PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`ARGUMENT(S)
`
`The table below presents the data as entered.
`
`Entered
`
`85426540
`
`LAW OFFICE 107
`
`http://tess2.uspto.gov/ImageAgent/ImageAgentProxy?getImage=85426540
`
`SKYNET SOLUTIONS
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`Please see the actual argument text attached within the Evidence section.
`
`EVIDENCE SECTION
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)EVIDENCE FILE NAME(S)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)ORIGINAL PDF FILE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)CONVERTED PDF FILE(S)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(4 pages)
`
`evi_742131133-161434332_._Response_to_OA-Skynet.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\854\265\85426540\xml1\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\854\265\85426540\xml1\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\854\265\85426540\xml1\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\854\265\85426540\xml1\ROA0005.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`Actual argument text.
`
`GOODS AND/OR SERVICES SECTION (current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`042
`
`Computer services, namely, designing and implementing websites, webpages, home pages, internet sites for others; Designing, creating,
`maintaining, and hosting websites, webpages, e-commerce websites for others
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 01/19/2003
`
`At least as early as 01/19/2003
`
`GOODS AND/OR SERVICES SECTION (proposed)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`042
`
`Computer services, namely, designing and implementing websites, webpages, home pages, internet sites for others; Designing, creating,
`maintaining, and hosting websites, webpages, e-commerce websites for others
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 01/19/2003
`
`At least as early as 01/19/2003
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)STATEMENT TYPE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)SPECIMEN
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FILE NAME(S)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)SPECIMEN DESCRIPTION
`
`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`SIGNATURE SECTION
`
`DECLARATION SIGNATURE
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`"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].
`
`\\TICRS\EXPORT16\IMAGEOUT 16\854\265\85426540\xml1\ ROA0006.JPG
`
`I screenshot of a webpage displaying the mark "Skynet Solutions" to market,
`promote and sell services.
`
`No claim is made to the exclusive right to use solutions apart from the mark as
`shown.
`
`The filing Attorney has elected not to submit the signed declaration, believing no
`supporting declaration is required under the Trademark Rules of Practice.
`
`/Rod Yancy/
`
`Rod Yancy
`
`Attorney of record
`
`918-200-9094
`
`06/21/2012
`
`YES
`
`Thu Jun 21 16:29:37 EDT 2012
`
`USPTO/ROA-XX.XXX.XX.XX-20
`120621162937645849-854265
`40-49036e5ab1774f30fb9ea2
`25ad2fd8c-N/A-N/A-2012062
`1161434332711
`
`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 85426540(cid:160)SKYNET SOLUTIONS(Standard Characters, see
`http://tess2.uspto.gov/ImageAgent/ImageAgentProxy?getImage=85426540) has been amended as follows:
`
`ARGUMENT(S)
`
`

`

`In response to the substantive refusal(s), please note the following:
`
`Please see the actual argument text attached within the Evidence section.
`
`EVIDENCE
`Evidence in the nature of Actual argument text. has been attached.
`Original PDF file:
`evi_742131133-161434332_._Response_to_OA-Skynet.pdf
`Converted PDF file(s) ( 4 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 042 for Computer services, namely, designing and implementing websites, webpages, home pages, internet sites for others;
`Designing, creating, maintaining, and hosting websites, webpages, e-commerce websites for others
`Original Filing Basis:
`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 01/19/2003 and first used in commerce at least as early as 01/19/2003 , and is now in use in such commerce.
`
`Proposed: Class 042 for Computer services, namely, designing and implementing websites, webpages, home pages, internet sites for others;
`Designing, creating, maintaining, and hosting websites, webpages, e-commerce websites for others
`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 01/19/2003 and first used in commerce at least as early as 01/19/2003 , 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 I screenshot of a webpage displaying
`the mark "Skynet Solutions" to market, promote and sell 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]. Specimen File1
`
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use solutions apart from the mark as shown.
`
`SIGNATURE(S)
`Declaration Signature
`I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I
`understand that the examining attorney could still, upon later review, require a signed declaration.
`Response Signature
`Signature: /Rod Yancy/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 06/21/2012
`Signatory's Name: Rod Yancy
`Signatory's Position: Attorney of record
`
`Signatory's Phone Number: 918-200-9094
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an
`associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not
`currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently
`filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or
`Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`

`

`Serial Number: 85426540
`Internet Transmission Date: Thu Jun 21 16:29:37 EDT 2012
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20120621162937645
`849-85426540-49036e5ab1774f30fb9ea225ad2
`fd8c-N/A-N/A-20120621161434332711
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`Serial No.:
`
`Skynet Solutions, Inc.
`85426540
`
`Filed:
`Trademark Atty:
`Word Mark:
`
`September 19, 201 1
`Steven W. Jackson
`SKYNET SOLUTIONS
`
`RESPONSE TO JANUARY 5, 2012 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e—mailed on January 5, 2012. The Applicant
`respectfully submits the following response. Applicant submits that the above-identified trademark
`application for SKYNET SOLUTIONS is in condition for allowance to publication.
`
`Prior-Filed Application
`Applicant submits a preliminary response to the potential conflict between Applicant’s mark and the mark
`found in application serial number 85187783 for SKYNET (“Cited Mark”); however, Applicant reserves
`all rights to provide a detailed and more descriptive response if Examining Attorney Steven W. Jackson
`raises an additional refusal in a subsequent Office Action.
`
`Applicanfs Word Mark
`
`SKYNET SOLUTIONS
`
`Cited Mark
`
`SKWQET
`
`Class 42: Providing virtual computer
`Class 42: Computer services, namely, designing
`systems and virtual computer environ-
`and implementing websites, webpages, home
`pages, internet sites for others; Designing, creating, ments through cloud computing
`maintaining, and hosting websites, webpages,
`e-commerce websites for others
`
`Preliminary Response with Reservation ofRights
`The Examiner suggests that it may possibly suspend Applicant’s mark, because if the cited mark registers,
`Applicant’s Mark may be refused registration under Trademark Act Section 2(d) for a likelihood of
`confusion. Applicant asserts that its mark and services differ sufficiently to avoid the potential for a
`likelihood of confusion. “[T]he question of confusion is related not to the nature of the mark but to its
`effect ‘when applied to the goods of the applicant.”’ In re E. I. du Pom‘ de Nemours & Ca, 476 F.2d 1357,
`1360, 177 USPQ 563, 566 (C.C.P.A. 1973). The United States Court of Customs and Patent Appeals listed
`thirteen factors to weigh in the likelihood of confusion analysis and stated that all of the factors must be
`considered “when of record.” Id. at 1361. Applicant respectfully asserts that when all factors are weighed,
`the majority weighs against the existence of a likelihood of confusion.
`
`(I) Similarity of Conflicting Designations
`The first factor is the similarity of the conflicting designations, including appearance, sound, meaning or
`connotation, and commercial impression. In re E. I. du Pont de Nemours & Ca, 476 F.2d 1357, 1361, 177
`USPQ 563, 567 (C.C.P.A. 1973). A similar phrase found in two marks is not dispositive of a confusing
`similarity between the marks when the marks give off different commercial expressions. See Kellogg Co. v.
`Pack ’em Enterprises, Inc., 951 F.2d 330 (Fed. Cir. 1991). When Applicant’s mark (SKYNET
`SOLUTIONS), and the Cited Mark (SKYNET) are compared, the appearance is not similar in that the
`Applicant uses an additional term. The USPTO has found a mark capable of registration, even in cases
`
`

`

`where the marks are nearly identical and are covered under the same classification. Furthermore, courts
`have long held that the addition of different terms to a common element appreciably reduces the likelihood
`of confusion between two marks. See US Trust V. U.S. States Trust Co., 210 F. Supp. 2d 9, 27-28 (D. Mass
`2002) (UNITED STATES TRUST COMPANY not confusingly similar to UNITED STATES TRUST
`COMPANY OF BOSTON, both for financial services); Colgate Palmolive Co. V. Carter—Wallace, Inc., 432
`F.2d 1400, 1402, 167 U.S. P. Q. 529, 530 (C.C.P.A. 1970) (PEAK PERIOD not confusing similar to
`PEAK); Servo Corp. Am. V. Servo-Tek Prod. Co., 289 F. 2d 955, 981 129 U.S.P.Q. 352, 353 (C.C.P.A.
`1961) (SERVOSPEED not confusingly similar to SERVO); Sweats Fashions, Inc. V. Pannill Knitting Co.,
`833 F. 2d 1560, 1564, 4 U.S.P.Q. 2d 1793, 1796 (Fed. Cir. 1987) (SWEATS not confiising similar to
`ULTRA SWEATS), both for sportswear); Gen. Mills Inc. V. Kellog Co., 824 F. 2d 622, 627, 3 U.S.P.Q. 2d
`1442, 1446 (8th Cir. 1987) (OATMEAL RAISIN CRISP not confusingly similar to APPLE RASIN CRISP,
`both for breakfast cereal); Consol. Cigar V. RJR Tobacco Co., 491 F.2d 1265, 1267, 181 U.S.P.Q. 44, 45
`(C.C.P.A. 1974) (DUTCH APPLE for pipe tobacco not confusingly similar to DUTCH MASTERS for
`cigars). Furthermore, the marks differ phonetically because the Applicant’s mark consists of five syllables
`and the Cited Mark consists of two syllables. This factor weighs in Applicant’s favor.
`
`(2) Similarity or Dissimilarity and the Nature ofthe Goods or Services
`The second factor is the similarity or dissimilarity and the nature of the goods or services as described in an
`application or registration or in connection with a prior use of the mark. In re E. I. du Pont‘ de Nemours &
`C0., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). The Cited Mark offers Virtual computer
`systems and virtual computer environments, specifically through cloud computing. Applicant could even
`argue that the Cited Mark is not a service, but rather a “good” sufficient to fall under Class 009.
`Specifically, the Cited Mark olfers a platform for its users to remotely access computer systems through
`cloud computing. In any case, the services differ because Applicant offers web design and webpage
`hosting related services and the Cited Mark olfers cloud computing related services. This factor weighs
`heavily against a likelihood of confusion.
`
`(3) Similarity or Dissimilarity ofEstablished, Likely to Continue Trade Channels
`The third factor is the similarity or dissimilarity of established, likely-to-continue trade channels. In re E. I.
`du Pont de Nemours & Ca, 476 F.2d at 1361, 177 USPQ at 567. The Examiner has not identified the trade
`charmels used by the Cited Mark. However, Applicant offers different services than those offered under
`the Cited Mark. Therefore, it is Very likely that the trade charmels will also be different. Therefore, this
`factor heavily weighs against a finding of a likelihood of confusion.
`
`(4) Conditions Upon Sales Are Made
`The fourth factor is the conditions under which and buyers to whom sales are made (i.e. impulse V.
`careful). Id This factor weighs heavily in favor of the Applicant. Consumers interested in Applicant’s
`services seek creative and technical consultation for web design. The Cited Mark offers computer goods/
`services specifically through “cloud computing.” Therefore, the conditions upon which sales are made by
`the Applicant are so Very different from the sales conditions offered by the owner of the Cited Mark that no
`confusion would occur. This factor weighs heavily against a likelihood of confusion between these two
`marks.
`
`(5) Fame of the Prior Mark
`The fifth factor is the fame of the prior mark (e. g., sales, advertising, length of use, etc.). Id. There is no
`evidence that the prior Cited Mark is famous, this factor weighs against a likelihood of confusion.
`
`(6) Number and Nature ofSimilar Marks in Use on Similar Goods
`The sixth factor is the number and nature of similar marks in use in connection with similar services. Id. In
`
`this case, the Examiner has not made any assertions as to the number and nature of marks used in
`connection with computer services. However, Applicant asserts that there are no marks using the mark,
`SKYNET SOLUTIONS, or any similar variation of SKYNET SOLUTIONS in connection with web
`design services. Therefore, Applicant asserts that this factor also weighs in his favor.
`
`

`

`(7) Nature and Extent ofA ny Actual Confusion
`The seventh factor concerns the nature and extent of any actual confusion. Id. No evidence exists that any
`consumer has been confused by the use of these two marks. Consequently, Applicant asserts that this factor
`weighs in his favor or is at least neutral in the likelihood of confusion analysis.
`
`(8) Length of Time During and Conditions under which There Has Been Concurrent Use Without
`Evidence ofActual Confusion
`The eighth factor is the length of time during and conditions under which there has been concurrent use
`without evidence of actual confusion. Id. Applicant has enjoyed use of its mark since January 19, 2003.
`The Cited Mark has a date of first use of November 11, 2010. During the time of concurrent use, Applicant
`asserts that no evidence of confusion has surfaced. Therefore, Applicant asserts that this factor also weighs
`in his favor.
`
`(9) Variety of Goods on which a Mark Is or Is Not Used
`The ninth factor is the variety of goods on which a mark is or is not used (house mark, “family” mark,
`product mark). In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361, 177 USPQ at 567. Neither the
`Applicant’s mark or the Cited Mark are members of a family of marks. Consequently, Applicant asserts
`that this factor weighs in his favor or is at least neutral in the likelihood of confusion analysis.
`
`(10) Market Interface Between Applicant and the Owner ofa Prior Mark
`The tenth factor is the market interface between Applicant and the owner of a valid, prior mark. Id. To the
`Applicant’s knowledge, there has been no market interface between the Applicant’s Mark and the Cited
`Mark, and therefore this factor also weighs in the Applicant’s favor.
`
`(11) Extent to which Applicant has a Right to Exclude Others from Use ofits Mark on its Goods
`The eleventh factor is the extent to which Applicant has a right to exclude others from use of its mark on its
`goods. Id. The Applicant has enjoyed use of its mark since 2003. Therefore, the Applicant is the senior
`user and has a senior right to exclude others from use of its mark for web design related services. Should
`the Examiner find that the services are similar, this factor weighs in favor of the Applicant.
`
`(12) Extent ofPotential Confusion
`The twelfth factor is the extent of potential confusion, i.e., whether de minimis or substantial. Id. Because
`(1) it is unclear as to what trade channels the owner of the Cited Mark uses, (2) the Applicant’s services are
`substantially different than the services offered by the Cited Mark, (3) the Applicant has enjoyed use of its
`mark seven years prior to the first use of the Cited Mark, and (4) there is no evidence of confusion during
`the period which both marks have been in concurrent use, the potential for confusion is de minimis and
`weighs heavily against a likelihood of confusion.
`
`(13) Whether There Are any Other Established Facts Probative ofthe Ejfect of Use
`The thirteenth factor looks to whether there are any other established facts probative of the effect of use.
`Applicant reserves all rights to provide a detailed and more descriptive response on this factor if the
`USPTO should raise a Section 2(d) refusal in a subsequent Ofiice Action.
`
`When determining whether an Applicant’s mark creates a likelihood of confusion, with marks covered by
`cited registrations "[a] showing of mere possibility of confusion is not enough; a substantial likelihood
`that the public will be confused must be shown." Omaha Natl. Bank, 633 F. Supp. at 234, 229
`U.S.P.Q. at 52.
`
`After balancing the factors, the seventh factor is at least neutral. However, all other factors weight against
`the finding of a likelihood of confusion. Applicant respectfully submits that the mark for SKYNET
`SOLUTIONS does not create a likelihood of confusion with the Cited Mark. Furthermore, based upon the
`arguments made, it is clear that the likelihood of confusion occurring is NOT SUBSTANTIAL. Applying
`
`

`

`the factors set forth in Du Pont, and absent “substantial doubt,” registration of Applicant’s mark is
`appropriate.
`
`DISCLAIMER
`
`No claim is made to the exclusive right to use “solutions” apart from the mark as shown.
`
`SUBSTITUTE SPECIMEN
`
`A substitute specimen showing the mark in use in commerce for each class of services specified in the
`application is attached to this response. The substitute specimen was in use in commerce at least as early
`as the filing date of the application.
`
`CONCLUSION
`
`Applicant has fully responded to the January 5, 2012 Office Action. Applicant respectfully submits in good
`faith that all potential 2(d) refusals, rejections, and/or objections have been overcome and that the applied
`for mark is in condition for publication.
`
`Respectfully submitted,
`Rod Yancy/
`Rod Yancy (OBA # 21417)
`Attorney of Record for the Applicant
`RTY LAW
`
`1874 South Boulder Avenue
`
`Tulsa, OK 21417
`
`r0d@rtylaw.com
`Phone: 918.200.9094
`
`

`

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`______j Services
`
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