file: \\intrepid-prod.ic.gc.ca\tmdata\ec\trade_mark\01\54\55\38\Moffatco0908152541903_rev.html printed: 2012-08-10 08:21

Electronic Application Receive TimeStamp: August 9, 2012 3:47:43 PM

Date : August  9, 2012

Attention: Examination Section

Dear Sir:

Re: Canadian Trade-mark Application Serial No. 1,545,538

Trade-mark: SAGETEA

Examiner: Michelle Yu

Our File: 3416-103

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This is in response to the Examiner’s Report of April 2, 2012

The Applicant thanks the Examiner for attending to this application.

OBJECTION TO THE DESCRIPTIONS

The Examiner has approved the statement of wares (1) but has objected to certain of the statements of wares (2) appearing in the application. Accordingly, in the revised application submitted herewith, the applicant has simplified and amended the statement of wares (2) to read as follows:

“Computer software in the area of creating expert systems for use converting plain English text to and from computer source code”

The applicant has also modified the statement of wares (1) to clarify that the software is for use in the area of creating expert systems as follows:

“Computer software in the area of creating expert systems for use in creating charts and graphs using data generated by one or more computer software programs”

An expert system is a computer system that emulates the decision-making ability of a human expert. Expert systems are created and designed to solve complex problems by reasoning about knowledge, like an expert. The applicant’s software facilitates the creation of expert systems by converting plain English text to software.

By this amendment, the applicant has specified the function of the software and the specific area of use, namely the creation of expert systems.

The Examiner has objected to the statement of data conversion services since it does not specify the field for which the data conversion is being provided. Accordingly, in the revised application submitted herewith, the statement of data conversion services is amended as follows:

“Data conversion services in the area of creating expert systems, namely using computer software to convert plain English text to and from computer source code, preparing charts and graphs using data generated by one or more computer software programs, transferring and translating data between computer software programs to generate reports comprising charts and graphs”

The remaining statements of services, which were approved by the Examiner, have also been revised to specify that they relate to the area of creating expert systems as follows:

“Providing training in the use and operation of computer software in the area of creating of expert systems”

“Computer software systems integration services in the area of creating expert systems.”

By the above amendments, the applicant submits that the statements of wares and services now in the application as herein amended are in ordinary commercial terms in compliance with the provisions of the Trade-marks Act.

CONFUSION OBJECTION - 12(1)(d)

The Examiner objected to the application on the basis of section 12(1)(d) of the Trade-marks Act, that is, confusion with trademark Registration No. TMA572,950 for the mark SAGE, that was filed on February 20, 1998 and registered on January 2, 2003. The mark is registered for use in association with:

WARES - “Computer software used for providing advice and assistance in relation to computerized accounting, auditing, book keeping and payroll; Computer stationery, namely books, manuals, text books, work books and instructional materials in the field of computer software used in the fields of accounting, auditing, book keeping and payroll.”

SERVICES - “Providing advice and assistance in relation to computerized accounting, auditing, bookkeeping and payroll”.

Applicant respectfully disagrees that the present application for the mark SAGETEA is confusing with the cited SAGE mark.

In contrast to the cited mark, SAGE, the applicant’s present application is for the mark SAGETEA, for use in association with computer software in the area of creating expert systems by converting plain English text to and from computer source code and creating charts and graphs using data generated by one or more computer software programs. Applicant’s mark is also used in association with services in the area of creating expert systems.

Confusion between the two marks is to be assessed on the basis of the criteria outlined in Section 6(5) of the Trade-marks Act. The following considerations are brought to the Examiner’s attention:

1. The marks SAGE and SAGETEA are not identical in their appearance, sound, or the ideas suggested. The applicant’s mark includes the additional word TEA at the end, thus creating a made up word that is completely new and has a completely different visual and auditory impression.

Moreover, the ideas suggested by the applicant’s mark are completely different. The mark SAGE suggests the idea of a plant or a profoundly wise person, especially when considered in conjunction with providing advice and assistance in relation to computerized accounting, auditing, bookkeeping and payroll. However, the applicant’s mark SAGETEA is suggestive of a tea made from the leaves of the sage plant and has no particular meaning when considered in association with the applicant’s wares or services, which are related to computer software in the area of creating expert systems.

2. The marks are used with totally different wares and services. From the above descriptions, the Examiner will appreciate that the cited SAGE mark is used in the area of software and related products for providing advice in relation to computerized accounting, auditing, book keeping and payroll. On the other hand, the applicant’s SAGETEA mark is used in association with computer software and services in the area of creating expert systems. The nature of the wares and services associated with the cited reference are therefore completely different from the wares and services of the present application; one in the area of accounting, the other in the area of creating expert systems.

It is well known that when it comes to statements of wares and services related to software, the Office requires the function and area of the software. Hence, identical trademarks have been allowed to coexist, when it is obvious, as in this case, that they are for use in association with different software.

3. Moreover, the nature of the trade is different. The applicant’s wares and services are being sold to consumers looking to create and develop expert computer systems based on an existing body of knowledge, while consumers encountering the cited mark are looking for advice in the area of accounting. The two areas are completely unrelated. Consumers looking for software related to creating expert systems will not be confused if they encounter the cited mark used in association with goods and services related to accounting.

4. Regarding the length of time the marks have been used, the applicant’s mark has been used in association with some of its wares since September 29, 2010, while the cited mark has been registered since 2003. The marks have therefore co-existed for almost two years, with no incidents of confusion.

5. Finally, while both marks are made up of common English words, the applicant has created a new word that is highly distinctive as a trademark because of its use in association with wares and services that are completely unrelated to the common English meaning of the word. SAGETEA, when used as two separate words, is generally considered to be suggestive of tea made from the leaves of the sage plant, but when the mark is used in association with wares and services in the area of creating expert systems, it becomes highly distinctive. This criteria cuts in favour of the applicant.

It is obvious, therefore, that a careful consumer would readily distinguish between the two marks, and between the two different products and services. The applicant fails to see how there could be any likelihood of confusion. Upon further consideration, if the Examiner believes there may be confusion, we request clarification of the nature of that confusion.

Accordingly, withdrawal of this objection is requested.

ENTITLEMENT OBJECTION -16

The Examiner also objected on the basis of section 16, that is, that the applicant is not the person entitled because of confusion with co-pending Application No. 1,449,415, for the mark SAGE, which has a filing date of August 25, 2009, that is prior to the filing date of the present applicant’s date of first use for the above-noted mark.

Applicant respectfully disagrees that the present application for the mark SAGETEA is confusing with the cited SAGE mark.

The cited mark SAGE, is applied for use in association with “consulting services relating to environmental performance management and reporting systems for buildings”. The mark is based on proposed use in Canada.

On the other hand, the applicant’s present application is for the mark SAGETEA, for use in association with computer software in the area of creating expert systems by converting plain English text to and from computer source code and creating charts and graphs using data generated by one or more computer software programs. Applicant’s mark is also used in association with services in the area of creating expert systems.

Confusion between the two marks is to be assessed on the basis of the criteria outlined in Section 6(5) of the Trade-marks Act. The following considerations are brought to the Examiner’s attention:

1. The marks SAGE and SAGETEA are not identical in their appearance, sound, or the ideas suggested. The applicant’s mark includes the additional word TEA at the, thus creating a made up word that is completely new and has a completely different visual and auditory impression.

Moreover, the ideas suggested by the applicant’s mark are completely different. The mark SAGE suggests the idea of a plant or a profoundly wise person, especially when considered in conjunction with the consulting services described in the cited application. However, the applicant’s mark SAGETEA is suggestive of a tea made from the leaves of the sage plant and has no particular meaning when considered in association with the applicant’s wares or services, which are related to computer software in the area of creating expert systems.

2. The marks are used with totally different wares and services. The cited SAGE mark is used in association with consulting services relating to environmental performance management and reporting systems for buildings. On the other hand, the applicant’s SAGETEA mark is used in association with computer software and providing data conversion services, training and software systems integration in the area of creating expert systems. The nature of the services associated with the cited reference are completely different from the wares and services of the present application.

3. Moreover, the nature of the trade is different. The applicant’s wares and services are being sold to consumers looking to create and develop expert computer systems based on an existing body of knowledge, while consumers encountering the cited mark are looking for advice in the area of environmental performance management and reporting systems for buildings. The two areas are completely unrelated.

4. Regarding the length of time the marks have been used, the applicant’s mark has been used in association with some of its wares since September 29, 2010, while the cited application is based on proposed use. This factor favours the applicant.

5. Finally, while both marks are made up of common English words, the applicant has created a new word that is highly distinctive as a trademark because of its use in association with wares and services that are completely unrelated to the common English meaning of the word. SAGETEA, when used as two separate words, is generally considered to be suggestive of tea made from the leaves of the sage plant, but when used in association with wares and services in the area of creating expert systems becomes highly distinctive. This criteria cuts in favour of the applicant.

It is obvious, therefore, that a careful consumer would readily distinguish between the two marks, and between the two different products and services. The applicant fails to see how there could be any likelihood of confusion. Upon further consideration, if the Examiner believes there may be confusion, we request clarification of the nature of that confusion.

Accordingly, withdrawal of this objection is requested.

FURTHER CONSIDERATION ON CONFUSION

In respect of both of the above-noted Examiner’s objections based on confusion of the applicant’s mark SAGETEA, with the cited marks SAGE, the applicant provides the following additional comments:

Although it is the Examiner’s responsibility to protect rights which accrue as a result of the inherent distinctiveness of marks, in particular those marks such as KODAK, which are invented words, no such responsibility exists if the words are common or descriptive in meaning. Such terms must be taken with their disadvantages. No person is entitled to fence in the common words of the English language and words of a general nature cannot be appropriated over a wide area. In such cases, small differences will be sufficient to distinguish between them and this rule applies even where a common part of two words is also common to the trade (see H.G. Fox, Canadian Law of Trade Marks, Third Edition, p. 173; and see pages 73-74 of the Trade-marks Examination Manual).

This point was supported by Mr. Justice Rand in General Motors Corp. v. Bellows (1949), 10 C.P.R. 101 (F.C.A.) at p. 115, when he stated

"Mr. Fox submitted this basic consideration: that where a party has reached inside the common trade vocabulary for a word mark and seeks to prevent competitors from doing the same thing, the range of protection to be given him should be more limited than in the case of an invented or unique or non-descriptive word; and he has strong judicial support for that proposition."

In the present case, a search of the Trade-mark Register has located at least the following active trade-marks, in addition to the two cited by the Examiner, that have been registered, and that include the word SAGE as part of the mark for use in association with some type of software or software related services:

SAGEWRIGHT

TMA806318

WARES - Computer software to allow uers to record, maintain and process their data stored in a database.

SAGEWARE

TMA768074

WARES - Computer software, namely, financial and statistical reporting software used by or on behalf of public and private businesses and institutions to manage and report account information relating to their receipt of food services and dining services.

SAGE ACCESS

TMA509910

SERVICES - Providing seminars in 3-tier client/server architecture, namely conducting seminars on a wide range of information technology topics to provide information to participants on how to best utilize various software applications to deliver solutions to information technology problems.

SAGE S & Design

TMA515291

SERVICES - Technical and management consulting services in the field of computer software; planning, designing, developing, testing, implementing and training in respect of custom software applications; and creating solutions to information technology software problems for others.

SAGE PUBLICATIONS & Design

TMA502185

WARES - computer software, namely, applications software for use in the field of academic and professional research analysis, etc.

As for the mark SAGE alone, a search of the Trade-mark Register has located at least the following 10 active trade-marks, in addition to the two cited by the Examiner,

SAGE

TMA828990

WARES - Live laboratory animals.

SAGE & Design

TMA712038

SERVICES - various

S.A.G.E

TMA674057

WARES - Hemp seeds

SAGE

TMA613314

WARES - Bath accessories, namely, towel bars, towel rings, robe hooks, toothbrush holders, toilet tissue holders, soap dishes and cup holders.

SAGE

TMA254975

WARES - Fishing equipment, namely fishing rods and blanks.

SAGE

TMA744031

WARES - Full line of paper cups, paper plates, trays and cartons for carrying food.

SAGE

TMA718737

WARES - Toilet tank levers primarily made from metal.

SAGE

TMA451489

WARES - Mouth care devices and solutions, namely mouth care swabs and brushes and solutions for impregnating swabs and brushes.

SAGE

TMA385319

WARES - Remote sensors and actuators for controlling industrial manufacturing processes.

SAGE

TMA661299

WARES - Fishing equipment and related accessories, namely, fishing rods, fishing rod blanks, fishing reels, fishing line, fly fishing line and fishing tackle; clothing, namely, t-shirts, sweatshirts, shirts, caps, hats, visors, vests, jackets, gloves, socks, waders, trousers and shorts; luggage, soft luggage, fishing rod and reel cases.

From the evidence note above, the term SAGE is a common word in the English language, and one that is used by many traders for use in association with the sale of a wide variety of products and services. In particular, as evidenced by the above, the word is common for use in association with goods and services related to computers and computer software. The public Therefore has become accustomed to distinguishing the wares of one trader from those of another, despite the common term SAGE in the trademarks. The small differences that exist between the marks and the wares and services appear to be sufficient for such distinction.

Accordingly, small differences between the applicant’s mark, and those marks currently on the Register and/or cited by the Examiner, ought to be sufficient to distinguish between the marks and to permit registration of the applicant’s mark. The clear difference provided by the term TEA in the applicant’s mark and the noted differences in the wares and services, is submitted, in this case, to be more than sufficient to distinguish between the applicant’s mark and the marks cited by the Examiner.

Finally, we remind the Examiner of the provisions of section 37 of the Trade-marks Act, which provides that if the Examiner has doubts about whether the mark is not registerable or whether the applicant is not the person entitled to registration, he shall cause the application to be

advertised in the manner prescribed (see page 81 of the Trade-marks Examination Manual).

On the basis of the foregoing submissions and amendments to the application, the applicant submits that its applied for mark is clearly distinguishable from those marks cited by the Examiner and that the application is now in condition for advertisement. Because of the differences between the applicant’s mark and those cited by the Examiner, or indeed, those marks listed above, the use of the applicant’s mark will not lead to the inference that the wares or services of the applicant are manufactured, sold, leased, hired, or performed by the owners of any of the other marks.

Accordingly, the Examiner is requested to withdraw objection to the present application and we look forward to receiving confirmation of approval of the application for advertisement from the Registrar.

Respectfully submitted,

MOFFAT & CO.

Per: Barry E. Hutsel

Trade-mark application number: 1545538

Reference No. : 3416-103

1. The applicant, 4428188 Canada Inc, dba SageTea Group the full post office address of whose principal office or place of business is 440 Laurier Avenue West, Suite 200, Ottawa, ONTARIO, CANADA, K1R 7X6, applies for the registration, in accordance with the provisions of the Trade-marks Act, of the trade-mark identified below.

2. The trade-mark is

3. The trade-mark has been used in Canada by the applicant in association with all the specific wares listed hereafter, and the applicant requests registration in respect of such wares. The trade-mark has been so used in Canada in association with the general class of wares comprising the following specific wares (1) Computer software in the area of creating expert systems for use in creating charts and graphs using data generated by one or more computer software programs since at least as early as September 29, 2010.

4. The applicant by itself or through a licensee, or by itself and through a licensee, intends to use the trade-mark in Canada in association with (2) Computer software in the area of creating expert systems for use in converting plain English text to and from computer source code and requests registration of the trade-mark in respect of such wares.

5. The applicant by itself or through a licensee, or by itself and through a licensee, intends to use the trade-mark in Canada in association with (1) Data conversion services in the area of creating expert systems, namely using computer software to convert plain English text to and from computer source code, preparing charts and graphs using data generated by one or more computer software programs, transferring and translating data between computer software programs to generate reports comprising charts and graphs; Providing training in the use and operation of computer software in the area of creating of expert systems; Computer software systems integration services in the area of creating expert systems and requests registration of the trade-mark in respect of such services.

6. The applicant appoints MOFFAT & CO., whose full post office address in Canada is 1200-427 LAURIER AVENUE WEST, P.O. BOX 2088, STATION D, OTTAWA, ONTARIO, CANADA, K1P 5W3, as the person (firm or any member of the said firm), as its agent to prosecute this revised application with full powers of amendment and substitution, to execute any amendment related thereto as well as any amended revised application, and to represent the applicant with respect to this revised application, the said agents being authorized to receive the registration certificate on behalf of the applicant.

7. The applicant appoints MOFFAT & CO., whose full post office address in Canada is 1200-427 LAURIER AVENUE WEST, P.O. BOX 2088, STATION D, OTTAWA, ONTARIO, CANADA, K1P 5W3 as the person (or firm) to whom any notice in respect of the revised application or registration may be sent, and upon whom service of any proceedings in respect of the revised application or registration may be given or served with the same effect as if they had been given to or served upon the applicant or registrant.

8. The applicant is satisfied that it is entitled to use the trade-mark in Canada in association with the wares and services described above.