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
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
88348211 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 127 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/88348211/mark.png |
| LITERAL ELEMENT |
IWD |
| STANDARD CHARACTERS |
YES |
| USPTO-GENERATED IMAGE |
YES |
| MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) |
| Standard of Analysis While all registered marks are entitled to protection against the registration of a similar mark for closely related goods or
services, The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that merely descriptive and weak designations may be entitled to a narrower scope of
protection than an entirely arbitrary or coined word. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-39, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). With respect to marks registered on
the Supplemental Register, the Board stated the following in In re Hunke & Jochheim: [R]egistration on the Supplemental Register may be considered to establish prima facie that, at least at the
time of registration, the registered mark possessed a merely descriptive significance. This is significant because it is well established that the scope of protection afforded a merely descriptive or
even a highly suggestive term is less than that accorded an arbitrary or coined mark. That is, terms falling within the former category have been generally categorized as "weak" marks, and the scope
of protection extended to these marks has been limited to the substantially identical notation and/or to the subsequent use and registration thereof for substantially similar goods. 185 USPQ 188, 189
(TTAB 1975) (citation omitted). That said, registrations on the supplemental register are not subject to and do not receive the advantages of section 1057(b), which includes the exclusive right to
use the registered mark in commerce or in connection with the goods or services specified in the certificate. 15 U.S.C. ?1094; ?1057(b). While the mark IWDM in U.S. Registration No. 3960111 is
entitled to protection, because it is both descriptive (see analysis below) and registered on the Supplemental Register, it is a weaker protection than would be afforded a mark on the Principal
register or one that is arbitrary or fanciful. Additionally, because it is on the Supplemental Register, the owner of the mark is acknowledging that they do not claim the exclusive right to use the
mark, which must be considered in the analysis of a ?2(d) refusal for likelihood of confusion. Comparison of Marks Similarity in meaning or connotation is a factor in determining whether the marks
are confusingly similar. See 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 Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009). Additions or
deletions to marks may be sufficient to avoid a likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the
marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted. See, e.g., Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344,
1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011). The meaning or connotation of a mark must be determined in relation to the named goods or services. Even marks that are identical in sound and/or
appearance may create sufficiently different commercial impressions when applied to the respective parties? goods or services so that there is no likelihood of confusion. See, e.g., In re Sears,
Roebuck & Co., 2 USPQ2d 1312, 1314 (TTAB 1987). Here, applicant?s mark is IWD and the mark in the cited registration is IWDM. Although applicant?s mark is entirely incorporated within the
registered mark, they are not identical in appearance, sound, and connotation. The registrant?s mark, IWDM, is a descriptive term for the product and related services offered by registrant. ?WDM?
itself is a generic term for a technique in fiber optic transmission, referring to the goods and services to which the mark applies, and the prefix ?I-? is a diminutive descriptor denoting the
specific subtype. Other subtypes include ?C-? and ?D-.? Conversely, the ?I? in IWD is not a prefix or diminutive, but is an integral part of the mark. Similarly, the lack of an ?M? in IWD removes any
association with fiber optics or services related to fiber optics since the ?M? is a significant part in the abbreviation ?WDM,? therefore relevant to the impression made by IWDM. Because the
connotation of the marks must be considered in light of their goods and/or services, the meaning of IWDM in regards to fiber optics has a completely different connotation from IWD in regards to
website creation. Therefore, the marks in their entireties convey significantly different commercial impressions. Comparison of Services The issue is not whether the goods and/or services will be
confused with each other, but rather whether the public will be confused as to their source. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). The degree of
?relatedness? must be viewed in the context of all the factors, in determining whether the services are sufficiently related that a reasonable consumer would be confused as to source or sponsorship.
In re Binion, 93 USPQ2d 1531, 1534, 1535 (TTAB 2009); In re Ass?n of the U.S. Army, 85 USPQ2d 1264, 1267-68, 1270 (TTAB 2007) ; Hilson Research Inc. v. Soc?y for Human Res. Mgmt., 27 USPQ2d 1423,
1429 (TTAB 1993) Some such factors include the conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing (see TMEP ?1207.01(d)(vii)) and if the
goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate
from the same source, then, even if the marks are identical, confusion is not likely. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir.
2012) Additionally, the facts in each case vary and the weight to be given each relevant du Pont factor may be different in light of the varying circumstances; therefore, there can be no rule that
certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto. Info. Res. Inc. v. X*Press Info. Servs., 6 USPQ2d
1034, 1038 (TTAB 1988) (regarding computer hardware and software) In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) (regarding computer hardware and software) see also M2 Software, Inc. v. M2
Commc'ns, Inc., 450 F.3d 1378, 1383, 78 USPQ2d 1944, 1947?48 (Fed. Cir. 2006) (noting that relatedness between software-related goods may not be presumed merely because the goods are delivered in the
same media format and that, instead, a subject-matter-based mode of analysis is appropriate) Particularly relevant here is Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668, 1669 (TTAB 1986),
holding QR for coaxial cable and QR for various apparatus used in connection with photocopying, drafting, and blueprint machines not likely to cause confusion because of the differences between the
parties? respective goods in terms of their nature and purpose, how they are promoted, and who they are purchased by. Like Quartz Radiation Corp, the applicant?s mark IWD for website development is
not likely to cause confusion with registered mark IWDM for fiber optic related computer and consulting services. The purchasers of fiber optic technology with relevant support are sophisticated
purchasers building computers, as opposed to the more general IT support and consulting cited as evidence. Additionally, website development, which does include a certain level of consulting (as do
many other fields), is not per se the same as ?computer consultation.? While some other companies may offer both services in their most generic or entry-level sense, the consumers of fiber optics are
not likely to encounter both services at the same time and it is highly unlikely that they will be offered by the same provider. Furthermore, the registered mark IWDM in regards to IC 042 for
?consultant services? is narrowed by its use of ?relating to development, maintenance and updating of computer programs,? ?electric, electronic and/or optical apparatuses and instruments? and ?the
design and engineering of fiber optics.? Nowhere does the registered mark refer to internet or website consultation. Similarly, the applicant?s proposed mark does not include any consultation in
regards to the development of computer programs, apparatuses, instruments, or fiber optics. Therefore, although both IWDM and IWD may ?consult? consumers regarding ?computers,? neither is so broad as
to include the other?s field and they do not overlap. Conclusion While, at first glance and in the vacuum of trademark registration, the registered mark IWDM and applicant?s mark IWD may appear
similar, when taking into full account the relevant factors, including the weakness of the mark IWDM, the unrelated meanings of the marks in their relevant fields, and the dissimilarities of their
services, there is no likelihood of confusion of the applicant?s mark with U.S. Registration No. 3960111. |
| ATTORNEY SECTION (current) |
| NAME |
Meghan Pratschler |
| ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
| YEAR OF ADMISSION |
NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
| STREET |
6106 WEBBER COLE RD |
| CITY |
KINSMAN |
| STATE |
Ohio |
| POSTAL CODE |
44428 |
| COUNTRY |
US |
| PHONE |
513-255-6575 |
| EMAIL |
mepratschler@gmail.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| ATTORNEY SECTION (proposed) |
| NAME |
Meghan Pratschler |
| ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
| YEAR OF ADMISSION |
XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
| STREET |
5100 Leetsdale Dr, Apt 243 |
| CITY |
Denver |
| STATE |
Colorado |
| POSTAL CODE |
80246 |
| COUNTRY |
United States |
| PHONE |
4153359226 |
| EMAIL |
meghan.pratschler@piptechlaw.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| CORRESPONDENCE SECTION (current) |
| NAME |
MEGHAN PRATSCHLER |
| STREET |
6106 WEBBER COLE RD |
| CITY |
KINSMAN |
| STATE |
Ohio |
| POSTAL CODE |
44428 |
| COUNTRY |
US |
| PHONE |
513-255-6575 |
| EMAIL |
mepratschler@gmail.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| CORRESPONDENCE SECTION (proposed) |
| NAME |
Meghan Pratschler |
| STREET |
5100 Leetsdale Dr, Apt 243 |
| CITY |
Denver |
| STATE |
Colorado |
| POSTAL CODE |
80246 |
| COUNTRY |
United States |
| PHONE |
4153359226 |
| EMAIL |
meghan.pratschler@piptechlaw.com; mepratschler@gmail.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/Meghan Elizabeth Pratschler/ |
| SIGNATORY'S NAME |
Meghan Pratschler |
| SIGNATORY'S POSITION |
attorney of record |
| SIGNATORY'S PHONE NUMBER |
4153359226 |
| DATE SIGNED |
11/06/2019 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Wed Nov 06 09:59:49 EST 2019 |
| TEAS STAMP |
USPTO/ROA-XXXX:XXX:XXX:XX
X:XX:XXXX:XXXX:XXX-201911
06095949303346-88348211-7
008a1bf62a504828acaa02bfa
65d88766d3e0b72149dca6267
0545be644bace8-N/A-N/A-20
191106094851353347 |
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.
88348211 IWD(Standard Characters, see http://uspto.report/TM/88348211/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
Standard of Analysis While all registered marks are entitled to protection against the registration of a similar mark for closely related goods or services, The Court of Appeals for the Federal
Circuit and the Trademark Trial and Appeal Board have recognized that merely descriptive and weak designations may be entitled to a narrower scope of protection than an entirely arbitrary or coined
word. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-39, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). With respect to marks registered on the Supplemental Register, the Board stated the
following in In re Hunke & Jochheim: [R]egistration on the Supplemental Register may be considered to establish prima facie that, at least at the time of registration, the registered mark
possessed a merely descriptive significance. This is significant because it is well established that the scope of protection afforded a merely descriptive or even a highly suggestive term is less
than that accorded an arbitrary or coined mark. That is, terms falling within the former category have been generally categorized as "weak" marks, and the scope of protection extended to these marks
has been limited to the substantially identical notation and/or to the subsequent use and registration thereof for substantially similar goods. 185 USPQ 188, 189 (TTAB 1975) (citation omitted). That
said, registrations on the supplemental register are not subject to and do not receive the advantages of section 1057(b), which includes the exclusive right to use the registered mark in commerce or
in connection with the goods or services specified in the certificate. 15 U.S.C. ?1094; ?1057(b). While the mark IWDM in U.S. Registration No. 3960111 is entitled to protection, because it is both
descriptive (see analysis below) and registered on the Supplemental Register, it is a weaker protection than would be afforded a mark on the Principal register or one that is arbitrary or fanciful.
Additionally, because it is on the Supplemental Register, the owner of the mark is acknowledging that they do not claim the exclusive right to use the mark, which must be considered in the analysis
of a ?2(d) refusal for likelihood of confusion. Comparison of Marks Similarity in meaning or connotation is a factor in determining whether the marks are confusingly similar. See 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 Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009). Additions or deletions to marks may be sufficient to avoid a
likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers
as distinguishing source because it is merely descriptive or diluted. See, e.g., Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011). The
meaning or connotation of a mark must be determined in relation to the named goods or services. Even marks that are identical in sound and/or appearance may create sufficiently different commercial
impressions when applied to the respective parties? goods or services so that there is no likelihood of confusion. See, e.g., In re Sears, Roebuck & Co., 2 USPQ2d 1312, 1314 (TTAB 1987). Here,
applicant?s mark is IWD and the mark in the cited registration is IWDM. Although applicant?s mark is entirely incorporated within the registered mark, they are not identical in appearance, sound, and
connotation. The registrant?s mark, IWDM, is a descriptive term for the product and related services offered by registrant. ?WDM? itself is a generic term for a technique in fiber optic transmission,
referring to the goods and services to which the mark applies, and the prefix ?I-? is a diminutive descriptor denoting the specific subtype. Other subtypes include ?C-? and ?D-.? Conversely, the ?I?
in IWD is not a prefix or diminutive, but is an integral part of the mark. Similarly, the lack of an ?M? in IWD removes any association with fiber optics or services related to fiber optics since the
?M? is a significant part in the abbreviation ?WDM,? therefore relevant to the impression made by IWDM. Because the connotation of the marks must be considered in light of their goods and/or
services, the meaning of IWDM in regards to fiber optics has a completely different connotation from IWD in regards to website creation. Therefore, the marks in their entireties convey significantly
different commercial impressions. Comparison of Services The issue is not whether the goods and/or services will be confused with each other, but rather whether the public will be confused as to
their source. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). The degree of ?relatedness? must be viewed in the context of all the factors, in determining
whether the services are sufficiently related that a reasonable consumer would be confused as to source or sponsorship. In re Binion, 93 USPQ2d 1531, 1534, 1535 (TTAB 2009); In re Ass?n of the U.S.
Army, 85 USPQ2d 1264, 1267-68, 1270 (TTAB 2007) ; Hilson Research Inc. v. Soc?y for Human Res. Mgmt., 27 USPQ2d 1423, 1429 (TTAB 1993) Some such factors include the conditions under which and buyers
to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing (see TMEP ?1207.01(d)(vii)) and if the goods or services in question are not related or marketed in such a way that they
would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not
likely. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012) Additionally, the facts in each case vary and the weight to be given each
relevant du Pont factor may be different in light of the varying circumstances; therefore, there can be no rule that certain goods or services are per se related, such that there must be a likelihood
of confusion from the use of similar marks in relation thereto. Info. Res. Inc. v. X*Press Info. Servs., 6 USPQ2d 1034, 1038 (TTAB 1988) (regarding computer hardware and software) In re Quadram
Corp., 228 USPQ 863, 865 (TTAB 1985) (regarding computer hardware and software) see also M2 Software, Inc. v. M2 Commc'ns, Inc., 450 F.3d 1378, 1383, 78 USPQ2d 1944, 1947?48 (Fed. Cir. 2006) (noting
that relatedness between software-related goods may not be presumed merely because the goods are delivered in the same media format and that, instead, a subject-matter-based mode of analysis is
appropriate) Particularly relevant here is Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668, 1669 (TTAB 1986), holding QR for coaxial cable and QR for various apparatus used in connection with
photocopying, drafting, and blueprint machines not likely to cause confusion because of the differences between the parties? respective goods in terms of their nature and purpose, how they are
promoted, and who they are purchased by. Like Quartz Radiation Corp, the applicant?s mark IWD for website development is not likely to cause confusion with registered mark IWDM for fiber optic
related computer and consulting services. The purchasers of fiber optic technology with relevant support are sophisticated purchasers building computers, as opposed to the more general IT support and
consulting cited as evidence. Additionally, website development, which does include a certain level of consulting (as do many other fields), is not per se the same as ?computer consultation.? While
some other companies may offer both services in their most generic or entry-level sense, the consumers of fiber optics are not likely to encounter both services at the same time and it is highly
unlikely that they will be offered by the same provider. Furthermore, the registered mark IWDM in regards to IC 042 for ?consultant services? is narrowed by its use of ?relating to development,
maintenance and updating of computer programs,? ?electric, electronic and/or optical apparatuses and instruments? and ?the design and engineering of fiber optics.? Nowhere does the registered mark
refer to internet or website consultation. Similarly, the applicant?s proposed mark does not include any consultation in regards to the development of computer programs, apparatuses, instruments, or
fiber optics. Therefore, although both IWDM and IWD may ?consult? consumers regarding ?computers,? neither is so broad as to include the other?s field and they do not overlap. Conclusion While, at
first glance and in the vacuum of trademark registration, the registered mark IWDM and applicant?s mark IWD may appear similar, when taking into full account the relevant factors, including the
weakness of the mark IWDM, the unrelated meanings of the marks in their relevant fields, and the dissimilarities of their services, there is no likelihood of confusion of the applicant?s mark with
U.S. Registration No. 3960111.
The applicant's current attorney information: Meghan Pratschler. Meghan Pratschler, is located at
6106 WEBBER COLE RD
KINSMAN, Ohio 44428
US
The phone number is 513-255-6575.
The email address is mepratschler@gmail.com
The applicants proposed attorney information: Meghan Pratschler. Meghan Pratschler, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at
5100 Leetsdale Dr, Apt 243
Denver, Colorado 80246
United States
The phone number is 4153359226.
The email address is meghan.pratschler@piptechlaw.com
Meghan Pratschler 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: MEGHAN PRATSCHLER. MEGHAN PRATSCHLER, is located at
6106 WEBBER COLE RD
KINSMAN, Ohio 44428
US
The phone number is 513-255-6575.
The email address is mepratschler@gmail.com
The applicants proposed correspondence information: Meghan Pratschler. Meghan Pratschler, is located at
5100 Leetsdale Dr, Apt 243
Denver, Colorado 80246
United States
The phone number is 4153359226.
The email address is meghan.pratschler@piptechlaw.com; mepratschler@gmail.com
SIGNATURE(S)
Response Signature
Signature: /Meghan Elizabeth Pratschler/ Date: 11/06/2019
Signatory's Name: Meghan Pratschler
Signatory's Position: attorney of record
Signatory's Phone Number: 4153359226
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: MEGHAN PRATSCHLER
6106 WEBBER COLE RD
KINSMAN, Ohio 44428
Mailing Address: Meghan Pratschler
5100 Leetsdale Dr, Apt 243
Denver, Colorado 80246
Serial Number: 88348211
Internet Transmission Date: Wed Nov 06 09:59:49 EST 2019
TEAS Stamp: USPTO/ROA-XXXX:XXX:XXX:XXX:XX:XXXX:XXXX:
XXX-20191106095949303346-88348211-7008a1
bf62a504828acaa02bfa65d88766d3e0b72149dc
a62670545be644bace8-N/A-N/A-201911060948
51353347