CES, Serial No. 77/369430, Response to Office Action in Class 9

A. Likelihood of Confusion Refusal ‘
The Examiner has initially refused registration of Applicant’s CES mark based upon a

perceived likelihood of confusion with Reg. No. 2812031 for CBS INTERNATIONAL for

“software for managing electric distribution networks for electric power distribution utilities.”

Applicant respectfully disagrees with the Examiner’s conclusion and requests withdrawal of the

§2(d) refusal for the reasons set forth below.

I. Introduction

When evaluating a likelihood of confusion, the marks involved must be considered in

their entireties. In re Hearst Corp, 25 U.S.P.Q. 2d 1238, 1239 (Fed. Cir. 1992). “Marks tend to

be perceived in their entireties, and all components thereof must be given appropriate weight.”

In this instance, the Applicant’s highly specialized goods, different target markets, sophisticated

consumers, and the co—existence of several CES registrations, demonstrates that confusion is not

likely.

II. Completely Different Goods and Target Markets Render Confusion Unlikely

Applicant respectfully puts forth that confusion is not likely with the Registrant’s mark

because Applicant’s goods and target markets differ completely from the goods offered in the

cited registration. Applicant’s description of goods in its application explains in detail the

software offered under the CES mark. To summarize in laymen’s terms, Applicant’s software

essentially offers customer management of call centers, ?nancial centers, and

purchasing/delivery departments. For example, if a customer calls Sprint, the CES software

determines if the call is from an individual or a business, where the call should be routed (i.e.

within the U.S. or internationally), how frequently the customer calls, billing history, the
importance of the call, etc, in order for Sprint, the Applicant’s client, to most ef?ciently manage

the call. Therefore, the CES software manages the relationship and the experience between the

customer and Sprint.

To offer such personalized software to ensure an optimal experience for tens of thousands

of customers of the Applicant’s clients, the CES software by its very nature must be highly

specialized and sophisticated and is created by a collaboration between the Applicant and its

clients. Applicant’s CES software is sold only by direct sales teams, customized speci?cally to

meet each clients needs, and is a signi?cant capital expenditure for a company (see Exhibit 1 for

more information).

In contrast, Registrant’s goods are “software for managing electric distribution networks

for electric power distribution utilities.” A further investigation reveals that the mark is used in

connection with software designed for electrical outage management (See Exhibit 2). A Google

search did not reveal any current information only two archive articles from 2003 (See Exhibit

😉 and a phone number which is not in service at the present time (see Exhibit 3) which leads

Applicant to believe that this company is no longer in business. Clearly, Applicant’s highly

specialized customer relationship management software differs vastly from Registrant’s electric

power outage management software.

As demonstrated in the preceding paragraphs, given the total circumstances of

Applicant’s and Registrant’s marks, consumers are not likely to believe that the parties are

related, associated, or somehow af?liated with each other merely because their marks share

similar features and are both used in connection with software. Such an argument is tantamount

to the argument rejected by the TTAB that all software must be considered related goods simply

because it is software. See e.g. Viacom International, Inc. v. Kermit Komm, et. al., 46 U.S.P.Q.

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2d 1233 (TTAB 1998) (stating that computer accessories and computer toys and games are not

related to computer software for enabling typing with a mouse by the mere fact that they are all

used with computers); See also Electronic Data Systems Corp, 23 U.S.P.Q. 2d at 1463 (TTAB

1992); Information Resources Inc. V. X*Press Information Services, 6 U.S.P.Q. 2d 1749, 1757

(TTAB 1987).

Applicant notes that the Examiner is particularly concerned that both the Applicant’s

goods and Registrant’s goods are used in the utility industry and could overlap in the

marketplace. Applicant respectfully disagrees. For example, if Con Edison used both software

programs, the direct collaboration and the amount of time necessary to develop Applicant’s CES

software to Con Edison’s speci?cations coupled with the signi?cant capital expenditure, and the

fact that the software has nothing to do with management of electricity would eliminate any

chance of confusion as to the source of the software. Not only would confusion be unlikely, it

seems nearly impossible.

As discussed above, even if the Examiner determines that the same consumers may be

confronted with the marks, confusion still should not be found likely given the vast difference in

the respective goods. To support its position, Applicant directs the Examining Attorney to the

TTAB decision in Local Trademarks Inc. vs. Handy Boys Inc., 16 U.S.P.Q. 2d 1 156, 1158

(TTAB 1990), where the owner of the mark LITTLE PLUMBER for advertising services in the

plumbing ?eld challenged the registration for LITTLE PLUMBER for liquid drain openers. In

that case, the TTAB found that, despite the similarity of the two marks, no likelihood of

confusion existed between the marks in light of the disparity between the channels of trade and

class of consumers. Speci?cally, the TTAB stated:

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Thus, even though opposer’s services and applicant’s products are or can
be marketed to the same class of consumers, namely, plumbing
contractor, these services and goods are so different that confusion is
not likely even if they are marketed under the same mark.

Local Trademarks, 16 U.S.P.Q. 2d at 1158. See also Scott v. Mego_Int’l Inc., 213

U.S.P.Q. 824 (D. Minn. 1981) (MICRONAUTS for toys design to appeal to children

ages 6-11 not likely to be confused with MICRO NAUTS for miniature war game

hobby pieces designed to appeal to sophisticated teens and adults).

Applicant notes that the TTAB in the Local Trademarks case found no

likelihood of confusion between identical marks because of the differences in the

respective goods and services, despite similar target markets. In the present case, there

are signi?cant differences in the respective goods, target markets, and channels of trade

and, Applicant respectfully puts forth that, under the holding in Local Trademarks,

Applicant’s mark and the cited mark should not be considered confusingly similar.

III. Sophistication of Consumers

Applicant’s and Registrant’s goods are designed for use by sophisticated

consumers which negates a likelihood of confusion. According to the TTAB, the

sophistication of the target purchaser often can be a dispositive factor when determining

whether there is a likelihood of confusion. In Electronic Design & Sales v. Electronic

Data Systems, 21 U.S.P.Q. 2d 1388, 1392 (Fed. Cir. 1992) when comparing the mark

E.D.S. enclosed in a stylized box and the mark EDS, the TTAB found that while the

marks were similar in appearance and sound, and the services catered to many of the

same consumers, the goods and services provided under each were relatively expensive

and designed for use by sophisticated consumers. The TTAB correctly stated:

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Where purchasers are the same, their sophistication is important and
often dispositive because sophisticated consumers may be expected to
exercise greater care. There is always less likelihood of confusion
where goods are expensive and purchased after careful
consideration.

Similarly, Applicant’s clients exercise a high degree of care and consideration when purchasing

Applicant’s software since it is a signi?cant capital investment. In addition, given that the

Registrant’s mark is used only in the utility industry in connection with outage management, one

can infer that its consumers are sophisticated as well since they are looking for a speci?c

software to service a very speci?c need. Therefore, given the sophistication of Applicant’s and

Registrant’s respective consumers, Applicant respectfully puts forth that confusion is not likely.

IV. Other Registered CES Marks

Applicant highlights that the USPTO has permitted CES INTERNATIONAL to

register and co-exist with ?ve (5) other marks that contain CBS in Class 9, see table

below and copies of registrations found in Exhibit 4:

1»
MARK REGISTRATION GOODS/SERVICES REGISTRATION
NO. DATE

1 CES 2,223,517 Computer software for J February 16, 1999
transportation program
planning and job cost
estimating that includes
parametric, cost-based and
bid-based estimating
methodologies, and not for use
in administering, sponsoring
or managing trade shows in
the electronics industries and
the computer industries.

2 CE82001 2,373,449 Compact digital earth stations August 1,2000
comprising satellite signal
receivers, satellite signal
transmitters, antennas,
computer hardware, computer
software therefore, frequency
converters, frequency
synthesizers, ampli?ers,
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ampli?er control apparatus,
modulators and demodulators.

3 RT—CES 2,994,575 Laboratory equipment, namely September 13, 2005
scienti?c apparatus for
biophysical and
electrophysiological
measurement and testing of
cells; and user manuals and
computer operating software
programs all for use and sold
as a unit with the aforesaid
goods.
1 k
4 CES AUDIO 3,139,492 Audio apparatus and September 5, 2006
equipment and parts for the
goods, namely, loudspeakers,
audio speakers, audio mixers,
headphones, megaphones,
microphones, ampli?ers,
electronic volume controls,
stereo tuners, DVD and CD
players and recorders,
electronic audio speaker zone
selectors.
.__—._——_.__J
5 CES 3,142,556 Loudspeakers, Audio September 12, 2006
Speakers, Audio Mixers,
Headphones, Megaphones,
Microphones, Ampli?ers.

Three (3) of the above registrations contain software in their respective description of

goods. As already addressed, all software cannot be considered related goods simply

because it is software. See e. g. Viacom Internationalec. v. Kermit Komm, et. al., 46

U.S.P.Q. 2d 1233 (TTAB 1998) (stating that computer accessories and computer toys

and games are not related to computer software for enabling typing with a mouse by the

mere fact that they are all used with computers). Therefore, if the United States Patent

and Trademark Of?ce has determined that these registrations can co—exist with CBS

INTERNATIONAL without confusion, then Applicant puts forth that its mark should

also be able to co—exist without a likelihood of confusion.

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t re sp ec tf ul ly re qu es ts th at th e Ex am in er
For the tbrcgmng reasons, Applican

th e ap pl ic at io n to pr oc cc d to pu bl ic at io n.
withdraw the §3(d) refusal and permit

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