Attorney Docket: 066416.0142

Application Serial No.: 77/645,293
Mark: ALI SOLUTIONS
Class(es): 009 AND 036
Applicant:

THIS RESPONSE TO OFFICE ACTION WILL BE SUBMITTED ELECTRONICALLY WITH
THE U.S. PATENT AND TRADEMARK OFFICE.

Commissioner for Trademarks Examiner: Susan A. Richards
P.O. Box 1451 Law Office: 103
Alexandria, Virginia 22313-1451

RESPONSE TO NON-FINAL OFFICE ACTION

Applicant respectfully submits this response to the Office Action dated March 23, 2009.

RECITATION OF GOODS AND SERVICES
Pursuant to the Examining Attorney’s request for clarification or amendment to the goods and
services identified in the application, Applicant enters the following amendments:

Class 009: Software and linear regression models for models designed to proactively
manage managing consumer credit risk for critical events that occur within the credit life cycle.

Class 036: Analytical Financial, system, and policy analysis and consulation, namely,
financial, system and policy consulation with respect services to proactively manage
managing consumer credit risk for critical events that occur within the credit life cycle.

DISCLAIMER

Pursuant to the Examining Attorney’s requirement, Applicant enters the following disclaimer:

No claim is made to the exclusive right to use SOLUTIONS apart from the mark as
shown.

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LIKELIHOOD OF CONFUSION – 2(D) REFUSAL

The Examining Attorney has cited Application Serial No. 77/253,714 as possible grounds for
refusing to register Applicant’s mark. The cited application is for the mark ALIFINANCE (the
“Cited Application”) for use in connection with the following goods and services:

Class 009: Apparatus for recording, transmission or reproduction of sound or images; blank
magnetic data carriers, blank recording discs; automatic vending machines and mechanisms for
coin-operated apparatus; cash registers, calculating machines, data processing equipment and
computers; computers; computer programs for business use for financial management and
financial planning; computer software for business use for financial management and financial
planning; computer peripheral devices; blank optical discs; electronic pocket translators;
telephone apparatus; punch clocks; time recording devices, namely, time clocks; facsimile
machines; weighing apparatus and instruments, namely, scales and balances; scaled rulers; blank
sound recording strips; neon signs; electronic notice boards; transparency projection apparatus;
kilometer recorders for vehicles; telescopes; electric wires; electric switches; mechanisms for
counter-operated apparatus, namely, point-of-sale terminals; batteries; computer hardware and
firmware for use in the field of business for financial management and financial planning;
computer software downloadable from the Internet for use in the field of business for financial
management and financial planning; compact discs featuring computer programs and computer
software for business for financial management and financial planning; digital music
downloadable from the Internet; telecommunications apparatus, namely, network telephone,
electronic facsimile, portable device for sending and receiving electronic mails, and instant
messaging communication tool in the nature of portable telecommunication instant messaging
devices
Class 035: Advertising via electronic media and specifically via the internet; business
management in the field of e-commerce; business administration in the field of e-commerce;
office functions in the field of e-commerce; commercial information agencies; business research;
business investigations; organization of trade fairs for commercial or advertising purposes;
auctioneering; personnel management consultancy; procurement services for others, namely,
purchasing consumer, business and industrial products and services for others; purchasing goods
and services for other businesses; relocation services for businesses; compilation of information
into computer databases; conducting data searches for the goods and services of others in
computer files for others; accounting; rental of vending machines; publication of publicity texts;
advertising; rental of advertising space; advertising agencies; on-line advertising on a computer
network
Class 036: Insurance and financial information and consultancy services; insurance
administration; assessment and management of real estate; providing information in the field of
real estate via the internet; real estate brokerage; banking and financing services; financial
analysis; surety services; charitable fund raising; electronic funds transfer services; capital
investment; fiduciary representatives; financial management; online financial planning services;
financial planning.

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Class 038: Telecommunication services, namely, provision of network telephone, electronic
facsimile, electronic mails, instant messaging communication services; message sending; cellular
telephone communication; computer aided transmission of messages and images; electronic mail
services; electronic bulletin board services, namely, providing online electronic bulletin boards
for transmission of messages among users in the field of general interest; providing
telecommunications connections to a global computer network; teleconferencing services;
providing user access to a global computer network; providing information about
telecommunications.
Class 039: Transportation services, namely, transportation of passengers and goods by rail;
packaging of goods for transportation; storage of goods; travel arrangement, namely, arranging
travel tours; storage of electronically-stored data or documents; transportation information; ship
brokerage; car transport; air transport; vehicle rental; message delivery; travel reservation for
transportation; transport by pipeline of oil and gas; delivery of mail order goods by air and truck;
courier services for messages or merchandise.

Class 042: Scientific and technological services, namely, providing online non-downloadable
software for planning and management of personal and business finances; design and
development of computer hardware and software.

Applicant respectfully requests that the Examining Attorney reconsider this possible refusal in
light of Applicant’s amendment to its recitation of goods and services and the arguments set
forth below.

In determining likelihood of confusion, not only must the marks themselves be compared for
similarities, but a comparison must be made between the goods or services associated with the
two marks to determine if they are related, and/or if the activities surrounding their marketing are
such that confusion as to their origin is likely. Although the goods or services of the parties need
not be identical or directly related for there to be a likelihood of confusion, they must be
sufficiently related so that they will be encountered by the same purchasers under conditions that
could lead to confusion. See, In re Marty’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
U.S.P.Q. 1289 (Fed. Cir. 1984).

Applicant seeks to register the mark ALI SOLUTIONS for use in connection with Class 009:
Software and linear regression models for proactively managing consumer credit risk for critical
events that occur within the credit life cycle; and Class 036: Financial, system, and policy
analysis and consulation, namely, financial, system and policy consulation with respect to
proactively managing consumer credit risk for critical events that occur within the credit life
cycle. Due to the differences in appearance between the marks, the differences between the
goods and services provided under the marks, and Applicant’s intent in adopting its ALI

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SOLUTIONS mark, Applicant respectfully submits that there is no likelihood of confusion
between the marks.

The Marks Themselves

Applicant submits that the mark ALI SOLUTIONS and the cited ALIFINANCIAL mark are not
sufficiently similar in appearance or commercial impression to cause a likelihood of confusion
between the marks. The visual similarity of the marks is determined by an “eyeball test.” Exxon
Corp. v. Texas Motor Exchange, Inc., 628 F.2d 500 (5th Cir. 1980). If the overall commercial
impression generated by the marks is different, that factor will weigh against a finding of
likelihood of confusion.

Applicant’s goods and services, and the Cited Application’s recited goods and services, both
involve the wide-ranging computer industry; however, a side by side comparison of each reveals
that they are different. As noted above, Applicant desires to use its mark in connection with
providing goods and services related to the management of consumer credit risk. In contrast, the
goods and services descriptions of the Cited Application do not appear to be related to the
management of consumer credit risk.

Further, while Applicant maintains for the reasons set forth above goods and services of the
present Application and the Cited Application are distinguishable, no likelihood of confusion
would exist in the present case even if the goods and services of the present Application and the
Cited Application were not distinguishable. In situations where marks were used in connection
with goods and services which were not clearly distinguishable, but were closely related, the
TTAB has permitted registration based on the sophisticated nature and/or expense of the goods
and/or services involved. For example, the TTAB permitted registration of the mark DOX for
computer programming services, finding that the mark did not so resemble the mark DOC’S for
custom manufacture of computer systems as to be likely to cause confusion, mistake or
deception. In re Software Design, Inc., 220 U.S.P.Q. 662 (TTAB 1983). Even though the marks
were phonetically identical and the respective services related, the TTAB determined that
because the services of the applicant and the registrant (i.e., computer programming services,
versus the custom manufacture of computer systems) were highly sophisticated, technical and
relatively expensive, and ‘were likely to be purchased only with care and deliberation after
investigation to determine their suitability for specific needs,’ the phonetic similarity between the
marks was held not as significant as would be the case if the marks were used, for example, to
identify inexpensive, over-the-counter items likely to be orally requested in retail stores.
Purchasers of the types of goods and services recited in the present Application and the Cited

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Application are generally sophisticated consumers who generally do not purchase such goods
and services (e.g., financial or risk management software, etc.) without careful inquiry as to the
particular functionality, performance, cost, and other factors associated with the particular goods
and services.

For at least these reasons, Applicant believes that the cumulative differences between the
respective goods an services are sufficient to obviate any reasonable likelihood of consumer
confusion in the marketplace. Accordingly, Applicant respectfully requests that the Section 2(d)
refusal issued by the Examining Attorney on this application be withdrawn.

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CONCLUSION
This application has been carefully reviewed in response to the Office Action dated March 23,

2009. Applicant respectfully submits that it has responded satisfactorily to the Office Action,

and suggests that the application is now in condition for publication.

Dated: September 23, 2009
Brian K. Prewitt, Esq.

BAKER BOTTS L.L.P.
98 San Jacinto Blvd., Suite 1500
Austin, Texas 78701
Telephone: 512.322.2684
Facsimile: 512.322.8354

ATTORNEYS FOR APPLICANT

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