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. 88297585 OPTIKA(Standard Characters, see http://uspto.report/TM/88297585/mark.png) has been amended as follows:

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

The examining attorney refuses registration on the grounds that Applicant’s mark, OPTIKA for “[d]isplays and display systems for communications and enterprise collaboration,” is likely to cause confusion with the marks of US Reg. 5001401 (OPTEKA for “cameras and replacement parts therefor; lenses for photographic apparatus; camera accessories, namely, filters, tripods, flashes; lights for use with digital and video cameras; camera bags and cases; batteries and battery chargers; and remote camera shutter release cords”) and US Reg. 4241331 (OPTICA for “electronic video surveillance products, namely, electronic components of security systems and video surveillance and security software; video cameras for surveillance and security”).

 

The examining attorney also identifies prior-pending applications Serial No. 88/286005 and Serial No. 87883244. As application Serial No. 88/286005 is now “dead,” Applicant addresses herebelow the refusals as to the prior registrations and the remaining prior-pending application only. As to all of these, Applicant respectfully submits that consumer confusion is unlikely for at least the following reasons.

 

In the first instance, Applicant respectfully submits that the refusal is arbitrary and capricious in nature. This conclusion is supported by the number of third-party applications and registrations for OPTICA and OPTEKA, including those cited by the examining attorney in this case, which have not been subjected to refusals in view of each other. In other words, the Office in numerous prior instances found applications for OPTICA and OPTEKA to create no basis for a 2(d) refusal but, inexplicably, that same conclusion does not hold in the case of Applicant’s mark.

 

The table below summarizes these prior applications and registrations and the 2(d) refusals, if any, made against them.

 

Reg./App. No.	Filing Date	Mark	Goods/Services in Class 9	2(d) Refusal?
88/286005	1 February 2019	OPTICA	video screens, video display units	2(d) over Reg. 4241331 only
87/883244	18 April 2018	OPTICA	Computer software and computer components and parts	No 2(d) Refusal
5001401	22 June 2015	OPTEKA	Cameras and camera accessories	No 2(d) Refusal
4241331	13 March 2012	OPTICA	Electronic video surveillance products, namely, electronic components of security systems and video surveillance and security software; Video cameras for surveillance and security	No 2(d) Refusal

 

Despite the examining attorney’s assertion that the goods of each of the above-highlighted entries support an actual or potential 2(d) refusal, a review of the Office’s own records reflects that only in the case of now-abandoned application 88/286005 was a 2(d) refusal made over any of these prior applications or registrations. On the examining attorney’s logic as applied in Applicant’s case, it stands to reason that the Office should have also refused registration under Section 2(d) as to each of Application 87/883244 and Registration 5001401. However, no such refusal were imposed. It therefore also stands to reason that at least the actual and potential refusals as to Application 87/883244 and Registration 5001401 are arbitrary and capricious. Otherwise, there is simply no rational basis for the Office’s decision not to impose 2(d) refusals in those cases while making such refusals here.

 

To avoid being arbitrary and capricious, therefore, the 2(d) refusal in this case should be limited to prior registration 4241331 only.

 

Accepting, arguendo, the propriety of the refusals, Applicant addresses the merits thereof as follows:

 

Applicant seeks to register OPTIKA for, as currently amended, “[t]ouchscreen displays and display systems that comprise touchscreen displays for communications and enterprise collaboration between remotely located persons.” (Emphasis added.)

 

Registration 4241331 comprehends the mark OPTICA for goods including “electronic video surveillance products, namely, electronic components of security systems and video surveillance and security software…” and “[v]ideo cameras for surveillance and security….”

 

Applicant’s mark is distinguishable from that of the prior registrant in having a “K” in place of the “C.” While this creates no aural distinction, the visual similarities are meaningful. Indeed, the Office’s registration of the mark OPTEKA (Reg. 5001401) over the OPTICA mark of Reg. 4241331, despite the examining attorney’s implicit assertion in this case that the goods of these registrations are related, evidences the significance of otherwise seemingly minor spelling changes.

 

Furthermore, Applicant goods are distinguishable from those of Reg. 4241331, with Applicant’s goods being (as amended) touchscreen displays and display systems that comprise touchscreen displays for communications and enterprise collaboration between remotely located persons, while the goods of the prior registration are video surveillance products (e.g., video cameras). These distinctions are likewise meaningful. As the Office’s registration and allowance of the marks of Reg. 4241331 and Reg. 5001401, and of application Ser. No. 87/883244, demonstrate, OPTICA (and the variant OPTEKA) are treated as weak marks by the USPTO, such the differences in goods suffice to weigh in favor of concluding that consumer confusion is unlikely. Thus, in the case of the foregoing prior application and registrations, OPTICA (for computer software and computer components and parts) and OPTEKA (cameras and camera accessories) were each allowed or registered over OPTICA (for video surveillance products), despite the aural similarities between OPTICA and OPTEKA.

 

Registration 5001401 comprehends the mark OPTEKA for cameras and camera accessories.

 

Here again, Applicant’s goods – namely, “[t]ouchscreen displays and display systems that comprise touchscreen displays for communications and enterprise collaboration between remotely located persons” – are sufficiently different from those of Reg. 5001401 as to render confusion unlikely. Again, that conclusion is informed by the registration of the mark of Reg. 5001401 over the mark of Reg. 4241331, as well as the absence of any 2(d) refusal of application Ser. No. 87/883244 over either earlier registration. The goods of Reg. 4241331 and Ser. No. 87/883244 are no more different from the goods of Reg. 5001401 than are Applicant’s goods.

 

Application Serial No. 87/883244 comprehends the mark OPTICA for computer software and computer components and parts. Once again, Applicant’s “[t]ouchscreen displays and display systems that comprise touchscreen displays for communications and enterprise collaboration between remotely located persons” are sufficiently different from those of application Ser. No. 87/883244 as to render confusion unlikely. As with the other cited marks, this conclusion is informed by the absence of any 2(d) refusal of application Ser. No. 87/883244 over either of Reg. 4241331 or Reg. 4241331. The goods of Reg. 4241331 or Reg. 4241331 are no more different from those of Ser. No. 87/883244 than are Applicant’s goods.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Displays and display systems for communications and enterprise collaboration
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 03/01/2013 and first used in commerce at least as early as 03/01/2013 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Displays and display systems for communications and enterprise collaboration; Touchscreen displays and display systems that comprise touchscreen displays for communications and enterprise collaboration between remotely located personsClass 009 for Touchscreen displays and display systems that comprise touchscreen displays for communications and enterprise collaboration between remotely located persons
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 03/01/2013 and first used in commerce at least as early as 03/01/2013 , and is now in use in such commerce.
The applicant's current attorney information: Christopher A. Mitchell, Esq.. Christopher A. Mitchell, Esq. of DICKINSON WRIGHT PLLC, is located at

      SUITE 300
      350 S. MAIN STREET
      ANN ARBOR, Michigan 48104
      US
The docket/reference number is 59542-7036.

The phone number is 616-336-1058.

The email address is cmitchell@dickinsonwright.com

The applicants proposed attorney information: Christopher A. Mitchell, Esq.. Christopher A. Mitchell, Esq. of DICKINSON WRIGHT PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 300
      350 S. MAIN STREET
      ANN ARBOR, Michigan 48104
      United States
The docket/reference number is 59542-7036.

The phone number is 616-336-1058.

The email address is cmitchell@dickinsonwright.com

Christopher A. Mitchell, Esq. submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: CHRISTOPHER A. MITCHELL, ESQ.. CHRISTOPHER A. MITCHELL, ESQ. of DICKINSON WRIGHT PLLC, is located at

      SUITE 300
      350 S. MAIN STREET
      ANN ARBOR, Michigan 48104
      US
The docket/reference number is 59542-7036.

The phone number is 616-336-1058.

The email address is cmitchell@dickinsonwright.com; dwtrademarks@dickinsonwright.com

The applicants proposed correspondence information: Christopher A. Mitchell, Esq.. Christopher A. Mitchell, Esq. of DICKINSON WRIGHT PLLC, is located at

      SUITE 300
      350 S. MAIN STREET
      ANN ARBOR, Michigan 48104
      United States
The docket/reference number is 59542-7036.

The phone number is 616-336-1058.

The email address is cmitchell@dickinsonwright.com; dwtrademarks@dickinsonwright.com

SIGNATURE(S)
Response Signature
Signature: /Chris Mitchell/     Date: 08/26/2019
Signatory's Name: Christopher A. Mitchell, Esq.
Signatory's Position: Attorney of Record (MI Bar member // USPTO Bar member)

Signatory's Phone Number: 616 336 1058

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:    CHRISTOPHER A. MITCHELL, ESQ.
   DICKINSON WRIGHT PLLC
   SUITE 300
   350 S. MAIN STREET
   ANN ARBOR, Michigan 48104
Mailing Address:    Christopher A. Mitchell, Esq.
   DICKINSON WRIGHT PLLC
   SUITE 300
   350 S. MAIN STREET
   ANN ARBOR, Michigan 48104
        
Serial Number: 88297585
Internet Transmission Date: Mon Aug 26 14:51:13 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201908261451133
90070-88297585-610d0d377b436bb232ad8ddcf
3d71c295234fec447db1909d6b955c6fb9d3dfbe
-N/A-N/A-20190826141631481471