PTO Four‘ 14).?!) {Rev 3;Z<€.*t)-’)
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`Request for Reconsideration after Final Action
`
`Input Field
`
`The table below presents the data as entered.
`Entered
`
`
`79058324
`_...
`. ...........7_._.-m .-.---,.. ....M__..--..-_...W..mw_--..___....-l...
`SERIAL NUMBER
`
`
`
`LAW OFFICE
`ASSIGNED
`
`LAW OFFICE 113
`
`
`
`1
`
`It
`1
`1
`
`3 12
`
`MARK SECTION (no change)
`iARGUMENT(S)
`
`“
`
`; Applicant is submitting this Request for Reconsideration from Final Refusal concurrently with an
`appeal to the Trademark Trial and Appeals Board (TTAB).
`
`The Examining Attorney has maintained her refusal to register Applicant’s mark because of SAI®
`(Reg. No. 3,178,053) for “litigation consultancy”, owned by Statistical Analysis, Inc. Applicant
`respectfully maintains its position that there is no likelihood of confusion between SAI for “litigation
`1
`1
`consultancy” and SAI GLOBAL, in light of further amendments to its descriptions of goods and
`gX
`ii services, and for the reasons given below.
`,
`In re E.I. Du Pont de Nemours &
`The DuPont factors govern the analysis of likelihood of confusion.
`_C_I_g._, 476 F.2d 1357 (C.C.P.A 1973). Two of the thirteen DuPont factors—similarity of the appearance of?
`the marks and similarity of the goods and services——have been cited in the Examining Attomey’s refusal g
`; to register Applicant’s mark. However, Applicant asserts that a third DuPont factor is not only
`i relevant, but should be given significant weight in the analysis, and hereby provides additional evidence E
`i in support of its position.
`
`E 1
`
`2
`
`The paramount factors used to analyze whether likelihood of confusion exists between Applicant’s and
`Registrant’s marks should be the conditions under which and the buyers to whom sales are made.
`Registrant Statistical Analysis, Inc. claims “litigation consultancy” in its registration. Litigation
`consultants help attorneys prepare for litigation. They may work with attorneys to develop overall case
`strategies and tactics, assist in preparing courtroom exhibits, perform jury analysis, conduct mock trials,
`j manage or examine documents, and provide expert testimony and analysis in technical areas outside the
`; scope of expertise of attorneys.
`(See Exhibits A-1 through A-3) As a litigation consultant, Registrant
`, Statistical Analysis, Inc. offers quantitative analysis and expert witness support to law firms who are
`3 involved in litigation. To this end, it provides expert witnesses for analysis, depositions, and court
`E testimony involving statistical issues of construction defects, discrimination, personal injury, fraud,
`patent infringement, defective product claims, and a variety of economic issues. It also conducts
`i surveys regarding consumer satisfaction, likelihood ofconfusion, change ofvenue, product interest,
`' political opinion, and name bias, among others. It provides consulting support for studies of social and
`
`environmental conditions and the probable effects of changes in such conditions. Finally, it has
`
`

`
`i produced studies on a variety of military—related matters. (see Exhibits B-1 through B-9)
`
`However, because “litigation” necessarily involves legal representation, it therefore follows that the
`market for Registrant’s claimed “litigation consultancy” services will be lawyers and law firms
`exclusively. Indeed, examination of Registrant’s client list on its website indicates that almost 100% of
`them are attorneys and law firms (see Exhibit B-9). On the other hand, Applicant’s clients include
`industrial businesses ranging from large global corporations to single site organizations for which it
`provides information services and solutions for managing risk, support for complying with
`f governmental and industry mandates and guidelines, and facilitating business improvement (see Exhibit
`C-1). Its services are not directed at lawyers, law firms, or entities being represented by lawyers.
`
`l Applicant’s and Registrant’s customers are completely distinct markets, making consumer confusion
`‘ highly unlikely, if not impossible. Moreover, Applicant’s and Registrant’s consumers are both
`sophisticated, and are apt to exercise significant care and deliberation in making their purchasing
`decisions. Because of this, any similarity in the marks themselves is significantly outweighed by
`consumer sophistication, their deliberation in making a purchasing decision, and the fact that Applicant
`and Registrant serve completely distinct markets. Likelihood of confusion between Applicant and
`Registrant’s marks is therefore exceedingly improbable under these conditions.
`
`l E EE E
`
`Applicant also respectfully disagrees with Examiner’s position that there is overlap in the scope of
`i services encompassed within “litigation consulting”. Specifically, Applicant respectfully disagrees
`; with the Examining Attomey’s assertion that its advisory and consultancy services in Class 45 would
`l include litigation advisory and consultancy services relating to various laws and regulations, because
`this would amount to the unlicensed practice of law. As Applicant has argued above, “litigation
`consultancy” encompasses support services that are explicitly restricted to litigation. However,
`litigation consultants do not offer advice regarding laws, regulations, or regulatory compliance to its
`clients. Advising clients who are involved in litigation regarding laws and regulations is properly the
`province of an attorney or a law firm, not the litigation consultant. To that extent, Registrant is
`prohibited by law from offering either legal or regilatory advice to clients involved in litigation.
`Rather, litigation consultants offer expert advice and technical support to attorneys and law firms in
`areas other than laws and regulations. Moreover, Applicant has amended its description of goods and
`. services to clarify that, while it reviews and advises clients regarding government and industry
`3 mandated best practices and standards, this does not amount to providing legal services or rendering
`legal advice, as such terms are understood in the United States. Applicant provides advice regarding
`industrial laws, regulations, and other government and industry mandated best practices and standards in
`the same manner that an accounting firm would advise business clients regarding tax and accounting
`’ issues.
`
`Examiner cites similarity of the marks as another reason for refusing registration. While acknowledging
`that SAI is a common element of both marks, and that the word element in a composite mark is more
`likely to be impressed upon a purchaser’s memory, Applicant asserts that the SAI® and SAI GLOBAL
`are nevertheless distinguishable and that any similarity in the word element is significantly outweighed
`by the conditions under which purchases of goods and services are made. A consumer visiting
`Registrant’s homepage www.stat-analysis.com quickly learns that SAI stands for “Statistical Analysis,
`é Inc.” The consumer’s mental association with statistics is further reinforced by the blue bell curve
`1 design element accompanying the word element.
`
`On the other hand, Applicant’s mark is derived from its corporate name, Standards Australia
`
`

`
`3 International, Ltd. (see Exhibit C-2). Applicant agrees with Examiner that although the disclaimed term
`“GLOBAL” is given less distinguishing significance, it cannot be ignored entirely. Applicant asserts
`’ that the word GLOBAL does serve to distinguish the marks because the disclaimed term suggests to the
`1 consumer the global nature of applicant’s operations. Thus, consumers who compare Registrant’s logo
`‘ with Applicant’s word mark would likely generate an association with statistical analysis from the
`former, and an association with a multi-national company from the latter.
`
`3 l
`
`Finally, Applicant has further amended its description of goods and services in an attempt to address the
`Examining Attomey’s objections based on similarity of certain services. Specifically, although
`Applicant has argued above that there is no conflict between it and Registrant’s goods and services as
`they relate to “law”, “regulations”, and “regulatory compliance” as a field or subject matter, it has
`broken out these specific goods and services in the event of their final rejection by the Examining
`§ Attorney and the TTAB, in order to preserve any remaining non-objectionable fields or subject matter.
`Although no one DuPont factor is dispositive in determining whether there is a likelihood of confusion,
`Examiner has based her rejection primarily on the similarity of the marks themselves and similarity of the
`goods and services. Applicant respectfully submits, however, that conditions under which and the buyers to
`whom‘ sales are made should weigh very heavily in the analysis. Likelihood of confusion does not exist
`between Applicant’s and Registrant’s marks because of the distinct markets in which they operate, the
`sophistication of their customers, and the care and deliberation used by their customers in making contracting
`and purchasing decisions. Applicant respectfully urges the Examining Attorney, in light of its f11rther
`amendments, arguments, and evidence submitted herewith, to reconsider and withdraw her final rejection, and
`approve the mark for publication at the earliest opportunity.
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`litigation consultants; Exhibits B-l through B-9: excerpts from Registrant
`Statistical Analysis, Inc.'s website Exhibits C-1 through C-2: excerpts from
`Applicant SAI Global Ltd's website
`GOODS AND/OR SERVICES SECTION (0(I§I(Current)
`1
`
`INTERNATIONAL
`CLASS
`
`009
`
`
`
`DESCRIPTION
`Downloadable on-line electronic publications in the field of business, business systems, auditing,
`finance, law, business improvement, environmental issues, education and training, regulation, regilatory
`compliance, quality management, risk management, ethics, health and safety, information security,
`quality systems and standards, technical information about military parts, logistics, metal grades,
`5 properties, suppliers and manufacturers, non-metallic materials, products and manufacturers, and
`3 common intelligence; software for the management of standards and technical information; pre-
`i recorded CDs, DVDs and
`other discs and recording media, namely, optical discs and cassette tapes, all
`in the field of business, finance, law, business improvement, environmental issues, education and
`
`training, regilation, regulatory compliance, quality management, risk management, ethics, health and
`I safety, information security, quality systems and standards, technical information about military parts,
`logistics, metal grades, properties, suppliers and manufacturers, non-metallic materials, products and
`manufacturers, and common intelligence; pre-recorded CDs, DVDs and other discs and recording media
`namely optical discs and cassette tapes, all containing information, databases and updates relating to
`formation about business, finance, law, business improvement, environmental
`standards and technical in
`1 issues, education and training, regulation, regulatory compliance, quality management, risk
`l
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`managemen
`, information about military parts, logistics, metal grades, properties, suppliers and manufacturers, non-
`; metallic materials, products and manufacturers, and common intelligence
`EOODS AND/OR
`SECTION (009If;roposed)
`
`INTERNATIONAL
`CLASS
`
`009
`
`ctronic publications in the nature of magazines, books, articles, guides,
`
`i DESCRIPTION
`Downloadable on-line ele
`
`i i
`
`

`
`pamphlets, newsletters, journals, reports, leaflets, and periodicals in the field of business, finance,
`business improvement, environmental issues, education and training, quality management, risk
`management, ethics, health and safety, information security, quality systems and standards, technical
`information about military parts and logistical information, metal grades, properties, suppliers and
`manufacturers, non-metallic materials, products and manufacturers, and common intelligence;
`downloadable on-line electronic publications in the nature of magazines, books, articles, guides,
`1 pamphlets, newsletters, journals, reports, leaflets, and periodicals in the field of law; downloadable on-
`line electronic publications in the nature of magazines, books, articles, guides, pamphlets, newsletters,
`I journals, reports, leaflets, and periodicals in the field of regulation and regulatory compliance; software
`for the management of standards and technical information; pre-recorded CDs, DVDs and other discs
`3 and recording media namely optical discs and cassette tapes, all in the field of business, finance,
`‘ business improvement, environmental issues, education and training, quality management, risk
`management, ethics, health and safety, information security, quality systems and standards, technical
`information about military parts and logistical information, metal grades, properties, suppliers and
`manufacturers, non-metallic materials, products and manufacturers, and common intelligence; pre-
`recorded CDs, DVDs and other discs and recording media namely optical discs and cassette tapes, all in
`the field of law; pre-recorded CDs, DVDs and other discs and recording media namely optical discs and
`cassette tapes, all in the field of regulation and regilatory compliance; pre-recorded CDs, DVDs and
`other discs and recording media namely optical discs and cassette tapes, all containing information,
`databases and updates relating to standards and technical information about business, finance, business
`improvement, environmental issues, education and training, quality management, risk management,
`l ethics, health and safety, information security, quality systems and standards, technical information
`about military parts and logistical information, metal grades, properties, suppliers and manufacturers,
`non-metallic materials, products and manufacturers, and common intelligence; pre-recorded CDs,
`DVDs and other discs and recording media namely optical discs and cassette tapes, all containing
`information, databases and updates relating to law; pre-recorded CDs, DVDs and other discs and
`
`E
`
`lolé
`
`E recordingmedianamelyoptical discs andcassettetapes, all containing information, databasesand
`updates relating to standards and technical information about regulation and regulatory compliance.
`{GOODS AND/OR SERVICES SECTION (016-)flfcurrent—)
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`Printed publications in the natur of magazines, guides, leaflets, pamphlets, instructional and teaching
`materials, newsletters, books, journals, and reports, in the field of business, finance, law, business
`improvement, environmental issues, education and training, regulation, regulatory compliance, quality
`management, risk management, ethics, health and safety, information security, quality systems and
`standards, technical information about military parts, logistics, metal grades, properties, suppliers and
`i manufacturers, non-metallic materials, products and manufacturers, and common intelligence;
`i educational materials in printed form in the field of business, finance, law, business improvement,
`environmental issues, education and training, regulation, regulatory compliance, quality management,
`f risk management, ethics, health and safety, information security, quality systems and standards,
`g technical information about military parts, logistics, metal grades, properties, suppliers and
`manufacturers, non-metallic materials, products and manufacturers, and common intelligence
`GOODS AND/OR SERVICES SECTION (016)(pi'oposed)
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`
`I
`
`1 CLASS
`DESCRIPTION‘
`
`Printed publications in the nature of magazines, guides, leaflets, pamphlets, instructional and teaching
`materials, newsletters, books, journals and reports, in the field of business, finance, business
`improvement, environmental issues, education and training, quality management, risk management,
`ethics, health and safety, information security, quality systems and standards, technical information
`about military parts and logistical information, metal grades, properties, suppliers and manufacturers,
`. non-metallic materials, products and manufacturers, and common intelligence; printed publications in
`1 the nature of magazines, guides, leaflets, pamphlets, instructional and teaching materials, newsletters,
`§ books, journals and reports, in the field of law; printed publications in the nature of magazines, guides,
`leaflets, pamphlets, instructional and teaching materials, newsletters, books, journals and reports, in the
`3 field of regulation and regulatory compliance; educational materials in printed form in the field of
`; business, finance, business improvement, environmental issues, education and training, quality
`l management, risk management, ethics, health and safety, information security, quality systems and
`l standards, technical information about militaiy parts and logistical information, metal grades, properties,
`suppliers and manufacturers, non-metallic materials, products and manufacturers, and common
`intelligence; educational materials in printed form in the field of law; educational materials in printed
`
`i form in the field ofregulation and regulatory compliance.
`GOODS AND/OR SERVICES SECTION (03S)(current)
`E INTERNATIONAL
`035
`CLASS
`‘
`
`lr
`
`} DESCRIPTION
`i Computerized database management, compilation and systemization of information into computer
`databases; compiling computerized databases of standards; compiling computerized databases; online
`databases featuring business, finance, law, business improvement, environmental issues, education and
`training, regulation, regulatory compliance, quality management, risk management, ethics, health and
`safety, information security, quality systems and standards, technical information about military parts,
`logistics, metal grades, properties, suppliers and manufacturers, non-metallic materials, products and
`manufacturers, and common intelligence
`
` GOODS AND/OR SERVICES SECTION (035)(proposed)
`INTERNATIONAL if
`if
`
`I3
`
`3
`
`5035
`
`
`
`information, business improvement and business risk management.
`
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`Compilation and systemization of information into computer databases; compiling computerized
`databases ofstandards; compiling computerized databases; online databases featuring business
`
`
`GOODS AND/OR SERVICES SECTION (04l)(current)
`
`
`
`INTERNATIONAL
`CLASS
`
`: DESCRIPTION
`
`041
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`Education, namely, providing courses, seminars, workshops and classes in the field of business,
`business systems, auditing, finance, law, business improvement, environmental issues, education and
`5 training, regulation, regulatory compliance, quality management, risk management, ethics, health and
`safety, information security, quality systems and standards, technical information about military parts,
`logistics, metal grades, properties, suppliers and manufacturers, non-metallic materials, products and
`manufacturers, and common intelligence; provision of training in the field of business, business
`systems, auditing, finance, law, business improvement, environmental issues, education and training,
`regulation, regulatory compliance, quality management, risk management, ethics, health and safety,
`information security, quality systems and standards, technical information about military parts, logistics,
`metal grades, properties, suppliers and manufacturers, non-metallic materials, products and
`manufacturers, and common intelligence; provision of on-line electronic non-downloadable publications
`from a global computer network relating to business, finance, law, business improvement,
`environmental issues, education and training, regulation, regulatory compliance, quality management,
`risk management, ethics, health and safety, information security, quality systems and standards,
`3 technical information about military parts, logistics, metal grades, properties, suppliers and
`manufacturers, non-metallic materials, products and manufacturers, and common intelligence; editorial
`services; library services; publication of instructional and teaching materials, namely, magazines,
`1 guides, leaflets, pamphlets, newsletters, books, journals and reports featuring standards and technical
`‘ information about business, finance, law, business improvement, environmental issues, education and
`training, regulation, regulatory compliance, quality management, risk management, ethics, health and
`safety, information security, quality systems and standards, technical information about military parts,
`i logistics, metal grades, properties, suppliers and manufacturers, non-metallic materials, products and
`I manufacturers, and common intelligence; educational services, namely, developing curricula for
`; educators in the nature of planning, development, implementation, and evaluation of learning solutions
`and training programs; provision of online e-leaming training courses in the field of business, finance,
`‘ law, business improvement, environmental issues, education and training, regulation, regilatory
`compliance, quality management, risk management, ethics, health and safety, information security,
`quality systems and standards, technical information about military parts, logistics, metal grades,
`properties, suppliers and manufacturers, non-metallic materials, products and manufacturers, and
`common intelligence; training and education services in the nature of courses, seminars, workshops and
`classes in relation to financial regulatory compliance, the protection of assets, business improvement
`and standards, fraud, financial crime, anti-money laundering, insider trading, conflicts of interest,
`; freedom of information, diversity, security awareness, competition and competition law, food,
`environmental health and safety, quality systems and standards, standards awareness and auditing,
`i information security, privacy, data protection and confidentiality; provision of training and education in
`3 the nature of courses, seminars, workshops and classes to address industry-specific risks in the
`; aerospace/defense, energy, financial services, government, healthcare, pharmaceutical and telecom/IT
`l sectors; providing quality assurance and quality control services in relation to education and training
`awards; publication of technical documents, namely, magazines, guides, leaflets, pamphlets,
`instructional and teaching materials, newsletters, books, journals and reports featuring technical
`
`iinformationaboutmilitarypartsandlogistics;publicationofinstructionalandteachingmaterials,
`
`namely magazines, guides, leaflets, pamphlets, newsletters, books, journals and reports featuring metal
`grades, properties, suppliers and manufacturers, and non-metallic materials, products and
`manufacturers, logistical information and common intelligence; education information, advisory and
`consultancy services
`
`v
`
`l i
`
`

`
`I GOODS AND/OR SERVICES SECTION (041)(proposed)
`rNrE1iNA'rroNAL
`041*mmmMW'-“Mm.”
`CLASS
`
`DESCRIPTION
`
`3 Education, namely, providing courses, seminars, workshops and classes in the field of business,
`1 business systems, auditing, finance, business improvement, environmental issues, education and
`training, quality management, risk management, ethics, health and safety, information security, quality
`systems and standards, technical information, military parts and logistical information, metal grades,
`properties, suppliers and manufacturers, non-metallic materials, products and manufacturers, and
`common intelligence; education, namely, providing courses, seminars, workshops and classes in the
`field of law; education, namely, providing courses, seminars, workshops and classes in the field of
`regulation and regulatory compliance; provision of training in the field of business, business systems,
`auditing, finance, business improvement, environmental issues, education and training, quality
`management, risk management, ethics, health and safety, information security, quality systems and
`standards, military parts and logistical information, metal grades, properties, suppliers and
`; manufacturers, non—metallic materials, products and manufacturers, and common intelligence; provision
`of training in the field of law; provision of training in the field of regulation and regulatory compliance;
`provision of on—line electronic non-downloadable publications in the nature of magazines, books,
`articles, guides, pamphlets, newsletters, journals, reports, leaflets, and periodicals from a global
`computer network relating to business, finance, business improvement, environmental issues, education
`and training, quality management, risk management, ethics, health and safety, information security,
`quality systems and standards, military parts and logistical information, metal grades, properties,
`suppliers and manufacturers, non-metallic materials, products and manufacturers, and common
`intelligence; provision of on-line electronic non-downloadable publications in the nature of magazines,
`books, articles, guides, pamphlets, newsletters, journals, reports, leaflets, and periodicals from a global
`computer network relating to law; provision of on-line electronic non-downloadable publications in the
`nature of magazines, books, articles, guides, pamphlets, newsletters, journals, reports, leaflets, and
`periodicals from a global computer network relating to regulation and regulatory compliance; editorial
`services, namely, written text editing; library services; publication of instructional and teaching
`materials, namely, magazines, guides, leaflets, pamphlets, newsletters, books, journals and reports
`l featuring standards and technical information about business, finance, business improvement,
`environmental issues, education and training, quality management, risk management, ethics, health and
`safety, information security, quality systems and standards, military parts and logistical information,
`metal grades, properties, suppliers and manufacturers, non-metallic materials, products and
`manufacturers, and common intelligence; publication of instructional and teaching materials, namely,
`magazines, guides, leaflets, pamphlets, newsletters, books, journals and reports featming standards and
`technical information about law; publication of instructional and teaching materials, namely, magazines,
`guides, leaflets, pamphlets, newsletters, books, journals and reports featuring standards and technical
`information about regulation and regulatory compliance; educational services, namely, developing
`: curricula for educators in the nature of planning, development, implementation, and evaluation of
`learning solutions and training programs; provision of online e-leaming training courses in the field of
`1 business, finance, business improvement, environmental issues, education and training, quality
`j management, risk management, ethics, health and safety, information security, quality systems and
`I standards, military parts and logistical information, metal grades, properties, suppliers and
`manufacturers, non-metallic materials, products and manufacturers, and common intelligence; provision
`; of online e-leaming training courses in the field of law; provision of online e-leaming training courses
`
`

`
`lt iil
`
`in the field of regulation and regulatory compliance; training and education services in the nature of
`courses, seminars, workshops and classes in relation to financial regulatory compliance, the protection
`' of assets, business improvement and standards, fraud, financial crime, anti-money laundering, insider
`trading, conflicts of interest, freedom of information, diversity, security awareness, competition and
`competition food, environmental health and safety, quality systems and standards, standards awareness
`and auditing, information security, privacy, data protection and confidentiality; provision of training and ?
`education in the nature of courses, seminars, workshops and classes to address industry-specific risks in
`the aerospace/defense, energy, financial services, government, healthcare, pharmaceutical and
`, telecom/IT sectors; publication of technical documents, namely,