PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

The table below presents the data as entered.

Input Field Entered
SERIAL NUMBER 77891022
LAW OFFICE ASSIGNED LAW OFFICE 112
MARK SECTION (no change)
ARGUMENT(S)

RESPONSE TO OFFICE ACTION

Applicant Google Inc. (“Applicant”) responds as follows to Office Action No. 1, issued in connection with Applicatio
Serial No. 77/891022 for the mark NEXUS ONE.
I. Introduction
The Examining Attorney has refused registration of Applicant’s NEXUS ONE mark (“Applicant’s Mark”) under Sect

2(d) on the ground that there may be a likelihood of confusion between Applicant’s Mark and the NEXUS mark in
Registration No. 3554195 (the “Cited Mark”) owned by Integra Telecom Holdings, Inc. (the “Registrant”). The Cite
Mark covers:
providing telecommunication services, namely, transmission of data and voice, and enhanced calling
features, namely, conference calling, call forwarding, call rejection, call return, call waiting, caller ID,
caller ID block, continuous redial, specialized ringing services, fax overflow services, line hunting, speed
calling, long distance telephone service, inbound toll-free service, voice mail, and high-speed access to a
global computer network, all of the foregoing excluding providing multiple-user access to a global
computer information network for participants in the physical oil industry in class 38.
Applicant seeks to register its NEXUS ONE mark in connection with mobile phones in class 9.

Applicant respectfully submits that, given the widespread and pervasive use of NEXUS and NEXUS-formative marks

across the relevant marketplaces and classes of goods and services, it is highly unlikely that confusion would result fro
Applicant’s use of NEXUS ONE in connection with mobile phones offered to consumers and Registrant’s use of NEX

for a telecommunications service offered to businesses. As more fully set forth below, against the background of this

crowded field of NEXUS marks, Applicant’s Mark should proceed to registration because, based on the differences
between the marks themselves, the distinction in goods and services sold under the marks, the targeted marketplaces, t
channels of trade through which the goods and services are sold and the sophistication of the customers, there is no
likelihood of confusion between Applicant’s Mark and the Cited Mark.

II. Likelihood of Confusion Factors

The question of likelihood of confusion between marks is “related not to the nature of the mark but to its effect ‘when
applied to the goods of the applicant.’ The only relevant application is made in the marketplace. The words ‘when

applied’ do not refer to a mental exercise, but to all of the known circumstances surrounding use of the mark.” In re
du Pont de Nemours & Co., 476 F.2d 1357, 1360-61 (C.C.P.A. 1973) (original emphasis). In determining whether the

a likelihood of confusion, courts look to many factors, including as particularly relevant here:

· The similarity or dissimilarity of the marks in their entirety;

· The similarity or dissimilarity and nature of the goods or services such that one party’s g

will be mistaken for those of the other party;

· The channels of distribution of the goods or services;

· The conditions under which the goods or services are purchased (i.e. impulse buying v
purchases made after careful consideration);
· The sophistication of the purchasers of the goods or services;
· The number and nature of similar marks in use on similar goods or services; and

· The nature and extent of any actual confusion.

Id. at 1361.
The Examining Attorney has noted that, in this case, the most relevant factors are the similarity of the marks, the simil

of the goods and/or services and the similarity of the trade channels for the goods/services. Applicant addresses each

these factors in the sections below, along with the additional factors listed above.
Applicant respectively submits that an analysis of these factors here leads inevitably to the conclusion that no confusio

will result between Applicant’s Mark and the Cited Mark. The Cited Mark’s scope cannot reasonably be construed to
encompass a mobile phone product sold to consumers where the Cited Mark exists in a crowded field of identical and

similar marks and where, in order to achieve registration of the Cited Mark, Registrant conceded that it could co-exist

an identical NEXUS mark for use with identical services because each addressed different segments of the business
marketplace. Against that background, Applicant’s Mark is sufficiently distinct from the Cited Mark because it includ
second term, ONE. Additionally, Applicant’s Mark is used in connection with a product that is not related to
Registrant’s services and Applicant and Registrant offer their product and services, respectively, to sophisticated
consumers in specialized and distinct markets. Accordingly, there is no real potential that the relevant purchasers wou

be confused as to the source of the parties’ respective product and services.

A. The Registrant’s Mark Exists in a Crowded Field of Identical and Similar Marks
The Cited Mark exists in a crowded field of identical and closely similar marks. It is well established that where mark

in a crowded field, each mark is entitled only to a narrow scope of protection. Miss World (UK), Ltd. v. Mrs. America

Pageants, Inc., 856 F.2d 1445, 1449 (9th Cir. 1988) (“In a ‘crowded’ field of similar marks, each member of the crowd
relatively 'weak' in its ability to prevent use by others in the crowd… Simply put, a mark which is hemmed in on all si
by similar marks on similar goods cannot be very 'distinctive'. It is merely one of a crowd of marks. In such a crowd,

customers will not likely be confused between any two of the crowd and may have learned to carefully pick out one fr
the other.") (citing 1 J. McCarthy, supra, § 11:26, at 511, internal quotes omitted). The law recognizes the marketplac
reality that, where the same and similar marks are widely used, consumers are able to differentiate among them. Id. H

the USPTO register reflects a plethora of identical NEXUS and closely similar marks. The USPTO has allowed ident
NEXUS marks to co-exist on the register even when those registrations cover products more closely related than are
Applicant’s product and Registrant’s services. See, e.g.:
Mark Registration / Owner Goods / Services
Application
No.
NEXUS 3349660 XM Satellite Radio Class 9:
Inc. Satellite radio hardware, namely, satellite
radio receivers
NEXUS 3126149 Monarch Computer Class 9:
Systems, Inc. Personal computer
NEXUS 3120442 Computer Technology Class 9:
Link Corp. Plasma screens, flat panel screens, liquid
crystal displays, projection screens, video
screens, computer monitors, television
monitors, high resolution monitors and
display systems, all for computer,
television, video and multimedia
applications
NEXUS 3113720 Leightronix, Inc. Class 9:
Network managed video controllers…for
use in the video broadcast industry
 NEXUS 2836858 Support.com, Inc. Class 9:
(f.k.a. Supportsoft, Computer software, namely computer
Inc.) software for use in computer systems
management that automates the
resolution and management of support
and service requests in computing
environments, enables computer support
and service over computer networks and
automates the exchange of information
over computer networks
NEXUS 77860856 – Sony Ericsson Mobile Class 9:
Published Communications AB Graphical user interface software for
8/31/10 mobile devices that improves the user
experience on the devices by allowing
users to personalize the look and feel of
the touchscreen, keypad or input
mechanism of the devices prior to and
not related to the use or operation of the
devices for creating, enhancing,
managing, sending and receiving data
messages, voice, image and telephony on
mobile devices
NEXUS 3335973 Luxology Class 9:
Computer software for creating audio,
video and/or image files in the field of
computer operating systems, namely,
creating a framework for time variable
media

Further, because NEXUS is a weak and highly diluted mark, the USPTO has frequently found one word distinctions
sufficient to differentiate marks. For example, the following registrations appear in classes relevant to the Registrant’

field of use and indeed a number of them cover telecommunications services highly similar to Registrant’s services:
Mark Registration / Owner Goods / Services
Application
No.
NEXUSLINK 3813710 Comtrend Class 9:
(Corporation) Telecommunications and data
networking hardware, namely,
devices for transporting and
aggregating voice, data, and video
communications across multiple
network infrastructures and
communications protocols
VISUAL NEXUS 3115609 Oki Electric Classes 9 and 42:
Industry Co., Ltd. …telecommunication machines,
namely telephones…and apparatus
therefor…custom design engineering
of telephony systems…
VISUAL NEXUS 3250612 Oki Electric Class 9:
Industry Co., Ltd. Computer software for…managing,
sending and receiving data messages,
voice, image and telephony over
computer networks and the internet
and for use on or with personal
computers computer servers,
wireless and other mobile
technologies and
devices…communications servers…
APPNEXUS 3701224 Appnexus Inc. Class 38:
Providing access to hosted operating
systems and computer applications
through the Internet and
organizational networks; transfer of
data by telecommunications
OMNEXUS 3060553 Specialchem Class 38:
Telecommunications services,
namely, telecommunication gateway
services, ISDN services, personal
communications services; providing
and transmitting computerized
information for third parties over
digital networks, including over the
Internet, and providing telephone call
center service; computer network
operator and information broker
services, namely, authorizing,
routing, clearing or reconciling
communications completed between
network operators via a global
computer network; gathering and
transmission of data, information and
messages of all kinds over digital
networks, namely, electronic
transmission of messages, data and
documents via computer terminals
STRATOSNEXUS 2856512 Stratos Wireless Inc. Class 38:
Telecommunication services, namely
providing private digital networking
services to transmit data and voice
NEXUSC/R 3111416 Applied Global Class 9:
Technologies, Inc. Computer hardware and computer
software for use as a reporting tool
for use in facilitating
telecommunications, namely, for
video teleconferencing over
computer networks
CISCO NEXUS 3546607 Cisco Technology, Class 9:
Inc. Telecommunication switches,
namely ethernet switches, data center
switches and unified fabric switches
NEXUSWARE 3125974 Performance Class 9:
Technologies Computer software development
Incorporated tools in the fields of…wide-area
network protocol communications
controllers, and IP-based telephony
signaling systems…
NEXUSWORX 77958488 – Byers Engineering Class 42:
pending office Company Computer software and systems
action but consultation and customization
citing no services for the integration of
conflicting customer, network, and geographic
marks information system data for
planning, provisioning, management
and maintenance of fiber optic
networks
NEXOSS 3484880 TransNexus, Inc. Class 9:
Computer software platform for
managing voice over IP networks,
excluding and unrelated to products
and services in the wireless
telecommunications industry
IPNEXUS 2904692 Performance Class 9:
Technologies Switching and network access
Incorporated products namely, embedded ethernet
switches, network adaptors for
telecommunication uses, SS7/IP
signalling computers, computer
software and development tools, and
wide area network (WAN) protocol
computer software
NEXUS SUITE 3790603 IPC Systems, Inc. Class 9:
…telecommunication and internet
networks…in the field of financial
market trading…
 VONEXUS 3088635 Interactive Class 9:
Intelligence, Inc. …computer programs for controlling
internal and external voice and data
communications for a computer
network…
NEXUSLAB 3375511 GAAH, Inc. Class 35:
DRIVEN BY THE …operation and administration of
NETWORK telecommunication systems and
networks for others

(See attached Declaration of Karen K. Won (“Won Decl.”), with copies of above registrations attached as Exhibits 1 a
2, respectively).

It is thus evident from this large number of applications and registrations containing the term NEXUS that “marks
containing [such] term…have been registered for the same or closely related goods or services because the remaining

portions of the mark are sufficient to distinguish the marks as a whole from one another.” In re Hamilton Bank, 222
U.S.P.Q. 174 (T.T.A.B. 1984).

Moreover, in addition to co-existence on the USPTO register, these and other identical and similar marks co-exist in th
marketplace for telecommunications and other goods and services in related fields. See, e.g.:
Mark Source Description
Nexus http://www.leightronix.com/products_nexus.php Digital video
messaging syste
Leightronix, Inc
Nexus http://www.nexusis.com/default.asp Provider of
communication
and information
and technology
solutions for
businesses; Nex
IS, Inc.
Cisco Nexus http://www.cisco.com/en/US/products/ps9902/index.html Series of softwa
1000v switches for
network service
Cisco Systems,
Inc.
Nexus http://www.nexuscomm.net/about/ Provider of
Communications network
installation and
configuration
services; Nexus
Communication
Nexus http://www.nexusinnovation.com/company.html IT service prov
Innovation for small to
Corporation medium sized
businesses; Nex
Innovation
Corporation
Nexus Radio http://www.nexusradio.com/ Downloadable
application for
searching musi
and listening to
online radio
stations; Egisca
Corp.
Nexus Systems http://nexusco.net/ Provider of uni
communication
services includi
phone systems,
high-speed
internet, instant
messaging and
conference call
Nexus Systems
division of Sek
LLC
Nexus Telecom http://www.nexustelecom.com/about_us/index.php Provider of
systems, tools,
products, soluti
and techniques
perform networ
and service
investigations f
businesses; Nex
Telecom
Nexus Wireless http://www.nexuswireless.com/ Manufacturer o
hardware and
software platfo
for radio
communication
applications;
Nexus Wireless
 WebNexus http://www.webnexus.net/component/option,com_frontpage/Itemid,1/ Internet service
company that
provides dial-u
DSL broadband
co-location, we
hosting and we
design services
WebNexus, a
division of Sola
Computer
Resources
Amphenol http://www.nexus.com Manufacturer o
Nexus jacks, plugs, an
Technologies switches for
commercial
communication
applications;
Amphenol Nex
Technologies
Co-Nexus http://www.co-nexus.com/ Provider of
Communications advanced syste
Systems specializing in
design,
implementation
and support of
telecommunica
systems and
software
applications for
businesses; Co-
Nexus
Communication
Systems, Inc.
NexusLink 5630u http://www.comtrend.com/cgi-bin/na/db- Router; Comtren
search.cgi?template=Product&dbname=product&key2=77&action=searchdbdisplay Corporation
NexusWorx http://www.byers.com/nexusworx_communication.html Fiber network
management
system; Byers
Engineering
Company

(See Won Decl. Exhibit 3).

B. The Marks Differ In Sight, Sound and Commercial Impression

The Examining Attorney argues that Applicant’s Mark encompasses the Cited Mark and that “[l]ikelihood of confusio
often found where the entirety of one mark is incorporated within another.” In determining whether there is a likelih
of confusion between marks, however, the overall impression in commercial context made by each mark is determinat
not whether the marks share a component. See Pacific Sunwear of California, Inc. v. AIT, Inc., 2004 TTAB LEXIS 76

(T.T.A.B. Feb. 18, 2004) (PAC SUN and PAC AIT are different in overall commercial impression and not confusing)

the present case, there is no likelihood of confusion because, given the weakness of the NEXUS component, the additi
term ONE in Applicant’s Mark sufficiently distinguishes it from the Cited Mark. Moreover, unlike generic formative

found to be sufficient distinctions in some of the above-listed marks, such as WARE and SUITE, the term ONE is an
arbitrary term. It therefore will not be discounted by a viewer of the Mark as a generic or descriptive identifier but rat

will be perceived as a distinct part of the overall mark. Also, the two word form of Applicant’s Mark calls attention to

ONE component as an equally prominent portion of the mark and, for this reason also, Applicant’s Mark makes a
commercial impression distinct from the Cited Mark. Finally, Applicant notes that the component ONE does not appe

the other NEXUS marks on the USPTO Register and thus is a unique identifier in Applicant’s Mark.
C. Applicant’s Goods Are Not Similar To the Services Offered Under the Cited Mark

Further, there is no likelihood of confusion here because Applicant’s product and the services offered under the Cited
Mark are different and offered to entirely disparate marketplaces. Applicant is a leading Internet technology platform
provider of web-based and mobile software products and services. Applicant has developed the open-source Android

operating system for mobile devices. (See Won Decl. Exhibit 4). Applicant has applied to register NEXUS ONE in
connection with a mobile phone utilizing Applicant’s Android operating system. Applicant’s NEXUS ONE mobile
phone product is an advanced smartphone that integrates many of Applicant’s other services. Additionally, Applican

product is configured so that software developers can use it as a developer platform to write applications utilizing the

Android operating system and thereby offer more features and capabilities for consumers. (See Won Decl. Exhibit 4).
By contrast, the Registrant offers communications network services specifically to businesses. According to a recent p

release, Registrant “owns and operates a best-in-class fiber optic network” in a select number of metropolitan areas ac
eleven Western states. In its own promotional materials, press releases and on its webpages, Registrant makes clear th

its target consumers are businesses by stating, for example:

· “Integra Telecom Inc. is a telecommunications provider for businesses and carriers”

· “Integra Telecom Inc., an integrated communications provider for business…”

· “We’re in business – to serve businesses.”

· “By focusing solely on serving businesses, you can relax knowing we treat email and web services
 you do – as lifelines to your business.”

· “Our unique combination of personal attention and enhanced products and services designed

exclusively for businesses.”

· “Integra’s…T1 is a total communications solution for your business.”
· “Integra’s online services are designed to offer your business affordable access to Email, Web Hos

and Online Data Storage.”

· “In today’s ever-changing world of telecommunications, businesses are looking for a trusted partne
who can help guide them through the myriad of changing technologies…In order to address the wide ra
of business requirements for our customers…”

· “Work with a partner who can keep up with the pace of your business…Integra offers a best-in-cla
national IP network engineered to deliver the responsiveness businesses require.”
· “Address the wide range of business requirements for our customers”

· “Integra’s High Bandwidth services were designed to support the growing need for Internet access
businesses of all sizes.”
· “Integra Telecom High Bandwidth service is available to businesses of all kinds that need fast, relia

Internet backbone access at a reasonable price.”

Registrant thus provides services to companies which wish to install enterprise-wide communications networks. (See
Won Decl. Exhibit 5).

Although Registrant offers a number of services in its business, Registrant uses the NEXUS mark in connection with o

of its services identified as the “fixed bandwidth integrated T1 service,” which is described as an integrated voice and
transmission service utilizing T1 cables. As Registrant explains on its website, “T1s offer the reliability businesses

demand and provide 1.5MB symmetrical upload and download speeds – important for businesses hosting onsite web o
mail services.” (See Won Decl. Exhibit 6). The specimen submitted with Registrant’s application reveals that the

service offered under the Cited Mark is “an integrated voice and data solution designed for our small and mid-sized

customers with traditional analog business lines that have a need for high-speed Internet access, but do not require the
service of a full T1.” It is apparent that Registrant’s services under the Cited Mark are addressed to the business

marketplace rather than individuals or households with personal needs. Indeed, consistent with the specimen, Registra

refers to the Nexus T1 line as a “business line.” Additionally, third party sources generally acknowledge that a T1
service is primarily for businesses rather than individual or residential customers. (See Won Decl. Exhibits 5 and 6).

The Examining Attorney has refused to register the Applicant’s Mark based on the assumption that the Applicant’s go

and the Cited Registrant’s services are “of a kind that may emanate from a single source.” In support, the Examining
Attorney has attached several third party registrations for marks covering both goods similar to Applicant’s product an
services similar to Cited Registrant’s services. Applicant respectfully submits that the Examining Attorney’s suggest

that the goods offered under Applicant’s Mark and the services offered under the Cited Mark may be offered together

because some registrants own marks in both the telecommunications and in the hardware field is inapt in the present c
Indeed, the Board has held that telecommunication goods and telecommunications services may not be sufficiently rel
for likelihood of confusion to exist. See In re Teligence (US), Inc., 2010 TTAB LEXIS 102, * 14 (T.T.A.B. Apr. 7, 2

(“The mere fact that the goods and services can both be described as being in the telecommunications field is not
necessarily sufficient to demonstrate a [viable relationship to find a likelihood of confusion.”). See also Teccor
Electronics, Inc. v. Tecore Inc., 2003 TTAB LEXIS 23, * 18 (“We, of course, decline to hold that all telecommunicati

goods and services are per se related.”) (citing In re Quadramed Corp., 228 U.S.P.Q. 863, 865 (T.T.A.B. 1985) (“We
think that a per se rule relating to source confusion vis-à-vis computer hardware and software is simply too rigid and
restrictive an approach and fails to consider the realities of the marketplace.”)).

Even where two marks are identical, courts and the TTAB routinely hold that there is no likelihood of confusion “if th
goods or services in question are not related in such a way that they would be encountered by the same persons in
situations that would create the incorrect assumption that they originate from the same source.” TMEP § 1207.1(a)(i)

citing Local Trademarks, Inc. v. Handy Boys, Inc., 16 U.S.P.Q.2d 1156 (T.T.A.B. 1990) (LITTLE PLUMBER for dra

opener not confusingly similar to LITTLE PLUMBER and Design for advertising services). Moreover, the Board has
that differences in the functions or purpose of products or services may prevent likelihood of confusion. Aries System

Corp. v. World Book, Inc., 26 U.S.P.Q.2d 1926, * 21 (T.T.A.B 1993) (KNOWLEDGE FINDER and INFORMATION
FINDER are not confusingly similar because, inter alia, “[s]uch products, rather than being…simply computer progra

utilized for facilitating research of medical and related scientific topics, are designed to search databases of vastly diff

levels of content for, concomitantly, significantly different purposes.”). See also Reynolds & Reynolds Co. v. I.E. Sys
Inc., 5. U.S.P.Q.2d 1749, * 12 (T.T.A.B. 1987) (no confusion where “applicant is offering a specific type of software

operational uses while the products and services offered by opposer...are applications software aimed at a very narrow

field.”). Here, the marks are not identical and the parties’ respective product and services are wholly distinct.
The realities of the marketplace here compel the conclusion that reasonably prudent purchasers would not believe that

mobile phone sold under the mark NEXUS ONE to consumers would be associated with an enterprise communication

service provider, one of whose services is a cable-based network service utilizing T1 lines and offered under the Cited
Mark. Thus, Applicant’s product cannot be considered “related” to the Cited Mark services for likelihood of consum
confusion purposes. See Champions Golf Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d 1111, 1118 (6th Cir. 1

(“Services are ‘related’ if the services are marketed and consumed such that buyers are likely to believe that the servic

similarly marked, come from the same source, or are somehow connected with or sponsored by a common company.”
(internal quotes omitted).
Moreover, Registrant does not assert rights in Cited Mark for hardware devices and does not appear to offer mobile ph

under that mark. Given the number of NEXUS and NEXUS-like marks on the USPTO Register and in use, the Cited
Mark should not be accorded a scope of protection encompassing hardware devices.
D. The Parties’ Goods and Services are Marketed in Different Channels of Trade and
only Purchased by Distinct and Sophisticated Consumers after Careful Consideration

As the differences in the respective product and services offerings would suggest, the parties’ market those offerings t
very different marketplaces in distinct channels of trade. Applicant’s product is marketed and sold to individual
consumers for personal use and to developers for use in developing software. The product was originally sold exclusi
through Applicant’s online store and later via a number of select retail stores. As such, Applicant’s product has been

marketed in highly specific and limited channels of trade directly associated with Applicant and in retail stores offerin
consumer products. (See Won Decl. Exhibit 4).
Registrant’s services, on the other hand, are marketed to companies who wish to install a communication network for

business purposes. Those services appear to be marketed through regional direct sales offices or corporate partners to
user businesses. Registrant appears to employ technical sales representatives who interact in person or over the phone

discuss the business customer’s needs before any purchase transaction is finalized. Thus Registrant’s webpage
describing the integrated T1 service points out that Registrant offers: “On-site installation and activation – An

experienced Integra Field Service Technician will ensure your specifications are met.” Customer support is provided

live representative who is always accessible via telephone: “Live 24 x 7 support – One local call for assistance with a
your Integra services including voice, Internet and phone systems.” Indeed, Registrant prides itself on developing str

relationships with its customers: “In today’s ever-changing world of telecommunications, businesses are looking for a
trusted partner who can help guide them through the myriad of changing technologies…” Thus Registrant’s services
appear to require a close working relationship with a customer to design, install and operate the communications netw
and provide subsequent support. Registrant’s services therefore would not be offered via the websites or retail stores

which offer Applicant’s mobile phone to individual consumers. (See Won Decl. Exhibit 6).

Given these differences, it is highly unlikely that Applicant’s and Registrant’s respective product and services would b
encountered by the same purchasers or under circumstances that could give rise to the mistaken belief that those good

and/or services came from a common source.

In addition, it is well-settled that the likelihood of confusion is reduced where purchasers and potential purchasers of t

products or services are sophisticated. See Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2

713, 718 (Fed. Cir. 1992) (no confusion between identical marks where, inter alia, both parties’ goods and services “a
usually purchased after careful consideration by persons who are highly knowledgeable about the goods or services an

their source.”). See also TMEP § 1207.01(d)(vii) (care in purchasing tends to minimize the likelihood of confusion).
likely purchasers of the Registrant’s communications services would be Chief Information/Technical Officers or perso

sufficiently knowledgeable about communications technology to interface with Registrant to select, implement, and
maintain a communications network on behalf of their company. The communications network would no doubt be a
significant decision for a company and thus made only after careful and due consideration of the services offered and
whether those services meet the needs of the business. Moreover, Registrant’s services are sold via contracts which li

cover multiple months or years and likely entail relatively substantial expense over time. As such, Registrant’s custom
are likely to exercise a high level of care and are not likely to be confused into thinking Applicant’s products originate
from, or are sponsored by, Registrant or vice versa. “In making purchasing decisions regarding expensive goods, the

reasonably prudent purchaser standard [that is normally applied in determining likelihood of confusion] is elevated to

standard of the ‘discriminating purchaser.’” Weiss Associates v. HTL Associates Inc., 14 U.S.P.Q.2d 1840, 1841-42
(Fed. Cir. 1990). Accordingly, where products are expensive, confusion is unlikely because the purchase is made afte

careful consideration in which the purchaser would be likely to become aware of the different sources of the products.
generally 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:96 (4th ed. 1998). On the f

present here, the degree of purchaser care exercised by Registrant’s customers eliminates any realistic possibility of

confusion.
Although Applicant’s products are marketed to individual customers in contrast to Registrant’s business customers, it
also the case that Applicant’s customers and potential customers would likely be technologically sophisticated in rega
mobile phone products. Applicant’s product utilizes an advanced, open-source operating system developed by Applic
(the Android system) and Applicant’s product sells for over $500. (See Won Decl. Exhibit 4). Thus from a consume

standpoint, Applicant’s mobile phone is unlikely to be an impulse purchase. For this reason, too, confusion is highly

unlikely.
E. There Is No Evidence of Actual Confusion

Significantly, Applicant has marketed and offered its product for sale since January 5, 2010, and is unaware of any
instance of actual confusion with Registrant’s services.
F. Registrant’s Mark Is Co-Existing with an Identical Mark Covering Similar Servic
Even within the Registrant’s own field of telecommunications services, Registrant has acknowledged that the Cited M

and an identical mark owned by a prior registrant and also covering internet access services offered to the business
marketplace can co-exist without causing confusion. Thus, Registrant entered into a co-existence agreement with the
owner of an identical and prior-filed mark which covered “[p]roviding multiple user access to a global computer

information network for participants in the physical oil industry.” The Cited Mark encompasses the identical services
namely “…high speed access to a global computer network.” Registrant achieved registration, however, via a consent
agreement in which Registrant excluded the “physical oil industry” from its scope of services. Registrant represented

the USPTO that, since Registrant does not offer services to the particular segment of the business marketplace to whic
owner of the prior mark offered its network access services, confusion was not likely. (See Won Decl. Exhibit 7).
Here, the differences between Applicant’s and Registrant’s respective product and services are comparatively vast in t

Applicant uses the Mark in connection with a product, not a service, and its product is offered to a consumer, not busi

marketplace.
III. Conclusion

Based on the significant differences between the Cited Mark and Applicant’s Mark in all of the aforementioned aspect
is unlikely that the respective relevant consumers will confuse services offered under the Cited Mark with the product

offered under Applicant’s Mark. Given the peaceful coexistence of other identical or similar marks in the same and

related fields, Applicant’s Mark, too, can coexist without a likelihood of confusion. In view of all of the foregoing, it
respectfully submitted that this application is now in condition for prompt publication and such favorable action is

therefore requested.
EVIDENCE SECTION
EVIDENCE FILE NAME(S)

ORIGINAL PDF FILE evi_216239454-204526688_._NEXUS.ONE.roa.declaration.pdf

CONVERTED PDF FILE(S)
(78 pages)
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0002.

\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0003.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0004.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0005.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0006.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0007.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0008.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0009.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0010.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0011.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0012.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0013.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0014.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0015.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0016.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0017.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0018.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0019.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0020.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0021.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0022.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0023.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0024.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0025.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0026.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0027.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0028.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0029.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0030.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0031.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0032.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0033.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0034.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0035.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0036.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0037.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0038.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0039.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0040.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0041.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0042.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0043.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0044.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0045.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0046.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0047.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0048.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0049.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0050.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0051.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0052.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0053.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0054.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0055.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0056.

DESCRIPTION OF EVIDENCE FILE
SIGNATURE SECTION
RESPONSE SIGNATURE
SIGNATORY'S NAME
SIGNATORY'S POSITION
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0057.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0058.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0059.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0060.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0061.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0062.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0063.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0064.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0065.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0066.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0067.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0068.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0069.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0070.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0071.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0072.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0073.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0074.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0075.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0076.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0077.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0078.
\\TICRS\EXPORT11\IMAGEOUT11\778\910\77891022\xml1\ROA0079.
Declaration of Karen K. Won in Support of Response to Office Action (wi
Exhibit Nos. 1-6)
/Christine Hsieh/
Christine Hsieh
Trademark Counsel
 DATE SIGNED 09/09/2010
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Thu Sep 09 21:04:03 EDT 2010
USPTO/ROA-216.239.45.4-20
100909210403414211-778910
TEAS STAMP 22-470c1241e19993730fef4d
c9edcedb6fc9e-N/A-N/A-201
00909204526688192

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:
Application serial no. 77891022 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

RESPONSE TO OFFICE ACTION

Applicant Google Inc. (“Applicant”) responds as follows to Office Action No. 1, issued in connection
with Application Serial No. 77/891022 for the mark NEXUS ONE.

I. Introduction
The Examining Attorney has refused registration of Applicant’s NEXUS ONE mark (“Applicant’s

Mark”) under Section 2(d) on the ground that there may be a likelihood of confusion between
Applicant’s Mark and the NEXUS mark in Registration No. 3554195 (the “Cited Mark”) owned by

Integra Telecom Holdings, Inc. (the “Registrant”). The Cited Mark covers:
providing telecommunication services, namely, transmission of data and voice, and
enhanced calling features, namely, conference calling, call forwarding, call rejection, call
return, call waiting, caller ID, caller ID block, continuous redial, specialized ringing
services, fax overflow services, line hunting, speed calling, long distance telephone
service, inbound toll-free service, voice mail, and high-speed access to a global computer
network, all of the foregoing excluding providing multiple-user access to a global
 computer information network for participants in the physical oil industry in class 38.
Applicant seeks to register its NEXUS ONE mark in connection with mobile phones in class 9.
Applicant respectfully submits that, given the widespread and pervasive use of NEXUS and NEXUS-

formative marks across the relevant marketplaces and classes of goods and services, it is highly unlikely

that confusion would result from Applicant’s use of NEXUS ONE in connection with mobile phones
offered to consumers and Registrant’s use of NEXUS for a telecommunications service offered to

businesses. As more fully set forth below, against the background of this crowded field of NEXUS marks,
Applicant’s Mark should proceed to registration because, based on the differences between the marks

themselves, the distinction in goods and services sold under the marks, the targeted marketplaces, the

channels of trade through which the goods and services are sold and the sophistication of the customers,
there is no likelihood of confusion between Applicant’s Mark and the Cited Mark.

II. Likelihood of Confusion Factors

The question of likelihood of confusion between marks is “related not to the nature of the mark but to its

effect ‘when applied to the goods of the applicant.’ The only relevant application is made in the
marketplace. The words ‘when applied’ do not refer to a mental exercise, but to all of the known
circumstances surrounding use of the mark.” In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1360-
61 (C.C.P.A. 1973) (original emphasis). In determining whether there is a likelihood of confusion, courts

look to many factors, including as particularly relevant here:

· The similarity or dissimilarity of the marks in their entirety;
· The similarity or dissimilarity and nature of the goods or services such that one

party’s goods will be mistaken for those of the other party;

· The channels of distribution of the goods or services;

· The conditions under which the goods or services are purchased (i.e. impulse

buying versus purchases made after careful consideration);

· The sophistication of the purchasers of the goods or services;

· The number and nature of similar marks in use on similar goods or services;

and
· The nature and extent of any actual confusion.
Id. at 1361.
The Examining Attorney has noted that, in this case, the most relevant factors are the similarity of the
marks, the similarity of the goods and/or services and the similarity of the trade channels for the

goods/services. Applicant addresses each of these factors in the sections below, along with the additional

factors listed above.

Applicant respectively submits that an analysis of these factors here leads inevitably to the conclusion that

no confusion will result between Applicant’s Mark and the Cited Mark. The Cited Mark’s scope cannot
reasonably be construed to encompass a mobile phone product sold to consumers where the Cited Mark

exists in a crowded field of identical and similar marks and where, in order to achieve registration of the

Cited Mark, Registrant conceded that it could co-exist with an identical NEXUS mark for use with
identical services because each addressed different segments of the business marketplace. Against that

background, Applicant’s Mark is sufficiently distinct from the Cited Mark because it includes a second
term, ONE. Additionally, Applicant’s Mark is used in connection with a product that is not related to

Registrant’s services and Applicant and Registrant offer their product and services, respectively, to
sophisticated consumers in specialized and distinct markets. Accordingly, there is no real potential that
the relevant purchasers would be confused as to the source of the parties’ respective product and services.

A. The Registrant’s Mark Exists in a Crowded Field of Identical and

Similar Marks
The Cited Mark exists in a crowded field of identical and closely similar marks. It is well established that
where marks are in a crowded field, each mark is entitled only to a narrow scope of protection. Miss
World (UK), Ltd. v. Mrs. America Pageants, Inc., 856 F.2d 1445, 1449 (9th Cir. 1988) (“In a ‘crowded’

field of similar marks, each member of the crowd is relatively 'weak' in its ability to prevent use by others
in the crowd… Simply put, a mark which is hemmed in on all sides by similar marks on similar goods

cannot be very 'distinctive'. It is merely one of a crowd of marks. In such a crowd, customers will not
likely be confused between any two of the crowd and may have learned to carefully pick out one from the

other.") (citing 1 J. McCarthy, supra, § 11:26, at 511, internal quotes omitted). The law recognizes the

marketplace reality that, where the same and similar marks are widely used, consumers are able to
differentiate among them. Id. Here, the USPTO register reflects a plethora of identical NEXUS and
closely similar marks. The USPTO has allowed identical NEXUS marks to co-exist on the register even
when those registrations cover products more closely related than are Applicant’s product and

Registrant’s services. See, e.g.:

Mark Registration / Owner Goods / Services
Application
No.
NEXUS 3349660 XM Satellite Radio Class 9:
Inc. Satellite radio hardware, namely, satellite
radio receivers
NEXUS 3126149 Monarch Computer Class 9:
Systems, Inc. Personal computer
NEXUS 3120442 Computer Technology Class 9:
Link Corp. Plasma screens, flat panel screens, liquid
crystal displays, projection screens, video
screens, computer monitors, television
monitors, high resolution monitors and
display systems, all for computer,
television, video and multimedia
applications
NEXUS 3113720 Leightronix, Inc. Class 9:
Network managed video controllers…for
use in the video broadcast industry
NEXUS 2836858 Support.com, Inc. Class 9:
(f.k.a. Supportsoft, Computer software, namely computer
Inc.) software for use in computer systems
management that automates the
resolution and management of support
and service requests in computing
environments, enables computer support
and service over computer networks and
automates the exchange of information
over computer networks
NEXUS 77860856 – Sony Ericsson Mobile Class 9:
Published Communications AB Graphical user interface software for
8/31/10 mobile devices that improves the user
experience on the devices by allowing
users to personalize the look and feel of
the touchscreen, keypad or input
mechanism of the devices prior to and
not related to the use or operation of the
devices for creating, enhancing,
managing, sending and receiving data
messages, voice, image and telephony on
mobile devices
 NEXUS 3335973 Luxology Class 9:
Computer software for creating audio,
video and/or image files in the field of
computer operating systems, namely,
creating a framework for time variable
media

Further, because NEXUS is a weak and highly diluted mark, the USPTO has frequently found one word
distinctions sufficient to differentiate marks. For example, the following registrations appear in classes

relevant to the Registrant’s field of use and indeed a number of them cover telecommunications services

highly similar to Registrant’s services:

Mark Registration / Owner Goods / Services
Application
No.
NEXUSLINK 3813710 Comtrend Class 9:
(Corporation) Telecommunications and data
networking hardware, namely,
devices for transporting and
aggregating voice, data, and video
communications across multiple
network infrastructures and
communications protocols
VISUAL NEXUS 3115609 Oki Electric Classes 9 and 42:
Industry Co., Ltd. …telecommunication machines,
namely telephones…and apparatus
therefor…custom design engineering
of telephony systems…
VISUAL NEXUS 3250612 Oki Electric Class 9:
Industry Co., Ltd. Computer software for…managing,
sending and receiving data messages,
voice, image and telephony over
computer networks and the internet
and for use on or with personal
computers computer servers,
wireless and other mobile
technologies and
devices…communications servers…
APPNEXUS 3701224 Appnexus Inc. Class 38:
Providing access to hosted operating
systems and computer applications
through the Internet and
organizational networks; transfer of
data by telecommunications
OMNEXUS 3060553 Specialchem Class 38:
Telecommunications services,
namely, telecommunication gateway
services, ISDN services, personal
communications services; providing
and transmitting computerized
information for third parties over
digital networks, including over the
Internet, and providing telephone call
center service; computer network
operator and information broker
services, namely, authorizing,
routing, clearing or reconciling
communications completed between
network operators via a global
computer network; gathering and
transmission of data, information and
messages of all kinds over digital
networks, namely, electronic
transmission of messages, data and
documents via computer terminals
STRATOSNEXUS 2856512 Stratos Wireless Inc. Class 38:
Telecommunication services, namely
providing private digital networking
services to transmit data and voice
NEXUSC/R 3111416 Applied Global Class 9:
Technologies, Inc. Computer hardware and computer
software for use as a reporting tool
for use in facilitating
telecommunications, namely, for
video teleconferencing over
computer networks
CISCO NEXUS 3546607 Cisco Technology, Class 9:
Inc. Telecommunication switches,
namely ethernet switches, data center
switches and unified fabric switches
NEXUSWARE 3125974 Performance Class 9:
Technologies Computer software development
Incorporated tools in the fields of…wide-area
network protocol communications
controllers, and IP-based telephony
signaling systems…
 NEXUSWORX 77958488 – Byers Engineering Class 42:
pending office Company Computer software and systems
action but consultation and customization
citing no services for the integration of
conflicting customer, network, and geographic
marks information system data for
planning, provisioning, management
and maintenance of fiber optic
networks
NEXOSS 3484880 TransNexus, Inc. Class 9:
Computer software platform for
managing voice over IP networks,
excluding and unrelated to products
and services in the wireless
telecommunications industry
IPNEXUS 2904692 Performance Class 9:
Technologies Switching and network access
Incorporated products namely, embedded ethernet
switches, network adaptors for
telecommunication uses, SS7/IP
signalling computers, computer
software and development tools, and
wide area network (WAN) protocol
computer software
NEXUS SUITE 3790603 IPC Systems, Inc. Class 9:
…telecommunication and internet
networks…in the field of financial
market trading…
VONEXUS 3088635 Interactive Class 9:
Intelligence, Inc. …computer programs for controlling
internal and external voice and data
communications for a computer
network…
NEXUSLAB 3375511 GAAH, Inc. Class 35:
DRIVEN BY THE …operation and administration of
NETWORK telecommunication systems and
networks for others

(See attached Declaration of Karen K. Won (“Won Decl.”), with copies of above registrations attached as

Exhibits 1 and 2, respectively).

It is thus evident from this large number of applications and registrations containing the term NEXUS that
“marks containing [such] term…have been registered for the same or closely related goods or services

because the remaining portions of the mark are sufficient to distinguish the marks as a whole from one
another.” In re Hamilton Bank, 222 U.S.P.Q. 174 (T.T.A.B. 1984).
Moreover, in addition to co-existence on the USPTO register, these and other identical and similar marks
co-exist in the marketplace for telecommunications and other goods and services in related fields. See,

e.g.:
Mark Source Description
Nexus http://www.leightronix.com/products_nexus.php Digital video
messaging system
Leightronix, Inc.
Nexus http://www.nexusis.com/default.asp Provider of
communications
and information
and technology
solutions for
businesses; Nexu
IS, Inc.
Cisco Nexus http://www.cisco.com/en/US/products/ps9902/index.html Series of softwar
1000v switches for
network services
Cisco Systems,
Inc.
Nexus http://www.nexuscomm.net/about/ Provider of
Communications network
installation and
configuration
services; Nexus
Communications
Nexus http://www.nexusinnovation.com/company.html IT service provid
Innovation for small to
Corporation medium sized
businesses; Nexu
Innovation
Corporation
Nexus Radio http://www.nexusradio.com/ Downloadable
application for
searching music
and listening to
online radio
stations; Egisca
Corp.
Nexus Systems http://nexusco.net/ Provider of unifi
communications
services includin
phone systems,
high-speed
internet, instant
messaging and
conference callin
Nexus Systems,
division of Sekiu
LLC
Nexus Telecom http://www.nexustelecom.com/about_us/index.php Provider of
systems, tools,
products, solutio
and techniques t
perform network
and service
investigations fo
businesses; Nexu
Telecom
Nexus Wireless http://www.nexuswireless.com/ Manufacturer of
hardware and
software platform
for radio
communications
applications;
Nexus Wireless
WebNexus http://www.webnexus.net/component/option,com_frontpage/Itemid,1/ Internet services
company that
provides dial-up
DSL broadband,
co-location, web
hosting and web
design services;
WebNexus, a
division of Solan
Computer
Resources
 Amphenol http://www.nexus.com Manufacturer of
Nexus jacks, plugs, and
Technologies switches for
commercial
communication
applications;
Amphenol Nexu
Technologies
Co-Nexus http://www.co-nexus.com/ Provider of
Communications advanced system
Systems specializing in th
design,
implementation
and support of
telecommunicati
systems and
software
applications for
businesses; Co-
Nexus
Communications
Systems, Inc.
NexusLink 5630u http://www.comtrend.com/cgi-bin/na/db- Router; Comtrend
search.cgi?template=Product&dbname=product&key2=77&action=searchdbdisplay Corporation
NexusWorx http://www.byers.com/nexusworx_communication.html Fiber network
management
system; Byers
Engineering
Company

(See Won Decl. Exhibit 3).

B. The Marks Differ In Sight, Sound and Commercial Impression

The Examining Attorney argues that Applicant’s Mark encompasses the Cited Mark and that

“[l]ikelihood of confusion is often found where the entirety of one mark is incorporated within another.”
In determining whether there is a likelihood of confusion between marks, however, the overall impression

in commercial context made by each mark is determinative, not whether the marks share a component.

See Pacific Sunwear of California, Inc. v. AIT, Inc., 2004 TTAB LEXIS 76 (T.T.A.B. Feb. 18, 2004)
(PAC SUN and PAC AIT are different in overall commercial impression and not confusing). In the

present case, there is no likelihood of confusion because, given the weakness of the NEXUS component,

the additional term ONE in Applicant’s Mark sufficiently distinguishes it from the Cited Mark.
Moreover, unlike generic formatives found to be sufficient distinctions in some of the above-listed marks,
such as WARE and SUITE, the term ONE is an arbitrary term. It therefore will not be discounted by a
viewer of the Mark as a generic or descriptive identifier but rather will be perceived as a distinct part of

the overall mark. Also, the two word form of Applicant’s Mark calls attention to the ONE component as
an equally prominent portion of the mark and, for this reason also, Applicant’s Mark makes a commercial

impression distinct from the Cited Mark. Finally, Applicant notes that the component ONE does not

appear in the other NEXUS marks on the USPTO Register and thus is a unique identifier in Applicant’s
Mark.
C. Applicant’s Goods Are Not Similar To the Services Offered Under the
Cited Mark

Further, there is no likelihood of confusion here because Applicant’s product and the services offered
under the Cited Mark are different and offered to entirely disparate marketplaces. Applicant is a leading
Internet technology platform and provider of web-based and mobile software products and services.
Applicant has developed the open-source Android operating system for mobile devices. (See Won Decl.

Exhibit 4). Applicant has applied to register NEXUS ONE in connection with a mobile phone utilizing
Applicant’s Android operating system. Applicant’s NEXUS ONE mobile phone product is an advanced
smartphone that integrates many of Applicant’s other services. Additionally, Applicant’s product is

configured so that software developers can use it as a developer platform to write applications utilizing the
Android operating system and thereby offer more features and capabilities for consumers. (See Won Decl.
Exhibit 4).
By contrast, the Registrant offers communications network services specifically to businesses. According

to a recent press release, Registrant “owns and operates a best-in-class fiber optic network” in a select

number of metropolitan areas across eleven Western states. In its own promotional materials, press
releases and on its webpages, Registrant makes clear that its target consumers are businesses by stating,

for example:

· “Integra Telecom Inc. is a telecommunications provider for businesses and carriers”

· “Integra Telecom Inc., an integrated communications provider for business…”

· “We’re in business – to serve businesses.”

· “By focusing solely on serving businesses, you can relax knowing we treat email and
 web services like you do – as lifelines to your business.”
· “Our unique combination of personal attention and enhanced products and services

designed exclusively for businesses.”

· “Integra’s…T1 is a total communications solution for your business.”

· “Integra’s online services are designed to offer your business affordable access to

Email, Web Hosting and Online Data Storage.”

· “In today’s ever-changing world of telecommunications, businesses are looking for a

trusted partner who can help guide them through the myriad of changing technologies…In
order to address the wide range of business requirements for our customers…”

· “Work with a partner who can keep up with the pace of your business…Integra offers a
best-in-class national IP network engineered to deliver the responsiveness businesses
require.”
· “Address the wide range of business requirements for our customers”

· “Integra’s High Bandwidth services were designed to support the growing need for
Internet access by businesses of all sizes.”
· “Integra Telecom High Bandwidth service is available to businesses of all kinds that

need fast, reliable Internet backbone access at a reasonable price.”

Registrant thus provides services to companies which wish to install enterprise-wide communications
networks. (See Won Decl. Exhibit 5).
Although Registrant offers a number of services in its business, Registrant uses the NEXUS mark in

connection with one of its services identified as the “fixed bandwidth integrated T1 service,” which is

described as an integrated voice and data transmission service utilizing T1 cables. As Registrant explains
on its website, “T1s offer the reliability businesses demand and provide 1.5MB symmetrical upload and

download speeds – important for businesses hosting onsite web or e-mail services.” (See Won Decl.

Exhibit 6). The specimen submitted with Registrant’s application reveals that the service offered under
the Cited Mark is “an integrated voice and data solution designed for our small and mid-sized customers

with traditional analog business lines that have a need for high-speed Internet access, but do not require

the service of a full T1.” It is apparent that Registrant’s services under the Cited Mark are addressed to
the business marketplace rather than individuals or households with personal needs. Indeed, consistent
with the specimen, Registrant refers to the Nexus T1 line as a “business line.” Additionally, third party

sources generally acknowledge that a T1 service is primarily for businesses rather than individual or

residential customers. (See Won Decl. Exhibits 5 and 6).

The Examining Attorney has refused to register the Applicant’s Mark based on the assumption that the

Applicant’s goods and the Cited Registrant’s services are “of a kind that may emanate from a single
source.” In support, the Examining Attorney has attached several third party registrations for marks

covering both goods similar to Applicant’s product and services similar to Cited Registrant’s services.
Applicant respectfully submits that the Examining Attorney’s suggestion that the goods offered under

Applicant’s Mark and the services offered under the Cited Mark may be offered together because some
registrants own marks in both the telecommunications and in the hardware field is inapt in the present
case. Indeed, the Board has held that telecommunication goods and telecommunications services may not
be sufficiently related for likelihood of confusion to exist. See In re Teligence (US), Inc., 2010 TTAB

LEXIS 102, * 14 (T.T.A.B. Apr. 7, 2010) (“The mere fact that the goods and services can both be
described as being in the telecommunications field is not necessarily sufficient to demonstrate a [viable
relationship to find a likelihood of confusion.”). See also Teccor Electronics, Inc. v. Tecore Inc., 2003

TTAB LEXIS 23, * 18 (“We, of course, decline to hold that all telecommunication goods and services are
per se related.”) (citing In re Quadramed Corp., 228 U.S.P.Q. 863, 865 (T.T.A.B. 1985) (“We think that a
per se rule relating to source confusion vis-à-vis computer hardware and software is simply too rigid and
restrictive an approach and fails to consider the realities of the marketplace.”)).

Even where two marks are identical, courts and the TTAB routinely hold that there is no likelihood of

confusion “if the goods or services in question are not related in such a way that they would be
encountered by the same persons in situations that would create the incorrect assumption that they

originate from the same source.” TMEP § 1207.1(a)(i) (citing Local Trademarks, Inc. v. Handy Boys,

Inc., 16 U.S.P.Q.2d 1156 (T.T.A.B. 1990) (LITTLE PLUMBER for drain opener not confusingly similar
to LITTLE PLUMBER and Design for advertising services). Moreover, the Board has held that

differences in the functions or purpose of products or services may prevent likelihood of confusion. Aries

Systems Corp. v. World Book, Inc., 26 U.S.P.Q.2d 1926, * 21 (T.T.A.B 1993) (KNOWLEDGE FINDER
and INFORMATION FINDER are not confusingly similar because, inter alia, “[s]uch products, rather
than being…simply computer programs utilized for facilitating research of medical and related scientific

topics, are designed to search databases of vastly different levels of content for, concomitantly,

significantly different purposes.”). See also Reynolds & Reynolds Co. v. I.E. Systems, Inc., 5. U.S.P.Q.2d
1749, * 12 (T.T.A.B. 1987) (no confusion where “applicant is offering a specific type of software for

operational uses while the products and services offered by opposer...are applications software aimed at a
very narrow field.”). Here, the marks are not identical and the parties’ respective product and services

are wholly distinct.

The realities of the marketplace here compel the conclusion that reasonably prudent purchasers would not

believe that a mobile phone sold under the mark NEXUS ONE to consumers would be associated with an
enterprise communications service provider, one of whose services is a cable-based network service
utilizing T1 lines and offered under the Cited Mark. Thus, Applicant’s product cannot be considered
“related” to the Cited Mark services for likelihood of consumer confusion purposes. See Champions Golf

Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d 1111, 1118 (6th Cir. 1996) (“Services are ‘related’
if the services are marketed and consumed such that buyers are likely to believe that the services, similarly
marked, come from the same source, or are somehow connected with or sponsored by a common

company.”) (internal quotes omitted).

Moreover, Registrant does not assert rights in Cited Mark for hardware devices and does not appear to
offer mobile phones under that mark. Given the number of NEXUS and NEXUS-like marks on the
USPTO Register and in use, the Cited Mark should not be accorded a scope of protection encompassing

hardware devices.
D. The Parties’ Goods and Services are Marketed in Different Channels
of Trade and are only Purchased by Distinct and Sophisticated Consumers
after Careful Consideration
As the differences in the respective product and services offerings would suggest, the parties’ market

those offerings to very different marketplaces in distinct channels of trade. Applicant’s product is

marketed and sold to individual consumers for personal use and to developers for use in developing
software. The product was originally sold exclusively through Applicant’s online store and later via a

number of select retail stores. As such, Applicant’s product has been marketed in highly specific and
limited channels of trade directly associated with Applicant and in retail stores offering consumer
products. (See Won Decl. Exhibit 4).
Registrant’s services, on the other hand, are marketed to companies who wish to install a communication
network for business purposes. Those services appear to be marketed through regional direct sales offices

or corporate partners to end user businesses. Registrant appears to employ technical sales representatives
who interact in person or over the phone to discuss the business customer’s needs before any purchase

transaction is finalized. Thus Registrant’s webpage describing the integrated T1 service points out that

Registrant offers: “On-site installation and activation – An experienced Integra Field Service Technician
will ensure your specifications are met.” Customer support is provided by a live representative who is
always accessible via telephone: “Live 24 x 7 support – One local call for assistance with all of your

Integra services including voice, Internet and phone systems.” Indeed, Registrant prides itself on
developing strong relationships with its customers: “In today’s ever-changing world of
telecommunications, businesses are looking for a trusted partner who can help guide them through the

myriad of changing technologies…” Thus Registrant’s services appear to require a close working
relationship with a customer to design, install and operate the communications network and provide
subsequent support. Registrant’s services therefore would not be offered via the websites or retail stores

which offer Applicant’s mobile phone to individual consumers. (See Won Decl. Exhibit 6).
Given these differences, it is highly unlikely that Applicant’s and Registrant’s respective product and
services would be encountered by the same purchasers or under circumstances that could give rise to the

mistaken belief that those goods and/or services came from a common source.

In addition, it is well-settled that the likelihood of confusion is reduced where purchasers and potential
purchasers of the products or services are sophisticated. See Electronic Design & Sales, Inc. v. Electronic

Data Systems Corp., 954 F.2d 713, 718 (Fed. Cir. 1992) (no confusion between identical marks where,
inter alia, both parties’ goods and services “are usually purchased after careful consideration by persons

who are highly knowledgeable about the goods or services and their source.”). See also TMEP §

1207.01(d)(vii) (care in purchasing tends to minimize the likelihood of confusion). The likely purchasers
of the Registrant’s communications services would be Chief Information/Technical Officers or persons

sufficiently knowledgeable about communications technology to interface with Registrant to select,

implement, and maintain a communications network on behalf of their company. The communications
network would no doubt be a significant decision for a company and thus made only after careful and due
consideration of the services offered and whether those services meet the needs of the business.
Moreover, Registrant’s services are sold via contracts which likely cover multiple months or years and

likely entail relatively substantial expense over time. As such, Registrant’s customers are likely to
exercise a high level of care and are not likely to be confused into thinking Applicant’s products originate

from, or are sponsored by, Registrant or vice versa. “In making purchasing decisions regarding

expensive goods, the reasonably prudent purchaser standard [that is normally applied in determining
likelihood of confusion] is elevated to the standard of the ‘discriminating purchaser.’” Weiss Associates
v. HTL Associates Inc., 14 U.S.P.Q.2d 1840, 1841-42 (Fed. Cir. 1990). Accordingly, where products are

expensive, confusion is unlikely because the purchase is made after careful consideration in which the
purchaser would be likely to become aware of the different sources of the products. See generally 3 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:96 (4th ed. 1998). On the

facts present here, the degree of purchaser care exercised by Registrant’s customers eliminates any
realistic possibility of confusion.
Although Applicant’s products are marketed to individual customers in contrast to Registrant’s business

customers, it is also the case that Applicant’s customers and potential customers would likely be
technologically sophisticated in regard to mobile phone products. Applicant’s product utilizes an
advanced, open-source operating system developed by Applicant (the Android system) and Applicant’s

product sells for over $500. (See Won Decl. Exhibit 4). Thus from a consumer standpoint, Applicant’s

mobile phone is unlikely to be an impulse purchase. For this reason, too, confusion is highly unlikely.
E. There Is No Evidence of Actual Confusion

Significantly, Applicant has marketed and offered its product for sale since January 5, 2010, and is
unaware of any instance of actual confusion with Registrant’s services.
F. Registrant’s Mark Is Co-Existing with an Identical Mark Covering
Similar Services

Even within the Registrant’s own field of telecommunications services, Registrant has acknowledged that
the Cited Mark and an identical mark owned by a prior registrant and also covering internet access

services offered to the business marketplace can co-exist without causing confusion. Thus, Registrant
entered into a co-existence agreement with the owner of an identical and prior-filed mark which covered
“[p]roviding multiple user access to a global computer information network for participants in the
physical oil industry.” The Cited Mark encompasses the identical services, namely “…high speed access
to a global computer network.” Registrant achieved registration, however, via a consent agreement in

which Registrant excluded the “physical oil industry” from its scope of services. Registrant represented
to the USPTO that, since Registrant does not offer services to the particular segment of the business

marketplace to which the owner of the prior mark offered its network access services, confusion was not
likely. (See Won Decl. Exhibit 7).

Here, the differences between Applicant’s and Registrant’s respective product and services are
comparatively vast in that Applicant uses the Mark in connection with a product, not a service, and its

product is offered to a consumer, not business, marketplace.

III. Conclusion
Based on the significant differences between the Cited Mark and Applicant’s Mark in all of the
aforementioned aspects, it is unlikely that the respective relevant consumers will confuse services offered

under the Cited Mark with the product offered under Applicant’s Mark. Given the peaceful coexistence
of other identical or similar marks in the same and related fields, Applicant’s Mark, too, can coexist
without a likelihood of confusion. In view of all of the foregoing, it is respectfully submitted that this

application is now in condition for prompt publication and such favorable action is therefore requested.

EVIDENCE
Evidence in the nature of Declaration of Karen K. Won in Support of Response to Office Action (with
Exhibit Nos. 1-6) has been attached.
Original PDF file:
evi_216239454-204526688_._NEXUS.ONE.roa.declaration.pdf
Converted PDF file(s) (78 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24
Evidence-25
Evidence-26
Evidence-27
Evidence-28
Evidence-29
Evidence-30
Evidence-31
Evidence-32
Evidence-33
Evidence-34
Evidence-35
Evidence-36
Evidence-37
Evidence-38
Evidence-39
Evidence-40
Evidence-41
Evidence-42
Evidence-43
Evidence-44
Evidence-45
Evidence-46
Evidence-47
Evidence-48
Evidence-49
Evidence-50
Evidence-51
Evidence-52
Evidence-53
Evidence-54
Evidence-55
Evidence-56
Evidence-57
Evidence-58
Evidence-59
Evidence-60
Evidence-61
Evidence-62
Evidence-63
Evidence-64
Evidence-65
Evidence-66
Evidence-67
Evidence-68
Evidence-69
Evidence-70
Evidence-71
Evidence-72
Evidence-73
Evidence-74
Evidence-75
Evidence-76
Evidence-77
Evidence-78

SIGNATURE(S)
Response Signature
Signature: /Christine Hsieh/ Date: 09/09/2010
Signatory's Name: Christine Hsieh
Signatory's Position: Trademark Counsel

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the
highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal
territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to
the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian
attorney/agent not currently associated with his/her company/firm previously represented the applicant in
this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power
of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the
applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing
him/her as an associate attorney in this matter.

Serial Number: 77891022

Internet Transmission Date: Thu Sep 09 21:04:03 EDT 2010
TEAS Stamp: USPTO/ROA-216.239.45.4-20100909210403414
211-77891022-470c1241e19993730fef4dc9edc
edb6fc9e-N/A-N/A-20100909204526688192