Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1957 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 07/31/2017)
`
`Response to Office Action
`
`The table below presents the data as entered.
`
`Input Field
`
`Entered
`
`SERIAL NUMBER
`
`86616905
`
`LAW OFFICE ASSIGNED
`
`LAW OFFICE 110
`
`MARK SECTION
`
`MARK
`
`http://tmng-al.uspto.gov/resting2/api/img/86616905/large
`
`LITERAL ELEMENT
`
`RADIANT TECHNICAL SOLUTIONS
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`YES
`
`YES
`
`MARK STATEMENT
`
`The mark consists of standard characters, without claim to any particular font style, size or color.
`
`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
`
`evi_701095979-20160217135042918437_._RADIANT_TECHNICAL_SOLUTIONS_OAR_FINAL.pdf
`
`(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)(19 pages)
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0008.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0009.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0010.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0011.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0012.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0013.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0014.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0015.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0016.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0017.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0018.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0019.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\866\169\86616905\xml4\ROA0020.JPG
`
`(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)
`(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)
`(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)
`(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)
`(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)
`(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)
`

`

`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`NEW ATTORNEY SECTION
`
`No claim is made to the exclusive right to use TECHNICAL SOLUTIONS apart from the mark as
`shown.
`
`NAME
`
`FIRM NAME
`
`Thomas Dunlap
`
`Dunlap Bennett & Ludwig PLLC
`
`OTHER APPOINTED ATTORNEY
`
`all Dunlap Bennett & Ludwig associates
`
`INTERNAL ADDRESS
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`211 Church Street, S.E.
`
`211 Church Street, S.E.
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`703.777.7319
`
`ip@dbllawyers.com
`
`AUTHORIZED EMAIL
`COMMUNICATION
`
`Yes
`
`CORRESPONDENCE SECTION
`
`ORIGINAL ADDRESS
`
`RADIANT TECHNICAL SOLUTIONS LLC
`554 N Frederick Ave # 227
`Gaithersburg
`Maryland
`US
`20877-2504
`
`NEW CORRESPONDENCE SECTION
`
`NAME
`
`FIRM NAME
`
`INTERNAL ADDRESS
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`AUTHORIZED EMAIL
`COMMUNICATION
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`Thomas Dunlap
`
`Dunlap Bennett & Ludwig PLLC
`
`211 Church Street, S.E.
`
`211 Church Street, S.E.
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`703.777.7319
`
`ip@dbllawyers.com
`
`Yes
`
`/Mary Beaghler Penn/
`
`Mary Beaghler Penn
`
`SIGNATORY'S POSITION
`
`Associate Attorney, Dunlap Bennett & Ludwig PLLC, Maryland and DC bar member
`
`

`

`SIGNATORY'S PHONE NUMBER
`
`703.777.7319
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`02/17/2016
`
`YES
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`Wed Feb 17 15:26:02 EST 2016
`
`TEAS STAMP
`
`USPTO/ROA-XX.XXX.XX.XX-20
`160217152602575171-866169
`05-55001b8e7aa7362c664e3f
`63333b5af0d659dbe01eede61
`207e52799e9e8128f1-N/A-N/
`A-20160217135042918437
`
`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1957 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 07/31/2017)
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 86616905(cid:160)RADIANT TECHNICAL SOLUTIONS(Standard Characters, see http://tmng-
`al.uspto.gov/resting2/api/img/86616905/large) has been amended as follows:
`
`EVIDENCE
`
`Original PDF file:
`evi_701095979-20160217135042918437_._RADIANT_TECHNICAL_SOLUTIONS_OAR_FINAL.pdf
`Converted PDF file(s) ( 19 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`Evidence-11
`Evidence-12
`Evidence-13
`Evidence-14
`Evidence-15
`Evidence-16
`Evidence-17
`Evidence-18
`Evidence-19
`
`ATTORNEY ADDRESS
`Applicant proposes to amend the following:
`Proposed:
`Thomas Dunlap of Dunlap Bennett & Ludwig PLLC, having an address of
`211 Church Street, S.E. 211 Church Street, S.E. Leesburg, Virginia 20175
`United States
`
`

`

`ip@dbllawyers.com
`703.777.7319
`The Other Appointed Attorney(s): all Dunlap Bennett & Ludwig associates.
`
`CORRESPONDENCE ADDRESS CHANGE
`Applicant proposes to amend the following:
`Current:
`RADIANT TECHNICAL SOLUTIONS LLC
`554 N Frederick Ave # 227
`Gaithersburg
`Maryland
`US
`20877-2504
`
`Proposed:
`Thomas Dunlap of Dunlap Bennett & Ludwig PLLC, having an address of
`211 Church Street, S.E. 211 Church Street, S.E. Leesburg, Virginia 20175
`United States
`ip@dbllawyers.com
`703.777.7319
`
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use TECHNICAL SOLUTIONS apart from the mark as shown.
`
`SIGNATURE(S)
`Response Signature
`Signature: /Mary Beaghler Penn/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 02/17/2016
`Signatory's Name: Mary Beaghler Penn
`Signatory's Position: Associate Attorney, Dunlap Bennett & Ludwig PLLC, Maryland and DC bar member
`
`Signatory's Phone Number: 703.777.7319
`
`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 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. attorney or a Canadian attorney/agent
`not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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)Thomas Dunlap
`(cid:160)(cid:160)(cid:160)Dunlap Bennett & Ludwig PLLC
`(cid:160)(cid:160)(cid:160)211 Church Street, S.E.
`(cid:160)(cid:160)(cid:160)211 Church Street, S.E.
`(cid:160)(cid:160)(cid:160)Leesburg, Virginia 20175
`
`Serial Number: 86616905
`Internet Transmission Date: Wed Feb 17 15:26:02 EST 2016
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20160217152602575
`171-86616905-55001b8e7aa7362c664e3f63333
`b5af0d659dbe01eede61207e52799e9e8128f1-N
`/A-N/A-20160217135042918437
`
`(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.:
`
`Radiant Technical Solutions LLC
`86616905
`
`Filed:
`Trademark Atty:
`Trademark:
`
`May 01, 2015
`Dezmona J. Mizelle-Howard
`RADIANT TECHNICAL SOLUTIONS
`
`RESPONSE TO JULY 29, 2015 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e-mailed on August 20, 2015. The Applicant
`
`respectfully submits the following response. Applicant submits that the above—identified trademark
`
`application for RADIANT TECHNICAL SOLUTIONS is in condition for allowance to publication.
`
`DISCLAIMER
`
`The Applicant submits the following disclaimer: No claim is made to the exclusive right to use
`
`“TECHNICAL SOLUTIONS” apart from the mark as shown.
`
`POTENTIAL SECTION 2(d) REFUSAL — LIKELIHOOD OF CONFUSION FOR PRIOR
`
`PENDING NIARK
`
`Applicant submits a preliminary response to the potential section 2(d) refusal; however, Applicant
`
`reserves all rights to provide a detailed and descriptive response if Examining Attorney Dezmona J.
`
`Mizelle-Howard raises a Section 2(d) refiisal in a subsequent Office Action.
`
`APPLICANT’S MARK
`
`CITED PRIOR PENDING MARK
`
`RADIANT TECHINICAL SOLUTIONS
`
`RADIANT
`
`Serial No. 86616905
`
`Serial. No. 86458695
`
`

`

`namely,
`services,
`Reseller
`03 5:
`Class
`distributorship services in the field of computer
`hardware
`
`Class 042:
`services
`
`Information technology consulting
`
`Class 009: Computer software and downloadable
`software for characterizing and mapping both the
`spatial and angular distribution of light radiating
`from light sources; photometric tool, namely, a
`charge coupled device and integrated software to
`measure and analyze light sources; computer
`software for the design and analysis of optical
`systems;
`imaging photometers and colorimeters
`used to measure the properties of light and
`materials,
`namely,
`radiance,
`luminance,
`chromacity,
`reflectance,
`transmittance,
`scatter,
`bidirectional
`reflectance distribution filnction
`
`function
`transmittance
`bidirectional
`(BRDF),
`color,
`contrast,
`color
`temperature,
`(BRTF),
`spectral power distribution and illuminance;
`optical devices
`for measuring and displaying
`spatial and angular distribution of light radiating
`from light
`sources;
`computer
`software
`for
`inspection, testing, correcting, and calibrating flat
`panel
`displays,
`LED screens,
`and
`back-
`illuminated keyboards and keypads; computer
`software for color calibration of displays, large
`video screens and scoreboards; photometric tool,
`namely, a camera system comprising of lenses,
`imaging sensors,
`and digitizers;
`automation
`hardware,
`namely,
`automated mechanical
`positioners and integrated software—based controls
`to measure and analyze light sources; machine
`featuring integrated computer software, namely, a
`camera system comprising of lenses,
`imaging
`sensors,
`digitizers
`and
`computer
`operating
`software;
`automation
`hardware,
`namely
`automated mechanical positioners and integrated
`software—based controls for characterizing and
`mapping both the spatial and angular distribution
`of light radiating from light sources
`
`Class 042: Measurement evaluations in the field
`
`of photometrics, namely, providing measurement
`of radiance,
`luminance, chromacity, reflectance,
`transmittance,
`scatter, bi-directional
`reflectance
`distribution
`function
`(BRDF),
`bi-directional
`transmittance function (BRTF), color, contrast,
`color temperature, spectral power distribution and
`illuminance; design of optical and photometric
`systems; technical consulting services in the fields
`of light and color measurement and designing and
`
`

`

`calibrating optical and photometrics systems; on-
`site testing and color calibration of electronic and
`digital
`displays,
`large
`video
`screens
`and
`scoreboards
`
`Factors used to determine likelihood of confusion in trademark registration case include: similarity or
`
`dissimilarity of marks in their entireties as to appearance, sound, connotation, and commercial
`
`impression; similarity or dissimilarity and nature of the goods described in application or registration
`
`or in connection with which a prior mark is in use; conditions under which and buyers to whom sales
`
`are made; number and nature of similar marks in use on similar goods; any other established fact
`
`probative of effect of use. Lanham Trade—Mark Act, § 2(d), 15 U.S.C.A. § 1052(d). Not all of the
`
`factors used to determine likelihood of confusion in a trademark registration case may be relevant or
`
`of equal Weight
`
`in a given case, and any one of the factors may control a particular case. Id.
`
`Likelihood of confusion under the Lanham Act, 15 U.S.C. § 1052(d), is a legal determination based
`
`upon factual underpinnings. On—Line Careline,
`
`Inc.
`
`1/. Am. Online,
`
`Inc., 229 F.3d 1080, 1084
`
`(Fed.Cir.2000).
`
`AN EXAMINATION OF THE MARKS AS TO APPEARANCE,
`CONNOTATION DETERMINE THEY ARE NOT SIMILAR
`
`SOUND AND
`
`Under In re E. I du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A.
`
`1973), the first factor requires examination of "the similarity or dissimilarity of the marks in their
`
`entireties as to appearance, sound, connotation [,] and commercial impression." When considering the
`
`similarity of the marks, "[a]ll relevant facts pertaining to the appearance and connotation must be
`
`considered." Recot, Inc. V. MC. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1897 (Fed. Cir.
`
`2000).
`
`Appearance, Sound & Connotation
`
`

`

`In the instant case, dissection of the mark RADIANT TECHNICAL SOLUTIONS by the Examining
`
`Attorney would be improper as it would Violate the anti-dissection rule, which states that a likelihood
`
`of confusion “cannot be predicated on dissection of a mark, that is, only part of a mark.” In re Nat’!
`
`Data Corp, 753 F.3d 1056, 1058 (Fed. Cir. 1985). The Examining Attorney would have to discard
`
`the dissimilar portions of Applicant’s mark from the dissimilar portions with the cited prior pending
`
`mark. The Applicant has applied for RADIANT TECHNICAL SOLUTIONS, Versus the cited mark
`
`RADIANT.
`
`The Examining Attorney would have to erroneously conclude that
`
`the terms
`
`“TECHNICAL SOLUTIONS” will not be impressed upon the minds of the consumer. While
`
`“TECHNICAL SOLUTIONS” is disclaimed it must still be considered when Viewing the mark as a
`
`whole. The difference in terms creates both a different appearance and sound. Further, the cited prior
`
`pending mark often appears with the tagline “Vision Systems” (See Exhibit A). This difference in
`
`appearance distinguishes Applicant’s mark from the cited prior pending mark. Additionally, the cited
`
`prior pending mark seems to be used in connection with a logo of a stylized eyeball whereas the
`
`Applicant’s mark will not utilize such design. This logo immediately creates the impression and
`
`connotation that the products/services are related to optics or imaging products. Since the Applicant’s
`
`mark does not contain this same imagery, a different connotation is created. Also, the emphasis in the
`
`Applicant’s mark is on the phrase “TECHNICAL SOLUTIONS”,
`
`terms which are Visible to
`
`consumers and provide a Very different connotation and appearance from the stand-alone term
`
`“RADIANT”. Accordingly, these distinguishing elements create a different sound and appearance
`
`thus minimizing the potential for likelihood of confusion amongst consumers.
`
`WHEN VIEWED IN ITS ENTIRETY APPLICANT’S MARK HAS A DISTINCT
`COMMERCIAL IMPRESSION
`
`Courts have held that the addition of different terms to common elements appreciably reduces the
`
`

`

`likelihood of confusion between two marks, even in cases where the goods are highly similar. See
`
`USTrust v. US. States Trust Ca, 210 F. Supp 2d 9 27-28 (D. Mass. 2002), (holding that UNITED
`
`STATES TRUST COMPANY not confusingly similar to UNITED STATES TRUST COMPANY OF
`
`BOSTON, both for financial services).
`
`Additionally, in In re Electrolyte Labs, 929 F.2d 645, U.S.P.Q. 2d 1239 (Fed. Cir. 1990), the Federal
`
`Circuit reversed the Trademark Trial and Appeal Board and held that the marks “K+ and Design” and
`
`“K+ EFF” for “competitive dietary supplements” were not likely to be confused even if consumers
`
`would say “K-Plus” and “K-Plus EFF” when calling for products.” Id. At [picite]. The Court held that
`
`the
`
`in the Registrant’s mark was a significant difference and ruled that “[n]o element of a mark
`
`is ignored simply because it is less dominant, or would not have trademark significance if used alone.”
`
`Id. Furthermore, 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. v.
`
`Pack’em Enterprises, Inc., 951 F.2d 330 (Fed. Cir. 1991).
`
`Moreover, in In re Hearst Corp, 982 F.2d 493 (Fed.Cir. 1992), the court reversed a Trademark Trial
`
`and Appeal Board decision that refused registration of VARGA GIRL because there was a likelihood
`
`of confusion with the registered mark VARGAS and stated the following:
`
`impression of
`The appearance sound and commercial
`VARGA GIRL derive significant contribution from the
`component “girl.” By stressing the portion “varga” and
`diminishing the portion “girl,” the Board inappropriately
`changed the mark. Although the weight is given to the
`respective words is not entirely free of subjectivity, we
`believe that
`the Board erred in its diminution of the
`
`contribution word “girl.” When GIRL is given fair weight,
`along with VARGA, confusion with VARGAS becomes
`less likely.
`
`

`

`Id. at 494. The registered mark and the applicant’s mark were both for calendars; however, the court
`
`held that VARGA GIRL and VARGAS are sufficiently different in sound, appearance, connotation,
`
`and commercial impression to negate likelihood of confusion. Id.
`
`In the present case, the marks give off different commercial impressions. The cited prior pending mark
`
`is specifically for highly specialized computer software, optics hardware and related scientific
`
`measurement services, as depicted by its website (See Exhibit B). The term “RADIANT” typically
`
`refers to light (See Exhibit C);
`
`thus, use of the term “RADIANT” creates a distinct commercial
`
`impression having to do with light or heat. Conversely, Applicant
`
`intends to use “RADIANT
`
`TECHNICAL SOLUTIONS” for reseller services for computer hardware and for information
`
`technology consulting services which have nothing to do with the goods or services provided by the
`
`applicant for RADIANT; thus, it does not create a commercial impression that would connect the
`
`mark to optics hardware and related scientific measurement services. Comparable to Kellogg,
`
`the
`
`similar term “RADIANT”, cannot be dispositive since the marks give off different commercial
`
`impressions. As a result of these distinguishing commercial impressions due to the different elements
`
`present, there is no likelihood of conf11sion to exist among consumers.
`
`APPLICANT DOES NOT OFFER THE SAME GOODS OR SERVICES
`
`The goods and services of the Applicant and the prior pending mark cited are vastly different. The
`
`Applicant
`
`intends to offer information technology consulting services and reseller services for
`
`computer hardware through the mark “RADIANT TECHNICAL SOLUTIONS” whereas the applicant
`
`in the prior pending mark offers highly specialized, technical devices and services for optics and
`
`related scientific measurements (See Exhibit D). The average consumer would not confuse IT
`
`consulting services and reseller services for computer hardware with the highly specialized physics
`
`

`

`goods and services.
`
`Further, the distinct goods and services provided by Applicant and the cited prior pending mark attract
`
`a different consumer base and class of customer. Applicant targets the general consumer and
`
`businesses in the market for IT advice and computer hardware whereas the applicant in the cited prior
`
`pending mark offers its services to manufacturers of electronics and other scientific apparatuses.
`
`Thus, consumers that will utilize the services of Applicant are very unlikely to be in need of highly
`
`scientific services and goods useful mostly for manufactures.
`
`It is evident, based on the descriptions
`
`of the Applicant’s mark and the cited prior pending mark, that they do not offer goods or services that
`
`related to one another or are similar in any way. As a result of the different goods and services being
`
`offered, there is no likelihood of confusion to exist.
`
`CROWDED FIELD DOCTRINE APPLIES
`
`When similar marks permeate the marketplace, the strength of the mark decreases. In Eclipse Assocs.
`
`Ltd. v. Dara Gen. Corp, 894 F.2d 1114 (9th Cir.1990), the court stated “in a crowded field of similar
`
`marks, each member of the crowd is relatively weak in its ability to prevent use by others in the
`
`crowd.” Third- party registrations may be relevant to show that the mark or a portion of the mark is
`
`descriptive, suggestive, or frequently used so that consumers will look to other elements to distinguish
`
`the source of the goods or services. See Plus Products V. S1‘ar—Kist Foods, Inc, 220 U.S.P.Q. 541, 544,
`
`1983 WL 51884 (TTAB 1983). This is sometimes referred to as the crowded field doctrine. See In re
`
`Unidos Financial Services, Inc. Serial No. 77126814 [not precedential] . An applicant may be able to
`
`demonstrate that common use of a term by third parties in the same industry could support a claim that
`
`the mark is conceptually weak. See Moose Creek, Inc. v. Abercrombie & Fitch C0., 331 F.Supp.2d
`
`1214, 73 U.S.P.Q.2d 1287 (C.D. Cal. 2004), ajfd, 114 Fed. Appx. 921 (9th Cir. 2004).
`
`

`

`Existing Registrations Incorporating "R/IDIANT”
`
`There are a number of registered and pending marks incorporating “RADIANT” for technical goods
`
`and services. Examples of registered and pending registration marks include:
`
`Registration number: 4884217 RADIANT HUMAN AURA PHOTOGRAPHY for “Photography
`services”
`
`Registration number: 4588124 RADIANT for “Voltage digital thermostats.”
`
`Registration number: 4271037 RADIANT ZEMAX for “Computer software and downloadable
`software for characterizing and mapping both the spatial and angular distribution of light radiating
`from light sources; photometric tool, namely, a charge coupled device and integrated software to
`measure and analyze light sources; computer software for the design and analysis of optical systems;
`imaging photometers and colorimeters used to measure the properties of light and materials, namely,
`radiance, luminance, chromacity, reflectance, transmittance, scatter, bidirectional reflectance
`distribution function (BRDF), bidirectional transmittance function (BRTF), color, contrast, color
`temperature, spectral power distribution and illuminance; optical devices for measuring and displaying
`spatial and angular distribution of light radiating from light sources; computer software for inspection,
`testing, correcting, and calibrating flat panel displays, LED screens, and back-illuminated keyboards
`and keypads; computer software for color calibration of displays, large video screens and scoreboards;
`computer programs for calculating lens curvature in the fields of lens and optical component design,
`including lens and optical component design for cameras, telescopes, microscopes and scientific
`instruments; computer programs for calculating and designing optimal illumination and lighting
`schemes for residential and commercial lighting applications; engineering software for constructing
`and designing digital and electronic displays and their components, including digital projectors, LCD
`displays and light pipes”; and “Technical support services, namely, troubleshooting of computer
`software problems; computer software development and design services; measurement evaluations in
`the field of photometrics, namely, providing measurement of radiance, luminance, chromacity,
`reflectance, transmittance, scatter, bi-directional reflectance distribution function (BRDF), bi-
`directional transmittance function (BRTF), color, contrast, color temperature, spectral power
`distribution and illuminance; design of optical and photometric systems; technical consulting services
`in the fields of optical systems and photometrics; on—site testing and color calibration of electronic and
`digital displays, large video screens and scoreboards.”
`
`Registration Number: 4203726 RADIANT RICHES for “Gaming machines, namely, devices which
`accept a Wager and gaming software that generates or displays outcomes for gaming machines.”
`
`Registration Number: 4773205 RADIANT MEDIA for “hand-held computers; personal digital
`assistants; global positioning system (GPS) devices; electronic organizers and electronic notepads;
`personal computers; computer programs for accessing, browsing and searching online databases”
`
`Registration Number: 4651325 RADIANTIS for “Optical and photonic instruments, namely, lasers,
`optical frequency conversion systems comprised primarily of optical parametric generators, optical
`
`

`

`parametric oscillators, optical parametric amplifiers, optical frequency harmonic generators, sum
`frequency generators, difference frequency generators, optical rectificators, frequency downconvertors
`and four-wave mixers; optical and photonic instruments, namely, beam diagnosis equipment in the
`nature of wavemeters, spectrometers, beam quality meters, beam spatial profilers, pulse amplitude and
`phase meters including SPIDERS (Spectral Phase Interferometers for Direct Electric-field
`Reconstruction) and FROGs (Frequency Resolved Optical Gaters) Spectral Interferometers (SI) and
`Temporal Analysers by Dispersing a Pair of Light Electric—fields (TADPOLE), peak—detect pulse
`meters, interferometers, pulse width meters including intensity and interferometric autocorreators and
`power meters; optical and photonic instruments, namely, beam manipulation modules and components
`for optical microscopes.”
`
`Registration Number: 4330790 RADIANT for “Software to locate, monitor and/or track assets,
`people, and pets; software to assist in the management of large scale evacuations, namely, corporate
`building evacuations, campus evacuations, and oil refinery mustering; software to assist in emergency
`shelter and base camp management; radio frequency identification tags and tag readers; radio
`frequency identification credentials, namely, cards, tags, bracelets, and readers for radio frequency
`identification credentials. ”
`
`Registration Number: 4776659 JORANI SOLUTIONS (“Jorani” translating to “radiant jewel”) for
`“Consulting in the field of IT project management; IT consulting services”
`
`Registration Number: 4386455 RADIANT VISION for “Software to locate, monitor and track
`students and school assets; radio frequency identification tags and tag readers for radio frequency
`identification credentials.”
`
`Registration Number: 4330774 RADIANT RFID for “Software to locate, monitor and/or track assets,
`people, and pets; software to assist in the management of large scale evacuations, namely, corporate
`building evacuations, campus evacuations, and oil refinery mustering; software to assist in emergency
`shelter and base camp management; radio frequency identification tags and tag readers; radio
`frequency identification credentials, namely, cards, tags, bracelets, and readers for radio frequency
`identification credentials. ”
`
`Registration Number: 4333880 RADIANTRFID WE KNOW WHERE for “Software to locate,
`monitor and/or track assets, people, and pets; software to assist in the management of large scale
`evacuations, namely, corporate building evacuations, campus evacuations, and oil refinery mustering;
`software to assist in emergency shelter and base camp management; radio frequency identification tags
`and tag readers; radio frequency identification credentials, namely, cards, tags, bracelets, and readers
`for radio frequency identification credentials. ”
`
`Registration Number: 4131478 RL RADIANT—LITE for “Lighting ballasts.”
`
`Registration Number: 3705519 RADIANT COLOR for “Apparatus for recording, processing and
`reproducing images, including digital photo frames; computer software for organizing and viewing
`digital images and photographs, image enhancement software.”
`
`Registration Number: 2762874 RADIANT MERCURY for “Computer software for sanitizing,
`formatting and distributing sensitive information in accordance with configurable control criteria for
`
`

`

`security purposes.”
`
`Registration Number: 2757468 RADIANT MERCURY for “Computer software for sanitizing,
`formatting and distributing sensitive information in accordance with configurable control criteria for
`security purposes.”
`
`Registration Number: 3678992 RADIANT GRID for “Recorded computer programs and
`downloadable software for workflow management, multiplatform transcoding, storage management,
`metadata indexing and file-based ingestion; Recorded computer programs and downloadable software
`for a scalable, extensible, future—proof solution that manages the media transformation lifecycle for
`companies such as advertising agencies, broadcasters, content providers, cable and telecommunication
`providers and digital cinema providers.”
`
`Registration Number: 3751941 RADIANT8 for “Electrical resistance heating wires and electrical
`controllers therefor.”
`
`Registration Number: 3628337 RADIANT ROCKS for “Computer software and firmware for games
`of chance on any computerized platform, including dedicated gaming consoles, Video based slot
`machines, reel based slot machines, and video lottery terminals; Gaming devices, namely, gaming
`machines, slot machines, bingo machines, with or without video output.”
`
`Registration Number: 2293886 RADIANT SYSTEMS for “computer programs used in managing
`retail establishments in the petroleum/convenience store industry, featuring touch screen point-of-sale,
`inventory management, fuel pump control, credit card authorization, back office and home office
`reporting; computer programs used in the quick—service restaurant and entertainment industries
`featuring touch screen point-of-sale, customer-activated multimedia interface and back office
`reporting; computer hardware and firmware for executing multimedia applications at multiple
`workstations in the quick—service restaurant, entertainment and convenience store industries.”
`
`In the present case, the Examining Attorney has indicated Applicant’s mark may not be capable of
`
`registration due to a potential likelihood of confusion; however, there are registrations that predate the
`
`cited prior pending mark as well as marks that registered afterwards for similarly related as well as
`
`unrelated goods.
`
`Furthermore, under the crowded field doctrine, Applicant asserts that consumers
`
`will look to other elements to distinguish the Applicant’s goods from that in the cited application.
`
`Specifically, consumers will look to the design element and additional term as distinguishing features
`
`of the Applicant’s mark.
`
`THE CONSUNIERS INVOLVED WILL MAKE CAREFUL DECISIONS SUFFICIENT TO
`
`

`

`AVOID CONFUSION
`
`The next factor is the conditions under which and buyers to whom sales are made (i.e. impulse V.
`
`careful). Id. The consumers of RADIANT TECHNICAL SOLUTIONS will be able to distinguish
`
`among the good and services offered by cited prior pending mark because the prior pending mark is
`
`for highly technical goods and services for electronics manufacturers. The cited prior pending
`
`applicant is known for this specialized service through its global presence. When a consumer is
`
`looking for light display solutions, this is not an impulse purchase. As a result of the cost associated
`
`with prior applicant’s goods the consumer will exercise careful consideration and decision making
`
`skills (See Exhibit E). Similarly those looking for IT consulting services will not confuse the mark as
`
`being associated with the prior pending application who is known for making sophisticated optics
`
`products. These careful choices further support Applicant’s position that there is no likelihood of
`
`confusion present.
`
`Additionally, consumers often look to the maker and/or company of a product to ascertain whether the
`
`associated brand is affiliated with a particular company. Often times the company that creates a
`
`particular product displays their name along with the associated product on the packaging of the goods
`
`offered. Similarly, applicant for the prior pending cited mark displays the name of the product line