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. 85699246 INSIGNIA(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85699246) has been amended as follows:

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

Section 2(d) Refusal – Application Serial Number 85699246

In refusing the registration of Insignia Federal Group, LLC’s (the “Applicant”) mark, the Examining Attorney cited Registration Numbers 3262745 (INSIGNIAM) and 3262746 (INSIGNIAM PERFORMANCE), held by Insigniam Performance (the “Registrant”) for “[b]usiness organization and management consulting services; business consulting services relating to operations, strategy, marketing, sales, manufacturing, research and development, client relations, human resources, new product development, and executive, leadership and management development; and education and training services, namely, conducting classes, seminars, conferences, workshops and one-on-one mentoring and coaching in the fields of business organization, management, operations, strategy, marketing, sales, manufacturing, research and development, client relations, human resources, new product development, and leadership; distributing course materials therewith” (the “Cited Registered Marks”) based on a likelihood of confusion with the mark in the instant application.  The Examining Attorney states that with respect to the likelihood of confusion, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.

Similarity of the Marks 

The Applicant respectfully submits that the marks in the Cited Registered Marks and Applicant’s mark are dissimilar in overall appearance and sound, and further, that the marks have different commercial impressions. The DuPont case cited in the Office Action establishes that the comparison of two marks must be based on the marks in their entirety: their appearance, sound, connotation, and commercial impression must all be taken into account. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1360-51 (C.C.P.A. 1973). When all of these factors are considered, Applicant respectfully submits that there is no likelihood of confusion between Applicant’s mark and the Cited Registered Mark.

The Courts and the Trademark Trial and Appeal Board (“TTAB”) have found no confusion in similar circumstances where marks merely share one or more words in common. See Safeway Stores, Inc. v. Bel Canto Fancy Foods Ltd., 5 USPQ2d 1980, 1982 (TTAB 1987) (holding that in terms of pronunciation, BEL AIR and BEL ARIA “are only slightly similar” and, therefore, there is no likelihood of confusion between the marks); A&H Sportswear Inc. v. Victoria’s Secret Stores, Inc., 49 USPQ2d 1493 (3d Cir.. 1999) (upholding a lower court decision that MIRACLE BRA for lingerie is not confusingly similar to MIRACLESUIT for swimwear). In addition, General Mills, Inc. v. Kellogg Company, 824 F.2d 622, 627 (8^th Cir. 1987), established that OATMEAL RAISIN CRISP for breakfast cereal is not confusingly similar to APPLE RAISIN CRISP for breakfast cereal and recognized that “[t]he use of identical, even dominant, words in common does not automatically mean the two marks are similar.” 

Here, there is no identical wording in the respective marks. The Cited Registered Marks both contain the word INSIGNIAM, while Applicant’s mark contains the word INSIGNIA. The word INSIGNIAM is not a term found in the English dictionary, while the word INSIGNIA is defined by Webster’s dictionary as a badge of authority or honor or a distinguishing mark or sign. The addition of the “M” after the word “Insignia” in the Cited Registered Marks alters the term from an actual English word to a term created solely for marketing purposes.

In addition, while it is true that the term “INSIGNIAM” in the Cited Registered Marks is phonetically similar to the Applicant’s mark “INSIGNIA”, the sound of the Cited Registered Marks as a whole, when pronounced, is quite dissimilar from that of the Applicant’s mark. This is an important consideration, as the marks are not phonetic equivalents and the likelihood of confusion is therefore minimal. See In re Beauty FX, Inc., 2003 TTAB LEXIS 279 (TTAB 2003) (“When marks are only similar in sound, we proceed a little more cautiously before determining that there is a likelihood of confusion… The simple fact that the letters may be pronounced similarly is a slender reed on which to base a likelihood of confusion determination. Inasmuch as there are admitted dissimilarities in appearance and meaning between the marks and the phonetic similarity is not unequivocal, we find that, when the marks are considered in their entireties, their differences outweigh their similarities.”).

The case of General Electric Co. v.  Janaer Glaswerk Schott & Gen., 52 C.C.P.A. 954, 956 (C.C.P.A. 1965) reiterates that it is the perception of the consumer that is important, not solely the auditory impression when determining the likelihood of confusion, holding that “[c]onfusing ‘similarity’ cannot be predicated on auditory response alone; one must consider the impression on the mind where the stimuli of the auditory nerve are registered. We think the mind, even in its thoughtless initial reaction to the marks here involved, would readily distinguish the marks so as not to be confused by their concurrent use.”  The fact that the Applicant’s mark INSIGNIA represents an actual word in the English language, while the term INSIGNIAM does not, indicates that consumers will naturally distinguish between a known term and a term created for marketing purposes. This, coupled with the fact that the terms are not phonetic equivalents, lessens the likelihood of confusion between the mark of INSIGNIA held by the Applicant and the Cited Registered Marks of INSIGNIAM and INSIGNIAM PERFORMANCE held by the Registrant.

Similarity and Nature of the Services

Based on the standard test set forth in DuPont, determining whether confusion is likely also involves consideration of the similarity or dissimilarity and nature of the services. DuPont, 476 F.2d 1357 at 1361. The differences between the respective services provided by the Registrant and the Applicant are readily apparent.

The Examining Attorney’s refusal is based on the assertion that the services are generally related. However, even if there were such a general relation, it would not be sufficient to support a refusal. See Paco Sport Ltd. v. Paco Rabanne Parfums (DC SNY) 54 USPQ2d 1205 (2/18/2000) ("the analysis of proximity should focus on the specific attributes of the products in question rather than on broad product categories"). The Examining Attorney is basing the refusal on the perception that both parties provide management consulting services and have no restrictions as to nature, type, channels of trade, or classes of purchases. This is a broad categorization of management consulting services that does not consider the specific attributes of the services, which are markedly different.  

According to its website (www.insigniam.com), the Registrant is “an international management consulting firm that equips leaders to implement enterprise transformation and Breakthrough Results... Insigniam partners with executives to help organizations operate dynamically, with leaders at every level engaged, performing, and innovating.” This is indicative of a form of management consulting focused on assisting executives in developing operational strategies for running their respective businesses. In contrast, the services provided by the Applicant center primarily on a form of management consulting focused on strategic planning and program management, contracts and acquisition support, training, and professional IT services, with little to no focus on operational strategies.

Similarity of Trade Channels of the Services

DuPont states that in determining whether confusion is likely, one should also consider the similarity or dissimilarity of established, likely-to-continue trade channels of services. DuPont, 476 F.2d 1357 at 1361. The differences between the trade channels utilized by the Registrant and the Applicant are very distinct. According to the Registrant’s website (www.insigniam.com), “Insigniam consultants and offices are located throughout the world to catalyze organizations and enterprises. The people of Insigniam Performance are citizens of the world and residents of many different countries… We live in the United States, Hong Kong, Switzerland, England, France, Taiwan, Canada, and Thailand.” The website also shows that the Registrant has offices in Los Angeles, Hong Kong, Paris and Philadelphia. By contrast, the Applicant has one small office in McLean, Virginia and its clients are limited to those in the Washington, DC metropolitan area. The wide expanse of the Registrant’s clients and the applicable trade channels thereto are in marked contrast to the trade channels contained in the small local area occupied by the Applicant’s clients.

In addition, the Registrant’s website contains a “Client Results Database,” that contains reviews from many large commercial clients, including but not limited to Office Depot, Inc., Hercules, Inc., Dow Jones & Company, a Fortune 100 Healthcare Company and a Fortune 100 Pharmaceutical Company.  This indicates a primary focus on the commercial sector in the provision of services. In marked contrast, the Applicant focuses primarily on the provision of services to the government clients in the public sector, particularly federal government entities.  In fact, the term “Federal Group” contained in the Applicant’s full company name, Insignia Federal Group, LLC, demonstrates that the applicant’s services are directed to the public sector. Because the Registrant operates on a global scale and markets its services the commercial sector while the Applicant operates on a local scale and markets its services to the public sector, there is no likelihood of confusion based on similarity of trade channels of services. 

Conditions Under Which Sales are Made

It is also worth noting that DuPont states that the conditions under which and buyers to whom sales are made (i.e. impulse vs. careful, sophisticated purchasing) should be considered in evaluating the likelihood of confusion. DuPont, 476 F.2d 1357 at 1361. From the Registrant’s website, it is apparent that a majority of Registrant’s clients are large corporations with a discerning business sense that would be unlikely to confuse the Registrant with another corporate entity. Similarly, a majority of the Applicant’s clients are federal government entities that require copious amounts of corporate information prior to retaining any client, including corporate records and registration information. For this reason, the Applicant’s clients are unlikely to confuse the Applicant with the Registrant.

Conclusion 

For the reasons set forth above, the Applicant asserts that registration of its mark will not generate a likelihood of consumer confusion with the Cited Registered Marks held by the Registrant and respectfully requests that the Examining Attorney withdraw the refusal.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Management consulting, training and professional consulting services
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 07/28/2010 and first used in commerce at least as early as 07/28/2010 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Management consulting, training and professional consulting services; Business management consulting; management and business consulting services in the field of training and recruitment; professional business consulting.Class 035 for Business management consulting; management and business consulting services in the field of training and recruitment; professional business consulting.
Filing Basis: Section 1(a), Use in Commerce:The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 07/28/2010 and first used in commerce at least as early as 07/28/2010 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 035 . The specimen(s) submitted consists of Attached please find the following uses of the mark "Insignia" in actual use in commerce: (1) a lanyard; (2) notepads and a pen; (3) letterhead used by the Applicant; (4) a business card from an employee of Applicant; (5) a screenshot of the Applicant's website (http://www.insigniafederal.com/); and (6) a sign in the Applicant's office. .
"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].
JPG file(s):
Specimen File1
Specimen File2
Specimen File3
Original PDF file:
SPU0-701644235-154631179_._Insignia_Letterhead_-_New_Address.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU0-701644235-154631179_._Business_Card_Color.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU0-701644235-154631179_._Insignia_Homepage.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

Applicant hereby adds the following class of goods/services to the application:
New: Class 041 for Training services in the fields of career transition services, executive training and coaching, leadership development, privacy and civil liberties.
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 07/28/2010 and first used in commerce at least as early as 07/28/2010 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 041 . The specimen(s) submitted consists of Attached please find the following uses of the mark "Insignia" in actual use in commerce: (1) a lanyard; (2) notepads and a pen; (3) a business card from an employee of Applicant; (4) a sign in the Applicant's office; (5) a screenshot of the Applicant's website (http://www.insigniafederal.com/); and (6) letterhead used by the Applicant . .
"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].
JPG file(s):
Specimen File1
Specimen File2
Specimen File3
Original PDF file:
SPN0-701644235-154631179_._Business_Card_Color.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPN0-701644235-154631179_._Insignia_Homepage.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPN0-701644235-154631179_._Insignia_Letterhead_-_New_Address.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

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: /Patricia Fenton Kevit/      Date: 05/07/2013
Signatory's Name: Patricia Fenton Kevit
Signatory's Position: Attorney of record, VA bar member
Signatory's Phone Number: 2406023049


Response Signature
Signature: /Patricia Fenton Kevit/     Date: 05/07/2013
Signatory's Name: Patricia Fenton Kevit
Signatory's Position: Attorney of record, VA bar member

Signatory's Phone Number: 2406023049

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: 85699246
RAM Accounting Date: 05/08/2013
        
Serial Number: 85699246
Internet Transmission Date: Tue May 07 16:58:21 EDT 2013
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20130507165821163
902-85699246-50043d06661eeba3eeb5eade45c
c583be87cffdfc8b28ec82747dbfad346ddbfd-C
C-3843-20130507154631179178