| 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 | 86770357 |
| LAW OFFICE ASSIGNED | LAW OFFICE 116 |
| MARK SECTION | |
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86770357/large |
| LITERAL ELEMENT | ALLIANCE |
| 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) | |
|
I. INTRODUCTION Alliance Sales & Marketing Solutions, LLC ("Applicant") files this Response to the Office Action issued on January 22, 2016, with respect to Application Serial No. 86770357 (the "Application") for the mark ALLIANCE ("Applicant's Mark") for the following services in Class 42: “Computer software development; Consulting services in the field of computer-based information systems for businesses; Planning, design and management of information technology systems” II. RESPONSE TO INFORMATION REQUEST The Examining Attorney requested information regarding Applicant's services. Attached as exhibits to this office action response are screen shots of pages from Applicant's website describing Applicant and some of Applicant’s services. As can be seen from the screenshots, Applicant offers these services, itself and not as part of any business association or other multi-company group. The Examining Attorney also requested a response to the following specific questions: - Is applicant a member of an association of businesses formed to provide services? - Has applicant formed an agreement with other businesses or organizations to provide services? The answer to both questions is no. Applicant provides the services sought to be registered, not as part of any business association or other group. The word “alliance” in the mark is arbitrary. III. THE WORD “ALLIANCE” IS NOT DESCRIPTIVE OF APPLICANT’S SERVICES The Examining Attorney argues that "ALLIANCE" describes the “provider” of the services. In making this argument, the Examining Attorney makes the supposition that Applicant's services will be provided by an association of business and provides definitions of “alliance” regarding associations of businesses or formal agreements among businesses. As shown by the attached evidence, there is no basis for the Examining Attorney’s assumption as the services described in the application are offered by Applicant and not a group or association of companies. In addition to “alliance” not being descriptive, the descriptive words “sales & marketing solutions” have already been disclaimed as part of this office action response. Based on the forgoing, there is no basis for refusing registration of Applicant's mark under Section 2(e) of the Trademark Act. Such refusals are only appropriate for marks that are merely descriptive of the goods or services for which they are sought to be registered. The term "merely," in Section 2(e) of the Trademark Act, is to be taken in its ordinary meaning of "only." In other words, when considered with the particular goods or services, the mark, because of its meaning, must do nothing but describe those goods or services. In re Colonial Stores, Inc., 157 U.S.P.Q. 382 (C.C.P.A. 1968). To be merely descriptive under the Lanham Act, a mark must directly, unequivocally and without requiring second thought, inform the average purchaser of an attribute of the goods/services offered. The mark must be totally and solely descriptive. See, e.g., In re Quick-Print Copy Shops, Inc., 616 F.2d 523, 525 n.7 (C.C.P.A. 1980). Applicant's mark is not merely descriptive of the services for which Applicant seeks registration. Applicant's services are not provided by an association or other group of businesses. The Examining Attorney’s refusal pursuant to Trademark Act Section 2(e)(1), should be reconsidered and withdrawn. IV. APPLICANT'S MARK IS NOT LIKELY TO BE CONFUSED WITH THE CITED MARK In the Office Action, the Examining Attorney stated that a registration for ALLIANCE TECHNOLOGIES and ALLIANCE CORPORATION for various services in Class 42 (“Cited Marks”) may create a likelihood of confusion with Applicant's Mark under Trademark Act Section 2(d) (15 U.S.C. § 1052). As set out in detail below, the Applicant's Mark and the Cited Mark are not likely to be confused for at least the following reasons: - The sophistication of the consumers of the services makes confusion unlikely. Both Applicant's Mark and the Cited Mark are directed at sophisticated business executives, not the general public at large. - The co-existence of the Cited Marks -- which are more similar to each other than Applicant’s Mark is to either of them -- provides additional support that Applicant’s mark should be allowed. - The marks are visual distinct, sound differently, and have different commercial connotations with the Applicant's Mark consisting of the words ALLIANCE with the Cited Marks consisting of only the words ALLIANCE TECHNOLOGIES and ALLIANCE CORPORATION. A. Legal Standard for Determining Likelihood of Confusion The Examining Attorney correctly notes that the factors set forth in In Re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973) must be considered in determining whether there is a likelihood of confusion between marks. It should be noted, however, that likelihood of confusion requires that confusion be probable, not simply possible. See HMH Publishing Co. v. Brincat, 183 U.S.P.Q. 141, 144 (9th Cir. 1974); Fleishmann Distilling Corp. v. Maier Brewing Co., 136 U.S.P.Q. 508, 518 (9th Cir. 1963); J.B. Williams Co. v. Le Conte Cosmetics, Inc., 186 U.S.P.Q. 317, 319 (9th Cir. 1975). While it is true that some factors may play a dominant role depending upon the case, there is "no warrant, in the statute or elsewhere, for discarding any evidence bearing on the question of likelihood of confusion." See DuPont at 1362 (emphasis in original). As such, it is the Examining Attorney's duty to consider all the evidence. Id. B. The Sophistication of Consumers. The condition of purchase and the sophistication of the purchasers, is relevant in this case. The Federal Circuit has made clear that purchaser "sophistication is important and often dispositive because '[s]ophisticated consumers may be expected to exercise greater care.'" Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 718, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992) (quoting Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 489, 212 USPQ 246, 252 (1st Cir. 1981)). The services identified by Applicant's Mark and the Cited Mark are directed at sophisticated business executives, not the general public at large. Applicant’s consulting and software development services are directed to the top decision makers in organizations (company officers including the president and CEO) who carefully decide what services the company requires. Businesses must carefully review the company providing the services as well as the terms offered to ensure that the services they are purchasing fit the company's needs and are cost effective. A business executive considering such a critical business services can be expected to exercise a great deal of care in making the purchasing decision. Therefore, such a person is highly unlikely to be confused as to the source of the services in question. While Applicant recognizes that even careful, sophisticated purchasers are not immune from source confusion, when this factor is taken into account along with all of the other DuPont factors, Applicant maintains that such sophisticated consumers would not confuse Applicant’s Mark with the Cited Mark. C. The Coexistence of the Cited Marks While the Applicant recognizes that prior determinations in other registrations are not binding on the PTO, nonetheless, there is a strong public policy in favor of consistency of decisions. The PTO allowed the Cited Marks, ALLIANCE TECHNOLOGIES and ALLIANCE CORPORATION to be registered despite their similarities. Both of these marks are owned by different owners. Applicant's Mark ALLIANCE is just as dissimilar to the Cited Marks as they are to each other. In fact, Applicant’s Mark is more distinct from the Cited Marks as they are from each other. Thus, it seems inconsistent for the PTO to register the Cited Marks, while at the same time refusing to allow Applicant's Mark citing as grounds for refusal the likelihood of confusion with the Cited Marks. D. Applicant's Mark is Dissimilar when Compared with the Cited Mark Applicant's Mark, ALLIANCE, is distinct from the Cited Marks, ALLIANCE TECHNOLOGIES and ALLIANCE CORPORATION. When compared in their entirety, the marks have clearly distinct appearances and have different commercial connotations. It is well settled that "the use of identical even dominant, words in common does not automatically mean that two marks are similar." General Mills, Inc. v. Kellogg Co., 3 USPQ2d 1442, 1445 (8th Cir. 1987) (acknowledging similarities between the marks OATMEAL RAISIN CRISP and APPLE RAISIN CRISP, the court nonetheless found the marks different enough to avoid consumer confusion). "Rather, in analyzing the similarities of sight, sound and meaning between two marks, a court must look to the overall impression created by the marks and not merely compare individual features." Id. Even if an element of a mark is dominant, this does not mean that other elements may simply be ignored in the likelihood of confusion analysis. Marks must be compared in their entireties. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Moreover, "similarity of 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." TMEP § 1207.01(b)(i) (citing In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987)). Furthermore, the addition or deletion of a word or words to a mark may avoid likelihood of consumer confusion between otherwise confusingly similar marks where the marks in their entireties convey significantly different commercial impressions. See TMEP §1207.01(b)(iii). For these reasons, a proper comparison of the marks requires consideration of the marks in their entireties in order to analyze the likely pronunciation of the marks, their visual similarities or differences, their connotations, and their overall commercial impressions. Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983). When the marks are considered in their entireties, they are dissimilar in appearance and sound distinct. The Applicant's Mark is the one word ALLIANCE. The Cited Marks, by contrast, are two words each, namely, ALLIANCE TECHNOLOGIES and ALLIANCE CORPORATION. Despite the common word, this does not mean that the marks are likely to be confused. Under the overall impression analysis, there is no rule that confusion is automatically likely if a junior user has a mark that contains part of another's mark. McCarthy on Trademarks and Unfair Competition at § 23:41 at 23-132 (Fourth Edition 2005). In fact, there are numerous cases where an applicant's mark contains the entire registered mark of another without likelihood of confusion resulting, even when it is registered in connection with goods or services within the same realm. Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400, 167 USPQ 529 (CCPA 1970) (PEAK PERIOD not confusingly similar to PEAK); Lever Bros. Co. v. Barcolene Co., 463 F.2d 1107, 174 USPQ 392 (CCPA 1972) (ALL CLEAR not confusingly similar to ALL); In re Ferrero, 479 F.2d 1395, 178 USPQ 167 (CCPA 1973) (TIC TAC not confusingly similar to TIC TAC TOE); Conde Nast Publications, Inc. v. Miss Quality, Inc., 507 F.2d 1404, 184 USPQ 422 (CCPA 1975) (COUNTRY VOGUES not confusingly similar to VOGUE); In re Merchandising Motivation, Inc., 184 USPQ 364 (TTAB 1974) (MMI MENSWEAR not confusingly similar to MEN'S WEAR); Plus Products v. General Mills, Inc., 188 USPQ 520 (TTAB 1975) (PROTEIN PLUS and PLUS not confusingly similar); Standard Brands, Inc. v. Peters, 191 USPQ 168 (TTAB 1975) (CORN-ROYAL for butter not likely to cause confusion with ROYAL marks on other food products). Applicant maintains that the differences between the two marks –visually and aurally – give Applicant's Mark a significantly different overall commercial impression from the Cited Mark. When the marks are compared in their entities, especially considering the uncommon elements and the overall commercial impressions of the marks, Applicant's Mark is not likely to be confused with the Cited Mark. V. CONCLUSION In view of the above, Applicant respectfully submits that this application is now in condition for allowance. Thus, Applicant requests that the refusal to register Applicant's Mark be reconsidered, and the application be passed to publication. If any matters remain outstanding, the Examining Attorney is invited to contact the undersigned by telephone or email. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) |
\\TICRS\EXPORT16\IMAGEOUT 16\867\703\86770357\xml4\ ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT 16\867\703\86770357\xml4\ ROA0003.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT 16\867\703\86770357\xml4\ ROA0004.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Screen shots of Applicant's website |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /MB/ |
| SIGNATORY'S NAME | Mark Borghese |
| SIGNATORY'S POSITION | Attorney of record, Nevada bar member |
| SIGNATORY'S PHONE NUMBER | (702) 382-0200 |
| DATE SIGNED | 07/20/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jul 20 13:02:51 EDT 2016 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20160720130251415684-8677 0357-550b683f675c57c92cc5 29c0c47dad14a7a9815de3f31 a1c840c5452f24d53a-N/A-N/ A-20160720125918668368 |
| 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) |
I. INTRODUCTION
Alliance Sales & Marketing Solutions, LLC ("Applicant") files this Response to the Office Action issued on January 22, 2016, with respect to Application Serial No. 86770357 (the "Application") for the mark ALLIANCE ("Applicant's Mark") for the following services in Class 42:
“Computer software development; Consulting services in the field of computer-based information systems for businesses; Planning, design and management of information technology systems”
II. RESPONSE TO INFORMATION REQUEST
The Examining Attorney requested information regarding Applicant's services. Attached as exhibits to this office action response are screen shots of pages from Applicant's website describing Applicant and some of Applicant’s services.
As can be seen from the screenshots, Applicant offers these services, itself and not as part of any business association or other multi-company group. The Examining Attorney also requested a response to the following specific questions:
- Is applicant a member of an association of businesses formed to provide services?
- Has applicant formed an agreement with other businesses or organizations to provide services?
The answer to both questions is no. Applicant provides the services sought to be registered, not as part of any business association or other group. The word “alliance” in the mark is arbitrary.
III. THE WORD “ALLIANCE” IS NOT DESCRIPTIVE OF APPLICANT’S SERVICES
The Examining Attorney argues that "ALLIANCE" describes the “provider” of the services.
In making this argument, the Examining Attorney makes the supposition that Applicant's services will be provided by an association of business and provides definitions of “alliance” regarding associations of businesses or formal agreements among businesses. As shown by the attached evidence, there is no basis for the Examining Attorney’s assumption as the services described in the application are offered by Applicant and not a group or association of companies.
In addition to “alliance” not being descriptive, the descriptive words “sales & marketing solutions” have already been disclaimed as part of this office action response.
Based on the forgoing, there is no basis for refusing registration of Applicant's mark under Section 2(e) of the Trademark Act. Such refusals are only appropriate for marks that are merely descriptive of the goods or services for which they are sought to be registered. The term "merely," in Section 2(e) of the Trademark Act, is to be taken in its ordinary meaning of "only." In other words, when considered with the particular goods or services, the mark, because of its meaning, must do nothing but describe those goods or services. In re Colonial Stores, Inc., 157 U.S.P.Q. 382 (C.C.P.A. 1968). To be merely descriptive under the Lanham Act, a mark must directly, unequivocally and without requiring second thought, inform the average purchaser of an attribute of the goods/services offered. The mark must be totally and solely descriptive. See, e.g., In re Quick-Print Copy Shops, Inc., 616 F.2d 523, 525 n.7 (C.C.P.A. 1980).
Applicant's mark is not merely descriptive of the services for which Applicant seeks registration. Applicant's services are not provided by an association or other group of businesses. The Examining Attorney’s refusal pursuant to Trademark Act Section 2(e)(1), should be reconsidered and withdrawn.
IV. APPLICANT'S MARK IS NOT LIKELY TO BE CONFUSED WITH THE CITED MARK
In the Office Action, the Examining Attorney stated that a registration for ALLIANCE TECHNOLOGIES and ALLIANCE CORPORATION for various services in Class 42 (“Cited Marks”) may create a likelihood of confusion with Applicant's Mark under Trademark Act Section 2(d) (15 U.S.C. § 1052).
As set out in detail below, the Applicant's Mark and the Cited Mark are not likely to be confused for at least the following reasons:
- The sophistication of the consumers of the services makes confusion unlikely. Both Applicant's Mark and the Cited Mark are directed at sophisticated business executives, not the general public at large.
- The co-existence of the Cited Marks -- which are more similar to each other than Applicant’s Mark is to either of them -- provides additional support that Applicant’s mark should be allowed.
- The marks are visual distinct, sound differently, and have different commercial connotations with the Applicant's Mark consisting of the words ALLIANCE with the Cited Marks consisting of only the words ALLIANCE TECHNOLOGIES and ALLIANCE CORPORATION.
A. Legal Standard for Determining Likelihood of Confusion
The Examining Attorney correctly notes that the factors set forth in In Re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973) must be considered in determining whether there is a likelihood of confusion between marks. It should be noted, however, that likelihood of confusion requires that confusion be probable, not simply possible. See HMH Publishing Co. v. Brincat, 183 U.S.P.Q. 141, 144 (9th Cir. 1974); Fleishmann Distilling Corp. v. Maier Brewing Co., 136 U.S.P.Q. 508, 518 (9th Cir. 1963); J.B. Williams Co. v. Le Conte Cosmetics, Inc., 186 U.S.P.Q. 317, 319 (9th Cir. 1975).
While it is true that some factors may play a dominant role depending upon the case, there is "no warrant, in the statute or elsewhere, for discarding any evidence bearing on the question of likelihood of confusion." See DuPont at 1362 (emphasis in original). As such, it is the Examining Attorney's duty to consider all the evidence. Id.
B. The Sophistication of Consumers.
The condition of purchase and the sophistication of the purchasers, is relevant in this case. The Federal Circuit has made clear that purchaser "sophistication is important and often dispositive because '[s]ophisticated consumers may be expected to exercise greater care.'" Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 718, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992) (quoting Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 489, 212 USPQ 246, 252 (1st Cir. 1981)).
The services identified by Applicant's Mark and the Cited Mark are directed at sophisticated business executives, not the general public at large. Applicant’s consulting and software development services are directed to the top decision makers in organizations (company officers including the president and CEO) who carefully decide what services the company requires. Businesses must carefully review the company providing the services as well as the terms offered to ensure that the services they are purchasing fit the company's needs and are cost effective. A business executive considering such a critical business services can be expected to exercise a great deal of care in making the purchasing decision. Therefore, such a person is highly unlikely to be confused as to the source of the services in question.
While Applicant recognizes that even careful, sophisticated purchasers are not immune from source confusion, when this factor is taken into account along with all of the other DuPont factors, Applicant maintains that such sophisticated consumers would not confuse Applicant’s Mark with the Cited Mark.
C. The Coexistence of the Cited Marks
While the Applicant recognizes that prior determinations in other registrations are not binding on the PTO, nonetheless, there is a strong public policy in favor of consistency of decisions.
The PTO allowed the Cited Marks, ALLIANCE TECHNOLOGIES and ALLIANCE CORPORATION to be registered despite their similarities. Both of these marks are owned by different owners.
Applicant's Mark ALLIANCE is just as dissimilar to the Cited Marks as they are to each other. In fact, Applicant’s Mark is more distinct from the Cited Marks as they are from each other. Thus, it seems inconsistent for the PTO to register the Cited Marks, while at the same time refusing to allow Applicant's Mark citing as grounds for refusal the likelihood of confusion with the Cited Marks.
D. Applicant's Mark is Dissimilar when Compared with the Cited Mark
Applicant's Mark, ALLIANCE, is distinct from the Cited Marks, ALLIANCE TECHNOLOGIES and ALLIANCE CORPORATION. When compared in their entirety, the marks have clearly distinct appearances and have different commercial connotations.
It is well settled that "the use of identical even dominant, words in common does not automatically mean that two marks are similar." General Mills, Inc. v. Kellogg Co., 3 USPQ2d 1442, 1445 (8th Cir. 1987) (acknowledging similarities between the marks OATMEAL RAISIN CRISP and APPLE RAISIN CRISP, the court nonetheless found the marks different enough to avoid consumer confusion). "Rather, in analyzing the similarities of sight, sound and meaning between two marks, a court must look to the overall impression created by the marks and not merely compare individual features." Id. Even if an element of a mark is dominant, this does not mean that other elements may simply be ignored in the likelihood of confusion analysis. Marks must be compared in their entireties. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Moreover, "similarity of 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." TMEP § 1207.01(b)(i) (citing In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987)). Furthermore, the addition or deletion of a word or words to a mark may avoid likelihood of consumer confusion between otherwise confusingly similar marks where the marks in their entireties convey significantly different commercial impressions. See TMEP §1207.01(b)(iii).
For these reasons, a proper comparison of the marks requires consideration of the marks in their entireties in order to analyze the likely pronunciation of the marks, their visual similarities or differences, their connotations, and their overall commercial impressions. Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983).
When the marks are considered in their entireties, they are dissimilar in appearance and sound distinct. The Applicant's Mark is the one word ALLIANCE. The Cited Marks, by contrast, are two words each, namely, ALLIANCE TECHNOLOGIES and ALLIANCE CORPORATION. Despite the common word, this does not mean that the marks are likely to be confused.
Under the overall impression analysis, there is no rule that confusion is automatically likely if a junior user has a mark that contains part of another's mark. McCarthy on Trademarks and Unfair Competition at § 23:41 at 23-132 (Fourth Edition 2005). In fact, there are numerous cases where an applicant's mark contains the entire registered mark of another without likelihood of confusion resulting, even when it is registered in connection with goods or services within the same realm. Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400, 167 USPQ 529 (CCPA 1970) (PEAK PERIOD not confusingly similar to PEAK); Lever Bros. Co. v. Barcolene Co., 463 F.2d 1107, 174 USPQ 392 (CCPA 1972) (ALL CLEAR not confusingly similar to ALL); In re Ferrero, 479 F.2d 1395, 178 USPQ 167 (CCPA 1973) (TIC TAC not confusingly similar to TIC TAC TOE); Conde Nast Publications, Inc. v. Miss Quality, Inc., 507 F.2d 1404, 184 USPQ 422 (CCPA 1975) (COUNTRY VOGUES not confusingly similar to VOGUE); In re Merchandising Motivation, Inc., 184 USPQ 364 (TTAB 1974) (MMI MENSWEAR not confusingly similar to MEN'S WEAR); Plus Products v. General Mills, Inc., 188 USPQ 520 (TTAB 1975) (PROTEIN PLUS and PLUS not confusingly similar); Standard Brands, Inc. v. Peters, 191 USPQ 168 (TTAB 1975) (CORN-ROYAL for butter not likely to cause confusion with ROYAL marks on other food products).
Applicant maintains that the differences between the two marks –visually and aurally – give Applicant's Mark a significantly different overall commercial impression from the Cited Mark. When the marks are compared in their entities, especially considering the uncommon elements and the overall commercial impressions of the marks, Applicant's Mark is not likely to be confused with the Cited Mark.
V. CONCLUSION
In view of the above, Applicant respectfully submits that this application is now in condition for allowance. Thus, Applicant requests that the refusal to register Applicant's Mark be reconsidered, and the application be passed to publication. If any matters remain outstanding, the Examining Attorney is invited to contact the undersigned by telephone or email.
