IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO. : 77/644,135

MARK : LOGVAULT

APPLICANT : SecureWorks, Inc.

FILED : January 6, 2009

CLASS : 9

EXAMINING ATTORNEY : Timothy J. Finnegan
Law Office 104

ANIENDMENT AND RESPONSE

Commissioner for Trademarks
PO. Box 1451
Alexandria, Virginia 22313-1451

Sir:

In response to the Office Action mailed March 23, 2009, please consider the remarks

provided below.

REMARKS

8mm of t_h_e Office Action

In the Office Action, the Examining Attorney refused registration of Applicant’s

proposed mark LOGVAULT, as shown in application Serial Number 77/644,135 (hereinafter

“Applicant’s Proposed Mark”), under Section 2(d) based on an alleged likelihood of confusion

with the mark LOGOVAULT in US Registration No. 2,679,163 (the “Cited Mark”). The

Examining Attorney also required Applicant to amend its identification of goods to be more
Serial No. 77/644,135

specific. Applicant respectfully traverses the refusal and addresses the amendment requirement

below.

AMENDMENT

Amendment to Identification of Goods

Applicant amends its identification of goods to read as follows:

Class 9: Computer hardware, namely network devices for collecting, organizing,
filing, storing, retrieving, archiving, indexing, and analyzing data and
information regarding the operation of and access of computer network
assets, namely firewalls, computers, servers, computer software, web and
other applications, and network intrusion prevention and detection
systems.

RESPONSE

In the Office Action, the Examiner refused registration of Applicant’s Proposed Mark

under Section 2(d) of the Trademark Act based on an alleged likelihood of confusion with the

Cited Mark LOGOVAULT for electronic storage of data and digital images in an electronic

database accessible via the Internet, in Class 39. Applicant respectfully requests that the

Examining Attorney withdraw the refusal because there is no likelihood of confusion between

Applicant’s Proposed Mark and the Cited Mark. Specifically, Applicant submits that: (1) the

goods associated with Applicant’s Proposed Mark are unrelated to the services associated with

the Cited Mark; (2) Applicant’s Proposed Mark sounds different than the Cited Mark; and

(3) Applicant’s Proposed Mark and the Cited Mark convey distinct commercial impressions.
Serial No. 77/644,135

1. Applicant’s Proposed Goods Are Unrelated To The Services Of The Cited Mark

“If the goods or services [of the marks] in question are not related or marketed in such a

way that they would be encountered by the same persons in situations that would create the

incorrect assumption that they originate from the same source, then, even if the marks are

identical, confusion is not likely.” TMEP § 1207.01(a)(i) (emphasis added). Here, Applicant’s

Proposed Mark and the Cited Mark will be marketed and travel through entirely different

channels of trade, thereby preventing any likelihood of confusion.

As Applicant’s amended identification of goods re?ects, Applicant intends to use its

proposed mark in connection with computer hardware rather than data storage services.

Specifically, Applicant intends to use its mark in connection with network devices that collect,

organize, file, store, retrieve, archive, index, and analyze data and information regarding the

operation and access of firewalls, computers, severs, computer software, web and other

applications, and network intrusion prevention and detection systems. These devices and the

entities to which they are offered are very different from the services for which and potential

customers to whom the Cited Mark is used.

In particular, Applicant submits that its hardware devices for marketing under

Applicant’s Proposed Mark are unrelated to the data storage services associated with the Cited

Mark. Applicant simply is not in the business of storing customers’ data and digital images in an

electronic database accessible via the Internet. In addition, Applicant’s goods are rendered to

sophisticated purchasers of computer hardware, and the channels of trade for Applicant’s goods

are completely different from those used for the cited data storage services. Therefore, there is

no likelihood of confusion between Applicant’s Proposed Mark and the Cited Mark.
Serial No. 77/644,135

2. Applicant’s Proposed Mark Sounds Different Than The Cited Mark

When spoken aloud, the marks do not sound alike. While Applicant’s Proposed Mark

and the Cited Mark share common elements, this does not mean that the respective marks sound

similar. For example, in Plough, Inc. v. Kreis Laboratories, 314 F.2d 635, 641 (9th Cir. 1963),

the Court held that the marks “COPA TAN”, “COPA TINT”, and “COPA CREAM” are not

confusingly similar in sound to “COCA TAN” and “COCA TINT”, despite the fact that the

marks share a common word.

When pronounced, Applicant’s Proposed Mark includes two syllables: LOG-VAULT.

The “O” in Applicant’s Proposed Mark is a “short” 0, which is pronounced “aw”. Thus,

Applicant’s Proposed Mark is pronounced “Lawg-Vault”. In contrast, the Cited Mark includes

three syllables: LO-GO-VAULT. Each “0” in the Cited Mark is a long 0, which is pronounced

“oh”. Thus, the Cited Mark is pronounced “Loh-goh-Vault”.

As a result of these differences in pronunciation, Applicant’s Proposed Mark has a

significantly different expression and cadence than the Cited Mark. Accordingly, as in Plou

Lug, when the marks are spoken in their entireties, even though they may share common words,

Applicant’s Proposed Mark and the Cited Mark do not sound confusingly similar at all.

3. The Commercial Impressions of the Marks Are Distinct

When con?icting marks, taken in their entirety, convey different commercial

impressions, any likelihood of confusion can be avoided. & In re Sears Roebuck & Co., 2

U.S.P.Q.2d 1312 (T’I‘AB 1987). For example, in In re Sears Roebuck & Co., the Board found

that CROSS-OVER for bras and CROSSOVER for ladies’ sportswear conveyed different

meanings. Noting that the mark CROSS-OVER is suggestive of the construction of bras, while

CROSSOVER for ladies’ sportswear is suggestive of sportswear that “crosses over” between

informal and more formal clothing, the Board concluded that, “[a]s a result of their different

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Serial No. 77/644,135

meanings when applied to the goods of applicant and registrant, the two marks create different

commercial impressions, notwithstanding the fact that they are legally identical in sound and

appearance.” Q at 1314.

Applicant submits that, in addition to appearing and sounding very different from one

another, Applicant’s Proposed Mark and the Cited Mark have unrelated connotations and convey

very different commercial impressions. Whereas Applicant’s Proposed Mark is an arbitrary and

fanciful designation, the Cited Mark is a designation, which suggests to a purchaser that the

registrant thereof offers a “VAULT” in which “LOGOS” and the like may be stored. Therefore,

Applicant’s Proposed Mark and the Cited Mark convey very different commercial impressions,

making it unlikely that consumers will mistakenly confuse Applicant’s goods for the services

associated with the Cited Mark or that consumers will believe that Applicant’s goods are

otherwise associated with the services associated with the Cited Mark.

MIC—N
Applicant submits that the application is in order and in condition to be published.

Applicant respectfully requests publication of the application at the earliest possible date.

Respectfully submitted,

SecureWorks, Inc.

By its a

& SPALDING LLP
1180 Peachtree Street, NE.
Atlanta, Georgia 30309-3521
(404) 572-4600