GlassHouse Technologies, Inc.

Attorney Docket No.: 301726.4000-100
TRADEMARK LAW OFFICE 101
Serial No. 77/095,523
Mark: TRANSOM

IN THE US. PATENT AND TRADEMARK OFFICE

In re application of:

Applicant: GlassHouse Technologies, Inc. Examining Attorney: Barbara Rutland

Serial No.: 77/095,523 Law Of?ce: 101

Filed: January 31, 2007

Mark: TRANSOM
3
Assistant Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202-3513

RESPONSE TO OFFICE ACTION

Dear Sir/Madam:

In response to the Of?ce Action mailed July 3, 2007, Applicant respectfully requests
reconsideration of the Examining Attorney’s refusal to grant registration for the instant mark
on the basis of cited Registration Nos. 2,779,468 and 3,139,734, both for the mark

TRANSOM.
The Examining Attorney has taken the position that the instant mark would be
confusingly similar to the cited registrations because the registrant’s services are broad
enough to include information about the design, selection, implementation and use of
computer hardware and software systems.

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Serial No. 77/095,523
Mark: TRANSOM

The Applicant respectfully disagrees. As an initial matter, Applicant has amended the
identi?cation of services to recite:

“[b]usiness consulting services in the ?eld of
evaluating the information technology infrastructure of
businesses and featuring the design, selection, implementation
and use of computer hardware and so?ware systems for such
businesses.”

In contrast to the foregoing services, the ’734 registration features “entertainment
services, namely, providing radio programs in the ?eld of general news concerning politics,
policy, business, technology, entertainment, arts and leisure.” It is Applicant’s position that
the instant mark is distinguishable from the ‘724 registration, because the services and the
channels of trade are extremely different, and the sophistication level of consumers
purchasing the services is very high. Entertainment services and business consulting services
are quite different, as are the channels oftrade in which they are marketed. Consumers easily
recognize the distinction between the two types ofservices, even ifthe entertainment services
provide information regarding business and technology. Moreover, consumers listening to
entertaimnent radio programs featuring general news (regarding, among other things,
business and/or technology) are suf?ciently sophisticated to understand that such radio
shows are not providing business consulting services. Similarly, consumers of business
consulting services related to information technology would not be deceived into thinking
that such sophisticated information would be provided on a radio program.
Accordingly, it is Applicants position that the instant services are suf?ciently
different from those of the ‘724 registration such that it would be unlikely for confusion to
exist in the minds of consumers as to the source of the services. Withdrawal ofthe Refusal is
respectfully requested.
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Serial No. 77/095,523
Mark: TRANSOM

Similarly, it is Applicant’s position that the instant mark is distinguishable from the
‘468 registration, because the services and the channels of trade are extremely different, and

the sophistication level of c’onsumers purchasing the services is very high. The ‘468
registration features “computer services, namely, providing on-line web sites featuring
information in text, audio, and visual format, namely, general news concerning politics,
policy, business, technology, entertainment, arts and leisure.” On-line web sites and business
consulting services are quite different, and consumers easily recognize the distinction
between the two, even if the web site provides general information regarding business and
technology. In addition, the channels oftrade associated with the respective services are very
different. Consumers using web sites featuring general news are sufficiently sophisticated to
understand that such web sites are not providing businesses with information technology
consulting services. Similarly, consumers of consulting services related to information
technology would not be con?ised into thinking that the general information provided on a
general web site is providing the sophisticated services that are required to evaluate the IT
infrastructure of businesses.
Accordingly, it is Applicants position that the instant services are suf?ciently
different from those of the ‘468 registration such that it would be unlikely for confusion to
exist in the minds of consumers as to the source ofthe services. Withdrawal ofthe Refusal is
respectfully requested.
In view of the foregoing, it is respectfully submitted that the instant application is
ready for publication, and such action is courteously solicited.

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Serial No. 77/095,523
Mark: TRANSOM

The Patent and Trademark of?ce is authorized to charge any additional fees incurred
as a result of the ?ling hereof or credit any overpayment to our Deposit Account No. 501935.

Res ctfully submitted,

Date: December 3, 2007 By:

Michele J. Young, Esq.
BOWDITCH & DEWEY LLP
311 Main Street
Worcester, MA 01608
Tele: 508.926.3456
Fax: 508.929.3093

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