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. 88201437 COGNITION(Standard Characters, see http://uspto.report/TM/88201437/mark.png) has been amended as follows:

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

The U.S. Patent and Trademark Office (the “PTO”) has initially refused registration of U.S. Application Serial No. 88/201437 for the mark COGNITION (the “Applicant’s Mark”) based on the existence of U.S. Registration No. 5,493,273 for the mark COGNITION (the “Cited Mark”).

 

The PTO reasons that the Applicant’s Mark and the Cited Mark are similar, and likely to be confused, because they both feature the same wording, and that the goods of the Applicant and goods/services of the Registrant are related because “the goods/services are both software, that perform related functions in the same industry” and are “presumed to travel in the same channels of trade to the same class of purchasers.”

 

Respectfully, because the Applicant’s offering is very narrowly focused and clearly related to the dispensation and management of medication scripts and shipment of medications, whereas the Cited Mark covers database management in the field of product development, compliance and commercialization and SAAS for use in database management in the field of product development, compliance, and commercialization, the software does not in fact perform related functions and also cannot automatically be presumed without evidence to travel in the same trade channels.  All in all, confusion as to source and the respective offerings is highly unlikely.

 

The PTO’s argument that “both applicant and registrant’s software performs functions related to hardware and data output in the medical field” and “the goods/services are both software that perform related functions in the same industry” ignores the longstanding PTO requirement that an applicant must specify the exact use/purpose/function of its software product so as to avoid lumping together all types of software that actually do not overlap in the marketplace. In this instance, the same consumers are not likely to encounter the same marks since they will perform different functions and come from totally distinct trade channels.  

 

While it may be convenient to argue that the respective products are related simply because they are both software products, respectfully, the purpose and function of each is clearly different.  It appears that the PTO is reading the Cited Mark’s recitation overly broadly without taking into account the distinct use/purpose/function of the software products, as well as the realities of the marketplace.  Due to the functional differences between Applicant's and Registrant's products, it is unlikely that a prospective purchaser of either entity’s product would believe there is any relationship between the two sources or their respective goods. Furthermore, users of these different products are particularly sophisticated and would be careful in calling for the goods and would not be confused by the use of COGNITION on functionally different products. For these reasons, the PTO should withdraw its refusal of registration under Section 2(d). The mere possibility that relevant consumers might relate the two different marks does not meet the statutorily established test of likelihood of confusion. E.g., In re Hughes Aircraft Company, 222 U.S.P.Q. 263, 264 (TTAB 1984) ("the Trademark Act does not preclude registration of a mark where there is a possibility of confusion as to source or origin, only where such confusion is likely") (emphasis added).

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Software for integrating third party automation equipment, namely, software that uses logic to drive and coordinate elaborate hardware systems to dispense medication scripts that can be sent to pharmacies and direct to patients, and with which users interact to manage the medication scripts, hardware operations/functionality, and to ship medications to their destination
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: Software for integrating third party automation equipment, namely, software that uses logic to drive and coordinate elaborate hardware systems to dispense medication scripts that can be sent to pharmacies and direct to patients, and with which users interact to manage the medication scripts, hardware operations/functionality, and to ship medications to their destination; Software for integrating third party automation equipment, namely, software that uses logic to drive and coordinate elaborate hardware systems to dispense medication scripts that can be sent to pharmacies and direct to patients, and with which users interact to manage the medication scripts, manage the hardware operations and functionality, and to ship medications to their destinationClass 009 for Software for integrating third party automation equipment, namely, software that uses logic to drive and coordinate elaborate hardware systems to dispense medication scripts that can be sent to pharmacies and direct to patients, and with which users interact to manage the medication scripts, manage the hardware operations and functionality, and to ship medications to their destination
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: /anr/     Date: 06/13/2019
Signatory's Name: Auma N. Reggy
Signatory's Position: Attorney of record, Georgia bar member

Signatory's Phone Number: (404) 461-5216

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: 88201437
Internet Transmission Date: Thu Jun 13 15:09:42 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20190613150942066
785-88201437-620199c8368b5704422e64c5a31
678078a7e42b6640279677334e9223b46712654-
N/A-N/A-20190613150636763712