| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 78294003 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
COMMENTS
On March 22, 2004, the Examining Attorney issued an Office Action in which registration of the Applicant's mark "ASR" was refused based on the Examining Attorney's assertion that the mark is confusingly similar to U.S. Registration No. 2,275,756 for "ASR". The Applicant respectfully submits that confusion is unlikely, in view of the significant differences in the respective mark and services in connection therewith.
Differences in the Services: The Examining Attorney asserts that the Registrant's and Applicant's services are related because both services may be marketed by the same vendor. This assertion, however, overlooks very substantial differences in the services associated with the respective marks, and consequently in the channels of trade and in the type of consumer that would purchase each type of service. It is necessary to accurately compare the services encompassed by each mark. The educational services of Applicant's "ASR" mark are specific to the real estate field. Real estate educational services are quite different from sales training services. The Registrant of the "ASR" mark uses the mark in connection with educational services in the field of sales training. Sales training is generic and non-specific to an industry. Sales training implies that the persons utilizing these services have little or no sales skills or experience or are seeking education for improving these general skills. By stark contrast, the services associated with the Applicant's mark "ASR" are "educational services, namely conducting courses, testing, and seminars in real estate education and on real estate topics." As opposed to general sales which requires no licensing or specialized knowledge, real estate requires licensing and a significant number of skills in addition to any sales ability. The consumers of the services related to the Applicant's mark are not the general public nor sales people generally, but are only real estate agents/brokers. The consumers most likely to use Applicant's services are licensed, experienced real estate professionals. The prospective consumers/purchasers of the Applicant's services will likely not encounter the Registrant's services when looking for their specific (real estate) educational needs, nor will a person looking for general sales training look to real estate specific course providers. The services related to each mark are sold through different channels of trade and to different classes of purchasers. Consumers who are not already licensed real estate professionals are not likely to be interested in Applicant's services nor targeted by any of the services. Further, these sales training and real estate education services are not competitive. The skills needed in real estate are quite different than general sales skills. Real estate is an incredibly expensive non-commodity product with different time frames for purchase and different dynamics between buyers and sellers. Additionally, real estate involves many regulatory and contracting issues not found in general sales. A large portion of the education value for realtors has little to do with generic sales as they have a need for topics such as disclosure requirements regarding the property and contract provisions specific to property. Education is generally targeted through specific channels as opposed to mass markets, especially for licensed professions with specialty skills. Educational services for licensed professionals are frequently marketed via specific lists of the licensees. The Examining Attorney's reliance on web search results is not particularly strong evidence to show relation of services as the search results are intimately connected to the search performed. Although most businesses now have websites and people may do general searches of the web for services, this is not a primary channel of trade for such services as those related to Applicant's mark. Consumers who do internet searches for services based on broad search terms or single search terms are used to getting lots of "noise" in the hits and must look much closer for what they are seeking or do more specific searching. For example, if a person does a search for ABA it is certainly not going to be limited to American Bar Association hits, but someone looking for continuing legal education through the ABA is not going to be confused by other ABA hits. Neither is someone looking for American Biking Association seminars going to be confused upon getting hits related to the American Bar Association. Further, the sophistication of the consumers interested in looking for specific real estate educational services is not going to be looking in the same channels for general sales education. Real estate agents are licensed and specialized, and, likewise, general sales people are not interested in real estate specific education as it would have no use for them. The purchaser of real estate education is going to investigate and understand the content and value of the services before purchasing them. The cost of real estate education is sufficiently high that people are going to carefully choose which continuing education type seminars they attend to get sufficient value for their money.
Strength of Registered Mark: The registered mark is not a strong mark, nor is there any fame associated with the registered mark.
ConclusionFor all of these reasons, there is no likelihood of confusion between the current ASR mark and the registered mark in U.S. Reg No. 2,275,756. Having addressed the Examining Attorney's concerns, Applicant hereby requests favorable reconsideration of this application and approval of the application. |
|
| SIGNATURE SECTION | |
| SIGNATURE | /aag/ |
| SIGNATORY NAME | Arthur A. Gardner |
| SIGNATORY POSITION | Attorney |
| SIGNATORY DATE | 09/22/2004 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Sep 22 16:13:43 EDT 2004 |
| TEAS STAMP | USPTO/OA-XXXXXXXXXX-20040 922161343560175-78294003- 200cafd96658e64d3eb32546a f723cbb71-N-N-20040922160 820103006 |
| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 78294003 is amended as follows: | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
|
COMMENTS
On March 22, 2004, the Examining Attorney issued an Office Action in which registration of the Applicant's mark "ASR" was refused based on the Examining Attorney's assertion that the mark is confusingly similar to U.S. Registration No. 2,275,756 for "ASR". The Applicant respectfully submits that confusion is unlikely, in view of the significant differences in the respective mark and services in connection therewith.
Differences in the Services: The Examining Attorney asserts that the Registrant's and Applicant's services are related because both services may be marketed by the same vendor. This assertion, however, overlooks very substantial differences in the services associated with the respective marks, and consequently in the channels of trade and in the type of consumer that would purchase each type of service. It is necessary to accurately compare the services encompassed by each mark. The educational services of Applicant's "ASR" mark are specific to the real estate field. Real estate educational services are quite different from sales training services. The Registrant of the "ASR" mark uses the mark in connection with educational services in the field of sales training. Sales training is generic and non-specific to an industry. Sales training implies that the persons utilizing these services have little or no sales skills or experience or are seeking education for improving these general skills. By stark contrast, the services associated with the Applicant's mark "ASR" are "educational services, namely conducting courses, testing, and seminars in real estate education and on real estate topics." As opposed to general sales which requires no licensing or specialized knowledge, real estate requires licensing and a significant number of skills in addition to any sales ability. The consumers of the services related to the Applicant's mark are not the general public nor sales people generally, but are only real estate agents/brokers. The consumers most likely to use Applicant's services are licensed, experienced real estate professionals. The prospective consumers/purchasers of the Applicant's services will likely not encounter the Registrant's services when looking for their specific (real estate) educational needs, nor will a person looking for general sales training look to real estate specific course providers. The services related to each mark are sold through different channels of trade and to different classes of purchasers. Consumers who are not already licensed real estate professionals are not likely to be interested in Applicant's services nor targeted by any of the services. Further, these sales training and real estate education services are not competitive. The skills needed in real estate are quite different than general sales skills. Real estate is an incredibly expensive non-commodity product with different time frames for purchase and different dynamics between buyers and sellers. Additionally, real estate involves many regulatory and contracting issues not found in general sales. A large portion of the education value for realtors has little to do with generic sales as they have a need for topics such as disclosure requirements regarding the property and contract provisions specific to property. Education is generally targeted through specific channels as opposed to mass markets, especially for licensed professions with specialty skills. Educational services for licensed professionals are frequently marketed via specific lists of the licensees. The Examining Attorney's reliance on web search results is not particularly strong evidence to show relation of services as the search results are intimately connected to the search performed. Although most businesses now have websites and people may do general searches of the web for services, this is not a primary channel of trade for such services as those related to Applicant's mark. Consumers who do internet searches for services based on broad search terms or single search terms are used to getting lots of "noise" in the hits and must look much closer for what they are seeking or do more specific searching. For example, if a person does a search for ABA it is certainly not going to be limited to American Bar Association hits, but someone looking for continuing legal education through the ABA is not going to be confused by other ABA hits. Neither is someone looking for American Biking Association seminars going to be confused upon getting hits related to the American Bar Association. Further, the sophistication of the consumers interested in looking for specific real estate educational services is not going to be looking in the same channels for general sales education. Real estate agents are licensed and specialized, and, likewise, general sales people are not interested in real estate specific education as it would have no use for them. The purchaser of real estate education is going to investigate and understand the content and value of the services before purchasing them. The cost of real estate education is sufficiently high that people are going to carefully choose which continuing education type seminars they attend to get sufficient value for their money.
Strength of Registered Mark: The registered mark is not a strong mark, nor is there any fame associated with the registered mark.
ConclusionFor all of these reasons, there is no likelihood of confusion between the current ASR mark and the registered mark in U.S. Reg No. 2,275,756. Having addressed the Examining Attorney's concerns, Applicant hereby requests favorable reconsideration of this application and approval of the application. |
|
| Response Signature | |
| Signature: /aag/ Date: 09/22/2004 | |
| Signatory's Name: Arthur A. Gardner | |
| Signatory's Position: Attorney | |
| Serial Number: 78294003 | |
| Internet Transmission Date: Wed Sep 22 16:13:43 EDT 2004 | |
| TEAS Stamp: USPTO/OA-XXXXXXXXXX-20040922161343560175 -78294003-200cafd96658e64d3eb32546af723c bb71-N-N-20040922160820103006 |