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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87786142 VISION (Stylized and/or with Design, see http://uspto.report/TM/87786142/mark.png) has been amended as follows:

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

The Examiner has cited the trademark VISION (?the Pending Trademark?) for use with the services of ?providing tracking, monitoring and locating of assets, namely, inventory control services; providing tracking, monitoring and locating of assets to monitor operator efficiency; providing electronic tracking, monitoring and locating of industrial property assets to others for business purposes; providing analysis to others about collected data relating to the tracking, monitoring and locating of assets ? in International Classification 035 under 15 USC 1052(d). The Examiner states that there could a likelihood of confusion with Trademark Application Serial Number 87/261758 for SOFTVISION (?the Allowed Trademark?) if the trademark application registers. When determining if a likelihood of confusion exists between two trademarks, ?[t]he issue is not whether the actual goods are likely to be confused but, rather, whether there is a likelihood of confusion as to the source of the goods.? TMEP 1207.01. Where the goods and services are similar or identical, a likelihood of confusion will only be found if the relevant purchasing public would mistakenly believe that the good and services originated from the same source. FBI v. Societe: "M. Bril & Co.", 172 USPQ 310 (TTAB 1971). There is no likelihood of confusion as the goods or services described in the Pending Application and the Allowed Application are not related. See, e.g., Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1244 (TTAB 2010); In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). TMEP 1207.01. The Applicant?s mark is used with the services of ?providing tracking, monitoring and locating of assets, namely, inventory control services; providing tracking, monitoring and locating of assets to monitor operator efficiency; providing electronic tracking, monitoring and locating of industrial property assets to others for business purposes.? Applicant monitors how assets are used, where the assets are located, and how operators are working. These services provide information about how a business is operating. In contrast, the Allowed Mark is used with consulting services relating to inventory planning, supply chain logistics, and analysis of business data for inventory forecasting, inventory management, advanced order writing, and retail decision making. These services provide information about what a business needs. The goods and services are not related, and there is no confusion. The Pending Trademark and the Allowed Trademark are not similar in sight, sound, and connotation. The Pending Trademark is VISION. The Allowed Trademark is SOFTVISION and includes the additional term ?soft? at the beginning of the trademark. The addition of the term ?soft? creates different a commercial impression. TMEP ?1207.01(b)(viii). As defined by the Merriam Webster online dictionary at www.m-w.com, soft is defined as ?pleasing or agreeable to the senses: bringing ease, comfort, or quiet.? The addition of this word modifies the word ?vision? and creates a different impression. Additionally, the word ?soft? is at the beginning of the mark, creating a stronger impression in the consumers? minds. There is also no likelihood of confusion based on the sophistication of the consumers. Consumers would use care in purchasing these goods and services, which would minimize the likelihood of confusion. See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 USPQ 969, 971 (Fed. Cir. 1985) (concluding that, because only sophisticated purchasers exercising great care would purchase the relevant goods, there would be no likelihood of confusion merely because of the similarity between the marks NARCO and NARKOMED); In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378, 1380, 1383 (TTAB 2006). Applicant?s tracking, monitoring, and locating services are highly specialized and directed to a specific type of consumer. There is no likelihood of confusion. Applicant requests that the mark be approved for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Providing tracking, monitoring and locating of assets, namely, inventory control services; providing tracking, monitoring and locating of assets to monitor operator efficiency; providing electronic tracking, monitoring and locating of industrial property assets to others for business purposes; providing analysis to others about collected data relating to the tracking, monitoring and locating of assets
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 tracking, monitoring and locating of assets, namely, inventory control services; providing tracking, monitoring and locating of assets to monitor operator efficiency; providing tracking, monitoring and locating of assets to monitor operator efficiency for business purposes; providing electronic tracking, monitoring and locating of industrial property assets to others for business purposes; providing analysis to others about collected data relating to the tracking, monitoring and locating of assets; providing analysis to others about collected data relating to the tracking, monitoring and locating of assets for business purposesClass 035 for Providing tracking, monitoring and locating of assets, namely, inventory control services; providing tracking, monitoring and locating of assets to monitor operator efficiency for business purposes; providing electronic tracking, monitoring and locating of industrial property assets to others for business purposes; providing analysis to others about collected data relating to the tracking, monitoring and locating of assets for business purposes
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.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use the location icon apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /Karin H. Butchko/     Date: 11/26/2018
Signatory's Name: Karin H. Butchko
Signatory's Position: Attorney of record, Michigan bar member

Signatory's Phone Number: 248-988-8688

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: 87786142
Internet Transmission Date: Mon Nov 26 15:50:38 EST 2018
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2018112615503894
3571-87786142-610bdb457a504226207764e5d3
5ad5b5a3d67e107531e56b82852db4c1a48a28be
-N/A-N/A-20181126153656912686