UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/302256

 

Status

 

In a first Office action, the examining attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration Nos. 2596204 and 1670110 as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive.  The Office action also provided information regarding conflicting Application Serial Nos. 76520870, 76520871, 76520872, 76248882 and 78216873.  In the same Office action, the examining attorney also required the applicant to (1) clarify the nature of the mark because the mark differs on the drawing page and specimen, (2) submit an acceptable identification of goods/services, (3) submit an acceptable specimen for its “Internet based software” product/service.

 

In response to the first Office action, the applicant submitted arguments, submitted a substitute specimen, and proposed an amendment of the identification of goods/services.

 

After further consideration, the examining attorney withdraws the 2(d) refusal with regards to Registration No. 2596204.  The examining attorney also withdraws citation of the cited potentially conflicting Application Serial Nos. 76520870, 76520871, 76520872, 76248882 and 78216873.

 

The examining attorney continues the refusal under Section 2(d) with regards to Registration No. 1670110.  The examining attorney also continues the requirement for an acceptable identification of goods and services, as discussed below.  The examining attorney will accept the substitute specimen for the “Internet based software” product, if the applicant adopts the Class 42 identification suggested below.

 

With regards to its class 35 recitation of services, the applicant appears to amend the basis from an “intent-to-use” basis under Section 1(b) to a “use” basis under Section 1(a).  The proposed amendment raises a new issue, as discussed below.

 

Refusal of Registration: Likelihood of Confusion

 

The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 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 this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods, and similarity of trade channels of the goods.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).

 

The second step requires that the examining attorney compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).

 

In the present case, applicant’s mark and the registrant’s mark are identical.  If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).

 

In this instance the identical marks are used on closely related software goods.  Indeed, both the applicant’s broad original identification of goods and services and the applicant broad proposed identification of goods and services could include the registrant’s identified goods.

 

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark that is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

Thus, for the reasons stated above, the examining attorney must maintain the refusal under Trademark Act Section 2(d).

 

Identification of Goods Indefinite

 

The applicant’s proposed identification is unacceptable as indefinite.  Additionally the proposed amendment to the identification cannot be accepted because it refers to goods and/or services that are not within the scope of the identification that was set forth in the application at the time of filing.

 

The original identification of goods specifies “Internet based business management software and collaboration software.”  The proposed amendment, however, specifies “computer software for use in networked systems for collaboratively managing software development and business services, namely for managing in real-time the development of software and for providing business services across a network.” The proposed amendment does not specify Internet based software and therefore could include non-Internet based software goods beyond the scope of the original identification.

 

While the identification of goods and/or services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.  Therefore, this wording should be deleted from the identification.

 

Applicant must clarify the identification of goods to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.

 

The applicant’s specimen indicates that the applicant provides its software as an application service provide.  The applicant may therefore adopt the following identification, if accurate:

           

            [based on use in commerce, Section 1(a)] Internet based business management and collaborative software, namely DOWNLOADABLE COLLABORATION software for managing in real-time the development of software and DOWNLOADABLE COLLABORATION SOFTWARE FOR THE COLLECTION, EDITING, ORGANIZING, MODIFYING, BOOK MARKING, TRANSMISSION, STORAGE AND http://atlas/netacgi/ - h38http://atlas/netacgi/ - h40SHARING OF DATA AND INFORMATION, in international class 9;

 

            [based on a bona fide intent to use the mark in commerce, Section 1(b)] Business management services, BUSINESS project management services in the field of [indicate filed, note that computer project management services in class 42], in international class 35;

 

            [based on use in commerce, Section 1(a)] Providing Internet based business management and collaborative software, namely, application service provider (ASP) featuring COLLABORATION software for managing in real-time the development of software and FEATURING COLLABORATION SOFTWARE FOR THE COLLECTION, EDITING, ORGANIZING, MODIFYING, BOOK MARKING, TRANSMISSION, STORAGE AND http://atlas/netacgi/ - h38http://atlas/netacgi/ - h40SHARING OF DATA AND INFORMATION, in international class 42.

 

TMEP section 1402.01.

 

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

 

The applicant is strongly encouraged to consult the Acceptable Identification of Goods and Services Manual.  The Manual is available on the PTO's "homepage" on the Internet, which can be accessed at http://tess2.gov.uspto.report/netahtml/tidm.html.  TMEP Section 1404.04.  The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types.  Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified.  TMEP Section 1404.04.

 

Applicant Must Restrict Classes of Goods/Services or Pay Additional Fee

 

The application identifies goods/services that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of classes covered by the fee already paid, or (2) prosecute the application as a multiple-class application.  37 C.F.R. Section 2.86(b); TMEP sections 810.01 and 1403.01.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods/services in each class and list the goods/services by international class with the classes listed in ascending numerical order.  TMEP section 1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fees already paid.  37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1403.01.

 

(3)  The applicant must submit either: 

 

(a) dates of first use and first use in commerce in each class and one specimen for each class.  The dates of use must be at least as early as the filing date of this application.  37 C.F.R. Sections 2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, {Class 35 services cannot be amended to indicate use unless amendment to allege use filed}{submitted substitute specimen acceptable for class 42 services only}; or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. Section 2.20 signed by the applicant to verify (3) above.  37 C.F.R. Sections 2.59(a) and 2.71(c).

 

Basis for Class 35 Services Cannot be Amended to “Use” Basis without AAU

 

The Office finds unacceptable the applicant’s proposes amendment of the “Class 35” services from “intent to use” to “use” basis.  Applicant may not amend an application filed under Section 1(b) (intent to use in commerce) to assert a Section 1(a) (use in commerce) basis unless applicant also files an allegation of use under Trademark Act Sections 1(c) or 1(d), 15 U.S.C. §§1051(c) or (d). 37 C.F.R. §2.35(b)(8); TMEP §806.03(e).

 

Substitute Specimen

 

The substitute specimen submitted by the applicant is acceptable for the Class 42 services suggested above.  The substitute specimen is unacceptable for the Classes 9 and 35 goods/ services suggested above.

 

Agreement Between Mark and Drawing

 

If the applicant adopts the Class 42 identification suggested above, the applicant’s display of the mark on the drawing and specimen would be consistent.

 

Miscellany

 

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

 

 

 

/Rudy Singleton/

Examining Attorney, Law Office 102

(571) 272-9262

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.