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. 90687711 RENEGADE(Standard Characters, see http://uspto.report/TM/90687711/mark.png) has been amended as follows:

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

The Office Action has initially refused registration of Applicant?s Mark under Section 2(d) on grounds of an alleged likely confusion with the marks in U.S. Registration No. 6,180,814 and 6,190,707 (?the Cited Marks?). For the reasons noted below, this potential refusal should be withdrawn. As an initial matter, and without conceding the rejections are proper, Applicant is amenable to amending its Classes 36 and 42 descriptions of services, as per below: ? Class 36: ?Insurance agency services provided by insurance professionals directly to end-consumer policy holders; Insurance brokerage services provided by insurance professionals directly to end-consumer policy holders; Providing insurance information; Insurance brokerage; Insurance consultancy; Insurance underwriting services; Insurance underwriting consultation.? ? Class 42: ?Providing online non-downloadable computer software for use by insurance professionals within insurance brokerages and agencies for attracting and servicing end-consumer policy holders, said software for managing websites for said brokerages and agencies, receiving insurance policy information, aggregating and comparing insurance carriers, managing insurance customer relationships, managing certificates of insurances, and providing brokerage and agency insurance information; Providing temporary use of non-downloadable computer software for providing insurance information and insurance services.? Second, the insurance services of Applicant are in no manner related to venture capital services. Insurance services are in a highly regulated field that requires certain licenses and approvals; a company cannot just start offering insurance services. This is vastly different from venture capital services. Third, with ?providing insurance information? removed, it is clear there is no potential for overlap between services, as demonstrated in the examples form the Internet listed in the Office Action: 1) QBE.com ? this is an Australian company and thus not relevant to a US trademark application. 2) Miga.org ? this is directed at foreign countries. As seen in the attached, it is for ?developing countries.? http://www.miga.org/sites/default/files/archive/ Documents/SIPen.pdf (?The Multilateral Investment Guarantee Agency?s (MIGA) mission is to promote foreign direct investment into developing countries to support economic growth, reduce poverty, and improve people?s lives.?) It appears to be insurance for those in developing countries. 3) SVB.com -- does not offer insurance. It merely appears to display an article on the benefits of insurance. 4) First National Investment Services ? does not offer venture financing. It merely appears to offer life insurance. Thus, Applicant believes this amendment should render the refusals with the marks in U.S. Registration No. 6,180,814 and 6,190,707 moot. I. THERE IS NO LIKELIHOOD OF CONFUSION More specifically, there is no likelihood of confusion between the marks. There is no ?per se? rule regarding a finding of likely confusion. Rather, the facts in each case vary and the weight to be given to each relevant du Pont factor may be different in light of varying circumstances. See, e.g., In re White Rock Distilleries, Inc., 92 USPQ.2d 1282, 1285 (TTAB 2009). For the reasons noted below, this refusal of registration should be withdrawn. If the services and goods in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See, e.g., Coach Servs., Inc. v. Triumphs Learning LLC, 668 F. 3d 1356, 1371, 101 USPQ.2d 1713, 1723 (Fed. Cir 2012). Thus, for example, in Shen Mfg., Co. v. Ritz Hotel Ltd., 393 F. 3d 1238, 1244-45, 73 USPQ.2d 1350, 1356 (Fed. Cir. 2004), the Federal Circuit held that the contemporaneous use of RITZ for cooking and wine selection classes and the identical mark RITZ for kitchen textiles was not likely to cause confusion because the relatedness of the respective goods and services was not supported by substantial evidence. That both marks were used in the context of goods and services involved with kitchens, food, and cooking was not enough to support a finding of likely confusion. The same is true here. A. The Goods / Services and Target Customers are Dissimilar First, Applicant?s services and the Cited Mark?s services are different. Applicant?s services (as amended) are in Class 36 ad 42 for: ? Class 36: Insurance agency services provided by insurance professionals directly to end-consumer policy holders; Insurance brokerage services provided by insurance professionals directly to end-consumer policy holders; Insurance brokerage; Insurance consultancy; Insurance underwriting services; Insurance underwriting consultation. ? Class 42: Providing online non-downloadable computer software for use by insurance professionals within insurance brokerages and agencies for attracting and servicing end-consumer policy holders, said software for managing websites for said brokerages and agencies, receiving insurance policy information, aggregating and comparing insurance carriers, managing insurance customer relationships, managing certificates of insurances, and providing brokerage and agency insurance information; Providing temporary use of non-downloadable computer software for providing insurance services. The Cited Mark?s specific services are for: ? Class 36: Venture capital advisory, financing, funding and management services; Providing venture capital, working capital, development capital, private equity and investment funding; Incubation services, namely, providing financing to freelancers, start-ups, existing businesses and non-profits; Financial services, namely, investment advice, investment management, investment consultation and investment of funds for others, including private and public equity and debt investment services; Financial and investment services, namely, asset and investment acquisition, consultation, advisory and development; Providing loan financing; Financial portfolio management. Applicant believes that with ?providing insurance information? removed from its description of services, there clearly is no likelihood of confusion. The only way to offer insurance related services is via a regulated industry. Venture capitalists do not obtain regulatory approval to sell insurance (which is regulated by each state), but instead are subject to the rules of the United States Securities and Exchange Commission (?SEC?) ? a federal, governmental entity. Thus, these two bands are not likely to ?give rise to the mistaken belief that [the services] emanate from the same source.? B. The Markets and Channels of Trade are Dissimilar Applicant?s marketing and customer acquisition channels are different from those of the Cited Mark as well. If the services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then even if they are identical, confusion is not likely. See Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1244-45, 73 USPQ 2d 1350, 1356 (Fed. Cir. 2004) (emphasis added). Here, the evidence demonstrates that Applicant?s and the Cited Mark?s respective services, are not marketed in a manner where they will be likely encountered by the same customers who would assume that they emanate from the same source. The price range of the services, the channels of trade for the services, the target customers for the services, and their functionality and purpose are different such that confusion is not likely to occur between them. C. Other Third-Party Marks Help Show There is No Likelihood of Confusion In a likelihood of confusion analysis, ?[t]here is no question that third party use of similar marks is relevant.? Chips ?N Twigs, Inc. v. Chip-Chip, Ltd., 414 F. Supp. 1003, 1017 (E.D. Penn. 1976). The TMEP states: ?During the examination of an application, the examining attorney should consider separately each registration found in a search of the marks registered in the Office that may bar registration of the applicant's mark under ? 2(d). If the examining attorney finds registrations that appear to be owned by more than one registrant, he or she should consider the extent to which dilution may indicate that there is no likelihood of confusion.? TMEP ? 1207.01(d)(x) (emphasis added). As recognized by the TTAB, TMEP, and the courts, when multiple trademark registrations exist for the same terms, owned by different parties, the registered terms do not enjoy as broad of protection. See, e.g., Western Publishing. Co., Inc. v. Rose Art Industries, Inc., 910 F.2d 57 (2d Cir. 1990); Time, Inc. v. Petersen Pub. Co. L.L.C., 173 F.3d 113, 118 (2d Cir. 1999); McCarthy, Thomas J., MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, Sections 11:85-86 (2009). Even if the above was not enough, additional third-party registrations further support a finding of no likelihood of confusion. As per the evidence attached shows (USPTO Records ? Exhibits 1-5), the USPTO has allowed similar marks for related goods and services to co-exist and obtain Federal Registrations because the goods or services were considered to be distinguishable from one another. Other third-party RENEGADE (and variations) marks include: ? RENEGADE E.S.C. o Reg. No. 6,546,986 o Class 36 ?Brokerage services in the field of construction and specialized construction equipment.? ? THE RENEGADE NETWORK MARKETER o ?NETWORK MARKETER? disclaimed o Reg. No. 3,483,203 o Among others Class 35: ?Providing information in the field of business management and sales techniques.? ? RENEGADE TECHNOLOGY SYSTEMS o ?TECHNOLOGY SYSTEMS? disclaimed o Reg. No. 4,773,470 o Class 42: ?Technical support services, namely, remote administration and management of in-house and hosted datacenter devices, databases and software applications; Computer technical support services, namely, 24/7 service desk or help desk services for IT infrastructure; Technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems for desktop computers; Providing planning and engineering services in the field of information and communications networks; Computer technical support services, namely, database administration; Computer security consultancy in the field of scanning and penetration testing of computers and networks to assess information security vulnerability; Conversion of data or documents from physical to electronic media; Public document retrieval.? Based on the above, Applicant?s Mark and Applicant?s services are different enough to be distinguishable from the services of the Cited Mark. See, e.g., In re Broadway Chicken Inc., 38 USPQ2d 1559, 1565?66 (TTAB 1996) (?Evidence of widespread third-party use, in a particular field, of marks containing a certain shared term is competent to suggest that purchasers have been conditioned to look to the other elements of the marks as a means of distinguishing the source of goods or services in the field.?) Thus, there is no likelihood of confusion between Applicant?s Mark and the Cited Mark. It is the Examiner?s burden to demonstrate with sufficient and credible evidence that Applicant?s Mark is likely to be confused with the Cited Mark, which has not occurred. Accordingly, for all of these reasons, it is respectfully requested that the prior registrations citation be withdrawn.

EVIDENCE
Evidence has been attached: Argument USPTO Record printouts Website printouts
JPG file(s):Evidence-1Evidence-2Evidence-3
Original PDF file:
evi_260114087802bd0adc7dc 791d698e60-20220202104029 844095_._Arguments_-_RENE GADE.pdf
Converted PDF file(s) ( 5 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5
Original PDF file:
evi_260114087802bd0adc7dc 791d698e60-20220202104029 844095_._1.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2
Original PDF file:
evi_260114087802bd0adc7dc 791d698e60-20220202104029 844095_._2.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2
Original PDF file:
evi_260114087802bd0adc7dc 791d698e60-20220202104029 844095_._3.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2
Original PDF file:
evi_260114087802bd0adc7dc 791d698e60-20220202104029 844095_._MIGA.pdf
Converted PDF file(s) ( 12 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 036 for Insurance agency services provided by insurance professionals directly to end-consumer policy holders; Insurance brokerage services provided by insurance professionals directly to end-consumer policy holders; Providing insurance information; Insurance brokerage; Insurance consultancy; Insurance underwriting services; Insurance underwriting consultation
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 06/15/2021 and first used in commerce at least as early as 06/15/2021 , and is now in use in such commerce.


Proposed:
Class 036 for Insurance agency services provided by insurance professionals directly to end-consumer policy holders; Insurance brokerage services provided by insurance professionals directly to end-consumer policy holders; Providing insurance information; Insurance brokerage; Insurance consultancy; Insurance underwriting services; Insurance underwriting consultation
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 06/15/2021 and first used in commerce at least as early as 06/15/2021 , and is now in use in such commerce.

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

Applicant proposes to amend the following:

Current:
Class 042 for Non-downloadable computer software for use by insurance professionals within insurance brokerages and agencies for attracting and servicing end-consumer policy holders, said software for managing websites for said brokerages and agencies, receiving insurance policy information, aggregating and comparing insurance carriers, managing insurance customer relationships, managing certificates of insurances, and providing brokerage and agency insurance information; Non-downloadable computer software for providing insurance information and insurance services
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 06/15/2021 and first used in commerce at least as early as 06/15/2021 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Non-downloadable computer software for use by insurance professionals within insurance brokerages and agencies for attracting and servicing end-consumer policy holders, said software for managing websites for said brokerages and agencies, receiving insurance policy information, aggregating and comparing insurance carriers, managing insurance customer relationships, managing certificates of insurances, and providing brokerage and agency insurance information; Providing online non-downloadable computer software for use by insurance professionals within insurance brokerages and agencies for attracting and servicing end-consumer policy holders, said software for managing websites for said brokerages and agencies, receiving insurance policy information, aggregating and comparing insurance carriers, managing insurance customer relationships, managing certificates of insurances, and providing brokerage and agency insurance information; Non-downloadable computer software for providing insurance information and insurance services; Providing temporary use of non-downloadable computer software for providing insurance information and insurance servicesClass 042 for Providing online non-downloadable computer software for use by insurance professionals within insurance brokerages and agencies for attracting and servicing end-consumer policy holders, said software for managing websites for said brokerages and agencies, receiving insurance policy information, aggregating and comparing insurance carriers, managing insurance customer relationships, managing certificates of insurances, and providing brokerage and agency insurance information; Providing temporary use of non-downloadable computer software for providing insurance information and insurance services
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 06/15/2021 and first used in commerce at least as early as 06/15/2021 , 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 Software in use screenshots.
"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:
SPU1-260114087802bd0adc7d c791d698e60-2022020210402 9844095_._42.pdf
Converted PDF file(s) ( 18 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5Specimen File6Specimen File7Specimen File8Specimen File9Specimen File10Specimen File11Specimen File12Specimen File13Specimen File14Specimen File15Specimen File16Specimen File17Specimen File18


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

The owner's/holder's current attorney information: Andrew D. Skale. Andrew D. Skale of MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 300
      3580 CARMEL MOUNTAIN ROAD
      SAN DIEGO, California 92130
      United States
The docket/reference number is 059848401T01.
      The phone number is 858-314-1506.
      The fax number is 858-314-1501.
      The email address is adskale@mintz.com
Correspondence Information (current):
      Andrew D. Skale
      PRIMARY EMAIL FOR CORRESPONDENCE: adskale@mintz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jddib@mintz.com; acromanini@mintz.com; IPDocketingBOS@mintz.com; Mintzdocketing@cpaglobal.com

The docket/reference number is 059848401T01.
Correspondence Information (proposed):
      Andrew D. Skale
      PRIMARY EMAIL FOR CORRESPONDENCE: adskale@mintz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jddib@mintz.com; IPDocketingBOS@mintz.com; Mintzdocketing@cpaglobal.com; IPRecordsFile@mintz.com

The docket/reference number is 059848401T01.

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: /rashik adhikari/      Date: 02/02/2022
Signatory's Name: Rashik Adhikari
Signatory's Position: Owner
Signature method: Signed directly within the form

Response Signature
Signature: /Andrew D. Skale/     Date: 02/02/2022
Signatory's Name: Andrew D. Skale
Signatory's Position: Attorney of record

Signatory's Phone Number: 858-314-1506 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:    Andrew D. Skale
   MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C
   SUITE 300
   3580 CARMEL MOUNTAIN ROAD
   SAN DIEGO, California 92130
Mailing Address:    Andrew D. Skale
   MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C
   SUITE 300
   3580 CARMEL MOUNTAIN ROAD
   SAN DIEGO, California 92130
        
Serial Number: 90687711
Internet Transmission Date: Wed Feb 02 10:48:57 ET 2022
TEAS Stamp: USPTO/ROA-XXXX:XXX:XXXX:XXXX:XXXX:XXXX:X
XXX:XXXX-20220202104857957356-90687711-8
00c6dd9f224cac2301ffc5f20e6686a8d31f1f5b
432bac9d94969a99e8361c33-N/A-N/A-2022020
2104029844095