Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86549108 BALANCE(Standard Characters, see http://uspto.report/TM/86549108/mark.png) has been amended as follows:

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

Applicant respectfully submits the following arguments for reconsideration of the Section 2(d) Refusal – Likelihood of Confusion:

 

Section 2(d) Refusal – Likelihood of Confusion

 

Applicant submitted the Application without legal assistance and with the erroneous belief that the description must be as broad as possible to afford the protection sought.  In doing so, Applicant’s identification of the goods/services was fatally vague and over-encompassing.  Applicant’s initial identification of goods/services is:

 

Downloadable mobile applications for time, task and project management, task and project tracking, resource management, document management, customer relationship management, business management, time, costs and financial tracking, expense and receipt submission, electronic invoice submission, employee performance tracking and rating, for transmission and receipt of data, images, and messages used in sharing information, collaboration and interactive discussions, including sharing information, collaboration and interactive discussions for social networking purposes, for sending and receiving electronic messages, and uploading and transferring files on a subscription basis

 

Providing temporary use of a non-downloadable web application for time, task and project management, task and project tracking, resource management, document management, customer relationship management, business management, time, costs and financial tracking, expense and receipt submission, electronic invoice submission, employee performance tracking and rating, for transmission and receipt of data, images, and messages used in sharing information, collaboration and interactive discussions, including sharing information, collaboration and interactive discussions for social networking purposes, for sending and receiving electronic messages, and uploading and transferring files on a subscription basis

 

Applicant wishes to narrow the foregoing description(s) and replace them with the following:

 

Downloadable mobile application for use of task and project management, collaboration, task time tracking, expense and receipt submission, and corporate invoice creation designed for businesses that sell or track time.

 

Providing temporary use of non-downloadable web application for use of task and project management, collaboration, task time tracking, expense and receipt submission, and corporate invoice creation for businesses that sell or track time.

 

Applicant contends that much of the confusion noted in the USPTO’s Section 2(d) Refusal stems from the overly broad description of goods/services.  When parsed down to the appropriate description, the fundamental differences between Applicant’s product/service and Registrant’s product/service are apparent.

           

Comparison of the Marks

 

While Applicant’s proposed mark contains the same word as Registrant’s mark, Applicant argues that this is where the similarities end.  Applicant’s services do not provide for cloud computing or analyzing data, rather, it is a simple tool for tracking time and generating invoices.  Applicant’s mark clearly relates to product/services that are a temporary web application and/or a downloadable mobile application. Registrant’s mark is associated with product/services that are restricted to cloud computing financial analytics for the education industry.  Although Applicant’s mark is similar in appearance and sound, it is noticeably different in terms of connotation and commercial impression and, as such, a comparison of the marks in their entirety should favor granting the application. 

 

Applicant proposes that the word “balance” has no inherent association with cloud computing, analyzing business data, timekeeping or invoicing.  Likewise, the word “balance” does not inherently relate to the education industry.  Accordingly, the work itself cannot cause confusion; rather, the products/services must be the source of the confusion – if any.  Indeed, the marks themselves are not similar in terms of connotation and commercial impression when compared for likelihood of confusion pursuant to test set forth in In re E. I. du Pont de Nemours & Co., 476 F. 3d 1357, 177 USPQ 563 (C.C.P.A. 1973).

 

Lastly, Registrant’s mark is tied with the company’s name.  The websites associated with the Registrant’s are those identified with the owner of the mark – i.e. Allovue.  Indeed, the word “balance” is never viewed on those websites without the Registrant’s name.  The product is more recognizable as “Allovue Balance” than simply “Balance.”  In other words, Registrant’s standard character mark is recognizable as Allovue Balance, rather than Balance.  Although extrinsic in nature, this distinction is relevant to negate the likelihood of confusion of the marks.

 

            Comparison of Goods/Services

 

Only in the broadest interpretation could it be said that timekeeping is related to accounting; particularly when the accounting service is constrained and restricted to the education industry.  Registrant’s description of goods/services relegates it to the education industry – a matter in which the consumer is made distinctly aware by the mark’s description and the Registrant’s advertised services. 

 

The services provided are demonstrably different as well.  For instance, Registrant provides software for use in budgeting and financial analytics for the education industry.  Merriam-Webster defines “analytics” as “the method of logical analysis.”  (http://www.merriam-webster.com/dictionary/analytics.)  Accordingly, Registrant offers software to assist in logically analyzing internal finances of entities within the education industry.  Likewise, Registrant’s goods/service is only offered via cloud computing.  Merriam-Webster defines “cloud computing” as “the practice of storing regularly used computer data on multiple servers that can be accessed through the Internet.”  (http://www.merriam-webster.com/dictionary/cloud%20computing.)  It follows that Registrant’s goods/services offer software, accessed through the Internet, to assist in logically analyzing the internal finances of entities within the education industry.

 

On the contrary, Applicant’s goods/services are not relegated to a specific, finite and insular industry – i.e. its services are available to the world.  Another relevant contrast is the sub-categories that make up the goods/services offered: Applicant offers a downloadable mobile application (or temporary website application) for time-tracking and invoicing services.  This is an operation that is primarily aimed towards timekeeping for purposes of sending invoices to third parties.  Applicant’s software is not based in the cloud, but something a client must either download to a mobile device or log on to via Applicant’s webpage.  Applicant’s goods/services do not offer the ability to analyze data, but rather allow the user to input his/her time and expenses and then generate invoices for third parties.  Lastly, Applicant’s goods/services are not catered, structured or refined for any industry, but rather work across all industries that sell time. 

 

EVIDENCE
Evidence in the nature of 1) Snapshots of the good/service from the webpage of Applicant 2) Snapshots of the internal pages of the good/service app in beta testing has been attached.
Original PDF file:
evi_17283070-20150709151802269959_._Balance_Shaphots-Webpage.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_17283070-20150709151802269959_._Balance_Snapshots.pdf
Converted PDF file(s) ( 17 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable mobile applications for time, task and project management, task and project tracking, resource management, document management, customer relationship management, business management, time, costs and financial tracking, expense and receipt submission, electronic invoice submission, employee performance tracking and rating, for transmission and receipt of data, images, and messages used in sharing information, collaboration and interactive discussions, including sharing information, collaboration and interactive discussions for social networking purposes, for sending and receiving electronic messages, and uploading and transferring files on a subscription basis
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Downloadable mobile applications for time, task and project management, task and project tracking, resource management, document management, customer relationship management, business management, time, costs and financial tracking, expense and receipt submission, electronic invoice submission, employee performance tracking and rating, for transmission and receipt of data, images, and messages used in sharing information, collaboration and interactive discussions, including sharing information, collaboration and interactive discussions for social networking purposes, for sending and receiving electronic messages, and uploading and transferring files on a subscription basis; Downloadable mobile application for use of task and project management, collaboration, task time tracking, expense and receipt submission, and company invoice creation designed for businesses that sell or track time.Class 009 for Downloadable mobile application for use of task and project management, collaboration, task time tracking, expense and receipt submission, and company invoice creation designed for businesses that sell or track time.
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing temporary use of a non-downloadable web application for time, task and project management, task and project tracking, resource management, document management, customer relationship management, business management, time, costs and financial tracking, expense and receipt submission, electronic invoice submission, employee performance tracking and rating, for transmission and receipt of data, images, and messages used in sharing information, collaboration and interactive discussions, including sharing information, collaboration and interactive discussions for social networking purposes, for sending and receiving electronic messages, and uploading and transferring files on a subscription basis
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Providing temporary use of a non-downloadable web application for time, task and project management, task and project tracking, resource management, document management, customer relationship management, business management, time, costs and financial tracking, expense and receipt submission, electronic invoice submission, employee performance tracking and rating, for transmission and receipt of data, images, and messages used in sharing information, collaboration and interactive discussions, including sharing information, collaboration and interactive discussions for social networking purposes, for sending and receiving electronic messages, and uploading and transferring files on a subscription basis; Providing temporary use of non-downloadable web application for use of task and project management, collaboration, task time tracking, expense and receipt submission, and company invoice creation for businesses that sell or track time.Class 042 for Providing temporary use of non-downloadable web application for use of task and project management, collaboration, task time tracking, expense and receipt submission, and company invoice creation for businesses that sell or track time.
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /kalabhoney/     Date: 07/09/2015
Signatory's Name: Kalab Honey
Signatory's Position: Attorney

Signatory's Phone Number: 949-720-7030

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 86549108
Internet Transmission Date: Thu Jul 09 15:36:39 EDT 2015
TEAS Stamp: USPTO/ROA-XXX.X.XX.XX-201507091536394318
55-86549108-5308ba626cce7231acd3ef9ce136
c3826e1d357ed6252489586a1478ad87b66ca4d-
N/A-N/A-20150709151802269959