Response to Office Action

TARGET

target software solution GmbH

Response to Office Action

PTO Form 1957 (Rev 9/2005)
OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 79033189
LAW OFFICE ASSIGNED LAW OFFICE 114
MARK SECTION (no change)
ARGUMENT(S)

          The Examining Attorney has refused registration on the basis of an alleged likelihood of confusion with the marks in U.S. Registration Nos. 3,091,997 and 2,557,964.  Applicant respectfully traverses this refusal, and submits the applied-for mark is registrable, particularly in light of the specific goods and services with which the mark is used.

 

          Applicant has amended the goods/services in the subject classes herein to more particularly reflect the nature of the goods and services, namely, software for providing businesses solutions relating to knowledge management, employee suggestions and awards programs, and printed manuals, training, consultancy and programming relating specifically thereto.

 

          The mark TARGET & design that is the subject of Registration No. 2,557,964 (“ ‘964 registration”) allegedly is used in connection with computer software for analysis and organization of statistical data in class 9 and development, maintenance, repair, installation, and implementation of computer software in class 42.   The applied for mark is used specifically in conjunction with the afore mentioned goods and services, which occupy a very narrow niche, i.e., computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administrating and controlling ideas submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement.  In view of this very narrow niche, there is no likelihood of confusion between the applied for mark and the mark of the ‘964 registration.  The goods and services of the ‘964 registration are unlikely to be encountered by the same purchases under circumstances that would give rise to the mistaken belief that the goods and/or services emanate from the same source. 

 

          The mark TARGET LINK that is the subject of Registration No. 3,091,997 (“ ‘997 registration”) is allegedly used with data processing programs; computer software development tools; computer software for development and  testing of electronic control unit software; computer software for configuring computer hardware; computer software for implementing software on hardware; computer software for measuring and generating signals associated with electronic control unit inputs and outputs software development, test and evolution data in class 9.  For at least the same reasons stated above, the goods of the ‘997 registration and the goods and services of the present application are very unlikely to be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. 

 

          The goods and services of the applicant are not closely related to either the goods and/or services of either the ‘964 or ‘997 registrations.  The mere fact that the applicant’s goods are computer software does not make the marks confusingly similar.  This is evidenced by the fact that the ‘997 registration issued in the presence of the ‘964 registration.  Moreover, there are several marks containing the term “TARGET” in international class 9 for software.  For example, Registration No. 3,098,804 for the mark TARGET computer software for assisting defense and intelligence analysis and decision makers in understanding, evaluating and visualizing the scope and the complexity of an adversary command and control system and structure, in international class 9; Registration No. 2,833,468 for the mark “@ TARGET” for, in part, computer planning software and programs for neurosurgical  and radial therapeutic applications; data carriers with computer planning software and programs for neurosurgical and radio therapeutic applications  and the like, in international class 9; and computer software development for others in the field of neurosurgical and radio therapeutic computer applications in international class 42; and Registration No. 1,836,029 for the mark TARGET/400 for computer software and associated documentation for converting applications from one platform to another in international class 9.  The existence of multiple registrations for marks employing the term TARGET in international class 9 for computer software indicates a Trademark Office policy for permitting multiple registrations in the same class where the applications for the computer software are in diverse fields.  It must be recognized that consumers of software in a specific field are unlikely to be consumers of software in another specific field.  Clearly, the presently applied for mark occupies a narrow niche that consumers will easily distinguish such that there is no likelihood of a mistaken belief that goods and /or services would come from a common source.  Thus, applicant submits the applied for mark is registrable.

 

         For the same reasons, there is no likelihood of confusion between the applied for mark for the aforementioned goods and services and the marks of pending application serial numbers 78/506,285 (“‘285 application”) and 78/761,694 (“‘694 application”).  The ‘285 application is in class 35 for business market analysis and management related services.  The ‘694 application is in class 9 for computer middleware specifically for developing and deploying web-based clinical trial applications without computer programming skills in particular languages.  These are very specific fields of use that are completely different than the goods and services of applicant.  Accordingly, applicant respectfully requests that this application not be suspended pending the final disposition of either or both of the aforementioned earlier-filed applications.

GOODS AND/OR SERVICES SECTION (009)(current)
INTERNATIONAL CLASS 009
DESCRIPTION
Machine-readable data carriers of all types with programs installed, namely computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement; data processing programs
GOODS AND/OR SERVICES SECTION (009)(proposed)
INTERNATIONAL CLASS 009
DESCRIPTION
Machine-readable data carriers of all types with programs installed, namely computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement; data processing programs, namely data processing programs for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement
GOODS AND/OR SERVICES SECTION (016)(current)
INTERNATIONAL CLASS 016
DESCRIPTION
Accompanying printed material for data processing programs, namely manuals, catalogues, instructional manuals and operating instruction sheets
GOODS AND/OR SERVICES SECTION (016)(proposed)
INTERNATIONAL CLASS 016
DESCRIPTION
Accompanying printed material for data processing programs, namely manuals, catalogues, instructional manuals and operating instruction sheets for computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement
GOODS AND/OR SERVICES SECTION (041)(current)
INTERNATIONAL CLASS 041
DESCRIPTION Training in the use of data processing programs
GOODS AND/OR SERVICES SECTION (041)(proposed)
INTERNATIONAL CLASS 041
DESCRIPTION
Training in the use of data processing programs for computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement
GOODS AND/OR SERVICES SECTION (042)(current)
INTERNATIONAL CLASS 042
DESCRIPTION
Consultancy in the use of data processing programs; computer programming
GOODS AND/OR SERVICES SECTION (042)(proposed)
INTERNATIONAL CLASS 042
DESCRIPTION
Consultancy in the use of data processing programs for computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement; computer programming for computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement
CORRESPONDENCE SECTION
NAME Markus Richardt
FIRM NAME Dipl.-Ing. Markus Richardt
STREET Leergasse 11
CITY 65343 Eltville am Rhei
COUNTRY Germany
SIGNATURE SECTION
RESPONSE SIGNATURE /Timothy X. Gibson/
SIGNATORY'S NAME Timothy X. Gibson
SIGNATORY'S POSITION Attorney of record
DATE SIGNED 02/26/2008
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Tue Feb 26 16:28:55 EST 2008
TEAS STAMP USPTO/ROA-XX.X.XX.XXX-200
80226162855523887-7903318
9-420cd75d9ffcb1c01dcf909
5bddc34b2a-N/A-N/A-200802
26155916733166



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. 79033189 has been amended as follows:

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

          The Examining Attorney has refused registration on the basis of an alleged likelihood of confusion with the marks in U.S. Registration Nos. 3,091,997 and 2,557,964.  Applicant respectfully traverses this refusal, and submits the applied-for mark is registrable, particularly in light of the specific goods and services with which the mark is used.

 

          Applicant has amended the goods/services in the subject classes herein to more particularly reflect the nature of the goods and services, namely, software for providing businesses solutions relating to knowledge management, employee suggestions and awards programs, and printed manuals, training, consultancy and programming relating specifically thereto.

 

          The mark TARGET & design that is the subject of Registration No. 2,557,964 (“ ‘964 registration”) allegedly is used in connection with computer software for analysis and organization of statistical data in class 9 and development, maintenance, repair, installation, and implementation of computer software in class 42.   The applied for mark is used specifically in conjunction with the afore mentioned goods and services, which occupy a very narrow niche, i.e., computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administrating and controlling ideas submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement.  In view of this very narrow niche, there is no likelihood of confusion between the applied for mark and the mark of the ‘964 registration.  The goods and services of the ‘964 registration are unlikely to be encountered by the same purchases under circumstances that would give rise to the mistaken belief that the goods and/or services emanate from the same source. 

 

          The mark TARGET LINK that is the subject of Registration No. 3,091,997 (“ ‘997 registration”) is allegedly used with data processing programs; computer software development tools; computer software for development and  testing of electronic control unit software; computer software for configuring computer hardware; computer software for implementing software on hardware; computer software for measuring and generating signals associated with electronic control unit inputs and outputs software development, test and evolution data in class 9.  For at least the same reasons stated above, the goods of the ‘997 registration and the goods and services of the present application are very unlikely to be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. 

 

          The goods and services of the applicant are not closely related to either the goods and/or services of either the ‘964 or ‘997 registrations.  The mere fact that the applicant’s goods are computer software does not make the marks confusingly similar.  This is evidenced by the fact that the ‘997 registration issued in the presence of the ‘964 registration.  Moreover, there are several marks containing the term “TARGET” in international class 9 for software.  For example, Registration No. 3,098,804 for the mark TARGET computer software for assisting defense and intelligence analysis and decision makers in understanding, evaluating and visualizing the scope and the complexity of an adversary command and control system and structure, in international class 9; Registration No. 2,833,468 for the mark “@ TARGET” for, in part, computer planning software and programs for neurosurgical  and radial therapeutic applications; data carriers with computer planning software and programs for neurosurgical and radio therapeutic applications  and the like, in international class 9; and computer software development for others in the field of neurosurgical and radio therapeutic computer applications in international class 42; and Registration No. 1,836,029 for the mark TARGET/400 for computer software and associated documentation for converting applications from one platform to another in international class 9.  The existence of multiple registrations for marks employing the term TARGET in international class 9 for computer software indicates a Trademark Office policy for permitting multiple registrations in the same class where the applications for the computer software are in diverse fields.  It must be recognized that consumers of software in a specific field are unlikely to be consumers of software in another specific field.  Clearly, the presently applied for mark occupies a narrow niche that consumers will easily distinguish such that there is no likelihood of a mistaken belief that goods and /or services would come from a common source.  Thus, applicant submits the applied for mark is registrable.

 

         For the same reasons, there is no likelihood of confusion between the applied for mark for the aforementioned goods and services and the marks of pending application serial numbers 78/506,285 (“‘285 application”) and 78/761,694 (“‘694 application”).  The ‘285 application is in class 35 for business market analysis and management related services.  The ‘694 application is in class 9 for computer middleware specifically for developing and deploying web-based clinical trial applications without computer programming skills in particular languages.  These are very specific fields of use that are completely different than the goods and services of applicant.  Accordingly, applicant respectfully requests that this application not be suspended pending the final disposition of either or both of the aforementioned earlier-filed applications.



CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Machine-readable data carriers of all types with programs installed, namely computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement; data processing programs
Original Filing Basis:
Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed: Class 009 for Machine-readable data carriers of all types with programs installed, namely computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement; data processing programs, namely data processing programs for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement

Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Accompanying printed material for data processing programs, namely manuals, catalogues, instructional manuals and operating instruction sheets
Original Filing Basis:
Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed: Class 016 for Accompanying printed material for data processing programs, namely manuals, catalogues, instructional manuals and operating instruction sheets for computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement

Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Training in the use of data processing programs
Original Filing Basis:
Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed: Class 041 for Training in the use of data processing programs for computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement

Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Consultancy in the use of data processing programs; computer programming
Original Filing Basis:
Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed: Class 042 for Consultancy in the use of data processing programs for computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement; computer programming for computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement

Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
Dipl.-Ing. Markus Richardt
Leergasse 11
65343 Eltville am Rhein
FED REP GERMANY

Proposed:
Markus Richardt of Dipl.-Ing. Markus Richardt, having an address of
Leergasse 11 65343 Eltville am Rhei,
Germany

SIGNATURE(S)
Response Signature
Signature: /Timothy X. Gibson/     Date: 02/26/2008
Signatory's Name: Timothy X. Gibson
Signatory's Position: Attorney of record

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.

Mailing Address:    Markus Richardt
   Dipl.-Ing. Markus Richardt
   Leergasse 11
   65343 Eltville am Rhei,
        
Serial Number: 79033189
Internet Transmission Date: Tue Feb 26 16:28:55 EST 2008
TEAS Stamp: USPTO/ROA-XX.X.XX.XXX-200802261628555238
87-79033189-420cd75d9ffcb1c01dcf9095bddc
34b2a-N/A-N/A-20080226155916733166



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