Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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PTO Form 1957 (Rev 9/2005)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 78805851 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

I.  Section 2(d) Likelihood of Confusion Refusal

The Examining Attorney has made final her refusal of Applicant's mark based upon a likelihood of confusion with the mark RISK NAVIGATOR of U.S. Registration No. 2,753,229. 

In response, the Applicant attaches hereto an executed Mutual Consent Agreement between the Registrant of U.S. Registration No. 2,753,229 and Applicant, demonstrating that no likelihood of confusion exists or is likely to arise from their respective registration and uses of the RISKNAV and RISK NAVIGATOR marks.

Consent agreements are entitled to great weight, and the USPTO should not substitute its judgment concerning a likelihood of confusion for the judgment of the real parties in interest without good reason.  TMEP §1207.01(d)(viii). 

The Applicant respectfully submits that this Mutual Consent Agreement renders the likelihood of confusion refusal moot, and requests that the refusal be withdrawn.

 

II.  Amendment to the Identification of Goods

In light of and in accordance with the Mutual Consent Agreement attached hereto, Applicant respectfully requests that the identification of goods be amended to read as follows:

"computer software for project risk management" in International Class 009.

III.  Conclusion

Based upon the foregoing, the Applicant respectfully requests that the application be approved for publication at the earliest possible opportunity.

 

EVIDENCE
Evidence in the nature of A .pdf file containing a 2-page fully executed mutual consent agreement between the Applicant and the Registrant of the cited registration has been attached.
Original PDF file:
evi_20512912253-152056318_._CONSENTAG2272.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software for use in risk management
Original Filing Basis:
Filing Basis: Section 1(a), 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, 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 07/15/1998 and first used in commerce at least as early as 07/15/1998, and is now in use in such commerce.

Proposed: Class 009 for Computer software for project risk management
Filing Basis: Section 1(a), 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, 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 07/15/1998 and first used in commerce at least as early as 07/15/1998, and is now in use in such commerce.
SIGNATURE(S)
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: /jmklass/     Date: 08/30/2007
Signatory's Name: Jeremy M. Klass
Signatory's Position: Attorney for Applicant

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 78805851
Internet Transmission Date: Thu Aug 30 15:50:42 EDT 2007
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-200708301550428
22404-78805851-380e2a9436851adc3582ed31f
68de737e-N/A-N/A-20070830152056318430