PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`Input Field
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`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
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`MARK SECTION
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`MARK
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`LITERAL ELEMENT
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`STANDARD CHARACTERS
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`USPTO-GENERATED IMAGE
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`MARK STATEMENT
`
`EVIDENCE SECTION
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`(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)
`
`DESCRIPTION OF EVIDENCE FILE
`
`NEW ATTORNEY SECTION
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`NAME
`
`FIRM NAME
`
`STREET
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`CITY
`
`STATE
`
`ZIP/POSTAL CODE
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`COUNTRY
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`PHONE
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`EMAIL
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`The table below presents the data as entered.
`
`Entered
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`86302501
`
`LAW OFFICE 115
`
`http://tsdr.uspto.gov/img/86302501/large
`
`MKTXS
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`evi_701095314-20141015111407707318_._MKTXS-Response.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\025\86302501\xml4\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\025\86302501\xml4\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\025\86302501\xml4\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\025\86302501\xml4\ROA0005.JPG
`
`a .pdf document file asserting persuasive arguments in favor of publication of the
`Applicant mark.
`
`Antonio Vann
`
`DunlapWeaver, PLLC
`
`211 Church Street, SE
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`855.226.9661
`
`ip@dunlapweaver.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`CORRESPONDENCE SECTION
`
`SHAH, SANDIP
`575 ROUTE 28 STE 207
`
`(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)
`

`

`ORIGINAL ADDRESS
`
`NEW CORRESPONDENCE SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`RARITAN
`New Jersey (NJ)
`US
`08869-1354
`
`Antonio Vann
`
`DunlapWeaver, PLLC
`
`211 Church Street, SE
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`855.226.9661
`
`ip@dunlapweaver.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`SIGNATURE SECTION
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`RESPONSE SIGNATURE
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`SIGNATORY'S NAME
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`SIGNATORY'S POSITION
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`SIGNATORY'S PHONE NUMBER
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`DATE SIGNED
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`AUTHORIZED SIGNATORY
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`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
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`TEAS STAMP
`
`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`/avann/
`
`Antonio Vann
`
`Attorney of Record, VA Bar Member
`
`8552269661
`
`10/15/2014
`
`YES
`
`/avann/
`
`Antonio Vann
`
`Attorney of Record, VA Bar Member
`
`8552269661
`
`10/15/2014
`
`YES
`
`Wed Oct 15 11:18:04 EDT 2014
`
`USPTO/ROA-XX.XXX.XX.XX-20
`141015111804471885-863025
`01-500fc4957def029257fdd4
`1efd0c1ab7463fda0305210a6
`4778b9aac9a09fb59e17-N/A-
`N/A-20141015111407707318
`
`

`

`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 86302501(cid:160)MKTXS(Standard Characters, see http://tsdr.uspto.gov/img/86302501/large) has been amended as follows:
`
`EVIDENCE
`Evidence in the nature of a .pdf document file asserting persuasive arguments in favor of publication of the Applicant mark. has been attached.
`Original PDF file:
`evi_701095314-20141015111407707318_._MKTXS-Response.pdf
`Converted PDF file(s) ( 4 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`
`ATTORNEY ADDRESS
`Applicant proposes to amend the following:
`Proposed:
`Antonio Vann of DunlapWeaver, PLLC, having an address of
`211 Church Street, SE Leesburg, Virginia 20175
`United States
`ip@dunlapweaver.com
`855.226.9661
`
`CORRESPONDENCE ADDRESS CHANGE
`Applicant proposes to amend the following:
`Current:
`SHAH, SANDIP
`575 ROUTE 28 STE 207
`RARITAN
`New Jersey (NJ)
`US
`08869-1354
`
`Proposed:
`Antonio Vann of DunlapWeaver, PLLC, having an address of
`211 Church Street, SE Leesburg, Virginia 20175
`United States
`ip@dunlapweaver.com
`855.226.9661
`
`SIGNATURE(S)
`Response Signature
`Signature: /avann/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 10/15/2014
`Signatory's Name: Antonio Vann
`Signatory's Position: Attorney of Record, VA Bar Member
`
`Signatory's Phone Number: 8552269661
`
`Response Signature
`Signature: /avann/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 10/15/2014
`Signatory's Name: Antonio Vann
`Signatory's Position: Attorney of Record, VA Bar Member
`
`Signatory's Phone Number: 8552269661
`
`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.
`
`Mailing Address: (cid:160)(cid:160)(cid:160)Antonio Vann
`(cid:160)(cid:160)(cid:160)DunlapWeaver, PLLC
`(cid:160)(cid:160)(cid:160)211 Church Street, SE
`(cid:160)(cid:160)(cid:160)Leesburg, Virginia 20175
`
`Serial Number: 86302501
`Internet Transmission Date: Wed Oct 15 11:18:04 EDT 2014
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20141015111804471
`885-86302501-500fc4957def029257fdd41efd0
`c1ab7463fda0305210a64778b9aac9a09fb59e17
`-N/A-N/A-20141015111407707318
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Serial No.:
`Mark:
`
`863 02501
`MKTXS
`
`Sandip Shah
`Applicant:
`Office Action Date: September 19, 2014
`
`RESPONSE TO SEPTEMBER 19, 2014 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e—mailed on September 19, 2014. The Applicant
`respectfully submits the following response. Applicant submits that the above-identified trademark
`application for MKTXS is in condition for allowance to publication.
`
`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 Curtis
`French raises a Section 2(d) refusal in a subsequent Office Action.
`
`APPLICANT’S WORD MARK
`
`CITED REGISTERED MARK
`
`MKTXS
`
`MKTX
`
`Date of First Use: 12/01/2006
`
`Date of First Use: 03/31/1999
`
`Class 035: Advertising, marketing and promotion
`services in the field of pharmaceuticals and
`healthcare; Business and management consulting
`for healthcare providers and related businesses;
`Market analysis and research services; Market
`research consultation
`
`Class 035 2 Business marketing consulting for
`others, namely, developing and implementing
`marketing and public relations strategies,
`preparing marketing and sales documents in the
`nature of technical documents, namely,
`magazine articles, web site content, product and
`service brochures and information packets,
`preparation of print and online electronic
`advertising, and preparing and delivering audio-
`visual presentations for use at trade shows and
`conferences.
`
`Preliminary Response with Reservation ofRights
`The USPTO suggests that it will refuse registration of Applicant’s mark, MKTXS, “because of a
`likelihood of confusion with registered mark MKTX, in U.S. Registration No. 2372202.” “[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. 1. Lin Pom‘ de Nemours & C0., 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. 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
`weigh against the Applicant’s mark. However, Applicant respectfully asserts that when all factors are
`weighed, the majority weighs against the existence of a likelihood of confusion.
`
`THE MARKS SHARE SIMILAR ELEMENTS
`
`The first factor is the similarity of the conflicting designations, including in their appearance, sound,
`meaning or connotation, and commercial impression. In re E. I. du Pont de Nemours & Co., 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 confilsing similarity between the marks when the marks give off different commercial
`expressions. See Kellogg Co. V. Pa'ck’em Enterprises, Inc., 951 F.2d 330 (Fed. Cir. 1991). When
`Applicant’s mark (MKTXS), and Registrant’s mark (MKTX) are compared, the Applicant concedes
`that they are similar in appearance. However, 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). An evaluation of other
`factors will reveal that the commercial impression of the marks differ.
`
`APPLICANT’S PHARMACEUTICAL AND HEALTHCARE ARE SUFFICIENTLY
`DIFFERENT FROM THE TECHNICAL DRAWINGS AND AUDIO VISUAL
`PRESENTATIONS OFFERED BY REGISTRANT
`
`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 Pom‘ de
`Nemours & C0., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Although both marks fall
`under class 035, they target different industries. Applicant’s mark is narrowly directed towards the
`field of pharmaceuticals and healthcare. The cited registration provides documents in the nature of
`technical drawings and audio visual presentations. The description of services of both marks is
`sufficiently narrow to prevent confusion from occurring. Therefore, this factor weighs against the
`likelihood of confusion.
`
`APPLICANT’S TRADE CHANNELS ARE NARROW AND DISTINCT
`
`The third factor is the similarity or dissimilarity of established, likely-to-continue trade channels. In re
`E. I du Pam‘ de Nemaurs & C0., 476 F.2d at 1361, 177 USPQ at 567. This factor heavily weighs
`against a finding of a likelihood of confusion. It is unclear as to the trade channels the Registrant uses.
`The trade channels are distinct and the parties have been operating in a way that has allowed them to
`co-exist without incident for a period of over seven years. Specifically, Applicant confines his
`activities to the regulated fields of healthcare and pharmaceuticals, which is different from the service
`areas offered under the cited registration. Therefore, this factor weighs against the existence of a
`likelihood of confusion.
`
`APPLICANT’S BUYERS ARE SOPHISTICATED
`
`The fourth factor is the conditions under which and buyers to whom sales are made (i.e. impulse v.
`careful). Id. Consumers interested in Applicant’s services fall within a heavily regulated industry,
`particularly when it applies to marketing, advertising, and promotions. The regulation component
`separates Applicant’s consumers from those of the cited registrant. This factor weighs heavily against
`a likelihood of confusion between these two marks.
`
`

`

`THE PRIOR MARK IS NOT FAMOUS
`
`The fifth factor is the fame of the prior mark (e. g., sales, advertising, length of use, era). Id. There is
`no evidence that the prior mark is famous, this factor weighs against a likelihood of confilsion.
`
`NUMBER AND NATURE OF SIMILAR NIARKS IS A NEUTRAL ISSUE
`The sixth factor is the number and nature of similar marks in use in connection with similar services.
`
`Id. In this case, the USPTO has not made any assertions as to the number and nature of marks used in
`connection with the marketing or promotions of pharmaceuticals, healthcare, technical documents, or
`other details shared among the marks in question. Therefore, Applicant asserts that this factor also
`weighs in his favor.
`
`NO ACTUAL CONFUSION DURING EIGHT YEARS OF CONCURRENT USE
`
`The seventh and eighth factors concern the nature and extent of any actual confusion and the length of
`time during and conditions under which there has been concurrent use without evidence of actual
`COI1filSi011. Id. No evidence exists that any consumer has been confused by the use of these two marks
`during the eight years they have enjoyed concurrent use. The fact that there has been no incident in
`eight years is a substantial factor to support that it is unlikely that COIIIIISIOII will occur.
`
`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 Pom‘ de Nemours & C0, 476 F.2d at 1361, 177 USPQ at 567. Neither of
`the marks are a part of a family of marks. Consequently, this factor weighs against a likelihood of
`confusion, or is at least neutral.
`
`NO MARKET INTERFACE IN EIGHT YEARS
`
`The tenth factor is the market interface between Applicant and the owner of a valid, prior mark. Id. In
`this case, there has been no interface between the Applicant and the Registrant during the eight years
`the marks have been used concurrently. Therefore, this factor also weighs in the Applicant’s favor.
`
`APPLICANT HAS A RIGHT TO EXCLUDE OTHERS
`
`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 can claim rights to exclusive use of its mark because (1) Applicant
`seeks to register a different trademark and (2) Applicant’s mark has been in use for eight years.
`Therefore, this factor also weighs in favor of the Applicant.
`
`EXTENT FOR POTENTIAL CONFUSION IS DE MINIMIS
`
`Another factor courts consider is the extent of potential confusion (i. e. , Whether de minimis or
`substantial). Id. As mentioned, there is no evidence of any actual confusion, the marks have been
`used concurrently for eight years, and the Applicant’s services are narrowly focused on a regulated
`industry. Taking these facts into account, the potential for confusion is de minimis and weighs heavily
`against a likelihood of confusion.
`
`OTHER FACTS NOT NEEDED
`
`In analyzing the last factor, courts look to whether there are any other established facts
`probative of the effect of use. In this case, no additional facts are needed. The parties’ marks are not
`identical, the Applicant’s services are narrow enough to avoid confusion, the channels of trade are not
`
`

`

`the same, there is no evidence of actual confusion, and the marks have been used concurrently for
`eight years without incident. Our position on the issue of confusion is very compelling and no
`additional facts are needed to make the point clear that a likelihood of confiision does not exist.
`
`PRIOR DECISIONS FAVOR THE APPLICANT
`
`Marks that are substantially similar have been found worthy of registration. Courts across the
`country have long held that the addition of different terms to a common element appreciably reduces
`the likelihood of COI1fi.1S10I1 between two marks. See US Trust v. US. 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 confiising 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 C0,, 833 F. 2d 1560, 1564, 4 U.S.P.Q. 2d 1793, 1796 (Fed. Cir.
`1987) (SWEATS not confilsing 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 confilsingly similar to APPLE RASIN CRISP, both for breakfast cereal); Consol. Cigar v.
`RJR Tobacco C0,, 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).
`
`When determining whether a subsequent mark creates a likelihood of confilsion with a mark
`covered by a prior registration, “[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 v. Citibank,
`633 F. Supp. 234, 229 (D. Neb. 1986). After weighing the above factors, it is clear that the evidence
`fails to demonstrate that there is a “substantial likelihood” that the public will be confused.
`
`CONCLUSION
`
`Applicant has f11lly responded to the September 19, 2014 Office Action. Majority of the ‘DuPont’
`factors weigh in the Applicant’s favor. Furthermore, for at least the above reasons, Applicant asserts
`that Applicant’s mark, MKTXS, is sufficiently distinct from MKTX that it will not result in consumer
`confusion. 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,
`/Antonio G. Vannl
`
`Antonio G. Vann (VSB # 79765)
`Attorney of Record for the Applicant
`
`