Response to Office Action

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)

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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

To the Commissioner for Trademarks:

Application serial no. 87304192 CORTEX(Standard Characters, see http://uspto.report/TM/87304192/mark.png) has been amended as follows:

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

Remarks Applicant writes in response to the Office Action issued in connection with the U.S. Application Serial No. 87304192 issued on April 26, 2017. Applicant addresses the Examining Attorney's objections in full as follows: I. Identification of Goods and Services Concerning the goods cited under International Class 09, the Examining Attorney contends that the identification of goods is indefinite and must be clarified. Accordingly, the identification of goods for International Class 09 has been amended in accordance with the Examining Attorney's requirement. In addition, reference to ?distribution? has also been removed from the description so as to unambiguously associate the goods with the control of equipment in the field of warehouse management. As amended, Applicant's goods are more narrowly defined. As amended, the identification of goods for International Class 09 now reads as follows: Class 09: Computer programs and computer software for an automated warehouse system, namely, software for managing, monitoring, controlling and directing of warehouse equipment in the field of warehouse management. Accordingly, it is respectfully submitted that the identification of goods is now sufficiently definite for purposes of registration in international class 9, and acceptance is respectfully urged. II. Prior Filed Application - U.S. Application Serial No. 79194853 (?Prior Filed Application?) The Examining Attorney has indicated that the Prior Filed Application for the mark CORETEX resembles Applicant's mark so closely as to create a likelihood of confusion or mistake in the marketplace. Applicant submits, however, that there is no likelihood of confusion based on the factors established in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). In particular, the goods identified by each mark are dissimilar, and they are marketed to sophisticated corporate purchasers through different channels of trade. Applicant bundles its software strictly for use with its Perfect Pick? material handling equipment (i.e., to businesses who will (a) acquire or have already acquired the Applicant?s warehouse automation equipment and (b) use Applicant?s software to operate that equipment to store and retrieve inventory items within the warehouse). See, for example, Exhibit 1, which is a brochure demonstrates that as used by Applicant, the mark CORTEX relates to software for controlling one or more of the ?goods-to-person? automated storage and retrieval systems which are sold by Applicant under its separately registered, PERFECT PICK trademark. The Prior Filed Application, on the other hand, indicates that the mark CORETEX is directed to computer software forming part of an integrated telematics system to track transport vehicles and cargo (?transportation assets?). The Prior Filed Application identifies the following goods in International Class 9: ?[c]omputer software, hardware and communications devices for planning, scheduling, controlling, monitoring and providing information on freight logistics, transportation vehicles, industrial automation machinery and equipment; computer software and hardware for telematics; computer software and hardware for telematics using global positioning systems (GPS) and cellular telecommunications; computer software for use in operating telecommunications systems; computer software and hardware for vehicle and mobile asset telematics including vehicle tracking, trailer tracking, cold store freight tracking and monitoring, fleet management, satellite navigation, mobile data, wireless vehicle safety communications, emergency warning system for vehicles, intelligent vehicle technologies and auto insurance applications, business intelligence, business activity monitoring and dispatch systems; computer software and hardware for use in planning, scheduling, controlling, tracking, monitoring and providing information on transportation assets and parts thereof, including vehicles, trailers, drivers, cargo and delivery containers; vehicle tracking devices comprised of cellular radio modules, computer software and computer hardware, sensors, transmitters, receivers and global positioning satellite receivers, all for use in connection with vehicle tracking, vehicle monitoring and anti-theft vehicle alarms.? While the prior-filed application does, indeed, contain a singular reference to industrial automation machinery and equipment in a description of goods containing no fewer than 167 words, it is respectfully submitted that when viewed in the proper context (i.e., the description of goods as a whole), such a reference does not place application of the CORETEX mark to the management and control of warehouse automation equipment. To the contrary, attached to this response as Exhibit 2 is a series of screenshots depicting the manner in which the mark CORETEX is being used by the applicant for the Prior-Filed Application. It will be readily apparent that the usage is clearly depicting reference to tracking of cargo and cargo carrying transport vehicles. The dissimilarity in the goods likewise leads to a difference in the channels of trade. Indeed, each of Applicant and the owner of the Prior Filed Application maintain a distinct, independent network of resellers. See, for example, http://www.opex.com/partners (Applicant?s partial listing of integrators and resellers) vs. http://www.coretex.com/more/partners/ (the partner network employed by the owner of the Prior Filed Application). In the case of the Applicant, the target market comprises sophisticated consumers making multi- million dollar warehouse equipment purchasing decisions. See Applicant?s Exhibit 3. The solutions with which the software of each applicant are bundled are expensive and are purchased only by experienced corporate officials after significant study and contractual negotiation. Such purchases are made only after careful consideration by persons who are highly knowledgeable about the goods or services and their source. For each of the reasons set forth above, there is no likelihood of confusion in granting the trademark CORTEX to Applicant, and Applicant respectfully requests the trademark be granted. We can be reached at (856) 727- 1100 for further comments or clarifications.

EVIDENCE
Evidence in the nature of The attached documents show the manner in which the mark that is subject of this application (CORTEX), as well as of the prior filed application (CORETEX), are used in interstate commerce, to illustrate dissimilarity of goods and different channels of trade. has been attached.
Original PDF file:
evi_5023213998-20170712075903629672_._Exhibit_1.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_5023213998-20170712075903629672_._Exhibit_2.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_5023213998-20170712075903629672_._Exhibit_3.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Non-downloadable computer software and computer programs for use in warehouse management, automation management and automation control and visualization of material flows and warehouse parameters; computer programs and computer software for an automated warehouse system, namely, software for managing, monitoring, controlling and directing of warehouse equipment or inventory, and tracking of inventory in the field of distribution and warehouse management
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: Non-downloadable computer software and computer programs for use in warehouse management, automation management and automation control and visualization of material flows and warehouse parameters; Computer programs and computer software for an automated warehouse system, namely, software for managing, monitoring, controlling and directing of warehouse equipment.; computer programs and computer software for an automated warehouse system, namely, software for managing, monitoring, controlling and directing of warehouse equipment or inventory, and tracking of inventory in the field of distribution and warehouse managementClass 009 for Computer programs and computer software for an automated warehouse system, namely, software for managing, monitoring, controlling and directing of warehouse equipment.
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: /Brian K Dinicola/     Date: 07/12/2017
Signatory's Name: Brian K Dinicola
Signatory's Position: Attorney of Record, New Jersey bar member

Signatory's Phone Number: 856 727 1100 ext 5216

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 87304192
Internet Transmission Date: Wed Jul 12 08:13:50 EDT 2017
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2017071208135014
3714-87304192-5904ab512121111e343cdae29d
afe59e1463d78ea7b9b35f1abe6fb3a6321-N/A-
N/A-20170712075903629672