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. 86348895 ZENDO(Standard Characters, see http://uspto.report/TM/86348895/mark.png) has been amended as follows:

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

This is in the response to the Office Action dated November 7, 2014. The Examining Attorney has refused registration on the grounds that applicant’s mark ZENDO is confusingly similar with the mark in Registration No. 3810952 for the mark ZONDA (stylized). Applicant respectfully submits that the cited mark is not sufficiently similar to applicant’s mark to create a likelihood of confusion.

As an initial matter, the marks themselves differ significantly. The “o” in the middle and “a” at the end of the registered mark make the mark very different in appearance and pronunciation from applicant’s mark with an “e” in the middle and an “o” at the end of the mark. See, Cantine Leonardo Da Vinci S.c.r.l. v. Helwig Tasting Room, LLC, Opposition No. 91192075 (TTAB Aug. 11, 2010) (non-precedential) (DA VINCI and DAVANCY not confusingly similar for wine). Applicant’s mark also makes a significantly different commercial impression than registrant’s, the term “ZEN” at the beginning of the mark having come to be associated with a feeling of being at peace. See attached definition.

Further, it is instructive that the Office has allowed for registration a relatively large number of marks that begin with the “Z*ND” prefix (with “*” indicating a single vowel) and vary only with respect to the few following letters - all for use with the same or related goods in Class 9 (computer software in particular). For instance, all of the following marks are allowed or registered:

 

MARK	REG/APP NO.	MOST RELEVANT GOODS	STATUS
ZONDA and   ZONDA & Design	4445109   4452621	Communication software for providing access to the Internet; computer application software for mobile phones, namely, software for data storage in the area of demographics, geographics, real estate information, analysis and advice;  . . . computer software for the collection, editing, organization, modifying, book marking, transmission, storage and sharing of data and information . . .	Registered
ZONDEX	4224855	Computer programs for using the internet and the world wide web	Registered
ZINDUS	3598769	Downloadable computer software for digital communication, contact management, digital identity management, data synchronization, searching and organizing information on computer networks or personal computers; computer software for digital communication, contact management, and digital identity management; computer software for data synchronization; computer software for searching and organizing information on computer networks or personal computers	Registered
ZENDESK	3818497	Recorded and downloadable computer software, namely, computer software for business information and communications management, business database management, customer service management and management of customer relations all of the foregoing directed to the fields of customer support, customer relationship management, customer service, customer engagement . . .	Registered
ZENDIT	4121834	Computer software for encryption; computer software for use in the encryption and decryption of digital files, including audio, video, text, binary, still images, graphics and multimedia files	Registered
ZUNDR	85717462	Computer programs for searching remotely for content on computers and computer networks; computer software for communicating with users of hand-held computers; computer software for creating searchable databases of information and data; computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; computer software for wireless content delivery . . .	Allowed
ZENDER & Design	86437437	Downloadable software in the nature of a mobile application to enable secure text-message viewing through facial recognition and biometrics	Allowed
ZANDURA	4235709	Computer programs and software for administration of databases for business and private networks as well as for initiation and procurement of business and social contacts; computer programs for searching, retrieving, management, sorting, selecting and/or storing information available via the internet or other computer networks and systems	Registered

 

TESS records for these marks are attached for the Examining Attorney’s reference.

Applicant respectfully submits that its mark ZENDO is no more similar to the mark ZONDA & Design than the cited marks are to one another. As this list of marks demonstrates, the Office does not consider marks to be confusingly similar simply because they share the letter “Z” as the first letter and contain the letters “ND” in the middle of the mark – so long as the remaining vowels or other components of the mark are distinguishable. These differences serve to distinguish the marks sufficiently to avoid a likelihood of confusion.

For these reasons, applicant respectfully requests that the Examining Attorney withdraw his objection under Section 2(d).

EVIDENCE
Evidence in the nature of Dictionary definition and third-party registrations has been attached.
Original PDF file:
evi_7010226226-20150507190002807991_._ZEN_Def.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_7010226226-20150507190002807991_._ZENDO_EVIDENCE.pdf
Converted PDF file(s) ( 19 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
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Protective cases for smartphones and tablets; protective covers for smartphones and tablets; carrying cases for smartphones and tablets; straps for smartphones and tablets; stands for smartphones and tablets; electric charging cables for smartphones and tablets; battery chargers for smartphones and tablets; protective films for LDC displays; earphones, headphones and speakers for smartphones and tablets
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: Protective cases for smartphones and tablets; protective covers for smartphones and tablets; carrying cases for smartphones and tablets; straps for smartphones and tablets; stands for smartphones and tablets; electric charging cables for smartphones and tablets; battery chargers for smartphones and tablets; protective films for LDC displays; protective screen films for LCD displays; earphones, headphones and speakers for smartphones and tabletsClass 009 for Protective cases for smartphones and tablets; protective covers for smartphones and tablets; carrying cases for smartphones and tablets; straps for smartphones and tablets; stands for smartphones and tablets; electric charging cables for smartphones and tablets; battery chargers for smartphones and tablets; protective screen films for LCD displays; earphones, headphones and speakers for smartphones and tablets
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: /bjg/     Date: 05/07/2015
Signatory's Name: Barbara Grahn
Signatory's Position: Attorney of record, Minnesota bar member

Signatory's Phone Number: 612-607-7325

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: 86348895
Internet Transmission Date: Thu May 07 19:05:27 EDT 2015
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2015050719052769
0362-86348895-530832480d31a8930e68075728
371b6ec882d2288c746a8516b12c919d2b3e8da3
-N/A-N/A-20150507190002807991