| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86524270 |
| LAW OFFICE ASSIGNED | LAW OFFICE 117 |
| MARK SECTION | |
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86524270/large |
| LITERAL ELEMENT | PODIUM |
| 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) | |
|
TRADEMARK APPLICATION Docket No.: 7398.3.8
RESPONSE This response addresses issues raised by the Trademark Examining Attorney in the Office Action dated October 31, 2015. For the reasons set forth below, Applicant respectfully requests reconsideration of the above-referenced application and registration of the mark PODIUM (serial number 86524270).
The Examining Attorney asserts that the marks are similar. See Office Action at 2. The Applicant respectfully disagrees. The points of comparison for a word mark are appearance, sound, meaning or connotation, and commercial impression. DuPont, 476 F.2d at 1361 Similarity of the marks in one respect -- sight, sound, or meaning -- will not automatically result in a finding of likelihood of confusion even if the goods are identical or closely related. Rather, the rule is that taking into account all of the relevant facts of a particular case, similarity as to one factor alone may be sufficient (and thus, may be insufficient) to support a holding that the marks are confusingly similar. In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987). The basic principle in determining confusion between marks is that the marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used. In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985); TMEP § 1207.01. It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark. Id. The transposition of one element of a mark that changes the overall commercial impression weighs toward no likelihood of confusion. In re Hearst Corp., 25 U.S.P.Q.2d 1238, 1239 (Fed. Cir. 1992). Accordingly, the cited mark includes not just the term “PODIUM,” but the term “DATA.” Applicant’s mark, conversely, is for the terms “PODIUM” alone. Applicant respectfully submits that consideration of the cited mark in its entirety distinguishes the Applicant’s mark from the cited mark in appearance, sound, and meaning. Applicant’s mark is not similar in appearance to the cited mark in its entirety. Although Applicant’s mark and the cited mark both begin with “PODIUM,” the remaining element of the cited mark makes the marks dissimilar. The cited mark is, among other things, over half again as long as Applicant’s mark, and includes twice as many distinct words. As such, the distinctly different appearances of the marks are not likely to lead to source confusion. Furthermore, the marks do not sound alike. When reading the mark aloud, “PODIUM” includes three syllables, and is clearly a single word. By contrast, when reading the cited mark aloud, “PODIUM DATA” includes five syllables, and is clearly two words. Thus, although the first word is the same, the overall sound impression of the marks is distinctly different, and unlikely to result in source confusion. The meaning and commercial impression of the marks is also distinct. The addition of the term “DATA” conveys a meaning that is not conveyed by “PODIUM” alone, and would create the impression, in the minds of consumers, that software provided under the “PODIUM DATA” had a particular specialty relating to database management, big data analytics, or the like. Because the appearance, sound, and meaning of the marks are dissimilar, consumers would not likely be confused as to the source of the goods or services.
Additionally, the nature and scope of Applicant’s goods are dissimilar from the goods recited in the registration for the cited mark. 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, 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). Applicant has amended its identification of goods to the following: Providing online non-downloadable software for businesses and other commercial entities to monitor and manage their business reputations and online presence, by capturing and sharing customer feedback and reviews on websites and social media services.
By contrast, the description of goods for the cited mark is as follows: Computer software for big data analytics and database management; computer software for extracting, cleansing, standardizing, and distributing data; computer software for loading, viewing, searching and browsing data from multiple sources; computer software for creating searchable databases of information and data
As an initial matter, the amendment complies with 37 C.F.R. § 2.71(a), which allows an amendment “to clarify or limit, but not to broaden, the identification of goods and/or services.” The original identification was as follows: Providing online non-downloadable software allowing users to track and analyze consumer opinions and trade news about their products, services, and business on websites and social media services for the purpose of monitoring and managing their business reputations and online presence; providing online non-downloadable software enabling users to transmit and exchange reviews of third-party businesses, products, and services across multiple websites and social media services for the purpose of enabling businesses and other commercial entities to monitor and manage their business reputations and online presence.
The amended identification preserves the identification of online non-downloadable software, the purpose relating to businesses and other commercial entities monitoring and managing their business reputations and online presence, and the relation to websites and social media services. What is omitted from the original identification, then, is “allowing users to track and analyze consumer opinions and trade news about their products, services, and business,” and “enabling users to transmit and exchange reviews of third-party businesses, products, and services.” “Capturing and sharing customer feedback and reviews” clarifies and limits without broadening, because it describes actions that would naturally be part of tracking and analyzing consumer opinions. The amendment clarifies that Applicant’s goods enable commercial business reputation monitoring and management, by capturing and sharing customer feedback and reviews. By contrast, “big data analytics and database management,” as described for the cited mark, suggests analyzing and managing any kind of data at a large scale, not capturing and sharing customer feedback. Similarly, “extracting, cleansing, standardizing, and distributing data” includes a “standardizing” step that is not necessarily implied in the concept of sharing customer feedback. Also, “loading, viewing, searching and browsing data from multiple sources” and “creating searchable databases of information and data” both suggests that data must be made searchable, which is not necessarily implied in the concept of capturing and sharing customer feedback and reviews. Additionally, nearly every form of software loads, transmits, stores, transforms (e.g., extracts, cleanses, standardizes, or the like) or displays data in some way. Although the description of goods for the cited mark is described at a high level of abstraction, interpreting it to cover all software that performs any of the cited functions for any type of data would, in essence, reduce the description to little more than “software,” which would not be a sufficiently precise identification of anyone’s goods. Instead, the cited mark should be interpreted as referring to data at a high level of abstraction only. Therefore, goods with the cited mark would likely be directed to people with a need for generalized data analysis or database management that is not met by more customized products, and would not likely be directed to a specialized application such as managing business reputation by capturing and sharing customer feedback and reviews. Accordingly, a customer would not be led to believe that PODIUM software, for managing business reputation, and PODIUM DATA software, for managing data at a higher level of abstraction, are from the same source.
Third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); TMEP 1207.01(d)(iii). Although the term “PODIUM” in Applicant’s mark is similar to a portion of the cited mark, it is also so commonly used that the public will look to other elements to distinguish the source of the goods or services. See, e.g., Registration No. 4855426 for PODIUM, attached hereto as Attachment 1; Registration No. 4844357 for PODIUM, attached hereto as Attachment 2; Registration No. 4439150 for PODIUM, attached hereto as Attachment 3; Registration No. 3153000 for PODIUM, attached hereto as Attachment 4; Registration No. 3193046 for PODIUM, attached hereto as Attachment 5; Registration No. 3076108 for PODIUM, attached hereto as Attachment 6; Registration No. 3615706 for PODIUM, attached hereto as Attachment 7; Registration No. 3807748 for PODIUM, attached hereto as Attachment 8 (all for different registrants). Because “PODIUM” is so commonly used by multiple registrants, the public will naturally look to other elements to distinguish the source of the goods or services. As described above, the other elements, such as the goods, and the appearance, sound, and meaning of the mark, are dissimilar. Thus, there is no likelihood of confusion between Applicant’s mark and the cited mark In view of the foregoing, Applicant respectfully suggests that the mark is in condition for publication and registration on the Principal Register. If there remains any further impediment to registration that could be clarified in a telephone interview, the Trademark Examiner is invited to initiate the same with the undersigned. Respectfully submitted,
__/Brian C. Kunzler/___ Brian C. Kunzler Attorney for Applicant Date: May 2, 2016 50 West Broadway, 10th Floor Salt Lake City, Utah 84101 Telephone (801) 994-4646 Fax (801) 531-1929 |
|
| EVIDENCE SECTION | |
| DESCRIPTION OF EVIDENCE FILE | images of multiple registered trademarks for PODIUM |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION | |
| Providing online non-downloadable software allowing users to track and analyze consumer opinions and trade news about their products, services, and business on websites and social media services for the purpose of monitoring and managing their business reputations and online presence; providing online non-downloadable software enabling users to transmit and exchange reviews of third-party businesses, products, and services across multiple websites and social media services for the purpose of enabling businesses and other commercial entities to monitor and manage their business reputations and online presence | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 042 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Providing online non-downloadable software for businesses and other commercial entities to monitor and manage their business reputations and online presence, by capturing and sharing customer feedback and reviews on websites and social media services. | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Brian C. Kunzler/ |
| SIGNATORY'S NAME | Brian C. Kunzler |
| SIGNATORY'S POSITION | Attorney of record, Utah bar member |
| SIGNATORY'S PHONE NUMBER | 801-994-4646 |
| DATE SIGNED | 05/02/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon May 02 18:12:59 EDT 2016 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20160502181259982266-8652 4270-550d5389d76d45f519b6 592708333fa1d0268df2bfcb9 d6e1f97ce070ee57-N/A-N/A- 20160502180450018750 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
TRADEMARK APPLICATION
Docket No.: 7398.3.8
RESPONSE
This response addresses issues raised by the Trademark Examining Attorney in the Office Action dated October 31, 2015. For the reasons set forth below, Applicant respectfully requests reconsideration of the above-referenced application and registration of the mark PODIUM (serial number 86524270).
Amendment to Identification of Goods
Applicant has amended its identification of goods to the following:
Providing online non-downloadable software for businesses and other commercial entities to monitor and manage their business reputations and online presence, by capturing and sharing customer feedback and reviews on websites and social media services.
There Is No Likelihood of Confusion Between Applicant’s Mark and the Cited Mark.
In refusing registration, the Examining Attorney states that there may be a likelihood of confusion between Applicant’s mark and the mark “PODIUM DATA,” registration number 4745227 (hereinafter “cited mark”).
The test for determining likelihood of confusion consists of several factors, no one factor being necessarily determinative. The factors the Examining Attorney must look at include:
(1) whether the marks in their entireties are similar in appearance, sound, connotation and commercial impression;
(2) whether the goods or services are related;
(3) the similarity or dissimilarity of established trade channels;
(4) whether the purchase will most likely be made on “impulse” or in a “careful, sophisticated” manner;
(5) the number and nature of similar marks in use on similar goods, as well as other factors. See In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). These factors are not listed in the order of merit, and each may play a dominant role, depending on the case. DuPont, 476 F.2d at 1361-62.
Applicant maintains that under this standard, registration of Applicant’s PODIUM mark would not create a likelihood of confusion with the cited mark.
The marks are dissimilar.
The Examining Attorney asserts that the marks are similar. See Office Action at 2. The Applicant respectfully disagrees. The points of comparison for a word mark are appearance, sound, meaning or connotation, and commercial impression. DuPont, 476 F.2d at 1361 Similarity of the marks in one respect -- sight, sound, or meaning -- will not automatically result in a finding of likelihood of confusion even if the goods are identical or closely related. Rather, the rule is that taking into account all of the relevant facts of a particular case, similarity as to one factor alone may be sufficient (and thus, may be insufficient) to support a holding that the marks are confusingly similar. In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987).
The basic principle in determining confusion between marks is that the marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used. In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985); TMEP § 1207.01. It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark. Id. The transposition of one element of a mark that changes the overall commercial impression weighs toward no likelihood of confusion. In re Hearst Corp., 25 U.S.P.Q.2d 1238, 1239 (Fed. Cir. 1992). Accordingly, the cited mark includes not just the term “PODIUM,” but the term “DATA.” Applicant’s mark, conversely, is for the terms “PODIUM” alone. Applicant respectfully submits that consideration of the cited mark in its entirety distinguishes the Applicant’s mark from the cited mark in appearance, sound, and meaning.
Applicant’s mark is not similar in appearance to the cited mark in its entirety. Although Applicant’s mark and the cited mark both begin with “PODIUM,” the remaining element of the cited mark makes the marks dissimilar. The cited mark is, among other things, over half again as long as Applicant’s mark, and includes twice as many distinct words. As such, the distinctly different appearances of the marks are not likely to lead to source confusion.
Furthermore, the marks do not sound alike. When reading the mark aloud, “PODIUM” includes three syllables, and is clearly a single word. By contrast, when reading the cited mark aloud, “PODIUM DATA” includes five syllables, and is clearly two words. Thus, although the first word is the same, the overall sound impression of the marks is distinctly different, and unlikely to result in source confusion.
The meaning and commercial impression of the marks is also distinct. The addition of the term “DATA” conveys a meaning that is not conveyed by “PODIUM” alone, and would create the impression, in the minds of consumers, that software provided under the “PODIUM DATA” had a particular specialty relating to database management, big data analytics, or the like. Because the appearance, sound, and meaning of the marks are dissimilar, consumers would not likely be confused as to the source of the goods or services.
The goods and services are dissimilar
Additionally, the nature and scope of Applicant’s goods are dissimilar from the goods recited in the registration for the cited mark. 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, 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).
Applicant has amended its identification of goods to the following:
Providing online non-downloadable software for businesses and other commercial entities to monitor and manage their business reputations and online presence, by capturing and sharing customer feedback and reviews on websites and social media services.
By contrast, the description of goods for the cited mark is as follows:
Computer software for big data analytics and database management; computer software for extracting, cleansing, standardizing, and distributing data; computer software for loading, viewing, searching and browsing data from multiple sources; computer software for creating searchable databases of information and data
As an initial matter, the amendment complies with 37 C.F.R. § 2.71(a), which allows an amendment “to clarify or limit, but not to broaden, the identification of goods and/or services.” The original identification was as follows:
Providing online non-downloadable software allowing users to track and analyze consumer opinions and trade news about their products, services, and business on websites and social media services for the purpose of monitoring and managing their business reputations and online presence; providing online non-downloadable software enabling users to transmit and exchange reviews of third-party businesses, products, and services across multiple websites and social media services for the purpose of enabling businesses and other commercial entities to monitor and manage their business reputations and online presence.
The amended identification preserves the identification of online non-downloadable software, the purpose relating to businesses and other commercial entities monitoring and managing their business reputations and online presence, and the relation to websites and social media services. What is omitted from the original identification, then, is “allowing users to track and analyze consumer opinions and trade news about their products, services, and business,” and “enabling users to transmit and exchange reviews of third-party businesses, products, and services.” “Capturing and sharing customer feedback and reviews” clarifies and limits without broadening, because it describes actions that would naturally be part of tracking and analyzing consumer opinions.
The amendment clarifies that Applicant’s goods enable commercial business reputation monitoring and management, by capturing and sharing customer feedback and reviews. By contrast, “big data analytics and database management,” as described for the cited mark, suggests analyzing and managing any kind of data at a large scale, not capturing and sharing customer feedback. Similarly, “extracting, cleansing, standardizing, and distributing data” includes a “standardizing” step that is not necessarily implied in the concept of sharing customer feedback. Also, “loading, viewing, searching and browsing data from multiple sources” and “creating searchable databases of information and data” both suggests that data must be made searchable, which is not necessarily implied in the concept of capturing and sharing customer feedback and reviews.
Additionally, nearly every form of software loads, transmits, stores, transforms (e.g., extracts, cleanses, standardizes, or the like) or displays data in some way. Although the description of goods for the cited mark is described at a high level of abstraction, interpreting it to cover all software that performs any of the cited functions for any type of data would, in essence, reduce the description to little more than “software,” which would not be a sufficiently precise identification of anyone’s goods. Instead, the cited mark should be interpreted as referring to data at a high level of abstraction only. Therefore, goods with the cited mark would likely be directed to people with a need for generalized data analysis or database management that is not met by more customized products, and would not likely be directed to a specialized application such as managing business reputation by capturing and sharing customer feedback and reviews. Accordingly, a customer would not be led to believe that PODIUM software, for managing business reputation, and PODIUM DATA software, for managing data at a higher level of abstraction, are from the same source.
Third party registrations diminish the likelihood of confusion
Third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); TMEP 1207.01(d)(iii). Although the term “PODIUM” in Applicant’s mark is similar to a portion of the cited mark, it is also so commonly used that the public will look to other elements to distinguish the source of the goods or services. See, e.g., Registration No. 4855426 for PODIUM, attached hereto as Attachment 1; Registration No. 4844357 for PODIUM, attached hereto as Attachment 2; Registration No. 4439150 for PODIUM, attached hereto as Attachment 3; Registration No. 3153000 for PODIUM, attached hereto as Attachment 4; Registration No. 3193046 for PODIUM, attached hereto as Attachment 5; Registration No. 3076108 for PODIUM, attached hereto as Attachment 6; Registration No. 3615706 for PODIUM, attached hereto as Attachment 7; Registration No. 3807748 for PODIUM, attached hereto as Attachment 8 (all for different registrants).
Because “PODIUM” is so commonly used by multiple registrants, the public will naturally look to other elements to distinguish the source of the goods or services. As described above, the other elements, such as the goods, and the appearance, sound, and meaning of the mark, are dissimilar. Thus, there is no likelihood of confusion between Applicant’s mark and the cited mark
In view of the foregoing, Applicant respectfully suggests that the mark is in condition for publication and registration on the Principal Register. If there remains any further impediment to registration that could be clarified in a telephone interview, the Trademark Examiner is invited to initiate the same with the undersigned.
Respectfully submitted,
__/Brian C. Kunzler/___
Brian C. Kunzler
Attorney for Applicant
Date: May 2, 2016
50 West Broadway, 10th Floor
Salt Lake City, Utah 84101
Telephone (801) 994-4646
Fax (801) 531-1929