PTO Form 1822 (Rev 11/2007)
OMB No. 0651-0050 (Exp. 4/30/2009)

Response to Suspension Inquiry or Letter of Suspension

The table below presents the data as entered.
Input Field Entered
SERIAL NUMBER 77046303
LAW OFFICE
LAW OFFICE 102
ASSIGNED
PENDING SERIAL NUMBER(S)
Serial number(s) 78724025 should not be used as a citation(s) under Section 2(d) of the Trademark Act,
in the event that said serial number(s) mature(s) into a registration(s). The applicant hereby requests
removal of this application from suspension, based on the following arguments. In the event that the
examining attorney is not persuaded by these arguments, the applicant hereby requests that this
application be returned to suspended status, awaiting ultimate disposition of the referenced serial
number(s).
ARGUMENT(S)

The Examining Attorney has maintained the refusal issued in the instant application under Section 2(d)
of the Trademark Act, because it was found that the mark, SYNCHRONY, when used on or in
connection with the specified goods, so resembles the marks in U.S. Registration Nos. 1424284 and
2579373 for the marks SynchroNet (stylized) and ASYNCHRONY as to be likely to cause confusion, to
cause mistake, or to deceive. The Applicant respectfully reiterates its disagreement with the Examining
Attorney, and requests reconsideration of the refusal to register based on the arguments submitted
previously, incorporated by reference herein, and supplemented by those set forth infra.

Initially, Applicant notes that the Examining Attorney has suspended this application pending the
outcome of Application Serial No. 78724025 for the mark SYNCHRONICA, stating that if and when
the SYNCHRONICA application registers, it may be cited against Applicant’s application in a refusal
to register under Section 2(d) of the Trademark Act. Since the cited application has since registered
(Registration No. 3432852) Applicant will initially address the potential likelihood of confusion refusal
herein, where appropriate incorporating by reference arguments submitted previously as to the other
cited registration, and supplemented by those set forth infra.

In determining whether marks are likely to be confused under the Trademark Act Section 2(d), a series
of factors are examined, each factor playing a more dominant or diminished role depending on the facts
of the case. 15 U.S.C. Section 1053(d); In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177
U.S.P.Q. 563 (C.C.P.A. 1973). In the instant application, an analysis of all the relevant factors supports
a finding that confusion is not “likely”, rendering the refusal under Section 2(d) inappropriate.

At the outset, it must be borne in mind that under the Trademark Act, a refusal to register based upon a
likelihood of confusion requires that confusion as to the source of the goods or services not merely be
possible, but likely. The Second Circuit has stated that, “likelihood of confusion means a probability of
confusion; it is not sufficient if confusion is merely ‘possible.’” Estee Lauder, Inc. v. The Gap, Inc.,
42 U.S.P.Q.2d 1228 (2d Cir. 1997) (internal quotations omitted) quoting 2 J. McCarthy, Trademarks
and Unfair Competition, Section 23:3. A likelihood of confusion is based on the cumulative effect of
the differences in the goods or services at issue, and a consideration of the differences in the marks
themselves. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 U.S.P.Q.
24, 29 (C.C.P.A. 1976). No single factor is dispositive. In re E.I. DuPont de Nemours & Co., 476 F.2d
1357, 1362, 177 U.S.P.Q. 563 (C.C.P.A. 1973). As set forth below, the goods and services of the
Applicant and each of the cited Registrants are of such a distinct nature, offered in different channels of
trade and marketed to consumers exercising a high degree of care that it is unlikely consumers will be
confused as to the source of the respective goods and services.

I. Differences Between the Marks

The similarities exhibited by the marks in their entireties as to appearance, sound, connotation and
commercial impression is a factor to be considered in a confusion analysis. DuPont, 476 F.2d at 1361,
177 U.S.P.Q. at 567. Since marks tend to be perceived in their entireties, similarities between marks are
based upon the overall impression of the marks. Specialty Brands, Inc. v. Coffee Bean Distrib., Inc.,
748 F.2d 669, 673, 223 U.S.P.Q. 1281, 1283 (Fed. Cir. 1984); Opryland USA, Inc. v. Great American
Music Show, Inc., 970 F.2d 847, 23 U.S.P.Q.2d 1471, 1474 (Fed. Cir. 1992).

Since a marks’ strength determines the scope of protection properly afforded to it, the strength of the
cited Registrants’ marks is an important consideration in the analysis of whether there is a likelihood of
confusion. Platinum Home Mortgage Corp. v. Platinum Fin. Group, Inc., 149 F.3d 727, 74 U.S.P.Q.2d
1587, 1590 (7th Cir. 1998). Evidence of third party use of similar marks on similar goods or services is
admissible and relevant to show that a mark or component thereof is relatively weak and entitled to only
narrow scope of protection. General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 3 U.S.P.Q.2d 1442 (8th
Cir. 1987); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 U.S.P.Q. 693 (CCPA 1976); CareFirst
of Maryland, Inc. v. First Care, P.C., 434 F.3d 263, 77 U.S.P.Q.2d 1577 (4th Cir. 2006) (“This evidence
of extensive third party use also demonstrates that CareFirst’s mark lacks commercial strength in many
parts of the country.” No confusion likely between senior CAREFIRST and junior FIRST CARE for
physicians group medical office). The common use of the SYNCH or SYNCHRO components in marks
for goods and services in Classes 9 and 38 limit the scope of protection properly afforded to the cited
registrations.

A search of the USPTO database revealed numerous third party usages of the “SYNCH” and
“SYNCHRO” components. There are currently 308 records of active applications and registrations
featuring the “SYNCH” component, 269 records featuring the “SYNCHRO” component. Exhibits A
and B. Of the 308 records featuring “SYNCH”, 222 are registered marks and there are 203 registered
marks containing the “SYNCHRO” component. Exhibits C and D. Furthermore, in International Class
9, there are 79 registrations featuring the “SYNCH” component and 71 registrations featuring the
“SYNCHRO” component. Exhibits E and F. As for International Class 38, there are eight registrations
featuring the “SYNCH” component and five registrations featuring the “SYNCHRO” component.
Exhibits G and H. Finally, there are 62 registrations featuring the “SYNCH” component and covering
goods and services related to computers. Exhibit I. Keeping in mind that these numbers do not include
approved applications or state and common law uses of the “SYNCH” and “SYNCHRO” component,
it is clear that the components in questions are extremely common. It cannot be ignored that where
numerous third parties in the same or similar fields use the same or similar marks, each mark tends to be
a weak indicator of a single source and is accordingly entitled to only a limited scope of protection.
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1396, 73
U.S.P.Q.2d 1689 (Fed. Cir. 2005) (“Evidence of third party use of similar marks on similar goods is
relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection”); Data
Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 47 U.S.P.Q.2d 1672, 1676 (6th Cir. 1998);
Freedom Sav. & Loan. Ass’n v. Way , 757 F.2d 1176, 226 U.S.P.Q. 123, 127 (11th Cir. 1985); citing
Sun Banks of Fla., Inc. v. Sun Fed. Sav. & Loan Ass’n , 651 F.2d 311, 211 U.S.P.Q. 844, 848-49 (5th
Cir. 1981), and Amstar Corp. v. Domino’s Pizza, Inc. , 615 F.2d 252, 259, 205 U.S.P.Q. 969, 975 (5th
Cir. 1980), quoting Restatement of Torts § 729 (1938) (“The greater the number of identical or more or
less similar trademarks already in use on different kinds of goods, the less the likelihood of confusion”).
Based on the number of third party registrations utilizing the “SYNCH” or “SYNCHRO”
component, it is improper to grant any single mark such a broad scope of protection as to cover the
instant application.

The common usage of a term or phrase in a particular industry is indicative of a weaker mark or
element, such a mark is not entitled to a broad scope of protection and should not prevent the
registration of any other mark simply because the applied-for mark contains the common term. In re
The W.W. Henry Company, L.P. 82 U.S.P.Q.2d 1213 (TTAB 2007) (Precedential) (no likelihood of
confusion between PATCH & GO and PATCH ‘N GO; limited scope of protection); see e.g. Knight
Textile Corp. v. Jones Investment Co., 75 U.S.P.Q.2d 1313 (third party registrations made of record
show others in the field consider the wording “ESSENTIALS” to have suggestive significance of
clothing). Where a mark’s components are widely used, the public can easily distinguish slight
differences in the marks and confusion is unlikely even where the goods are related.[1] Gen. Mills, Inc.
v. Kellogg Co., 824 F.2d 622, 626, 3 U.S.P.Q.2d 1442, 1445 (8t h Cir. 1981); see also Johnson &
Johnson, Opposition No. 91122373 (evidence of third-party use “suggests that the public distinguishes
between the various marks containing this word by looking to other distinctive parts of those marks”).
Here the common component, “SYNCH” is defined as “synchronize” meaning “ to represent or
arrange (events) to indicate coincidence or coexistence,” similarly “SYNCHRO” refers to
“synchronization.” (Exhibits J, K and L). When used in connection with goods and services related to
computers, consumers will understand the component as touting a desirable characteristic of the
software, namely that the software will allow the user to synchronize various applications, thereby
increasing productivity and accuracy. In this regard the “SYNCH” or “SYNCHRO” component is
suggestive of the goods or services. Further supporting the proposition that the “SYNCH” or
“SYNCHRO” component is suggestive of goods or services relating to computer software or
telecommunications is the sheer number of third party registrations containing the component for related
goods. Tektronix, Inc. 534 F.2d 915 (the introduction of thirty-eight third party registrations with –
TRONICS or – TRONIX suffix was evidence that those third parties and the public considered such a
suffix descriptive; no likelihood of confusion). Given the number of federal registrations that include
the stem “SYNCH” or “SYNCHRO” as a component of the mark, no single use is entitled to a broad
scope of protection. With such a “crowded field” of “SYNCHRO” marks, purchasers are adept at
distinguishing between the offerings of each source. It is therefore improper to conclude that there is a
possibility of confusion with the cited registrations based on similarities with the “SYNCHRO”
element alone.
A. U.S. Registration No. 2579373 – ASYNCHRONY

Applicant’s mark, SYNCHRONY, is distinct visually, phonetically, in connotation, and in commercial
impression from Registration ‘373 for ASYNCHRONY. While it is acknowledged that both marks
contain the “SYNCHRONY” component, it must be borne in mind that it is not fatal to a mark for it to
incorporate a part or a whole of another’s mark. Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432
F.2d 1400, 167 U.S.P.Q. 529 (C.C.P.A. 1970) (PEAK PERIOD not confusingly similar to PEAK);
Lever Bros. Co. v. Barcelone Co., 463 F.2d 1107, 174 U.S.P.Q. 392 (C.C.P.A. 1973 (TIC TAC not
confusingly similar to TIC TAC TOE); Conde Nast Publications, Inc. v. Miss Quality, Inc., 507 F.2d
1404, 184 U.S.P.Q. 422 (C.C.P.A. 1975) (COUNTRY VOGUE not confusingly similar to VOGUE); In
re Merchandising Motivation, Inc., 184 U.S.P.Q. 364 (T.T.A.B. 1974) (there is no absolute rule that no
one has the right to incorporate the total mark of another as a part of one’s own mark; MMI
MENSWEAR not confusingly similar to MEN’S WEAR). Given the crowded field of marks
containing the “SYNCHRO” component, the addition of the “A” to the cited registration creates a
visual difference thereby allowing consumers to distinguish between the respective marks without
confusion. Additionally, the respective marks each have unique connotations, further mitigating the
chance for confusion. The mark ASYNCHRONY has an incongruous meaning when used in
connection with “computer software for use in business, home, education, and developer use” and
computer services. The use of the prefix “A-“ is rather striking in this regard. As a prefix “A-“ means
“not” or “without”. Exhibit M. Therefore, the commercial impression created by the
ASYNCHRONY mark is that the software and computer services are “without synchronization.” Since
the “A” component is the pronounceable initial letter of this cited registration and has no counterpart in
Applicant’s mark, it creates a unique commercial impression. Tektronix, Inc., 534 F.2d 915 (the “D”
portion [of DAKTRONICS] finds no counterpart in appellant’s mark [TEKTRONIX] and draws
attention to another difference between the marks the initial letter of the word portions”; finding no
likelihood of confusion between DAKTRONICS and TEXTRONIX).

Since marks utilizing the component “SYNCHRO” are particularly common, consumers are apt to
distinguish between the visual, phonetic, and connotative differences, thereby distinguish the respective
marks from one another. Based on the foregoing, the marks in Registration 2579373 and in the instant
application are sufficiently distinct, consumer confusion is accordingly unlikely.

B. U.S. Registration No. 1424284 – SynchroNet

Applicant’s mark, SYNCHRONY, is distinct visually, phonetically, in connotation, and in commercial
impression from Registration 1424284 for SynchroNet (stylized). While it is acknowledged that both
marks contain the “SYNCHRO” component, it must be borne in mind that it is not fatal to a mark for it
to incorporate a part or a whole of another’s mark. Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432
F.2d 1400, 167 U.S.P.Q. 529 (C.C.P.A. 1970) (PEAK PERIOD not confusingly similar to PEAK); and
cases cited supra. The mark in Registration ‘284, depicted below, is visually distinct from that of the
proposed mark:

The addition of “Net” at the end of the commonly used “Synchro” component serves to distinguish the
marks phonetically and visually, thereby creating a unique commercial impression from that conveyed
by Applicant’s SYNCHRONY mark. The “NET” component has an easily recognizable meaning and
given the initial capitalization of it in the mark “SynchroNet” it will be equally dominant, if not more
dominant than the “Synchro” component. The use of the suffix –NET in this registration will be
understood as a shortening of the term “network” meaning “a group of communications stations
operating under unified control.” Exhibit N. Consumers viewing the mark will understand it to be a
combination of the terms “synchronization” and “network”. The combination of these terms is
suggestive of the “telecommunications services, namely transmitting digital data by means of telephone
lines” offered by the Registrant. Registration 1424284 therefore differs visually, phonetically, and in
connotation from Applicant’s mark, thereby creating a unique commercial impression that renders
consumer confusion unlikely.

C. U.S. Registration No. 3432852 – SYNCHRONICA

Applicant’s mark, SYNCHRONY, is distinct visually, phonetically, in connotation, and in commercial
impression from Registration 3432852 for SYNCHRONICA. While it is acknowledged that both marks
contain the “SYNCHRO” component, it must be borne in mind that it is not fatal to a mark for it to
incorporate a part or a whole of another’s mark. Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432
F.2d 1400, 167 U.S.P.Q. 529 (C.C.P.A. 1970) (PEAK PERIOD not confusingly similar to PEAK); and
cases cited supra. An analysis of the word structure distinguishes the impressions created by these
marks. Faberge, Inc. v. Dr. Babor GmbH & Co., 219 U.S.P.Q. 848, 851 (T.T.A.B. 1983) (BABE v.
BABOR; double as opposed to single sound); HQ Network Sys. v. Exec Headquarters, 755 F. Supp.
1110, 18 U.S.P.Q. 2d 1897, 1902 (D. Mass. 1991) (different total number of syllables; use of one mark
as a noun, the other as an adjective). Applicant’s mark consists of three syllables whereas the instant
registration contains four syllables. The length and endings of the respective marks create unique visual
impressions; this registration is eleven letters long whereas Applicant’s mark is merely nine. The
respective marks utilize distinct, pronounceable and recognizable endings, “-NY” versus “-ONICA.”
When spoken aloud, the respective marks are distinct sounding, ending in unique suffixes. Given the
crowded field of marks utilizing the “SYNCHRO” and the weak trademark significance attached
thereto, the differences between the respective marks are sufficient to minimize any possibility of
consumer confusion.

II. Differences Between Goods and Services

It is a well-established principle of trademark law that in order to support a holding of likelihood of
confusion, the respective goods or services at issue must be related in some manner, or the conditions
and activities surrounding the marketing of the goods or services are such that they would or could be
encountered by the same persons under circumstances that could give rise to the mistaken belief that
they originate from the same source. In re Hal Publishing Corp., 15 U.S.P.Q.2d 1547, 1575 (T.T.A.B.
1990), citing In re International Telephone & Telegraph Corp., 197 U.S.P.Q. (T.T.A.B. 1978). This is
one of the factors to be considered in a confusion analysis. DuPont, 476 F.2d at 1361-62, 177 U.S.P.Q.
at 567.

The goods and services offered under the respective marks mark are of such a distinct nature that
consumer confusion is unlikely. In cases where the goods or services are dissimilar or are completely
unrelated, no likelihood of confusion will be found even if the marks are very similar. See e.g. Virgin
Enters. Ltd. v. Nawab, 335 F.3d 141, 67 U.S.P.Q.2d 1420 (2d Cir. 2003); Shen Mfg. Co., Inc. v. Ritz
Hotel, Ltd., 393 F.3d 1238, 73 U.S.P.Q.2d 1350 (Fed Cir. 2004) (cooking classes and kitchen textiles
not related); Aries Systems Corp. v. World Book Inc., 26 U.S.P.Q.2d 1926, 1931 n.16 (T.T.A.B. 1993)
(computer programs sold under KNOWLEDGE FINDER not similar to computer programs sold under
INFORMATION FINDER); Flow Technology, Inc. v. Picciano, 18 U.S.P.Q.2d 1970 (T.T.A.B. 1991)
(OMNITRAX for computer programs not likely to be confused with OMNITRAK for flowmeter
calibrator); Local Trademarks, Inc. v. The Handy Boys, Inc., 16 U.S.P.Q.2d 1156 (T.T.A.B. 1990)
(confusion not likely between LITTLE PLUMBERS for liquid drain opener and the identical mark for
advertising services marketed to plumbing contractors); Quartz Radiation Corp. v. Comm/Scope Co., 1
U.S.P.Q.2d 1668 (T.T.A.B. 1986) (QR for coaxial cable held not confusingly similar to QR for various
products (e.g. lamps, tubes) relating to the photocopying field).

A. Registration No. 2579373 – ASYNCHRONY

When determining the relatedness of the goods and services with Registration ‘373, it is necessary to
consider that the Trademark Manual of Examining Procedures requires computer programs be identified
with specificity. TMEP 1402.03(d). This requirement was implemented “to avoid the issuance of
unnecessary refusals of registration under 15 U.S.C. § 1052(d) where the actual goods of the parties are
not related and there is no conflict in the marketplace.” TMEP 1402.03(d); In re Linkvest S.A., 24
U.S.P.Q.2d 1716 (T.T.A.B. 1992). Given the prevalence of computer programs and the degree of
specialization of such programs, there is a commercial compartmentalization of the marketplace with
regard to software that mitigates the possibility that the same class of consumers will come into contact
with the goods of the respective parties under circumstances likely to cause confusion.
I
Registration ‘373 identifies its goods as “computer software for use in business, home, education, and
developer use”. Additionally, Registration ‘373 offers computer services, including the development
and design of software for others, consultation regarding computerized information systems, creation of
global computer network database for others, and other services in Class 42. Since Registrant develops
software to the specification of its consumers, it can be presumed that Registrant will have extended
contact with its consumers who will in turn become familiar with the goods and services it offered.
Accordingly, consumers will distinguish the custom software applications developed to meet their
particular needs from the Applicant’s software with its particular applications (in
“Telecommunications, CPG (Consumer Packaged Goods), retail, transport, logistics, government,
services, government, services, manufacturing, financial services for managing exchanges between
government organizations, private and public companies, financial services institutions”). More
specifically, Applicant’s software is for “ creating collaborative computing solutions between computer
applications and computer systems, collaboration between enterprises through computer tools, for
managing secured file transfers, managing computerized business process, for creating secured
electronic information interchange platforms, for managing exchanges between enterprises, for
supervising activities of enterprises by monitoring computerized information, for monitoring the
enterprise value chain data, for monitoring the supply chain data, and for accelerating accounting
integration, all in the fields of telecommunications, Consumer Packaged Goods, Retail store services,
Transport and logistic services, Government contract services, Manufacturing and Financial services
for managing exchanges between government organizations, private and public companies and
financial services institutions.” Applicant’s software performs unique and specialized functions,
distinct from the software offered by Registrant. Under the Trademark Manual of Examining
Procedure, it is improper to refuse registration of the instant application based on Registration ‘373
because both include software. TMEP 1402.03(d). The specific applications of the software offered by
the respective parties are distinct and unrelated. Given the compartmentalization of the software
marketplace, the specificity with which the respective parties identify their goods, and the common
usage of “SYNCHRO” in Class 9, consumer confusion is highly unlikely.

B. U.S. Registration No. 1424284 – SYNCHRONET (Stylized)
I
I
In the March 26, 2007 the Examining Attorney characterized Applicant’s previous identification of
goods and services as broad and therefore presumed the goods and services encompassed the same as
those identified in Registration ‘284. However, Applicant’s identification has been subsequently
amended, accordingly Applicant resubmits that such a presumption is no longer appropriate. Registrant
offers, “telecommunications services, namely, transmitting digital data by means of telephone lines”
(emphasis added). In contrast, Applicant’s services include “communication services, namely, the
receipt and delivery of messages, documents and data by electronic transmission, electronic
transmission of data via computer terminals” (emphasis added). The respective services of the
Registrant and Applicant utilize distinct forms of technology, each performing unique and unrelated
services.
I
The mere supposition that the goods or services of the respective parties may be sold in the same broad
field “is not sufficient to demonstrate that a genuine issue exists concerning likelihood of confusion.”
Electronic Design & Sales Inc. v. Electronic Data Syst.Corp., 954 F.2d 713, 716, 716 U.S.P.Q.2d 1388
(Fed. Cir. 1992) (citing Astra Pharm. Prod. v. Beckman Instru., 718 F.2d 1201, 1206, 220 U.S.P.Q. 786
(1st Cir. 1983). In determining whether goods or services are related “it is not sufficient that a
particular term may be found which may broadly describe the goods.” In re The W.W. Henry Company,
L.P., Serial No. 78401595 (January 19, 2007) [precedent] (Portland cement and chemical filler both
used to repair surface considered unrelated). It is not enough that both Registrant and Applicant offer
communication services generally, consumers must be likely to encounter the marks in a context-giving
rise to a likelihood of confusion. The respective services operate using different forms of technology,
meeting different needs of the consumers, accordingly consumers are unlikely to confuse the source of
the respective services.

C. U.S. Registration No. 3432852 – SYNCHRONICA

When determining the relatedness of the goods and services with Registration ‘852, it is necessary to
consider that the Trademark Manual of Examining Procedures requires computer programs be identified
with specificity. TMEP 1402.03(d). This requirement was implemented “to avoid the issuance of
unnecessary refusals of registration under 15 U.S.C. § 1052(d) where the actual goods of the parties are
not related and there is no conflict in the marketplace.” TMEP 1402.03(d); In re Linkvest S.A., 24
U.S.P.Q.2d 1716 (T.T.A.B. 1992). Given the prevalence of computer programs and the degree of
specialization of such programs, there is a commercial compartmentalization of the marketplace with
regard to software that mitigates the possibility that the same class of consumers will come into contact
with the goods of the respective parties under circumstances likely to cause confusion.

Registration ‘852 identifies its goods as “ computer software for connecting, managing, updating and
securing mobile devices as well as wireless synchronization of personal information between mobile
devices and services” in Class 9 as well as related communications synchronization services in Class
38. In this regard the Registrant’s software and related services are specifically for synchronization of
mobile devices and therefore perform distinct and unrelated functions from that of Applicant’s goods.
Applicant’s software is “ creating collaborative computing solutions between computer applications
and computer systems, collaboration between enterprises through computer tools, for managing
secured file transfers, managing computerized business process, for creating secured electronic
information interchange platforms, for managing exchanges between enterprises, for supervising
activities of enterprises by monitoring computerized information, for monitoring the enterprise value
chain data, for monitoring the supply chain data, and for accelerating accounting integration, all in the
fields of telecommunications, Consumer Packaged Goods, Retail store services, Transport and logistic
services, Government contract services, Manufacturing and Financial services for managing exchanges
between government organizations, private and public companies and financial services institutions” .
Whereas the goods and services offered under Registration ‘852 are used by individuals who are
synchronizing their mobile devices, the goods and services offered by Applicant are for use by
businesses, designed to increase business processes. The respective goods and services therefore serve
very distinct purposes and are marketed to different classes of consumers. Under the Trademark
Manual of Examining Procedure, it is improper to refuse registration of the instant application based on
Registration ‘852 because both include software and by extension the related services. TMEP
1402.03(d). The specific applications of the software offered by the respective parties are distinct and
unrelated. Given the compartmentalization of the software marketplace, the specificity with which the
respective parties identify their goods, and the common usage of “SYNCHRO” in Class 9, consumer
confusion is highly unlikely.

CONCLUSION

In light of the foregoing discussion and considerations, the Applicant respectfully submits that
maintaining the Section 2(d) refusal in this instance would serve to establish a monopoly for the cited
registrants in an overly broad channel of trade. The result of the Examining Attorney’s 2(d) refusal to
register the Applicant’s mark is to extend protection of Registrants’ marks over all goods and services
featuring “a variety of computer, computer related, communications and telecommunications goods and
services.” The goods and services of the respective parties are expressly named, serve specialized
functions, and the fields in which the goods and services are offered are explicitly identified; the cited
registrations do not in fact include the same software applications specified in the application. Refusing
to register the Applicant’s mark in Classes 9 and 38 based on the cited registrations serves to
impermissibly expand the scope of these registrations. If the Registrants sought protection for goods
and services identified in the application, as amended, such would have been included in the
registrations. To extend protection of Registrants’ mark to include all items related to computers,
communications or telecommunications improperly expands the scope of protection afforded by the
Lanham Act.

While the Lanham Act does protect a senior user’s reasonable zone of business expansion from junior
use of a mark, such is not the case where the goods at issue differ in non-trivial respects and share only
minimal areas of competing use. Vitarroz Corp. v. Borden, Inc., 209 U.S.P.Q. 969, 975-976 (2nd Cir.
1981) (no likelihood of confusion between BRAVOS for tortilla chips and BRAVO’S for crackers). As
discussed above, the differences between the respective parties’ goods and services are not trivial and
are readily perceptible. The respective goods serve unique and specialized functions. There is no
overlap in their areas of use, or in the prospective purchasers thereof. The Vitarroz court acknowledged
its disapproval of the previously existing rule granting a “premonitory lien” on a “future” or
“adjacent” market, attributing such as a “great injustice.” Id. at 975 n. 4. The analysis property takes
into account the nature of the products and the structure of the market in which those products are
placed. Id. at 975.
Given the significant differences between the goods and services with which the parties’ marks are
used, it cannot be said that confusion is more than merely “possible.” Considering the totality of the
circumstances in the instant application, it cannot be said that the threshold of “probability” is reached
in this case. The Applicant therefore submits that consumer confusion is not likely, and respectfully
requests that the Applicant’s mark be placed upon the Principal Register.

In view of the amendments and remarks set forth herein, and in further view of the fact that a search of
the Office records found no similar registered or pending mark which would bar registration under
Trademark Act Section 2(d), 15 U.S.C. §1052(d), Applicant believes that the Office Action has been
fully responded to and believes the application is in condition for registration. It is respectfully
requested that the Examining Attorney reconsider the refusal to register and pass this application to
registration on the Principal Register.

In the event the Examining Attorney has any queries regarding the instantly submitted amendments and
remarks, Applicant’s attorney respectfully requests the courtesy of a telephone conference to discuss
any matters in need of attention.

[1] The Applicant does not concede that its goods and services are related to the offerings of any of the cited registrations.

ARGUMENT FILE NAME(S)

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The referenced serial number(s) 78724025 has/have now registered. The applicant hereby requests
removal of this application from suspension, for consideration by the examining attorney of whether any
likelihood of confusion under Section 2(d) of the Trademark Act exists.
FOREIGN REGISTRATION
I

The applicant herein submits a digitized image of a copy, a certification, or a certified copy of a
registration in the applicant’s country of origin showing that the mark has been registered in that
country, and that the registration is in full force and effect. If the foreign registration is not in English,
an English translation thereof is being submitted. The applicant hereby request removal of this
application from suspension for further action by the examining attorney.
DELETE SECTION 1(b)
Yes
BASIS
I
FOREIGN
REGISTRATION France
COUNTRY
I
FOREIGN
063439574
REGISTRATION NUMBER
I
FOREIGN
REGISTRATION 07/07/2006
DATE
I
FOREIGN REGISTRATION FILE NAME(S)

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I
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SIGNATURE SECTION
RESPONSE SIGNATURE
I /Michelle P. Ciotola/
SIGNATORY’S NAME
I Michelle P. Ciotola
SIGNATORY’S POSITION
I Attorney of Record, CT and NY bar member
DATE SIGNED
I 10/01/2008
AUTHORIZED SIGNATORY
I YES
FILING INFORMATION SECTION
SUBMIT DATE
I Wed Oct 01 15:29:21 EDT 2008
USPTO/RSI-12.157.59.83-20
081001152921982571-770463
TEAS STAMP 03-43072f8fdc35ed46ecf963
d266ebe0a67a-N/A-N/A-2008
1001151556732266

PTO Form 1822 (Rev 11/2007)
OMB No. 0651-0050 (Exp. 4/30/2009)

Response to Suspension Inquiry or Letter of Suspension
To the Commissioner for Trademarks:
Application serial no. 77046303 has been amended as follows:

PENDING SERIAL NUMBER(S)
Serial number(s) 78724025 should not be used as a citation(s) under Section 2(d) of the Trademark Act, in
the event that said serial number(s) mature(s) into a registration(s). The applicant hereby requests removal
of this application from suspension, based on the following arguments. In the event that the examining
attorney is not persuaded by these arguments, the applicant hereby requests that this application be
returned to suspended status, awaiting ultimate disposition of the referenced serial number(s).
Argument(s):
The Examining Attorney has maintained the refusal issued in the instant application under Section 2(d) of
the Trademark Act, because it was found that the mark, SYNCHRONY, when used on or in connection
with the specified goods, so resembles the marks in U.S. Registration Nos. 1424284 and 2579373 for the
marks SynchroNet (stylized) and ASYNCHRONY as to be likely to cause confusion, to cause mistake, or
to deceive. The Applicant respectfully reiterates its disagreement with the Examining Attorney, and
requests reconsideration of the refusal to register based on the arguments submitted previously,
incorporated by reference herein, and supplemented by those set forth infra.

Initially, Applicant notes that the Examining Attorney has suspended this application pending the outcome
of Application Serial No. 78724025 for the mark SYNCHRONICA, stating that if and when the
SYNCHRONICA application registers, it may be cited against Applicant’s application in a refusal to
register under Section 2(d) of the Trademark Act. Since the cited application has since registered
(Registration No. 3432852) Applicant will initially address the potential likelihood of confusion refusal
herein, where appropriate incorporating by reference arguments submitted previously as to the other cited
registration, and supplemented by those set forth infra.

In determining whether marks are likely to be confused under the Trademark Act Section 2(d), a series of
factors are examined, each factor playing a more dominant or diminished role depending on the facts of
the case. 15 U.S.C. Section 1053(d); In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q.
563 (C.C.P.A. 1973). In the instant application, an analysis of all the relevant factors supports a finding
that confusion is not “likely”, rendering the refusal under Section 2(d) inappropriate.

At the outset, it must be borne in mind that under the Trademark Act, a refusal to register based upon a
likelihood of confusion requires that confusion as to the source of the goods or services not merely be
possible, but likely. The Second Circuit has stated that, “likelihood of confusion means a probability of
confusion; it is not sufficient if confusion is merely ‘possible.’” Estee Lauder, Inc. v. The Gap, Inc., 42
U.S.P.Q.2d 1228 (2d Cir. 1997) (internal quotations omitted) quoting 2 J. McCarthy, Trademarks and
Unfair Competition, Section 23:3. A likelihood of confusion is based on the cumulative effect of the
differences in the goods or services at issue, and a consideration of the differences in the marks
themselves. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 U.S.P.Q. 24,
29 (C.C.P.A. 1976). No single factor is dispositive. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357,
1362, 177 U.S.P.Q. 563 (C.C.P.A. 1973). As set forth below, the goods and services of the Applicant and
each of the cited Registrants are of such a distinct nature, offered in different channels of trade and
marketed to consumers exercising a high degree of care that it is unlikely consumers will be confused as to
the source of the respective goods and services.

I. Differences Between the Marks

The similarities exhibited by the marks in their entireties as to appearance, sound, connotation and
commercial impression is a factor to be considered in a confusion analysis. DuPont, 476 F.2d at 1361,
177 U.S.P.Q. at 567. Since marks tend to be perceived in their entireties, similarities between marks are
based upon the overall impression of the marks. Specialty Brands, Inc. v. Coffee Bean Distrib., Inc., 748
F.2d 669, 673, 223 U.S.P.Q. 1281, 1283 (Fed. Cir. 1984); Opryland USA, Inc. v. Great American Music
Show, Inc., 970 F.2d 847, 23 U.S.P.Q.2d 1471, 1474 (Fed. Cir. 1992).

Since a marks’ strength determines the scope of protection properly afforded to it, the strength of the cited
Registrants’ marks is an important consideration in the analysis of whether there is a likelihood of
confusion. Platinum Home Mortgage Corp. v. Platinum Fin. Group, Inc., 149 F.3d 727, 74 U.S.P.Q.2d
1587, 1590 (7th Cir. 1998). Evidence of third party use of similar marks on similar goods or services is
admissible and relevant to show that a mark or component thereof is relatively weak and entitled to only
narrow scope of protection. General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 3 U.S.P.Q.2d 1442 (8th Cir.
1987); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 U.S.P.Q. 693 (CCPA 1976); CareFirst of
Maryland, Inc. v. First Care, P.C., 434 F.3d 263, 77 U.S.P.Q.2d 1577 (4th Cir. 2006) (“This evidence of
extensive third party use also demonstrates that CareFirst’s mark lacks commercial strength in many parts
of the country.” No confusion likely between senior CAREFIRST and junior FIRST CARE for
physicians group medical office). The common use of the SYNCH or SYNCHRO components in marks
for goods and services in Classes 9 and 38 limit the scope of protection properly afforded to the cited
registrations.

A search of the USPTO database revealed numerous third party usages of the “SYNCH” and
“SYNCHRO” components. There are currently 308 records of active applications and registrations
featuring the “SYNCH” component, 269 records featuring the “SYNCHRO” component. Exhibits A
and B. Of the 308 records featuring “SYNCH”, 222 are registered marks and there are 203 registered
marks containing the “SYNCHRO” component. Exhibits C and D. Furthermore, in International Class
9, there are 79 registrations featuring the “SYNCH” component and 71 registrations featuring the
“SYNCHRO” component. Exhibits E and F. As for International Class 38, there are eight registrations
featuring the “SYNCH” component and five registrations featuring the “SYNCHRO” component.
Exhibits G and H. Finally, there are 62 registrations featuring the “SYNCH” component and covering
goods and services related to computers. Exhibit I. Keeping in mind that these numbers do not include
approved applications or state and common law uses of the “SYNCH” and “SYNCHRO” component, it
is clear that the components in questions are extremely common. It cannot be ignored that where
numerous third parties in the same or similar fields use the same or similar marks, each mark tends to be a
weak indicator of a single source and is accordingly entitled to only a limited scope of protection. Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1396, 73 U.S.P.Q.2d
1689 (Fed. Cir. 2005) (“Evidence of third party use of similar marks on similar goods is relevant to show
that a mark is relatively weak and entitled to only a narrow scope of protection”); Data Concepts, Inc. v.
Digital Consulting, Inc., 150 F.3d 620, 47 U.S.P.Q.2d 1672, 1676 (6th Cir. 1998); Freedom Sav. & Loan.
Ass’n v. Way , 757 F.2d 1176, 226 U.S.P.Q. 123, 127 (11th Cir. 1985); citing Sun Banks of Fla., Inc. v.
Sun Fed. Sav. & Loan Ass’n , 651 F.2d 311, 211 U.S.P.Q. 844, 848-49 (5th Cir. 1981), and Amstar Corp.
v. Domino’s Pizza, Inc. , 615 F.2d 252, 259, 205 U.S.P.Q. 969, 975 (5th Cir. 1980), quoting Restatement
of Torts § 729 (1938) (“The greater the number of identical or more or less similar trademarks already in
use on different kinds of goods, the less the likelihood of confusion”). Based on the number of third party
registrations utilizing the “SYNCH” or “SYNCHRO” component, it is improper to grant any single
mark such a broad scope of protection as to cover the instant application.

The common usage of a term or phrase in a particular industry is indicative of a weaker mark or element,
such a mark is not entitled to a broad scope of protection and should not prevent the registration of any
other mark simply because the applied-for mark contains the common term. In re The W.W. Henry
Company, L.P. 82 U.S.P.Q.2d 1213 (TTAB 2007) (Precedential) (no likelihood of confusion between
PATCH & GO and PATCH ‘N GO; limited scope of protection); see e.g. Knight Textile Corp. v. Jones
Investment Co., 75 U.S.P.Q.2d 1313 (third party registrations made of record show others in the field
consider the wording “ESSENTIALS” to have suggestive significance of clothing). Where a mark’s
components are widely used, the public can easily distinguish slight differences in the marks and
confusion is unlikely even where the goods are related.[1] Gen. Mills, Inc. v. Kellogg Co., 824 F.2d 622,
626, 3 U.S.P.Q.2d 1442, 1445 (8t h Cir. 1981); see also Johnson & Johnson, Opposition No. 91122373
(evidence of third-party use “suggests that the public distinguishes between the various marks containing
this word by looking to other distinctive parts of those marks”). Here the common component,
“SYNCH” is defined as “synchronize” meaning “ to represent or arrange (events) to indicate coincidence
or coexistence,” similarly “SYNCHRO” refers to “synchronization.” (Exhibits J, K and L). When used
in connection with goods and services related to computers, consumers will understand the component as
touting a desirable characteristic of the software, namely that the software will allow the user to
synchronize various applications, thereby increasing productivity and accuracy. In this regard the
“SYNCH” or “SYNCHRO” component is suggestive of the goods or services. Further supporting the
proposition that the “SYNCH” or “SYNCHRO” component is suggestive of goods or services relating to
computer software or telecommunications is the sheer number of third party registrations containing the
component for related goods. Tektronix, Inc. 534 F.2d 915 (the introduction of thirty-eight third party
registrations with – TRONICS or – TRONIX suffix was evidence that those third parties and the public
considered such a suffix descriptive; no likelihood of confusion). Given the number of federal
registrations that include the stem “SYNCH” or “SYNCHRO” as a component of the mark, no single use
is entitled to a broad scope of protection. With such a “crowded field” of “SYNCHRO” marks,
purchasers are adept at distinguishing between the offerings of each source. It is therefore improper to
conclude that there is a possibility of confusion with the cited registrations based on similarities with the
“SYNCHRO” element alone.

A. U.S. Registration No. 2579373 – ASYNCHRONY

Applicant’s mark, SYNCHRONY, is distinct visually, phonetically, in connotation, and in commercial
impression from Registration ‘373 for ASYNCHRONY. While it is acknowledged that both marks
contain the “SYNCHRONY” component, it must be borne in mind that it is not fatal to a mark for it to
incorporate a part or a whole of another’s mark. Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d
1400, 167 U.S.P.Q. 529 (C.C.P.A. 1970) (PEAK PERIOD not confusingly similar to PEAK); Lever Bros.
Co. v. Barcelone Co., 463 F.2d 1107, 174 U.S.P.Q. 392 (C.C.P.A. 1973 (TIC TAC not confusingly similar
to TIC TAC TOE); Conde Nast Publications, Inc. v. Miss Quality, Inc., 507 F.2d 1404, 184 U.S.P.Q. 422
(C.C.P.A. 1975) (COUNTRY VOGUE not confusingly similar to VOGUE); In re Merchandising
Motivation, Inc., 184 U.S.P.Q. 364 (T.T.A.B. 1974) (there is no absolute rule that no one has the right to
incorporate the total mark of another as a part of one’s own mark; MMI MENSWEAR not confusingly
similar to MEN’S WEAR). Given the crowded field of marks containing the “SYNCHRO” component,
the addition of the “A” to the cited registration creates a visual difference thereby allowing consumers to
distinguish between the respective marks without confusion. Additionally, the respective marks each have
unique connotations, further mitigating the chance for confusion. The mark ASYNCHRONY has an
incongruous meaning when used in connection with “computer software for use in business, home,
education, and developer use” and computer services. The use of the prefix “A-“ is rather striking in this
regard. As a prefix “A-“ means “not” or “without”. Exhibit M. Therefore, the commercial impression
created by the ASYNCHRONY mark is that the software and computer services are “without
synchronization.” Since the “A” component is the pronounceable initial letter of this cited registration
and has no counterpart in Applicant’s mark, it creates a unique commercial impression. Tektronix, Inc.,
534 F.2d 915 (the “D” portion [of DAKTRONICS] finds no counterpart in appellant’s mark
[TEKTRONIX] and draws attention to another difference between the marks the initial letter of the word
portions”; finding no likelihood of confusion between DAKTRONICS and TEXTRONIX).

Since marks utilizing the component “SYNCHRO” are particularly common, consumers are apt to
distinguish between the visual, phonetic, and connotative differences, thereby distinguish the respective
marks from one another. Based on the foregoing, the marks in Registration 2579373 and in the instant
application are sufficiently distinct, consumer confusion is accordingly unlikely.

B. U.S. Registration No. 1424284 – SynchroNet

Applicant’s mark, SYNCHRONY, is distinct visually, phonetically, in connotation, and in commercial
impression from Registration 1424284 for SynchroNet (stylized). While it is acknowledged that both
marks contain the “SYNCHRO” component, it must be borne in mind that it is not fatal to a mark for it to
incorporate a part or a whole of another’s mark. Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d
1400, 167 U.S.P.Q. 529 (C.C.P.A. 1970) (PEAK PERIOD not confusingly similar to PEAK); and cases
cited supra. The mark in Registration ‘284, depicted below, is visually distinct from that of the proposed
mark:

The addition of “Net” at the end of the commonly used “Synchro” component serves to distinguish the
marks phonetically and visually, thereby creating a unique commercial impression from that conveyed by
Applicant’s SYNCHRONY mark. The “NET” component has an easily recognizable meaning and given
the initial capitalization of it in the mark “SynchroNet” it will be equally dominant, if not more dominant
than the “Synchro” component. The use of the suffix –NET in this registration will be understood as a
shortening of the term “network” meaning “a group of communications stations operating under unified
control.” Exhibit N. Consumers viewing the mark will understand it to be a combination of the terms
“synchronization” and “network”. The combination of these terms is suggestive of the
“telecommunications services, namely transmitting digital data by means of telephone lines” offered by
the Registrant. Registration 1424284 therefore differs visually, phonetically, and in connotation from
Applicant’s mark, thereby creating a unique commercial impression that renders consumer confusion
unlikely.

C. U.S. Registration No. 3432852 – SYNCHRONICA

Applicant’s mark, SYNCHRONY, is distinct visually, phonetically, in connotation, and in commercial
impression from Registration 3432852 for SYNCHRONICA. While it is acknowledged that both marks
contain the “SYNCHRO” component, it must be borne in mind that it is not fatal to a mark for it to
incorporate a part or a whole of another’s mark. Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d
1400, 167 U.S.P.Q. 529 (C.C.P.A. 1970) (PEAK PERIOD not confusingly similar to PEAK); and cases
cited supra. An analysis of the word structure distinguishes the impressions created by these marks.
Faberge, Inc. v. Dr. Babor GmbH & Co., 219 U.S.P.Q. 848, 851 (T.T.A.B. 1983) (BABE v. BABOR;
double as opposed to single sound); HQ Network Sys. v. Exec Headquarters, 755 F. Supp. 1110, 18
U.S.P.Q. 2d 1897, 1902 (D. Mass. 1991) (different total number of syllables; use of one mark as a noun,
the other as an adjective). Applicant’s mark consists of three syllables whereas the instant registration
contains four syllables. The length and endings of the respective marks create unique visual impressions;
this registration is eleven letters long whereas Applicant’s mark is merely nine. The respective marks
utilize distinct, pronounceable and recognizable endings, “-NY” versus “-ONICA.” When spoken aloud,
the respective marks are distinct sounding, ending in unique suffixes. Given the crowded field of marks
utilizing the “SYNCHRO” and the weak trademark significance attached thereto, the differences between
the respective marks are sufficient to minimize any possibility of consumer confusion.

II. Differences Between Goods and Services

It is a well-established principle of trademark law that in order to support a holding of likelihood of
confusion, the respective goods or services at issue must be related in some manner, or the conditions and
activities surrounding the marketing of the goods or services are such that they would or could be
encountered by the same persons under circumstances that could give rise to the mistaken belief that they
originate from the same source. In re Hal Publishing Corp., 15 U.S.P.Q.2d 1547, 1575 (T.T.A.B. 1990),
citing In re International Telephone & Telegraph Corp., 197 U.S.P.Q. (T.T.A.B. 1978). This is one of the
factors to be considered in a confusion analysis. DuPont, 476 F.2d at 1361-62, 177 U.S.P.Q. at 567.

The goods and services offered under the respective marks mark are of such a distinct nature that
consumer confusion is unlikely. In cases where the goods or services are dissimilar or are completely
unrelated, no likelihood of confusion will be found even if the marks are very similar. See e.g. Virgin
Enters. Ltd. v. Nawab, 335 F.3d 141, 67 U.S.P.Q.2d 1420 (2d Cir. 2003); Shen Mfg. Co., Inc. v. Ritz
Hotel, Ltd., 393 F.3d 1238, 73 U.S.P.Q.2d 1350 (Fed Cir. 2004) (cooking classes and kitchen textiles not
related); Aries Systems Corp. v. World Book Inc., 26 U.S.P.Q.2d 1926, 1931 n.16 (T.T.A.B. 1993)
(computer programs sold under KNOWLEDGE FINDER not similar to computer programs sold under
INFORMATION FINDER); Flow Technology, Inc. v. Picciano, 18 U.S.P.Q.2d 1970 (T.T.A.B. 1991)
(OMNITRAX for computer programs not likely to be confused with OMNITRAK for flowmeter
calibrator); Local Trademarks, Inc. v. The Handy Boys, Inc., 16 U.S.P.Q.2d 1156 (T.T.A.B. 1990)
(confusion not likely between LITTLE PLUMBERS for liquid drain opener and the identical mark for
advertising services marketed to plumbing contractors); Quartz Radiation Corp. v. Comm/Scope Co., 1
U.S.P.Q.2d 1668 (T.T.A.B. 1986) (QR for coaxial cable held not confusingly similar to QR for various
products (e.g. lamps, tubes) relating to the photocopying field).
A. Registration No. 2579373 – ASYNCHRONY

When determining the relatedness of the goods and services with Registration ‘373, it is necessary to
consider that the Trademark Manual of Examining Procedures requires computer programs be identified
with specificity. TMEP 1402.03(d). This requirement was implemented “to avoid the issuance of
unnecessary refusals of registration under 15 U.S.C. § 1052(d) where the actual goods of the parties are
not related and there is no conflict in the marketplace.” TMEP 1402.03(d); In re Linkvest S.A., 24
U.S.P.Q.2d 1716 (T.T.A.B. 1992). Given the prevalence of computer programs and the degree of
specialization of such programs, there is a commercial compartmentalization of the marketplace with
regard to software that mitigates the possibility that the same class of consumers will come into contact
with the goods of the respective parties under circumstances likely to cause confusion.

Registration ‘373 identifies its goods as “computer software for use in business, home, education, and
developer use”. Additionally, Registration ‘373 offers computer services, including the development and
design of software for others, consultation regarding computerized information systems, creation of global
computer network database for others, and other services in Class 42. Since Registrant develops software
to the specification of its consumers, it can be presumed that Registrant will have extended contact with its
consumers who will in turn become familiar with the goods and services it offered. Accordingly,
consumers will distinguish the custom software applications developed to meet their particular needs from
the Applicant’s software with its particular applications (in “Telecommunications, CPG (Consumer
Packaged Goods), retail, transport, logistics, government, services, government, services, manufacturing,
financial services for managing exchanges between government organizations, private and public
companies, financial services institutions”). More specifically, Applicant’s software is for “ creating
collaborative computing solutions between computer applications and computer systems, collaboration
between enterprises through computer tools, for managing secured file transfers, managing computerized
business process, for creating secured electronic information interchange platforms, for managing
exchanges between enterprises, for supervising activities of enterprises by monitoring computerized
information, for monitoring the enterprise value chain data, for monitoring the supply chain data, and for
accelerating accounting integration, all in the fields of telecommunications, Consumer Packaged Goods,
Retail store services, Transport and logistic services, Government contract services, Manufacturing and
Financial services for managing exchanges between government organizations, private and public
companies and financial services institutions.” Applicant’s software performs unique and specialized
functions, distinct from the software offered by Registrant. Under the Trademark Manual of Examining
Procedure, it is improper to refuse registration of the instant application based on Registration ‘373
because both include software. TMEP 1402.03(d). The specific applications of the software offered by
the respective parties are distinct and unrelated. Given the compartmentalization of the software
marketplace, the specificity with which the respective parties identify their goods, and the common usage
of “SYNCHRO” in Class 9, consumer confusion is highly unlikely.

B. U.S. Registration No. 1424284 – SYNCHRONET (Stylized)

In the March 26, 2007 the Examining Attorney characterized Applicant’s previous identification of goods
and services as broad and therefore presumed the goods and services encompassed the same as those
identified in Registration ‘284. However, Applicant’s identification has been subsequently amended,
accordingly Applicant resubmits that such a presumption is no longer appropriate. Registrant offers,
“telecommunications services, namely, transmitting digital data by means of telephone lines” (emphasis
added). In contrast, Applicant’s services include “communication services, namely, the receipt and
delivery of messages, documents and data by electronic transmission, electronic transmission of data via
computer terminals” (emphasis added). The respective services of the Registrant and Applicant utilize
distinct forms of technology, each performing unique and unrelated services.

The mere supposition that the goods or services of the respective parties may be sold in the same broad
field “is not sufficient to demonstrate that a genuine issue exists concerning likelihood of confusion.”
Electronic Design & Sales Inc. v. Electronic Data Syst.Corp., 954 F.2d 713, 716, 716 U.S.P.Q.2d 1388
(Fed. Cir. 1992) (citing Astra Pharm. Prod. v. Beckman Instru., 718 F.2d 1201, 1206, 220 U.S.P.Q. 786
(1st Cir. 1983). In determining whether goods or services are related “it is not sufficient that a particular
term may be found which may broadly describe the goods.” In re The W.W. Henry Company, L.P., Serial
No. 78401595 (January 19, 2007) [precedent] (Portland cement and chemical filler both used to repair
surface considered unrelated). It is not enough that both Registrant and Applicant offer communication
services generally, consumers must be likely to encounter the marks in a context-giving rise to a
likelihood of confusion. The respective services operate using different forms of technology, meeting
different needs of the consumers, accordingly consumers are unlikely to confuse the source of the
respective services.

C. U.S. Registration No. 3432852 – SYNCHRONICA

When determining the relatedness of the goods and services with Registration ‘852, it is necessary to
consider that the Trademark Manual of Examining Procedures requires computer programs be identified
with specificity. TMEP 1402.03(d). This requirement was implemented “to avoid the issuance of
unnecessary refusals of registration under 15 U.S.C. § 1052(d) where the actual goods of the parties are
not related and there is no conflict in the marketplace.” TMEP 1402.03(d); In re Linkvest S.A., 24
U.S.P.Q.2d 1716 (T.T.A.B. 1992). Given the prevalence of computer programs and the degree of
specialization of such programs, there is a commercial compartmentalization of the marketplace with
regard to software that mitigates the possibility that the same class of consumers will come into contact
with the goods of the respective parties under circumstances likely to cause confusion.

Registration ‘852 identifies its goods as “ computer software for connecting, managing, updating and
securing mobile devices as well as wireless synchronization of personal information between mobile
devices and services” in Class 9 as well as related communications synchronization services in Class 38.
In this regard the Registrant’s software and related services are specifically for synchronization of mobile
devices and therefore perform distinct and unrelated functions from that of Applicant’s goods.
Applicant’s software is “ creating collaborative computing solutions between computer applications and
computer systems, collaboration between enterprises through computer tools, for managing secured file
transfers, managing computerized business process, for creating secured electronic information
interchange platforms, for managing exchanges between enterprises, for supervising activities of
enterprises by monitoring computerized information, for monitoring the enterprise value chain data, for
monitoring the supply chain data, and for accelerating accounting integration, all in the fields of
telecommunications, Consumer Packaged Goods, Retail store services, Transport and logistic services,
Government contract services, Manufacturing and Financial services for managing exchanges between
government organizations, private and public companies and financial services institutions” . Whereas
the goods and services offered under Registration ‘852 are used by individuals who are synchronizing
their mobile devices, the goods and services offered by Applicant are for use by businesses, designed to
increase business processes. The respective goods and services therefore serve very distinct purposes and
are marketed to different classes of consumers. Under the Trademark Manual of Examining Procedure, it
is improper to refuse registration of the instant application based on Registration ‘852 because both
include software and by extension the related services. TMEP 1402.03(d). The specific applications of
the software offered by the respective parties are distinct and unrelated. Given the compartmentalization
of the software marketplace, the specificity with which the respective parties identify their goods, and the
common usage of “SYNCHRO” in Class 9, consumer confusion is highly unlikely.

CONCLUSION

In light of the foregoing discussion and considerations, the Applicant respectfully submits that maintaining
the Section 2(d) refusal in this instance would serve to establish a monopoly for the cited registrants in an
overly broad channel of trade. The result of the Examining Attorney’s 2(d) refusal to register the
Applicant’s mark is to extend protection of Registrants’ marks over all goods and services featuring “a
variety of computer, computer related, communications and telecommunications goods and services.”
The goods and services of the respective parties are expressly named, serve specialized functions, and the
fields in which the goods and services are offered are explicitly identified; the cited registrations do not in
fact include the same software applications specified in the application. Refusing to register the
Applicant’s mark in Classes 9 and 38 based on the cited registrations serves to impermissibly expand the
scope of these registrations. If the Registrants sought protection for goods and services identified in the
application, as amended, such would have been included in the registrations. To extend protection of
Registrants’ mark to include all items related to computers, communications or telecommunications
improperly expands the scope of protection afforded by the Lanham Act.

While the Lanham Act does protect a senior user’s reasonable zone of business expansion from junior use
of a mark, such is not the case where the goods at issue differ in non-trivial respects and share only
minimal areas of competing use. Vitarroz Corp. v. Borden, Inc., 209 U.S.P.Q. 969, 975-976 (2nd Cir.
1981) (no likelihood of confusion between BRAVOS for tortilla chips and BRAVO’S for crackers). As
discussed above, the differences between the respective parties’ goods and services are not trivial and are
readily perceptible. The respective goods serve unique and specialized functions. There is no overlap in
their areas of use, or in the prospective purchasers thereof. The Vitarroz court acknowledged its
disapproval of the previously existing rule granting a “premonitory lien” on a “future” or “adjacent”
market, attributing such as a “great injustice.” Id. at 975 n. 4. The analysis property takes into account
the nature of the products and the structure of the market in which those products are placed. Id. at 975.

Given the significant differences between the goods and services with which the parties’ marks are used,
it cannot be said that confusion is more than merely “possible.” Considering the totality of the
circumstances in the instant application, it cannot be said that the threshold of “probability” is reached in
this case. The Applicant therefore submits that consumer confusion is not likely, and respectfully requests
that the Applicant’s mark be placed upon the Principal Register.

In view of the amendments and remarks set forth herein, and in further view of the fact that a search of the
Office records found no similar registered or pending mark which would bar registration under Trademark
Act Section 2(d), 15 U.S.C. §1052(d), Applicant believes that the Office Action has been fully responded
to and believes the application is in condition for registration. It is respectfully requested that the
Examining Attorney reconsider the refusal to register and pass this application to registration on the
Principal Register.

In the event the Examining Attorney has any queries regarding the instantly submitted amendments and
remarks, Applicant’s attorney respectfully requests the courtesy of a telephone conference to discuss any
matters in need of attention.

[1] The Applicant does not concede that its goods and services are related to the offerings of any of the cited registrations.

Original PDF file:
PE_121575983-151556732_._25J4002.PDF
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Original PDF file:
PE_121575983-151556732_._25J4032.PDF
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Pending File36
The referenced serial number(s) 78724025 has/have now registered. The applicant hereby requests
removal of this application from suspension, for consideration by the examining attorney of whether any
likelihood of confusion under Section 2(d) of the Trademark Act exists.

FOREIGN REGISTRATION
The applicant herein submits a digitized image of a copy, a certification, or a certified copy of a
registration in the applicant’s country of origin showing that the mark has been registered in that country,
and that the registration is in full force and effect. If the foreign registration is not in English, an English
translation thereof is being submitted. The applicant hereby request removal of this application from
suspension for further action by the examining attorney.

The applicant requests that the examining attorney delete the Section 1(b) basis for the goods and/or
services that the foreign registration submitted herewith covers, IF the Section 44(e) basis is accepted for
those goods and/or services.

Filing Basis: Section 44(e), Based on Foreign Registration: A copy of France registration number
063439574 registered 07/07/2006, with a renewal date of __________ and an expiration date of
__________ , and translation thereof (if appropriate), is attached in accordance with 15 U.S.C. Section
1126(e), as amended.
Original PDF file:
FR_121575983-151556732_._25J4572.PDF
Converted PDF file(s) (5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

SIGNATURE(S)
Response Suspension Inquiry Signature
Signature: /Michelle P. Ciotola/ Date: 10/01/2008
Signatory’s Name: Michelle P. Ciotola
Signatory’s Position: Attorney of Record, CT and NY bar member

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 applicant’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 applicant in
this matter: (1) the applicant 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 applicant has filed a power of attorney appointing him/her in this matter; or (4) the
applicant’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.

Serial Number: 77046303
Internet Transmission Date: Wed Oct 01 15:29:21 EDT 2008
TEAS Stamp: USPTO/RSI-12.157.59.83-20081001152921982
571-77046303-43072f8fdc35ed46ecf963d266e
be0a67a-N/A-N/A-20081001151556732266