| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
79071252 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 107 |
| MARK SECTION (no change) |
| ARGUMENT(S) |
|
The Examining Attorney has refused registration of Applicant's mark KNOWLEDGE on the grounds that the mark is confusingly similar to twenty-two existing registrations
and/or earlier-filed pending applications. For the reasons discussed below, Applicant respectfully disagrees that confusion is likely, and requests reconsideration of
the refusal.
Applicant has amended its identification of goods and services to delete certain goods and services and to clarify the nature of other goods and services. Applicant submits that its mark KNOWLEDGE covering the amended identification of goods and services is sufficiently distinct from each of the cited references to render
confusion unlikely.
The fundamental inquiry in determining likelihood of confusion goes to the cumulative effect of the differences in the marks and the goods or services at
issue. Federated Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24, 29 (CCPA 1976). In considering the
differences in the marks, the focus should be on the effect of the sight, sound, meaning, and commercial impression created by the respective marks. In re E. I. du Pont de Nemours & Co., 177 USPQ 563 (CCPA 1973). In comparing
the marks, they should not be dissected, but rather the total commercial impression of each mark in relation to the goods or services to which it is applied should be considered. Franklin Mint Corp. v. Master Mfg. Co., 212 USPQ 233 (CCPA 1981). A number of other factors must also be considered,
including the strength of the cited mark. See du Pont, 177 USPQ at 567.
A. The Cited Registration Is Weak and Entitled to a Very Narrow Scope of Protection
A predominant factor in a likelihood of confusion analysis is whether the "senior" mark falls within a category of weak marks. Basic Vegetable Prod., Inc. v. General Foods Corp., 165 USPQ 781 (TTAB 1970). Where the mark is highly suggestive, the scope of protection is limited to
"substantially identical designations" used for "substantially identical goods" or services. Id. The cited registrations, all containing the term KNOWLEDGE, fall within this category of
highly suggestive marks deserving only a limited scope of protection. The term "knowledge" is a common, ordinary English word having a familiar and well-known
meaning. Given the highly suggestive and laudatory nature of this term as applied to products or services which impart information, are educational in nature, or are
superior to others, numerous companies have adopted marks incorporating the term. Consumers have learned to differentiate marks containing these words by focusing on
the differences, and marks composed of these terms should be accorded a narrow scope of protection encompassing only the identical or nearly identical mark for the identical or closely related
goods.
B. The Marks Are Not Identical or Substantially Identical
The parties' marks are not identical or even substantially identical, the standard when comparing marks comprised of weak
terms. Because even minor differences are sufficient to avoid a likelihood of confusion, the PTO has allowed numerous KNOWLEDGE-formative marks to
coexist. Just as consumers can differentiate between the marks KNOWLEDGE SERVER for computer programs for information retrieval in the medical field and KNOWLEDGE
MEDICINE for providing access to the Internet through a web portal for medical information and data for health care providers and researchers; and EKNOWLEDGE for digital media featuring educational
materials in the field of exam preparation and human resource issues and KNOWLEDGE FORUM for educational software for development of research techniques; and KNOWLEDGE SERVICE PROVIDER for providing
online publications in the nature of newsletters on a variety of legal subjects and KNOWLEDGE MAGAZINE for electronic publications featuring scientific topics, so too, can they differentiate between
all of these marks and KNOWLEDGE for the goods and services listed in this application, as amended.
In short, because the cited marks are weak and entitled to only a narrow scope of protection, the differences in overall
appearance, pronunciation, meaning, and commercial impression between the marks and the Applicant's mark KNOWLEDGE is sufficient to render confusion unlikely.
Accordingly, the refusal of registration should be withdrawn.
|
| GOODS AND/OR SERVICES SECTION (009)(current) |
| INTERNATIONAL CLASS |
009 |
| DESCRIPTION |
| Data recordings including audio, video, still and moving images and text; computer software, including software for use in downloading,
storing, reproducing and organising audio, video, still and moving images and data; educational software; downloadable electronic publications relating to television programs; computer, electronic
and video games programmes and equipment; mouse mats; electronic instructional and teaching apparatus and instruments; television and radio signal transmitters and receivers; helmets and parts for
all the aforesaid goods |
| GOODS AND/OR SERVICES SECTION (009)(proposed) |
| INTERNATIONAL CLASS |
009 |
| TRACKED TEXT DESCRIPTION |
Data recordings including audio, video, still and moving images and text; Data recordings, namely, audio, and video recordings featuring still and moving images and text in the nature of science, history and nature; computer software, including software for use in downloading, storing, reproducing and organising audio, video, still and moving images and data; computer software namely, educational software featuring instruction in science, history and nature; educational software; computer, electronic and video games programmes and equipment, namely, software, tapes, discs, joy sticks, remote controls, and interactive floor mats; downloadable electronic publications relating to television programs; mouse pads; computer, electronic and
video games programmes and equipment; electronic instructional and teaching materials in the field of science, history and nature; mouse mats; television and radio signal transmitters and receivers; electronic instructional and teaching apparatus
and instruments; helmets and parts for all the aforesaid goods |
| FINAL DESCRIPTION |
| Data recordings, namely, audio, and video recordings featuring still and moving images and text in the nature of science, history and
nature; computer software namely, educational software featuring instruction in science, history and nature; computer, electronic and video games programmes and equipment, namely, software, tapes,
discs, joy sticks, remote controls, and interactive floor mats; mouse pads; electronic instructional and teaching materials in the field of science, history and nature; television and radio signal
transmitters and receivers |
| GOODS AND/OR SERVICES SECTION (016)(current) |
| INTERNATIONAL CLASS |
016 |
| DESCRIPTION |
| Printed publications; magazines; books; photographs; stationery; artists' materials; paint brushes; instructional and teaching
material; printing blocks; posters; cards; postcards; greetings cards; trading cards; invitations; diaries; calendars; photograph albums; prints; gift bags, gift boxes, gift tags and gift wrap;
notepads; writing instruments and crayons; stickers; transfers; stamps; personal organisers; address books; note books; pen and pencil holders; desk mats; embroidery, sewing and knitting patterns;
postage stamps |
| GOODS AND/OR SERVICES SECTION (016)(proposed) |
| INTERNATIONAL CLASS |
016 |
| TRACKED TEXT DESCRIPTION |
Printed publications; Photographs; magazines; stationery; books; artists' materials namely, artists' brushes, artists'
pastels, artists' pens, and paint brushes; printed instructional and teaching material in the field of science, history and nature; printing blocks; artists' materials; posters; paint brushes; cards; instructional and teaching material; postcards; greetings cards; trading cards; invitation cards; diaries; calendars; photograph
albums; invitations; prints; paper gift bags, gift boxes, paper gift tags and gift wrap
paper; notepads; writing instruments and crayons; stickers; gift bags, gift
boxes, gift tags and gift wrap; transfers; stamps, namely, rubber stamps; personal
organizers; address books; note books; stamps; pen and pencil holders;
personal organisers; desk mats boards; embroidery, sewing and knitting patterns;
postage stamps; desk mats |
| FINAL DESCRIPTION |
| Photographs; stationery; artists' materials namely, artists' brushes, artists' pastels, artists' pens, and paint brushes; printed
instructional and teaching material in the field of science, history and nature; printing blocks; posters; cards; postcards; greetings cards; trading cards; invitation cards; diaries; calendars;
photograph albums; prints; paper gift bags, gift boxes, paper gift tags and gift wrap paper; notepads; writing instruments and crayons; stickers; transfers; stamps, namely, rubber stamps; personal
organizers; address books; note books; pen and pencil holders; desk mats boards; embroidery, sewing and knitting patterns; postage stamps |
| GOODS AND/OR SERVICES SECTION (038)(current) |
| INTERNATIONAL CLASS |
038 |
| DESCRIPTION |
| Broadcasting; communications and telecommunications; transmission, broadcast, reception and other dissemination of audio, video, still
and moving images, text and data whether in real or delayed time; electronic mail services; teletext and interactive broadcasting services; news information and news agency services; the provision of
discussion forums; provision of information and advisory services relating to any of the aforesaid services |
| GOODS AND/OR SERVICES SECTION (038)(proposed) |
| INTERNATIONAL CLASS |
038 |
| TRACKED TEXT DESCRIPTION |
Broadcasting; Television and radio broadcasting;
communications and telecommunications; audio and video broadcasting; transmission,
broadcast, reception and other dissemination of audio, video, still and moving images, text and data whether in real or delayed time; broadcasting programs via
the internet; electronic mail services; streaming of audio and video material across broad band networks and the
internet; teletext and interactive broadcasting services; audio and video broadcasting services rendered through
terrestrial broadcasting, satellites, webcasting, and transmission to wireless communications devices, handheld computers, personal digital assistants, and mobile and cellular phones;
news information and news agency services; electronic transmission of data, documents, messages, text, sound, images,
graphics, entertainment, and education via a global computer network; the provision of discussion forums; video-on-demand transmission services; provision of information and advisory services relating to any of the aforesaid services; news information and news agency services, namely the transmission of news; providing discussion forums on topics of general interest in
class 38 |
| FINAL DESCRIPTION |
| Television and radio broadcasting; audio and video broadcasting; broadcasting programs via the internet; streaming of audio and video
material across broad band networks and the internet; audio and video broadcasting services rendered through terrestrial broadcasting, satellites, webcasting, and transmission to wireless
communications devices, handheld computers, personal digital assistants, and mobile and cellular phones; electronic transmission of data, documents, messages, text, sound, images, graphics,
entertainment, and education via a global computer network; video-on-demand transmission services; news information and news agency services, namely the transmission of news; providing discussion
forums on topics of general interest in class 38 |
| GOODS AND/OR SERVICES SECTION (041)(current) |
| INTERNATIONAL CLASS |
041 |
| DESCRIPTION |
| Provision of entertainment, education, recreation, instruction, tuition and training; production, presentation and distribution of
audio, video, still and moving images and data; publishing services (including electronic publishing services); publication of non-downloadable electronic publications; organisation, production and
presentation of shows, competitions, games, concerts exhibitions and events |
| GOODS AND/OR SERVICES SECTION (041)(proposed) |
| INTERNATIONAL CLASS |
041 |
| TRACKED TEXT DESCRIPTION |
Provision of entertainment, education, recreation, instruction, tuition and training; Provision of entertainment, education, and training namely arranging of educational conferences and workshops in the field of science, history and nature; production, presentation and distribution of audio, video, still and moving images and data; publishing services (including electronic publishing
services); organization, production and presentation of shows, competitions, games, concerts exhibitions and events; publication of non-downloadable electronic publications; organisation, production and presentation of shows, competitions, games, concerts exhibitions
and events |
| FINAL DESCRIPTION |
| Provision of entertainment, education, and training namely arranging of educational conferences and workshops in the field of science,
history and nature; production, presentation and distribution of audio, video, still and moving images and data; organization, production and presentation of shows, competitions, games, concerts
exhibitions and events |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/lynn m. jordan/ |
| SIGNATORY'S NAME |
Lynn M. Jordan |
| SIGNATORY'S POSITION |
Attorney of Record |
| DATE SIGNED |
04/27/2010 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Tue Apr 27 14:45:11 EDT 2010 |
| TEAS STAMP |
USPTO/ROA-XX.XXX.X.X-2010
0427144511040534-79071252
-460a33816e0eeb29af84e365
62965c59c-N/A-N/A-2010042
7134715471297 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
79071252 has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
The Examining Attorney has refused registration of Applicant's mark KNOWLEDGE on the grounds that the mark is confusingly similar to twenty-two existing registrations
and/or earlier-filed pending applications. For the reasons discussed below, Applicant respectfully disagrees that confusion is likely, and requests reconsideration of
the refusal.
Applicant has amended its identification of goods and services to delete certain goods and services and to clarify the nature of other goods and services. Applicant submits that its mark KNOWLEDGE covering the amended identification of goods and services is sufficiently distinct from each of the cited references to render
confusion unlikely.
The fundamental inquiry in determining likelihood of confusion goes to the cumulative effect of the differences in the marks and the goods or services at
issue. Federated Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24, 29 (CCPA 1976). In considering the
differences in the marks, the focus should be on the effect of the sight, sound, meaning, and commercial impression created by the respective marks. In re E. I. du Pont de Nemours & Co., 177 USPQ 563 (CCPA 1973). In comparing
the marks, they should not be dissected, but rather the total commercial impression of each mark in relation to the goods or services to which it is applied should be considered. Franklin Mint Corp. v. Master Mfg. Co., 212 USPQ 233 (CCPA 1981). A number of other factors must also be considered,
including the strength of the cited mark. See du Pont, 177 USPQ at 567.
A. The Cited Registration Is Weak and Entitled to a Very Narrow Scope of Protection
A predominant factor in a likelihood of confusion analysis is whether the "senior" mark falls within a category of weak marks. Basic Vegetable Prod., Inc. v. General Foods Corp., 165 USPQ 781 (TTAB 1970). Where the mark is highly suggestive, the scope of protection is limited to
"substantially identical designations" used for "substantially identical goods" or services. Id. The cited registrations, all containing the term KNOWLEDGE, fall within this category of
highly suggestive marks deserving only a limited scope of protection. The term "knowledge" is a common, ordinary English word having a familiar and well-known
meaning. Given the highly suggestive and laudatory nature of this term as applied to products or services which impart information, are educational in nature, or are
superior to others, numerous companies have adopted marks incorporating the term. Consumers have learned to differentiate marks containing these words by focusing on
the differences, and marks composed of these terms should be accorded a narrow scope of protection encompassing only the identical or nearly identical mark for the identical or closely related
goods.
B. The Marks Are Not Identical or Substantially Identical
The parties' marks are not identical or even substantially identical, the standard when comparing marks comprised of weak
terms. Because even minor differences are sufficient to avoid a likelihood of confusion, the PTO has allowed numerous KNOWLEDGE-formative marks to
coexist. Just as consumers can differentiate between the marks KNOWLEDGE SERVER for computer programs for information retrieval in the medical field and KNOWLEDGE
MEDICINE for providing access to the Internet through a web portal for medical information and data for health care providers and researchers; and EKNOWLEDGE for digital media featuring educational
materials in the field of exam preparation and human resource issues and KNOWLEDGE FORUM for educational software for development of research techniques; and KNOWLEDGE SERVICE PROVIDER for providing
online publications in the nature of newsletters on a variety of legal subjects and KNOWLEDGE MAGAZINE for electronic publications featuring scientific topics, so too, can they differentiate between
all of these marks and KNOWLEDGE for the goods and services listed in this application, as amended.
In short, because the cited marks are weak and entitled to only a narrow scope of protection, the differences in overall
appearance, pronunciation, meaning, and commercial impression between the marks and the Applicant's mark KNOWLEDGE is sufficient to render confusion unlikely.
Accordingly, the refusal of registration should be withdrawn.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Data recordings including audio, video, still and moving images and text; computer software, including software for use in downloading, storing, reproducing and
organising audio, video, still and moving images and data; educational software; downloadable electronic publications relating to television programs; computer, electronic and video games programmes
and equipment; mouse mats; electronic instructional and teaching apparatus and instruments; television and radio signal transmitters and receivers; helmets and parts for all the aforesaid goods
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:
Tracked Text Description: Data recordings including audio, video, still and moving images and text;
Data recordings,
namely, audio, and video recordings featuring still and moving images and text in the nature of science, history and nature;
computer software, including
software for use in downloading, storing, reproducing and organising audio, video, still and moving images and data;
computer software namely, educational
software featuring instruction in science, history and nature;
educational software;
computer, electronic and video
games programmes and equipment, namely, software, tapes, discs, joy sticks, remote controls, and interactive floor mats;
downloadable electronic publications
relating to television programs;
mouse pads;
computer, electronic and video games programmes and equipment;
electronic instructional and teaching materials in the field of science, history and nature;
mouse mats;
television and radio signal transmitters and receivers;
electronic instructional and teaching apparatus and instruments;
helmets and parts for all the aforesaid goodsClass 009 for Data recordings, namely, audio, and video recordings featuring still and moving images and text in the nature of
science, history and nature; computer software namely, educational software featuring instruction in science, history and nature; computer, electronic and video games programmes and equipment,
namely, software, tapes, discs, joy sticks, remote controls, and interactive floor mats; mouse pads; electronic instructional and teaching materials in the field of science, history and nature;
television and radio signal transmitters and receivers
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 Printed publications; magazines; books; photographs; stationery; artists' materials; paint brushes; instructional and teaching material; printing blocks; posters; cards;
postcards; greetings cards; trading cards; invitations; diaries; calendars; photograph albums; prints; gift bags, gift boxes, gift tags and gift wrap; notepads; writing instruments and crayons;
stickers; transfers; stamps; personal organisers; address books; note books; pen and pencil holders; desk mats; embroidery, sewing and knitting patterns; postage stamps
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:
Tracked Text Description: Printed publications;
Photographs;
magazines;
stationery;
books;
artists' materials namely, artists' brushes, artists' pastels, artists' pens, and paint
brushes;
printed instructional and teaching material in the field of science, history and nature;
printing blocks;
artists' materials;
posters;
paint brushes;
cards;
instructional and teaching material;
postcards;
greetings cards;
trading cards;
invitation cards;
diaries;
calendars;
photograph albums;
invitations;
prints;
paper gift bags, gift boxes, paper gift tags and gift wrap paper;
notepads;
writing instruments and crayons;
stickers;
gift bags, gift boxes, gift tags and gift
wrap;
transfers;
stamps, namely, rubber stamps;
personal organizers;
address books;
note books;
stamps;
pen and pencil holders;
personal organisers;
desk mats boards;
embroidery, sewing and knitting patterns;
postage
stamps;
desk matsClass 016 for Photographs; stationery; artists' materials namely, artists' brushes, artists' pastels, artists' pens, and paint brushes;
printed instructional and teaching material in the field of science, history and nature; printing blocks; posters; cards; postcards; greetings cards; trading cards; invitation cards; diaries;
calendars; photograph albums; prints; paper gift bags, gift boxes, paper gift tags and gift wrap paper; notepads; writing instruments and crayons; stickers; transfers; stamps, namely, rubber stamps;
personal organizers; address books; note books; pen and pencil holders; desk mats boards; embroidery, sewing and knitting patterns; postage stamps
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 038 for Broadcasting; communications and telecommunications; transmission, broadcast, reception and other dissemination of audio, video, still and moving images, text and data
whether in real or delayed time; electronic mail services; teletext and interactive broadcasting services; news information and news agency services; the provision of discussion forums; provision of
information and advisory services relating to any of the aforesaid services
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:
Tracked Text Description: Broadcasting;
Television and radio broadcasting;
communications and telecommunications;
audio and video broadcasting;
transmission, broadcast, reception and other
dissemination of audio, video, still and moving images, text and data whether in real or delayed time;
broadcasting programs via the internet;
electronic mail services;
streaming of audio and video material across broad band networks and the internet;
teletext and interactive broadcasting services;
audio and video broadcasting services rendered through terrestrial broadcasting, satellites,
webcasting, and transmission to wireless communications devices, handheld computers, personal digital assistants, and mobile and cellular phones;
news
information and news agency services;
electronic transmission of data, documents, messages, text, sound, images, graphics, entertainment, and education via a
global computer network;
the provision of discussion forums;
video-on-demand transmission services;
provision of information and advisory services relating to any of the aforesaid services;
news information and news agency services,
namely the transmission of news;
providing discussion forums on topics of general interest in class 38Class 038 for Television and radio broadcasting;
audio and video broadcasting; broadcasting programs via the internet; streaming of audio and video material across broad band networks and the internet; audio and video broadcasting services rendered
through terrestrial broadcasting, satellites, webcasting, and transmission to wireless communications devices, handheld computers, personal digital assistants, and mobile and cellular phones;
electronic transmission of data, documents, messages, text, sound, images, graphics, entertainment, and education via a global computer network; video-on-demand transmission services; news
information and news agency services, namely the transmission of news; providing discussion forums on topics of general interest in class 38
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 Provision of entertainment, education, recreation, instruction, tuition and training; production, presentation and distribution of audio, video, still and moving images
and data; publishing services (including electronic publishing services); publication of non-downloadable electronic publications; organisation, production and presentation of shows, competitions,
games, concerts exhibitions and events
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:
Tracked Text Description: Provision of entertainment, education, recreation, instruction, tuition and training;
Provision
of entertainment, education, and training namely arranging of educational conferences and workshops in the field of science, history and nature;
production, presentation and
distribution of audio, video, still and moving images and data;
publishing services (including electronic publishing services);
organization, production and presentation of shows, competitions, games, concerts exhibitions and events;
publication of non-downloadable
electronic publications;
organisation, production and presentation of shows, competitions, games, concerts exhibitions and eventsClass 041 for Provision
of entertainment, education, and training namely arranging of educational conferences and workshops in the field of science, history and nature; production, presentation and distribution of audio,
video, still and moving images and data; organization, production and presentation of shows, competitions, games, concerts exhibitions and events
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.
SIGNATURE(S)
Response Signature
Signature: /lynn m. jordan/ Date: 04/27/2010
Signatory's Name: Lynn M. Jordan
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.
Serial Number: 79071252
Internet Transmission Date: Tue Apr 27 14:45:11 EDT 2010
TEAS Stamp: USPTO/ROA-XX.XXX.X.X-2010042714451104053
4-79071252-460a33816e0eeb29af84e36562965
c59c-N/A-N/A-20100427134715471297