Response to Office Action

PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 78302256 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

The examining attorney refused registration under Section 2(d) based on the alleged likelihood of confusion with Registration 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.

           Applicant's goods and services, as amended, are for providing Internet based business management and collaborative software, namely, application service provider (ASP) featuring collaboration software for managing in real-time the development of software and featuring collaboration software for the collection, editing organizing modifying, book marking, transmission, storage and sharing of data and information, in international class 42.  The purchaser of these products are relatively sophisticated and would require extensive consideration.  The goods and services are customized for each customer.   The average price of the Applicant’s goods and services range from $750,000 to several million dollars.  This purchaser is quite different than the purchaser of the software identified in U.S. Registration 1670110.

            The Applicant respectfully requests reconsideration of the refusal of the registration of Applicant’s mark since the goods and services are quite disparate.  Additionally, the mark is relatively weak due to the number of uses of the mark for different goods and services.  Thus, the Applicant is entitled to the registration of their mark for their distinctive goods and services.

Classification and Listing of Goods/Services
Applicant hereby deletes the following class of goods/services from the application.
Class 009 for Internet based business managament and colaboration software
Applicant hereby deletes the following class of goods/services from the application.
Class 035 for Business management and Project management; Workflow automation for business processes

Applicant hereby adds the following class of goods/services to the application:
New:
Class 042 (Original Class: 009 ) for Providing Internet based business management and collaborative software, namely, application service provider (ASP) featuring collaboration software for managing in real-time the development of software and featuring collaboration software for the collection, editing organizing modifying, book marking, transmission, storage and sharing of data and information.
Section 1(b), 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 withthe identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).
Section 1(a), Use in Commerce: 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.

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: /glennlwebb/     Date: 05/07/2006
Signatory's Name: Glenn L. Webb
Signatory's Position: Attorney
        
Serial Number: 78302256
Internet Transmission Date: Sun May 07 20:45:24 EDT 2006
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20060507204524743
655-78302256-332e7ffc4bcbbcc5212d101358a
bd2bc95-N/A-N/A-20060507203328845131