| 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 | 86767311 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION | |
| MARK | REDHAWK |
| 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) | |
|
RESPONSE TO OFFICE ACTION MAILED JANUARY 13, 2016 The Government of the United States as represented by the National Security Agency (“Applicant”) responds as follows to the Office Action mailed January 13, 2016 and issued in connection with application serial number 86/767,311 for the mark REDHAWK as follows. I. Likelihood of Confusion The Examining Attorney has refused registration of the mark REDHAWK by Applicant on the basis that there is allegedly a likelihood of confusion between Applicant’s mark and United States Trademark Registration No. 4,462,040 (“the Cited Registration”). The Examining Attorney bases her conclusion on the following factors: 1. Comparison of the marks; and 2. Comparison of the goods. Applicant respectfully requests that the Examining Attorney withdraw the refusal because no likelihood of confusion exists between applicant’s mark and the Cited Registration as discussed below. A. Dissimilarity of the Marks In determining whether a likelihood of confusion exists, consideration must be made of the similarity between the marks. Applicant’s mark consists of the term “redhawk” in block letter form. The Cited Registration consists of the terms “authority” and “redhawk.” The Examining Attorney notes that Applicant’s mark and registered mark both feature the term “REDHAWK” and recognizes that Applicant’s mark and the Cited Registration differ in that the latter begins with the term “AUTHORITY.” Although both marks include the term “REDHAWK,” the use of identical, even dominant, words in common does not automatically mean that the two marks are similar. Gen. Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627 (8th Cir., 1987), 3 U.S.P.Q.2d 1442. The individual components of the mark should not be analyzed in a piecemeal manner. Jet, Inc. v. Sewage Aeration 165 F.3d 419, 422 (6th Cir., 1999), 49 U.S.P.Q.2d 1355. The anti-dissection rule prohibits splitting a mark into its component parts and then comparing the parts of the conflicting marks to determine whether a likelihood of confusion exists. Little Caesar Enterprises, Inc., v. Pizza Caesar Inc., 834 F.2d 568, 570 (6th Cir., 1987) 4 U.S.P.Q. 1942 (citing McCarthy, Trademark and Unfair Competition §23.22 (2d.ed.,1984)). As noted above, the Examining Attorney recognizes that the marks differ in that Applicant’s mark does not include the term “AUTHORITY”. Despite this recognition, however, the Examining Attorney focuses only on the term “REDHAWK” stating that: Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registered mark, and there is no other wording to distinguish it from the registered mark. Applicant’s mark is REDHAWK and the Cited Registration is AUTHORITY REDHAWK. Additional wording is provided by the Cited Registration to distinguish the marks. Comparing marks for similarity, it is improper to focus only on the prominent features of the mark. See Little Caesar Enterprises, Inc., 834 F.2d at 572 (holding despite prominent component shared by Pizza Caesar USA and Little Caesars, the difference in sound and appearance made them dissimilar). Given the inclusion of the word AUTHORITY in the Cited Registration, Applicant’s mark can be distinguished from the Cited Registration. The Examining Attorney concludes that the overall commercial impression of Applicant’s mark is “highly similar’ to the Cited Registration. Given that Applicant’s mark does not, however, include the term “authority,” each mark creates a different commercial impression. It is noted that the Cited Registration recites software for law enforcement purposes and for use by law enforcement officers. The term “authority” is defined as “the power to give orders or make decisions.” www.Merriam-webster.com/dictionary/authority. Thus, the mark of the cited Registration provides a commercial impression associated with law enforcement or others given the power to issue orders. Applicant’s mark does not include any term that would create a commercial impression related to law enforcement. The marks therefore create distinct commercial impressions. B. Dissimilarity of the Goods The goods associated with Applicant’s mark are: computer software for the development, deployment and management of real-time software radio applications. The goods listed in the Cited Registration are: computer software for connecting to and accessing federal and state database networks of information for law enforcement purposes; computer software for connecting law enforcement officers and personnel for purposes of sharing information and data and for communications; computer software for the collection, organizing transmission, receiving, and sharing of data and information. Applicant’s software provides a platform including tools to be utilized by software developers to create software applications. The software applications created by those developers are then used in connection with additional software to provide a resulting application that can be used in radio frequency (RF) collection. If the software application created by the developer is ultimately release by the developer, it is likely to be released under an entirely different trademark selected by the developer. In citing documentation regarding Applicant’s software, the Examining Attorney notes: Applicant’s software features “a set of programs to manage distributed deployment of software applications” and “tools for introspecting a running REDHAWK system”, which “standardizes data interfaces, hardware management, and configuration management” which in turn, “reduces integration cost for both legacy capabilities and future development.” This description supports Applicant’s assertion that Applicant’s goods associated with the mark REDHAWK is a development tool, not a data collection tool. Given the above description, however, the Examining Attorney concludes: Based on the managing, introspecting, standardizing and integrating functions of applicant’s goods, the goods appear to fit within the meaning of “computer software for the collection, organizing, transmission, receiving and sharing of data and information” Thus, drawing on the terms “managing”, “introspecting”, “standardizing” and “integrating” leads the Examining Attorney to conclude that Applicants goods are “related to the registrant’s computer software.” The Examining Attorney’s conclusions are unsupported and Applicant requests clarification of such conclusions. For example, what is the basis for the Examining Attorney’s assertion that “managing the distributed deployment of software applications” is related to the “collection, organizing, transmission, receiving and sharing of data and information?” Or, in what manner is the “introspecting a running REDHAWK system” related to the “collection, organizing, transmission, receiving and sharing of data and information?” Beyond that fact that Applicant’s goods and Cited Registration both relate to computer software, Applicant’s software “for the development, deployment and management of real-time software radio applications” is unrelated to the goods cited in the Registration. Applicant’s development tool does not provide for the collection, organization, transmission, receipt of or sharing of data and information. Applicant’s development tool is simply a platform that provides tools for software developers to create applications. Although both marks are used in connection with software, the software associated with Applicant’s mark is vastly different than the software associated with the Cited Registration. Given the dissimilarity between the marks and the dissimilarity between the goods associated with Applicant’s mark and the goods identified in the Cited Registration, Applicant asserts that no likelihood of confusion exists between the marks and requests that the refusal to register be withdrawn. II. Examining Attorney’s Request for Additional Information Applicant responds to the Examining Attorney’s request for additional information as follows. 1) Prospective customers of Applicant’s goods. Prospective customers of Applicant’s goods are not non-technical end users but rather are technically skilled software developers, in particular, developers desiring to create an RF collection system. The tooling provided by Applicant’s software does not merely display textual information for consumption by non-technical end users but rather standardizes software development allowing developers to reuse code and signal processing algorithms. 2) Channels of trade for Applicant’s goods. Applicant’s open source software is available via the Github website and is designed for use by experienced software developers. The REDHAWK software runs on a Linux-based operating system. Developers having a Github account, may access and download the software. 3) How and to what extent, Applicant’s goods involve the collection, organizing, transmission, receiving and sharing of data and information. As discussed above, Applicant’s software does not provide for the collection, organizing, transmission, receiving and sharing of information by non-technical individuals. Rather, Applicant’s software provides an interactive development environment and advance tooling that permits technically-skilled software developers to create, integrate and manage independent blocks of code written in high-level programming languages. Applicant respectfully requests that the Examining Attorney’s refusal to register its mark be withdrawn. If the Examining Attorney has any questions regarding this matter, the Examining Attorney is invited to contact the attorney identified below. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Paige Kitzinger/ |
| SIGNATORY'S NAME | Paige Kitzinger |
| SIGNATORY'S POSITION | Attorney of Record, IL bar member |
| SIGNATORY'S PHONE NUMBER | 443-634-4351 |
| DATE SIGNED | 07/12/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Jul 12 12:26:22 EDT 2016 |
| TEAS STAMP | USPTO/ROA-X.XX.XXX.XX-201 60712122622981728-8676731 1-550784df81bc815c2f48048 709c27d8de9934fcfd727742c 92fcfeffd27fd993ca-N/A-N/ A-20160712102955595780 |
| 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) |
RESPONSE TO OFFICE ACTION MAILED JANUARY 13, 2016
The Government of the United States as represented by the National Security Agency (“Applicant”) responds as follows to the Office Action mailed January 13, 2016 and issued in connection with application serial number 86/767,311 for the mark REDHAWK as follows.
I. Likelihood of Confusion
The Examining Attorney has refused registration of the mark REDHAWK by Applicant on the basis that there is allegedly a likelihood of confusion between Applicant’s mark and United States Trademark Registration No. 4,462,040 (“the Cited Registration”). The Examining Attorney bases her conclusion on the following factors:
1. Comparison of the marks; and
2. Comparison of the goods.
Applicant respectfully requests that the Examining Attorney withdraw the refusal because no likelihood of confusion exists between applicant’s mark and the Cited Registration as discussed below.
A. Dissimilarity of the Marks
In determining whether a likelihood of confusion exists, consideration must be made of the similarity between the marks. Applicant’s mark consists of the term “redhawk” in block letter form. The Cited Registration consists of the terms “authority” and “redhawk.” The Examining Attorney notes that Applicant’s mark and registered mark both feature the term “REDHAWK” and recognizes that Applicant’s mark and the Cited Registration differ in that the latter begins with the term “AUTHORITY.”
Although both marks include the term “REDHAWK,” the use of identical, even dominant, words in common does not automatically mean that the two marks are similar. Gen. Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627 (8th Cir., 1987), 3 U.S.P.Q.2d 1442. The individual components of the mark should not be analyzed in a piecemeal manner. Jet, Inc. v. Sewage Aeration 165 F.3d 419, 422 (6th Cir., 1999), 49 U.S.P.Q.2d 1355. The anti-dissection rule prohibits splitting a mark into its component parts and then comparing the parts of the conflicting marks to determine whether a likelihood of confusion exists. Little Caesar Enterprises, Inc., v. Pizza Caesar Inc., 834 F.2d 568, 570 (6th Cir., 1987) 4 U.S.P.Q. 1942 (citing McCarthy, Trademark and Unfair Competition §23.22 (2d.ed.,1984)). As noted above, the Examining Attorney recognizes that the marks differ in that Applicant’s mark does not include the term “AUTHORITY”. Despite this recognition, however, the Examining Attorney focuses only on the term “REDHAWK” stating that:
Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registered mark, and there is no other wording to distinguish it from the registered mark.
Applicant’s mark is REDHAWK and the Cited Registration is AUTHORITY REDHAWK. Additional wording is provided by the Cited Registration to distinguish the marks. Comparing marks for similarity, it is improper to focus only on the prominent features of the mark. See Little Caesar Enterprises, Inc., 834 F.2d at 572 (holding despite prominent component shared by Pizza Caesar USA and Little Caesars, the difference in sound and appearance made them dissimilar). Given the inclusion of the word AUTHORITY in the Cited Registration, Applicant’s mark can be distinguished from the Cited Registration. The Examining Attorney concludes that the overall commercial impression of Applicant’s mark is “highly similar’ to the Cited Registration. Given that Applicant’s mark does not, however, include the term “authority,” each mark creates a different commercial impression. It is noted that the Cited Registration recites software for law enforcement purposes and for use by law enforcement officers. The term “authority” is defined as “the power to give orders or make decisions.” www.Merriam-webster.com/dictionary/authority. Thus, the mark of the cited Registration provides a commercial impression associated with law enforcement or others given the power to issue orders. Applicant’s mark does not include any term that would create a commercial impression related to law enforcement. The marks therefore create distinct commercial impressions.
B. Dissimilarity of the Goods
The goods associated with Applicant’s mark are:
computer software for the development, deployment and management of real-time software radio applications.
The goods listed in the Cited Registration are:
computer software for connecting to and accessing federal and state database networks of information for law enforcement purposes; computer software for connecting law enforcement officers and personnel for purposes of sharing information and data and for communications; computer software for the collection, organizing transmission, receiving, and sharing of data and information.
Applicant’s software provides a platform including tools to be utilized by software developers to create software applications. The software applications created by those developers are then used in connection with additional software to provide a resulting application that can be used in radio frequency (RF) collection. If the software application created by the developer is ultimately release by the developer, it is likely to be released under an entirely different trademark selected by the developer.
In citing documentation regarding Applicant’s software, the Examining Attorney notes:
Applicant’s software features “a set of programs to manage distributed deployment of software applications” and “tools for introspecting a running REDHAWK system”, which “standardizes data interfaces, hardware management, and configuration management” which in turn, “reduces integration cost for both legacy capabilities and future development.”
This description supports Applicant’s assertion that Applicant’s goods associated with the mark REDHAWK is a development tool, not a data collection tool. Given the above description, however, the Examining Attorney concludes:
Based on the managing, introspecting, standardizing and integrating functions of applicant’s goods, the goods appear to fit within the meaning of “computer software for the collection, organizing, transmission, receiving and sharing of data and information”
Thus, drawing on the terms “managing”, “introspecting”, “standardizing” and “integrating” leads the Examining Attorney to conclude that Applicants goods are “related to the registrant’s computer software.” The Examining Attorney’s conclusions are unsupported and Applicant requests clarification of such conclusions. For example, what is the basis for the Examining Attorney’s assertion that “managing the distributed deployment of software applications” is related to the “collection, organizing, transmission, receiving and sharing of data and information?” Or, in what manner is the “introspecting a running REDHAWK system” related to the “collection, organizing, transmission, receiving and sharing of data and information?” Beyond that fact that Applicant’s goods and Cited Registration both relate to computer software, Applicant’s software “for the development, deployment and management of real-time software radio applications” is unrelated to the goods cited in the Registration. Applicant’s development tool does not provide for the collection, organization, transmission, receipt of or sharing of data and information. Applicant’s development tool is simply a platform that provides tools for software developers to create applications. Although both marks are used in connection with software, the software associated with Applicant’s mark is vastly different than the software associated with the Cited Registration.
Given the dissimilarity between the marks and the dissimilarity between the goods associated with Applicant’s mark and the goods identified in the Cited Registration, Applicant asserts that no likelihood of confusion exists between the marks and requests that the refusal to register be withdrawn.
II. Examining Attorney’s Request for Additional Information
Applicant responds to the Examining Attorney’s request for additional information as follows.
1) Prospective customers of Applicant’s goods.
Prospective customers of Applicant’s goods are not non-technical end users but rather are technically skilled software developers, in particular, developers desiring to create an RF collection system. The tooling provided by Applicant’s software does not merely display textual information for consumption by non-technical end users but rather standardizes software development allowing developers to reuse code and signal processing algorithms.
2) Channels of trade for Applicant’s goods.
Applicant’s open source software is available via the Github website and is designed for use by experienced software developers. The REDHAWK software runs on a Linux-based operating system. Developers having a Github account, may access and download the software.
3) How and to what extent, Applicant’s goods involve the collection, organizing, transmission, receiving and sharing of data and information.
As discussed above, Applicant’s software does not provide for the collection, organizing, transmission, receiving and sharing of information by non-technical individuals. Rather, Applicant’s software provides an interactive development environment and advance tooling that permits technically-skilled software developers to create, integrate and manage independent blocks of code written in high-level programming languages.
Applicant respectfully requests that the Examining Attorney’s refusal to register its mark be withdrawn. If the Examining Attorney has any questions regarding this matter, the Examining Attorney is invited to contact the attorney identified below.