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. 88343349 POLY (Stylized and/or with Design, see http://uspto.report/TM/88343349/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: POLY (Stylized and/or with Design, see http://uspto.report/TM/88343349/mark.png)
Proposed: PPP POLY (Stylized and/or with Design, see mark)
The applicant is not claiming color as a feature of the mark.
The mark consists of three lowercase letter Ps forming a triangular design to the left of the word "POLY." The upper portions of the first three letter Ps are joined together to form a circle with the three stems protruding equidistantly from the circle. The three protruding stems create an equilateral-triangular shape surrounding the circle, thus appearing like a propeller and reminiscent of Applicant's three-legged speakerphone.

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

This Response is submitted in reply to the Examining Attorney’s Office Action, dated May 15^th, 2019, in which the Examining Attorney 1) issued a likelihood of confusion refusal with respect to U.S. Registration No. 5513249; 2) issued a potential likelihood of confusion advisory with respect to Application Serial Nos. 87251648 and 87753178; 3) issued a requirement for a more specific identification of services, and; 4) issued a requirement for a more specific mark description.

 

Applicant thanks the Examining Attorney for her thoughtful consideration, and in accordance with email and telephone communications with the Examining Attorney, hereby amends the identification of services to read as follows:

 

“Communications services, namely, providing facilities and equipment for audio and video conferencing, data exchange, telepresence conferencing, and real-time collaboration; Telecommunications services, namely, electronic transmission of voice signals, data, facsimiles, images and information” in International Class 38.

 

In addition, applicant hereby amends the mark description to read as follows:

 

The mark consists of three lowercase letter Ps forming a triangular design to the left of the word "POLY." The upper portions of the first three letter Ps are joined together to form a circle with the three stems protruding equidistantly from the circle. The three protruding stems create an equilateral-triangular shape surrounding the circle, thus appearing like a propeller and reminiscent of Applicant's three-legged speakerphone.

 

Applicant respectfully submits that the requirements for an acceptable identification of services and mark description are hereby satisfied.  Further, based on the narrow scope of services listed in the application, combined with the arguments and evidence provided below, Applicant requests that the likelihood of confusion refusal and potential likelihood of confusion advisories be withdrawn, and the application be approved for publication.

 

The Applied For Mark Does Not Create a Likelihood of Confusion with the Mark in U.S. Registration No. 5513249

 

Determining likelihood of confusion is 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 (C.C.P.A. 1973).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  As demonstrated by the arguments and evidence below, the first du Pont factor (the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression) and second du Pont factor (the similarity or dissimilarity of the services as described in an application and registration) strongly disfavor a finding of likelihood of confusion.

 

 

1. The First du Pont Factor – Similarity of the Marks in their Entireties

 

Although the weight given to the relevant du Pont factors may vary, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression is generally considered one of the most important factors when considering likelihood of confusion.  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.

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  The marks in this case must be considered in their entireties.  According to USPTO examination policy:

 

… an examining attorney must still consider applicant’s mark as a whole in a Section 2(d) analysis.  See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1341, 115 USPQ2d 1671, 1676 (Fed. Cir. 2015) (“While the Board may properly afford more or less weight to particular components of a mark for appropriate reasons, it must still view the mark as a whole.”) (citing In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750 (Fed. Cir. 1985)).

 

Applicant’s numerous claimed prior registrations for POLYCOM for highly similar, if not identical, services predated the cited registrant’s POLYNET application, yet both were allowed to co-exist on the Principal Register despite the fact that both begin with the formative prefix “POLY,” and arguably share a similar commercial impression.  Indeed, the marks POLYCOM and POLYNET, and the referenced registrations, are more similar to each other than either one is to the mark of the present application.   Although sharing the term POLY, the prior registered marks are clearly distinguished from each other due to the difference in sound and appearance because applicant’s marks do not contain the suffix NET, and the cited Registrant’s mark does not contain the suffix COM.

 

Applying the same analysis to the present case, comparing the marks in their entireties reveals clear differences in sound, meaning, and overall commercial impression.  Applicant’s mark does not end in the suffix NET.  Further, the cited registrant’s mark does not begin with a stylized P (or stylized PPP), which creates additional distinguishing wording to differentiate applicant’s mark from cited registrant’s mark.  Additionally, the mark of the present application does not merely share the “POLY” prefix, like the referenced registrations, but its wording consists entirely of the word POLY.  Thus, the visual dissimilarities in the two marks at issue are quite obvious.

 

Aside from the visual differences, when the cited registrant’s mark is pronounced, it contains three syllables and clearly sounds different from the mark of the present application, which only contains two syllables.

 

When considering the marks in their entireties, the difference in the cited registrant’s inclusion of NET, as well as the stylized PPP as the first element in applicant’s mark, coupled with the history of coexistence of applicant’s POLYCOM marks with the cited registrant’s mark, the marks can clearly co-exist on the Principal Register without creating a likelihood of confusion.

 

2. The Narrowed Identification of Services No Longer Directly Overlaps With the Services of the Cited Registrant (The Second du Pont Factor)

 

The application previously uses broad wording to describe the services, which did presumably encompass all services of the type described including cited Registrant’s more narrow services.  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).

 

However, applicant has significantly narrowed the scope of its identification of services to more accurately specify the type of communications services it provides.  The identification now specifies, “Communications services, namely, providing facilities and equipment for audio and video conferencing, data exchange, telepresence conferencing, and real-time collaboration; Telecommunications services, namely, electronic transmission of voice signals, data, facsimiles, images and information.”

 

While the identification of services remains in the telecommunications field, the narrowed services are no longer presumed to be identical to those of the cited Registrant, which raises the standard of how similar the marks need to be in order to find a likelihood of confusion.  See In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014) (quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992)); TMEP §1207.01(b).

 

3. Summary

 

Because the identification of services are narrowed so that the services are no longer presumed to be identical, and because of the differences between the marks when they are analyzed in their entireties, no likelihood of confusion exists between the applicant’s mark and cited registrant’s marks.

 

Accordingly, Applicant respectfully requests that the 2(d) refusal be withdrawn.

 

The Applied For Mark Does Not Create a Likelihood of Confusion with the Marks in Application Serial Nos. 87251648 and 87753178

 

As discussed in the section above, the marks in the prior pending applications are significantly different in meaning and commercial impression.  The presence of Amazon Technologies, Inc.’s well-recognized term AMAZON creates a strong distinction in sound and appearance.  Additionally, see attached as Exhibit A, definitions from Dictionary.com, showing that while POLY may mean “much; many” or “polytechnic,” the term POLLY means “a tame parrot” or “a female given name.”  Accordingly, the terms POLY and POLLY have completely different meanings, and create significantly different commercial impressions.  As such, Applicant respectfully requests that the advisory be withdrawn, and the application be allowed to proceed to publication.

 

While Applicant respectfully asserts that there is no likelihood of confusion and that the present application should be passed to publication, Applicant reserves the right to fully address the issue of likely confusion at such time as the cited applications become registered and form the basis of a Section 2(d) rejection, if ever.

 

CONCLUSION

 

The statements and amendments set forth in this response are believed to fully address the Examining Attorney’s concerns and the application is believed to be in condition for publication, which action is respectfully requested. 

 

If a telephone conference would assist in resolving any additional issues, the Examining Attorney is requested to contact the undersigned attorney at (512) 476-7900.

EVIDENCE

Original PDF file:
evi_7166117234-20190812091609581595_._Exhibit_A.PDF
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Communications services; Telecommunications services
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: Communications services; Communications services, namely, providing facilities and equipment for audio and video conferencing, data exchange, telepresence conferencing, and real-time collaboration; Telecommunications services; Telecommunications services, namely, electronic transmission of voice signals, data, facsimiles, images and informationClass 038 for Communications services, namely, providing facilities and equipment for audio and video conferencing, data exchange, telepresence conferencing, and real-time collaboration; Telecommunications services, namely, electronic transmission of voice signals, data, facsimiles, images and information
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.

The applicant's current attorney information: John C. Cain. John C. Cain of Fleckman & McGlynn, PLLC, is located at

      8945 Long Point Rd., Ste 120
      Houston, Texas 77055
      US
The docket/reference number is 6199-322US.

The phone number is 7137220120.

The fax number is 713-722-0122.

The email address is trademarks@fleckman.com

The applicants proposed attorney information: John C. Cain. Other appointed attorneys are Jason Paul Blair, and all other attorneys with Fleckman & McGlynn, PLLC. John C. Cain of Fleckman & McGlynn, PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      8945 Long Point Rd., Ste 120
      Houston, Texas 77055
      United States
The docket/reference number is 6199-322US.

The phone number is 7137220120.

The fax number is 713-722-0122.

The email address is trademarks@fleckman.com

John C. Cain 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: John C. Cain. John C. Cain of Fleckman & McGlynn, PLLC, is located at

      8945 Long Point Rd., Ste 120
      Houston, Texas 77055
      US
The docket/reference number is 6199-322US.

The phone number is 7137220120.

The fax number is 713-722-0122.

The email address is trademarks@fleckman.com

The applicants proposed correspondence information: John C. Cain. John C. Cain of Fleckman & McGlynn, PLLC, is located at

      8945 Long Point Rd., Ste 120
      Houston, Texas 77055
      United States
The docket/reference number is 6199-322US.

The phone number is 7137220120.

The fax number is 713-722-0122.

The email address is trademarks@fleckman.com

SIGNATURE(S)
Response Signature
Signature: /Jason Paul Blair/     Date: 08/12/2019
Signatory's Name: Jason Paul Blair
Signatory's Position: Attorney at Fleckman & McGlynn, PLLC, Texas and Indiana Bar Member

Signatory's Phone Number: 512-476-7900

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:    John C. Cain
   Fleckman & McGlynn, PLLC
   
   8945 Long Point Rd., Ste 120
   Houston, Texas 77055
Mailing Address:    John C. Cain
   Fleckman & McGlynn, PLLC
   8945 Long Point Rd., Ste 120
   Houston, Texas 77055
        
Serial Number: 88343349
Internet Transmission Date: Mon Aug 12 09:21:54 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019081209215470
3684-88343349-610fc1ca1e4e2b90cafce10c86
2686bab58dfc5306f9ed23e58dccf6fe9f25-N/A
-N/A-20190812091609581595