| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 78805851 |
| LAW OFFICE ASSIGNED | LAW OFFICE 106 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Registrability of Mark
The Examining Attorney has refused registration of Applicant's mark under Section 2(d) of the Trademark Act, based on a likelihood of confusion with the mark RISK NAVIGATOR of U.S. Registration No. 2,753,229 (the '229 registration), to Paisley Consulting, Inc. The '229 registration identifies "computer programs for gathering and evaluating business data" in International Class 9. The registration has a disclaimer for the term RISK.
Applicant seeks to register the mark RISKNAV for "computer software for use in risk management" in International Class 9. This same mark was originally registered to Applicant, for the same goods, as U.S. Registration No. 2,235,092 (the '092 registration). The '092 registration has been cancelled from the Register, as Applicant inadvertently failed to timely file a Declaration of Use, under Section 8 of the Trademark Act.
With respect to the marks per se, the Examining Attorney has taken the position that confusion is likely, on the basis that both marks share the term RISK and Applicant's mark contains the term NAV, which is an abbreviation for the term NAVIGATOR of the registered mark. See Office Action, p. 2.
As to the goods, the Examining Attorney asserts that the broadly identified goods of the '229 registration encompass Applicant's narrowly defined goods and are, thus, legally identical, to support a finding of likely confusion. Id., p. 3.
Applicant contends that its RISKNAV mark is not likely to be confused with the mark of the '229 registration. First, the term RISK of the '229 registration is merely descriptive of the identified goods, as evidenced by the Registrant's disclaimer of the term. Thus, the term RISK cannot be afforded a scope of protection so broad, as to preclude registration of every mark having the same term, including Applicant's mark.
Second, the other element of Applicant's mark, the term NAV, has a look and sound dissimilar to the term NAVIGATOR. The two terms are distinctly different in length (one having 3 letters, the other having 9), syllables (Applicant's having one, the Registrant's having 4), and, ultimately, pronunciation.
In addition, to consumers of Applicant's goods, the term NAV may have a connotation different than the term NAVIGATOR of the registered mark. As noted by the Examining Attorney in the Office Action, in addition to being an abbreviation for the words "navigation," "navigator," and "navigate," the term NAV is an abbreviation for or suggests the word "naval." See print-out of Encarta dictionary definition for the term "nav" attached to the Office Action. Applicant's goods are used by the Department of Defense, so consumers of Applicant's goods could view the NAV term of Applicant's mark as suggestive of the word "naval."
Taking all of the above differences together, Applicant submits that confusion between its RISKNAV mark and the registered RISK NAVIGATOR mark is not likely.
Applicant also notes that it has been using its RISKNAV mark with the goods of the application since at least as early as July 15, 1998. According to the record for the '229 registration attached to the Office Action, the RISK NAVIGATOR mark has been in use with the goods of the registration since December 9, 2002. Thus, the marks at issue have coexisted for over four years, with no evidence or assertion of confusion. In the view of such co-existence and lack of actual confusion, Applicant contends that its mark is not likely to be confused with the registered RISK NAVIGATOR mark. Aktiebolaget Electrolux v. Armatron Int'l, 999 F.2d 1, 4 (1st Cir. 1993) (coexistence for six years); Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 490 (1st Cir. 1981) (coexistence for four years).
Finally, and as noted above, the RISKNAV mark of the present application was the subject of the now-cancelled '092 registration. The '092 registration was in force when the application for the now-registered RISK NAVIGATOR mark was filed (i.e., October 15, 2002). For the same reason that the RISK NAVIGATOR mark was found to be registrable over the then-registered RISKNAV mark, so too is the RISKNAV mark registrable over of the RISK NAVIGATOR mark.
Reconsideration and withdrawal of the refusal of Applicant's mark, in view of all of the above points, is respectfully requested. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Tracy Durkin/ |
| SIGNATORY'S NAME | Tracy-Gene G. Durkin |
| SIGNATORY'S POSITION | Attorney for Applicant |
| DATE SIGNED | 01/29/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jan 29 17:24:17 EST 2007 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.XXX- 20070129172417197090-7880 5851-360f5205c242a672b409 f2e6ae22b174c88-N/A-N/A-2 0070129144930193093 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Registrability of Mark
The Examining Attorney has refused registration of Applicant's mark under Section 2(d) of the Trademark Act, based on a likelihood of confusion with the mark RISK NAVIGATOR of U.S. Registration No. 2,753,229 (the '229 registration), to Paisley Consulting, Inc. The '229 registration identifies "computer programs for gathering and evaluating business data" in International Class 9. The registration has a disclaimer for the term RISK.
Applicant seeks to register the mark RISKNAV for "computer software for use in risk management" in International Class 9. This same mark was originally registered to Applicant, for the same goods, as U.S. Registration No. 2,235,092 (the '092 registration). The '092 registration has been cancelled from the Register, as Applicant inadvertently failed to timely file a Declaration of Use, under Section 8 of the Trademark Act.
With respect to the marks per se, the Examining Attorney has taken the position that confusion is likely, on the basis that both marks share the term RISK and Applicant's mark contains the term NAV, which is an abbreviation for the term NAVIGATOR of the registered mark. See Office Action, p. 2.
As to the goods, the Examining Attorney asserts that the broadly identified goods of the '229 registration encompass Applicant's narrowly defined goods and are, thus, legally identical, to support a finding of likely confusion. Id., p. 3.
Applicant contends that its RISKNAV mark is not likely to be confused with the mark of the '229 registration. First, the term RISK of the '229 registration is merely descriptive of the identified goods, as evidenced by the Registrant's disclaimer of the term. Thus, the term RISK cannot be afforded a scope of protection so broad, as to preclude registration of every mark having the same term, including Applicant's mark.
Second, the other element of Applicant's mark, the term NAV, has a look and sound dissimilar to the term NAVIGATOR. The two terms are distinctly different in length (one having 3 letters, the other having 9), syllables (Applicant's having one, the Registrant's having 4), and, ultimately, pronunciation.
In addition, to consumers of Applicant's goods, the term NAV may have a connotation different than the term NAVIGATOR of the registered mark. As noted by the Examining Attorney in the Office Action, in addition to being an abbreviation for the words "navigation," "navigator," and "navigate," the term NAV is an abbreviation for or suggests the word "naval." See print-out of Encarta dictionary definition for the term "nav" attached to the Office Action. Applicant's goods are used by the Department of Defense, so consumers of Applicant's goods could view the NAV term of Applicant's mark as suggestive of the word "naval."
Taking all of the above differences together, Applicant submits that confusion between its RISKNAV mark and the registered RISK NAVIGATOR mark is not likely.
Applicant also notes that it has been using its RISKNAV mark with the goods of the application since at least as early as July 15, 1998. According to the record for the '229 registration attached to the Office Action, the RISK NAVIGATOR mark has been in use with the goods of the registration since December 9, 2002. Thus, the marks at issue have coexisted for over four years, with no evidence or assertion of confusion. In the view of such co-existence and lack of actual confusion, Applicant contends that its mark is not likely to be confused with the registered RISK NAVIGATOR mark. Aktiebolaget Electrolux v. Armatron Int'l, 999 F.2d 1, 4 (1st Cir. 1993) (coexistence for six years); Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 490 (1st Cir. 1981) (coexistence for four years).
Finally, and as noted above, the RISKNAV mark of the present application was the subject of the now-cancelled '092 registration. The '092 registration was in force when the application for the now-registered RISK NAVIGATOR mark was filed (i.e., October 15, 2002). For the same reason that the RISK NAVIGATOR mark was found to be registrable over the then-registered RISKNAV mark, so too is the RISKNAV mark registrable over of the RISK NAVIGATOR mark.
Reconsideration and withdrawal of the refusal of Applicant's mark, in view of all of the above points, is respectfully requested.