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 |
Input Field |
Entered |
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SERIAL NUMBER | 90174269 |
LAW OFFICE ASSIGNED | LAW OFFICE 126 |
MARK SECTION | |
MARK FILE NAME | http://uspto.report/TM/90174269/mark.png |
LITERAL ELEMENT | EVEREST |
STANDARD CHARACTERS | NO |
USPTO-GENERATED IMAGE | NO |
DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the word EVEREST preceded by a three-sided logo. |
ARGUMENT(S) | |
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 SECTION | |
EVIDENCE FILE NAME(S) | |
ORIGINAL PDF FILE | evi_100011954-20210721150 841341885_._Evidence_of_R egistrations_and_Allowanc e.pdf |
CONVERTED PDF FILE(S) (6 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\901\742\90174269\xml5\ ROA0002.JPG |
\\TICRS\EXPORT18\IMAGEOUT 18\901\742\90174269\xml5\ ROA0003.JPG | |
\\TICRS\EXPORT18\IMAGEOUT 18\901\742\90174269\xml5\ ROA0004.JPG | |
\\TICRS\EXPORT18\IMAGEOUT 18\901\742\90174269\xml5\ ROA0005.JPG | |
\\TICRS\EXPORT18\IMAGEOUT 18\901\742\90174269\xml5\ ROA0006.JPG | |
\\TICRS\EXPORT18\IMAGEOUT 18\901\742\90174269\xml5\ ROA0007.JPG | |
DESCRIPTION OF EVIDENCE FILE | Two U.S. Trademark Registrations and one Notice of Allowance |
GOODS AND/OR SERVICES SECTION (current) | |
INTERNATIONAL CLASS | 042 |
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 | |
FILING BASIS | Section 1(a) |
FIRST USE ANYWHERE DATE | At least as early as 08/18/2020 |
FIRST USE IN COMMERCE DATE | At least as early as 08/18/2020 |
GOODS AND/OR SERVICES SECTION (proposed) | |
INTERNATIONAL CLASS | 042 |
TRACKED TEXT DESCRIPTION | |
FINAL DESCRIPTION | |
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) |
FIRST USE ANYWHERE DATE | At least as early as 08/18/2020 |
FIRST USE IN COMMERCE DATE | At least as early as 08/18/2020 |
STATEMENT TYPE | "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]. |
SPECIMEN FILE NAME(S) | |
ORIGINAL PDF FILE | SPU0-100011954-2021072115 0841341885_._Everest.pdf |
CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT18\IMAGEOUT 18\901\742\90174269\xml5\ ROA0008.JPG |
SPECIMEN DESCRIPTION | image of webpage using mark to advertise services |
WEBPAGE URL | http://www.validity.com/everest/ |
WEBPAGE DATE OF ACCESS | 07/21/2021 |
ADDITIONAL STATEMENTS SECTION | |
DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the word "EVEREST" preceded by a three-sided design representing a mountain peak. |
CORRESPONDENCE INFORMATION (current) | |
NAME | THOMAS E. KENNEY |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | tom@piercemandell.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
CORRESPONDENCE INFORMATION (proposed) | |
NAME | Thomas E. Kenney |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | tom@piercemandell.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
SIGNATURE SECTION | |
DECLARATION SIGNATURE | /tek/ |
SIGNATORY'S NAME | Thomas E. Kenney |
SIGNATORY'S POSITION | Attorney of record, Massachusetts bar member |
SIGNATORY'S PHONE NUMBER | 617-720-2444 |
DATE SIGNED | 07/21/2021 |
SIGNATURE METHOD | Signed directly within the form |
RESPONSE SIGNATURE | /tek/ |
SIGNATORY'S NAME | Thomas E. Kenney |
SIGNATORY'S POSITION | Attorney of record, Massachusetts bar member |
SIGNATORY'S PHONE NUMBER | 617-720-2444 |
DATE SIGNED | 07/21/2021 |
ROLE OF AUTHORIZED SIGNATORY | Authorized U.S.-Licensed Attorney |
SIGNATURE METHOD | Signed directly within the form |
FILING INFORMATION SECTION | |
SUBMIT DATE | Wed Jul 21 15:16:59 ET 2021 |
TEAS STAMP | USPTO/ROA-XXX.X.XXX.XX-20 210721151659516990-901742 69-7802d2bbb39b173ecdb122 7dacdbc655cdde3a859154123 ea39baac6915e848ae-N/A-N/ A-20210721150841341885 |
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 |
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.