| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88483639 |
| LAW OFFICE ASSIGNED | LAW OFFICE 118 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88483639/mark.png |
| LITERAL ELEMENT | THESIS |
| 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) | |
|
Applicant Arizona Board of Regents, for and on behalf of Arizona State University (“Applicant”), hereby responds to the United States Patent and Trademark Office Action dated September 3, 2019 with respect to the mark THESIS, application No. 88/483,639 (the “Application”). The Applicant responds to the issues raised in the Office Action as follows.
The Examiner cited two prior registrations owned by Anthesis Consulting Group PLC for the word mark ANTHESIS (the “Cited Mark”) covering services in Classes 35 and 42. Applicant respectfully disagrees that any likelihood of confusion exists between Applicant’s mark THESIS and the Cited Mark, and the 2(d) refusal should therefore be removed.
The Examiner’s conclusion that Applicant’s mark THESIS and the Cited Mark are similar is based on a fundamental flaw – that the Cited Mark is comprised of the prefix “AN” and the word “THESIS.” However, this is a misapprehension of the meaning and definition of the Cited Mark. The word “ANTHESIS” is a word unto itself, meaning “the flowering period of a plant, from the opening of the flower bud.” This definition is shown by Wikipedia (http://en.wikipedia.org/wiki/Anthesis), Merriam-Webster (http://www.merriam-webster.com/dictionary/anthesis), and Dictionary.com (http://www.dictionary.com/browse/anthesis). Printouts from these websites are attached hereto as Exhibit 1. As further explained by Merriam-Webster, the word “ANTHESIS” is derived from Latin and Greek and is based on the word blocks “anthe-“ meaning “to blossom, bloom” and “anthos” meaning “flower.” See Exhibit 1. Taking into account the evidence submitted in Exhibit 1 and the proper meaning of the Cited Mark, consumers will properly view and understand the Cited Mark as a separate word with its own distinct meaning. Consumers will not view the Cited Mark as an amalgamation of the word “THESIS” and prefix “AN,” as suggested by the Examiner. To sustain such an argument would be to suggest that consumers would confuse the words “HOTDOG” and “DOG because they both contain the element “DOG,” even though consumers understand that the word “HOTDOG” has its own independent meaning. The Examiner’s reasoning for finding likelihood of confusion should be withdrawn because the Cited Mark is not comprised of Applicant’s mark THESIS at all. Instead, the Cited Mark is its own independent word with its own independent meaning. Consumers will view the Cited Mark and Applicant’s mark THESIS as visually, phonetically, and conceptually distinct terms. Even if the Cited Mark was not a word unto itself with its own meaning, it still would not preclude registration of Applicant’s THESIS mark. The sharing of a common term or word element alone is insufficient to establish a likelihood of confusion. This is true even in cases where the goods or services are identical, although in this case the likelihood of confusion is even more attenuated because the goods are not identical, as explained further below. Several cases demonstrate that the mere sharing of a common term alone is insufficient to establish a likelihood of confusion:
The logic of the Federal Circuit in Mr. Hero Sandwich Sys., Inc. is particularly compelling. In comparing the marks “ROMAN” and “ROMANBURGER,” the Court stated: The word “Roman” in the mark “ROMANBURGER” is part of a unitary phrase that does not create the separable impression found in the Roman Meal marks. It does not stand alone as a source indicator. “Romanbuger” is one word, not “Roman” plus another word.” The mark is pronounce as one word, with sound and cadence distinctly different from the Roman Meal marks, and in its entirety is suggestive of a variety of sandwich appropriately used in a carry-out food store. We see no reason to believe, and there is no evidence on the point, that consumers are likely to extract “Roman” from “Romanburger” and rely on “Roman” per se as an indication of source. Mr. Hero Sandwich Sys., Inc., 781 F.2d at 888. Here, like in Mr. Hero Sandwich Sys., Inc., there is no reason to believe and no evidence on point that consumers are likely to extract the word “THESIS” from the mark “ANTHESIS” and rely on “THESIS” per se as an indication of source. Instead, consumers will view the Cited Mark as a unitary mark with its own pronunciation, sound, cadence, and meaning separate and distinct from Applicant’s mark THESIS. For all these reasons, Applicant’s mark THESIS and the Cited Mark are distinguishable in terms of appearance, sound, meaning, and commercial impression, and there is no likelihood of confusion between the marks. B. The Services Are Distinguishable The Examiner found Applicant’s services to be indefinite and for this reason found Applicant’s services to overlap with the services specified in the registrations for the Cited Mark. As explained below, Applicant is amending its services per the Examiner’s request, and this amendment should be sufficient to further avoid likelihood of confusion. Specifically, Applicant is amending its services to clarify that it offers “development measurement and reporting tools in the nature of software for designing new sustainable products and sustainable business practices.” Applicant’s amended services are commercially unrelated to the services specified in the registrations for the Cited Mark, which involve software “for the purpose of improving corporate data management, product and supply chain management, compliance with environmental regulations, and implementation of corporate sustainability strategies and practices.” Applicant’s services are not commercially related to any of the services specified in the registrations for the Cited Mark. Applicant’s services do not involve corporate data management, product and supply chain management, compliance with environmental regulations, or implementation of corporate sustainability strategies and practices. To the extent the Examiner had any concern over the overlap of services, the amendments to the identification of services in Applicant’s Application should resolve that. Moreover, even if the Examiner believes the parties’ services may somehow be related (although Applicant maintains the parties’ services are not commercially related), the fact that the parties’ marks themselves are so clearly distinguishable in terms of appearance, sound, meaning, and commercial impression – as fully explained above – obviates any potential likelihood of confusion that may arise from any similarity in services. II. Amendments to Identification of Services The Examiner has concluded that the services “developing measurement and reporting tools for designing new sustainable products and sustainable business solutions” is indefinite and
must be clarified. The Applicant agrees to adopt the specification of services recommended in the Office Action, namely: “developing measurement and reporting tools
in the nature of software for designing new sustainable products and sustainable business practices III. Conclusion Applicant has addressed all of the Examiner’s issues raised in the office action and believes all issues have now been resolved. Applicant therefore requests that the Examiner approve the Application for publication and subsequent registration. |
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_641610870-20191126120018188986_._Thesis_exhibit.pdf |
| CONVERTED PDF FILE(S) (6 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\884\836\88483639\xml5\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\884\836\88483639\xml5\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\884\836\88483639\xml5\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\884\836\88483639\xml5\ROA0005.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\884\836\88483639\xml5\ROA0006.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\884\836\88483639\xml5\ROA0007.JPG | |
| DESCRIPTION OF EVIDENCE FILE | webpages |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION | |
| Developing measurement and reporting tools for designing new sustainable products and sustainable business solutions; scientific research in the field of product sustainability and sustainable business practices | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 042 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Developing measurement and reporting tools in the nature of software for designing new sustainable products and sustainable business practices; scientific research in the field of product sustainability and sustainable business practices | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /David Jackson/ |
| SIGNATORY'S NAME | David Jackson |
| SIGNATORY'S POSITION | Attorney for Applicant |
| SIGNATORY'S PHONE NUMBER | (602) 262-5311 |
| DATE SIGNED | 11/26/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Nov 26 12:19:43 EST 2019 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 191126121943876836-884836 39-700e9f6ebdfb5723f7aebf 8d24b7dfb6bfbbca2aea34320 eb268fff826ba224bda-N/A-N /A-20191126120018188986 |
| 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) |
Applicant Arizona Board of Regents, for and on behalf of Arizona State University (“Applicant”), hereby responds to the United States Patent and Trademark Office Action dated September 3, 2019 with respect to the mark THESIS, application No. 88/483,639 (the “Application”). The Applicant responds to the issues raised in the Office Action as follows.
No Likelihood of Confusion
The Examiner cited two prior registrations owned by Anthesis Consulting Group PLC for the word mark ANTHESIS (the “Cited Mark”) covering services in Classes 35 and 42. Applicant respectfully disagrees that any likelihood of confusion exists between Applicant’s mark THESIS and the Cited Mark, and the 2(d) refusal should therefore be removed.
The Marks Are Visually, Phonetically, And Conceptually Distinguishable
The Examiner’s conclusion that Applicant’s mark THESIS and the Cited Mark are similar is based on a fundamental flaw – that the Cited Mark is comprised of the prefix “AN” and the word “THESIS.” However, this is a misapprehension of the meaning and definition of the Cited Mark. The word “ANTHESIS” is a word unto itself, meaning “the flowering period of a plant, from the opening of the flower bud.” This definition is shown by Wikipedia (http://en.wikipedia.org/wiki/Anthesis), Merriam-Webster (http://www.merriam-webster.com/dictionary/anthesis), and Dictionary.com (http://www.dictionary.com/browse/anthesis). Printouts from these websites are attached hereto as Exhibit 1. As further explained by Merriam-Webster, the word “ANTHESIS” is derived from Latin and Greek and is based on the word blocks “anthe-“ meaning “to blossom, bloom” and “anthos” meaning “flower.” See Exhibit 1.
Taking into account the evidence submitted in Exhibit 1 and the proper meaning of the Cited Mark, consumers will properly view and understand the Cited Mark as a separate word with its own distinct meaning. Consumers will not view the Cited Mark as an amalgamation of the word “THESIS” and prefix “AN,” as suggested by the Examiner. To sustain such an argument would be to suggest that consumers would confuse the words “HOTDOG” and “DOG because they both contain the element “DOG,” even though consumers understand that the word “HOTDOG” has its own independent meaning.
The Examiner’s reasoning for finding likelihood of confusion should be withdrawn because the Cited Mark is not comprised of Applicant’s mark THESIS at all. Instead, the Cited Mark is its own independent word with its own independent meaning. Consumers will view the Cited Mark and Applicant’s mark THESIS as visually, phonetically, and conceptually distinct terms.
Even if the Cited Mark was not a word unto itself with its own meaning, it still would not preclude registration of Applicant’s THESIS mark. The sharing of a common term or word element alone is insufficient to establish a likelihood of confusion. This is true even in cases where the goods or services are identical, although in this case the likelihood of confusion is even more attenuated because the goods are not identical, as explained further below. Several cases demonstrate that the mere sharing of a common term alone is insufficient to establish a likelihood of confusion:
The logic of the Federal Circuit in Mr. Hero Sandwich Sys., Inc. is particularly compelling. In comparing the marks “ROMAN” and “ROMANBURGER,” the Court stated:
The word “Roman” in the mark “ROMANBURGER” is part of a unitary phrase that does not create the separable impression found in the Roman Meal marks. It does not stand alone as a source indicator. “Romanbuger” is one word, not “Roman” plus another word.” The mark is pronounce as one word, with sound and cadence distinctly different from the Roman Meal marks, and in its entirety is suggestive of a variety of sandwich appropriately used in a carry-out food store. We see no reason to believe, and there is no evidence on the point, that consumers are likely to extract “Roman” from “Romanburger” and rely on “Roman” per se as an indication of source.
Mr. Hero Sandwich Sys., Inc., 781 F.2d at 888.
Here, like in Mr. Hero Sandwich Sys., Inc., there is no reason to believe and no evidence on point that consumers are likely to extract the word “THESIS” from the mark “ANTHESIS” and rely on “THESIS” per se as an indication of source. Instead, consumers will view the Cited Mark as a unitary mark with its own pronunciation, sound, cadence, and meaning separate and distinct from Applicant’s mark THESIS.
For all these reasons, Applicant’s mark THESIS and the Cited Mark are distinguishable in terms of appearance, sound, meaning, and commercial impression, and there is no likelihood of confusion between the marks.
B. The Services Are Distinguishable
The Examiner found Applicant’s services to be indefinite and for this reason found Applicant’s services to overlap with the services specified in the registrations for the Cited Mark. As explained below, Applicant is amending its services per the Examiner’s request, and this amendment should be sufficient to further avoid likelihood of confusion. Specifically, Applicant is amending its services to clarify that it offers “development measurement and reporting tools in the nature of software for designing new sustainable products and sustainable business practices.”
Applicant’s amended services are commercially unrelated to the services specified in the registrations for the Cited Mark, which involve software “for the purpose of improving corporate data management, product and supply chain management, compliance with environmental regulations, and implementation of corporate sustainability strategies and practices.” Applicant’s services are not commercially related to any of the services specified in the registrations for the Cited Mark. Applicant’s services do not involve corporate data management, product and supply chain management, compliance with environmental regulations, or implementation of corporate sustainability strategies and practices. To the extent the Examiner had any concern over the overlap of services, the amendments to the identification of services in Applicant’s Application should resolve that. Moreover, even if the Examiner believes the parties’ services may somehow be related (although Applicant maintains the parties’ services are not commercially related), the fact that the parties’ marks themselves are so clearly distinguishable in terms of appearance, sound, meaning, and commercial impression – as fully explained above – obviates any potential likelihood of confusion that may arise from any similarity in services.
II. Amendments to Identification of Services
The Examiner has concluded that the services “developing measurement and reporting tools for designing new sustainable products and sustainable business solutions” is indefinite and
must be clarified. The Applicant agrees to adopt the specification of services recommended in the Office Action, namely: “developing measurement and reporting tools
in the nature of software for designing new sustainable products and sustainable business practices solutions.”
III. Conclusion
Applicant has addressed all of the Examiner’s issues raised in the office action and believes all issues have now been resolved. Applicant therefore requests that the Examiner approve the Application for publication and subsequent registration.
