| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
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| SERIAL NUMBER | 86436078 | ||||||||||||||||||||||||||||||||||||
| LAW OFFICE ASSIGNED | LAW OFFICE 120 | ||||||||||||||||||||||||||||||||||||
| MARK SECTION | |||||||||||||||||||||||||||||||||||||
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86436078/large | ||||||||||||||||||||||||||||||||||||
| LITERAL ELEMENT | GEM IMPLIED PRIVATE PREMIUM | ||||||||||||||||||||||||||||||||||||
| STANDARD CHARACTERS | YES | ||||||||||||||||||||||||||||||||||||
| USPTO-GENERATED IMAGE | YES | ||||||||||||||||||||||||||||||||||||
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. | ||||||||||||||||||||||||||||||||||||
| ARGUMENT(S) | |||||||||||||||||||||||||||||||||||||
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In the Office Action mailed February 19, 2015, the Examining Attorney has refused the present application for the mark GEM IMPLIED PRIVATE PREMIUM, Serial No. 86/436,078 (“Applicant’s Mark”) under Trademark Act § 2(d), U.S.C. § 1052(d), based upon a finding of a likelihood of confusion with U.S. Application Registration No. 3,894,602 for the mark GEM NETWORK for “analyzing and compiling data for measuring the performance of financial markets” in International Class 35 (“Cited Registration”) owned by FTEN, Inc. (“Registrant”). Applicant seeks to register Applicant’s Mark for use in connection with the following goods and services: “Spreadsheet software for calculating a financial index; Spreadsheet software for analyzing the performance of privately managed financial investments, in International Class 9; Providing a financial index in the nature of a quantitative measurement for analyzing the performance of privately managed financial investments, in International Class 35; and Providing an online non-downloadable Internet-based system application featuring technology enabling users to calculate a metric of investment performance; Providing temporary use of on-line non-downloadable software for calculating a financial index, in International Class 42. Applicant respectfully submits that there is no likelihood of confusion between the Applicant’s Mark and the Cited Registration for the following reasons: (1) the marks are sufficiently dissimilar in appearance, sound, connotation and commercial impression to allow concurrent registration; and (2) the marks’ respective services have little if any competitive overlap. Therefore, for the reasons discussed below, Applicant respectfully traverses this rejection. An application must be analyzed in two steps to determine whether there is a likelihood of confusion. The Examining Attorney must look at the marks themselves for similarities in appearance, sound, connotation, and commercial impression, and then the Examining Attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973); In re August Storck KG, 218 U.S.P.Q. 823 (T.T.A.B. 1983). Furthermore, the overall commercial impression derived from viewing marks in their entireties is of paramount interest in determining whether a confusing similarity exists. New England Fish Co. v. The Hervin Co., 184 U.S.P.Q. 817, 818 (C.C.P.A. 1975). 1. Applicant’s Mark Is Sufficiently Dissimilar To The Cited Registration. The first DuPont factor is “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” 476 F.2d at 1361. In raising this potential likelihood of confusion issue, the Examining Attorney has focused on a shared word between the marks without giving proper consideration to the distinguishing features of each mark and the distinct commercial impressions created by each mark. Applicant asserts that the differences between Applicant’s Mark and the Cited Registration are sufficiently significant to avoid a likelihood of confusion. While the Office Action states that the fact that a portion of Applicant’s mark is the same as the cited mark is enough for this factor to weigh toward a likelihood of confusion, there are many examples of marks being registered – and held to have no likelihood of confusion – despite sharing a portion of a prior mark or incorporating the entirety of a prior mark. See Clayton Mark & Co. v. Keystone Brass and Rubber Co., 279 F.2d 279 (Fed. Cir. 1960) (Affirming the Board’s decision that the MARK mark in the earlier cited registration was sufficiently different from applicant’s SUMARK mark so as to eliminate any likelihood of confusion, even where “the goods are so related that they might be expected to emanate from a single source”); In re Masco Corporation of Indiana, uspto-76371083 (TTAB 2007) [non-precedential] (Reversing the examining attorney’s refusal to register TREVI in light of an earlier registration for TREVISO, even where “[t]he goods are, in part, identical”); In re CE Distribution, uspto-76432582 (TTAB 2005) (Reversing the examining attorney’s refusal to register MOD in light of an earlier registration for ULTRAMOD); In re Fusco, uspto-75368502 (TTAB 2000) (MAGNAMUD and MUD); In re Application of P. Ferrero, 479 F.2d 1395, 178 USPQ 167, (CCPA 1973) (Reversing the Board’s refusal to register applicant’s TIC TAC mark for “candy” in view of an earlier registration for TIC TAC TOE for “ice cream and sherbet”). Though Applicant’s Mark shares the term “GEM” with the Cited Registration, the addition of the words “IMPLIED PRIVATE PREMIUM” to Applicant’s Mark and the word “NETWORK” in the Cited Registration creates a significant difference in appearance, sound, meaning, and commercial impression. As discussed in the cases cited above, where one mark contains additional features that distinguish its overall appearance from another, confusion is less likely, even when the two marks also contain similar features. See, e.g., Miller Brewing Co. v. Premier Beverages, Inc., 210 USPQ 43, 48‐49 (T.T.A.B. 1981) (No likelihood of confusion found in MILLER and OL’ BOB MILLER’S for beverages). Even slight differences can distinguish two marks. In re Electrolyte Laboratories Inc., 929 F.2d 645, 647, 16 USPQ 2d 1239, 1240 (Fed. Cir. 1990) (K+ and design for dietary supplement was held not likely to be confused with K+EFF (stylized) for dietary potassium supplements). It is well settled that trademarks must be compared in their entireties. In re Application of P. Ferrero, 479 F.2d 1395, 1396. Here, Applicant asserts that the Examining Attorney has stressed a portion of Cited Registration, “GEM”, and diminished the remaining words of both the marks. Applicant asserts that its mark is greatly different in appearance, sound, meaning, and commercial impression when compared to the Cited Registration, as a whole. By concentrating on the importance of a single word, i.e. “GEM,” the Examining Attorney overlooks the substantial distinctions in sight, sound, meaning, and commercial impression created by the additional of elements of each mark. In the case at hand, both Applicant’s and Registrants’ marks must be perceived in their entireties, and all components of the marks, not just the word “GEM” must be given appropriate weight. See In re Hearst Corp., 982 F.2d 493, 494 (C.A. Fed., 1992); Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); Stouffer Corp. v. Health Valley Natural Foods, Inc., 1 U.S.P.Q.2d 1900, 1904 (T.T.A.B. 1986) (finding that LEAN CUISINE and LEAN LIVING are not confusingly similar in sound, appearance or commercial impression despite nearly identical goods). Here, there are more than slight variations to distinguish Applicant’s Mark from the Registrant’s: a. Appearance The Examining Attorney argues that, “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” Office Action dated February 19, 2014, page 2. However, it is well recognized that “marks tend to be perceived in their entireties, and all components thereof must be given appropriate weight.” In re Hearst Corp., 2 USPQ 2d 1238, 1239 (Fed. Cir. 1992). Yet, despite the single shared word, Applicant’s Mark, GEM IMPLIED PRIVATE PREMIUM, is fundamentally different in appearance from the Cited Registration. In a case where one mark contains additional features that distinguish its overall appearance from another, confusion is less likely, even when the two marks also contain similar features. See e.g., Miller Brewing Co. v. Premier Beverages, Inc., 210 USPQ 43, 48‐49 (T.T.A.B. 1981) (no likelihood of confusion found in MILLER and OL' BOB MILLER'S for beverages). Simply because two marks share wording does not mean that likelihood of confusion exists. General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627, 3 U.S.P.Q.2d 1442 (8th Cir. 1987). Even slight differences can distinguish two marks. In re Electrolyte Laboratories Inc., 929 F.2d 645, 647, 16 USPQ 2d 1239, 1240 (Fed. Cir. 1990). Here, there are more than slight variations to distinguish the two marks, GEM IMPLIED PRIVATE PREMIUM vs. GEM NETWORK. Applicant’s Mark and the Cited Registration both contain the word “GEM”, but this is the only feature they share as the additional terms of each mark are entirely distinct. Applicant’s mark is not likely to be confused with the Cited Registration in appearance, due to distinguishing terms – IMPLIED PRIVATE PREMIUM vs. NETWORK. Applicant’s Mark is not likely to be confused with the Cited Registration in appearance due to the distinguishing words contained in both the marks. b. Sound: Applicant’s mark and the Cited Registration also differ in sound. Differences in sound can obviate a likelihood of confusion finding, even when the services are related. See Coca-Cola Co. v. Essential Products Co., 164 USPQ 628, 630 (C.C.P.A. 1970) (“Coca Cola” and “Coco Loco” were aurally dissimilar, likelihood of confusion was avoided). Applicant's mark shares the word “GEM” with the mark at issue. However, “GEM” is just one portion of the Cited Registration. The Cited Registration also includes “NETWORK” and Applicant’s Mark contains “IMPLIED PRIVATE PREMIUM.” In comparison, the marks are aurally dissimilar. As such, Applicant’s Mark and the Cited Registration bear little resemblance when spoken aloud. Due to these differences, Applicant argues that its mark would not cause confusion with the Cited Registration. c. Meaning The Cited Registration has a meaning that differs significantly that the meaning of Applicant’s mark. Even when marks are identical, likelihood of confusion can be avoided if there is a difference in meaning in respect to their goods and services. For example, CROSS‐OVER for bras was held not likely to be confused with CROSSOVER for ladies’ sportswear, as CROSS‐OVER applied to bras suggests the physical construction of the bras, while CROSSOVER for ladies’ sportswear is suggestive of multi‐sport goods. See In re Sears, Roebuck and Co., 2 USPQ 2d. 1312 (T.T.A.B. 1987). Here, the meaning between Applicant’s mark and the Cited Registration differs considerably. The wording “GEM” is the one shared feature of the Applicant’s Mark and the Cited Registration. In Applicant’s case, GEM refers to “Global Endowment Management.” See Exhibit A, a fact sheet from Applicant’s website attached herewith. In Registrant’s case, GEM refers to “Global Engagement Mesh.” See Exhibit B, p. 3, the specimen provided with the application for the Cited Registration attached herewith. The additional words in each mark serve to create even more differences in meaning. As discussed in greater detail below, the term “IMPLIED PRIVATE PREMIUM” is not an existing term of art in the financial industry. It is merely a suggestive name created by Applicant to express the intent of its financial benchmark. The term GEM IMPLIED PRIVATE PREMIUM, then, is a term that could mean almost anything unless the consumer was familiar with Applicant’s benchmark. The term “NETWORK” on the other hand, is a well understood English word having many different meanings in different contexts. When associated with a technology company like Registrant, a communications network naturally comes to mind. When purchasers use Applicant’s services, they will identify GEM IMPLIED PRIVATE PREMIUM with services targeted toward financial managers and Applicant’s objective benchmark for those services. Purchasers of Registrant’s services, in contrast, will identify GEM NETWORK with a multi-line network service provided by a technology company. As such, purchasers are not likely to associate the meaning of the two marks with each other, due to the different meanings of the marks. Applicant’s Mark has a distinct meaning and commercial impression from Cited Registration, and confusion is unlikely to occur. d. Commercial Impression When assessing the overall commercial impression, marks must be considered in their entireties. Package Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1357, 56 USPQ 1351, 1353 (Fed. Circ. 2000) (The court held that the T.T.A.B. erred by relying only the shared material “Packard”, without evaluating the marks in their entireties). Merely because marks share material, does not mean that there is a likelihood of confusion. General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 3 U.S.P.Q.2d 1442 (8th Cir. 1987). “The phrase ‘commercial impression’ is occasionally used as a proxy for the ultimate conclusion of similarity or dissimilarity of marks resulting from a comparison of their appearance, sound, and meaning” Palm Bay v. Veuve Clicquot, 396 F.3d 1369, 1372, 73 U.S.P.Q.2d 1689, 1692 (Fed. Cir. 2005). When comparing the mark GEM IMPLIED PRIVATE PREMIUM to the registered mark GEM NETWORK, the commercial impressions of the marks are different. Because it has no commonly understood meaning except in connection with Applicant’s services and benchmark, the mark “GEM IMPLIED PRIVATE PREMIUM,” will only evoke the specific impression of a definitive performance index, the “Implied Private Premium,” created by Applicant (which is known as GEM or Global Endowment Management). It clearly creates a reference to a specific thing. Meanwhile, the term GEM NETWORK evokes a much more general impression of a network of some kind, such as a communications network, or, perhaps a jewelry shopping TV network, the “Gem Network,” similar to the “Home Shopping Network.” When considered in light of the technological field of the Registrant, the mark GEM NETWORK would evoke a commercial impression of a company’s computer, telecommunications, or data network. When considered in their entireties, Applicant’s Mark conveys a very different commercial impression than the Cited Registration. Therefore, Applicant’s mark is not likely to cause confusion. In sum, the distinctive words “IMPLIED PRIVATE PREMIUM” and “NETWORK” in the respective marks changes each mark’s appearance, sound, meaning, and commercial impression, and makes Applicant’s Mark dissimilar from the Cited Registration. Therefore this Du Pont factor weighs against a finding of likelihood of confusion. e. “GEM” is Common in the Field Finally, the existence of GEM in marks currently registered with the Trademark Office should not automatically preclude the registration of other marks sharing these terms, such as Applicant’s Mark. Lever Brothers Company v. The Barcolene Company, 174 U.S.P.Q. 392 (C.C.P.A. 1972) (trademark owner’s rights in the term ALL do not preclude subsequent registration of marks comprising the term ALL). This becomes especially true in this case where many marks containing GEM have been registered for products in the general field of financial services.
While these registrations do not prove current use of these marks in commerce, their TESS records are attached as Exhibit C to show initial approval by the Trademark Office and initial proof of use in commerce. The relationship between these marks and their commercial and mental impressions becomes especially relevant in the second prong of the likelihood of confusion analysis. In this second step, the Examining Attorney considers the goods and services associated with the mark. 2. The Goods And Services Bearing The Marks Are Sufficiently Distinct.
The second DuPont factor is an examination of the goods or services associated with the marks to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In this case, the marks will be used with sufficiently distinct goods and services. Confusion is unlikely where goods used in connection with the trademarks fall within the same broad field. Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713 (Fed. Cir. 1992) (allowing concurrent registration of identical EDS marks on different applications within the electronics field); see also Astra Pharmaceutical Prods. v. Beckman Instruments, 718 F.2d 1235, 1245 (6th Cir. 1991) (allowing concurrent registration of ASTRA marks on different applications within the healthcare field). In Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 18 U.S.P.Q.2d 1587, 1594 (6th Cir. 1991), the court held that “[goods] are ‘related’ not because they coexist in the same broad industry, but are ‘related’ if the [goods] are marketed and consumed such that buyers are likely to believe that the [goods], similarly marked, come from the same source.” Id. To begin, the Applicant’s Mark and The Cited Registration are used in connection with distinct services within the broad field of the financial industry. The Office Action states that “While the applicant’s goods and services are used to evaluate the performance of private funds and the registrant’s services are used to evaluate public markets, this difference will not obviate the likelihood of confusion.” Yet, this is incorrect. As Applicant’s application conveys, the Applicant’s Mark is used in connection with services very different from Registrant’s services of “analyzing and compiling data for measuring the performance of financial markets.” Applicant’s Mark will be used in connection with providing a financial index in the nature of a quantitative measurement for quantifying the performance of privately managed financial investments in order to provide financial advisors with a tangible measurement of the value of their services. The attached fact sheet from Applicant’s website shows that Applicant’s services under the GEM IMPLIED PRIVATE PREMIUM mark provide a way of communication what additional return, if any, an investor generated by making a private equity commitment and forgoing public equity returns. See Exhibit A, attached herewith. Similarly, a printout of the actual GEM Implied Private Premium spreadsheet which calculates the “Implied Private Premium” or “IPP” benchmark for a hypothetical investor is attached as Exhibit D. In contrast, Registrant uses the cited mark in connection with a data network, among other technology services, targeted at those in the financial industry. See Exhibit B, attached herewith, showing the specimen provided in connection with Registrant’s application for the Cited Registration. Registrant is, in fact, a technology company offering colocation services, disaster recovery, and access to data network. Within the broad field of the financial industry, the gap between a benchmark for financial advisors to use in order to communicate the value of their services to customers and a network to transmit financial data is quite large. In Witco Chemical Co. v. Whitfield Chemical Co., the CCPA stated: We are not concerned with the mere theoretical possibilities of confusion, deception or mistake or with de minimis situations, but with the practicalities of the commercial world, with which trademark laws deal.
418 F.2d 1403, 1405, 164 U.S.P.Q. 43, 44-45 (C.C.P.A. 1969), aff’g 153 U.S.P.Q. 412 (T.T.A.B. 1967). The possibility of any confusion as to the source of Applicant’s services and the services covered by the Cited Registration is merely theoretical or at most de minimis. Applicant provides highly specialized services to private equity advisors to communicate the value of their services. Registrant, on the other hand, provides a wide variety of technology services, including the GEM NETWORK with “data feeds across regional markets through a redundant woven network path.” See Exhibit B, page 3. The chances that such highly sophisticated consumers as financial advisors would confuse the source of Applicant’s financial index services with the source of Registrant’s technology services is extremely slim. While the fact that consumers are sophisticated in a field does not preclude source confusion, such knowledge and sophistication may lower the likelihood of confusion. See In Re Decombe, 9 USPQ 2d 1812 (TTAB 1988); In Re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983). Indeed, purchasers of expensive goods are elevated to the standard of a “discriminating” or sophisticated purchaser, who do not buy casually, but only after careful consideration. Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990); see e.g. McGregorDoniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1137, 202 USPQ 81, 92 (2d Cir. 1979) (holding purchasers of women’s coats priced from $100‐$900 “to be sophisticated and knowledgeable about women’s apparel”). With respect to the Applicant, its clientele are made up of highly sophisticated consumers. The degree of care that can be anticipated when consumers seek expensive financial consulting services can fairly be characterized as high when compared with more casual, everyday purchases such as, e.g., soda. Applicant’s services are not purchased on a whim. Consumers of Applicant’s services will seek out a specific type of consultation services. To the extent that a customer is likely to exercise a high degree of care when selecting goods or services, the less chance that confusion, mistake, or deception will occur between two or more competing marks. In this instance, the marketplace can be fairly characterized as one in which customers can be expected to exercise a higher degree of care than would be true of most other goods; thus, the likelihood of confusion, mistake, or deception will be minimized. All of the foregoing factors prove that the potential for confusion between the source of the goods sold under Applicant’s Mark and the source of goods and services sold under the Cited Registration is de minimis, at best. Applicant’s Mark differs from the Cited Registration in commercially significant ways. The nature of Applicant’s goods and services and Registrant’s services suggests very limited, if any, marketplace interface between them. Therefore, for the above reasons, Applicant respectfully requests that the Examining Attorney withdraw the refusal based on the Cited Registration. Prior Pending Application With regard to prior pending application Serial No. 86/362,754 for the mark GEM which seeks registration of the mark for use in connection with an electronic payment processing service or electronic wallet and the software and hardware associated with that service, Applicant contends that the goods and services in the two registrations are sufficiently distinct to avoid a likelihood of confusion, especially in light of the arguments above with regard to the sophistication of the consumers of financial products and the relative common nature of references to “gems” in connection with various financial products. Nevertheless, if the Examining Attorney determines that Serial No. 86/362,754 presents an issue, please be advised that Applicant has contacted the owner of Serial No. 86/362,754 and requested its Consent to Registration of the present mark based upon Applicant’s long prior actual use of the mark. Because such discussions are not complete, if the Examining Attorney believes that there is an issue with this mark, Applicant would request that the present application be suspended pending registration of the mark shown in Serial No. 86/362,754. Significance of Acronym in the Mark The Examining Attorney requests an explanation whether “IMPLIED PRIVATE PREMIUM”, “IMPLIED PRIVATE”, “PRIVATE PREMIUM”, “PRIVATE” or “PREMIUM” has any meaning or significance in the industry, or if such wording is a “term of art” within Applicant’s industry. Applicant responds as follows: apart from the meaning created by Applicant, the terms “IMPLIED PRIVATE PREMIUM”, “IMPLIED PRIVATE”, “PRIVATE PREMIUM” or “PREMIUM” do not have any meaning or significance in the industry, nor are the terms “IMPLIED PRIVATE PREMIUM” , “IMPLIED PRIVATE”, “PRIVATE PREMIUM” or “PREMIUM” terms of art within Applicant’s industry. On the other hand, the term “PRIVATE” is understood in the industry as having its ordinary meaning, i.e., being the opposite of “PUBLIC”, as in “private equity fund,” meaning an equity fund that is privately managed. “Implied Private Premium,” is a proprietary term coined by Applicant for its financial index analytical tool and the spreadsheet software to calculate that financial index. The term was invented and is used by Applicant in the private equity industry to evaluate the performance of a private equity fund against a public benchmark or index. Applicant created the GEM IMPLIED PRIVATE PREMIUM benchmark to describe an innovative service provided to financial advisors whereby the financial advisor can then show their customer the enhanced performance of private equity funds as compared to public funds using this specially calculated benchmark. GEM IMPLIED PRIVATE PREMIUM has no other significance or meaning in the industry. As discussed above, “GEM IMPLIED PRIVATE PREMIUM” is a proprietary term for Applicant’s Implied Private Premium benchmark and spreadsheet tool. The Examining Attorney has also requested “fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services.” In response, Applicant is providing a fact sheet entitled “The GEM Implied Private Premium (GEM IPP)” and a pdf copy of the GEM Implied Private Premium spreadsheet which calculates the IMPLIED PRIVATE PREMIUM (“IPP” for short) benchmark for a hypothetical investor. See Exhibits A and D, attached herewith. The fact sheet (Exhibit A) contains factual information and an explanation about the services provided under the GEM IMPLIED PRIVATE PREMIUM mark, including what the services are and how they are rendered, salient features, and prospective channels of trade. Specifically, the GEM IMPLIED PRIVATE PREMIUM benchmark calculates the annualized rate of excess return that a private return stream generates over a public market benchmark, where a positive (negative) rate indicates outperformance (underperformance). The fact sheet also includes information on how a financial advisor can incorporate this technique into their investment analysis and show enhanced private equity fund performance to their own customers. The printout of the spreadsheet itself (Exhibit D) is an example of the spreadsheet software showing the information necessary for and used in a hypothetical analysis of the performance of privately managed financial investments and expressing it as the GEM IMPLIED PRIVATE PREMIUM. Conclusion Because the GEM IMPLIED PRIVATE PREMIUM mark does not have any meaning or significance in the industry, and in light of these remarks and the information provided regarding the goods and services, Applicant believes the descriptions of the goods and services are accurate and allowable and believes the mark is in proper condition for allowance and respectfully requests such action.
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| ORIGINAL PDF FILE | evi_381289666-20150819163729818311_._GEM_IMPLIED_PRIVATE_PREMIUM_Fact_Sheet_Specimen.pdf | ||||||||||||||||||||||||||||||||||||
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| ORIGINAL PDF FILE | evi_381289666-20150819163729818311_._Ex_B_GLOBAL_NETWORK_Registrants_Specimen.pdf | ||||||||||||||||||||||||||||||||||||
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| ORIGINAL PDF FILE | evi_381289666-20150819163729818311_._GEM_IMPLIED_PRIVATE_PREMIUM_Model_Spreadsheet.pdf | ||||||||||||||||||||||||||||||||||||
| CONVERTED PDF FILE(S) (5 pages) |
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| DESCRIPTION OF EVIDENCE FILE | Exhibit A, which consists of Applicant's fact sheet; Exhibit B, which consists of Registrant's specimen filed with the USPTO application for the Cited Registration; Exhibit C, which consists of a copies of the TESS records for the cited trademark registrations; Exhibit D, which consists of a copy of the spreadsheet used to calculate a hypothetical analysis of the performance of privately managed financial investments and expressing it as the IPP. | ||||||||||||||||||||||||||||||||||||
| ADDITIONAL STATEMENTS SECTION | |||||||||||||||||||||||||||||||||||||
| DISCLAIMER | No claim is made to the exclusive right to use PRIVATE apart from the mark as shown. | ||||||||||||||||||||||||||||||||||||
| SIGNATURE SECTION | |||||||||||||||||||||||||||||||||||||
| RESPONSE SIGNATURE | /Charles W. Forlidas/ | ||||||||||||||||||||||||||||||||||||
| SIGNATORY'S NAME | Charles W. Forlidas | ||||||||||||||||||||||||||||||||||||
| SIGNATORY'S POSITION | Attorney of Record, Georgia Bar Member | ||||||||||||||||||||||||||||||||||||
| SIGNATORY'S PHONE NUMBER | 404 962-6444 | ||||||||||||||||||||||||||||||||||||
| DATE SIGNED | 08/19/2015 | ||||||||||||||||||||||||||||||||||||
| AUTHORIZED SIGNATORY | YES | ||||||||||||||||||||||||||||||||||||
| FILING INFORMATION SECTION | |||||||||||||||||||||||||||||||||||||
| SUBMIT DATE | Wed Aug 19 16:44:28 EDT 2015 | ||||||||||||||||||||||||||||||||||||
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XX-20 150819164428858406-864360 78-5401fc370901c3d7927c9f 46410a34e58e142fd5431de65 b7c645112d2d476ce869-N/A- N/A-20150819163729818311 |
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| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
In the Office Action mailed February 19, 2015, the Examining Attorney has refused the present application for the mark GEM IMPLIED PRIVATE PREMIUM, Serial No. 86/436,078 (“Applicant’s Mark”) under Trademark Act § 2(d), U.S.C. § 1052(d), based upon a finding of a likelihood of confusion with U.S. Application Registration No. 3,894,602 for the mark GEM NETWORK for “analyzing and compiling data for measuring the performance of financial markets” in International Class 35 (“Cited Registration”) owned by FTEN, Inc. (“Registrant”). Applicant seeks to register Applicant’s Mark for use in connection with the following goods and services: “Spreadsheet software for calculating a financial index; Spreadsheet software for analyzing the performance of privately managed financial investments, in International Class 9; Providing a financial index in the nature of a quantitative measurement for analyzing the performance of privately managed financial investments, in International Class 35; and Providing an online non-downloadable Internet-based system application featuring technology enabling users to calculate a metric of investment performance; Providing temporary use of on-line non-downloadable software for calculating a financial index, in International Class 42.
Applicant respectfully submits that there is no likelihood of confusion between the Applicant’s Mark and the Cited Registration for the following reasons: (1) the marks are sufficiently dissimilar in appearance, sound, connotation and commercial impression to allow concurrent registration; and (2) the marks’ respective services have little if any competitive overlap. Therefore, for the reasons discussed below, Applicant respectfully traverses this rejection.
An application must be analyzed in two steps to determine whether there is a likelihood of confusion. The Examining Attorney must look at the marks themselves for similarities in appearance, sound, connotation, and commercial impression, and then the Examining Attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973); In re August Storck KG, 218 U.S.P.Q. 823 (T.T.A.B. 1983). Furthermore, the overall commercial impression derived from viewing marks in their entireties is of paramount interest in determining whether a confusing similarity exists. New England Fish Co. v. The Hervin Co., 184 U.S.P.Q. 817, 818 (C.C.P.A. 1975).
1. Applicant’s Mark Is Sufficiently Dissimilar To The Cited Registration.
The first DuPont factor is “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” 476 F.2d at 1361. In raising this potential likelihood of confusion issue, the Examining Attorney has focused on a shared word between the marks without giving proper consideration to the distinguishing features of each mark and the distinct commercial impressions created by each mark. Applicant asserts that the differences between Applicant’s Mark and the Cited Registration are sufficiently significant to avoid a likelihood of confusion.
While the Office Action states that the fact that a portion of Applicant’s mark is the same as the cited mark is enough for this factor to weigh toward a likelihood of confusion, there are many examples of marks being registered – and held to have no likelihood of confusion – despite sharing a portion of a prior mark or incorporating the entirety of a prior mark. See Clayton Mark & Co. v. Keystone Brass and Rubber Co., 279 F.2d 279 (Fed. Cir. 1960) (Affirming the Board’s decision that the MARK mark in the earlier cited registration was sufficiently different from applicant’s SUMARK mark so as to eliminate any likelihood of confusion, even where “the goods are so related that they might be expected to emanate from a single source”); In re Masco Corporation of Indiana, uspto-76371083 (TTAB 2007) [non-precedential] (Reversing the examining attorney’s refusal to register TREVI in light of an earlier registration for TREVISO, even where “[t]he goods are, in part, identical”); In re CE Distribution, uspto-76432582 (TTAB 2005) (Reversing the examining attorney’s refusal to register MOD in light of an earlier registration for ULTRAMOD); In re Fusco, uspto-75368502 (TTAB 2000) (MAGNAMUD and MUD); In re Application of P. Ferrero, 479 F.2d 1395, 178 USPQ 167, (CCPA 1973) (Reversing the Board’s refusal to register applicant’s TIC TAC mark for “candy” in view of an earlier registration for TIC TAC TOE for “ice cream and sherbet”).
Though Applicant’s Mark shares the term “GEM” with the Cited Registration, the addition of the words “IMPLIED PRIVATE PREMIUM” to Applicant’s Mark and the word “NETWORK” in the Cited Registration creates a significant difference in appearance, sound, meaning, and commercial impression. As discussed in the cases cited above, where one mark contains additional features that distinguish its overall appearance from another, confusion is less likely, even when the two marks also contain similar features. See, e.g., Miller Brewing Co. v. Premier Beverages, Inc., 210 USPQ 43, 48‐49 (T.T.A.B. 1981) (No likelihood of confusion found in MILLER and OL’ BOB MILLER’S for beverages). Even slight differences can distinguish two marks. In re Electrolyte Laboratories Inc., 929 F.2d 645, 647, 16 USPQ 2d 1239, 1240 (Fed. Cir. 1990) (K+ and design for dietary supplement was held not likely to be confused with K+EFF (stylized) for dietary potassium supplements).
It is well settled that trademarks must be compared in their entireties. In re Application of P. Ferrero, 479 F.2d 1395, 1396. Here, Applicant asserts that the Examining Attorney has stressed a portion of Cited Registration, “GEM”, and diminished the remaining words of both the marks. Applicant asserts that its mark is greatly different in appearance, sound, meaning, and commercial impression when compared to the Cited Registration, as a whole. By concentrating on the importance of a single word, i.e. “GEM,” the Examining Attorney overlooks the substantial distinctions in sight, sound, meaning, and commercial impression created by the additional of elements of each mark.
In the case at hand, both Applicant’s and Registrants’ marks must be perceived in their entireties, and all components of the marks, not just the word “GEM” must be given appropriate weight. See In re Hearst Corp., 982 F.2d 493, 494 (C.A. Fed., 1992); Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); Stouffer Corp. v. Health Valley Natural Foods, Inc., 1 U.S.P.Q.2d 1900, 1904 (T.T.A.B. 1986) (finding that LEAN CUISINE and LEAN LIVING are not confusingly similar in sound, appearance or commercial impression despite nearly identical goods).
Here, there are more than slight variations to distinguish Applicant’s Mark from the Registrant’s:
a. Appearance
The Examining Attorney argues that, “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” Office Action dated February 19, 2014, page 2. However, it is well recognized that “marks tend to be perceived in their entireties, and all components thereof must be given appropriate weight.” In re Hearst Corp., 2 USPQ 2d 1238, 1239 (Fed. Cir. 1992). Yet, despite the single shared word, Applicant’s Mark, GEM IMPLIED PRIVATE PREMIUM, is fundamentally different in appearance from the Cited Registration. In a case where one mark contains additional features that distinguish its overall appearance from another, confusion is less likely, even when the two marks also contain similar features. See e.g., Miller Brewing Co. v. Premier Beverages, Inc., 210 USPQ 43, 48‐49 (T.T.A.B. 1981) (no likelihood of confusion found in MILLER and OL' BOB MILLER'S for beverages). Simply because two marks share wording does not mean that likelihood of confusion exists. General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627, 3 U.S.P.Q.2d 1442 (8th Cir. 1987). Even slight differences can distinguish two marks. In re Electrolyte Laboratories Inc., 929 F.2d 645, 647, 16 USPQ 2d 1239, 1240 (Fed. Cir. 1990).
Here, there are more than slight variations to distinguish the two marks, GEM IMPLIED PRIVATE PREMIUM vs. GEM NETWORK. Applicant’s Mark and the Cited Registration both contain the word “GEM”, but this is the only feature they share as the additional terms of each mark are entirely distinct. Applicant’s mark is not likely to be confused with the Cited Registration in appearance, due to distinguishing terms – IMPLIED PRIVATE PREMIUM vs. NETWORK. Applicant’s Mark is not likely to be confused with the Cited Registration in appearance due to the distinguishing words contained in both the marks.
b. Sound:
Applicant’s mark and the Cited Registration also differ in sound. Differences in sound can obviate a likelihood of confusion finding, even when the services are related. See Coca-Cola Co. v. Essential Products Co., 164 USPQ 628, 630 (C.C.P.A. 1970) (“Coca Cola” and “Coco Loco” were aurally dissimilar, likelihood of confusion was avoided).
Applicant's mark shares the word “GEM” with the mark at issue. However, “GEM” is just one portion of the Cited Registration. The Cited Registration also includes “NETWORK” and Applicant’s Mark contains “IMPLIED PRIVATE PREMIUM.” In comparison, the marks are aurally dissimilar. As such, Applicant’s Mark and the Cited Registration bear little resemblance when spoken aloud. Due to these differences, Applicant argues that its mark would not cause confusion with the Cited Registration.
c. Meaning
The Cited Registration has a meaning that differs significantly that the meaning of Applicant’s mark. Even when marks are identical, likelihood of confusion can be avoided if there is a difference in meaning in respect to their goods and services. For example, CROSS‐OVER for bras was held not likely to be confused with CROSSOVER for ladies’ sportswear, as CROSS‐OVER applied to bras suggests the physical construction of the bras, while CROSSOVER for ladies’ sportswear is suggestive of multi‐sport goods. See In re Sears, Roebuck and Co., 2 USPQ 2d. 1312 (T.T.A.B. 1987). Here, the meaning between Applicant’s mark and the Cited Registration differs considerably.
The wording “GEM” is the one shared feature of the Applicant’s Mark and the Cited Registration. In Applicant’s case, GEM refers to “Global Endowment Management.” See Exhibit A, a fact sheet from Applicant’s website attached herewith. In Registrant’s case, GEM refers to “Global Engagement Mesh.” See Exhibit B, p. 3, the specimen provided with the application for the Cited Registration attached herewith.
The additional words in each mark serve to create even more differences in meaning. As discussed in greater detail below, the term “IMPLIED PRIVATE PREMIUM” is not an existing term of art in the financial industry. It is merely a suggestive name created by Applicant to express the intent of its financial benchmark. The term GEM IMPLIED PRIVATE PREMIUM, then, is a term that could mean almost anything unless the consumer was familiar with Applicant’s benchmark.
The term “NETWORK” on the other hand, is a well understood English word having many different meanings in different contexts. When associated with a technology company like Registrant, a communications network naturally comes to mind.
When purchasers use Applicant’s services, they will identify GEM IMPLIED PRIVATE PREMIUM with services targeted toward financial managers and Applicant’s objective benchmark for those services. Purchasers of Registrant’s services, in contrast, will identify GEM NETWORK with a multi-line network service provided by a technology company. As such, purchasers are not likely to associate the meaning of the two marks with each other, due to the different meanings of the marks. Applicant’s Mark has a distinct meaning and commercial impression from Cited Registration, and confusion is unlikely to occur.
d. Commercial Impression
When assessing the overall commercial impression, marks must be considered in their entireties. Package Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1357, 56 USPQ 1351, 1353 (Fed. Circ. 2000) (The court held that the T.T.A.B. erred by relying only the shared material “Packard”, without evaluating the marks in their entireties). Merely because marks share material, does not mean that there is a likelihood of confusion. General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 3 U.S.P.Q.2d 1442 (8th Cir. 1987). “The phrase ‘commercial impression’ is occasionally used as a proxy for the ultimate conclusion of similarity or dissimilarity of marks resulting from a comparison of their appearance, sound, and meaning” Palm Bay v. Veuve Clicquot, 396 F.3d 1369, 1372, 73 U.S.P.Q.2d 1689, 1692 (Fed. Cir. 2005).
When comparing the mark GEM IMPLIED PRIVATE PREMIUM to the registered mark GEM NETWORK, the commercial impressions of the marks are different. Because it has no commonly understood meaning except in connection with Applicant’s services and benchmark, the mark “GEM IMPLIED PRIVATE PREMIUM,” will only evoke the specific impression of a definitive performance index, the “Implied Private Premium,” created by Applicant (which is known as GEM or Global Endowment Management). It clearly creates a reference to a specific thing.
Meanwhile, the term GEM NETWORK evokes a much more general impression of a network of some kind, such as a communications network, or, perhaps a jewelry shopping TV network, the “Gem Network,” similar to the “Home Shopping Network.” When considered in light of the technological field of the Registrant, the mark GEM NETWORK would evoke a commercial impression of a company’s computer, telecommunications, or data network.
When considered in their entireties, Applicant’s Mark conveys a very different commercial impression than the Cited Registration. Therefore, Applicant’s mark is not likely to cause confusion.
In sum, the distinctive words “IMPLIED PRIVATE PREMIUM” and “NETWORK” in the respective marks changes each mark’s appearance, sound, meaning, and commercial impression, and makes Applicant’s Mark dissimilar from the Cited Registration. Therefore this Du Pont factor weighs against a finding of likelihood of confusion.
e. “GEM” is Common in the Field
Finally, the existence of GEM in marks currently registered with the Trademark Office should not automatically preclude the registration of other marks sharing these terms, such as Applicant’s Mark. Lever Brothers Company v. The Barcolene Company, 174 U.S.P.Q. 392 (C.C.P.A. 1972) (trademark owner’s rights in the term ALL do not preclude subsequent registration of marks comprising the term ALL). This becomes especially true in this case where many marks containing GEM have been registered for products in the general field of financial services.
|
Mark |
Goods/Services |
Registration No. |
|
GEMS |
Computer software used to model financial conditions facing businesses in the insurance and financial services industries. (Class 9) |
2931593 |
|
GEMS |
Financial services for others, namely, investment banking, investment consultation, securities brokerage services, securities trading services, commodities trading services, financial asset management, raising of financial capital, and financial investment research in connection with all the foregoing; Financial services for others, namely, financial investment research in connection with investment consultation, securities brokerage services, securities trading services and financial asset management. (Class 36) |
2361080 |
|
GEMSOFT G |
Point of sale software for use in managing sales activities, product inventory control, appointment management, financial analysis, for use in database management in the beauty salon industry. (Class 9) |
4110630 |
|
GEMLOC |
Providing financial indices of select bonds to enable investors to evaluate investments and market trends in the bond market, namely, determination of a bond index, including calculation of the bond index and data processing related thereto; Bond fund investment services; bond fund management services. (Classes 35 and 36) |
3928845 |
|
SECURGEM |
Financial affairs and monetary affairs, namely, financial information, management and analysis services; banking, issue of tokens of value, jewellery appraisal, financial information, capital investments services; funds investments; safety deposit box services. (Class 36) |
3876419 |
|
JEMSTEP |
Providing ratings and comparisons of the goods and services of others, with the option to customize such ratings and comparisons based on user-defined criteria, in the fields of investment products and services, financial instruments, mutual fund investments, retirement planning products and services, all via electronic communications networks. (Class 35) |
4105846 |
|
MONEY-GEMS |
Financial affairs and monetary affairs, namely, financial information, management and analysis services; banking; issue of tokens of value, jewellery appraisal; providing financial information; capital investments services; funds investment; safety deposit box services. (Class 36) |
3876418 |
|
TRIOGEM |
Hedge fund investment services; private placements of hedge funds for others; equity capital investment; financial advisory, analysis and consultation; financial risk management consultation; fund investment consultation; investment of funds for others. (Class 36) |
3670932 |
|
HIDDEN GEMS |
Printed newsletters featuring information concerning financial and investment matters. (Class 36) |
2975849 |
|
HIDDEN GEMS |
Downloadable electronic publications in the nature of newsletters delivered by electronic mail containing information regarding financial and investment matters. (Class 9) |
2975850 |
|
FLAWLESS GEM FUTURES |
Financial services, namely, financial advice and consultancy services; financial planning services, financial indexing, namely, tracking the performance of financial securities for investors; financial investment brokerage services in the field of shares, commodities, stocks and securities; commodity trading for others; investment brokerage in the field of futures; financial analysis; fiscal valuation and assessment; financial management; provision of financial information services; banking services; investment banking and management; credit card services; information, consultancy and advisory services in relation to all of the aforesaid services. (Class 36) |
3972063 |
While these registrations do not prove current use of these marks in commerce, their TESS records are attached as Exhibit C to show initial approval by the Trademark Office and initial proof of use in commerce.
The relationship between these marks and their commercial and mental impressions becomes especially relevant in the second prong of the likelihood of confusion analysis. In this second step, the Examining Attorney considers the goods and services associated with the mark.
2. The Goods And Services Bearing The Marks Are Sufficiently Distinct.
The second DuPont factor is an examination of the goods or services associated with the marks to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In this case, the marks will be used with sufficiently distinct goods and services. Confusion is unlikely where goods used in connection with the trademarks fall within the same broad field. Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713 (Fed. Cir. 1992) (allowing concurrent registration of identical EDS marks on different applications within the electronics field); see also Astra Pharmaceutical Prods. v. Beckman Instruments, 718 F.2d 1235, 1245 (6th Cir. 1991) (allowing concurrent registration of ASTRA marks on different applications within the healthcare field). In Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 18 U.S.P.Q.2d 1587, 1594 (6th Cir. 1991), the court held that “[goods] are ‘related’ not because they coexist in the same broad industry, but are ‘related’ if the [goods] are marketed and consumed such that buyers are likely to believe that the [goods], similarly marked, come from the same source.” Id.
To begin, the Applicant’s Mark and The Cited Registration are used in connection with distinct services within the broad field of the financial industry. The Office Action states that “While the applicant’s goods and services are used to evaluate the performance of private funds and the registrant’s services are used to evaluate public markets, this difference will not obviate the likelihood of confusion.” Yet, this is incorrect. As Applicant’s application conveys, the Applicant’s Mark is used in connection with services very different from Registrant’s services of “analyzing and compiling data for measuring the performance of financial markets.”
Applicant’s Mark will be used in connection with providing a financial index in the nature of a quantitative measurement for quantifying the performance of privately managed financial investments in order to provide financial advisors with a tangible measurement of the value of their services. The attached fact sheet from Applicant’s website shows that Applicant’s services under the GEM IMPLIED PRIVATE PREMIUM mark provide a way of communication what additional return, if any, an investor generated by making a private equity commitment and forgoing public equity returns. See Exhibit A, attached herewith. Similarly, a printout of the actual GEM Implied Private Premium spreadsheet which calculates the “Implied Private Premium” or “IPP” benchmark for a hypothetical investor is attached as Exhibit D.
In contrast, Registrant uses the cited mark in connection with a data network, among other technology services, targeted at those in the financial industry. See Exhibit B, attached herewith, showing the specimen provided in connection with Registrant’s application for the Cited Registration. Registrant is, in fact, a technology company offering colocation services, disaster recovery, and access to data network. Within the broad field of the financial industry, the gap between a benchmark for financial advisors to use in order to communicate the value of their services to customers and a network to transmit financial data is quite large.
In Witco Chemical Co. v. Whitfield Chemical Co., the CCPA stated:
We are not concerned with the mere theoretical possibilities of confusion, deception or mistake or with de minimis situations, but with the practicalities of the commercial world, with which trademark laws deal.
418 F.2d 1403, 1405, 164 U.S.P.Q. 43, 44-45 (C.C.P.A. 1969), aff’g 153 U.S.P.Q. 412 (T.T.A.B. 1967).
The possibility of any confusion as to the source of Applicant’s services and the services covered by the Cited Registration is merely theoretical or at most de minimis. Applicant provides highly specialized services to private equity advisors to communicate the value of their services. Registrant, on the other hand, provides a wide variety of technology services, including the GEM NETWORK with “data feeds across regional markets through a redundant woven network path.” See Exhibit B, page 3.
The chances that such highly sophisticated consumers as financial advisors would confuse the source of Applicant’s financial index services with the source of Registrant’s technology services is extremely slim. While the fact that consumers are sophisticated in a field does not preclude source confusion, such knowledge and sophistication may lower the likelihood of confusion. See In Re Decombe, 9 USPQ 2d 1812 (TTAB 1988); In Re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).
Indeed, purchasers of expensive goods are elevated to the standard of a “discriminating” or sophisticated purchaser, who do not buy casually, but only after careful consideration. Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990); see e.g. McGregorDoniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1137, 202 USPQ 81, 92 (2d Cir. 1979) (holding purchasers of women’s coats priced from $100‐$900 “to be sophisticated and knowledgeable about women’s apparel”). With respect to the Applicant, its clientele are made up of highly sophisticated consumers. The degree of care that can be anticipated when consumers seek expensive financial consulting services can fairly be characterized as high when compared with more casual, everyday purchases such as, e.g., soda. Applicant’s services are not purchased on a whim. Consumers of Applicant’s services will seek out a specific type of consultation services.
To the extent that a customer is likely to exercise a high degree of care when selecting goods or services, the less chance that confusion, mistake, or deception will occur between two or more competing marks. In this instance, the marketplace can be fairly characterized as one in which customers can be expected to exercise a higher degree of care than would be true of most other goods; thus, the likelihood of confusion, mistake, or deception will be minimized.
All of the foregoing factors prove that the potential for confusion between the source of the goods sold under Applicant’s Mark and the source of goods and services sold under the Cited Registration is de minimis, at best. Applicant’s Mark differs from the Cited Registration in commercially significant ways. The nature of Applicant’s goods and services and Registrant’s services suggests very limited, if any, marketplace interface between them.
Therefore, for the above reasons, Applicant respectfully requests that the Examining Attorney withdraw the refusal based on the Cited Registration.
Prior Pending Application
With regard to prior pending application Serial No. 86/362,754 for the mark GEM which seeks registration of the mark for use in connection with an electronic payment processing service or electronic wallet and the software and hardware associated with that service, Applicant contends that the goods and services in the two registrations are sufficiently distinct to avoid a likelihood of confusion, especially in light of the arguments above with regard to the sophistication of the consumers of financial products and the relative common nature of references to “gems” in connection with various financial products. Nevertheless, if the Examining Attorney determines that Serial No. 86/362,754 presents an issue, please be advised that Applicant has contacted the owner of Serial No. 86/362,754 and requested its Consent to Registration of the present mark based upon Applicant’s long prior actual use of the mark. Because such discussions are not complete, if the Examining Attorney believes that there is an issue with this mark, Applicant would request that the present application be suspended pending registration of the mark shown in Serial No. 86/362,754.
Significance of Acronym in the Mark
The Examining Attorney requests an explanation whether “IMPLIED PRIVATE PREMIUM”, “IMPLIED PRIVATE”, “PRIVATE PREMIUM”, “PRIVATE” or “PREMIUM” has any meaning or significance in the industry, or if such wording is a “term of art” within Applicant’s industry. Applicant responds as follows: apart from the meaning created by Applicant, the terms “IMPLIED PRIVATE PREMIUM”, “IMPLIED PRIVATE”, “PRIVATE PREMIUM” or “PREMIUM” do not have any meaning or significance in the industry, nor are the terms “IMPLIED PRIVATE PREMIUM” , “IMPLIED PRIVATE”, “PRIVATE PREMIUM” or “PREMIUM” terms of art within Applicant’s industry.
On the other hand, the term “PRIVATE” is understood in the industry as having its ordinary meaning, i.e., being the opposite of “PUBLIC”, as in “private equity fund,” meaning an equity fund that is privately managed.
“Implied Private Premium,” is a proprietary term coined by Applicant for its financial index analytical tool and the spreadsheet software to calculate that financial index. The term was invented and is used by Applicant in the private equity industry to evaluate the performance of a private equity fund against a public benchmark or index. Applicant created the GEM IMPLIED PRIVATE PREMIUM benchmark to describe an innovative service provided to financial advisors whereby the financial advisor can then show their customer the enhanced performance of private equity funds as compared to public funds using this specially calculated benchmark. GEM IMPLIED PRIVATE PREMIUM has no other significance or meaning in the industry.
As discussed above, “GEM IMPLIED PRIVATE PREMIUM” is a proprietary term for Applicant’s Implied Private Premium benchmark and spreadsheet tool.
The Examining Attorney has also requested “fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services.” In response, Applicant is providing a fact sheet entitled “The GEM Implied Private Premium (GEM IPP)” and a pdf copy of the GEM Implied Private Premium spreadsheet which calculates the IMPLIED PRIVATE PREMIUM (“IPP” for short) benchmark for a hypothetical investor. See Exhibits A and D, attached herewith.
The fact sheet (Exhibit A) contains factual information and an explanation about the services provided under the GEM IMPLIED PRIVATE PREMIUM mark, including what the services are and how they are rendered, salient features, and prospective channels of trade. Specifically, the GEM IMPLIED PRIVATE PREMIUM benchmark calculates the annualized rate of excess return that a private return stream generates over a public market benchmark, where a positive (negative) rate indicates outperformance (underperformance). The fact sheet also includes information on how a financial advisor can incorporate this technique into their investment analysis and show enhanced private equity fund performance to their own customers.
The printout of the spreadsheet itself (Exhibit D) is an example of the spreadsheet software showing the information necessary for and used in a hypothetical analysis of the performance of privately managed financial investments and expressing it as the GEM IMPLIED PRIVATE PREMIUM.
Conclusion
Because the GEM IMPLIED PRIVATE PREMIUM mark does not have any meaning or significance in the industry, and in light of these remarks and the information provided regarding the goods and services, Applicant believes the descriptions of the goods and services are accurate and allowable and believes the mark is in proper condition for allowance and respectfully requests such action.
