| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86476110 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION | |
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86476110/large |
| LITERAL ELEMENT | XPLORE |
| 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) | |
|
Applicant Eclipse Gas & Power Limited (“Applicant”) submits this Office Action Response through its undersigned counsel. Applicant has applied for the mark XPLORE (“Applicant’s Mark”) for “industrial analysis and research services relating to the energy industry, including development of computer analytical tools and websites for the energy industry” and “provision of business information relating to the energy market; energy market analytics” in Class 35. In the Office Action, the Examiner issued a “likelihood of confusion” objection and took the position that Applicant’s Mark is likely to be confused with third-party registrations for (1) XPLORE SOFTWARE CONSULTING covering “value-added reseller services, namely, distributorship services featuring computer software” and “computer software development; IT consulting services” in Classes 35 and 42, respectively; and (2) OPEN TO EXPLORE covering “analysis for oil research; mapping; providing technology information in the oil and gas industry; providing wellbore mapping services; research in the field of natural resources; research in the field of geology and hydrocarbon production; technology consultation and research in the field of geology and hydrocarbon production.” Respectfully, for the reasons discussed below, there is no possibility of confusion in connection with either of these cited registrations, much less a likelihood, and the confusion objections should be withdrawn in full. I. Applicant’s Mark And The Cited XPLORE SOFTWARE CONSULTING Mark Are Not Confusingly Similar. The radically different covered services in Applicant’s application and the Cited Registration are sufficient standing alone to eliminate any likelihood of confusion. The Cited Registration covers the distribution and development of computer software and IT consulting. Because this Cited Registration does not relate in any way to the energy industry, it is unreasonable to believe that these services are in any way confusingly similar to the covered services in Applicant’s Mark. Instead, without question, the most reasonable conclusion is that the parties’ marks are not likely to be confused as a result of the very different covered services being offered in connection with the respective marks. A likelihood of confusion is also eliminated based on differences between the covered marks. When determining a likelihood of confusion, it is well settled that a mark should not be dissected into component parts and then compared to the potentially conflicting mark, for it is the impression the mark creates as a whole that is important, and not the individual parts thereof. See, e.g., Genesco Inc. v. Martz, 66 U.S.P.Q.2d 1260, 1269 (T.T.A.B. 2003) (“[i]t is well settled that marks must be considered in their entireties, not dissected or split into component parts and each part compared with other parts. This is so because it is the entire mark which is perceived by the purchasing public”). When compared in their entireties, and especially when one keeps in mind the extremely different covered services, Applicant’s Mark XPLORE and the Registered Mark XPLORE SOFTWARE CONSULTING are not similar in terms of appearance. Applicant’s Mark contains only the term “XPLORE,” while the Cited Registration contains XPLORE and ends with the phrase “SOFTWARE CONSULTING,” a phrase that is not shared in any way by Applicant’s Mark. Regardless of whether the first term in each mark sounds similar, the differences between the two marks result in the most reasonable conclusion being that Applicant’s Mark and the Cited Registration are not confusingly similar. Additionally, a USPTO database search reveals many other registrations and applications containing solely the term “XPLORE.” The list below includes registered and allowed XPLORE marks, and just as these marks are not confusingly similar to Applicant’s mark (and were correctly not cited against Applicant), the XPLORE SOFTWARE CONSULTING mark is also not confusingly similar. These other marks include the following: XPLORE (Reg. No. 3245059) for ….” designing, developing and implementing software…”; XPLORE (Reg. No. 4429285) for …” providing on-line computer games”; XPLORE (Reg. No. 4165564) for “Business strategic planning services”; XPLORE (Ser. No. 85/833,713) for “personal computer software…” and “providing searchable databases of business data and information of others…” and XPLORE (Reg. No. 3456910) for “providing non-downloadable software in the nature of data analysis platforms…” The fact that these other third-party XPLORE registrations are already co-existing on the federal register firmly indicates that the Cited Registration is not sufficiently strong to preclude Applicant’s registration of its mark. This is not a situation where a single third-party owns a diverse family of XPLORE marks that is sufficiently strong to deny registration of Applicant’s Mark. The exact opposite is the case here. II. Applicant’s Mark And The Cited OPEN TO EXPLORE Mark Are Not Confusingly Similar. When we compare Applicant’s Mark XPLORE and the Registered Mark OPEN TO EXPLORE, they are not similar in terms of sight, sound, meaning, or overall commercial impression. The fact that this Cited Registration does not include the stylized XPLORE spelling is enough standing alone to warrant the confusion objection being withdrawn. The Cited Mark also begins with OPEN TO that is not shared in any way by Applicant’s Mark. It is obvious that the parties’ marks are dissimilar rather than similar when viewed in their entireties in terms of appearance, connotation, and overall commercial impression. Although there are other reasons as well why the confusion objection should be withdrawn, the Cited Registration’s lack of the XPLORE spelling and utilization of the much more common EXPLORE spelling is enough to warrant withdrawal of this objection. CONCLUSION
Respectfully, for all of the reasons above, the likelihood of confusion objections should be withdrawn and this is not a close call. Neither of the Registrations should be cited against the instant Application. Applicant respectfully requests that the objections be withdrawn and the application published for third-party opposition.
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| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Adam D. Siegartel/ |
| SIGNATORY'S NAME | Adam D. Siegartel |
| SIGNATORY'S POSITION | Attorney of Record, NY bar member |
| SIGNATORY'S PHONE NUMBER | 212-969-3000 |
| DATE SIGNED | 10/05/2015 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Oct 05 17:40:42 EDT 2015 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XX- 20151005174042822646-8647 6110-540988542d37b3d1a8e7 d4f4d8f50e5df688274ebc521 8cb48c50b618c88c1451e9-N/ A-N/A-2015100517283717808 8 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
Applicant Eclipse Gas & Power Limited (“Applicant”) submits this Office Action Response through its undersigned counsel. Applicant has applied for the mark XPLORE (“Applicant’s Mark”) for “industrial analysis and research services relating to the energy industry, including development of computer analytical tools and websites for the energy industry” and “provision of business information relating to the energy market; energy market analytics” in Class 35. In the Office Action, the Examiner issued a “likelihood of confusion” objection and took the position that Applicant’s Mark is likely to be confused with third-party registrations for (1) XPLORE SOFTWARE CONSULTING covering “value-added reseller services, namely, distributorship services featuring computer software” and “computer software development; IT consulting services” in Classes 35 and 42, respectively; and (2) OPEN TO EXPLORE covering “analysis for oil research; mapping; providing technology information in the oil and gas industry; providing wellbore mapping services; research in the field of natural resources; research in the field of geology and hydrocarbon production; technology consultation and research in the field of geology and hydrocarbon production.”
Respectfully, for the reasons discussed below, there is no possibility of confusion in connection with either of these cited registrations, much less a likelihood, and the confusion objections should be withdrawn in full.
I. Applicant’s Mark And The Cited XPLORE SOFTWARE CONSULTING Mark Are Not Confusingly Similar.
The radically different covered services in Applicant’s application and the Cited Registration are sufficient standing alone to eliminate any likelihood of confusion. The Cited Registration covers the distribution and development of computer software and IT consulting. Because this Cited Registration does not relate in any way to the energy industry, it is unreasonable to believe that these services are in any way confusingly similar to the covered services in Applicant’s Mark. Instead, without question, the most reasonable conclusion is that the parties’ marks are not likely to be confused as a result of the very different covered services being offered in connection with the respective marks.
A likelihood of confusion is also eliminated based on differences between the covered marks. When determining a likelihood of confusion, it is well settled that a mark should not be dissected into component parts and then compared to the potentially conflicting mark, for it is the impression the mark creates as a whole that is important, and not the individual parts thereof. See, e.g., Genesco Inc. v. Martz, 66 U.S.P.Q.2d 1260, 1269 (T.T.A.B. 2003) (“[i]t is well settled that marks must be considered in their entireties, not dissected or split into component parts and each part compared with other parts. This is so because it is the entire mark which is perceived by the purchasing public”).
When compared in their entireties, and especially when one keeps in mind the extremely different covered services, Applicant’s Mark XPLORE and the Registered Mark XPLORE SOFTWARE CONSULTING are not similar in terms of appearance. Applicant’s Mark contains only the term “XPLORE,” while the Cited Registration contains XPLORE and ends with the phrase “SOFTWARE CONSULTING,” a phrase that is not shared in any way by Applicant’s Mark. Regardless of whether the first term in each mark sounds similar, the differences between the two marks result in the most reasonable conclusion being that Applicant’s Mark and the Cited Registration are not confusingly similar.
Additionally, a USPTO database search reveals many other registrations and applications containing solely the term “XPLORE.” The list below includes registered and allowed XPLORE marks, and just as these marks are not confusingly similar to Applicant’s mark (and were correctly not cited against Applicant), the XPLORE SOFTWARE CONSULTING mark is also not confusingly similar. These other marks include the following:
XPLORE (Reg. No. 3245059) for ….” designing, developing and implementing software…”;
XPLORE (Reg. No. 4429285) for …” providing on-line computer games”;
XPLORE (Reg. No. 4165564) for “Business strategic planning services”;
XPLORE (Ser. No. 85/833,713) for “personal computer software…” and “providing searchable databases of business data and information of others…” and
XPLORE (Reg. No. 3456910) for “providing non-downloadable software in the nature of data analysis platforms…”
The fact that these other third-party XPLORE registrations are already co-existing on the federal register firmly indicates that the Cited Registration is not sufficiently strong to preclude Applicant’s registration of its mark. This is not a situation where a single third-party owns a diverse family of XPLORE marks that is sufficiently strong to deny registration of Applicant’s Mark. The exact opposite is the case here.
II. Applicant’s Mark And The Cited OPEN TO EXPLORE Mark Are Not Confusingly Similar.
When we compare Applicant’s Mark XPLORE and the Registered Mark OPEN TO EXPLORE, they are not similar in terms of sight, sound, meaning, or overall commercial impression. The fact that this Cited Registration does not include the stylized XPLORE spelling is enough standing alone to warrant the confusion objection being withdrawn. The Cited Mark also begins with OPEN TO that is not shared in any way by Applicant’s Mark. It is obvious that the parties’ marks are dissimilar rather than similar when viewed in their entireties in terms of appearance, connotation, and overall commercial impression. Although there are other reasons as well why the confusion objection should be withdrawn, the Cited Registration’s lack of the XPLORE spelling and utilization of the much more common EXPLORE spelling is enough to warrant withdrawal of this objection.
CONCLUSION
Respectfully, for all of the reasons above, the likelihood of confusion objections should be withdrawn and this is not a close call. Neither of the Registrations should be cited against the instant Application. Applicant respectfully requests that the objections be withdrawn and the application published for third-party opposition.