To: | ListenLogic LLC (langsfeld@gmail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 77840929 - RESONATE - N/A |
Sent: | 12/31/2009 12:03:10 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/840929
MARK: RESONATE
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: ListenLogic LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 12/31/2009
Please note that the citations to the “TMEP” below refer to the Trademark Manual of Examining Procedure (5th ed., 2007), available on the United States Patent and Trademark Office website at www.gov.uspto.report/main/trademarks.htm. The TMEP is a detailed guidebook written by the Office to explain the laws and procedures that govern the trademark and service mark application, registration and post registration processes.
Additionally please note that copies of Office actions and supporting documentation for this application can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow. Simply, enter the serial number of this application in the box labeled NUMBER and click on the SUBMIT button. The Office actions can then be viewed by clicking the links labeled “Offc Action Outgoing” (which have their relevant mail/creation dates next to them) in the Trademark Document Retrieval (TDR) system.
Likelihood of Confusion – Refusal under Section 2(d)
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 Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); 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. The marks are compared for similarities in their appearance, sound, connotation and commercial impression. TMEP §§1207.01, 1207.01(b). The goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).
Comparison of the Marks
Applicant’s mark is “RESONATE.”
Registrant’s mark is “RESONANCE” and design.
In this case, the dominant words in the marks are “RESONANCE” and “RESONATE.” Significantly, the terms appear similar, sound similar, and cause the marks to have very similar overall commercial impressions.
Comparison of the Goods/Services
Registrant’s services are data automation and collection service using proprietary software systems to collect, analyze and evaluate service data. Applicant’s goods/services are broadly identified and encompass technology to monitor, analyze and discover meaningful insights within online user-generated media and social media.
In this case, it appears that the goods and services of both applicant and registrant may be used for analyzing and gather the same types of information. Thus, the goods/services appear highly related.
Based on the foregoing, it is clear that the marks are similar and the goods/services are related. Therefore, registration is refused under Section 2(d) based on a likelihood of confusion.
Prior-filed, Pending Application
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant must respond to the requirement(s) set forth below.
Information Requirement
Failure to respond to this request for information can be grounds for refusing registration. See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
Identification and Classification of Goods and Services
The identification of goods and services requires clarification. In this regard, applicant must clarify the nature of the technology products by indicating their common commercial name(s). See TMEP §1402.01.
Applicant may adopt the following identification, if accurate. See TMEP §1402.01.
Software recorded on computer media for use in monitoring, analyzing and obtaining information requested by the user, all by reviewing online user-generated media and social media, in Class 9.
Providing online non-downloadable software for use in monitoring, analyzing and obtaining information requested by the user, all by reviewing online user-generated media and social media, in Class 42.
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. See TMEP §1402.04.
Multiple-classification Requirements
(1) Applicant must list the goods/services by international class;
(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); and
(3) For each additional international class of goods and/or services, applicant must submit:
(a) Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class. The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.;
(b) One specimen showing the mark in use in commerce for each class of goods and/or services. The specimen must have been in use in commerce at least as early as the filing date of the application. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen. Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.;
(c) The following statement: “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”; and
(d) Verification of the statements in 3(a) and 3(c) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33. Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).
See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a); TMEP §§1403.01, 1403.02(c).
Specimen
The examiner notes that applicant indicated that a specimen was attached. However, none was received.
Therefore, applicant must submit the following for each class:
(1) A specimen (i.e., an example of how applicant actually uses its mark in commerce) for each class of goods and/or services based on use in commerce; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.
If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1).
Pending receipt of a proper response, registration is refused because applicant has not provided evidence of the applied-for mark in use in commerce as a trademark and/or service mark. Trademark Act Sections 1(a)(1) and 45, 15 U.S.C. §§1051(a)(1), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
If applicant responds to this Office action online via the Trademark Electronic Application System (TEAS), applicant should provide a substitute specimen as follows: (1) answer “yes” to the TEAS response form wizard question to “submit a new or substitute specimen;” (2) attach a jpg or pdf file of the substitute specimen; and (3) select the statement that “The substitute specimen(s) was in use in commerce at least as early as the filing date of the application.” However, if applicant is responding by amending the application to a Section 1(b) filing basis, applicant should do the following: (1) answer “yes” to the TEAS response form wizard question to “change filing basis;” (2) uncheck the box for “Filing Basis Section 1(a);” and (3) check the box for “Filing Basis Section 1(b).” Please note that these steps appear on different pages of the TEAS response form.
Whether submitting a substitute specimen or amending the filing basis to Section 1(b), applicant must also manually enter his/her electronic signature and date after the declaration at the end of the TEAS response form. See TMEP §§611.01(c), 804.01(b).
If applicant experiences difficulty in submitting the required substitute specimen, supporting statement and/or declaration, or changing the filing basis, please e-mail TEAS@uspto.gov for technical assistance regarding the TEAS response form.
If applicant responds to this Office action on paper, via regular mail, applicant may provide a verified substitute specimen by checking the first statement below, personally signing and dating the declaration appearing below the statement, and submitting a substitute specimen showing the applied-for mark in use in commerce. See 37 C.F.R. §2.20; TMEP §§804.01(b), 904.05. If applicant is responding by amending the application to a Section 1(b) filing basis, applicant may check the second statement below, and personally sign and date the declaration appearing below the statement. See 37 C.F.R. §2.20; TMEP §§804.01(b), 806.03(c).
q The specimen was in use in commerce at least as early as the filing date of the application.
q Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.
The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
General Response Guidelines
There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.
If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
Applicant must explicitly address each issue raised in this Office action. If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn. To respond to requirements, applicant should set forth in writing the required changes or statements.
The response must be signed by the individual applicant or by a person with legal authority to bind a juristic applicant (e.g., a corporate officer, the equivalent of an officer for unincorporated organizations or limited liability companies, a general partner). See TMEP §§611.03(b), 611.06 et seq., 712.01. In the case of joint applicants, all should sign. TMEP §611.06(a). The proper signatory must personally sign or manually enter his/her electronic signature. TMEP §§611.01(b), 611.02.
Please do not hesitate to contact the undersigned with any questions.
/MaureenDallLott/
Maureen Dall Lott
Trademark Examining Attorney, Law Office 117
United States Patent and Trademark Office
571-272-9714
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.