To the Commissioner for Trademarks:

Section 2(d)

In the Office Action on U.S. Application Serial No. 85/308,397, dated July 27, 2012, the Examining Attorney issued a final refusal to register Applicant’s mark in Class 9, based on a likelihood of confusion with Digimation Incorporated’s registration of AUDIENCE for “computer software for the creation, management, distribution and display of multi-zone, multimedia content targeted for television, point of sale and point of purchase displays; and computer software for the creation and display of interactive Internet web pages” (Reg. No. 3,018,910).  The Examining Attorney asserted that the parties’ respective goods are related because the Registrant’s software encompasses Applicant’s “downloadable software in the nature of a mobile application for viewing television programming on a mobile communication device.”

Applicant has now divided Application Serial No. 85/308,397, retaining Class 9 software in the parent application, and transferring the balance of the goods and services to the child application.  Because the child application no longer covers software, Applicant respectfully requests that the child application be approved for publication.

With respect to the Class 9 software in the parent application, Applicant respectfully disagrees with the basis for the final refusal under Section 2(d), and is therefore submitting this Request for Reconsideration, together with new arguments and evidence.

As noted in response to the first Office Action on Serial No. 85/308,397, Applicant DIRECTV, LLC provides a subscription-based satellite television service to more than thirty million customers.  Applicant uses the mark AUDIENCE as the name of a television channel that is available through its satellite service.  The channel features a wide variety of programs, including original television series, musical concerts, and sports specials.  Like the names of other television channels, such as HBO and ESPN, Applicant’s mark AUDIENCE serves as a brand for the channel itself, as well as ancillary products and services for viewers. 

Applicant’s software is defined narrowly as a “mobile application for viewing television programming on a mobile communication device”—i.e., a mobile phone app or similar software that allows viewers to watch television programming from Applicant’s AUDIENCE channel on a mobile device.  In this Request for Reconsideration, Applicant is amending its identification to specify that the software is “provided to satellite television subscribers.”  Thus, the mark is used with Applicant’s subscribers, who are already familiar with Applicant’s AUDIENCE television channel.  They will have no reason to assume a connection with another party when they encounter Applicant’s AUDIENCE software application, which will allow subscribers to view Applicant’s television programming on a mobile device.  The fact that Applicant’s software mark features the letter “A” in a distinctive font will leave no doubt that the software comes from the same source as Applicant’s satellite television channel, which carries the same branding. 

Contrary to the Examining Attorney’s suggestion, Applicant’s software is not “identical in purpose” to Digimation’s software.  The purpose of Applicant’s software is to allow satellite television subscribers to watch Applicant’s AUDIENCE channel on a mobile device, such as a smartphone or tablet computer.  By contrast, the purpose of Digimation’s software is to allow media companies to create and disseminate “multi-zone, multimedia content” and “interactive web pages.”  As confirmed by Digimation’s specimen of use (which shows the mark AUDIENCE together with the tagline “Because your Audience is important”), Digimation’s software is intended for providers of media content, not consumers.  Moreover, the reference to “point of sale and point of purchase displays” in Digimation’s identification indicates that the content consists of advertising.  In broader terms, Applicant’s software is used for entertainment, while Digimation’s software serves a business function.  Because the purposes of the products are entirely different, they have different sets of users, and there is no potential for confusion.  

The Examining Attorney writes that “The Registrant’s software is not limited to creation of software and the purchasers thereof.”  Applicant has never contended that Digimation’s software is limited in this manner.  However, Digimation’s identification describes software for providing media content to others, and does not encompass software that satellite television subscribers would use to receive television programming.

The Examining Attorney also asserts that “neither the application nor the registration contains any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores.  Thus, it can also be assumed that the same classes of purchasers for shop for these items….”  The inclusion of this statement in the Office Action was presumably inadvertent, as it is obvious that neither party’s software would normally be sold in “clothing and department stores.”  In any event, given the very specific functionality of each party’s software as described above, the “same classes of purchasers” would not encounter both products.

Even if one of Applicant’s subscribers happens to be aware of Digimation’s software, that individual would be a media industry professional, who would be well aware of the different functions and sources of the software.

In light of the foregoing, Applicant respectfully requests that the refusal to register be withdrawn.

Disclaimer

In the Office Action dated July 27, 2012, the Examining Attorney required a disclaimer of the term NETWORK.  However, the mark shown in this application does not include the word NETWORK, so a disclaimer is unnecessary.