Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 07/31/2017)
`
`Request for Reconsideration after Final Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`ARGUMENT(S)
`
`The table below presents the data as entered.
`
`Entered
`
`86774632
`
`LAW OFFICE 117
`
`https://tmng-al.uspto.gov/resting2/api/img/86774632/large
`
`ONECONNECT
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`This is in response to the Final Office Action dated February 8, 2017.  Applicant Panasonic Corporation of North America (“Applicant”) has
`carefully reviewed the Examining Attorney’s comments and respectfully requests that the Examining Attorney reconsider her final partial
`refusal to register Applicant’s service mark ONECONNECT (“Applicant’s Mark”) in light of the arguments submitted in response to the
`initial Office Action and the response to the Suspension Notice, as well as to the additional arguments submitted herewith.  In order to retain
`its rights, Applicant is simultaneously filing a Notice of Appeal to the Trademark Trial and Appeal Board. See TMEP § 715.04.
`
`1.  FURTHER AMENDMENT OF THE IDENTIFICATION OF SERVICES
`
`The Examining Attorney has stated that “[t]he amended identification of services fails to provide the subject of the information in Class 41.”  
`In particular, the Examining Attorney has found the clause “entertainment services, namely, providing information by means of mobile
`communications devices via a global computer network and wireless networks” should include field limitations indicating the subject matter
`of the information.  In response, Applicant hereby amends the identification of services in Class 41 to omit this clause, so that it will now read:
`
`Class 41 - Education services, namely, providing classes, seminars, workshops and courses of instruction in the field of science,
`energy, advertising, consumer electronics, transportation, medicine, health, fitness, sports, music, and design, advertising and
`communication and computer technology; providing courses of instruction in the field of science, energy, advertising, consumer
`electronics, transportation, medicine, health, fitness, sports, music and technology; educational training in the field of science, energy,
`advertising, consumer electronics, transportation, medicine, training in the field of physical fitness, music, and design, advertising,
`communication and computer technology; entertainment services, namely, providing live music concerts, providing continuing radio
`shows on the subject of entertainment and news and information; providing talk show and comedy shows broadcasts over television,
`radio and internet; production of radio or television shows; organizing community activities in the nature of sporting and cultural
`activities, contests and games in the field of science, energy, advertising, consumer electronics, transportation, medicine, health,
`fitness, sports, music and technology; publication of books, magazines and newspapers; production of television and radio shows and
`videos; film production; entertainment and educational services in the nature of competitions in the field of entertainment, education,
`culture, sports, and other non-business and non-commercial fields; organizing live exhibitions and conferences in the fields of science,
`energy, advertising, consumer electronics, transportation, medicine, health, fitness, sports, music and technology, for non-business and
`non-commercial purposes; providing online computer games and non-downloadable game software via a computer network.
`
`2.  DISCUSSION OF FINAL PARTIAL REFUSAL TO REGISTER APPLICANT’S MARK BASED ON SECTION 2(D) CITATION OF
`PRIOR REG. NO. 4,848,347
`
`The Examining Attorney has refused to register Applicant’s Mark ONECONNECT for certain applied-for services in Classes 35 and 38
`pursuant to Trademark Act § 2(d), 15 U.S.C. § 1052(d), on the grounds that it is likely to be confused with the mark ONE CONEXION in
`stylized and colored format as per Reg. No. 4,848,347 in the name of One Conexion, L.L.C. (“Registrant”).
`
` 
` 
` 
` 
` 
`

`

`As is discussed more fully below, Applicant respectfully submits that there is no likelihood of confusion between Applicant’s Mark and the
`Cited Mark due at least to:  (1) differences between the appearance, sound and connotation of the marks; (2) differences between the services;
`and (3) differences in the channels of trade.
`
`A.  THE RELEVANT TEST FOR LIKELIHOOD OF CONFUSION
`
`Whether there is a likelihood of confusion between marks under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), is determined by the
`two-part test set forth in In re E. I. du Pont de Nemours & Co., 177 USPQ 563 (C.C.P.A. 1973).  The test first requires an examination of the
`marks themselves for similarities in appearance, sound, connotation, and commercial impression; it then requires that the goods and services
`
`be examined to determine if they are related or if the activities surrounding their marketing are such that confusion is likely.  
`
`For the sake of brevity, Applicant will not reproduce, but instead hereby incorporates by reference, all of the arguments submitted in the July
`22, 2016 response to the initial Office Action and the December 13, 2016 response to the Suspension Notice.  Applicant here supplements its
`arguments with a discussion limited to several specific issues raised by the Examining Attorney in the Final Office Action.
`
`B.  APPLICANT’S MARK IS DIFFERENT FROM THE CITED MARK IN SOUND
`
`The Examining Attorney argues that there is no correct pronunciation of a mark and one cannot conclude that the marks will be pronounced
`differently.  This ignores the fact that the second part of the Cited Mark is in Spanish, and has a distinct and correct Spanish pronunciation, as
`was discussed in the December 13, 2016 response to the Suspension Notice. See also, https://translate.google.com/#es/en/conexion (cited in the
`Final Office Action). Under these circumstances, the cases cited by the Examining Attorney are all distinguishable because the marks at issue
`in those cases did not involve familiar foreign words with settled pronunciations, as is the case here. See Embarcadero Techs., Inc. v. RStudio,
`Inc., 105 USPQ2d 1825 (TTAB 2013) (regarding the marks ER/STUDIO and RSTUDIO); In re Viterra Inc., 101 USPQ2d 1905 (Fed. Cir.
`2012) (regarding the marks XCEED and X-SEED); In re The Belgrade Shoe Co., 162 USPQ 227 (C.C.P.A. 1969) (regarding the marks
`COL”EEJUNS” and COLLEGIENNE).
`
`C. APPLICANT’S SERVICES ARE DIFFERENT FROM REGISTRANT’S SERVICES
`
`Critically, the Examining Attorney has evaluated the relatedness of the services offered under the two marks based in part on a factual error. 
`In the Final Office Action, the Examining Attorney argues that “evidence from the applicant’s own website describe[es] the relatedness of
`the services.”   However, the Examining Attorney has erroneously identified Applicant’s website as http://www.oneconnect.ca.  In fact,
`Applicant is Panasonic Corporation of North America, and is not an owner or related company to the apparent owner of that website,
`OneConnect Services Inc., or its parent company Accelerated Connections Inc.  Accordingly, any inferences or conclusions drawn by the
`Examiner based on the assumption that these services are offered by Applicant must be discounted.
`
`In fact, Applicant’s Services offered under the ONECONNECT mark are markedly different from the services offered under the cited mark
`ONE CONEXION in stylized and colored format.  Applicant’s services offered under its ONECONNECT mark regard Applicant’s vehicle-
`centric marketing and content delivery platform that will enable automobile manufacturers to connect with drivers by various means. See, e.g.,
`Exhibit A hereto (press release regarding Applicant’s ONECONNECT mark); see also https://www.youtube.com/watch?v=SQct7rELzYE  
`(video regarding Applicant’s services, which cannot be attached because of file size).   In contrast, Registrant’s services regard bi-lingual call
`centers. See, e.g., Exhibit B hereto (printout of Registrant’s website located at http://www.oneconexion.com).
`
`Under the circumstances, Applicant respectfully submits that the Examining Attorney’s conclusion that some of the Applicant’s services are
`the same as some of the Registrant’s services is fatally flawed and must be reconsidered in light of the true facts, which will show them to be
`unrelated.
`
`D.  APPLICANT’S CHANNELS OF TRADE ARE DIFFERENT FROM REGISTRANT’S CHANNELS OF TRADE
`
`The Examining Attorney’s erroneous identification of Applicant’s services also affects her evaluation of the similarity in the channels of
`trade.
`
`In fact, Applicant’s channels of trade involve automobile manufacturers and consumers while registrant’s channels of trade involve those
`needing bi-lingual call centers.  The respective sets of services are unrelated and are unlikely to be marketed or sold through similar channels
`of trade.
`
`Under the circumstances, Applicant respectfully submits that the Examining Attorney’s conclusion that some of the Applicant’s channels of
`trade are the same as he Registrant’s channels of trade is fatally flawed and must be reconsidered in light of the true facts, which will show
`them to be unrelated.
`
`E.  APPLICANT IS CURRENTLY DISCUSSING A POSSIBLE CONSENT AND COEXISTENCE AGREEMENT WITH REGISTRANT
`
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
`

`

`Finally, Applicant hereby advises the Examining Attorney that it is in contact with the owner of the Cited Mark and is currently in the process
`of discussing a possible consent and coexistence agreement with Registrant with respect to the ONECONNECT and ONE CONEXION in
`stylized and colored format.  This agreement will be based on the differences between the marks discussed above.  Applicant will promptly
`advise the Examining Attorney if such an agreement is finalized while this application is still under examination.
`
`3.   FURTHER AMENDMENT OF THE APPLICATION’S BASIS
`
`The Applicant hereby amends the basis of this application from Section 44 to Section 1(b). See TMEP § 806.03(d).  
`
`4.  CONCLUSION
`
`Having addressed all the issues raised by the Examining Attorney, Applicant respectfully requests that the refusal to register Applicant’s
`Mark ONECONNECT be reconsidered and withdrawn, and that Applicant’s Mark be passed to publication in due course.   If any additional
`issues remain to be addressed, please contact the undersigned.
`
`In order to retain its rights, Applicant is simultaneously filing a Notice of Appeal to the Trademark Trial and Appeal Board.
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (7 pages)
`
`evi_208229218102-20170808174430113299_._Exhibits_A-B.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\867\746\86774632\xml7\RFR0002.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\867\746\86774632\xml7\RFR0003.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\867\746\86774632\xml7\RFR0004.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\867\746\86774632\xml7\RFR0005.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\867\746\86774632\xml7\RFR0006.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\867\746\86774632\xml7\RFR0007.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\867\746\86774632\xml7\RFR0008.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`Exhibit A, a press release regarding Applicant's services, and Exhibit B, a printout of
`Registrant's internet landing page
`
`GOODS AND/OR SERVICES SECTION (035)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`035
`
`Advertising, marketing and promotion services; advertising, marketing and promotion advisory, research, analysis and consulting services;
`market research and market intelligence services; branding services, namely, consulting, development, management and marketing of brands
`for businesses and/or individuals; organizing live exhibitions and conferences in the fields of science, energy, advertising, consumer
`electronics, transportation, medicine, health, fitness, sports, music and technology, for business and commercial purposes; organization,
`arranging and conducting of conferences in the field of technology for business purposes; none of the above in connection with telephone
`answering services, telemarketing, teleservicing, telephone call centers and teleconferencing
`
`FILING BASIS
`
`        FOREIGN APPLICATION NUMBER
`
`Section 44(d)
`
`014632913
`
`       FOREIGN APPLICATION COUNTRY
`
`European Community - CTM
`
`        FOREIGN FILING DATE
`
`09/30/2015
`
`GOODS AND/OR SERVICES SECTION (035)(proposed)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`035
`
`Advertising, marketing and promotion services; advertising, marketing and promotion advisory, research, analysis and consulting services;
`
` 
` 
` 
` 
` 
`       
`       
`       
`       
`       
`       
`

`

`market research and market intelligence services; branding services, namely, consulting, development, management and marketing of brands
`for businesses and/or individuals; organizing live exhibitions and conferences in the fields of science, energy, advertising, consumer
`electronics, transportation, medicine, health, fitness, sports, music and technology, for business and commercial purposes; organization,
`arranging and conducting of conferences in the field of technology for business purposes; none of the above in connection with telephone
`answering services, telemarketing, teleservicing, telephone call centers and teleconferencing
`
`FILING BASIS
`
`FILING BASIS
`
`       FOREIGN APPLICATION NUMBER
`
`Section 1(b)
`
`Section 44(d)
`
`014632913
`
`       FOREIGN APPLICATION COUNTRY
`
`European Community - CTM
`
`       FOREIGN FILING DATE
`
`09/30/2015
`
`       INTENT TO
`       PERFECT 44(d)
`
`At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for
`registration, but wishes only to assert a valid claim of priority. The application
`should not be suspended to await the submission of the foreign registration.
`
`GOODS AND/OR SERVICES SECTION (038)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`038
`
`Telecommunications services, namely, transmission of voice, data, graphics, images, audio data and video by means of telecommunication
`networks, wireless communication networks and the Internet; broadcasting of radio and television programmes; transmission and delivery of
`digital music via broadcast medium; electronic transmission and streaming of digital media content in the nature of phonographic sounds,
`images, text, signals, for others via global and local computer networks; providing information relating to telecommunications networks, and
`information on providing telecommunications connections to the internet; electronic transmission of data, images, audio, video and documents
`via computer terminals; providing connection and access to telecommunications networks, for the transmission or reception of data, sounds,
`music, videos and multimedia documents; paging services by radio, telephone or other means of electronic communication; rental of
`telecommunications apparatus; communications via computer terminals; mobile radio telephone services; mobile media services in the nature
`of electronic transmission of entertainment media content; none of the above in connection with telephone answering services, telemarketing,
`teleservicing, telephone call centers and teleconferencing
`
`FILING BASIS
`
`        FOREIGN APPLICATION NUMBER
`
`Section 44(d)
`
`014632913
`
`       FOREIGN APPLICATION COUNTRY
`
`European Community - CTM
`
`        FOREIGN FILING DATE
`
`09/30/2015
`
`GOODS AND/OR SERVICES SECTION (038)(proposed)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`038
`
`Telecommunications services, namely, transmission of voice, data, graphics, images, audio data and video by means of telecommunication
`networks, wireless communication networks and the Internet; broadcasting of radio and television programmes; transmission and delivery of
`digital music via broadcast medium; electronic transmission and streaming of digital media content in the nature of phonographic sounds,
`images, text, signals, for others via global and local computer networks; providing information relating to telecommunications networks, and
`information on providing telecommunications connections to the internet; electronic transmission of data, images, audio, video and documents
`via computer terminals; providing connection and access to telecommunications networks, for the transmission or reception of data, sounds,
`music, videos and multimedia documents; paging services by radio, telephone or other means of electronic communication; rental of
`telecommunications apparatus; communications via computer terminals; mobile radio telephone services; mobile media services in the nature
`of electronic transmission of entertainment media content; none of the above in connection with telephone answering services, telemarketing,
`teleservicing, telephone call centers and teleconferencing
`
`FILING BASIS
`
`FILING BASIS
`
`       FOREIGN APPLICATION NUMBER
`
`Section 1(b)
`
`Section 44(d)
`
`014632913
`
`       FOREIGN APPLICATION COUNTRY
`
`European Community - CTM
`
`

`

`       FOREIGN FILING DATE
`
`09/30/2015
`
`       INTENT TO
`       PERFECT 44(d)
`
`At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for
`registration, but wishes only to assert a valid claim of priority. The application
`should not be suspended to await the submission of the foreign registration.
`
`GOODS AND/OR SERVICES SECTION (041)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`041
`
`Education services, namely, providing classes, seminars, workshops and courses of instruction in the field of science, energy, advertising,
`consumer electronics, transportation, medicine, health, fitness, sports, music, and design, advertising and communication and computer
`technology; providing courses of instruction in the field of science, energy, advertising, consumer electronics, transportation, medicine, health,
`fitness, sports, music and technology; educational training in the field of science, energy, advertising, consumer electronics, transportation,
`medicine, training in the field of physical fitness, music, and design, advertising, communication and computer technology; entertainment
`services, namely, providing live music concerts, providing continuing radio shows on the subject of entertainment and news and information;
`providing talk show and comedy shows broadcasts over television, radio and internet; production of radio or television shows; entertainment
`services, namely, providing information by means of mobile communications devices via a global computer network and wireless networks;
`organizing community activities in the nature of sporting and cultural activities, contests and games in the field of science, energy, advertising,
`consumer electronics, transportation, medicine, health, fitness, sports, music and technology; publication of books, magazines and newspapers;
`production of television and radio shows and videos; film production; Entertainment and educational services in the nature of competitions in
`the field of entertainment, education, culture, sports, and other non-business and non-commercial fields; organizing live exhibitions and
`conferences in the fields of science, energy, advertising, consumer electronics, transportation, medicine, health, fitness, sports, music and
`technology, for non-business and non-commercial purposes; providing online computer games and non-downloadable game software via a
`computer network
`
`FILING BASIS
`
`        FOREIGN APPLICATION NUMBER
`
`Section 44(d)
`
`014632913
`
`       FOREIGN APPLICATION COUNTRY
`
`European Community - CTM
`
`        FOREIGN FILING DATE
`
`09/30/2015
`
`GOODS AND/OR SERVICES SECTION (041)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`041
`
`Education services, namely, providing classes, seminars, workshops and courses of instruction in the field of science, energy, advertising,
`consumer electronics, transportation, medicine, health, fitness, sports, music, and design, advertising and communication and computer
`technology; providing courses of instruction in the field of science, energy, advertising, consumer electronics, transportation, medicine, health,
`fitness, sports, music and technology; educational training in the field of science, energy, advertising, consumer electronics, transportation,
`medicine, training in the field of physical fitness, music, and design, advertising, communication and computer technology; entertainment
`services, namely, providing live music concerts, providing continuing radio shows on the subject of entertainment and news and information;
`providing talk show and comedy shows broadcasts over television, radio and internet; production of radio or television shows; entertainment
`services, namely, providing information by means of mobile communications devices via a global computer network and wireless networks;
`organizing community activities in the nature of sporting and cultural activities, contests and games in the field of science, energy,
`advertising, consumer electronics, transportation, medicine, health, fitness, sports, music and technology; publication of books, magazines and
`newspapers; production of television and radio shows and videos; film production; entertainment and educational services in the nature of
`competitions in the field of entertainment, education, culture, sports, and other non-business and non-commercial fields; organizing live
`exhibitions and conferences in the fields of science, energy, advertising, consumer electronics, transportation, medicine, health, fitness, sports,
`music and technology, for non-business and non-commercial purposes; providing online computer games and non-downloadable game
`software via a computer network
`
`FINAL DESCRIPTION
`
`Education services, namely, providing classes, seminars, workshops and courses of instruction in the field of science, energy, advertising,
`consumer electronics, transportation, medicine, health, fitness, sports, music, and design, advertising and communication and computer
`technology; providing courses of instruction in the field of science, energy, advertising, consumer electronics, transportation, medicine, health,
`fitness, sports, music and technology; educational training in the field of science, energy, advertising, consumer electronics, transportation,
`medicine, training in the field of physical fitness, music, and design, advertising, communication and computer technology; entertainment
`services, namely, providing live music concerts, providing continuing radio shows on the subject of entertainment and news and information;
`providing talk show and comedy shows broadcasts over television, radio and internet; production of radio or television shows; organizing
`
`

`

`community activities in the nature of sporting and cultural activities, contests and games in the field of science, energy, advertising, consumer
`electronics, transportation, medicine, health, fitness, sports, music and technology; publication of books, magazines and newspapers;
`production of television and radio shows and videos; film production; entertainment and educational services in the nature of competitions in
`the field of entertainment, education, culture, sports, and other non-business and non-commercial fields; organizing live exhibitions and
`conferences in the fields of science, energy, advertising, consumer electronics, transportation, medicine, health, fitness, sports, music and
`technology, for non-business and non-commercial purposes; providing online computer games and non-downloadable game software via a
`computer network
`
`FILING BASIS
`
`FILING BASIS
`
`       FOREIGN APPLICATION NUMBER
`
`Section 1(b)
`
`Section 44(d)
`
`014632913
`
`       FOREIGN APPLICATION COUNTRY
`
`European Community - CTM
`
`       FOREIGN FILING DATE
`
`09/30/2015
`
`       INTENT TO
`       PERFECT 44(d)
`
`SIGNATURE SECTION
`
`DECLARATION SIGNATURE
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`CONCURRENT APPEAL NOTICE FILED
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for
`registration, but wishes only to assert a valid claim of priority. The application
`should not be suspended to await the submission of the foreign registration.
`
`The filing Attorney has elected not to submit the signed declaration, believing no
`supporting declaration is required under the Trademark Rules of Practice.
`
`/David P. Goldberg/
`
`David P. Goldberg
`
`Attorney of record, NY bar member
`
`212-336-8000
`
`08/08/2017
`
`YES
`
`YES
`
`Tue Aug 08 17:56:57 EDT 2017
`
`USPTO/RFR-XXX.XXX.XXX.XXX
`-20170808175657266548-867
`74632-510a94121a8ee33185f
`22e7e90253e6df7a3c14d7a2c
`6a4c57e55a0e4bc5b9551-N/A
`-N/A-20170808174430113299
`
`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 07/31/2017)
`
`Request for Reconsideration after Final Action
`To the Commissioner for Trademarks:
`
`Application serial no. 86774632 ONECONNECT(Standard Characters, see https://tmng-al.uspto.gov/resting2/api/img/86774632/large) has been
`amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`

`

`This is in response to the Final Office Action dated February 8, 2017.  Applicant Panasonic Corporation of North America (“Applicant”) has
`carefully reviewed the Examining Attorney’s comments and respectfully requests that the Examining Attorney reconsider her final partial
`refusal to register Applicant’s service mark ONECONNECT (“Applicant’s Mark”) in light of the arguments submitted in response to the
`initial Office Action and the response to the Suspension Notice, as well as to the additional arguments submitted herewith.  In order to retain its
`rights, Applicant is simultaneously filing a Notice of Appeal to the Trademark Trial and Appeal Board. See TMEP § 715.04.
`
`1.  FURTHER AMENDMENT OF THE IDENTIFICATION OF SERVICES
`
`The Examining Attorney has stated that “[t]he amended identification of services fails to provide the subject of the information in Class 41.”   In
`particular, the Examining Attorney has found the clause “entertainment services, namely, providing information by means of mobile
`communications devices via a global computer network and wireless networks” should include field limitations indicating the subject matter of
`the information.  In response, Applicant hereby amends the identification of services in Class 41 to omit this clause, so that it will now read:
`
`Class 41 - Education services, namely, providing classes, seminars, workshops and courses of instruction in the field of science, energy,
`advertising, consumer electronics, transportation, medicine, health, fitness, sports, music, and design, advertising and communication and
`computer technology; providing courses of instruction in the field of science, energy, advertising, consumer electronics, transportation,
`medicine, health, fitness, sports, music and technology; educational training in the field of science, energy, advertising, consumer
`electronics, transportation, medicine, training in the field of physical fitness, music, and design, advertising, communication and
`computer technology; entertainment services, namely, providing live music concerts, providing continuing radio shows on the subject of
`entertainment and news and information; providing talk show and comedy shows broadcasts over television, radio and internet;
`production of radio or television shows; organizing community activities in the nature of sporting and cultural activities, contests and
`games in the field of science, energy, advertising, consumer electronics, transportation, medicine, health, fitness, sports, music and
`technology; publication of books, magazines and newspapers; production of television and radio shows and videos; film production;
`entertainment and educational services in the nature of competitions in the field of entertainment, education, culture, sports, and other
`non-business and non-commercial fields; organizing live exhibitions and conferences in the fields of science, energy, advertising,
`consumer electronics, transportation, medicine, health, fitness, sports, music and technology, for non-business and non-commercial
`purposes; providing online computer games and non-downloadable game software via a computer network.
`
`2.  DISCUSSION OF FINAL PARTIAL REFUSAL TO REGISTER APPLICANT’S MARK BASED ON SECTION 2(D) CITATION OF
`PRIOR REG. NO. 4,848,347
`
`The Examining Attorney has refused to register Applicant’s Mark ONECONNECT for certain applied-for services in Classes 35 and 38 pursuant
`to Trademark Act § 2(d), 15 U.S.C. § 1052(d), on the grounds that it is likely to be confused with the mark ONE CONEXION in stylized and
`colored format as per Reg. No. 4,848,347 in the name of One Conexion, L.L.C. (“Registrant”).
`
`As is discussed more fully below, Applicant respectfully submits that there is no likelihood of confusion between Applicant’s Mark and the
`Cited Mark due at least to:  (1) differences between the appearance, sound and connotation of the marks; (2) differences between the services;
`and (3) differences in the channels of trade.
`
`A.  THE RELEVANT TEST FOR LIKELIHOOD OF CONFUSION
`
`Whether there is a likelihood of confusion between marks under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), is determined by the
`two-part test set forth in In re E. I. du Pont de Nemours & Co., 177 USPQ 563 (C.C.P.A. 1973).  The test first requires an examination of the
`marks themselves for similarities in appearance, sound, connotation, and commercial impression; it then requires that the goods and services be
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`examined to determine if they are related or if the activities surrounding their marketing are such that confusion is likely.  
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`For the sake of brevity, Applicant will not reproduce, but instead hereby incorporates by reference, all of the arguments submitted in the July 22,
`2016 response to the initial Office Action and the December 13, 2016 response to the Suspension Notice.  Applicant here supplements its
`arguments with a discussion limited to several specific issues raised by the Examining Attorney in the Final Office Action.
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`B.  APPLICANT’S MARK IS DIFFERENT FROM THE CITED MARK IN SOUND
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`The Examining Attorney argues that there is no correct pronunciation of a mark and one cannot conclude that the marks will be pronounced
`differently.  This ignores the fact that the second part of the Cited Mark is in Spanish, and has a distinct and correct Spanish pronunciation, as
`was discussed in the December 13, 2016 response to the Suspension Notice. See also, https://translate.google.com/#es/en/conexion (cited in the
`Final Office Action). Under these circumstances, the cases cited by the Examining Attorney are all distinguishable because the marks at issue in
`those cases did not involve familiar foreign words with settled pronunciations, as is the case here. See Embarcadero Techs., Inc. v. RStudio, Inc.,
`105 USPQ2d 1825 (TTAB 2013) (regarding the marks ER/STUDIO and RSTUDIO); In re Viterra Inc., 101 USPQ2d 1905 (Fed. Cir. 2012)
`(regarding the marks XCEED and X-SEED); In re The Belgrade Shoe Co., 162 USPQ 227 (C.C.P.A. 1969) (regarding the marks
`COL”EEJUNS” and COLLEGIENNE).
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`C. APPLICANT’S SERVICES ARE DIFFERENT FROM REGISTRANT’S SERVICES
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`Critically, the Examining Attorney has evaluated the relatedness of the services offered under the two marks based in part on a factual error.  In
`the Final Office Action, the Examining Attorney argues that “evidence from the applicant’s own website describe[es] the relatedness of the
`services.”   However, the Examining Attorney has erroneously identified Applicant’s website as http://www.oneconnect.ca.  In fact, Applicant is
`Panasonic Corporation of North America, and is not an owner or related company to the apparent owner of that website, OneConnect Services
`Inc., or its parent company Accelerated Connections Inc.  Accordingly, any inferences or conclusions drawn by the Examiner based on the
`assumption that these services are offered by Applicant must be discounted.
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`In fact, Applicant’s Services offered under the ONECONNECT mark are markedly different from the services offered under the cited mark
`ONE CONEXION in stylized and colored format.  Applicant’s services offered under its ONECONNECT mark regard Applicant’s vehicle-
`centric marketing and content delivery platform that will enable automobile manufacturers to connect with drivers by various means. See, e.g.,
`Exhibit A hereto