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. 85718606 VERITY(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85718606) has been amended as follows:

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

The Examiner has refused registration under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), citing the following trademark registrations as obstacles to registration of Applicant’s Mark in International Class 009:

·         Registration No. 1582400 (VERITY; International Class 009 - computer programs to enhance searching and retrieval of computer databases of third parties); and

·         Registration No. 2473704 (VERITY & Design; International Class 009 - computer programs for searching, classifying, navigating, viewing, retrieving and distributing information in computer databases and information over computer networks).

 

Both cited registrations are owned by the same company, Verity, Inc. (hereinafter “Registrant”).  The Examiner concluded that Applicant’s Mark, when used in connection with the identified goods and services, is likely to cause confusion among consumers between Applicant and Registrant.  In light of the evidence and arguments infra, Applicant requests that the Examiner withdraw the refusal to register and approve this mark for publication.

Amendments

            The Examiner argues that the identification of services in Class 042 must be clarified.  In response, Applicant elects to amend the identification of goods and services as follows:

·         Electronic voting systems, namely, computer software and hardware configured for entering data, recording, searching, displaying, managing, printing, and reporting public records and documents related to election administration, and for recording, tallying, and reporting votes and election data; electronic election administration software, namely computer software and computer search engine software, both for the storage, search and retrieval of government records and the sharing of data and information in International Class 009;

·         Electronic election administration services, namely, entering, recording and managing voter data and searching and retrieving information in the nature of public records, documents and data all related to election administration; Public document retrieval services in International Class 042.

 

Applicant’s International Class 040 identification remains the same.

There is no likelihood of confusion between Applicant’s mark and the cited registrations.

1.      Factual Background.

The goods and services in this application are as follows:

·         Electronic voting systems, namely, computer software and hardware configured for entering data, recording, searching, displaying, managing, printing, and reporting public records and documents related to election administration, and for recording, tallying, and reporting votes and election data; electronic election administration software, namely computer software and computer search engine software, both for the storage, search and retrieval of government records and the sharing of data and information in International Class 009;

·         Printing Services in International Class 040; and

·         Electronic election administration services, namely, entering, recording and managing voter data and searching and retrieving information in the nature of public records, documents and data all related to election administration; Public document retrieval services in International Class 042.

 

Emphasis added.  The most important element for the Examiner to note is the repeated incorporation of the terms “voting/votes” and “election” in Classes 009 and 042.  Applicant’s general background provides context for why this information is important.  Applicant has been providing election management and voting systems for over 100 years.  See Exhibit A, print-outs from Applicant’s website.  Applicant “helps state and local governments conduct secure, accurate, and reliable elections.”  Id.  Applicant’s customers include public, government entities such as municipalities, like counties.  See Exhibit B, Applicant’s brochure.  As only government entities run elections, Applicant’s customer base is necessarily limited.  Further, because there are only a few companies that provide these services and because elections are a specialized field within government entities, Applicant’s consumers are highly sophisticated.  The goods and services offered under the applied-for trademark are directed at the same customers and travel through the same channels of trade as Applicant’s previous goods and services.  Thus, the inclusion of these terms in the identification of goods and services reflects the reality that Applicant’s goods and services are limited and that channels of trade in which actual consumers would encounter Applicant’s goods and services are quite narrow.

Registrant’s identification of goods for both registrations makes no reference to voting or elections.  Extrinsic evidence supports the conclusion that Registrant’s goods are distinctly different from the goods and services offered under Applicant’s mark.  Registrant is not one of Applicant’s competitors.  Registrant is, in its own words, a “hybrid consultancy that provides technology and support services to law firms and corporations… [that] specialize[s] in blending Information Technology with best practices in e-Discovery, paper discovery, knowledge management and document review.”  See Exhibit C, print-outs from Registrant’s website.   

2.      Legal Standard.

In determining a likelihood of confusion, the Examiner must consider the following factors, when relevant:

1.                  Similarity of the marks;

2.                  Similarity of the Goods/Services;

3.                  Similarity of the Channels of Trade;

4.                  Fame of the registered mark;

5.                  Conditions of Purchase;

6.                  Third Party Usage of similar marks for similar goods;

7.                  Instances of Actual Confusion;

8.                  Concurrent use of marks without Actual Confusion;

9.                  Range of goods on which Registrant uses mark;

10.              Market Interface between Applicant and Registrant;

11.              Applicant's right to exclude other from use of the mark;

12.              Extent of potential confusion; and,

13.              Any other established probative fact.

In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  The determination of likelihood of confusion turns primarily on the similarity of the marks in question and the degree to which the identified goods are related.  In re E.I. Dupont de Nemours & Co., 177 USPQ 563 (CCPA 1973); In re August Storck KG, 218 USPQ 823 (TTAB 1983); Federated Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24 (CCPA 1976).  Confusion as to source is unlikely unless the goods or services of the applicant and the registrant are so related that the circumstances surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that would give rise to the mistaken belief that they originate from the same source. See, e.g., On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000). 

3.      The Goods are Sufficiently Different to Avoid any Likelihood of Confusion.

            The Office Action argues that “[b]oth applicant’s and registrant’s software performs the same functions and therefore, would be encountered by the same consumers.” See Office Action at 3.  Applicant respectfully disagrees.    

            The nature and scope of a party’s goods or services must be determined on the basis of the goods or services recited in the application or registration. See, e.g., Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1208 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973). The facts in each case vary and the weight to be given each factor may be different in light of the varying circumstances; therefore, there can be no rule that certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto. See, e.g., In re White Rock Distilleries Inc., 92 USPQ2d 1282 (TTAB 2009) (regarding alcoholic beverages); Information Resources Inc. v. X*Press Information Services, 6 USPQ2d 1034, 1038 (TTAB 1988) (regarding computer hardware and software); Hi-Country Foods Corp. v. Hi Country Beef Jerky, 4 USPQ2d 1169, 1171 (TTAB 1987) (regarding food products); In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) (regarding computer hardware and software); In re British Bulldog, Ltd., 224 USPQ 854, 855-56 (TTAB 1984), and cases cited therein (regarding clothing). See also M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 1383, 78 USPQ2d 1944, 1947-1948 (Fed. Cir. 2006) (relatedness between software-related goods may not be presumed on the mere basis that the goods are delivered in the same media format; rather, a subject-matter-based mode of analysis of the relatedness of the fields of use is the appropriate analysis).

      Here, Applicant’s goods and services are expressly or inherently limited in International Classes 009 and 042 to election administration and voting systems.  Cf. Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 942 (Fed. Cir. 1990) (where applicant’s application failed to reflect factors either expressly or inherently and therefore the 2(d) refusal was upheld).  Because the current application expressly or inherently reflects substantial limitations, these limitations should be considered in the DuPont analysis.  Id.   

It is well settled that the Examiner must provide evidence showing that the goods and services are related to support a finding of likelihood of confusion. See, e.g., In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (finding Office had failed to establish that wine and vodka infused with caffeine are related goods because there was no evidence that vodka and wine emanate from a single source under a single mark or that such goods are complementary products that would be bought and used together).  As shown supra, there is no support that the parties’ software products perform similar functions. Thus, the Examiner fails to show Applicant’s goods and services are sufficiently related to the goods in the cited registrations such that confusion is likely. 

4.      The Channels of Trade and Sophisticated Purchasers Avoid any Likelihood of Confusion. 

 

The Office Action further argues – apparently based on the misunderstanding that registrant’s and applicant’s software performs the same function – that “[c]onsumers would mistakenly presume the software marketed under VERITY originate from a common source.” See Office Action at 3.  This is unsubstantiated.  Moreover, the channels of trade for Applicant’s goods and services and the goods in the cited registrations are so different, there is no likelihood of confusion.  Applicant’s goods and services are clearly directed at and limited to the governing entities that administer elections, hence the use of the terms “election administration” and references to “voting” systems.  Thus, Applicant’s goods and services flow solely in those channels of trade and to those types of purchasers.  

Different tribunals have established that even where marks are used on goods or services in the same category, the finding that marks are similar does not automatically result in a conclusion that a likelihood of confusion exists. Electronic Design & Sales Inc. v. Electronic Data Systems, 21 USPQ2d 1388 (Fed. Cir. 1992 (holding no likelihood of confusion between EDS for power supplies and battery charges versus EDS for computer services; In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (finding no likelihood of confusion between PLAYERS for shoes and PLAYERS for underwear); In re Reach Electronics, Inc., 175 USPQ 734 (TTAB 1972) (finding no likelihood of confusion between REAC for measuring, testing and computing equipment and REACH for communication equipment).

Moreover, numerous cases have found no likelihood of confusion between even identical marks for goods and services used in a common industry – where the goods and services are different from each other and the record does not provide a sufficient evidentiary basis for inferring they would be encountered by the same consumers under circumstances leading to confusion as to source.  See Hi Country Foods Corp v. Hi Country Beef Jerky, 4 USPQ2d 1169 (TTAB 1987) (no confusion likely between HI-COUNTRY for fruit juice and HI-COUNTRY for meat snacks); Borg-Warner Chemicals, Inc. v. Helena Chemical Co., 225 USPQ 222 (TTAB 1983) (finding BLENDEX for stabilizing chemical composition of fertilizes/pesticides not likely to cause confusion with BLENDEX for synthetic resins used in industrial arts); In re Fesco, 219 USPQ 437 (TTAB 1983) (finding no likelihood of confusion between FESCO for farm machinery distributorships and FESCO for fertilizer processing machinery and equipment); Chase Brass & Copper Co., Inc. v. Special Springs, Inc., 199 USPQ 243 (TTAB 1978).

Here, the respective goods and services of Applicant and Registrant are markedly different and the record does not support an evidentiary basis for inferring the same consumers would encounter both marks in a manner that would lead to confusion of source.  Consumers of election administration and voting systems are unlikely to encounter Registrant’s goods in a manner that would lead to confusion because of the manner in which elections are run in this country.        

Conclusion

As the identifications of goods and services are clearly different and the channels of trade are distinct, there is no potential overlap in the marketplace between Applicant’s goods and services and Registrant’s goods and therefore there is no likelihood of confusion between the Applicant’s mark and the registered marks.  It is respectfully submitted that the foregoing Remarks respond to the issues raised in the Office Action. It is accordingly requested that the rejection under Section 2(d) of the Trademark Act should be withdrawn and the present application be approved for publication.

EVIDENCE
Evidence in the nature of Exhibit A, pages from Applicant's website; Exhibit B, Applicant's brochure, Exhibit C, pages from Registrant's website has been attached.
Original PDF file:
evi_173226149131-182723021_._Ex_A_ROA.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_173226149131-182723021_._Ex_B_HVSBrochure2013.pdf
Converted PDF file(s) ( 12 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Original PDF file:
evi_173226149131-182723021_._Ex_C_ROA.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Electronic voting systems, namely, computer software and hardware configured for entering data, recording, searching, displaying, managing, printing, and reporting public records and documents related to election administration, and for recording, tallying, and reporting votes and election data
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: Electronic voting systems, namely, computer software and hardware configured for entering data, recording, searching, displaying, managing, printing, and reporting public records and documents related to election administration, and for recording, tallying, and reporting votes and election data; electronic election administration software, namely computer software and computer search engine software, both for the storage, search and retrieval of government records and the sharing of data and informationClass 009 for Electronic voting systems, namely, computer software and hardware configured for entering data, recording, searching, displaying, managing, printing, and reporting public records and documents related to election administration, and for recording, tallying, and reporting votes and election data; electronic election administration software, namely computer software and computer search engine software, both for the storage, search and retrieval of government records and the sharing of data and information
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 proposes to amend the following class of goods/services in the application:
Current: Class 042 for Electronic election administration services, namely, entering data, recording, searching, displaying, managing, printing, and reporting public records, documents, and data related to election administration; Computerized government records storage, search and retrieval systems, comprised of computer software for the collection, editing, organizing, modifying, book marking, transmission storage and sharing of data and information, and computer search engine software; Public document retrieval services
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: Electronic election administration services, namely, entering data, recording, searching, displaying, managing, printing, and reporting public records, documents, and data related to election administration; Electronic election administration services, namely, entering, recording and managing voter data and searching and retrieving information in the nature of public records, documents and data all related to election administration; Computerized government records storage, search and retrieval systems, comprised of computer software for the collection, editing, organizing, modifying, book marking, transmission storage and sharing of data and information, and computer search engine software; Public document retrieval servicesClass 042 for Electronic election administration services, namely, entering, recording and managing voter data and searching and retrieving information in the nature of public records, documents and data all related to election administration; Public document retrieval services
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.

SIGNATURE(S)
Response Signature
Signature: /AKG/     Date: 06/26/2013
Signatory's Name: Amanda K. Greenspon
Signatory's Position: Attorney of record, CT bar member

Signatory's Phone Number: 972-628-3600

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: 85718606
Internet Transmission Date: Wed Jun 26 18:34:45 EDT 2013
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20130626183445
466699-85718606-50048b0f901478e890d5fe53
aa0cf629f46ebda204f7b063d65275c52f3f2-N/
A-N/A-20130626182723021784