Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 11/29/2009

 

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

2(d) – Likelihood of Confusion

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 3184410 and 3184463.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The Court in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).  In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998); TMEP §§1207.01 et seq.

 

Taking into account the relevant Du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely.  In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

2(d) – Similar Marks

The marks are compared for similarities in sound, appearance, meaning or connotation.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b).

 

The applicant’s mark is BGCPRO for Computer financial software; customizable application programming interfaces; computer software that enables trading in financial instruments, provides trade execution and trade confirmation capabilities, and provides access to financial information and financial market information, real time and otherwise; financial services; financial trade execution, confirmation and settlement services in the fields of securities, commodities, futures, options, stocks, bonds, all forms of derivatives, foreign exchange and other financial instruments; financial analysis and consultation; financial management; financial planning; financial portfolio management; financial research; investment fund transfer and transaction services; investment banking services; investment brokerage; transacting and trading of financial instruments in the fields of securities, commodities, futures, options, stocks, bonds, all forms of derivatives, foreign exchange and other financial instruments; fund investment consultation financial investment in the field of securities; financial services in the nature of an investment security; monetary affairs, namely, monetary exchange and currency exchange and advise; banking; securities brokerage; trading financial instruments for others in the fields of securities, commodities, futures, options, stocks, bonds, all forms of derivatives, foreign exchange and other financial instruments; provision of financial and securities information; settlement of financial and securities transactions in the fields of securities, commodities, futures, options, stocks, bonds, all forms of derivatives, foreign exchange and other financial instruments; Computer software design for others; computer hardware and software development; computer consultation; installation of computer software; maintenance of computer software; updating of computer software for others; consulting services in the field of design, selection and implementation and use of computer hardware and software systems for others; customization of computer hardware and software; providing on-line non-downloadable software for accessing financial information and trading of financial instruments; technical support services, namely, troubleshooting of computer hardware and software problems; licensing of intellectual property; patent licensing; customization of computer software; customized software development services; providing customizable application programming interfaces. 

 

The registered marks are as follows:

 

1) U.S. Registration No. 3184410 is BGC for financial services, namely, brokerage for transacting and trading of financial instruments; providing information in the field of futures, commodities, securities, currencies, financial instruments, brokerage, trading, investments, companies, financial markets and stock pricing and indices; providing financial market information relating to market trading quotations, trading stocks, futures, currencies, commodities and securities and related trade execution, confirmation, clearing and settlement services and providing information related to such trades; providing online financial information relating to market quotations, trading in financial instruments, including bids, offers, trade and sizes, execution, confirmation and supervision of clearing and settlement of financial instruments and financial information relating thereto and

 

2) U.S. Registration No. 3184463 is BGC plus design for for financial services, namely, brokerage for transacting and trading of financial instruments; providing information in the field of futures, commodities, securities, currencies, financial instruments, brokerage, trading, investments, companies, financial markets and stock pricing and indices; providing financial market information relating to market trading quotations, trading stocks, futures, currencies, commodities and securities and related trade execution, confirmation, clearing and settlement services and providing information related to such trades; providing online financial information relating to market quotations, trading in financial instruments, including bids, offers, trade and sizes, execution, confirmation and supervision of clearing and settlement of financial instruments and financial information relating thereto

 

Although the applicant has added material to the registered marks, the marks all share the similar wording “BGC.”  The mere addition of a term to a registered mark generally does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Trademark Act Section 2(d).  See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (THE LILLY and LILLI ANN); In re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO and MACHO COMBOS); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE and CREST CAREER IMAGES); In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and RICHARD PETTY’S ACCU TUNE); In re Cosvetic Labs., Inc., 202 USPQ 842 (TTAB 1979) (HEAD START and HEAD START COSVETIC); TMEP §1207.01(b)(iii).  Here the addition of “PRO” does not create a distinct commercial impression because it is merely a shortened form of the word “professional” and is not source indicating.

 

2(d) – Related Goods/Services

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, they need only be related in some manner, or the conditions surrounding their marketing be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods and/or services come from a common source.  On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).

 

A determination of whether there is a likelihood of confusion is made solely on the basis of the goods and/or services identified in the application and registration, without limitations or restrictions that are not reflected therein.  In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595 (TTAB 1999).  If the cited registration describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the registration encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639 (TTAB 1981); TMEP §1207.01(a)(iii).

 

In this case, the applicant and registrants goods are closely related since they are all various types of financial services and financially focused computer goods and services.  Accordingly, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. 

 

Ownership of Cited Registrations

If the marks in the cited registrations have been assigned to applicant, applicant can provide evidence of ownership of the marks by satisfying one of the following:

 

(1)  Record the assignment with the Office’s Assignment Services Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;

 

(2)  Submit copies of documents evidencing the chain of title; or

 

(3)  Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:  “Applicant is the owner of U.S. Registration Nos. 3184410 and 3184463.” 

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§3.25, 3.73; TMEP §502.02(a).

 

Merely recording a document with the Assignment Services Branch does not constitute a response to an Office action.  TMEP §503.01(d).

 

Applicant must also respond to the requirement(s) set forth below.

 

Identification of Goods and Services

The identification of goods and services is indefinite and must be clarified because it is too broad and does not adequately convey the nature of the applicant’s goods or services.  See TMEP §1402.01.  Specifically, in Class 009 the applicant must provide the function of the financial software.  Additionally, the nature of the “programming interfaces” as software development tools must be provided. 

 

In Class 036, “financial services” is indefinite, as is “other financial instruments.”  The applicant must either provide the exact instruments or delete this reference from the identification.  Also, the applicant should note the addition of the semi-colon following “fund investment consultation.”

 

In Class 042, “licensing” is a Class 045 service.  Finally, the “programming interface” must be specified as an application service provider and the purpose of the interface must also be listed.

 

Applicant may substitute the following wording, if accurate: 

 

Class 009: Computer financial software for {please provide the function of the software}; customizable application programming interfaces, namely, software development tools for the creation of client interfaces; computer software that enables trading in financial instruments, provides trade execution and trade confirmation capabilities, and provides access to financial information and financial market information, real time and otherwise

 

Class 036: Financial services, namely, financial trade execution, confirmation and settlement services in the fields of securities, commodities, futures, options, stocks, bonds, all forms of derivatives, and foreign exchange and other financial instruments; financial analysis and consultation; financial management; financial planning; financial portfolio management; financial research; investment fund transfer and transaction services; investment banking services; investment brokerage; transacting and trading of financial instruments in the fields of securities, commodities, futures, options, stocks, bonds, all forms of derivatives, and foreign exchange and other financial instruments; fund investment consultation; financial investment in the field of securities; financial services in the nature of an investment security; monetary affairs, namely, monetary exchange and currency exchange and advise; banking; securities brokerage; trading financial instruments for others in the fields of securities, commodities, futures, options, stocks, bonds, all forms of derivatives, and foreign exchange and other financial instruments; provision of financial and securities information; settlement of financial and securities transactions in the fields of securities, commodities, futures, options, stocks,

bonds, all forms of derivatives, and foreign exchange and other financial instruments

 

Class 042:  Computer software design for others; computer hardware and software development; computer consultation; installation of computer software; maintenance of computer software; updating of computer software for others; consulting services in the field of design, selection and implementation and use of computer hardware and software systems for others; customization of computer hardware and software; providing on-line non-downloadable software for accessing financial information and trading of financial instruments; technical support services, namely, troubleshooting of computer hardware and software problems; licensing of intellectual property; patent licensing [moved to Class 045]; customization of computer software; customized software development services; Application service provider featuring customizable application programming interface for use in building software applications

 

Class 045: Licensing of intellectual property; patent licensing

 

See TMEP §§1402.01, 1402.03.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Multi-Class Application Requirements

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)        Applicant must list the goods and/or services by international class; and

 

(2)        Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Applicant’s Response

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

 

 

 

 

/Jessica A. Powers/

Trademark Examining Attorney

Law Office 104

Phone Number (571) 272-7183

Fax Number (571) 273-7183

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77809154) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 11/29/2009 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77809154&doc_type=OOA&mail_date=20091129 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 11/29/2009 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.