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. 88171067 INNOVATORS' COMPASS(Standard Characters, see http://uspto.report/TM/88171067/mark.png) has been amended as follows:

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

RE: Response to Office Action Mark: INNOVATORS' COMPASS Serial No.88171067 This is in response to the referenced office action. The Applicant respectfully disagrees with your decision that the mark, INNOVATORS' COMPASS , when used in connection with its "printed materials, namely, educational materials in the fields of problem solving, decision making, work organization, and collaboration," is likely to be confused with the mark, INNOVATIONCOMPASS claimed by INNOVATIONCOMPASS, LLC, for use in Class 41 with "business assistance, advisory and consulting services in the field of business innovation with a focus on creativity, design thinking, human centered innovation, leadership development, and emotional intelligence." Although the dominant part of Applicant's mark is similar to that in the registration owned by INNOVATIONCOMPASS, LLC, the dissimilarity of the goods and services used in connection with the respective marks and of their trade channels are so striking that no reasonable buyer would be likely to confuse the different sources of the goods or services with which the two marks are used. A. Registrant's Services and Applicant's Goods are Distinctly Different The nature of the respective goods and services of the Applicant and Registrant, INNOVATIONCOMPASS, LLC, are remarkably different. Although both may involve creative thinking, that field is so enormous that distinctly different markets, products and services abound within it. On the one hand, the Registrant, INNOVATIONCOMPASS, LLC, provides services, identified in her registration, as "business assistance, advisory and consulting services. " Such services are, by their nature, customized for clients, and used ?in the field of business innovation.? The services are for business of individual self-fulfillment. On the other hand, Applicant provides printed materials described in her application as ?educational materials in the fields of problem solving, decision making, work organization, and collaboration.? The printed materials used with Applicant's mark are offered to the general public as a self-help tool, under a Creative Commons license. Applicant?s materials consist of drawings, as shown in the Specimen of Use. The drawings are to be copied and used by any individual in problem solving. The materials can be used for ?decisions, conversations, meetings, planning, projects or dreams? as shown on Applicant?s website at www.innovatorscompass.org. The Applicant?s printed materials do not contain any business specific language or any language specific to an individual or business. The materials may be used without payment and without any connection to paid services. The Applicant?s materials are not customized in any way. Rather, the printed materials are a generic tool, which the consumer customizes to allow the consumer to document their self-directed decision making. When comparing marks, the proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that consumers who encounter the marks would be likely to assume a connection between the parties. Registrant?s company name is InnovationCompass, LLC. Yet, the Registrant?s consulting services are advertised on the Internet at http://innovationandcreativityinstitute.com under the d/b/a Innovation & Creativity Institute. Nowhere on the Internet could Applicant find a reference to INNOVATIONCOMPASS used as a service mark in connection with Registrant?s consulting services or any other products provided by Registrant. The only use on the Internet by Registrant of InnovationCompass is as her company name, not as a service mark. Registrant? s Innovation & Creativity Institute, provides customized consulting services by the principal, Susie deVille, who provides the dominant identity for Registrant?s consulting services. Therefore, Examining Attorney?s Internet evidence, consisting of third-party business and leadership training and consulting companies, to establish that the same entity commonly produces and provides the relevant goods and services and markets the goods and services under the same mark, is not relevant in the present application. Even if Applicant?s and Registrant?s goods and services are considered related for likelihood of confusion purposes, they are each provided to different consumers in different markets, seeking different solutions. B. Comparison of the Marks - the Connotations of the Word, ? Innovation,? are Different in Each Mark In comparing the marks, Registrant provides "business assistance, advisory and consulting services, " which by the nature of such services are customized for clients. Registrant identifies its services as "in the field of business innovation" as stated in its registration. Therefore, the use of the word, INNOVATION, in Registrant?s mark is descriptive or suggestive of the services with which it's used in the field of "business innovation" to advance individual or business fulfillment or specific goals. By contrast, Applicant uses the word, INNOVATORS', in a fanciful sense to indicate the general public - or anyone who is problem solving ? may change their way of thinking. As shown in the Specimen of Use, the printed materials are unique in the field of problem solving because, the tool does not focus on the problem itself, rather, the tool puts people in the center, literally, as shown on the Specimen of Use. The purpose of the tool is to promote a philosophical way of thinking. The marks do not create the same mental image. Whether an engineer or a child in grammar school, either can use Applicant's printed materials to change their thinking in order to address a problem from a different perspective. The printed materials used with Applicant's mark are offered to the general public as a self-help tool, under a Creative Commons license, to be used generally in the exercise of problem solving-in any field, whether cultural, societal, religious, educational, developmental. In this way, the printed materials are not tied to or claimed with business consulting services. Rather, the user of the printed materials customizes the tool for their own use under the Creative Commons license. Applicant?s mission is to make creative, collaborative problem solving accessible for every person and moment. By contrast, InnovationCompass, LLC's website at http://innovationandcreativityinstitute.com indicates that it provides high-end paid consulting services, costing thousands of dollars. C. Prospective Purchasers Have High Degree of Sophistication INNOVATIONCOMPASS, LLC's customers pay for high-end consulting services and are highly sophisticated. Therefore, any confusion on their part with the INNOVATORS' COMPASS TOOL is highly unlikely. Buyers who are professional or commercial are held to a higher standard of care in making their purchases. Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 220 USPQ 786 (1st Cir. 1983). Purchases by such buyers are held to be informed, deliberate and less likely to involve confusion. D. The Registrant's Mark, INNOVATIONCOMPASS, Lacks Recognition as a Service Mark by the General Public INNOVATIONCOMPASS is the corporate name of InnovationCompass, LLC. The mark, INNOVATIONCOMPASS, is invisible to the general public because it is used only as the Registrant's corporate name, and not to identify consulting services. Registrant?s services are marketed under the d/b/a, Innovation & Creativity Institute at http://innovationandcreativityinstitute.com/services. Registrant's services are retained based on the reputation of its principal, Susie deVille, and her own name, not on the basis of the name, InnovationCompass. Because the name of the business is virtually invisible, InnovationCompass, LLC's corporate identity is undoubtedly weaker than the personal identity of its principal, Susie deVille, and its d/b/a Innovation & Creativity Institute. Purchases of its services are most likely based on the strength of Susie deVille's reputation and the d/b/a name, and not upon any recognition of the name, InnovationCompass. The low degree of reliance on the trade symbols by purchasers of Registrant's services is demonstrative of the legitimate intent of the Applicant in adopting her mark and the absence of possible confusion among buyers of the respective goods and services. The general public who may seek the Applicant's printed materials to improve or design their own thought process would not be likely to assume that INNOVATORS' COMPASS was affiliated with InnovationCompass, LLC, Innovation & Creativity Institute, Susie deVille or their high-end consulting services to businesses, if the general public is at all aware of the InnovationCompass, LLC's mark. Nor would any reasonable buyer assume that INNOVATIONCOMPASS, LLC's services were in any way affiliated with the Applicant since Applicant's tool and printed materials are provided free of charge and are for educational purposes. E. The Applicant's Goods and Registrant's Services are Non-Competitive. Although both Applicant and INNOVATIONCOMPASS, LLC could expand their businesses, they are unlikely to do so in a way that would cause them to compete with one another. Even if they did, there is no suggestion of sponsorship, affiliation or connection between them. The individual identity of Registrant's principal, Susie deVille, is the dominant and easily recognizable source of Registrant's consulting services. Ela Ben-Ur is the Applicant and owner of the INNOVATORS? COMPASS printed materials. In each case, the reputation of the individual principals is easily recognizable as the source of the goods and services. F. There is Insufficient Evidence to Show a Likelihood of Confusion. Registration may not be refused merely on the basis that the two marks are similar in appearance and sound even when used within the same industry. Where the two marks are used in connection with distinctly different goods and services in distinctly different markets, there is insufficient evidence to show a likelihood of confusion. Similar trademarks both used with computer products that are targeted at different specialized markets may coexist without confusion. Information Resources, Inc. v. X*Press Information Services, 6 USPQ 2d 1034 (TTAB 1988) (computer products with unrelated trade channels). See Also David Crystal, Inc. v. Soo Valley Co., 471 F.2d 1245, 176 USPQ 326 (CCPA 1973) (sales to industrial users and to consumers); Alpha Industries, Inc. v. Alpha Steel Tube & Shaper, Inc., 616 F.2d 440, 205 USPQ 981 (9th Cir. 1980)(distinct groups of knowledgeable purchasers); Trade Publications Inc. v. Big Bear of North Carolina, Inc., 19 USPQ 477 (M.D.N.C. 1976)(Plaintiff's FOODWORLD trade journal would be almost totally unknown to consumers). Applicant provides her printed materials to the general public for their own internal use free of charge. By contrast, InnovationCompass, LLC, d/b/a Innovation & Creative Institute, markets its services to those willing to pay within a high-end market. No reasonable buyer, or especially a sophisticated buyer, would be likely to assume that the INNOVATION COMPASS services are in any way linked with INNOVATOR'S COMPASS problem-solving printed materials. Examiner's argument that companies such as "CMOE and Kepner Trego both offer business consulting services as well as providing training services and related materials, white papers, publications, blogs,.." is irrelevant because neither party is claiming both consulting services and printed materials. Rather, the relevant consideration is the markets in which each party deals: Registrant's high-end sophisticated business purchasers vs. Applicant's everyman. Registrant is selling high-end consulting services to promote "business innovation" while Applicant is providing a tool for logical thinking for use by the general public. The Applicant would like to propose that its identification of goods in its application be modified in order to avoid any likelihood of confusion under 2(d). Please consider the amended identification of goods by deleting the recitation in the application in its entirety and substituting the following: " Printed materials, namely, an educational chart for use by students in the fields of problem solving, decision making, work organization, and collaboration." In light of the arguments provided above and the suggested amendment to the recitation of services above, please submit the application for registration. If you have any questions, please contact me at (781)728-0059.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 016 for Printed materials, namely, educational materials in the fields of problem solving, decision making, work organization, and collaboration
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/17/2016 and first used in commerce at least as early as 03/06/2016 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Printed materials, namely, educational materials in the fields of problem solving, decision making, work organization, and collaboration; Printed materials, namely, an educational chart for use by students in the fields of problem solving, decision making, work organization, and collaborationClass 016 for Printed materials, namely, an educational chart for use by students in the fields of problem solving, decision making, work organization, and collaboration
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/17/2016 and first used in commerce at least as early as 03/06/2016 , and is now in use in such commerce.
OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Ela Ben-Ur, a citizen of United States, having an address of
      42 Cogswell Avenue, #1
      Cambridge, Massachusetts 02140
      United States

Proposed: Ela Ben-Ur, a citizen of United States, having an address of
      42 Cogswell Avenue, #1
      Cambridge, Massachusetts 02140
      United States
      Email Address: XXXX
      7817280059
Correspondence Information (current):
      Anne Hulecki
      PRIMARY EMAIL FOR CORRESPONDENCE: anne@bostontechlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is Ben-Ur.
Correspondence Information (proposed):
      Anne Hulecki
      PRIMARY EMAIL FOR CORRESPONDENCE: anne@bostontechlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is Ben-Ur.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /anne hulecki/     Date: 04/01/2020
Signatory's Name: Anne Hulecki
Signatory's Position: Attorney of Record

Signatory's Phone Number: 7817280059

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Anne Hulecki
   BOSTON TECHNOLOGY LAW, PLLC
   14th floor
   ONE BROADWAY, 14TH FLOOR
   CAMBRIDGE, Massachusetts 02142
Mailing Address:    Anne Hulecki
   BOSTON TECHNOLOGY LAW, PLLC
   14th floor
   ONE BROADWAY, 14TH FLOOR
   CAMBRIDGE, Massachusetts 02142
        
Serial Number: 88171067
Internet Transmission Date: Wed Apr 01 18:44:43 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXX:XXX:XXXX:XXXX:XXXX:XX
XX:XXXX-20200401184443549800-88171067-71
0a0252235d25520889891d265a3c605a4bc130fe
64a25ebb2e311bd33dcbe-N/A-N/A-2020040118
3757983338