| 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 09/30/2020) |
| Input Field |
Entered |
||
|---|---|---|---|
| SERIAL NUMBER | 88866523 | ||
| LAW OFFICE ASSIGNED | LAW OFFICE 122 | ||
| MARK SECTION | |||
| MARK | mark | ||
| LITERAL ELEMENT | TRUALIGN | ||
| 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) | |||
|
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Introduction This response to the Office Action issued on May 4, 2020 (“Office Action”) regarding the application by Agilent Technologies, Inc. (“Applicant”) for registration of the mark TRUALIGN (“Mark”) in Class 9 (“Application”) addresses the issue raised by the Examining Attorney, namely, a refusal to register the Mark based on an alleged likelihood of confusion with U.S. Registration No. 5055396. Based on the response below, Applicant respectfully requests that the Examining Attorney withdraw the likelihood of confusion refusal and approve the Application for publication on the Principal Register. No LIKELIHOOD OF Confusion between applicant’s mark and the cited mark In the Office Action, the Examining Attorney refused registration of Applicant’s Mark in Class 9 based on an alleged likelihood of confusion with U.S. Registration No. 5055396 for the TRUE ALIGNMENT mark, owned by KPM Analytics North America Corporation (“Registrant”). In response, Applicant hereby submits a copy of a Trademark Consent Agreement (“Consent Agreement”) signed by Applicant and the Registrant, which is attached as Exhibit A. The parties’ Consent Agreement contains, among other terms: 1.The Registrant’s consent for Applicant to register and use Applicant’s Mark for the goods listed in the Application; 2.The parties’ agreement that they have considered the realities of the marketplace and believe that the continued use and simultaneous registration of their respective marks with their respective goods is unlikely to lead to consumer confusion; 3.The parties’ agreement that neither party is aware of any actual consumer confusion between their respective marks; 4.The parties’ agreement that their respective goods are offered to sophisticated customers within a highly-specialized field, such that consumer confusion is unlikely; and 5.The parties’ agreement to cooperate and take such steps as are reasonably necessary to eliminate or minimize confusion between their respective marks and offerings should consumer confusion occur or become likely in the future. The parties’ consent to an applicant’s registration of a mark is a strong factor to be considered in response to a § 2(d) refusal. T.M.E.P. § 1207.01(d)(viii). In fact, where the parties not only agree that consumer confusion is unlikely, but also agree to take further steps to reduce consumer confusion, these “consent agreements should be given great weight.” Id. Furthermore, the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason. See, e.g., In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993). In the present case, the parties’ Consent Agreement clearly highlights that the parties do not believe that concurrent use and registration of their respective marks with their respective goods will lead to consumer confusion, particularly given the parties’ longstanding co-existence without any known confusion in the marketplace, and the fact that the parties’ respective goods are offered to sophisticated customers within a highly-specialized field. The Consent Agreement contains an undertaking by the parties to work together in good faith and take such steps as are reasonably necessary to eliminate any consumer confusion, should it arise in the future. As such, the parties’ Consent Agreement is more than a mere “naked” consent, and therefore should be entitled to great weight in determining whether or not a likelihood of confusion exists between Applicant's Mark and the cited mark. Applicant therefore respectfully requests that the likelihood of confusion refusal based on the cited mark in U.S. Registration No. 5055396 be withdrawn. CONCLUSION Based upon the foregoing, Applicant respectfully requests that the Application be approved for publication. Should any questions remain with respect to the above, please contact the Attorney of Record. |
|||
| EVIDENCE SECTION | |||
| EVIDENCE FILE NAME(S) | |||
| ORIGINAL PDF FILE | evi_19822100222-202011021 54509356468_._Agilent_-_K PM_Analytics_Consent_Agre ement.pdf | ||
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\888\665\88866523\xml5\ ROA0002.JPG | ||
| \\TICRS\EXPORT18\IMAGEOUT 18\888\665\88866523\xml5\ ROA0003.JPG | |||
| DESCRIPTION OF EVIDENCE FILE | Exhibit A to Response to Office Action | ||
| CORRESPONDENCE INFORMATION (current) | |||
| NAME | ANDREW ROPPEL | ||
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | pctrademarks@perkinscoie.com | ||
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | ARoppel@perkinscoie.com | ||
| DOCKET/REFERENCE NUMBER | 128450.4402 | ||
| CORRESPONDENCE INFORMATION (proposed) | |||
| NAME | Andrew Roppel | ||
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | pctrademarks@perkinscoie.com | ||
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | ARoppel@perkinscoie.com | ||
| DOCKET/REFERENCE NUMBER | 128450.4402 | ||
| SIGNATURE SECTION | |||
| RESPONSE SIGNATURE | /Daniel Glenn/ | ||
| SIGNATORY'S NAME | Daniel J. Glenn | ||
| SIGNATORY'S POSITION | Associate Attorney, Perkins Coie LLP, Washington State Bar Member | ||
| SIGNATORY'S PHONE NUMBER | 206-359-8000 | ||
| DATE SIGNED | 11/02/2020 | ||
| AUTHORIZED SIGNATORY | YES | ||
| FILING INFORMATION SECTION | |||
| SUBMIT DATE | Mon Nov 02 16:32:33 ET 2020 | ||
| TEAS STAMP | USPTO/ROA-XXX.XX.XXX.XXX- 20201102163233497728-8886 6523-750461f1fe9d83f9593f 835ab5707996caaea78d84f9c 946885437a3aa527add-N/A-N /A-20201102154509356468 |
||
| 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 09/30/2020) |
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
|
Applicant: Agilent Technologies, Inc. Serial No.: 88/866,523 Mark: TRUALIGN Class: 9 Office Action Date: May 4, 2020 Examining Attorney: Christina Calloway |
RESPONSE TO OFFICE ACTION |
Introduction
This response to the Office Action issued on May 4, 2020 (“Office Action”) regarding the application by Agilent Technologies, Inc. (“Applicant”) for registration of the mark TRUALIGN (“Mark”) in Class 9 (“Application”) addresses the issue raised by the Examining Attorney, namely, a refusal to register the Mark based on an alleged likelihood of confusion with U.S. Registration No. 5055396. Based on the response below, Applicant respectfully requests that the Examining Attorney withdraw the likelihood of confusion refusal and approve the Application for publication on the Principal Register.
No LIKELIHOOD OF Confusion between applicant’s mark and the cited mark
In the Office Action, the Examining Attorney refused registration of Applicant’s Mark in Class 9 based on an alleged likelihood of confusion with U.S. Registration No. 5055396 for the TRUE ALIGNMENT mark, owned by KPM Analytics North America Corporation (“Registrant”).
In response, Applicant hereby submits a copy of a Trademark Consent Agreement (“Consent Agreement”) signed by Applicant and the Registrant, which is attached as Exhibit A. The parties’ Consent Agreement contains, among other terms:
1.The Registrant’s consent for Applicant to register and use Applicant’s Mark for the goods listed in the Application;
2.The parties’ agreement that they have considered the realities of the marketplace and believe that the continued use and simultaneous registration of their respective marks with their respective goods is unlikely to lead to consumer confusion;
3.The parties’ agreement that neither party is aware of any actual consumer confusion between their respective marks;
4.The parties’ agreement that their respective goods are offered to sophisticated customers within a highly-specialized field, such that consumer confusion is unlikely; and
5.The parties’ agreement to cooperate and take such steps as are reasonably necessary to eliminate or minimize confusion between their respective marks and offerings should consumer confusion occur or become likely in the future.
The parties’ consent to an applicant’s registration of a mark is a strong factor to be considered in response to a § 2(d) refusal. T.M.E.P. § 1207.01(d)(viii). In fact, where the parties not only agree that consumer confusion is unlikely, but also agree to take further steps to reduce consumer confusion, these “consent agreements should be given great weight.” Id. Furthermore, the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason. See, e.g., In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993).
In the present case, the parties’ Consent Agreement clearly highlights that the parties do not believe that concurrent use and registration of their respective marks with their respective goods will lead to consumer confusion, particularly given the parties’ longstanding co-existence without any known confusion in the marketplace, and the fact that the parties’ respective goods are offered to sophisticated customers within a highly-specialized field. The Consent Agreement contains an undertaking by the parties to work together in good faith and take such steps as are reasonably necessary to eliminate any consumer confusion, should it arise in the future. As such, the parties’ Consent Agreement is more than a mere “naked” consent, and therefore should be entitled to great weight in determining whether or not a likelihood of confusion exists between Applicant's Mark and the cited mark. Applicant therefore respectfully requests that the likelihood of confusion refusal based on the cited mark in U.S. Registration No. 5055396 be withdrawn.
CONCLUSION
Based upon the foregoing, Applicant respectfully requests that the Application be approved for publication. Should any questions remain with respect to the above, please contact the Attorney of Record.
