| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 78560943 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
I. Refusal of Registration – Section 2(d) Likelihood of Confusion
The Examining Attorney has initially refused registration of the mark ACG under Section 2(d) of the Trademark Act on the ground that the mark, when used in connection with Applicant's services, is confusingly similar to the mark ACG in Registration No. 3,015,877.
In considering whether there is a likelihood of confusion, a number of factors are relevant, including the similarity of the marks, similarity of the goods or services, the channels of trade and other factors. As support for the refusal to register, the Examining Attorney asserts that the marks are of parties are similar and that the services of the parties are related. However, for the reasons discussed below, Applicant respectfully requests that the Examining Attorney withdraw the refusal to register with respect to the cited registration and allow the subject application to proceed to registration.
A. Cited registration was found not to was not found to be confusingly similar to Applicant's previous registration.
Applicant respectfully notes that the likelihood of confusion between the parties’ marks was addressed during the prosecution of the cited registration. (See attached Office Action and Registrant’s Response.) At that time, Applicant’s prior Registration No. 2,050,182 for ACG in connection with “investment consultation” was cited against Registrant’s (then-Applicant’s) mark. Whereas Registrant’s mark was allowed to proceed to registration, Applicant respectfully submits that there is similarly no likelihood of confusion between Applicant’s new application and the cited registration.
B. The services of the parties are sufficiently different to avoid a likelihood of confusion.
The nature of Applicant’s services is investment advising and consulting. An “investment” is commonly defined as “the outlay of money usually for income or profit.” (See attached Merriam-Webster Online printout.) Investment advisers, such as Applicant, advise clients on investment matters on a professional basis for a fee or commission. (See printout from Wikipedia.) Investment advisers offer direct financial advice and/or provide asset management services. (Id.)
Furthermore, the field of investment advising is highly regulated. Depending on size, an investment advising firm must register and file public disclosure information with either the U.S. Securities and Exchange Commission or individual state securities agencies. (See attached U.S. Securities and Exchange Commission web site printout entitled “Investment Advisers: What You Need to Know Before Choosing One.”) Similar to the legal profession, investment advisers are also bound by duties of good faith and fair disclosure. See S.E.C. v. Capital Gains Research Bureau, Inc., 375 U.S. 181, 191-92, 194-95 (1963).
By contrast, the cited Registrant’s services are limited to very specific “business valuation” services, namely, “corroborating reported earnings of an enterprise.” The International Glossary of Business Valuation Terms generally defines business valuation as “the act or process of determining the value of a business enterprise or ownership interest therein.” (See attached printout.) The cited registration is further limited to a discrete area of business valuation, namely, the verification of an entity’s reported earnings. Contrary to investment advising, business valuation is a largely unregulated field in which neither a college degree nor a license is required to practice. (See attached The Appraisal Foundation brochure entitled “How to Enter the Appraisal Profession.”)
Considering the above, Applicant submits that the fields of investment consulting and business valuation, especially when limited to the “corroborat[ion of] reported earnings of an enterprise,” are distinct and distinguishable such that there is no likelihood of confusion between the corresponding marks.
C. The services of the parties are marketed to sufficiently different consumers and channels of trade to avoid a likelihood of confusion.
It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 U.S.P.Q.2d 1813 (Fed. Cir. 1987). As is abundantly clear from the description of services of the cited Registrant, the services of the parties are directed to and intended for entirely different prospective consumers and move in vastly different channels of trade.
In general, investment consulting services are directed towards corporations or high-net individuals seeking guidance to initiate investment strategies and/or maximize the potential income of their investments. Separately, the likely audience for Registrant’s specific valuation services includes entities or individuals simply seeking to verify the income of a particular business organization. The nature and needs of the parties’ consumers are distinct and unrelated.
Applicant further notes that the consumers of both parties’ services are likely to be sophisticated professionals who carefully and thoughtfully proceed with their respective financial matters, thus mitigating any likelihood of confusion between the parties’ marks. Electronic Design & Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 718 (Fed. Cir. 1992)(stating that consumer "sophistication is important and often dispositive because sophisticated consumers may be expected to exercise greater care.”) Accordingly, the parties’ consumers are not likely to assume that there is a relationship between the Applicant’s complex investment services and the Registrant’s discrete valuation service.
Barring the necessary connection in the channels of trade and prospective consumers and given the sophisticated consumers and distinct nature of the parties’ services, Applicant respectfully asserts that confusion would not be likely between its services and the services in the cited registration.
D. Conclusion.
For all of the above reasons, there is no likelihood of confusion between the concurrent use of Applicant's mark and the mark shown in the cited registration. Accordingly, Applicant respectfully requests that the Examining Attorney withdraw the refusal to register under Section 2(d) of the Trademark Act. In view of the foregoing amendments and statements, Applicant respectfully submits that the subject application is now in condition for publication.
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_208717423-164019113_._76416524_1_.pdf |
| CONVERTED PDF FILE(S) (18 pages) |
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| ORIGINAL PDF FILE | evi_208717423-164019113_._Response_to_Office_Action_-_ACG_-_Evidence.pdf |
| CONVERTED PDF FILE(S) (19 pages) |
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| DESCRIPTION OF EVIDENCE FILE | Documents and printouts to support Arguments. |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 036 |
| DESCRIPTION | |
| Providing information, advice and consulting in the fields of finance, insurance, pensions, banking, hedge funds, investment management and investment; financial investment in the fields of securities, funds, real estate and venture capital businesses; investment management services; investment of funds for others; securitization, structuring and administration of investments; securities and investment brokerage services; investment banking services; trust services, namely, investment and trust company services; and providing online electronic databases in the fields of finance, insurance, pensions, banking, hedge funds, investment management and investment | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 036 |
| DESCRIPTION | |
| Providing advice and consulting in the field of investment management and investment; financial investment in the fields of securities, funds, real estate and venture capital businesses; investment management services; investment of funds for others; securitization, structuring and administration of investments; and investment banking services | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. |
| RESPONSE SIGNATURE | /Richard Y. Kim/ |
| SIGNATORY'S NAME | Richard Y. Kim |
| SIGNATORY'S POSITION | Attorney for Applicant |
| DATE SIGNED | 07/16/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jul 16 17:24:42 EDT 2007 |
| TEAS STAMP | USPTO/ROA-XXX.X.XXX.XX-20 070716172442783415-785609 43-380e1bfb9ce99652a9fa5f 62a9019bd-N/A-N/A-2007071 6164019113907 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
I. Refusal of Registration – Section 2(d) Likelihood of Confusion
The Examining Attorney has initially refused registration of the mark ACG under Section 2(d) of the Trademark Act on the ground that the mark, when used in connection with Applicant's services, is confusingly similar to the mark ACG in Registration No. 3,015,877.
In considering whether there is a likelihood of confusion, a number of factors are relevant, including the similarity of the marks, similarity of the goods or services, the channels of trade and other factors. As support for the refusal to register, the Examining Attorney asserts that the marks are of parties are similar and that the services of the parties are related. However, for the reasons discussed below, Applicant respectfully requests that the Examining Attorney withdraw the refusal to register with respect to the cited registration and allow the subject application to proceed to registration.
A. Cited registration was found not to was not found to be confusingly similar to Applicant's previous registration.
Applicant respectfully notes that the likelihood of confusion between the parties’ marks was addressed during the prosecution of the cited registration. (See attached Office Action and Registrant’s Response.) At that time, Applicant’s prior Registration No. 2,050,182 for ACG in connection with “investment consultation” was cited against Registrant’s (then-Applicant’s) mark. Whereas Registrant’s mark was allowed to proceed to registration, Applicant respectfully submits that there is similarly no likelihood of confusion between Applicant’s new application and the cited registration.
B. The services of the parties are sufficiently different to avoid a likelihood of confusion.
The nature of Applicant’s services is investment advising and consulting. An “investment” is commonly defined as “the outlay of money usually for income or profit.” (See attached Merriam-Webster Online printout.) Investment advisers, such as Applicant, advise clients on investment matters on a professional basis for a fee or commission. (See printout from Wikipedia.) Investment advisers offer direct financial advice and/or provide asset management services. (Id.)
Furthermore, the field of investment advising is highly regulated. Depending on size, an investment advising firm must register and file public disclosure information with either the U.S. Securities and Exchange Commission or individual state securities agencies. (See attached U.S. Securities and Exchange Commission web site printout entitled “Investment Advisers: What You Need to Know Before Choosing One.”) Similar to the legal profession, investment advisers are also bound by duties of good faith and fair disclosure. See S.E.C. v. Capital Gains Research Bureau, Inc., 375 U.S. 181, 191-92, 194-95 (1963).
By contrast, the cited Registrant’s services are limited to very specific “business valuation” services, namely, “corroborating reported earnings of an enterprise.” The International Glossary of Business Valuation Terms generally defines business valuation as “the act or process of determining the value of a business enterprise or ownership interest therein.” (See attached printout.) The cited registration is further limited to a discrete area of business valuation, namely, the verification of an entity’s reported earnings. Contrary to investment advising, business valuation is a largely unregulated field in which neither a college degree nor a license is required to practice. (See attached The Appraisal Foundation brochure entitled “How to Enter the Appraisal Profession.”)
Considering the above, Applicant submits that the fields of investment consulting and business valuation, especially when limited to the “corroborat[ion of] reported earnings of an enterprise,” are distinct and distinguishable such that there is no likelihood of confusion between the corresponding marks.
C. The services of the parties are marketed to sufficiently different consumers and channels of trade to avoid a likelihood of confusion.
It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 U.S.P.Q.2d 1813 (Fed. Cir. 1987). As is abundantly clear from the description of services of the cited Registrant, the services of the parties are directed to and intended for entirely different prospective consumers and move in vastly different channels of trade.
In general, investment consulting services are directed towards corporations or high-net individuals seeking guidance to initiate investment strategies and/or maximize the potential income of their investments. Separately, the likely audience for Registrant’s specific valuation services includes entities or individuals simply seeking to verify the income of a particular business organization. The nature and needs of the parties’ consumers are distinct and unrelated.
Applicant further notes that the consumers of both parties’ services are likely to be sophisticated professionals who carefully and thoughtfully proceed with their respective financial matters, thus mitigating any likelihood of confusion between the parties’ marks. Electronic Design & Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 718 (Fed. Cir. 1992)(stating that consumer "sophistication is important and often dispositive because sophisticated consumers may be expected to exercise greater care.”) Accordingly, the parties’ consumers are not likely to assume that there is a relationship between the Applicant’s complex investment services and the Registrant’s discrete valuation service.
Barring the necessary connection in the channels of trade and prospective consumers and given the sophisticated consumers and distinct nature of the parties’ services, Applicant respectfully asserts that confusion would not be likely between its services and the services in the cited registration.
D. Conclusion.
For all of the above reasons, there is no likelihood of confusion between the concurrent use of Applicant's mark and the mark shown in the cited registration. Accordingly, Applicant respectfully requests that the Examining Attorney withdraw the refusal to register under Section 2(d) of the Trademark Act. In view of the foregoing amendments and statements, Applicant respectfully submits that the subject application is now in condition for publication.
