USPTO document retrieval database and registrant’s website, the nature of registrant’s services and the targeted consumers are elucidated. Registrant describes itself in the specimens submitted to the USPTO in June of 2000 as a “nationwide network of Clinical Research Associates providing clinical site monitoring and project management consulting.” See Exhibit A. Moreover, registrant’s website describes its services as a “contract research organization.” See Exhibit B. Its services are marketed toward a more sophisticated and educated consumer in the specialized field of clinical and medical research. Registrant identifies its targeted consumers on its website, stating that its clients are in the “medical device, pharmaceutical, biotechnology and contract research organization (CRO) industries.” See Exhibit A. The computer programming services that registrant provides merely supplement its clinical and medical research services that it provides for its highly specialized clients. Thus, registrant’s “computer database management and data processing” services are completely different from applicant’s portable hard drives for storing media, for the goods and services are completely disparate computer products and services, marketed towards different consumers and travel through divergent channels of trade.
In view of the foregoing, applicant respectfully requests that the refusal be withdrawn and that the application be approved for publication.
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_1241553-120445026_._ExhibitA.pdf |
| CONVERTED PDF FILE(S) (5 pages) |
\\TICRS2\EXPORT12\770\092 \77009251\xml3\ROA0002.JP G |
| \\TICRS2\EXPORT12\770\092 \77009251\xml3\ROA0003.JP G | |
| \\TICRS2\EXPORT12\770\092 \77009251\xml3\ROA0004.JP G | |
| \\TICRS2\EXPORT12\770\092 \77009251\xml3\ROA0005.JP G | |
| \\TICRS2\EXPORT12\770\092 \77009251\xml3\ROA0006.JP G | |
| ORIGINAL PDF FILE | evi_1241553-120445026_._Exhibit_B.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS2\EXPORT12\770\092 \77009251\xml3\ROA0007.JP G |
| \\TICRS2\EXPORT12\770\092 \77009251\xml3\ROA0008.JP G | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A. Emissary LLC's U.S. trademark application for EMISSARY with specimens. Exhibit B. Page from Registrant's website. |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | data storage device |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | portable hard disk drive |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Kelley A. Lynch/ |
| SIGNATORY'S NAME | Kelley A. Lynch |
| SIGNATORY'S POSITION | Attorney for Applicant |
| DATE SIGNED | 03/05/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Mar 05 12:53:16 EST 2007 |
| TEAS STAMP | USPTO/ROA-XX.XX.XX.X-2007 0305125316094090-77009251 -3706e4ba781e8d95f4a49c4a 5864f6499-N/A-N/A-2007030 5120445026802 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
The examining attorney has refused registration under Section 2(d), citing a likelihood of confusion with the mark in Registration No. 2,623,046 because “data storage devices are related to the registrant’s ‘computerized database management and data processing’ services [in that] they are computer data-related products and services likely to travel through the same channels of trade to the same class of purchasers.” For the foregoing reasons, applicant asserts that the data storage devices identified by its mark are not sufficiently related to the “computerized database management and data processing” services identified by registrant’s mark such that a likelihood of confusion exists.
Goods or services are not related simply because they coexist in the same broad industry; rather, goods or services are related if they are marketed and consumed such that buyers are likely to believe that the goods come from the same source. Homeowners Group, Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1109 (6th Cir. 1991). The key issue in the likelihood of confusion analysis is whether both parties’ marks will be encountered by the same persons under circumstances giving rise to the mistaken belief that the goods originate from the same source. See Quartz Radiation Corp. v. Comm/Scope Co., 1 U.S.P.Q.2d 1668 (TTAB 1986). Moreover, with regard to computer products and services, the TTAB and courts have found that there is no per se rule that all computer products and services are related. The Toro Company v. ToroHead, Inc., 61 U.S.P.Q.2d 1164, 1168 (2001). In fact, the TTAB and courts have found against a likelihood of confusion in certain cases comparing products that are generally within the computer field. In re Quadram Corp., 228 U.S.P.Q. 863 (1985). For example, in Electronic Data Systems Corp. v. EDSA Micro Corp., in which the TTAB found that there was no likelihood of confusion between “computer programming services including the design, implementation and management of electronic data processing programs” and “computer programs for electrical distribution system analysis and design,” the Board stated the following, “All computer software programs process data, but it does not necessarily follow that all computer programs are related. Given the ubiquitous use of computers in all aspects of business in the United States today, this Board and its reviewing Court have rejected the view that a relationship exists between goods and services simply because each involves the use of computers. In particular, the fact that both parties provide computer programs does not establish a relationship between the goods or services, such that consumers would believe that all computer software programs emanate from the same course simply because they are sold under similar marks.” 23 U.S.P.Q.2d 1460, 1463 (1992).
In this case, the goods and services at issue are applicant’s “data storage devices” and registrant’s “computerized database management and data processing” services. The only point of commonalty between the goods and services is that, on a very broad level, both marks identify products and services that generally relate to “computer data.” Nevertheless, applicant’s goods and registrant’s services are completely different. The goods and services being compared are targeted at different consumers, travel through different channels of trade and are not in direct competition in the marketplace. Applicant’s products specifically are portable hard disk drives. These disk drives are used by a user of a personal computer to store and transport digital data such as pictures, music and videos. In fact, given that the examiner has declared applicant’s initial description of “data storage device” as indefinite, applicant is going to amend its description to clarify the products identified by its mark. This product will be marketed toward the average consumer with media and personal computer products.
Registrant’s services, on the other hand, are marketed towards sophisticated and highly educated consumers in the field of clinical and medical research. In reviewing registrant’s online file at in the USPTO document retrieval database and registrant’s website, the nature of registrant’s services and the targeted consumers are elucidated. Registrant describes itself in the specimens submitted to the USPTO in June of 2000 as a “nationwide network of Clinical Research Associates providing clinical site monitoring and project management consulting.” See Exhibit A. Moreover, registrant’s website describes its services as a “contract research organization.” See Exhibit B. Its services are marketed toward a more sophisticated and educated consumer in the specialized field of clinical and medical research. Registrant identifies its targeted consumers on its website, stating that its clients are in the “medical device, pharmaceutical, biotechnology and contract research organization (CRO) industries.” See Exhibit A. The computer programming services that registrant provides merely supplement its clinical and medical research services that it provides for its highly specialized clients. Thus, registrant’s “computer database management and data processing” services are completely different from applicant’s portable hard drives for storing media, for the goods and services are completely disparate computer products and services, marketed towards different consumers and travel through divergent channels of trade.
In view of the foregoing, applicant respectfully requests that the refusal be withdrawn and that the application be approved for publication.
