| 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 | 87246942 |
| LAW OFFICE ASSIGNED | LAW OFFICE 124 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87246942/mark.png |
| LITERAL ELEMENT | ADAM |
| 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 Based on the amendment to the goods and the remarks below, Applicant requests that the examining attorney's refusal be reversed, and that the application proceed to publication. II. Identification of Goods In response to the Office action of January 19, 2017, Applicant has amended the identification of goods as suggested by the Trademark Attorney. III. Applicant's Goods are Sufficiently Different from the Goods of Registration No. 2,097,123 and Confusion is Not Likely In the Office Action of January 19, 2017, the Examining Attorney has refused registration under Section 2(d)(1) on the basis of a likelihood of confusion with U.S. Registration No. 2,097,123. According to TMEP 1402.03(d): Any identification of goods for computer programs must be sufficiently specific to permit determinations with respect to likelihood of confusion. The purpose of requiring specificity in identifying computer programs is to avoid the issuance of unnecessary refusals of registration under 15 U.S.C. §1052(d) where the actual goods of the parties are not related and there is no conflict in the marketplace. While the present application as well as the cited registration both include goods related to computer programs, the same logic set forth in TMEP 1402.03(d) should be applied in an analysis under Section 2(d) for the present application. Moreover, in order to properly address Section 2(d) in such applications, the focus should not be on the fact that the goods are computer and software-related per se, but rather on the function, purpose, and field of use of such goods. See Id. (stating that "an identification for 'computer software' will be acceptable as long as both the function/purpose and the field are set forth.") Of course, the result of applying such rules in the examination of applications pursuant to Section 2(d) is that arguably similar marks will be allowed to coexist based on specific differences in the goods or services. The Applicant's goods are directed to "welding machines and control and regulation of welding processes". Accordingly, Applicant's goods are targeted to consumers within the welding industry. Accordingly, the intended use of Applicant's goods is distinct from Registrants' goods such that these goods are not in competition with one another and are, therefore, unrelated. Thus, consumer confusion is unlikely. IV. Many Marks Incorporate the Term ADAM A number of separately owned third-party registrations containing the term ADAM exist in the Principal Register. A cursory search of the USPTO Database uncovered at least 32 third-party registrations containing the term ADAM covering goods in International Class 009. One of the more notable examples includes the registration ADAM (Reg. No. 2,356,783), covering “data processing programs, namely, computer software for use in on-line turbine generator diagnosis, computer software for valve diagnosis for power plants". The significant number of third-party registrations in International Class 9 incorporating the term ADAM suggests that purchasers are able to distinguish among various ADAM marks by looking at differences between the goods. That is, the common usage and registration of the term ADAM in the electronics industry to refer to computer systems clearly demonstrates that the inclusion of the term ADAM is unlikely by itself to cause confusion with other marks containing the term ADAM. The USPTO has taken the position that various registrations including the mark ADAM may coexist in International Class 9. The same should apply here. V. Request for Information Applicant has been requested to identify how the mark as shown in the specimen is in use in commerce with applicant’s goods. Attached hereto is a copy of Applicant's Technical Data Sheet for its product. Specifically, Applicant’s goods relate to a combination of equipment, namely, hardware (data processing and sensor interface modules) and software partly hardcoded on a printed circuit board assembly as well as running on a microprocessing unit. Applicant’s goods are sold exclusively by way of authorized sales representatives. The attached Data Sheet provides additional information about the goods. VI. Conclusion For these reasons, applicant asks that the examining attorney reconsider the refusal of registration, and permit the subject application to proceed to publication. However, if the examining attorney has any remaining question, applicant's counsel can be reached by telephone. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_641610870-20170719201235551489_._ADAM_Technical_Datasheet.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\872\469\87246942\xml4\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\872\469\87246942\xml4\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\872\469\87246942\xml4\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\872\469\87246942\xml4\ROA0005.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Technical Datasheet |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| ELECTRONIC AND MECHANICAL MEASURING, CONTROL AND REGULATING APPARATUS INCLUDING HARDCODED SOFTWARE, SENSORS, DATA PROCESSING EQUIPMENT, AND CONTROL INSTRUMENTS FOR CONTROL AND REGULATION OF WELDING MACHINES AND CONTROL AND REGULATION OF WELDING PROCESSES | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 02/02/2009 |
| FIRST USE IN COMMERCE DATE | At least as early as 05/25/2009 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| ELECTRONIC AND MECHANICAL MEASURING, CONTROL AND REGULATING APPARATUS FOR CONTROL AND REGULATION OF WELDING MACHINES AND CONTROL AND REGULATION OF WELDING PROCESSES, NAMELY, INCLUDING HARDCODED SOFTWARE, SENSORS, DATA PROCESSING EQUIPMENT, AND CONTROL INSTRUMENTS FOR CONTROL AND REGULATION OF WELDING MACHINES AND CONTROL AND REGULATION OF WELDING PROCESSES; HARDCODED SOFTWARE FOR ELECTRONIC AND MECHANICAL MEASURING, CONTROL AND REGULATING OF WELDING MACHINES AND WELDING PROCESSES | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 02/02/2009 |
| FIRST USE IN COMMERCE DATE | At least as early as 05/25/2009 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /art hasan/ |
| SIGNATORY'S NAME | Art Hasan |
| SIGNATORY'S POSITION | Attorney for Applicant, California Bar Member |
| SIGNATORY'S PHONE NUMBER | (626) 795-9900 |
| DATE SIGNED | 07/19/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jul 19 20:44:55 EDT 2017 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 170719204455662313-872469 42-510f5336398b87a27be569 791b93a77d5b22138ff48c1c4 cbf3a448d08fa17c15-N/A-N/ A-20170719201235551489 |
| 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
Based on the amendment to the goods and the remarks below, Applicant requests that the examining attorney's refusal be reversed, and that the application proceed to publication.
II. Identification of Goods
In response to the Office action of January 19, 2017, Applicant has amended the identification of goods as suggested by the Trademark Attorney.
III. Applicant's Goods are Sufficiently Different from the Goods of Registration No. 2,097,123 and Confusion is Not Likely
In the Office Action of January 19, 2017, the Examining Attorney has refused registration under Section 2(d)(1) on the basis of a likelihood of confusion with U.S. Registration No. 2,097,123.
According to TMEP 1402.03(d):
Any identification of goods for computer programs must be sufficiently specific to permit determinations with respect to likelihood of confusion. The purpose of requiring specificity in identifying computer programs is to avoid the issuance of unnecessary refusals of registration under 15 U.S.C. §1052(d) where the actual goods of the parties are not related and there is no conflict in the marketplace.
While the present application as well as the cited registration both include goods related to computer programs, the same logic set forth in TMEP 1402.03(d) should be applied in an analysis under Section 2(d) for the present application. Moreover, in order to properly address Section 2(d) in such applications, the focus should not be on the fact that the goods are computer and software-related per se, but rather on the function, purpose, and field of use of such goods. See Id. (stating that "an identification for 'computer software' will be acceptable as long as both the function/purpose and the field are set forth.") Of course, the result of applying such rules in the examination of applications pursuant to Section 2(d) is that arguably similar marks will be allowed to coexist based on specific differences in the goods or services.
The Applicant's goods are directed to "welding machines and control and regulation of welding processes". Accordingly, Applicant's goods are targeted to consumers within the welding industry. Accordingly, the intended use of Applicant's goods is distinct from Registrants' goods such that these goods are not in competition with one another and are, therefore, unrelated. Thus, consumer confusion is unlikely.
IV. Many Marks Incorporate the Term ADAM
A number of separately owned third-party registrations containing the term ADAM exist in the Principal Register. A cursory search of the USPTO Database uncovered at least 32 third-party registrations containing the term ADAM covering goods in International Class 009. One of the more notable examples includes the registration ADAM (Reg. No. 2,356,783), covering “data processing programs, namely, computer software for use in on-line turbine generator diagnosis, computer software for valve diagnosis for power plants".
The significant number of third-party registrations in International Class 9 incorporating the term ADAM suggests that purchasers are able to distinguish among various ADAM marks by looking at differences between the goods. That is, the common usage and registration of the term ADAM in the electronics industry to refer to computer systems clearly demonstrates that the inclusion of the term ADAM is unlikely by itself to cause confusion with other marks containing the term ADAM. The USPTO has taken the position that various registrations including the mark ADAM may coexist in International Class 9. The same should apply here.
V. Request for Information
Applicant has been requested to identify how the mark as shown in the specimen is in use in commerce with applicant’s goods. Attached hereto is a copy of Applicant's Technical Data Sheet for its product. Specifically, Applicant’s goods relate to a combination of equipment, namely, hardware (data processing and sensor interface modules) and software partly hardcoded on a printed circuit board assembly as well as running on a microprocessing unit.
Applicant’s goods are sold exclusively by way of authorized sales representatives. The attached Data Sheet provides additional information about the goods.
VI. Conclusion
For these reasons, applicant asks that the examining attorney reconsider the refusal of registration, and permit the subject application to proceed to publication. However, if the examining attorney has any remaining question, applicant's counsel can be reached by telephone.
