| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 78302256 |
| MARK SECTION (no change) | |
| OWNER SECTION (no change) | |
| LEGAL ENTITY SECTION (no change) | |
| ARGUMENT(S) | |
|
Response to Office Action The Applicant of the above-identified application hereby responds to the Office Action emailed on March 15, 2004. A Petition to Revive the unintentionally abandoned application is enclosed. Amendment to Goods and Services: Please amend the goods and services in the above-identified application to: "Computer software for use in networked systems for collaboratively managing software development and business services, namely for managing in real-time the development of software and for providing business services across a network" in International Class 009; "Services for managing business and project systems; services providing workflow automation in business process" in International Class 035. Response to Refusal of Registration: Likelihood of Confusion The Trademark Office refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052 (d) because the applicants' mark, when used on or in connection with the identified goods/services, so resembles the marks in U.S. Registration Nos. 2596204 and 1670110 as to be likely to cause confusion or to cause mistake, or to deceive. Reg. 2596204 U.S. Registration No. 2596204 is for the mark "PRO LINKS SPORTS" for the goods and services "Entertainment in the nature of professional golf tournaments and corporate golf outings" and "Business management for professional golf tournament sand corporate golf outings." The Applicants goods and services being marketed under the mark "PROLINK" is for the use of software development and for networked business services. The products are used to collaboratively managing the development of software between multiple parties so that the status and time line of the software development can be monitored in a real time basis. The products are also used in a similar manner to collaboratively manage other business services, such as mortgage origination services, environmental services and any other type of business service. It also identifies products that are used to automate business process workflow systems as well. These products and services are distributed through a sophisticated stream of commerce comprising information technology officers, and upper management. These products and services are relatively expensive and require a sophisticated and careful consideration. It is extremely unlikely that any potential customer would ever confuse these goods and services with entertainment services relating to professional golf tournaments or the management of professional golf tournaments. The services marketed under Pro Links Sports are in no way related to computer software or for business workflow automation services. Further, the mark "PROLINK" is relatively weak as can be ascertained to the numerous marks either registered or for which registration has been applied in numerous classes and for widely disparate goods and services. As such, it is even more unlikely that any confusion would be likely, particularly considering the sophistication of the customers for applicant's goods and services. Reg. 1670110 U.S. Registration 1670110 is for the mark "PROLINK" for "computer software for transferring information between two computers running different operating systems." This mark identifies software that is used to "translate" information between different operating systems, such as between a PC and a Macintosh. It was developed and is still being used for allowing PC disks to be used in Apple computers. This is primarily an off the shelf type of product that is relatively inexpensive, that is it sold for under $50.00. It is not currently being marketed at this time. The purchaser of this product would be relatively low level IT personnel. As discussed above, applicant's goods and services are for networked systems providing collaborative products used to collaboratively managing the development of software between multiple parties so that the status and time line of the software development can be monitored in a real time basis. The products are also used in a similar manner to collaboratively manage other business services, such as mortgage origination services, environmental services and any other type of business service. It also identifies products that are used to automate business process workflow systems as well. The purchaser of these products are relatively sophisticated and would require extensive consideration. The goods and services are customized for each customer. This purchaser is quite different than the purchaser of the software identified in U.S. Registration 1670110. Conflicting Applications The applicant believes that there is little or no likelihood of confusion between Applicant's mark and the marks identified in Application Serial Nos. 76/520870; 76/520871; 76/520872; 76/248882 and 78/216873. The mark "PROLINK" is relatively weak as evidenced by the multiple registrations and applications for the mark in widely disparate goods and services and classes. The customers for Applicant's products are relatively sophisticated and would only purchase the products after careful and extensive consideration. As discussed above, these purchasers would not confuse the source of these products with the other disparate goods and services sold under similar marks. Mark Differs on Drawing Page and Specimen Applicant is providing a new specimen that was in use in commerce as early as the filing date of the application that uses the mark as depicted in the drawing.
Identification of Goods/Services Indefinite - Proper Classification The identification of Goods/Services has been amended. It is believed that this new identification does not expand the goods/services and renders the rejection moot.
Applicant believes the application is now in condition for allowance. If any further information is required, please contact the undersigned.
Respectfully submitted,
Date: December 15, 2004 By: /glennlwebb/ Glenn L. Webb PO 951 Conifer, CO 80433 glenn@webbpatlaw.com (303) 816-4893
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|
| GOODS AND/OR SERVICES SECTION (1st class)(current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | Internet based business managament and colaboration software |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 10/30/2000 |
| FIRST USE IN COMMERCE DATE | 11/17/2000 |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (1st class)(proposed) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Computer software for use in networked systems for collaboratively managing software development and business services, namely for managing in real-time the development of software and for providing business services across a network" in International Class 009 | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 10/30/2000 |
| FIRST USE IN COMMERCE DATE | 11/17/2000 |
| STATEMENT TYPE | The substitute specimen(s) was in use in commerce as of the filing date of the application. |
| SPECIMEN FILE NAME(S) | \\TICRS\EXPORT11\IMAGEOUT 11\783\022\78302256\xml2\ ROA0002.JPG |
| SPECIMEN DESCRIPTION | Brochure identifying product and goods |
| GOODS AND/OR SERVICES SECTION (2nd class)(current) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| Business management and Project management; Workflow automation for business processes | |
| FILING BASIS | Section 1(a) |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (2nd class)(proposed) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| Services for managing business and project systems; services providing workflow automation in business process" in International Class 035 | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 10/30/2000 |
| FIRST USE IN COMMERCE DATE | 11/17/2000 |
| STATEMENT TYPE | The substitute specimen(s) was in use in commerce as of the filing date of the application. |
| SPECIMEN FILE NAME(S) | \\TICRS\EXPORT11\IMAGEOUT 11\783\022\78302256\xml2\ ROA0003.JPG |
| SPECIMEN DESCRIPTION | brochure identifying goods and services |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | Petition to revive |
| MISCELLANEOUS FILE NAME(S) | \\TICRS\EXPORT11\IMAGEOUT 11\783\022\78302256\xml2\ ROA0004.JPG |
| \\TICRS\EXPORT11\IMAGEOUT 11\783\022\78302256\xml2\ ROA0005.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT 11\783\022\78302256\xml2\ ROA0006.JPG | |
| CORRESPONDENCE SECTION | |
| NAME | Glenn L. Webb |
| CONFIRM NAME | Glenn L. Webb |
| STREET | PO 951 |
| CITY | Conifer |
| STATE | Colorado (CO) |
| ZIP/POSTAL CODE | 80433 |
| COUNTRY | United States |
| PHONE | 3038164893 |
| FAX | 3034845176 |
| glenn@webbpatlaw.com | |
| AUTHORIZED TO COMMUNICATE VIA E-MAIL | Yes |
| SIGNATURE SECTION | |
| SIGNATURE | /glennlwebb/ |
| SIGNATORY NAME | Glenn L. Webb |
| SIGNATORY POSITION | Attorney |
| SIGNATORY DATE | 12/20/2004 |
| SIGNATURE | /glennlwebb/ |
| SIGNATORY NAME | Glenn L. Webb |
| SIGNATORY POSITION | Attorney |
| SIGNATORY DATE | 12/20/2004 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Dec 20 20:36:01 EST 2004 |
| TEAS STAMP | USPTO/OA-XXXXXXXXXXX-2004 1220203601695221-78302256 -200dfb337220cb97905b67dc e835d68362-N-N-2004122020 3548776177 |
| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 78302256 is amended as follows: | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
|
Response to Office Action The Applicant of the above-identified application hereby responds to the Office Action emailed on March 15, 2004. A Petition to Revive the unintentionally abandoned application is enclosed. Amendment to Goods and Services: Please amend the goods and services in the above-identified application to: "Computer software for use in networked systems for collaboratively managing software development and business services, namely for managing in real-time the development of software and for providing business services across a network" in International Class 009; "Services for managing business and project systems; services providing workflow automation in business process" in International Class 035. Response to Refusal of Registration: Likelihood of Confusion The Trademark Office refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052 (d) because the applicants' mark, when used on or in connection with the identified goods/services, so resembles the marks in U.S. Registration Nos. 2596204 and 1670110 as to be likely to cause confusion or to cause mistake, or to deceive. Reg. 2596204 U.S. Registration No. 2596204 is for the mark "PRO LINKS SPORTS" for the goods and services "Entertainment in the nature of professional golf tournaments and corporate golf outings" and "Business management for professional golf tournament sand corporate golf outings." The Applicants goods and services being marketed under the mark "PROLINK" is for the use of software development and for networked business services. The products are used to collaboratively managing the development of software between multiple parties so that the status and time line of the software development can be monitored in a real time basis. The products are also used in a similar manner to collaboratively manage other business services, such as mortgage origination services, environmental services and any other type of business service. It also identifies products that are used to automate business process workflow systems as well. These products and services are distributed through a sophisticated stream of commerce comprising information technology officers, and upper management. These products and services are relatively expensive and require a sophisticated and careful consideration. It is extremely unlikely that any potential customer would ever confuse these goods and services with entertainment services relating to professional golf tournaments or the management of professional golf tournaments. The services marketed under Pro Links Sports are in no way related to computer software or for business workflow automation services. Further, the mark "PROLINK" is relatively weak as can be ascertained to the numerous marks either registered or for which registration has been applied in numerous classes and for widely disparate goods and services. As such, it is even more unlikely that any confusion would be likely, particularly considering the sophistication of the customers for applicant's goods and services. Reg. 1670110 U.S. Registration 1670110 is for the mark "PROLINK" for "computer software for transferring information between two computers running different operating systems." This mark identifies software that is used to "translate" information between different operating systems, such as between a PC and a Macintosh. It was developed and is still being used for allowing PC disks to be used in Apple computers. This is primarily an off the shelf type of product that is relatively inexpensive, that is it sold for under $50.00. It is not currently being marketed at this time. The purchaser of this product would be relatively low level IT personnel. As discussed above, applicant's goods and services are for networked systems providing collaborative products used to collaboratively managing the development of software between multiple parties so that the status and time line of the software development can be monitored in a real time basis. The products are also used in a similar manner to collaboratively manage other business services, such as mortgage origination services, environmental services and any other type of business service. It also identifies products that are used to automate business process workflow systems as well. The purchaser of these products are relatively sophisticated and would require extensive consideration. The goods and services are customized for each customer. This purchaser is quite different than the purchaser of the software identified in U.S. Registration 1670110. Conflicting Applications The applicant believes that there is little or no likelihood of confusion between Applicant's mark and the marks identified in Application Serial Nos. 76/520870; 76/520871; 76/520872; 76/248882 and 78/216873. The mark "PROLINK" is relatively weak as evidenced by the multiple registrations and applications for the mark in widely disparate goods and services and classes. The customers for Applicant's products are relatively sophisticated and would only purchase the products after careful and extensive consideration. As discussed above, these purchasers would not confuse the source of these products with the other disparate goods and services sold under similar marks. Mark Differs on Drawing Page and Specimen Applicant is providing a new specimen that was in use in commerce as early as the filing date of the application that uses the mark as depicted in the drawing.
Identification of Goods/Services Indefinite - Proper Classification The identification of Goods/Services has been amended. It is believed that this new identification does not expand the goods/services and renders the rejection moot.
Applicant believes the application is now in condition for allowance. If any further information is required, please contact the undersigned.
Respectfully submitted,
Date: December 15, 2004 By: /glennlwebb/ Glenn L. Webb PO 951 Conifer, CO 80433 glenn@webbpatlaw.com (303) 816-4893
|
|
| Classification and Listing of Goods/Services | |
| Applicant hereby amends the following class of goods/services in the application as follows: | |
| Current: Class 009 for Internet based business managament and colaboration software | |
| Original Filing Basis: 1(b); and/or 1(a). | |
| Proposed: Class 009 for Computer software for use in networked systems for collaboratively managing software development and business services, namely for managing in real-time the development of software and for providing business services across a network" in International Class 009 | |
| Deleted Filing Basis: 1(b) | |
| Section 1(a), Use in Commerce: Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/30/2000 and first used in commerce at least as early as 11/17/2000, and is now in use in such commerce. | |
| Applicant hereby submits a specimen for Class 009. | |
| The specimen(s) submitted consists of Brochure identifying product and goods. |
|
| For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application." | |
| Specimen-1 | |
| Applicant hereby amends the following class of goods/services in the application as follows: | |
| Current: Class 035 for Business management and Project management; Workflow automation for business processes | |
| Original Filing Basis: 1(b); and/or 1(a). | |
| Proposed: Class 035 for Services for managing business and project systems; services providing workflow automation in business process" in International Class 035 | |
| Deleted Filing Basis: 1(b) | |
| Section 1(a), Use in Commerce: Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/30/2000 and first used in commerce at least as early as 11/17/2000, and is now in use in such commerce. | |
| Applicant hereby submits a specimen for Class 035. | |
| The specimen(s) submitted consists of brochure identifying goods and services. |
|
| For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application." | |
| Specimen-1 | |
| Correspondence Address Change | |
| Applicant proposes to amend the following: | |
| Original: Analytic Solutions.com, Inc. 9780 S. Meridian Blvd Sute 210 Englewood, CO 80112 | |
| Proposed: Glenn L. Webb of Glenn L. Webb, having an address of PO 951 Conifer, Colorado (CO) United States 80433, whose e-mail address is glenn@webbpatlaw.com, whose phone number is 3038164893 and whose fax number is 3034845176. | |
| Additional Statements | |
| Petition to revive | |
| Miscelleneous Statement-1 | |
| Miscelleneous Statement-2 | |
| Miscelleneous Statement-3 | |
| Declaration Signature |
|
| The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true. | |
| Signature: /glennlwebb/ Date: 12/20/2004 | |
| Signatory's Name: Glenn L. Webb | |
| Signatory's Position: Attorney | |
| Response Signature | |
| Signature: /glennlwebb/ Date: 12/20/2004 | |
| Signatory's Name: Glenn L. Webb | |
| Signatory's Position: Attorney | |
| Mailing Address: | |
| Glenn L. Webb | |
| Glenn L. Webb | |
| PO 951 | |
| Conifer, Colorado (CO) 80433 | |
| Serial Number: 78302256 | |
| Internet Transmission Date: Mon Dec 20 20:36:01 EST 2004 | |
| TEAS Stamp: USPTO/OA-XXXXXXXXXXX-2004122020360169522 1-78302256-200dfb337220cb97905b67dce835d 68362-N-N-20041220203548776177 |
