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. 88193408 SPECTRUM(Standard Characters, see http://uspto.report/TM/88193408/mark.png) has been amended as follows:

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

ARGUMENTS:

 

Applicant respectfully requests reconsideration and withdrawal of the refusal of its SPECTRUM mark in view of the following prior registrations:

 

• U.S. Reg. No. 2,479,430 for GLOBAL SPECTRUM;

• U.S. Reg. No. 3,587,169 for GLOBAL SPECTRUM A SUBSIDIARY OF COMCAST SPECTACOR (stylized);

• U.S. Reg. No. 4,341,971 for FOOD SPECTRUM; and

• U.S. Reg. No. 4,946,794 for SPECTRUM COACHING.

 

 

Applicant has amended its identification of services to underscore fundamental distinctions between its services and the prior registrants' services.

 

Confusion is not likely for at least the following reasons: (1) there are many coexisting SPECTRUM marks in the field of business consultation and management-related services, so consumers of these types of services are adept at distinguishing the sources of the services—despite some similarities between the marks; (2) Applicant's SPECTRUM mark has coexisted with the cited marks without confusion for four years; (3) Applicant's services are specifically related to "site selection" and do not involve "business consultation and management services" and similar services; and (4) Applicant's amended identification of services underscores that Applicant's services are directed to meeting and convention organizers—consumers that are highly sophisticated and take great care in purchasing the relevant services, and consumers that are not in the same class as customers for business management consultation.

 

Amendment to Description of Services

 

Applicant requests entry of the following amendments to a) include the Office's specifically requested additions, and b) underscore that applicant's services are marketed to and performed for business meeting and convention organizers:

 

IC 035:  Business consultation services for business meeting and convention organizers in the field of site selection for business meetings, conventions, exhibitions, seminars, events, trade shows, and conferences; providing an internet website portal featuring access to business data for business meeting and convention organizers in the field of site selection for business meetings, conventions, exhibitions, seminars, events, trade shows, and conferences for business purposes.

 

There is No Likelihood of Confusion

  

The Trademark Office's determination of registrability is to be made on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973).  Not all of the factors are relevant and only those relevant factors for which there is evidence in the record must be considered. Id. at 1361-62, 177 USPQ at 567-68.  In this case, the most relevant factors are (1) number and nature of similar marks in use on similar services; (2) the length of time Applicant's SPECTRUM mark has been used concurrently used with the cited marks without evidence of actual confusion; (3) dissimilarity and nature of the covered services; and (4) conditions under which, and buyers to whom, sales are made.

 

The Cited Marks Are Not Entitled to a Broad Scope

 

There are at least four cited marks that include the term "SPECTRUM" used by three different parties for business consultancy and management related services.  That is, FOOD SPECTRUM and SPECTRUM COACHING coexist on the register with GLOBAL SPECTRUM, all for indisputably overlapping services.  "SPECTRUM" is therefore weak and afforded only a narrow scope of protection.  See TMEP 1207.01(d)(iii).  This coexistence demonstrates that consumers are able to distinguish the sources of the services, despite the relative similarities between the marks, by looking to other factors.  See id.  In fact, a search of TESS for "SPECTRUM" marks in class 35 retrieves 278 hits.

 

Here, despite the fact that the SPECTRUM appears in all these marks, consumers are able to differentiate Applicant as a source of services distinct from the sources of services offered under the cited marks.  Because "SPECTRUM" is so commonly used in traditional business consultancy and management related services, consumers look to other factors, such as distinctions in respective services and target markets, to distinguish among "SPECTRUM" marks.  In other words, the relevant consumers would not likely be confused by the sources of the services regardless of the fact that they are provided under marks that include the term "SPECTRUM".  Accordingly, this DuPont factor favors Applicant and a finding of no likelihood of confusion.

 

 

The Applied-For Mark and Cited Marks Have Been Coexisting

 

Applicant's SPECTRUM mark has coexisted with GLOBAL SPECTRUM, FOOD SPECTRUM, and SPECTRUM COACHING for four years.  The owner of the GLOBAL SPECTRUM and GLOBAL SPECTRUM A SUBSIDIARY OF COMCAST SPECTACOR (stylized) marks claimed to have been using its marks since 2000, while the owner of the SPECTRUM COACHING mark claimed to have been using his mark since 2008.  The owner of the FOOD SPECTRUM mark claimed a first use date of 2002.   

 

Applicant has been using SPECTRUM since at least as early as 2015, and has coexisted with the cited marks since then without any evidence of actual confusion.  Such peaceful coexistence further supports that consumers are adept at distinguishing the sources of the parties' respective services and thus, this DuPont factor weighs in favor of Applicant and a finding of no likelihood of confusion. 

 

Applicant's Services Are Unrelated to the Registrants' Services

 

Applicant's services for which registration is sought are specifically limited to business meeting site selection consultation.  The identification now underscores that these services are delivered to meeting and convention organizers. In contrast, the GLOBAL SPECTRUM, SPECTRUM COACHING, and FOOD SPECTRUM marks are for traditional business consultancy and management services. None of these marks is for services that encompass business event site selection consultation.  None of these marks is for services directed to event organizers. 

 

Both of the cited GLOBAL SPECTRUM marks cover business consulting and management services "for arenas, exhibition center, convention centers, stadiums, skating rinks, theaters, and general purpose facilities."  The use of the word "for" in the description clearly defines the limitation of the target consumers of these services—i.e., large venue operators or facility operators, generally.  The registrant's specimens of record corroborate this. In contrast to arenas and convention centers, applicant's customers are either businesses themselves that are organizing a business event or convention, or outside organizations that specialize in organizing meetings and conventions.  Because Applicant's target customer organizers are not arenas, convention centers and the like, Applicant's customers are not the same as the GLOBAL SPECTRUM registrant's customers.  So, the respective services would not be encountered "by the same persons in situations that would create the incorrect assumption that they originate from the same source," and thus, even if the marks are identical—which they are not—confusion is not likely.  See TMEP § 1207.01(a)(i) (emphasis added). Moreover, the GLOBAL SPECTRUM services are business development, consulting, and management services.  Applicant's services have nothing to do with business development or management of business.  And, since the GLOBAL SPECTRUM consulting services are for arenas, conventions centers, and the like, such services have nothing to do with site selection. 

 

With respect to the SPECTRUM COACHING registration, its "business consulting and coaching services" are fundamentally different from Applicant's site selection consultation services.  The "COACHING" in the mark makes it clear the services involve coaching an individual or a business.  That "business consultation and coaching services" do not encompass site selection consultation is underscored by the registrant's specimen of use, which states "Spectrum Coaching provides an opportunity for small organizations to either fine-tune what appears to be currently working or to significantly refine the culture of the organization."  Such services are markedly different from site selection services and are not marketed in the same way or to the same types of consumers.  Thus, confusion is highly unlikely.

 

The FOOD SPECTRUM mark also describes traditional business consultancy and management services.  Applicant's consultation on site selection by event organizers is wholly unrelated to general business management consultation.  Moreover, as the mark itself suggests, the services are primarily offered to food-related companies—consumers that are substantially different from business meeting and convention organizers.  This is corroborated by the  registrant's specimen of use, which refers to "Research on Prepared Refrigerated Foods."  Since the services would not be encountered "by the same persons in situations that would create the incorrect assumption that they originate from the same source," confusion is not likely.  See TMEP § 1207.01(a)(i).

 

Applicant acknowledges the research cited in the Office action which shows that some companies that offer both business consultancy and management services, as well as event planning services. But to be certain, companies offering both types of services is not the norm.  In fact, there are over 81,000 active applications and registrations that describe "business consultancy and management" services, whereas only 16 of those also reference event organization or planning services.  Because these types of services are not usually provided by the same entities, these services would not be related in the minds of the relevant consumers and would not confuse them as emanating from the same source.  Especially considering the common nature of SPECTRUM in such marks, those familiar with GLOBAL SPECTRUM and/or FOOD SPECTRUM and/or SPECTRUM COACHING for business consultation would tend to think that SPECTRUM brand site selection consultation services must emanate from the different source, since it is rare for the same company to offer both general business consulting services as well as specific event site selection consultation services.  The expertise and experience that qualifies a business to offer the one does not qualify it to offer the other.   

 

The Relevant Consumers are Sophisticated and Services are Purchased with Care

 

Purchasers of the Applicant's and Registrants' services are sophisticated and take great care prior to purchasing.  As Applicant made clear in its amendment, the services offered under its SPECTRUM mark are geared towards sophisticated consumers—i.e., convention and meeting organizers.  Such consumers are knowledgeable in the nuances between traditional business consultancy and management services versus site (or venue) selection consultancy services, and would not be easily confused by minor similarities of marks. 

 

***

 

For the foregoing reasons, Applicant submits that confusion is not likely, especially considering the coexisting SPECTRUM marks, the long coexistence of the SPECTRUM with GLOBAL SPECTRUM, FOOD SPECTRUM, and  SPECTRUM COACHING without confusion, the differences in Applicant's services as compared to the traditional business consultation and management services, and the highly sophisticated class of consumers of Applicant's services.  Applicant therefore respectfully requests approval of its application for registration.

 

            Applicant further submits that there is no risk of confusion with respect to the marks in the cited applications.  The first two marks are SPECTRUM EQUITY for business consulting services.  There is no risk of confusion for the same reasons as discussed above.  In particular, SPECTRUM EQUITY is not entitled to a broad scope, and applicant's services are unrelated to business consulting services.  The third mark is MY SPECTROOM for "business information via a website."  Applicant's services have nothing to do with these services, and the marks are wholly distinct.  The fourth mark is SPECTRUM + design for "human resources consulting;business management consulting with regard to personnel, temporary personnel leasing; professional staffing and recruiting services; career counseling, namely, providing advice concerning education options to pursue career opportunities; business consulting."  Applicant's services, as discussed above, are limited to the field of site selection and are not encompassed by or relevant to the services recited in this fourth application. 

 

Applicant therefore requests approval of its application 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 Business consultation in the field of site selection for business meetings, conventions, exhibitions, seminars, events, trade shows, and conferences; providing an internet website portal featuring access to data in the field of site selection for business meetings, conventions, exhibitions, seminars, events, trade shows, and conferences
Original Filing Basis:
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 00/00/2015 and first used in commerce at least as early as 00/00/2015 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Business consultation in the field of site selection for business meetings, conventions, exhibitions, seminars, events, trade shows, and conferences; Business consultation services for business meeting and convention organizers in the field of site selection for business meetings, conventions, exhibitions, seminars, events, trade shows, and conferences; providing an internet website portal featuring access to data in the field of site selection for business meetings, conventions, exhibitions, seminars, events, trade shows, and conferences; providing an internet website portal featuring access to business data for business meeting and convention organizers in the field of site selection for business meetings, conventions, exhibitions, seminars, events, trade shows, and conferences for business services.Class 035 for Business consultation services for business meeting and convention organizers in the field of site selection for business meetings, conventions, exhibitions, seminars, events, trade shows, and conferences; providing an internet website portal featuring access to business data for business meeting and convention organizers in the field of site selection for business meetings, conventions, exhibitions, seminars, events, trade shows, and conferences for business services.
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 00/00/2015 and first used in commerce at least as early as 00/00/2015 , and is now in use in such commerce.
The applicant's current attorney information: Paul I. J. Fleischut. Paul I. J. Fleischut of STINSON LEONARD STREET LLP, is located at

      7700 FORSYTH BLVD, SUITE 1100
      ST. LOUIS, Missouri 63105-1821
      US
The docket/reference number is MRZ 10143.

The phone number is 314-863-0800.

The fax number is 314.863.9388.

The email address is stl.ustrademarks@stinson.com

The applicants proposed attorney information: Paul I. J. Fleischut. Paul I. J. Fleischut of STINSON LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      7700 FORSYTH BLVD, SUITE 1100
      ST. LOUIS, Missouri 63105-1821
      United States
The docket/reference number is MRZ 10143.

The phone number is 314-863-0800.

The fax number is 314.863.9388.

The email address is stl.ustrademarks@stinson.com

Paul I. J. Fleischut submitted the following statement: I attest that I am an 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).
The applicant's current correspondence information: PAUL I. J. FLEISCHUT. PAUL I. J. FLEISCHUT of STINSON LEONARD STREET LLP, is located at

      7700 FORSYTH BLVD, SUITE 1100
      ST. LOUIS, Missouri 63105-1821
      US
The docket/reference number is MRZ 10143.

The phone number is 314-863-0800.

The fax number is 314.863.9388.

The email address is stl.ustrademarks@stinson.com

The applicants proposed correspondence information: Paul I. J. Fleischut. Paul I. J. Fleischut of STINSON LLP, is located at

      7700 FORSYTH BLVD, SUITE 1100
      ST. LOUIS, Missouri 63105-1821
      United States
The docket/reference number is MRZ 10143.

The phone number is 314-863-0800.

The fax number is 314.863.9388.

The email address is stl.ustrademarks@stinson.com

SIGNATURE(S)
Response Signature
Signature: /paul fleischut/     Date: 08/05/2019
Signatory's Name: Paul I. J. Fleischut
Signatory's Position: Attorney of record, Missouri bar member

Signatory's Phone Number: 314-345-7003

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:    PAUL I. J. FLEISCHUT
   STINSON LEONARD STREET LLP
   
   7700 FORSYTH BLVD, SUITE 1100
   ST. LOUIS, Missouri 63105-1821
Mailing Address:    Paul I. J. Fleischut
   STINSON LLP
   7700 FORSYTH BLVD, SUITE 1100
   ST. LOUIS, Missouri 63105-1821
        
Serial Number: 88193408
Internet Transmission Date: Mon Aug 05 16:53:15 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201908051653155
53836-88193408-610b05d5a4d543aee8591508d
2fe6f51754b0e15422ed4472d45483a6e6d7c245
5-N/A-N/A-20190805164336028662