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. 90199739 VIPER(Standard Characters, see http://uspto.report/TM/90199739/mark.png) has been amended as follows:

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

The Examining Attorney has found no conflicting registered marks that would bar registration of Applicant’s VIPER mark (“Applicant’s Mark”). The Examining Attorney has, however, noted the existence of prior pending Application Nos. 88885937 for VIPERS, 88935357 for VIPER, 85118444 for VIPER, 77441560 for VIPER, 90008779 for SHADOWVIPER, and 88643524 for VIPER SAAS (collectively the “Noted Marks”), each as potential likelihood of confusion bars to registration under Trademark Act §2(d), 15 U.S.C. §1052(d), should the applications mature to registration. Applicant respectfully submits that there is no likelihood of confusion between the Noted Marks and Applicant’s Mark, specifically on account of the fact that all six (6) separate marks identified are for the same VIPER term, all cover software products/services, and all are capable of coexisting on the USPTO Register. However, given the fact that the foregoing Noted Applications each remain pending (some even suspended), Applicant defers offering further substantive argument or evidence in response to each specific application in support of its position until the disposition of the Noted Applications becomes fully apparent.

Nevertheless, in determining whether a likelihood of confusion exists, the fundamental inquiry goes to the cumulative effect of the differences in the marks and the goods/services at issue. Federated Foods, Inc. v. Fort Howard Paper Co., 192 U.S.P.Q. 24, 29 (C.C.P.A. 1976). It is quite possible for no likelihood of confusion to exist even between marks which may share a term, but, as is the case here, the record shows that they nevertheless evoke different commercial impressions and/or where the respective goods and services to which the marks are applied are such that prospective customers are not likely to assume that those goods or services share a common source. Thus, although Applicant’s Mark and the Noted Marks may each incorporate the term VIPER and all cover some form of software, these facts alone are far from dispositive of a likelihood of confusion. "Per se" rules relating to likelihood of confusion have been struck down as being too inflexible as contrary to trademark law, where each case must be decided based on its own facts and circumstances. See In re Quadram Corporation, 228 U.S.P.Q. 863, 865 (TTAB 1985). In this case, differences in the marks as a whole, the notable differences in the goods and services (as amended), sophistication of the customer, channels of trade, and the overall strength (or weakness) of each mark obviates any grounds for refusal.

In view of the foregoing, it is respectfully submitted that the advisory notice/objection to registration under Section 2(d) should be withdrawn and the subject application be approved for publication.

Finally, the Examining Attorney has also requested that the Applicant amend the identification of goods and services asserting that the present identification is overbroad. Applicant accepts the Examining Attorney suggested language and agrees to the following:

IC 009. Computer hardware and peripheral devices and recorded software applications having a graphical user interface for use in predicting radio frequency (RF) propagation loss in a real-world environment over urban, suburban, and irregular terrain types, including both flat and curved surfaces; downloadable computer software for use in performing three-dimensional analysis of surface reflection and diffraction and for use in analyzing terrain, surface materials and environmental obstacles

IC 042. Providing temporary use of non-downloadable cloud-based software platform having a graphical user interface for use in predicting radio frequency (RF) propagation loss in a real-world environment over urban, suburban, and irregular terrain types, including both flat and curved surfaces; providing temporary use of non-downloadable computer software for use in performing three-dimensional analysis of surface reflection and diffraction and for use in analyzing terrain, surface materials and environmental obstacles

Accordingly, Applicant respectfully submits that the identification of goods and services is now acceptable for purposes of registration.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Computer hardware and peripheral devices and recorded software applications having a graphical user interface for use in predicting radio frequency (RF) propagation loss in a real-world environment over urban, suburban, and irregular terrain types, including both flat and curved surfaces; downloadable computer software for use in performing three-dimensional analysis of surface reflection and diffraction, analyzing terrain, surface materials and environmental obstacles
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.


Proposed:

Tracked Text Description: Computer hardware and peripheral devices and recorded software applications having a graphical user interface for use in predicting radio frequency (RF) propagation loss in a real-world environment over urban, suburban, and irregular terrain types, including both flat and curved surfaces; downloadable computer software for use in performing three-dimensional analysis of surface reflection and diffraction, analyzing terrain, surface materials and environmental obstacles; downloadable computer software for use in performing three-dimensional analysis of surface reflection and diffraction and for use in analyzing terrain, surface materials and environmental obstaclesClass 009 for Computer hardware and peripheral devices and recorded software applications having a graphical user interface for use in predicting radio frequency (RF) propagation loss in a real-world environment over urban, suburban, and irregular terrain types, including both flat and curved surfaces; downloadable computer software for use in performing three-dimensional analysis of surface reflection and diffraction and for use in analyzing terrain, surface materials and environmental obstacles
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 042 for cloud-based software platform having a graphical user interface for use in predicting radio frequency (RF) propagation loss in a real-world environment over urban, suburban, and irregular terrain types, including both flat and curved surfaces; non-downloadable computer software for use in performing three-dimensional analysis of surface reflection and diffraction, analyzing terrain, surface materials and environmental obstacles
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.


Proposed:

Tracked Text Description: cloud-based software platform having a graphical user interface for use in predicting radio frequency (RF) propagation loss in a real-world environment over urban, suburban, and irregular terrain types, including both flat and curved surfaces; Providing temporary use of non-downloadable cloud-based software platform having a graphical user interface for use in predicting radio frequency (RF) propagation loss in a real-world environment over urban, suburban, and irregular terrain types, including both flat and curved surfaces; non-downloadable computer software for use in performing three-dimensional analysis of surface reflection and diffraction, analyzing terrain, surface materials and environmental obstacles; providing temporary use of non-downloadable computer software for use in performing three-dimensional analysis of surface reflection and diffraction and for use in analyzing terrain, surface materials and environmental obstaclesClass 042 for Providing temporary use of non-downloadable cloud-based software platform having a graphical user interface for use in predicting radio frequency (RF) propagation loss in a real-world environment over urban, suburban, and irregular terrain types, including both flat and curved surfaces; providing temporary use of non-downloadable computer software for use in performing three-dimensional analysis of surface reflection and diffraction and for use in analyzing terrain, surface materials and environmental obstacles
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Webpage URL: None Provided
Webpage Date of Access: None Provided

Correspondence Information (current):
      CHRISTOPHER D. OLSZYK, JR.
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocket@foxrothschild.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): colszyk@foxrothschild.com

The docket/reference number is 146628.90024.
Correspondence Information (proposed):
      Christopher D. Olszyk, Jr.
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocket@foxrothschild.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): colszyk@foxrothschild.com

The docket/reference number is 146628.90024.

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)
Response Signature
Signature: /CDO/     Date: 08/05/2021
Signatory's Name: Christopher D. Olszyk, Jr.
Signatory's Position: Attorney of Record, PA Bar Member
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:    CHRISTOPHER D. OLSZYK, JR.
   FOX ROTHSCHILD LLP
   
   997 LENOX DRIVE, BLDG. 3
   LAWRENCEVILLE, New Jersey 08648-2311
Mailing Address:    Christopher D. Olszyk, Jr.
   FOX ROTHSCHILD LLP
   997 LENOX DRIVE, BLDG. 3
   LAWRENCEVILLE, New Jersey 08648-2311
        
Serial Number: 90199739
Internet Transmission Date: Thu Aug 05 13:37:16 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2021080513371632
9614-90199739-781ed61e86ac6dc4469681cf5c
fdcbccec5e7aecc63384d994cec21694d48f4-N/
A-N/A-20210805132839708283