| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85517122 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION | |
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85517122 |
| LITERAL ELEMENT | RESONATE |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
To the Commissioner for Trademarks
Response to Office Action issued 4/27/2012
MARK: RESONATE APPLICATION SERIAL NO.: 85/517,122
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
This is in response to the Office Action, issued April 27, 2012 (the “Office Action”), in re Trademark Application of The Resonate Group, Inc. (the “Applicant”) for the mark RESONATE, Serial No. 85/517,122 (the “Application”). Applicant submits that the following Remarks fully address the comments set forth in the Office Action and respectfully requests the approval of the Application for publication.
REMARKS
I. LIKELIHOOD OF CONFUSION WITH EXISTING REGISTRATIONS (Applies to Class 35 only)
In this Office Action the Trademark Examining Attorney (the “Examiner”) states that registration of Applicant’s mark, RESONATE (the “Applicant’s Mark”), is refused under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the grounds that there is a likelihood of confusion between the Applicant’s Mark and the marks shown in following existing registrations:
· RESONATE MEDIA & ENTERTAINMENT & Design, Registration No. 2,994,563 o NOTE: This registration was cancelled by the USPTO on October 5, 2012, because the registrant did not file an acceptable declaration under Section 8 (see Exhibit A). · RESONATE NETWORKS & Design, Registration No. 3,760,240 · RESONATE LIVE MARKETING, Registration No. 4,125,018
For the reasons set forth below, Applicant respectfully submits that the Applicant’s Mark is not likely to be confused with any of the above-cited registrations.
A. The “RESONATE” Element Has Widespread Use
The Applicant’s Mark and each of the above-cited registrations each share the common “RESONATE” element. Therefore, such marks are generally not strong marks and the widespread use is evidenced by a recent search of the trademark office’s database showing that there are a total of 44 LIVE marks in the Trademark Electronic Search System (TESS) database. Of those, there are currently 15 LIVE registrations (three are owned by the Applicant), with another five (5) previous registrations that are DEAD, and another 13 LIVE pending applications (four have been filed by the Applicant), with another 11 that are DEAD. This large population of users of a mark with the “RESONATE” element thus illustrates a field of marks that is quite crowded and where the use of the term “RESONATE” is widespread. Pursuant to T.M.E.P. § 1207.01(d)(iii), copies from the USPTO’s TSDR system of the 12 LIVE registrations and nine (9) pending applications are attached to this response as Exhibit B. Of these 21 LIVE registrations and pending applications, six (6) contain at least one service offering in Class 35. (Note: Applicant’s three (3) registrations and four (4) pending applications are not included as part of Exhibit B.)
Evidence of widespread third-party use in a particular field, obtained from sources such as registrations of marks containing a certain shared term, even a dominant term, are competent to suggest that purchasers have been conditioned to look to the other elements of the marks as a means of distinguishing the source of goods or services in the marketplace. See generally, In re Dayco Products-Eaglemotive Inc., 9 U.S.P.Q.2d 1910, 1911-1912 (TTAB 1988) (widespread use of the term “IMPERIAL”); Plus Prods. v. Star-Kist Foods, Inc., 220 U.S.P.Q. 541, 544 (TTAB 1983) (the widespread use of the term “plus” meant consumers were unlikely to rely on it in distinguishing products); see also T.M.E.P. §§ 710.03 and 1207.01(d)(iii). Such other elements that purchasers would include, but not be limited to, (i) other words, if any, that are part of the mark, including disclaimed portions; (ii) any stylized, design, or graphic portions of the mark; (iii) a closer review of the actual goods or services offered in connection with the mark; (iv) first-hand knowledge of the goods or services such purchaser is actually seeking to purchase; (v) potential first-hand knowledge of the actual source of the goods or services; or (vi) any retail marketing material (e.g., websites) used in connection with the third-party mark.
Evidence of third-party use falls under the sixth du Pont factor – the “number and nature of similar marks in use on similar goods [or services].” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). If the evidence establishes that the consuming public is exposed to widespread third-party use of similar marks on similar goods, it “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 U.S.P.Q.2d 1689, 1693 (Fed. Cir. 2005); General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 626-27 (8th Cir.1987); J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition § 11:88 (4th ed.2001)
As a consequence, even slight differences in the marks, or slight differences in the goods or services offered in connection with the marks, or differences in targeted purchasers, are enough to prevent a likelihood of confusion. The widespread use of the “RESONATE” element in numerous registered marks illustrates the narrow scope of protection that should be afforded to marks containing the “RESONATE” element and the U.S. Patent and Trademark Office’s (“PTO”) recognition of the public’s ability to distinguish among relatively close marks in this area, thus negating any likelihood of confusion.
1. Comparison of the Marks
Where marks, or marks with a common element, are so commonly used the public will typically look to other elements of the marks to distinguish the source of the goods or services. T.M.E.P. § 1207.01(d)(iii). In the present case, a comparison of three cited registrations and the Applicant’s Mark show that each mark, in its entirety, is quite different. That is, RESONATE MEDIA & ENTERTAINMENT with a sound wave design, RESONATE NETWORKS with a circle design, and RESONATE LIVE MARKETING are all very different in their entireties such that where a member of the consuming public is considering purchasing a product or obtaining a service there is no likelihood of confusion with the Applicant’s Mark, RESONATE.
As stated above and because marks in such crowded fields should be afforded much narrower protection than marks that consists of a more arbitrary designation, the Applicant respectfully asserts that there is no likelihood of confusion with any of the three cited registrations.
The lack of any likelihood of confusion is further supported by the fact that the Applicant is the owner of three registered marks (the “Applicant’s Registered Marks”) that also contain the “RESONATE” element (see Exhibit C). They are:
· THE RESONATE GROUP, Registration No. 4,011,183 (in Classes 35 and 42 and in use in commerce since at least as early as January 2008) · THE RESONATE GROUP & Design, Registration No. 4,011,184 (in Classes 35 and 42 and in use in commerce since at least as early as January 2008) · RESONATE OR DIE, Registration No. 3992288 (in Classes 35 and 42 and in use in commerce since at least as early as May 2010)
Except for a few instances where Applicant’s customers or potential customers we lead to the website for RESONATE LIVE MARKETING, to date there have been no instances of complaints of confusion related to any likelihood of confusion between any other of the respective mark owners (registered or pending) and the Applicant’s Registered Marks. Even in the instance of the confusion caused by RESONATE LIVE MARKETING, it is thought the confusion was more in the nature of initial interest confusion caused by the website address, www.resonatellc.com, used by the owner of the RESONATE LIVE MARKETING mark. This lack of any instances of actual confusion between the above-cited registrations and the Applicant’s Mark also satisfies the seventh du Pont factor – the “nature and extent of any actual confusion.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973).
For the reasons set forth in this paragraph 1, the Applicant respectfully requests the Examiner withdraw the refusal to register the Applicant’s Mark in Class 35 on the basis there is any likelihood of confusion resulting from a comparison of the marks.
2. Comparison of the Services
Even where similar marks are used in connection with similar or overlapping goods or services, in circumstances where the mark, or part of the mark, had widespread use, the same analysis as discussed in paragraph 1 above applies. That is, the description of the goods or services, or both, are entitled to only a narrow scope of protection in instances where the consuming public is exposed to third-party use of such similar marks on similar goods or services. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 U.S.P.Q.2d 1689, 1693 (Fed. Cir. 2005). This evidence relating to a comparison of the services falls under the second du Pont factor – the “similarity or dissimilarity and nature of the goods (and/or services) . . . described in an application or registration” and the sixth du Pont factor – the “number and nature of similar marks in use on similar goods [or services].” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). A more specific discussion related to each of the cited registrations follows:
a. RESONATE MEDIA & ENTERTAINMENT & Design (Reg. No. 2,994,563): As noted above, the registration for this mark has been cancelled by the USPTO and should be removed as a bar to the registration of Applicant’s Mark.
b. RESONATE NETWORKS & Design (Reg. No. 3,760,240): The mark should be narrowly construed to apply only to online advertising and media buying services relating to attitudinal targeting (that is, targeted marketing) through the analysis of online business research and surveys.
c. RESONATE LIVE MARKETING (Reg. No. 4,125,018): In response to a demand letter sent by the Applicant to the owner of this cited registration, the owner, through counsel, in a letter dated February 6, 2012, for many of the same reasons set forth above in paragraph1 and in this paragraph 2, denies there is any likelihood of confusion between its mark and the Applicant’s Mark. Further, a review of the website for Resonate Live Marketing, LLC (www.resonatellc.com) shows its services are focused on “event design and logistics.” A copy of website’s home page is attached as Exhibit D. Therefore, as discussed above in this paragraph 2 the scope of the services described in this cited registered should be narrowly construed to services only in the area of event design and logistics.
With respect to the Applicant’s Mark, the Applicant provides services primarily to churches, ministries, universities, and similar non-profit organizations. Copies of the Applicant’s webpages, “About Us” and “Clients” (http://www.resonategroup.com/about and http://www.resonategroup.com/clients), are included as Exhibit E. Therefore, with the same narrower construction required per the above discussion and the recognition that purchasers have been conditioned to look to the other elements of the marks as a means of distinguishing the source of goods or services in the marketplace where use of one of the elements of a mark is widespread, there is no likelihood of confusion between the services provided in connection with the Applicant’s Mark and any of the services offered in connection with any of the remaining above-cited registrations.
In addition, and as part of the third du Pont factor – the “similarity or dissimilarity of established, likely-to-continue trade channels,” each of the services offered in connection with the cited registrations and the Applicant’s Mark are all offered in different channels of trade to different customers.
For the reasons set forth in this paragraph 2, the Applicant respectfully requests the Examiner withdraw the refusal to register the Applicant’s Mark in Class 35 on the basis there is any likelihood of confusion resulting from a comparison of the services.
II. LIKELIHOOD OF CONFUSION WITH EARLIER FILED PENDING APPLICATION (Applies to Class 35 only)
The Examiner also notes in this Office Action that there may be a likelihood of confusion between the Applicant’s Mark and the mark in pending application for RESONATE ME (Serial No. 77/766,919), if such pending application should mature to registration. It is noted that this application matured to registration on September 11, 2012, under Reg. No. 4,206,278.
A. No Likelihood of Confusion Due to Widespread Use of the Term “RESONATE”
For each of the reasons discussed in Section I above, this refusal should be removed as there is no likelihood of confusion with the Applicant’s Mark.
1. Comparison of the Marks
Due to the widespread use of the term RESONATE, purchasers are likely to be conditioned to look to the other elements of the marks as a means of distinguishing the source of goods or services in the marketplace. In the present case, a comparison of cited pending application (now registration) and the Applicant’s Mark shows that each mark, in their entirety, is quite different. That is, RESONATE ME is different than RESONATE when all elements are considered such that where a member of the consuming public is considering purchasing a product or obtaining a service there is no likelihood of confusion with the Applicant’s Mark, RESONATE.
2. Comparison of the Services
Even where similar marks are used in connection with similar or overlapping goods or services, in circumstances where the mark, or part of the mark, had widespread use, the same analysis as discussed in paragraph 1 above applies. That is, the description of the goods or services, or both, are entitled to only a narrow scope of protection in instances where the consuming public is exposed to third-party use of such similar marks on similar goods or services.
Thus, in the instant case, the mark RESONATE ME, in Class 35, should be narrowly construed to apply only to mobile phone advertising services, namely, using SMS, MMS, GPS, WAP Push, instant messaging, and proprietary mobile phone applications to enable interactive advertising between consumers and advertisers via the mobile phone device. In addition, it is further noted that the description of the services offered by the owner of the RESONATE ME mark specifically excludes web-page based display advertising and marketing consulting services.
Therefore, for the reasons set forth in paragraphs 1 and 2 above, the Applicant respectfully requests the Examiner withdraw the refusal to register the Applicant’s Mark in Class 35 on the basis there is any likelihood of confusion resulting from a likelihood of confusion with the RESONATE ME mark.
B. Reservation of Additional Arguments
As previously stated, the Examiner has noted in this Office Action that there may be a likelihood of confusion between the Applicant’s Mark and the now registered mark RESONATE ME (Reg. No. 4,206,278). In the event the Examiner continues the refusal in light of the arguments made in Section II.A above, the Applicant hereby reserves argument regarding the issue of likelihood of confusion and any other argument that may be raised by the Examiner.
III. NEW SPECIMEN IN CLASS 42
Per Examiner’s request, Applicant hereby submits a substitute specimen for the services offered in Class 042. The substitute specimen (Exhibit F) submitted as part of this response consists of copies of the Applicant’s web pages, “About Us” and “Our Services” (http://www.resonategroup.com/about and http://www.resonategroup.com/services), showing the services related to building and maintaining websites; designing and implementing websites for customers; and providing an online network services (e.g., SEO optimization) that enables users to share data in the field of branding, marketing, and public relations. Thus, this substitute specimen does show that the mark RESONATE is in use in commerce in connection with the Applicant’s services in International Class 042. The substitute specimen was in use in commerce at least as early as the filing date of the application.
IV. CONCLUSION
Based on the foregoing Remarks, Applicant submits that all issues raised by the Examiner in the Office Action have been addressed and respectfully requests that the Application be approved for publication.
If you should have any further questions or need additional information about this application, please do not hesitate to contact the Correspondent Attorney at the address, telephone number, or e-mail address set forth in the Application. Your assistance in this matter is greatly appreciated. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_986922687-081358091_._Exhibits_-_RESONATE_-_85517122.pdf |
| CONVERTED PDF FILE(S) (75 pages) |
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| DESCRIPTION OF EVIDENCE FILE | Exhibits A through F, inclusive, as identified in the Remarks, |
| GOODS AND/OR SERVICES SECTION (035)(no change) | |
| GOODS AND/OR SERVICES SECTION (042)(current) | |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION | |
| Building and maintaining websites; Computer services, namely, designing and implementing web sites for others; Design and creating web sites for others; Providing an online network service that enables users to share data in the field of branding, marketing, and public relations for ministries; Web site development for others | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 01/13/2012 |
| FIRST USE IN COMMERCE DATE | At least as early as 01/13/2012 |
| GOODS AND/OR SERVICES SECTION (042)(proposed) | |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION | |
| Building and maintaining websites; Computer services, namely, designing and implementing web sites for others; Design and creating web sites for others; Providing an online network service that enables users to share data in the field of branding, marketing, and public relations for ministries; Web site development for others | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 01/13/2012 |
| FIRST USE IN COMMERCE DATE | At least as early as 01/13/2012 |
| STATEMENT TYPE | "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. |
| SPECIMEN FILE NAME(S) | |
| ORIGINAL PDF FILE | SPU1-986922687-084919466_._RESONATE_-_Sub_Spec_-_About___Serv.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
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| SPECIMEN DESCRIPTION | Substitute specimen consisting of two web pages (About Us and Services) from the Applicant's website showing use of the Applicant's Mark in connection with the service in Class 42 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | //Kerry Bural// |
| SIGNATORY'S NAME | Kerry Bural |
| SIGNATORY'S POSITION | President |
| SIGNATORY'S PHONE NUMBER | 615-579-7552 |
| DATE SIGNED | 10/25/2012 |
| RESPONSE SIGNATURE | //John P. McNeill// |
| SIGNATORY'S NAME | John P. McNeill |
| SIGNATORY'S POSITION | Attorney of Record/Mbr NC Bar |
| SIGNATORY'S PHONE NUMBER | 919-522-0068 |
| DATE SIGNED | 10/25/2012 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Oct 25 14:57:37 EDT 2012 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0121025145737494962-85517 122-49064201e5a6d8add6ff3 69521a2c1e54b-N/A-N/A-201 21025145348023800 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
To the Commissioner for Trademarks
Response to Office Action issued 4/27/2012
MARK: RESONATE
APPLICATION SERIAL NO.: 85/517,122
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
This is in response to the Office Action, issued April 27, 2012 (the “Office Action”), in re Trademark Application of The Resonate Group, Inc. (the “Applicant”) for the mark RESONATE, Serial No. 85/517,122 (the “Application”). Applicant submits that the following Remarks fully address the comments set forth in the Office Action and respectfully requests the approval of the Application for publication.
REMARKS
I. LIKELIHOOD OF CONFUSION WITH EXISTING REGISTRATIONS
(Applies to Class 35 only)
In this Office Action the Trademark Examining Attorney (the “Examiner”) states that registration of Applicant’s mark, RESONATE (the “Applicant’s Mark”), is refused under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the grounds that there is a likelihood of confusion between the Applicant’s Mark and the marks shown in following existing registrations:
· RESONATE MEDIA & ENTERTAINMENT & Design, Registration No. 2,994,563
o NOTE: This registration was cancelled by the USPTO on October 5, 2012, because the registrant did not file an acceptable declaration under Section 8 (see Exhibit A).
· RESONATE NETWORKS & Design, Registration No. 3,760,240
· RESONATE LIVE MARKETING, Registration No. 4,125,018
For the reasons set forth below, Applicant respectfully submits that the Applicant’s Mark is not likely to be confused with any of the above-cited registrations.
A. The “RESONATE” Element Has Widespread Use
The Applicant’s Mark and each of the above-cited registrations each share the common “RESONATE” element. Therefore, such marks are generally not strong marks and the widespread use is evidenced by a recent search of the trademark office’s database showing that there are a total of 44 LIVE marks in the Trademark Electronic Search System (TESS) database. Of those, there are currently 15 LIVE registrations (three are owned by the Applicant), with another five (5) previous registrations that are DEAD, and another 13 LIVE pending applications (four have been filed by the Applicant), with another 11 that are DEAD. This large population of users of a mark with the “RESONATE” element thus illustrates a field of marks that is quite crowded and where the use of the term “RESONATE” is widespread. Pursuant to T.M.E.P. § 1207.01(d)(iii), copies from the USPTO’s TSDR system of the 12 LIVE registrations and nine (9) pending applications are attached to this response as Exhibit B. Of these 21 LIVE registrations and pending applications, six (6) contain at least one service offering in Class 35. (Note: Applicant’s three (3) registrations and four (4) pending applications are not included as part of Exhibit B.)
Evidence of widespread third-party use in a particular field, obtained from sources such as registrations of marks containing a certain shared term, even a dominant term, are competent to suggest that purchasers have been conditioned to look to the other elements of the marks as a means of distinguishing the source of goods or services in the marketplace. See generally, In re Dayco Products-Eaglemotive Inc., 9 U.S.P.Q.2d 1910, 1911-1912 (TTAB 1988) (widespread use of the term “IMPERIAL”); Plus Prods. v. Star-Kist Foods, Inc., 220 U.S.P.Q. 541, 544 (TTAB 1983) (the widespread use of the term “plus” meant consumers were unlikely to rely on it in distinguishing products); see also T.M.E.P. §§ 710.03 and 1207.01(d)(iii). Such other elements that purchasers would include, but not be limited to, (i) other words, if any, that are part of the mark, including disclaimed portions; (ii) any stylized, design, or graphic portions of the mark; (iii) a closer review of the actual goods or services offered in connection with the mark; (iv) first-hand knowledge of the goods or services such purchaser is actually seeking to purchase; (v) potential first-hand knowledge of the actual source of the goods or services; or (vi) any retail marketing material (e.g., websites) used in connection with the third-party mark.
Evidence of third-party use falls under the sixth du Pont factor – the “number and nature of similar marks in use on similar goods [or services].” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). If the evidence establishes that the consuming public is exposed to widespread third-party use of similar marks on similar goods, it “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 U.S.P.Q.2d 1689, 1693 (Fed. Cir. 2005); General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 626-27 (8th Cir.1987); J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition § 11:88 (4th ed.2001)
As a consequence, even slight differences in the marks, or slight differences in the goods or services offered in connection with the marks, or differences in targeted purchasers, are enough to prevent a likelihood of confusion. The widespread use of the “RESONATE” element in numerous registered marks illustrates the narrow scope of protection that should be afforded to marks containing the “RESONATE” element and the U.S. Patent and Trademark Office’s (“PTO”) recognition of the public’s ability to distinguish among relatively close marks in this area, thus negating any likelihood of confusion.
1. Comparison of the Marks
Where marks, or marks with a common element, are so commonly used the public will typically look to other elements of the marks to distinguish the source of the goods or services. T.M.E.P. § 1207.01(d)(iii). In the present case, a comparison of three cited registrations and the Applicant’s Mark show that each mark, in its entirety, is quite different. That is, RESONATE MEDIA & ENTERTAINMENT with a sound wave design, RESONATE NETWORKS with a circle design, and RESONATE LIVE MARKETING are all very different in their entireties such that where a member of the consuming public is considering purchasing a product or obtaining a service there is no likelihood of confusion with the Applicant’s Mark, RESONATE.
As stated above and because marks in such crowded fields should be afforded much narrower protection than marks that consists of a more arbitrary designation, the Applicant respectfully asserts that there is no likelihood of confusion with any of the three cited registrations.
The lack of any likelihood of confusion is further supported by the fact that the Applicant is the owner of three registered marks (the “Applicant’s Registered Marks”) that also contain the “RESONATE” element (see Exhibit C). They are:
· THE RESONATE GROUP, Registration No. 4,011,183 (in Classes 35 and 42 and in use in commerce since at least as early as January 2008)
· THE RESONATE GROUP & Design, Registration No. 4,011,184 (in Classes 35 and 42 and in use in commerce since at least as early as January 2008)
· RESONATE OR DIE, Registration No. 3992288 (in Classes 35 and 42 and in use in commerce since at least as early as May 2010)
Except for a few instances where Applicant’s customers or potential customers we lead to the website for RESONATE LIVE MARKETING, to date there have been no instances of complaints of confusion related to any likelihood of confusion between any other of the respective mark owners (registered or pending) and the Applicant’s Registered Marks. Even in the instance of the confusion caused by RESONATE LIVE MARKETING, it is thought the confusion was more in the nature of initial interest confusion caused by the website address, www.resonatellc.com, used by the owner of the RESONATE LIVE MARKETING mark. This lack of any instances of actual confusion between the above-cited registrations and the Applicant’s Mark also satisfies the seventh du Pont factor – the “nature and extent of any actual confusion.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973).
For the reasons set forth in this paragraph 1, the Applicant respectfully requests the Examiner withdraw the refusal to register the Applicant’s Mark in Class 35 on the basis there is any likelihood of confusion resulting from a comparison of the marks.
2. Comparison of the Services
Even where similar marks are used in connection with similar or overlapping goods or services, in circumstances where the mark, or part of the mark, had widespread use, the same analysis as discussed in paragraph 1 above applies. That is, the description of the goods or services, or both, are entitled to only a narrow scope of protection in instances where the consuming public is exposed to third-party use of such similar marks on similar goods or services. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 U.S.P.Q.2d 1689, 1693 (Fed. Cir. 2005). This evidence relating to a comparison of the services falls under the second du Pont factor – the “similarity or dissimilarity and nature of the goods (and/or services) . . . described in an application or registration” and the sixth du Pont factor – the “number and nature of similar marks in use on similar goods [or services].” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). A more specific discussion related to each of the cited registrations follows:
a. RESONATE MEDIA & ENTERTAINMENT & Design (Reg. No. 2,994,563): As noted above, the registration for this mark has been cancelled by the USPTO and should be removed as a bar to the registration of Applicant’s Mark.
b. RESONATE NETWORKS & Design (Reg. No. 3,760,240): The mark should be narrowly construed to apply only to online advertising and media buying services relating to attitudinal targeting (that is, targeted marketing) through the analysis of online business research and surveys.
c. RESONATE LIVE MARKETING (Reg. No. 4,125,018): In response to a demand letter sent by the Applicant to the owner of this cited registration, the owner, through counsel, in a letter dated February 6, 2012, for many of the same reasons set forth above in paragraph1 and in this paragraph 2, denies there is any likelihood of confusion between its mark and the Applicant’s Mark. Further, a review of the website for Resonate Live Marketing, LLC (www.resonatellc.com) shows its services are focused on “event design and logistics.” A copy of website’s home page is attached as Exhibit D. Therefore, as discussed above in this paragraph 2 the scope of the services described in this cited registered should be narrowly construed to services only in the area of event design and logistics.
With respect to the Applicant’s Mark, the Applicant provides services primarily to churches, ministries, universities, and similar non-profit organizations. Copies of the Applicant’s webpages, “About Us” and “Clients” (http://www.resonategroup.com/about and http://www.resonategroup.com/clients), are included as Exhibit E. Therefore, with the same narrower construction required per the above discussion and the recognition that purchasers have been conditioned to look to the other elements of the marks as a means of distinguishing the source of goods or services in the marketplace where use of one of the elements of a mark is widespread, there is no likelihood of confusion between the services provided in connection with the Applicant’s Mark and any of the services offered in connection with any of the remaining above-cited registrations.
In addition, and as part of the third du Pont factor – the “similarity or dissimilarity of established, likely-to-continue trade channels,” each of the services offered in connection with the cited registrations and the Applicant’s Mark are all offered in different channels of trade to different customers.
For the reasons set forth in this paragraph 2, the Applicant respectfully requests the Examiner withdraw the refusal to register the Applicant’s Mark in Class 35 on the basis there is any likelihood of confusion resulting from a comparison of the services.
II. LIKELIHOOD OF CONFUSION WITH EARLIER FILED PENDING APPLICATION
(Applies to Class 35 only)
The Examiner also notes in this Office Action that there may be a likelihood of confusion between the Applicant’s Mark and the mark in pending application for RESONATE ME (Serial No. 77/766,919), if such pending application should mature to registration. It is noted that this application matured to registration on September 11, 2012, under Reg. No. 4,206,278.
A. No Likelihood of Confusion Due to Widespread Use of the Term “RESONATE”
For each of the reasons discussed in Section I above, this refusal should be removed as there is no likelihood of confusion with the Applicant’s Mark.
1. Comparison of the Marks
Due to the widespread use of the term RESONATE, purchasers are likely to be conditioned to look to the other elements of the marks as a means of distinguishing the source of goods or services in the marketplace. In the present case, a comparison of cited pending application (now registration) and the Applicant’s Mark shows that each mark, in their entirety, is quite different. That is, RESONATE ME is different than RESONATE when all elements are considered such that where a member of the consuming public is considering purchasing a product or obtaining a service there is no likelihood of confusion with the Applicant’s Mark, RESONATE.
2. Comparison of the Services
Even where similar marks are used in connection with similar or overlapping goods or services, in circumstances where the mark, or part of the mark, had widespread use, the same analysis as discussed in paragraph 1 above applies. That is, the description of the goods or services, or both, are entitled to only a narrow scope of protection in instances where the consuming public is exposed to third-party use of such similar marks on similar goods or services.
Thus, in the instant case, the mark RESONATE ME, in Class 35, should be narrowly construed to apply only to mobile phone advertising services, namely, using SMS, MMS, GPS, WAP Push, instant messaging, and proprietary mobile phone applications to enable interactive advertising between consumers and advertisers via the mobile phone device. In addition, it is further noted that the description of the services offered by the owner of the RESONATE ME mark specifically excludes web-page based display advertising and marketing consulting services.
Therefore, for the reasons set forth in paragraphs 1 and 2 above, the Applicant respectfully requests the Examiner withdraw the refusal to register the Applicant’s Mark in Class 35 on the basis there is any likelihood of confusion resulting from a likelihood of confusion with the RESONATE ME mark.
B. Reservation of Additional Arguments
As previously stated, the Examiner has noted in this Office Action that there may be a likelihood of confusion between the Applicant’s Mark and the now registered mark RESONATE ME (Reg. No. 4,206,278). In the event the Examiner continues the refusal in light of the arguments made in Section II.A above, the Applicant hereby reserves argument regarding the issue of likelihood of confusion and any other argument that may be raised by the Examiner.
III. NEW SPECIMEN IN CLASS 42
Per Examiner’s request, Applicant hereby submits a substitute specimen for the services offered in Class 042. The substitute specimen (Exhibit F) submitted as part of this response consists of copies of the Applicant’s web pages, “About Us” and “Our Services” (http://www.resonategroup.com/about and http://www.resonategroup.com/services), showing the services related to building and maintaining websites; designing and implementing websites for customers; and providing an online network services (e.g., SEO optimization) that enables users to share data in the field of branding, marketing, and public relations. Thus, this substitute specimen does show that the mark RESONATE is in use in commerce in connection with the Applicant’s services in International Class 042. The substitute specimen was in use in commerce at least as early as the filing date of the application.
IV. CONCLUSION
Based on the foregoing Remarks, Applicant submits that all issues raised by the Examiner in the Office Action have been addressed and respectfully requests that the Application be approved for publication.
If you should have any further questions or need additional information about this application, please do not hesitate to contact the Correspondent Attorney at the address, telephone number, or e-mail address set forth in the Application. Your assistance in this matter is greatly appreciated.
