Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79292841 ACL (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/7929284 1/large) has been amended as follows:

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

Under the heading "Section 2(d) Refusal - Likelihood of Confusion", the Examining Attorney refuses to register Applicant?s mark alleging a likelihood of confusion with U.S. Registration Nos. 1,516,233 (herein after ?233) for the mark ACL relating to ?computer programs for use in the field of accounting? in International Class 7 and 5,311,691 (hereinafter ?691) for the mark ACL relating to ?computer software programs for accessing, extracting, monitoring, managing, analyzing and reporting computerized data as well as related risk assessment, compliance project management and graphical information visualization, used in the fields of corporate governance, compliance, auditing, accounting, data management, data analysis, financial management, internal controls management, governance, risk management, compliance, fraud detection, business assurance and business intelligence in class 9 and computer consulting services in class 42. - First, Applicant has restricted its goods to recite ?all of the aforementioned goods relate to medicine and hygienically critical areas?. Registrant?s goods do not relate to software but to hardware items that are used in special facilities namely in medicine and hygiene critical areas. The applicant?s goods relate to hardware items such as data processing apparatuses, display devices, multimedia devices and communication devices. These goods are specially manufactured for clean room like operations (e.g. hygienically critical areas). In other words, applicant?s goods must be fanless and of completely enclosed designs (e.g. no interaction with the surrounding environment) so as not to spread any airborne products (e.g. contagions). In addition, these products generally are made with antiseptic and anti-microbic coatings to further prevent the spread of contagions. In other words, applicant sells specialized computer and communication products to a highly specialized (niche) market. - Second, and relevant to the issue of likelihood of confusion is consideration of how and to whom the respective goods of the parties are sold. That is, are both products sold in the same ?channels of trade?? Obviously, if the goods of one party are sold to one class of buyers in a different marketing context than the goods of another seller, the likelihood that a single group of buyers will be confused by similar trademarks is less than if both parties sold their goods through the same channel of distribution. - The Federal Circuit found no likelihood of confusion in a situation where plaintiff sold ?E.D.S.? computer services while defendant sold ?EDS? power supplies and battery chargers. See Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992). This was viewed as a case of sales in separate channels of trade to different persons, even though there was some overlap in markets. For example, while both parties sold in the medical field, plaintiff sold its ?E.D.S.? data processing services to medical insurers while defendant sold its ?EDS? batteries and power supplies to makers of medical equipment such as bedside alert systems and crib monitors. Even though the parties sold to the same corporations in a few instances, the purchases were made by different departments and persons within those corporations. ?In such corporations, it cannot be presumed ? that the general computer services are selected by the same individuals who select battery chargers and power supplies.? See 21 U.S.P.Q.2d 1389. - If one mark user sells exclusively at retail and the other exclusively to commercial buyers, then there may be little likelihood of confusion since no one buyer ever buys both products. See Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358, 121 U.S.P.Q. 430 (2d Cir. 1959). For example, if one user sells food only at retail to consumers and the other sells only to commercial food brokers (and the product never reaches consumers under the mark), then there is no one buyer who will be faced with both products, and hence no confusion. - In the medicine and hygiene critical area field only specially manufactured products are acceptable and classified for clean room use. - In contrast to this, the ?233 mark for ACL relates to ?computer programs for use in the field of accounting?. As applicant?s goods are for clean room operation they are significantly more expensive than generalized computer and communications equipment and they would not be used to run accounting programs as this would be an expensive choice of hardware to run generic accounting programs. A similar argument applies to the business software goods of ?691. - Turning now to the Examiner?s evidence that some manufactures sell both software and hardware products alongside each other such as Dell, IBM, and Oracle. Although this is true for large, vertically integrated corporations it is not true for the registrant of both the ?233 or ?691 marks which does not sell hardware devices and therefore confusion is unlikely. Even if for argument sake, registrant sold hardware, its hardware would not be aimed at the specialized mark that applicant caters too as this type of hardware would not be price competitive. - Therefore, Applicant believes that the channels of trade for specialized clean room hardware and that of generic business software are distinct and different. - Third, there is no per se sharing of shelve space between the hardware goods of the applicant and the software goods of the registrant. Applicant?s goods are generally sold directly from the equipment manufacturer to the medical team of the clean room operator. In contrast, the generic software goods of the registrant are also sold directly from the manufacturer to the corporate accounting and business offices but not to the clean room operator. In other words, it is highly unlikely to see the goods sitting next to each other at a retailer or distributor in which a typical consumer would be confused. - Fourth, the mark ACL should be tightly construed as it is commonly used in class 9 in regards too hardware and software. Third party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry (see In re J.M. Originals, Inc, 6 USPQ2d 1393, 1394 (TTAB 1987)). In class 9 there are two registrations namely 1,679,292 for ACLS relating to computer software in the field of credit management and 5,440,318 for ACL relating to solenoid valves. The ultimate test of the relative strength is the distinctiveness of a mark in the mind and perception of the relevant customer group. But a mark that is hemmed in on all sides by similar marks on similar goods cannot be very distinctive. It is merely one of a crowd of marks. In such a crowd, customers will not likely be confused between any two of the crowd and may have learned to carefully pick out one from the other. See Standard Brands, Inc. v. RJR Foods, Inc. 192 USPQ 383, 385. Marks which are in common use by many sellers are not entitled to the same scope of protection as strong marks. See Polaroid Corp. v Polaroid Inc., 138 USPQ 265. Evidence of third party use of similar marks on similar goods is admissible and relevant to show that the mark is relatively weak and entitled to only a narrow scope of protection. - In view of the above identified arguments the examiner is respectfully requested to withdraw the rejection.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Apparatus and systems composed thereof for data processing (included in this class), and for the recording, transmission, processing and/or reproduction of analogue and/or digital image and/or audio signals and/or data, including all for connection to the internet; display devices for analogue and/or digital image and/or audio signals and/or data; multi-media apparatus; apparatus for in-house communications; internet devices; media for storing analogue and/or digital image and/or audio signals and/or data
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: Apparatus and systems composed thereof for data processing (included in this class), and for the recording, transmission, processing and/or reproduction of analogue and/or digital image and/or audio signals and/or data, including all for connection to the internet; Data processing apparatus and systems comprising apparatus for recording, transmission, processing and reproduction of analogue signals, digital images, audio signals and data, via the Internet; display devices for analogue and/or digital image and/or audio signals and/or data; electronic apparatus, namely electronic display screens for displaying analogue signals, digital images, audio signals and data; multi-media apparatus; multi-media apparatus, namely video monitors, video recorders, and video storage devices being blank digital video storage media; apparatus for in-house communications; apparatus for in-house communications, namely, apparatus for transmission of in-house communication; internet devices; Internet devices, namely wireless technology based routers; media for storing analogue and/or digital image and/or audio signals and/or data; blank electronic and digital storage media for storing recorded analogue signals, digital images, audio signals and dataClass 009 for Data processing apparatus and systems comprising apparatus for recording, transmission, processing and reproduction of analogue signals, digital images, audio signals and data, via the Internet; electronic apparatus, namely electronic display screens for displaying analogue signals, digital images, audio signals and data; multi-media apparatus, namely video monitors, video recorders, and video storage devices being blank digital video storage media; apparatus for in-house communications, namely, apparatus for transmission of in-house communication; Internet devices, namely wireless technology based routers; blank electronic and digital storage media for storing recorded analogue signals, digital images, audio signals and data

Webpage URL: None Provided
Webpage Date of Access: None Provided


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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: ACL Holding GmbH a(n) GmbH
Proposed: ACL Holding GmbH, GmbH legally organized under the laws of Germany
      Email Address: XXXX

ADDITIONAL STATEMENTS
Color Claim
The color(s) blue is/are claimed as a feature of the mark.

Description of mark
The mark consists of the blue wording "ACL".

The owner's/holder's proposed attorney information: Ralph Locher. Other appointed attorneys are Werner Stemer; Laurence Greenberg. Ralph Locher of Lerner Greenberg Stemer, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      P.O. Box 2480
      Hollywood, Florida 33022
      United States
is appointed to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is T-11471.
      The phone number is 19549251100.
      The email address is trademarks@patentusa.com

Ralph Locher submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      Patentanwälte Tobias Köhler und
Correspondence Information (proposed):
      Ralph Locher
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@patentusa.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): office@patentusa.com

The docket/reference number is T-11471.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Ralph Locher/     Date: 05/05/2021
Signatory's Name: Ralph Locher
Signatory's Position: Authorized U.S. Licensed Attorney, Florida Bar member

Signatory's Phone Number: 19549251100 Signature method: Signed directly within the form

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Patentanwälte Tobias Köhler und
   Volkmar Müller
   
   Kohlgartenstraße 33/35
   04315 Leipzig,
Mailing Address:    Ralph Locher
   Lerner Greenberg Stemer, LLP
   P.O. Box 2480
   Hollywood, Florida 33022
        
Serial Number: 79292841
Internet Transmission Date: Wed May 05 12:16:34 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2021050512163432
8176-79292841-780e2d799f034c05f723be6a8e
78cf215cd8ba3f5cd426a3dfde1819808b7a8-N/
A-N/A-20210505115751133291