Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85642625 MAGNET(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85642625) has been amended as follows:

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

The October 1, 2012 Office Action has been received and considered. 

As an initial matter, Applicant notes that it has amended the identification of goods covered by its MAGNET application, pursuant to the Examining Attorney's suggestions.  Specifically, the goods have been amended from "field data collection and management software, office data processing software, CAD software" in Class 9 to read:

Computer software for use in collecting and managing topographic, surveying, and stake field data in the surveying, mapping and construction industries; Computer software for use in real-time processing, collaborating, and exchanging surveying, mapping and construction data between those in a field setting and those who are remotely overseeing a project; CAD software for use in the surveying, mapping and construction industries; Computer software for accessing and transferring topographic data in real-time, and managing, editing and using the data to adjust and generate final coordinates for use in the surveying, mapping, and construction industries, which may be downloaded from a global computer network, in International Class 9; and

Providing a website featuring non-downloadable software for accessing and transferring topographic data in real-time, and managing, editing and using the data to adjust and generate final coordinates for use in the surveying, mapping, and construction industries in International Class 42.

In the Office Action, the Examining attorney requests that Applicant respond to a series of questions.  In compliance with this requirement, Applicant responds to each of the inquiries, based on information known to Applicant, as follows:

1.   the goods/services set forth in this application do not involve or relate to magnets.

2.   the goods/services set forth in this application do not involve or relate to a magnetic field.

3.   the term "magnet" has no known meaning when applied to the goods/services.

4.    the term "magnet" has no known meaning in applicant's trade or industry.

In addition to requesting answers to these questions, the Examining Attorney also requires Applicant to submit literature or other materials that provide information about its goods and services.  In response, Applicant submits the following: (a) a brochure featuring Applicant's MAGNET product; (b) a press release about Applicant's MAGNET software; and (c) a virtual tour of the product, which can be found at http://www.magnet-tour.com/.

Finally, the Examining Attorney notes the existence of a series of pending applications for the mark MAGNET, owned by Magnet Systems, Inc., covering goods and services in Classes 9 and 42 in the fields of "relationship management, information sharing, and project management, namely, business planning, business monitoring, business analysis, business management, business intelligence, client management, social network intelligence and for tracking, analyzing, and summarizing business productivity and financial and operational performance."  Based on the identification of goods, it appears that this software product is a tool covering general business and financial applications.  Although this software and Applicant's software each include a data sharing function, the overall purpose of each company's software is entirely different. 

Specifically, Magnet Systems' software shares general business information, while Applicant's software exchanges surveying, mapping and construction data between those performing projects in the field and those who are remotely overseeing the project.  In fact, the purposes are so different that it is clear that the respective products are not competitive, do not perform the same function and are marketed to different types of consumers.  Consequently, even if Magnet Systems' applications proceed to federal registration, Applicant's respective MAGNET mark is not likely to be confused with Magnet Systems' MAGNET marks.  For this reason, Applicant respectfully submits that there is no basis for delaying the publication of Applicant's MAGNET mark and asks that its MAGNET application be passed to publication.          

Conclusion

Applicant has responded to all the issues raised in the October 1, 2012 Office Action.  Accordingly, Applicant requests that the refusal be withdrawn and that this application proceed forward.

EVIDENCE
Evidence in the nature of (a) a Brochure featuring Applicant's MAGNET product; and (b) a press release about Applicant's MAGNET software has been attached.
Original PDF file:
evi_12411614-113409488_._MAGNET_brochure.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_12411614-113409488_._MAGNET__press_release.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Field data collection and management software, office data processing software, CAD software, and web software, all for use in the surveying, mapping and construction industries
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Field data collection and management software, office data processing software, CAD software, and web software, all for use in the surveying, mapping and construction industries; Computer software for use in collecting and managing topographic, surveying, and stake field data in the surveying, mapping and construction industries; Computer software for use in real-time processing, collaborating, and exchanging surveying, mapping and construction data between those in a field setting and those who are remotely overseeing a project; CAD software for use in the surveying, mapping and construction industries; Computer software for accessing and transferring topographic data in real-time, and managing, editing and using the data to adjust and generate final coordinates for use in the surveying, mapping, and construction industries, which may be downloaded from a global computer networkClass 009 for Computer software for use in collecting and managing topographic, surveying, and stake field data in the surveying, mapping and construction industries; Computer software for use in real-time processing, collaborating, and exchanging surveying, mapping and construction data between those in a field setting and those who are remotely overseeing a project; CAD software for use in the surveying, mapping and construction industries; Computer software for accessing and transferring topographic data in real-time, and managing, editing and using the data to adjust and generate final coordinates for use in the surveying, mapping, and construction industries, which may be downloaded from a global computer network
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for Providing a website featuring non-downloadable software for accessing and transferring topographic data in real-time, and managing, editing and using the data to adjust and generate final coordinates for use in the surveying, mapping, and construction industries
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

FEE(S)
Fee(s) in the amount of $325 is being submitted.

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Gabrielle S. Roth/      Date: 03/18/2013
Signatory's Name: Gabrielle S. Roth
Signatory's Position: Attorney for Applicant, DC Bar Member
Signatory's Phone Number: 202-663-7471


Response Signature
Signature: /Gabrielle S. Roth/     Date: 03/18/2013
Signatory's Name: Gabrielle S. Roth
Signatory's Position: Attorney for Applicant, DC Bar Member

Signatory's Phone Number: 202-663-7471

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.

        
RAM Sale Number: 85642625
RAM Accounting Date: 03/18/2013
        
Serial Number: 85642625
Internet Transmission Date: Mon Mar 18 11:59:42 EDT 2013
TEAS Stamp: USPTO/ROA-XX.X.XXX.XX-201303181159425114
02-85642625-5007144f246636356193053283ae
5d8f36ea12cd8ba476116a914d045fb39beacd7-
CC-37372-20130318113409488211