Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90174269 EVEREST (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9017426 9/large) has been amended as follows:

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

The Examining Attorney refused registration of the Applicant's mark EVEREST based on an earlier registration for EVEREST. The Examining Attorneys reasons that the Applicant's mark incorporates the Registrant's mark, and that the services of the Applicant and Registrant are sufficiently related and marketed through all normal trade channels, and therefore potential purchasers might believe that the services originate from the same source. With all due respect to the Examining Attorney, Applicant submits that the Office did not meet its burden of proof in this case. Because the purpose and use of the respective services is wholly different, it is very unlikely that relevant consumers of the respective services will believe there is any connection between the two companies. Differences in purpose and function. As the Examining Attorney found, the relevant services for comparing Registrant's Mark is its class 42 services. Those services are "Computer software consultation services in the field of financial systems and general business management. Applicant does not offer consultation services, and does not offer any services in the areas of financial systems or general business management under its EVEREST mark. Rather, Applicant's services under its Mark are limited to assisting companies reach more potential customers by improving the deliverability of their email communications. Specifically, Applicant's services are: "Providing temporary use of on-line non-downloadable computer software for improving the deliverability of electronic mail, namely, inbox placement, email verification, email design, sender reputation monitoring, engagement metrics, and analytics and reporting concerning the same." Thus, the two companies' services are so different as to purpose and function that confusion is quite unlikely. Where the services of the Applicant and Registrant are different, the Examining Attorney bears the burden of showing that Applicant's and Registrant's different services would commonly be provided by the same source. E.g., In re Shipp, 4 U.S.P.Q.2d 1174, 1176 (TTAB 1987) (Examining Attorney's argument that small segment of market would be familiar with both Applicant's use of PURITAN in connection with dry cleaning services and Registrants' uses of PURITAN in connection with dry cleaning equipment and dry cleaning chemicals rejected due to lack of proof of trade practices and failure to show likelihood, rather than possibility, of confusion; refusal reversed). There is no evidence of record that the two companies' respective services are in any way related for purposes of the likelihood of confusion analysis. Sophisticated users of Registrant's goods. Furthermore, although on its face Registrant's identification does not limit the class of purchasers for its computer software services, in fact, its computer software services in the field of financial systems and general business management most assuredly would be purchased by particularly sophisticated business people who would not be confused by the use of EVEREST in connection with functionally different software services. In fact, the Trademark Office has long recognized the sophistication of purchasers of computer software services, permitting the registration of otherwise similar marks where such consumers could differentiate between the various types of computer services. This is exemplified by the attached evidence, which shows two registrations that co-existed for the EVEREST mark in class 42 for unrelated computer software services, as well as the recent allowance of an application for EVEREST SWITCH for software as a service services. In light of these registrations and allowance, there is no basis to deny registration to Applicant's mark. For these reasons, Applicant respectfully requests that the Examining Attorney withdraw the refusal of registration under Section 2(d). The mere possibility that relevant consumers might relate the two different marks does not meet the statutorily established test of likelihood of confusion. E.g., In re Hughes Aircraft Company, 222 U.S.P.Q. 263, 264 (TTAB 1984) ("the Trademark Act does not preclude registration of a mark where there is a possibility of confusion as to source or origin, only where such confusion is likely") (emphasis added).

EVIDENCE
Evidence has been attached: Two U.S. Trademark Registrations and one Notice of Allowance
Original PDF file:
evi_100011954-20210721150 841341885_._Evidence_of_R egistrations_and_Allowanc e.pdf
Converted PDF file(s) ( 6 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 042 for Computer software, namely, software for improving the deliverability of electronic mail, namely, inbox placement, email verification, email design, sender reputation monitoring, engagement metrics, and analytics and reporting concerning the same
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/18/2020 and first used in commerce at least as early as 08/18/2020 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Computer software, namely, software for improving the deliverability of electronic mail, namely, inbox placement, email verification, email design, sender reputation monitoring, engagement metrics, and analytics and reporting concerning the same; Providing temporary use of on-line non-downloadable computer software for improving the deliverability of electronic mail, namely, inbox placement, email verification, email design, sender reputation monitoring, engagement metrics, and analytics and reporting concerning the sameClass 042 for Providing temporary use of on-line non-downloadable computer software for improving the deliverability of electronic mail, namely, inbox placement, email verification, email design, sender reputation monitoring, engagement metrics, and analytics and reporting concerning the same
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/18/2020 and first used in commerce at least as early as 08/18/2020 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 042. The specimen(s) submitted consists of image of webpage using mark to advertise services.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-100011954-2021072115 0841341885_._Everest.pdf
Converted PDF file(s) ( 1 page) Specimen File1


Webpage URL: http://www.validity.com/everest/
Webpage Date of Access: 07/21/2021

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the word "EVEREST" preceded by a three-sided design representing a mountain peak.
Correspondence Information (current):
      THOMAS E. KENNEY
      PRIMARY EMAIL FOR CORRESPONDENCE: tom@piercemandell.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Thomas E. Kenney
      PRIMARY EMAIL FOR CORRESPONDENCE: tom@piercemandell.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /tek/      Date: 07/21/2021
Signatory's Name: Thomas E. Kenney
Signatory's Position: Attorney of record, Massachusetts bar member
Signatory's Phone Number: 617-720-2444

Signature method: Signed directly within the form

Response Signature
Signature: /tek/     Date: 07/21/2021
Signatory's Name: Thomas E. Kenney
Signatory's Position: Attorney of record, Massachusetts bar member

Signatory's Phone Number: 617-720-2444 Signature method: Signed directly within the form

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:    THOMAS E. KENNEY
   PIERCE & MANDELL, P.C.
   SUITE 800
   11 BEACON STREET
   BOSTON, Massachusetts 02108
Mailing Address:    Thomas E. Kenney
   PIERCE & MANDELL, P.C.
   SUITE 800
   11 BEACON STREET
   BOSTON, Massachusetts 02108
        
Serial Number: 90174269
Internet Transmission Date: Wed Jul 21 15:16:59 ET 2021
TEAS Stamp: USPTO/ROA-XXX.X.XXX.XX-20210721151659516
990-90174269-7802d2bbb39b173ecdb1227dacd
bc655cdde3a859154123ea39baac6915e848ae-N
/A-N/A-20210721150841341885