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. 88472334 ILYNK(Standard Characters, see http://uspto.report/TM/88472334/mark.png) has been amended as follows:

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

ILYNK Office Action Response Arguments

This response replies to the Office Action issued September 15, 2019, wherein the Examining Attorney noted a potential refusal of Applicant’s ILYNK mark (Ser. No. 88/472,334) based on a likelihood of confusion with a pending application for I-LYNK (and design) (Serial No. 79/264,581). For the reasons set forth below, Applicant respectfully submits that there is no likelihood of confusion, and that the potential refusal should be lifted and the Application permitted to proceed to publication.

The field of LINK-formative marks is crowded and registration of ILYNK will not upset the balance. Consumers are not likely to be confused as to the source of Applicant’s and services and those offered by the cited prior-pending Applicant because consumers are already so used to distinguishing between different “LINK” marks for goods and services relating to telecommunications. Asearch of the Trademark Electronic Search Systems (“TESS”) shows three hundred and fifty eight live registrations on the principal register for marks incorporating “LINK” (or derivations thereof) for goods and services relating to telecommunications, including:

 

• LINK, Reg. No. 5,813,722 owned by Citybridge, LLC and covering, in part, electronic transmission of data and documents via computer terminals; electronic transmission of telegrams; telephone communication services; and computer-aided transmission of messages and images via electronic mail”.

• LYNC, Reg. No. 4,415,357 owned by Microsoft Corporation and covering, in part, telecommunications services, namely, telecommunications access services; data transmission and reception services via telecommunication means; electronic exchange of voice, data, and graphics accessible via computer and telecommunication networks; and workgroup communications services over computer networks, namely, electronic transmission of data and documents among users of computers; instant messaging services; voice over IP services; communications by computer terminals.

• LINKT, Reg. No. 4,354,703, owned by Linkt, LLC and covering, in part, provision of access to data or documents stored electronically in central files for remote consultation.

• LINK-IT, Reg. No. 4,797,770, owned by Mediatek, Inc. and covering, in part, cellular phones.

• LINKUS, Reg. No. 5,470,088, owned by Boomsense Technology Co., Ltd. and covering, in part, communications by cellular phones; communications by computer terminals; communications by fiber optic networks; and providing telecommunications connections to a global computer network.

• WELINK, Reg. No. 3,770,104, owned by Esna Technologies, Inc. and covering, in part, telecommunications services, namely, personal communication services.

• ATLINK, Reg. No. 5,675,148, owned by @link Services, LLC and covering, in part, telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the internet.

• UPLINK, Reg. No. 3,279,435, owned by Numerex Corp. and covering, in part, data transmission and reception services via telecommunication means.

• ONLINK, Reg. No. 5,194,083, owned by iDOX pic public limited company and covering, in part, electronic exchange of data stored in databases accessible via telecommunication networks.

• INLINK, Reg. No. 1,845,911, owned by GTE Telecommunication Services Inc. and covering, in part, cellular communications services; namely, providing access to a communications network which allows cellular carriers to provide connectivity between different switching systems.

• ALL-LINK, Reg. No. 2,432,866, owned by Norman J. Platt and covering, in part, providing telecommunications connections to a global computer network.

• BIG-LINX, Reg. No. 4,277,754, owned by ads-tec GmbH Gesellschaft mit beschrankter Haftung and covering, in part telecommunications, namely, providing access to web portals.

• ELYNX, Reg. No. 3,033,329, owned by eLynx, Ltd. and covering, in part, electronic transmission of data and documents via the World Wide Web.

• EASYLINK, Reg. No. 2,913,532, owned by EasyLink Services Corporation and covering, in part, communications services, namely, the electronic transmission of voice, data, images, messages, documents, electronic mail, electronic data interchange and telex via a global computer information network.

• SMARTLINK, Reg. No. 1,834,914, owned by Frontier Communications Corp. and covering, in part, telecommunication services.

• SMARTLINK, Reg. No. 4,345,951, owned by Abalta Technologies, Inc. and covering, in part, electronic communications systems comprised of computer hardware and software for the transmission of data between two points; and computer software development in the field of mobile applications.

• SMARTLINK, Reg. No. 4,852,803, owned by Smartlink, LLC and covering, in part, engineering services in the field of telecommunications and for the development of wireless site facilities.

• SOUTHERN LINC, Reg. No. 2,036,477, owned by Southern Communications Services, Inc. and covering full-service digital wireless communications, namely, dispatch, telephone, paging and data.

  The TESS search results showing live registrations on the Principal Register for “LINK”-formative marks for goods and services related to telecommunications is attached hereto as Exhibit A. A selection of twenty-seven corresponding TESS records, including the eighteen summarized above, are attached hereto as Exhibit B.

Third-party registrations containing similar marks are relevant to show that a particular mark has been adopted and registered by so many individuals in a particular field of similar products that a registration of the mark in that trade is entitled to a narrow or restricted scope of protection.[1] The peaceful co-existence of above marks on the Register establishes that (1) consumers are used to distinguishing among “LINK”-formative marks and they recognize that not all goods and services relating to food in connection with these marksoriginate from the same source; (2) trademark owners believe that more than one entity can use and register a mark incorporating “LINK” without causing confusion; and (3) the USPTO acknowledges that the consuming public has come to distinguish among the sources of the goods and services using a mark incorporating “LINK.”

 

Consumers faced with a crowded field of marks can recognize even the most subtle distinctions between the marks, thus obviating any likelihood of consumer confusion.[2] For example, as shown above, the fact that LINK (Reg. No. 5,813,722) and LYNC (Reg. No. 4,415,357) —which cover essentially identical services—have peacefully coexisted on the register is a strong indication that the registration of ILYNK will not upset the balance.  There are also three registrations for the identical mark SMARTLINK (Reg. Nos. 1,834,914; 4,345,951; 4,852,803). The very reason these registrations were permitted to coexist is that the telecommunications field is so crowded with LINK-formative marks that consumers are able to differentiate amongst them based on the smallest differences. Applicant respectfully submits that if LINK and LYNC can coexist, and if three registrations for SMARTLINK can coexist, then the prior pending I-LINK (and design) ) (Serial No. 79/264,581) can also peacefully coexist with ILYNK. This is particularly so as Applicant’s services are clearly distinguishable from the services listed in prior-pending Application.

 

The services in the cited prior pending application are distinguishable. Applicant respectfully submits that in such a crowded field, even identical marks –such as the aforementioned SMARTLINK registered marks –may not be confusingly similar.[3] This is especially true where, as here the Applicants’ services are entirely different. The only potentially conflicting services contained in the prior pending application for I-LINK (and design) (Serial No. 79/264,581) are in Class 38. However, the cited Applicant’s Class 38 identification makes clear that “all the afore-mentioned services” are specifically limited to those “used amongst others in combination with cleaning machines and apparatus.” This is borne out by its website, http://www.i-teamglobal.com/, which states that its focus is “on the development & design of high-end cleaning machines, products and utilities,” as stated in the Class 38 identification. Given this extremely specific niche, there is almost no chance that consumers are likely to encounter the cited mark or Applicant’s mark under circumstances that could give rise to confusion.

Conclusion. For all of the foregoing reasons, Applicant respectfully submits that there is no likelihood of confusion with any of the registered marks or prior pending application, and that the refusals should be lifted and the Application permitted to proceed to publication.

EVIDENCE
Evidence in the nature of Exhibit A: TESS record display list; Exhibit B: TESS records of marks cited in applicant's arguments has been attached.
Original PDF file:
evi_2091336658-20200115161042135713_._EXHIBIT_A_-_TESS_RECORD_DISPLAY_LISTS.pdf
Converted PDF file(s) ( 11 pages)
Evidence-1
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Original PDF file:
evi_2091336658-20200115161042135713_._EXHIBIT_B_-_COMBINED_TESS_RECORDS_-_revised.pdf
Converted PDF file(s) ( 53 pages)
Evidence-1
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CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for telecommunications services, namely, providing satellite-based communication network service; telecommunication services, namely, transmission of messages, voice, data, graphics, sound and video by means of satellite networks; satellite-based mobile 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: telecommunications services, namely, providing satellite-based communication network service; telecommunications services, namely, providing satellite communications services; telecommunication services, namely, transmission of messages, voice, data, graphics, sound and video by means of satellite networks; satellite-based mobile telecommunications services; satellite-based mobile telecommunications services, namely, satellite-based mobile telephone communications servicesClass 038 for telecommunications services, namely, providing satellite communications services; telecommunication services, namely, transmission of messages, voice, data, graphics, sound and video by means of satellite networks; satellite-based mobile telecommunications services, namely, satellite-based mobile telephone communications services
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: /Sheila F. Morrison/     Date: 01/15/2020
Signatory's Name: Sheila Fox Morrison
Signatory's Position: Attorney of record, Oregon bar member

Signatory's Phone Number: 503-241-2300

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.

        
Serial Number: 88472334
Internet Transmission Date: Wed Jan 15 20:11:40 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2020011520114010
8774-88472334-70014bf3d52de42fdb4d046ae1
34ab6446bc5d8f26693b99a85bc1876bc9b93b7a
-N/A-N/A-20200115161042135713