| PTO Form (Rev 4/2000) |
| OMB No. 0651-.... (Exp. 08/31/2004) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77604851 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
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RESPONSE AFTER FINAL REFUSAL TO REGISTER In the event that the Patent and Trademark Office maintains the refusal to register in spite of Applicant’s request for reconsideration herein, Applicant, pursuant to Trademark Rule 2.64(a), 37 C.F.R. §2.64(a), has filed simultaneously herewith a Notice of Appeal to the Trademark Trial and Appeal Board in response to the Office Action issued August 12, 2009. REQUEST FOR RECONSIDERATION Pursuant to Trademark Rule 2.64(b), Applicant respectfully requests that the Trademark Examiner reconsider and withdraw the refusal to register based, in part, on the arguments previously presented and made of record concerning the differences between the respective products, target markets and channels of trade, which are incorporated and further developed herein. Additionally, Applicant submits that confusion is not likely based, in part, on a lack of actual confusion during eight months of concurrent use, and because the Cited Registration is only entitled to a narrow scope of protection. As previously explained, Applicant sells cellular phones; Registrant markets a subscription-based software product that enables a user to broadcast the images on his computer screen to up to 100 other computer users. These products are different, and not interchangeable for the same purpose. See 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §24:23 at 24-44 (4th ed. 2008). Further, Registrant’s software is targeted to businesses, while Applicant’s phones are marketed to those seeking to engage in daily communications. Finally, Applicant sells its phones under the Verizon Wireless brand through its own stores, on its own website and through authorized retailers. Registrant’s software is available at its website, www.glancenetworks.com. Thus, confusion is not likely based, in part, on the fact that Applicant and Registrant market different products for different purposes to distinct classes of consumers through unique channels of trade. The Examining Attorney correctly points out that "a determination of whether there is a likelihood of confusion is made solely on the basis of the goods and/or services identified in the application and registration." Indeed, although the Examining Attorney suggests otherwise, the Cited Registration and underlying application directly support Applicant’s arguments against finding a likelihood of confusion. Specifically, the Cited Registration describes Registrant’s goods and services as "computer software for enabling users to remotely view other user on-screen applications via the Internet; computer software for transmitting data, graphics, audio and/or video over electronic communications networks; computer software for creating, offering, hosting, and delivering online conferences, meetings, demonstrations, tours, presentations, and discussions" and "providing temporary use of non-downloadable computer software for enabling users to remotely view other user on-screen applications via the Internet", respectively. In support of its application, Registrant submitted a specimen that depicts Registrant’s website advertising a software product that allows users to show their computer screens to others. Indeed, the specimen advertises specific business uses for Registrant’s GLANCE product, i.e., demonstrations, sales presentations and customer training. Thus, Applicant’s arguments that the Registrant’s goods are distinct from Applicant’s, and that they are sold in a particular manner to consumers for particular purposes are wholly grounded in the Cited Registration and underlying application therefor. Under United States law, trademark rights arise based on use of a mark in commerce and the specimens of record make clear what that use concerns, thereby giving context to the description of the products in the registration. In other words, Registrant’s rights in GLANCE arise from its use of that mark on the products and services it has actually offered in commerce. Its rights in GLANCE, therefore, cannot be interpreted broadly enough to bar registration of any and all products involving in "data transmission" without regard to the specific products at issue. Additionally, the divergent nature of the parties’ products and the absence of any likelihood of confusion is established by the coexistence of their respective marks without confusion. Specifically, Applicant has used GLANCE concurrently with the Cited Registration for over eight months without any instance of confusion, which strongly suggests that confusion is unlikely to occur in the future. Lack of evidence of actual confusion weighs heavily against a finding of likelihood of confusion. See Chase Manhattan Bank, USA v. Freedom Card, Inc., 333 F. Supp. 2d 239, 249-250 (D. Del 2004). Furthermore, notwithstanding the Examining Attorney’s assertion of Registrant’s purported exclusive rights in the mark GLANCE, independent third parties have frequently used and registered GLANCE and variants in connection with goods associated with Class 9. The representative registrations listed below not only suggest widespread use of the term "GLANCE," but also demonstrate the narrow scope of protection afforded to such marks:
Copies of the Certificates of Registration and specimens of use related thereto, where available, are attached hereto as Exhibits 1 and 2. Such third party activity reveals that "GLANCE" is entitled to a narrow scope of protection. These numerous registrations suggest the ability of consumers to differentiate between and amongst uses of GLANCE and variants, even though they are all used in association with Class 9 goods, many of which are more closely related or aligned with those identified by the Cited Reference than Verizon Wireless’ wireless communications devices. Accordingly, there is ample room on the register and in the marketplace for Applicant’s mark to co-exist with the Cited Registration. Indeed, a mark that is hemmed in on all sides by similar marks on similar goods cannot be so "distinctive" as to justify a widespread scope of protection. 2 McCarthy, § 11:85 at 11-144. It is merely one of a crowd of marks. Id. In such a crowd, customers will not likely be confused between any two members of the crowd and will have learned to carefully distinguish one from the other. Id. (footnote omitted); Sun Banks of Fla. v. Sun Fed. Sav. & Loan, 651 F.2d 311, 316 (5th Cir. 1981) (finding the extensive third-party use of the word "Sun" impressive evidence that there would be no likelihood of confusion between "Sun Banks" and "Sun Federal"). It is likewise apparent that the Patent and Trademark Office has determined, implicitly at least, that consumers are capable of distinguishing between various marks comprised of or incorporating the term GLANCE. That consumers are also likely to distinguish between the Applicant’s mark and the Cited Reference is a reasonable conclusion. Thus, there appears to be sufficient room on the Register and in the marketplace for Applicant’s mark to co-exist with the Cited Reference, particularly in view of the difference between the goods discussed herein and in the July 20, 2009 Response to Office Action. Respectfully, the Examining Attorney has set forth arguments that support a theoretical finding of a possibility for confusion; they do not demonstrate a likelihood of confusion as to the source of parties’ respective goods. See, e.g., United Foods Inc. v. United Air Lines, Inc., 41 U.S.P.Q. 2d 1653, 1663 (T.T.A.B. 1995), quoting Witco Chemical Co. v. Whitfield Chemical Co., 418 F.2d 1403, 1405, 164 U.S.P.Q. 43, 44-45 (C.C.P.A. 1969) ("We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations, but with the practicalities of the commercial world, with which trademark laws deal."). Confusion is simply not likely between these marks. T.M.E.P. § 1207.01(a)(i). Applicant, therefore, respectfully requests that the Examiner’s final refusal be withdrawn and that the application be approved for protection. Prompt and favorable action is respectfully requested. |
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_2041949866-175956245_._EX1.pdf |
| CONVERTED PDF FILE(S) (21 pages) |
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| ORIGINAL PDF FILE | evi_2041949866-175956245_._EX2.pdf |
| CONVERTED PDF FILE(S) (19 pages) |
\\TICRS\EXPORT9\IMAGEOUT9\776\048\77604851\xml1\RFR0023.JPG |
| \\TICRS\EXPORT9\IMAGEOUT9\776\048\77604851\xml1\RFR0024.JPG | |
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| DESCRIPTION OF EVIDENCE FILE | Certificates of registration and specimens related thereto |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /lbe/ |
| SIGNATORY'S NAME | Lauren Beth Emerson |
| SIGNATORY'S POSITION | attorney for applicant [ny bar] |
| DATE SIGNED | 02/12/2010 |
| AUTHORIZED SIGNATORY | YES |
| CONCURRENT APPEAL NOTICE FILED | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Feb 12 18:38:04 EST 2010 |
| TEAS STAMP | USPTO/RFR-XXX.XXX.XX.XX-2 0100212183804723525-77604 851-4602efa1b94ac4a20cc50 ad59893e24c966-N/A-N/A-20 100212175956245535 |
| PTO Form (Rev 4/2000) |
| OMB No. 0651-.... (Exp. 08/31/2004) |
RESPONSE AFTER FINAL REFUSAL TO REGISTER
In the event that the Patent and Trademark Office maintains the refusal to register in spite of Applicant’s request for reconsideration herein, Applicant, pursuant to Trademark Rule 2.64(a), 37 C.F.R. §2.64(a), has filed simultaneously herewith a Notice of Appeal to the Trademark Trial and Appeal Board in response to the Office Action issued August 12, 2009.
REQUEST FOR RECONSIDERATION
Pursuant to Trademark Rule 2.64(b), Applicant respectfully requests that the Trademark Examiner reconsider and withdraw the refusal to register based, in part, on the arguments previously presented and made of record concerning the differences between the respective products, target markets and channels of trade, which are incorporated and further developed herein. Additionally, Applicant submits that confusion is not likely based, in part, on a lack of actual confusion during eight months of concurrent use, and because the Cited Registration is only entitled to a narrow scope of protection.
As previously explained, Applicant sells cellular phones; Registrant markets a subscription-based software product that enables a user to broadcast the images on his computer screen to up to 100 other computer users. These products are different, and not interchangeable for the same purpose. See 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §24:23 at 24-44 (4th ed. 2008). Further, Registrant’s software is targeted to businesses, while Applicant’s phones are marketed to those seeking to engage in daily communications. Finally, Applicant sells its phones under the Verizon Wireless brand through its own stores, on its own website and through authorized retailers. Registrant’s software is available at its website, www.glancenetworks.com. Thus, confusion is not likely based, in part, on the fact that Applicant and Registrant market different products for different purposes to distinct classes of consumers through unique channels of trade.
The Examining Attorney correctly points out that "a determination of whether there is a likelihood of confusion is made solely on the basis of the goods and/or services identified in the application and registration." Indeed, although the Examining Attorney suggests otherwise, the Cited Registration and underlying application directly support Applicant’s arguments against finding a likelihood of confusion. Specifically, the Cited Registration describes Registrant’s goods and services as "computer software for enabling users to remotely view other user on-screen applications via the Internet; computer software for transmitting data, graphics, audio and/or video over electronic communications networks; computer software for creating, offering, hosting, and delivering online conferences, meetings, demonstrations, tours, presentations, and discussions" and "providing temporary use of non-downloadable computer software for enabling users to remotely view other user on-screen applications via the Internet", respectively. In support of its application, Registrant submitted a specimen that depicts Registrant’s website advertising a software product that allows users to show their computer screens to others. Indeed, the specimen advertises specific business uses for Registrant’s GLANCE product, i.e., demonstrations, sales presentations and customer training. Thus, Applicant’s arguments that the Registrant’s goods are distinct from Applicant’s, and that they are sold in a particular manner to consumers for particular purposes are wholly grounded in the Cited Registration and underlying application therefor.
Under United States law, trademark rights arise based on use of a mark in commerce and the specimens of record make clear what that use concerns, thereby giving context to the description of the products in the registration. In other words, Registrant’s rights in GLANCE arise from its use of that mark on the products and services it has actually offered in commerce. Its rights in GLANCE, therefore, cannot be interpreted broadly enough to bar registration of any and all products involving in "data transmission" without regard to the specific products at issue.
Additionally, the divergent nature of the parties’ products and the absence of any likelihood of confusion is established by the coexistence of their respective marks without confusion. Specifically, Applicant has used GLANCE concurrently with the Cited Registration for over eight months without any instance of confusion, which strongly suggests that confusion is unlikely to occur in the future. Lack of evidence of actual confusion weighs heavily against a finding of likelihood of confusion. See Chase Manhattan Bank, USA v. Freedom Card, Inc., 333 F. Supp. 2d 239, 249-250 (D. Del 2004).
Furthermore, notwithstanding the Examining Attorney’s assertion of Registrant’s purported exclusive rights in the mark GLANCE, independent third parties have frequently used and registered GLANCE and variants in connection with goods associated with Class 9. The representative registrations listed below not only suggest widespread use of the term "GLANCE," but also demonstrate the narrow scope of protection afforded to such marks:
Copies of the Certificates of Registration and specimens of use related thereto, where available, are attached hereto as Exhibits 1 and 2.
Such third party activity reveals that "GLANCE" is entitled to a narrow scope of protection. These numerous registrations suggest the ability of consumers to differentiate between and amongst uses of GLANCE and variants, even though they are all used in association with Class 9 goods, many of which are more closely related or aligned with those identified by the Cited Reference than Verizon Wireless’ wireless communications devices. Accordingly, there is ample room on the register and in the marketplace for Applicant’s mark to co-exist with the Cited Registration.
Indeed, a mark that is hemmed in on all sides by similar marks on similar goods cannot be so "distinctive" as to justify a widespread scope of protection. 2 McCarthy, § 11:85 at 11-144. It is merely one of a crowd of marks. Id. In such a crowd, customers will not likely be confused between any two members of the crowd and will have learned to carefully distinguish one from the other. Id. (footnote omitted); Sun Banks of Fla. v. Sun Fed. Sav. & Loan, 651 F.2d 311, 316 (5th Cir. 1981) (finding the extensive third-party use of the word "Sun" impressive evidence that there would be no likelihood of confusion between "Sun Banks" and "Sun Federal").
It is likewise apparent that the Patent and Trademark Office has determined, implicitly at least, that consumers are capable of distinguishing between various marks comprised of or incorporating the term GLANCE. That consumers are also likely to distinguish between the Applicant’s mark and the Cited Reference is a reasonable conclusion. Thus, there appears to be sufficient room on the Register and in the marketplace for Applicant’s mark to co-exist with the Cited Reference, particularly in view of the difference between the goods discussed herein and in the July 20, 2009 Response to Office Action.
Respectfully, the Examining Attorney has set forth arguments that support a theoretical finding of a possibility for confusion; they do not demonstrate a likelihood of confusion as to the source of parties’ respective goods. See, e.g., United Foods Inc. v. United Air Lines, Inc., 41 U.S.P.Q. 2d 1653, 1663 (T.T.A.B. 1995), quoting Witco Chemical Co. v. Whitfield Chemical Co., 418 F.2d 1403, 1405, 164 U.S.P.Q. 43, 44-45 (C.C.P.A. 1969) ("We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations, but with the practicalities of the commercial world, with which trademark laws deal."). Confusion is simply not likely between these marks. T.M.E.P. § 1207.01(a)(i). Applicant, therefore, respectfully requests that the Examiner’s final refusal be withdrawn and that the application be approved for protection. Prompt and favorable action is respectfully requested.
