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. 78662930 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

UNITED STATES DEPARTMENT OF COMMERCE

PATENT AND TRADEMARK OFFICE

 

 

In re the Application of:

 

Applicant:                                             KDA Research

 

Mark:                                                   REVELATION

 

Serial No.:                                            78/662,930

 

Filed:                                                    July 1, 2005

 

Mailing Date:                                        January 21, 2005

 

 

Trademark Law Office:                         116

Examining Attorney:                              John Dwyer

 

Assistant Commissioner for Trademarks

BOX RESPONSES B NO FEE

2900 Crystal Drive

Arlington, VA 222-2-3513

 

RESPONSE TO OFFICE ACTION

 

In response to Office Action No. 1 dated January 21, 2006, with respect to the above-captioned application for the mark REVELATION (Applicant’s Mark), KDA Research (the Applicant), by and through its counsel, responds as follows:

 

I.          Amendment of Applicant’s Identification of Goods/Services

Applicant requests amendment of the Class 9 identification of services as follows:

 

“Providing temporary use of online nondownloadable software for use in market research; application service provider featuring software for use in the field of market research” in Class 42

 

II.        Citizenship of Sole Proprietor

 

The Applicant sole proprietor is a citizen of the United States

 

III.       Substitute Specimen

 

The Examining Attorney has requested a substitute specimen in connection with the application.  However, Applicant believes the specimen originally submitted in connection with the application is now suitable as the identification has been amended above to non-downloadable software in Class 42 rather than software in Class 9. 

.

 

 

IV.       Likelihood of Confusion

 

The Examining Attorney has issued a partial refusal of the Application.  He believes there is a likelihood of confusion between Applicant’s Mark and the mark owned by Revelation Technologies, Inc., (“Revelation Technologies”) registration number 1,538,980 for the mark REVELATION (the “Cited Registration”) and has refused registration under Section 2(d).  Applicant respectfully disagrees with the Examining Attorney’s conclusion that concurrent use of Applicant’s Mark and the Cited Mark may lead to confusion among consumers.  Applicant therefore requests that the Examining Attorney reconsider his partial refusal on Section 2(d) grounds. 

 

In determining whether concurrent use of two marks is likely to cause confusion among consumers, the Examining Attorney must consider the similarities between the marks and evaluate the relationship between the two parties’ good and/or services. 

 

Revelation Technologies has registered its REVELATION trademark in connection with “computer programs for business, scientific, engineering, applications development, government and educational use” in International Class 9.  According to Revelation Technology’s website at www.revelation.com, the company offers a full suite of development tools for stand alone PCs, networked applications, web-enabled systems and DOS-based systems.  The company touts itself as an innovator of new tools that “natively exploit the capabilities of the latest operating systems, network computing platforms, and programming languages and techniques.”  Simply put, Revelation Technologies designs, develops, services and supports application development tools…software for creating other software.

 

Revelation Technologies uses the REVELATION trademark in connection with LINUX, JAVA and DOS applications development environments.  These environments consist of a complete tool set for deploying and evolving network applications.   

 

In stark contrast, Applicant seeks registration of its mark in connection with “computer software for use in market research.”  Applicant’s REVELATION product consists of a platform for conducting qualitative research over the internet.  Applicant’s REVELATION is web-based social software for qualitative research studies – using tools like blogging, tagging, photo-sharing.  In addition, REVELATION will provide researcher tools for organizing, filtering and reporting on the information collected.  Responses are tagged as they’re created, automatically by the system and personally by the researcher, enabling multi-dimensional views of responses that illuminate themse and patterns for any particular type.  Structured data within responses is available in tabular reports.  This system employs multiple methodologies so that users of the product can fully understand their customers’ experiences. 

 

Applicant’s Mark should proceed to registration because there is no likelihood of confusion with the Cited Registration:  (1) Applicant’s products are distinctive in nature and in application from the software products identified by the Cited Registration; (2) each of the marks is promoted in distinctive channels of trade and sold to different customers; and (3) the purchasing environment is sophisticated.

 

The test for all refusals by the Patent and Trademark Office under §2(d) is governed by the landmark case In re E.I. due Pont de Nemours & Co., 476 F.2c, 1357, 1360 (C.C.P.A. 1973).  Du Pont sets forth thirteen (13) factors that must be considered in determining whether a likelihood of confusion exists.  Each relevant factor must be considered before it is proper to refuse registration.  Id. at 1361.  Applicant identifies and discusses the most relevant factors below.  When these factors are applied to the case at hand, it is apparent that there is no likelihood of confusion.

 

            A.        The Parties’ Goods/Services Are Not Similar

There is no likelihood of confusion with respect to the services offered under the Applicant’s Mark and the products identified by the Cited Registration.  The services Applicant offers under its REVELATION trademark are in a completely separate market from those offered by Revelation Technologies.  Courts and the TTAB routinely hold that there is no likelihood of confusion “if the goods or services in question are not related in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source.”  TMEP §1207.1(a)(i) (citing Local Trademarks, Inc. v. Handy Boys, Inc., 16 U.S.P.Q.2d 1156 (TTAB 1990)).  As shown below, purchasers will not make an “incorrect assumption” about the origin of Applicant’s business consulting services, thus eliminating any likelihood of confusion.

 

The services offered under Applicant’s Mark, in light of the amended description, are in no way similar or even arguable related to the software products covered by the Cited Registration.  They fall within entirely different categories of products.  Applicant focuses on qualitative market research – the process of making customers’ experiences meaningful in the context of a business question.  Applicant’s software provides the customer insights needed to support good decisions that lead to product success.

 

In contrast, the applications development tools and environment offered under Revelation Technologies’ REVELATION mark comprises a vastly different product.  This development tool is designed for use by software developers to write, create and update/evolve new software products.  This product is in no way similar or even related to Applicant’s business marketing tools.

 

Even virtually identical marks have been held not confusing when used on different products or services.  See, e.g. Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713 (Fed Cir. 1992).  In Electronic Design, the court held that the Applicant’s use of “E.D.S.” for computer power supplies was not likely to be confused with the registrant’s use of “EDS” for computer programming and design services.  While acknowledging that both parties generally sold their products within the computer field, the court noted the differences in the specific goods sold by the applicant and the services rendered by the registrant and found a lack of any actual or potential overlap of relevant purchasers.  Id. At 717-18.  Here, as in Electronic Design, there is no relationship between the parties respective goods/service or their respective industries.   

The fact that the Cited Mark is registered in connection computer software that the Examining Attorney believes could conceivably be used in the same field as Applicant’s completely unrelated business marketing tool does not mandate a finding of likelihood of confusion.   As the Trademark Trial and Appeal Board noted in Information Resources v. X*Press Information Services, 6 U.S.P.Q. 2d 1034, 1038 (T.T.A.B., 1988), “[a]s a result of the veritable explosion in technology in the computer field over the last several years and the almost limitless number of specialized products and specialized uses in this industry, we think that a per se rule relating to source confusion vis-à-vis computer hardware and software is simply too rigid and restrictive an approach and fails to consider the realities of the marketplace.”  Thus, even though the trademarks in that case were phonetically identical, the Board held “Express” in connection with information analysis software packages, and “X*Press” for satellite news information services, were not likely to result in confusion since marked differences existed between opposer’s goods and applicant’s services. 

 

In short, authors of software products looking for an environment, a tool for creating software would utilize Revelation Technologies’ product, whereas companies looking to grow their businesses through a specialized qualitative market research tool would utilize Applicant’s products.  Given the differences in the nature of the parties’ respective products and services, there is simply no possibility that confusion would occur.

 

B.        The Parties’ Product Are Sold Via Distinct Marketing Channels to Different Target Customers

 

The mark under the Cited Registration and the Applicant’s Mark are marketed in distinctive channels of trade to entirely different classes of purchasers.  It is, of course, a well-established tenet of trademark law that the existence of unrelated marketing channels reduces the likelihood of confusion.  See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9^th Cir. 1979).

 

As is evident from the information set forth above, Applicant’s Mark is used for products that are targeted to a clearly defined market niche, namely businesses including mature enterprises and start-ups that wish to keep up with the ever-changing faces of their customers and make profitable marketing decisions.

 

Given the very nature of its products, Revelation Technologies, on the other hand, specifically targets software developers (according to its website) through distributors and retailers.    

 

The conditions surrounding the parties’ sales and marketing activities make confusion virtually impossible.  The respective products/services are not sold in a common venue but, in the case of Applicant’s services, via a direct sales force, through a process that would include face-to-face meetings with high level company representatives such as CEOs, and in the case of Revelation Technologies’ products, through software developer channels.  Indeed it is absurd to think that an executive such as a company CEO, would confuse the market research products offered under Applicant’s Mark with the completely unrelated software development tools offered under the Cited Registration.  Simply put, the services provided under Applicant’s Mark and the products offered under the Cited Registration would never be marketed to the same class of customers.  When one considers the different channels of trade utilized by the respective companies and the immensely different target customers of the respective companies, it is apparent that there is no realistic possibility of confusion in this case.   

 

C.        The Purchasing Environment is Sophisticated

            The likelihood of confusion between two marks depends on the purchasers to whom the goods and services are sold and the circumstances in which the transactions take place.  In re E.I. du Pont de Nemours & Co., 177 U.S.P.Q. at 567.  When the relevant class of purchasers is composed of professionals or commercial buyers familiar with the field, such purchasers are sophisticated enough not to be confused by trademarks that are closely similar.  See McCarthy § 23:101.  See also Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 212 U.S.P.Q. 246, 252 (1st Cir. 1981) (“Sophisticated consumers may be expected to exercise greater care.”).  “[W]holesale purchasers may be characterized as sophisticated buyers because…sales to these parties are likely to be the culmination of long-term negotiations, direct communications between the parties, and ongoing contact….”  Cont’l Plastic v. Owens Brockway Plastic, 46 U.S.P.Q.2d 1277, 1282 (Fed. Cir. 1998).  

 

In a related concept, when expensive products or services are involved, the purchaser is deemed to be a discriminating purchaser.  Weiss Assocs. Inc. v. HRL Assocs. Inc., 14 U.S.P.Q.2d 1840, 1841 (Fed. Cir. 1990) (“In making purchasing decisions regarding ‘expensive’ goods, the reasonably prudent person standard is elevated to the standard of the ‘discriminating purchaser.’”).  Thus, the diligence of the relevant class of consumers, together with the nature of the sales process of such expensive goods and services, can combine to ensure that there is no likelihood of confusion between two marks. 

 

Applicant is in the business of a software solution for companies to use in qualitative market research.  Applicant offers its services to professional buyers, companies large and small, not to individuals.  These professional and commercial organizations are discriminating purchasers that give a great deal of thought and deliberation before purchasing Applicant’s products.  Indeed, Applicant’s products are typically sold only after much information has been conveyed to the purchaser and often after a face-to-face meeting between Applicant and the purchaser.  In addition, Applicant’s services are generally expensive.  The purchasing class of Applicant’s services, the deliberation required to enter into a purchase agreement with Applicant, and the expense associated with Applicant’s product renders confusion as to the source of Applicant’s product nearly impossible.

 

Moreover, Revelation Technologies’ software – namely, development tools and environments – are consumed by companies involved in the creation/authoring of software, not individual consumers.  These companies employ software authors and often entire development departments, with managers to oversee the companies’ software needs.  As such, registrant’s products are also likely offered to and consumed by commercial purchasers with astute knowledge of the companies with which they deal.  Given the conditions under which both Applicant’s and registrant’s services are rendered, and the discriminating consumers that purchase or are likely to purchase Applicant’s and registrant’s respective products, confusion as to source, affiliation, or sponsorship is highly unlikely.   

 

IV.       Conclusion

Even in situations where two marks are identical, courts and the TTAB routinely hold that there is no likelihood of confusion “if the goods or services in question are not related in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source.”  TMEP § 1207.1(a)(i) (citing Local Trademarks, Inc. v. Handy Boys, Inc., 16 U.S.P.Q.2d 1156 (TTAB 1990) (LITTLE PLUMBER for drain opener not confusingly similar to LITTLE PLUMBER and Design for advertising services)).  In this case, given the vast differences in the parties’ respective goods, the different channels of trade, the sophisticated purchasing environment, Applicant submits that there is no realistic likelihood that confusion would result from the parties’ use of their respective marks.

 

In view of the foregoing, it is believed that this application is in condition for prompt publication and such favorable action is therefore requested.

 

Respectfully submitted,

/Jamie Shelden/

Jamie Shelden, Esq.

Attorney for Applicant

Classification and Listing of Goods/Services
Applicant hereby deletes the following class of goods/services from the application.
Class 009 for a web application for market research and consulting

Applicant hereby adds the following class of goods/services to the application:
New:
Class 042 (Original Class: 009 ) for Providing temporary use of online nondownloadable software for use in market research; application service provider featuring software for use in the field of market research
Section 1(a), Use in Commerce: The mark was first used at least as early as 11/30/2003 and first used in commerce at least as early as 11/30/2003, and is now in use in such commerce.

Procedural Matters/Informalities
Applicant proposes to amend the following:
Original: KDA Research, a sole proprietorshiphaving an address of 270 Chattanooga Street San Francisco, California US 94114.
Proposed: KDA Research, a sole proprietorship organized under the laws of California, comprising of Steve August, US citizen, having an address of 270 Chattanooga Street San Francisco, California US 94114.


Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). 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: /Jamie Shelden/      Date: 04/24/2006
Signatory's Name: Jamie Shelden
Signatory's Position: Attorney for Applicant

Response Signature

Signature: /Jamie Shelden/     Date: 04/24/2006
Signatory's Name: Jamie Shelden
Signatory's Position: Attorney for Applicant
        
Serial Number: 78662930
Internet Transmission Date: Mon Apr 24 18:49:47 EDT 2006
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20060424184947775
070-78662930-32056c721d0c35be0af40bb16c6
599e4d9d-N/A-N/A-20060424184238293320