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. 88495080 INSIDER(Standard Characters, see http://uspto.report/TM/88495080/mark.png) has been amended as follows:

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

The Examiner has rejected the instant application based upon a perceived likelihood of confusion between the instant mark INSIDER for “Publishing of electronic publications” in Class 41, and the previously registered mark, Reg. No. 5,675,981 for the mark INSIDER, INC. (with “Inc.” disclaimed), for the following goods:

“Downloadable software in the nature of mobile applications for providing articles, news, information, and commentary in the fields of business, finance, entertainment, careers, sports, popular culture, food, health, exercise, technology, innovation, science, digital culture, and lifestyle” in Class 9;

“Advertising and promotional services; Marketing services; Market research; Online advertising; Promoting the goods and services of others; and Conducting opinion polls online” in Class 35; and

“Providing an interactive website featuring non-downloadable videos containing news, information, and commentary in the fields of business, finance, entertainment, careers, sports, popular culture, food, health, exercise, technology, innovation, science, digital culture, and lifestyle; Electronic publishing services, namely, publication of text and graphic works of others online featuring articles, news, information, and commentary in the fields of business, finance, entertainment, careers, sports, popular culture, food, health, exercise, technology, innovation, science, digital culture, and lifestyle; Digital video, audio, and multimedia publishing services; Video production services; Educational services, namely, arranging and conducting conferences and seminars in the fields of national and international politics, business, finance, entertainment, careers, sports, popular culture, food, health, exercise, technology, innovation, science, digital culture, and lifestyle” in Class 41.

Both marks are standard character marks.

Applicant respectfully disagrees with the Examiner’s conclusion that the two marks are confusingly similar, and respectfully requests the withdrawal of the rejection.

The ultimate test for deciding whether a mark is registrable under 15 U.S.C. § 2(d) is whether a consumer would likely be confused into believing that the goods/services of the applicant provided under the applicant’s mark would emanate from the same source as the goods/services provided by the registrant under the registrant’s mark.  Here, it is respectfully submitted, this is not the case.

First, the consumers of the applicant’s and registrants products are sophisticated business persons, knowledgeable of the marketplace and capable of distinguishing between sources of different, even if seemingly related, products and services.  Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 718, 21 U.S.P.Q.2d 1388, 1392 (Fed. Cir. 1992).  (“[s]ophisticated consumers may be expected to exercise greater care.” quoting Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 489, 212 USPQ 246, 252 (1st Cir. 1981)).

Furthermore, in this case, the applicant commenced use at a much earlier date, 2004, than did the registrant, April 14, 2018, and so the consuming public would not be confused into believing the services they had been purchasing for so long from the applicant herein came from a newcomer (the registrant of the cited mark).  The applicant also has a newly issued registration for the mark INSIDER SUMMIT, Reg. No. 5,942,573 for related services, which registration was based on use since at least as early as 2006.

Where an applied-for mark is similar to a registered mark owned by the applicant, and where the applicant has use of its mark long prior to the registrant, these factors may weigh against a finding of a likelihood of confusion and in favor of registrability.  In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012).

Here, therefore, these factors, not considered by the Examiner in the pending Office Action, outweigh any perceived similarities of the mark, and in favor of the registrability of the instant mark.

Early and favorable action is therefore respectfully solicited.

The applicant's current attorney information: Roger S. Thompson. Roger S. Thompson of THE LAW OFFICES OF ROGER S. THOMPSON, is located at

      SUITE D-14
      116 PINEHURST AVE.
      NW YORK, New York 10033
      US
The docket/reference number is 5175-018.

The phone number is 212-923-5145.

The fax number is 866-276-8409.

The email address is roger@thompson-ip.com

The applicants proposed attorney information: Roger S. Thompson. Roger S. Thompson of THE LAW OFFICES OF ROGER S. THOMPSON, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE D-14
      116 PINEHURST AVE.
      NEW YORK, New York 10033
      United States
The docket/reference number is 5175-018.

The phone number is 212-923-5145.

The fax number is 866-276-8409.

The email address is roger@thompson-ip.com

Roger S. Thompson 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: ROGER S. THOMPSON. ROGER S. THOMPSON of THE LAW OFFICES OF ROGER S. THOMPSON, is located at

      SUITE D-14
      116 PINEHURST AVE.
      NW YORK, New York 10033
      US
The docket/reference number is 5175-018.

The phone number is 212-923-5145.

The fax number is 866-276-8409.

The email address is roger@thompson-ip.com; rogersthompson1@gmail.com

The applicants proposed correspondence information: Roger S. Thompson. Roger S. Thompson of THE LAW OFFICES OF ROGER S. THOMPSON, is located at

      SUITE D-14
      116 PINEHURST AVE.
      NEW YORK, New York 10033
      United States
The docket/reference number is 5175-018.

The phone number is 212-923-5145.

The fax number is 866-276-8409.

The email address is roger@thompson-ip.com; rogersthompson1@gmail.com

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 5942573.


SIGNATURE(S)
Response Signature
Signature: /Roger S. Thompson/     Date: 02/10/2020
Signatory's Name: Roger S. Thompson
Signatory's Position: Attorney of record, New York Bar member

Signatory's Phone Number: 212-923-5145

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:    ROGER S. THOMPSON
   THE LAW OFFICES OF ROGER S. THOMPSON
   SUITE D-14
   116 PINEHURST AVE.
   NW YORK, New York 10033
Mailing Address:    Roger S. Thompson
   THE LAW OFFICES OF ROGER S. THOMPSON
   SUITE D-14
   116 PINEHURST AVE.
   NEW YORK, New York 10033
        
Serial Number: 88495080
Internet Transmission Date: Mon Feb 10 22:57:57 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202002102257572
79334-88495080-700e47a8ce86e58edabc348bb
a5b1142d936b51cb22ec8db2d0652e699d132a4a
-N/A-N/A-20200210225058985075