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. 77355250 has been amended as follows:

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

The OHIM application on which priority is claimed herein matured to registration on June 19, 2008, No. 006109714, and a copy of the registration certificate is attached.  Applicant wishes to proceed to registration under Section 44 on the basis of the OHIM registration.  Accordingly, it is requested that the Section 1(b) basis be deleted for Classes 9 and 42, by this amendment.

In keeping with the examining attorney's guidance and suggestions, the identification of goods and recitation of services have been amended.

The examining attorney refused registration under Trademark Act Section 2(d), "because the applicant's mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 3,031,856 as to be likely to cause confusion, or to cause mistake, or to deceive."  The examining attorney made this determination based on similarities in appearance, sound, connotation and commercial impression of the two marks and relatedness of applicant's goods to those goods in the cited registration.

With respect to the issue of relatedness of the goods, it should be noted that the cited mark "T-MAPS" is owned by the telephone company Deutsche Telekom AG, and, not surprisingly, the goods recited in the registration relate generally to telecommunications and related activities.  For example, the goods recited in the registration include the broad expression "electric, electronic, optical, measuring . . . apparatus and instruments," but this is restricted by the limitation "all for use with telecommunications," and it includes "computer software programs," but these are specifically "for use in operating telecommunications and business management systems."  By the present amendment, applicant has clarified its identification of goods and recitation of services, making it clear that applicant's goods and services, nondestructive evaluation and materials evaluation, are different from and totally unrelated to the goods in the cited registration, they are aimed at a completely different market, they do not move in the same or similar channels of trade, and thus are not encountered by the same or similar potential customers.

The examining attorney believes that applicant's mark "MAPS" is similar in appearance and sound to registrant's mark "T-MAPS" in that they both share the common term MAPS and that the mere deletion of wording from a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d), citing In re Optical Int'l, 196 USPQ 775 (TTAB 1977) (Where applicant filed to register the mark OPTIQUE for optical wear, deletion of the term BOUTIQUE is insufficient to distinguish the mark, per se, from the registered mark OPTIQUE BOUTIQUE when used in connection with competing optical wear). The examining attorney said that in the present case, the mere deletion of "T-" from the applicant's mark does not obviate a determination of a likelihood of confusion with registrant's mark.  In the cited decision, however, the goods were "competing optical wear," whereas in the present application, applicant's goods are totally different from and non-competing with the goods of the cited registration of T-MAPS.  Also, in the decision, the cited mark "OPTIQUE BOUTIQUE" differed from the mark "OPTIQUE" of the application only by the additional descriptive and non-distinctive word boutique, which means shop.  In the present application, Deutsche Telekom, the proprietor of the cited mark "T-MAPS," has a large number of other marks registered in the United States which include the distinctive element "T-," for example, "T-HEALTH," "T-MONEY," "T-SHOPPING," "T-CAREERS," "T-MOBILE TEAM," "T-Mobile Home," "T-Systems Traffic," etc., from which it is clear that the element "T-" is the one common characteristic of Deutsche Telekom's marks and is neither descriptive nor non-distinctive.  In contrast, applicant's mark "MAPS" is significantly different from the cited mark "T-MAPS" by the absence of the one distinctive characteristic "T-".  In any event, regardless of the similarities in appearance which may exist between the two marks, because applicant’s goods, nondestructive evaluation and materials evaluation, and their channels of trade are so totally different from those of the cited registration, confusion as to source is highly unlikely.

The mark of the present application is entitled to registration, and favorable action is courteously solicited.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Electronic instrumentation for measuring the properties of materials; instruments including magnetic probes for measuring material properties; software for determining material properties from electromagnetic measurements
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [European Community application number 006109714 filed 07/18/2007]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 009 for Electronic instrumentation for measuring mechanical and electromagnetic properties of materials, namely mechanical stress, electrical conductivity, electrical resistivity, magnetic permeability and magnetic coercivity, for use in the field of nondestructive examination of structures; electromagnetic probes for measuring mechanical and electromagnetic properties of materials, namely mechanical stress, electrical conductivity, electrical resistivity, magnetic permeability and magnetic coercivity for use in the field of nondestructive examination of structures; software for determining mechanical and electromagnetic properties of materials, namely mechanical stress, electrical conductivity, electrical resistivity, magnetic permeability and magnetic coercivity, from electromagnetic measurements using an electromagnetic probe
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [European Community application number 006109714 filed 07/18/2007]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ European Community registration number 006109714 registered 06/19/2008 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU0-6710329197-181426243_._OHIMReg.pdf
Converted PDF file(s) (3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Consultancy services and advisory services relating to material testing; material testing services; measurements of material properties using magnetic fields
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed: Class 042 for Consultancy services and advisory services relating to materials testing; material testing services; materials testing, namely, measurements of mechanical and electromagnetic properties of materials, namely mechanical stress, electrical conductivity, electrical resistivity, magnetic permeability and magnetic coercivity using magnetic fields
Deleted Filing Basis: 1(b)
Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ European Community registration number 006109714 registered 06/19/2008 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /William H Holt/     Date: 09/24/2008
Signatory's Name: William H. Holt
Signatory's Position: Attorney of Record, Virginia bar member

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.

        
Serial Number: 77355250
Internet Transmission Date: Wed Sep 24 18:43:43 EDT 2008
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2008092418434375
3876-77355250-430e7528e79b24276bc4b81aec
a0f0f5-N/A-N/A-20080924181426243161