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. 88469539 CATAPULT(Standard Characters, see http://uspto.report/TM/88469539/mark.png) has been amended as follows:

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

     RESPONSE TO OFFICE ACTION

 

In an Office Action dated August 13, 2019, the Examining Attorney preliminarily refused registration of Applicant’s mark CATAPULT pursuant to Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). The Examining Attorney also required Applicant to clarify its recitation of services. Applicant submits the following response and amendments in support of registration.

I.   AMENDMENTS TO RECITATION OF SERVICES

In response to the Examining Attorney’s requirement that Applicant clarify the applied-for services, Applicant hereby submits via the online TEAS submission system the following amendments to its recitation of services:

-- business information, namely, providing information in the fields of global sustainable business solutions and adoption of innovative products and services in the field of sustainability and conservation; charitable services, namely, promoting public and private sector awareness of the necessity of corporate sustainability efforts; promoting public awareness of the need for corporate sustainability efforts (Int. Cl. 35) –-

-- charitable fundraising in the field of innovative products in the field of sustainability (Int. Cl. 36) –-

-- product research and development in the field of innovative products and services for sustainability and environmental conservation; consulting services in the field of environmental assessment and planning; software as a service (SAAS) services featuring software for use in data aggregation, data visualization, and data analytics in the fields of environmental protection and corporate sustainability; services and software as a service (SAAS) services featuring software platforms and practical methodologies for use of innovative products and services in the field of environmental protection and corporate sustainability; earth science services including the provision of scientific information, research in the field of environmental protection, corporate sustainability and environmental conservation (Int. Cl. 42) –-

II.  NO LIKELIHOOD OF CONFUSION

In the Office Action, the Examining Attorney preliminarily refused registration of Applicant’s mark CATAPULT for the above-identified services on the ground that it is allegedly confusingly similar to Registration No. 4,531,946 for CATAPULT for “Providing an online directory information service featuring information regarding charities and charitable projects; Providing information to others about charities and charitable projects that support girls' and women's rights and development for the purpose of making donations to charities and charitable projects” [Intl. Class 35] and “Charitable fundraising services, namely, by soliciting charitable donations by means of a crowdfunding website where donors search for and make monetary donations to specific charities or projects aimed at providing support to girls' and women's rights and development; Providing online computer databases and online searchable databases in the field of charitable fundraising and monetary donations; Providing charitable grants to support girls' and women's rights and development” [Intl. Class 36] (the “Cited Mark”). Based on the following analysis, Applicant respectfully submits that there is no likelihood of confusion between its mark and the Cited Mark and requests that the Examining Attorney withdraw the preliminary refusal and approve Applicant’s mark for publication.

     A.   Applicant’s Services and the Cited Mark’s Services are Unrelated.                                        

No likelihood of confusion exists between Applicant’s mark and the Cited Mark in view of the differences in the purposes and natures of the services offered under the respective marks. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973).

In the Office Action, the Examining Attorney asserts that the services listed in the Applicant’s mark and the Cited Mark are of a kind that the same entity commonly provides and markets the services under the same mark, and that the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. This is a grave oversimplification of the services at issue. Despite the superficial similarity that Applicant’s and Registrant’s services are both generally “charity-related,” Applicant’s services, focused directly on global sustainable business solutions and innovative products in the field of sustainability, and Registrant’s services, focused specifically on charities and charitable projects that support girls’ and women’s rights and development, are completely distinct. The respective services are neither complementary nor competitive services and serve entirely discrete purposes. Of the five websites proffered by the Examining Attorney, <greeneducationfoundation.org>, <thecosa.org>, <leonardoacademy.org> and <sustainableamerica.org> are third party websites that are specifically focused on sustainable solutions. These third party websites do not offer general information services regarding charities, but strictly specific charities endorsed by the third parties aimed specifically at sustainable solutions. Furthermore, none of these four third party websites provide any information on charities that support girls’ and women’s rights, which are the services covered by the Cited Mark. Consequently, the evidence proffered by the Examining Attorney does not provide any guidance or insight on the relatedness of the services covered by the Applicant’s mark and the Cited Mark. If anything, the evidence proffered by the Examining Attorney demonstrates that charitable services relating to sustainable solutions are a very discrete and distinct niche. Therefore, it is exceedingly unlikely that relevant consumers of the respective services would erroneously believe that they emanate from the same source.

The services offered under Applicant’s mark have a fundamentally distinct purpose than the services offered under the Cited Mark. The Applicant’s services are focused directly on global sustainable business solutions and innovative products in the field of sustainability. The services offered under Applicant’s mark are specifically customized to businesses aiming to adapt more sustainable and innovative business processes. The very nature of Applicant’s services, reflective of its careful and sophisticated consumers, belies any likelihood of confusion.

In contrast, the services offered under the Cited Mark are online directory information services and services focused specifically on charities and charitable projects that support girls’ and women’s rights and development. These services are not customized specifically for business, like Applicant’s services; rather, the services are provided to individual consumers who wish to contribute to charities that are focused on girls’ and women’s rights and development. The respective services are therefore completely distinct and are not to be confused with one another. The clear distinction between services focused directly on global sustainable business solutions and innovative products in the field of sustainability for businesses and services focused directly on girls’ and women’s rights to individuals is not lost on the average consumer. In the end, given the disparate purposes and natures of the respective services, there can be no likelihood of confusion among the relevant consumers here.

The clear distinction between Applicant’s services and the Cited Mark’s services is further supported by the dearth of evidence of record ostensibly in support of their relatedness. The Examining Attorney must provide evidence showing that the services are related to support a finding of likelihood of confusion. T.M.E.P. § 1207.01(a)(vi) (Oct. 2018). Here, the Examining Attorney has proffered five website printouts that allegedly illustrate the relatedness of the services: <globalgiving.org>, <greeneducationfoundation.org>, <thecosa.org>, <leonardoacademy.org> and <sustainableamerica.org>. However, as explained above, <greeneducationfoundation.org>, <thecosa.org>, <leonardoacademy.org> and <sustainableamerica.org> are specifically focused on sustainable solutions. These third-party websites do not offer general information services regarding charities, but strictly specific charities endorsed by the third parties aimed specifically at sustainable solutions. Furthermore, none of these websites provide any information on charities that support girls’ and women’s rights, which are the services covered by the Cited Mark. The Examining Attorney’s argument that “the same entity commonly provides the relevant services and markets the same services under the same mark” based on the proffered websites is thus entirely without support and is inadequate to show that consumers would believe the respective services originate from the same source.

In light of the foregoing, consumers are simply not likely to believe that such services emanate from the same source. The mere possibility of confusion because both Applicant and Registrant offer “charity-related” services is far too remote to substantiate the Examining Attorney’s position. This factor in the likelihood of confusion analysis therefore weighs heavily in Applicant’s favor.

B.   Respective Trade Channels Are Mutually Exclusive; No Market Interface Between Applicant and Registrant                                       

Moreover, consumer confusion is exceedingly unlikely in light of the discrete channels of trade in which Applicant’s services and the services for which the Cited Mark is registered travel and the lack of market interface between such services. As explained in the T.M.E.P., “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.” T.M.E.P. § 1207.01(a)(i).

Here, Applicant and the Registrant of the Cited Mark occupy and operate in discrete market sectors, and Applicant’s services and the services offered under the Cited Mark thus travel in entirely separate and discrete channels of trade. Applicant’s services are focused directly on global sustainable business solutions and innovative products in the field of sustainability. By contrast, the services in the Cited Mark are focused specifically on charities and charitable projects that support girls’ and women’s rights and development. In light of the foregoing, consumer confusion is highly unlikely, as the circumstances under which a consumer would encounter both Applicant’s services directed at companies and businesses concerning sustainability efforts and global sustainable business solutions and the Cited Mark’s online directory information services and charitable services concerning girls’ and women’s rights and developments are extremely rare. The distinction between girls’ and women’s rights and innovative business solutions in the field of sustainability is not lost on the average consumer. Even then, such a consumer would be so sophisticated and discriminating that he or she would not suffer confusion as a result of coexistence of Applicant’s mark and the Cited Mark.

In short, the trade channels in which Applicant’s services and the Cited Mark’s services are wholly distinct, relevant consumers are entirely different, and such services thus simply do not compete. Any possibility, much less likelihood, of confusion among relevant consumers is obviated by virtue of the lack of market interface between Applicant’s services and the services in the Cited Mark in their respective and discrete channels of trade and classes of consumers. This factor in the likelihood of confusion analysis thus weighs decidedly in Applicant’s favor.

C.   Relevant Consumers Are Sophisticated.

Moreover, no likelihood of confusion exists between Applicant’s mark and the Cited Mark in view of the sophistication of relevant consumers and the nature of their purchasing practices with respect to Applicant’s services. See In re E.I. du Pont, 177 U.S.P.Q. at 567. Indeed, the sophistication of Applicant’s consumers is so great that the confusion of Applicant’s services with the services of the Cited Mark is exceedingly unlikely.

Applicant’s services are offered to companies and businesses that are interested in innovative products in the field of sustainability. These companies contribute funding to Applicant, who in turn develops and researches innovative products in the field of sustainability. Those innovative products are then made available to the companies that contributed to the funding and to other companies and businesses for a fee. Such companies are not arbitrarily funding research and charitable projects; rather, they are providing funding to Applicant in exchange for products and solutions that will help raise awareness for sustainability and conservation and help make their respective companies more sustainable and environmentally efficient. Given the complexity of the products and services Applicant offers under the CATAPULT mark, relevant consumers of Applicant’s services must exercise extraordinary care when selecting the appropriate project to fund or service to purchase. The careful and sophisticated consumer determining whether to provide funding to Applicant in exchange for information on sustainability and innovative products in the field of sustainability and conservation is not the same consumer that is simply donating to their local charity.

As a result of the sophistication and care of Applicant’s consumers in their practices, Applicant’s and Registrant’s marks are not likely to be confused with one another. Indeed, it is exceedingly unlikely that any consumers – much less the highly sophisticated consumers of Applicant – would confuse Applicant’s mark with the Cited Mark and the respective services provided thereunder. Consequently, consideration of the relevant sophisticated consumers similarly weighs decidedly against a finding of likelihood of confusion.

     D. The Extent of Potential Confusion is De Minimis.

Finally, where the scope and extent of any potential confusion is de minimis, as opposed to substantial, there can be no support for a refusal pursuant to Section 2(d) of the Lanham Act. See In re E.I. du Pont, 177 U.S.P.Q. at 567. Applicant respectfully submits that where, as here, Applicant’s and the Cited Mark’s respective services are unrelated, the channels of trade are mutually exclusive, relevant consumers are different, and Applicant’s consumers are sophisticated, there can be little doubt that any potential confusion is de minimis, much less likely. Indeed, as the foregoing analysis demonstrates, consumers are simply not likely to believe that Applicant’s services and those in the Cited Mark emanate from the same source. All of the aforementioned distinctions between Applicant’s mark and the Cited Mark necessitate a finding that the extent of potential confusion is absolutely and unequivocally de minimis. The mere possibility of confusion is simply too remote to justify a Section 2(d) refusal.

Accordingly, because there is no likelihood of confusion between Applicant’s mark and the Cited Mark, Applicant respectfully requests that the Examining Attorney withdraw the refusal and pass Applicant’s mark on to publication.

III. CONCLUSION

Whereas Applicant has satisfied the concerns and complied with the requirements of the Examining Attorney, Applicant respectfully requests that the subject refusal be withdrawn and that Applicant’s mark be published for opposition.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for providing information in the fields of global sustainable business solutions and innovative products and services in the field of sustainability and conservation; charitable services, namely, promoting public and private sector awareness of the necessity of corporate sustainability efforts; promoting public awareness of the need for corporate sustainability efforts
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: providing information in the fields of global sustainable business solutions and innovative products and services in the field of sustainability and conservation; business information, namely, providing information in the fields of global sustainable business solutions and adoption of innovative products and services in the field of sustainability and conservation; charitable services, namely, promoting public and private sector awareness of the necessity of corporate sustainability efforts; promoting public awareness of the need for corporate sustainability effortsClass 035 for business information, namely, providing information in the fields of global sustainable business solutions and adoption of innovative products and services in the field of sustainability and conservation; charitable services, namely, promoting public and private sector awareness of the necessity of corporate sustainability efforts; promoting public awareness of the need for corporate sustainability efforts
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for product research and development in the field of innovative products and services for sustainability and environmental conservation; consulting services in the field of environmental assessment and planning; software as a service (SAAS) services featuring software for use in data aggregation, data visualization, and data analytics in the fields of environmental protection and corporate sustainability; services and software as a service (SAAS) services featuring software platforms and practical methodologies for use of innovative products and services in the field of environmental protection and corporate sustainability; earth science services including the provision of scientific information, research in the field of environmental protection, corporate sustainability and environmental conservation
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: product research and development in the field of innovative products and services for sustainability and environmental conservation; consulting services in the field of environmental assessment and planning; software as a service (SAAS) services featuring software for use in data aggregation, data visualization, and data analytics in the fields of environmental protection and corporate sustainability; services and software as a service (SAAS) services featuring software platforms and practical methodologies for use of innovative products and services in the field of environmental protection and corporate sustainability; software as a service (SAAS) services featuring software platforms and practical methodologies for use of innovative products and services in the field of environmental protection and corporate sustainability; earth science services including the provision of scientific information, research in the field of environmental protection, corporate sustainability and environmental conservationClass 042 for product research and development in the field of innovative products and services for sustainability and environmental conservation; consulting services in the field of environmental assessment and planning; software as a service (SAAS) services featuring software for use in data aggregation, data visualization, and data analytics in the fields of environmental protection and corporate sustainability; software as a service (SAAS) services featuring software platforms and practical methodologies for use of innovative products and services in the field of environmental protection and corporate sustainability; earth science services including the provision of scientific information, research in the field of environmental protection, corporate sustainability and environmental conservation
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: Bradford C. Craig. Bradford C. Craig of BLANK ROME LLP, is located at

      ONE LOGAN SQUARE
      130 N. 18TH STREET
      PHILADELPHIA, Pennsylvania 19103
      US
The docket/reference number is 150566.00111.

The phone number is 215-569-5378.

The fax number is 215.832.5378.

The email address is trademarks@blankrome.com

The applicants proposed attorney information: Bradford C. Craig. Other appointed attorneys are Timothy D. Pecsenye, David M. Perry, Bruce D. George, Lisa Casey Spaniel, Megan E. Spitz, Zachary A. Aria, Matthew A. Homyk, Shaun J. Bockert, Thomas H. Kelly, Samar Aryani-Sabet and Blake D. Fink. Bradford C. Craig of BLANK ROME LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      8th Floor
      One Logan Square
      PHILADELPHIA, Pennsylvania 19103
      United States
The docket/reference number is 150566.00111.

The phone number is 215-569-5378.

The fax number is 215.832.5378.

The email address is trademarks@blankrome.com

Bradford C. Craig 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: BRADFORD C. CRAIG. BRADFORD C. CRAIG of BLANK ROME LLP, is located at

      ONE LOGAN SQUARE
      130 N. 18TH STREET
      PHILADELPHIA, Pennsylvania 19103
      US
The docket/reference number is 150566.00111.

The phone number is 215-569-5378.

The fax number is 215.832.5378.

The email address is trademarks@blankrome.com; bcraig@blankrome.com

The applicants proposed correspondence information: Bradford C. Craig. Bradford C. Craig of BLANK ROME LLP, is located at

      8th Floor
      One Logan Square
      PHILADELPHIA, Pennsylvania 19103
      United States
The docket/reference number is 150566.00111.

The phone number is 215-569-5378.

The fax number is 215.832.5378.

The email address is trademarks@blankrome.com; bcraig@blankrome.com

SIGNATURE(S)
Response Signature
Signature: /Bradford C. Craig/     Date: 02/13/2020
Signatory's Name: Bradford C. Craig
Signatory's Position: Attorney of record, PA bar member

Signatory's Phone Number: 215-569-5378

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:    BRADFORD C. CRAIG
   BLANK ROME LLP
   ONE LOGAN SQUARE
   130 N. 18TH STREET
   PHILADELPHIA, Pennsylvania 19103
Mailing Address:    Bradford C. Craig
   BLANK ROME LLP
   8th Floor
   One Logan Square
   PHILADELPHIA, Pennsylvania 19103
        
Serial Number: 88469539
Internet Transmission Date: Thu Feb 13 12:20:44 EST 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20200213122044180
511-88469539-7001b4a96650816e39b761cba16
5d2f593686adae53a53d6bb02dc869bdb2ab9f-N
/A-N/A-20200213121131786966