PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`The table below presents the data as entered.
`
`Entered
`
`85908604
`
`LAW OFFICE 101
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`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)(3 pages)
`
`DESCRIPTION OF EVIDENCE FILE
`
`ADDITIONAL STATEMENTS SECTION
`
`SIGNIFICANCE OF MARK
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`http://tess2.uspto.gov/ImageAgent/ImageAgentProxy?getImage=85908604
`
`EMENU
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`evi_701095314-145348339_._EMENU-Response_to_OA.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\859\086\85908604\xml5\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\859\086\85908604\xml5\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\859\086\85908604\xml5\ROA0004.JPG
`
`a .pdf of the arguments Applicant submits in response to the Office action dated
`August 6, 2013.
`
`eMenu appearing in the mark has no significance nor is it a term of art in the relevant
`trade or industry or as applied to the goods/services listed in the application, or any
`geographical significance.
`
`/avann/
`
`Antonio G. Vann
`
`Attorney of Record Va Bar Member
`
`2025281787
`
`01/13/2014
`
`YES
`
`Mon Jan 13 15:00:21 EST 2014
`
`USPTO/ROA-XX.XXX.XX.XX-20
`140113150021973048-859086
`04-5007a95f68e692eb78dc27
`23e8b74795a643241a30d9b28
`
`(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)
`

`

`caafe28f633188e17-N/A-N/A
`-20140113145348339409
`
`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. 85908604(cid:160)EMENU(Standard Characters, see http://tess2.uspto.gov/ImageAgent/ImageAgentProxy?getImage=85908604)
`has been amended as follows:
`
`EVIDENCE
`Evidence in the nature of a .pdf of the arguments Applicant submits in response to the Office action dated August 6, 2013. has been attached.
`Original PDF file:
`evi_701095314-145348339_._EMENU-Response_to_OA.pdf
`Converted PDF file(s) ( 3 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`
`ADDITIONAL STATEMENTS
`Significance of wording, letter(s), or numeral(s)
`eMenu appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as applied to the goods/services listed
`in the application, or any geographical significance.
`
`SIGNATURE(S)
`Response Signature
`Signature: /avann/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 01/13/2014
`Signatory's Name: Antonio G. Vann
`Signatory's Position: Attorney of Record Va Bar Member
`
`Signatory's Phone Number: 2025281787
`
`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: 85908604
`Internet Transmission Date: Mon Jan 13 15:00:21 EST 2014
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20140113150021973
`048-85908604-5007a95f68e692eb78dc2723e8b
`74795a643241a30d9b28caafe28f633188e17-N/
`A-N/A-20140113145348339409
`
`(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 N0.:
`
`Atware Technologies, Inc.
`85/908604
`
`Filed:
`Trademark Atty:
`Word Mark:
`
`April 18, 2013
`Saima Makhdoom
`eMenu
`
`RESPONSE TO AUGUST 6, 2013 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e-mailed on August 6, 2013. The Applicant
`respectfi.1lly submits the following response. Applicant submits that the above—identif1ed trademark
`application for eMENU is in condition for allowance to publication.
`
`Incorrect Registration Cited
`Examining Attorney Saima Makhdoom cites a potential section 2(d) refiisal against U.S.
`Registration No. 3518624. This registration covers the mark “EMENUS AUTOMOTIVE.” However,
`the registration certificate attached to the Office Action is Registration No. 3648978 for “EMENUS.”
`Furthermore, majority of the language in the Office Action discusses a potential conflict with the mark
`EMENUS, not EMENUS AUTOMOTIVE. Therefore, Applicant is responding to the refusal under
`the assumption that Examining Attorney Makhdoom’s refilsal is based on Registration No. 3648978
`for
`
`Potential Section 2(d) — Likelihood of Confusion
`Applicant submits a preliminary response to the potential section 2(d) refusal; however,
`Applicant reserves all rights to provide a detailed and more descriptive response if Examining
`Attorney Saima Makhdoom raises a Section 2(d) refusal in a subsequent Office Action.
`
`Applicant’s Word Mark
`
`Cited Registered Mark
`
`eMenu
`Class 035
`
`The bringing together, for the benefit of
`others, of a variety of goods and services,
`enabling customers to conveniently view
`and purchase those goods and services
`from an Internet web site particularly
`specializing in the marketing of the sale
`of goods and services of others
`
`EIVIENUS
`Class 042
`
`Providing temporary use of on-line non-
`downloadable software for data base
`management by hotels around the world to
`enable their clients and guests to see online
`menus and photos of meals to order
`
`

`

`Preliminary Response with Reservation of Rights
`The USPTO suggests that it will refuse registration of Applicant’s mark, eMENU, “because of
`a likelihood of confusion with registered mark EMENUS, in U.S. Registration No. 3,648,978. The
`Examining Attorney has indicated that similarity of the marks, similarity of the goods and/or services,
`and similarity of trade channels of the goods and /or services are grounds for the 2(d) refusal of the
`Applicant’s mark.
`
`The Effect of the Mark Does Not Cause Confusion
`
`“[T]he question of confusion is related not to the nature of the mark but to its effect ‘when
`applied to the goods ofthe applicant.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1360,
`177 USPQ 563, 566 (C.C.P.A. 1973).
`
`The Applicant offers services that are different than those offered under the cited registration.
`The Applicant offers a website that allows many different entities to promote their business, whereas
`the cited registration offers database management software for hotels. The services offered under the
`marks are different. The Applicant’s website showcases and promotes the commercial activities of
`many businesses from different industries. The cited registration’s software manages a database to be
`utilized by the hotel industry for the purpose of allowing guests to see food related menus.
`
`The cited registration is a stylized mark. Although the Applicant has a 1(b) intent-to-use filing
`basis, the Applicant intends to use its mark in a manner that is visually distinct and different from the
`stylized elements in the cited registration.
`
`The differences in how the marks [will] appear in connection with the differences in the
`services will give the Applicant’s mark an effect that will eliminate any likelihood of confusion.
`
`The Marks Share Terms But The Commercial Impressions Are Different
`A similar phrase found in two marks is not dispositive of a confusing similarity between the
`marks when the marks give off different commercial impressions. See Kellogg Co. 12. Pack ’em
`Enterprises, Inc., 951 F.2d 330 (Fed. Cir. 1991).
`There can be no dispute that the marks in question give off different commercial impressions.
`The Applicant’s website service is to be used by and offers advantages to many industries. However,
`the cited registration is a software for hotels, narrowly focused on meal management. Therefore, the
`similar phrase found in both marks is not dispositive of a likelihood of confusion analysis because the
`commercial impressions are different.
`
`Third Pay Registration of an “EIVIENU” related Trademark
`The registration of an “emenu” related mark is possible without the likelihood of COI1fi1S10Il
`occurring. A cursory review of the USPTO records reflects U.S. Registration No. 3518624 for
`EMENUS AUTOMOTIVE. This third party use of an “emenu” related mark is an indication that
`consumers are capable of distinguishing between such marks based on minor differences. E, gg: Q
`re Broadway Chicken, Inc., 38 USPQ2d 1559 (TTAB 1996); Plus Products v. Natural Organics. Inc.,
`204 USPQ 773 (TTAB 1979).
`
`No Evidence Of Substantial Likelihood of Confusion
`
`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. Applicant respectfully asserts that no evidence has been presented
`to show that there is a substantial likelihood of confusion. Applicant has successfully argued that the
`commercial impression between he marks is different. Applicant has successfiilly identified another
`“emenu” related registration as a showing that registration of the Applicant’s mark is possible without
`a likelihood of confusion occurring. Applicant has asserted that it will use the “eMENU” mark in a
`manner separate and distinct from the stylized elements of the cited registration. Based on the
`arguments given above, Applicant asserts that it has successfully overcome the 2(d) likelihood of
`confusion.
`
`CONCLUSION
`
`Applicant has fully responded to the August 6, 2013 Office Action. Applicant respectfully
`submits in good faith that all potential 2(d) refilsals, rejections, and/or objections have been overcome
`and that the applied for mark is in condition for publication.
`
`Respectfillly submitted,
`/Antonio G. Vann/
`
`Antonio G. Vann (VSB # 79765)
`
`