Response to Office Action

LIKELIHOOD OF CONFUSION  The Examining Attorney has refused registration of the Applicant's mark under Section 2(d) of the  Trademark Act on the basis of Reg. No. 2408454 owned by Leopard Communications.  However, no  consumer confusion is likely.  The Applicant, Apple Computer, Inc. ("Apple"), originally applied for registration of the mark LEOPARD for a  broad recitation of goods, covering all types of computer hardware and software.  However,  in this office  action response, Apple has limited its recitation of goods to "computer operating system software."  This  recitation is extremely narrow.  Furthermore, this product can only be used with the Apple's computers, thus  eliminating any possibility of confusion related to the source of the product.   After this limitation of goods, it is clear that there is no overlap between Apple's goods and Registrant's  services.   The Registrant's services are limited to the following design services:  Graphic art and multimedia design services for others; computer services, namely, designing web sites for  others; developing computerized information databases for others; and computer systems integration  services, in Intl. Class 42.  None of these services are implicated  by Apple's operating system software.   Apple's operating system  software is used solely to operate Apple's computer hardware and to run other computer programs.   Operating system software performs basic tasks, such as recognizing input from keyboards, sending output  to monitors, keeping track of files and directories on the hard drive, and controlling peripheral devices such  as disk drives and printers.  As such, this product is wholly unrelated to the Registrant's graphic art ,  multimedia, and website design services.  According to its website, the Registrant is an advertising agency.  See www.leopard.com.  By contrast,  Apple is a computer company.  Registrant's customers are sophisticated purchasers - companies in need of  advertising agency services.   By contrast, Apple's purchasers are the general public, specifically,  individuals who own Apple computers.  Apple's LEOPARD product will be sold by Apple and by authorized  Apple dealers.  By contrast, Registrant's advertising agency services are provided by the Registrant to  corporate clients on an individual basis.  The USPTO has permitted numerous unrelated third parties to register LEOPARD marks.  Therefore,  the scope of protection accorded to each party is relatively narrow in scope.  There are over 30  registrations and approved applications for LEOPARD marks, several of which are in Class 9 (Apple's  class).  Indeed the USPTO has previously approved two applications for LEOPARD marks for software,  despite the cited registration:  Ser. No. 78149734 for the mark LEOPARD LOGIC for software for integrated  circuit design, and Ser. No. 76512923 for the mark LORD LEOPARD for gaming software.  In view of the  foregoing, Apple should be permitted to register its LEOPARD mark for its computer operating system  software.  In view of the coexistence of numerous LEOPARD marks on the Register, as well as the differences in  Apple's product and the Registrant's services (and associated differences in the consumers, channels of  distribution, etc.), there is no likelihood of confusion and Apple respectfully requests that the Examining  Attorney withdraw the Section 2(d) refusal.  PRIOR PENDING APPLICATIONS  The Examining Attorney enclosed information regarding pending Application Serial Nos. 78266033,  78149734, and 76454489, on the grounds that there may be a likelihood of confusion between the marks  therein and Apple's mark.  However, no confusion is likely.  As noted above, Apple has now drastically limited its recitation of goods to "computer operating system  software."  Accordingly, there is no overlap between Apple's goods and the goods listed in cited  applications:  Application Serial No. 76454489 is limited to "printing apparatus"   Application Serial No. 78149734 is limited to "software for designing integrated circuits"   Application Serial No. 78266033 is limited to "computer software for the management, distribution, and  measurement of electronic and printed marketing, communications and sales support materials, and hosted  software, accessible by computers via the Internet or by wireless communication"  None of the foregoing products is in any way related to computer operating system software.  Furthermore,  Apple's LEOPARD operating system software can only be used with the Apple's computers, thus  eliminating any possibility of confusion related to source.  In view of the foregoing, the Apple respectfully requests that the Examining Attorney approve this  application for publication.