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RESPONSE TO OFFICE ACTION

ISSUE/MAILING DATE

: 01/08/2009

The applicant has reviewed the referenced refusals for the initial application and determined the following arguments against refusal:

PRELIMINARY DRAWING AMENDMENT

The proposed amendment of the mark is unacceptable because it would materially alter the essence or character of the mark.

Applicant is in agreement and therefore original drawing is acceptable and remains the drawing of record.

DESCRIPTIVENESS REFUSAL

Applicant carefully examined the attorneys refusal for registration on the Principal Registration, and contends with Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq. with the following: The mark "Search Engine Optimization," as defined; "Marketing Services in the Field of Computers in the Nature of Providing Marketing Services for the Benefit of others by compiling advertising campaigns, promotional services, and consulting for customers," does not describe an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and or/ services that should prevent registration. The mark "Search Engine Optimization," as defined; "Marketing Services in the Field of Computers in the Nature of Providing Marketing Services for the Benefit of others by compiling advertising campaigns, promotional services, and consulting for customers," does not describe an intended user in particular, especially in relation to Search Engine Optimization; currently known and user defined as a process. Applicant’s definition is a service definition for the mark "Search Engine Optimization," and refutes furthermore "others," as being broad enough in Applicants definition to not inhibit registration. "Others," is broad enough as defined to not narrow down a particular demographic of a particular, "user."

Furthermore, the determination of whether a mark is merely descriptive is considered in relation to the identified goods and not in the abstract. The identified goods do not exist, the mark is service based. The difference between goods and services is material and immaterial. Therefore there is no goods to be considered to merit determination for refusal on this ground alone. As attached in the refusal were printouts from various websites demonstrating, the term "search engine optimization" and being used to describe the process. Applicant emphasizes here at the significant point of interest being the known user definition that exists for "search engine optimization," currently as a process not a service.

When the reviewing attorney is considering the proposed mark in relation to the goods, it is clear the applicant’s marketing services differ in every characteristic to the "goods," or "process," of any aspect of "search engine optimization" as currently being understood. Respectfully, the reviewing attorney incorrectly defines applicants marketing services as "a means of ensuring that a business webpage is accessible to search engines and is focused in ways that help improve the chance they will be discovered." The reviewing attorney in other words states, "The proposed mark describes both the use and function of the applicant’s marketing services." The applicant

again brings to the attention the correct service definition of the mark "search engine optimization," as; "Marketing Services in the Field of Computers in the Nature of Providing Marketing Services for the Benefit of others by compiling advertising campaigns, promotional services, and consulting for customers." This definition of the mark differs drastically from the

assumed service definition of the reviewing attorney. Furthermore applicant brings to attention that even if these service definitions somehow still seem to be the same, it does not in any way merit such refusal. Search Engine Optimization as currently understood to the general public as being a process. Both definitions from applicant and the reviewing attorney are service based. The difference between a service and a process is the distinguishing factor when reviewing Applicants application. Printouts of articles downloaded from the Internet are admissible as evidence of information available to the general public. In other words, these printouts demonstrate the way in which a term is being used by the public. Applicant is fully aware of such use and brings to the attention the general use of the public being currently in reference to a "search engine optimization" process. A search engine optimization process also being user defined. The reviewing attorney must understand there is currently no credible definition with any official English linguistic value found anywhere defining search engine optimization as a service. Defining search engine optimization at all. Therefore applicant relies only on what is available currently to be user created definitions online as a source for such findings of what search engine optimization is. Furthermore every unofficial user based definition online still remains process defined. With these findings it is evident nothing should bar registration for applicants’ service mark; "search engine optimization," as defined in application 77509514. The applicants mark is registerable and the applicant brings to attention the composite creating a unitary mark with a separate nondescriptive meaning in entirety. Again the applicant brings up the merits of determination being the difference of a service compared to a process. If there were a mere combination of descriptive words that existed, it is understood this alone does not automatically create a new non descriptive word or phrase. Since applicants mark does not have any descriptive elements to the service definition for the mark "Search Engine Optimization," a new and different commercial impression is created. Furthermore the service mark does impart an incongruous meaning from the original known user defined process definitions. In this case applicant brings to the attention the difference between process and service as being the "incongruity," factor. No imagination is required to understand the differences between a service and a process. On the other hand imagination is required to understand the nature of Applicants services. Therefore applicants mark is not merely descriptive and fully capable of being registered.

The applied-for mark has been refused registration on the Principal Register. Applicant is responding to the refusal by submitting evidence and arguments in support of registration and currently does not seek registration on the Supplemental Register or feel the need to do so at this time

The reviewing attorney should note the following additional grounds for registration:

LIKELIHOOD OF CONFUSION REFUSAL

The examining attorney incorrectly refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), reviewing attorney states "because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 3518607 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq." Applicant brings to attention §1052(d), §1052(f), §2.38 Use by predecessor or by related companies, and §5 (15 U.S.C. § 1055). Use by related companies: §1052 (d) Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; §1052 (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. § 2.38 Use by predecessor or by related companies. (a) If the first use of the mark was by a predecessor in title or by a related company (sections 5 and 45 of the Act), and the use inures to the benefit of the applicant, the dates of first use (§§ 2.34(a)(1)(ii) and (iii)) may be asserted with a statement that first use was by the predecessor in title or by the related company, as appropriate. (b) If the mark is not in fact being used by the applicant but is being used by one or more related companies whose use inures to the benefit of the applicant under § 5 of the Act, such facts must be indicated in the application. § 5 (15 U.S.C. § 1055). Use by related companies

Where a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant or applicant for registration, and such use shall not affect the validity of such mark or of its registration, provided such mark is not used in such manner as to deceive the public. If first use of a mark by a person

is controlled by the registrant or applicant for registration of the mark with respect to the nature and quality of the goods or services, such first use shall inure to the benefit of the registrant or applicant, as the case may be. The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.

DISSIMILARITY OF THE MARKS

Applicant is seeking registration of the mark SEARCH ENGINE OPTIMIZATION, and makes claims to the entire connotation as compared to the registrant’s mark which is SEARCH ENGINE OPTIMIZATION ENGINE which only makes claims to the ladder part being; "optimization engine." In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. None of these elements exist and nothing exists sufficient to find a likelihood of confusion. The marks differ completely given the following circumstances.

Meaning Search Engine Optimization Engine: Providing on-line non-downloadable computer search engine software. Search Engine Optimization: Marketing Services in the Field of Computers in the Nature of Providing Marketing Services for the Benefit of others by compiling advertising campaigns, promotional services, and consulting for customers.

Applicant again points out the claims being made by registrant to "Optimization Engine." A meaning of optimization being defined as: the fact of optimizing; making the best of anything, and a meaning of engine as: any mechanical contrivance. Claims a registrant made in reference and in conjunction to the unclaimed key word "Search Engine." If anything, this would be descriptive of the given definition of this registrant being: Providing on-line non-downloadable computer search engine software. This definition by registrant having clearly something to do with Search Engines it is no wonder why search engine is not claimed. The differences from applicant being compared to the registrants mark is; clearly being a material product available for the public to use, to immaterial services provided for the public to utilize. Registrants’ product differs in every way comparable to the service definition of applicant. Comparable notations being; material from immaterial, using compared to utilizing, claims of Search Engine Optimization compared to Optimization Engine, process compared to service, and an end compared to no end to the user.

Connotation The connotation in the two definitions can be clearly seen as being radically different. When looking close at the differences between what is claimed in the marks and understanding how the two travel in different channels, have different meanings, suggest different trades, emit different commercial impression, attract different users, and all the other facets of distinction that make the two completely separate are weighed, it is certain there are no similarities.

Appearance What may appear at first to have similar appearance in actuality differs just as radical as every other point when reviewing for likelihood of confusion. The mere addition of a term to a registered mark does not obviate the similarity between the marks nor does it overcome a likelihood of confusion. In other words, the mere addition of the term "engine" does not obviate the similarity between the marks. What do obviate the similarity of the marks are the claims being made. When researching these differences it is clear the appearances of what is claimed obviates the two drastically. Sound Just like the appearance similarly can be said about the sound. Again when researching the differences it is clear the sound of what is claimed obviates the two drastically as well.

Commercial Impression

The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source. For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The question is whether the marks create the same overall impression. The focus is on the recollection of the average purchaser who normally retains a general feel rather than a specific impression of trademarks.

Since the marks do not create the same overall impression. The average purchaser should not be underestimated. The test is what is claimed and the facts of what is currently understood. The average purchaser who normally retains a general impression already exists. This has been proven by user defined process definitions of "search engine optimization" already. Currently the user definition is known as a process. The registrant does not state a claim to "search engine," but "optimization," with the additional claim and word being "engine." The overall impression exists already, with the overwhelming evidence still being understood as process. The registrant defines their mark as: Providing on-line non-downloadable computer search engine software, which when using has a beginning and an end, clearly proving process. The overall impression can easily be seen from registrant as a process. Applicants mark is a service mark and immaterial with no end. Applicant’s definition is service based and clearly denotes services that change with the times. Services defined narrow enough to not be broad, but open enough to have no ending.

DISSIMILARITY OF THE SERVICES

Applicant uses the proposed mark on "marketing services in the field of computers in the nature of providing marketing services for the benefit of others by compiling advertising campaigns, promotional services, and consulting for customers," as compared to the registrant’s mark which is "providing on-line non-downloadable computer search engine software." The services of the party differ dramatically. Registrant has a process with a beginning and an end to a user. The applicant has a service and has no end to the user. Since both parties are not related in any manner by this, and the conditions surrounding the parties are such that they would not be encountered by the same purchasers, especially under circumstances that differ so dramatically, they don’t give rise to the mistaken belief that the goods and/or services come from a common source.

Although the recitations of services are identified by only the applicant, a review of both parties’ websites clearly reveals that the services of applicant differ from registrant dramatically. Registrant provides software when being used that has a beginning and an end to the user clearly showing process. The reviewing attorney may be under the impression applicant is involved in search engine marketing. Nowhere on the entire website does search engine marketing come up in the content, but even if search engine marketing later is added to the website it should not bar registration because search engine marketing is a service. Registrant’s software provides a process. It is apparent that the applicant’s marketing services and the registrant’s search engine software are not related, from seeing one having an end to a user and one having no end to a user. Process compared to service. The reviewing attorney closes with a concern not only to prevent buyer confusion as to the source of the goods/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. Respectfully, the reviewing attorney errors in assuming the applicant is a newcomer. The applicant’s first use by predecessor and related companies outdates first use stated by registrant for more than five years. Even though registration should be no question, if there is any please see above referenced concurrent use §1052.

The examining attorney has refused registration, the applicant is responding to the refusal to register by submitting evidence and arguments in support of registration.

INFORMALITIES

Applicant chooses to respond to the refusal to register, the applicant also responds to the following informalities.

RECITATION OF SERVICES

The identification of services may be indefinite because they are services, but they do not need to be clarified because it is clearly written and the identification of services is specific, definite, clear, accurate, and concise. Applicant has in the past been involved in another application approved for publication for the same definition. The term "SEO" another known term for search engine optimization, and the same congruency in regards to the definition should apply here. Applicant may adopt the following identification, if the reviewing attorney decides not in the favor of the other reviewing attorney in prior case 77171330. Applicant will await reviewing attorneys’ decision and consider in the mean time the definition given for applicant being: Providing advertising, marketing and promotional services, namely, development of advertising campaigns for use on computers and related consulting.

REQUEST FOR INFORMATION The above suggested amendment is currently not acceptable although the applicant has submitted samples of advertisements or promotional materials that fit both service definitions. SPECIMEN

The previous substitute specimen may not be acceptable, but is a historical advertisement currently online and has been continuously online since the date of the specimen’s appearance. It shows the applied for mark in actual use. When reading the advertisement with the highlighted words "search engine optimization," it should be notated in having a connection to a service. The addresses advertised online are seen to be owned by Modern Consulting Solutions. They are forwarded when visiting ascella.net and tosonoe875.com to another address and this of course then leads customers to SEO and services with the mark; "search engine optimization," on modernconsultingsolutions.com This specimen clearly shows continuous use and prior use by predecessors. Applicant includes links with this historical advertisement below that should now be acceptable to USPTO with an attached website printout of the "first known use" historical advertisement.

First use was by the predecessor in title or by the related company. Therefore, applicant submits the following:

(1)

http://groups.google.com/group/alt.current-events.net-abuse.spam/browse_thread/thread/6fee2777dc17b8ab/3858bff94e56aff3?lnk=st&q=%22search+engine+optimization%22&rnum=1#3858bff94e56aff3

(2) Attached picture of specimen.

The domain name authenticated sender being Tosonoe875.com and Ascella.net are currently owned business addresses forwarded and operated now by modernconsultingsolutions.com. "

The substitute specimen was in use in commerce at least as early as the filing date of the application." Note: The reviewing attorney should note that the original specimen of record should be acceptable since the proposed mark appears in an advertisement and does show the term "search engine optimization" being used in relation to services. This is the historical first known use of search engine optimization used by predecessors now in relation to MCS being the new owner of the referenced domain titles. A service definition now can be officially made for search engine optimization and the intellectual industrial property rights reside with Applicant.

DECLARATION

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

Jason Gambert, President MCS Respectfully submitted this day: Thursday, January 08, 2009

ENTITY

Name of sole proprietorship: Modern Consulting Solutions/MCS an Arizona sole proprietorship registered to do business. A business composed of Jason Gambert, a citizen of the United States of America.

SEO Trademark

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