United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 79291045
Mark: SHAPE
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Correspondence Address: ISONO International Patent Office, P.C. |
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Applicant: MITSUI KAIYO KAIHATSU KABUSHIKI KAISHA ( ETC.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1544286
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 6079531 (SHAPECONNECT), 6058629 (SHAPE DEFENSE), 5937885 (SHAPE ENTERPRISE DEFENSE), 5926656 (SHAPE CONNECT), 5926485 (SHAPE), 5218097 (SHAPE), and 4810042 (SHAPE SECURITY). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
The applied-for mark is SHAPE in a stylized format with design elements, for “business management consultancy” in International Class 35 and “computer programming” in International Class 42.
The mark in Reg. No. 6079531 is SHAPECONNECT in standard characters, for “business development services” in International Class 35.
The mark in Reg. No. 6058629 in standard characters is SHAPE DEFENSE in standard characters, for “Computer software as a service (SAAS) services featuring software for use by others for detecting, monitoring, and preventing network security risks and privacy risks; software as a service (SAAS) services featuring software for use by others featuring software for protecting and securing websites; software as a service (SAAS) services featuring software for use by others featuring software for preventing network attacks and network security breaches; software as a service (SAAS) services, namely, providing machine learning based security and threat detection to users seeking to protect and secure computer systems, accounts, and credentials; software as a service (SAAS) services, namely, providing security and threat detection to users seeking to protect and secure computer systems, accounts, and credentials” in International Class 42.
The mark in Reg. No. 5937885 is SHAPE ENTERPRISE DEFENSE in standard characters, for “Computer software as a service (SAAS) services featuring software for use by others for detecting, monitoring, and preventing network security risks and privacy risks; software as a service (SAAS) services featuring software for use by others featuring software for protecting and securing websites; software as a service (SAAS) services featuring software for use by others featuring software for preventing network attacks and network security breaches; software as a service (SAAS) services, namely, providing machine learning based security and threat detection to users seeking to protect and secure computer systems, accounts, and credentials; software as a service (SAAS) services, namely, providing security and threat detection to users seeking to protect and secure computer systems, accounts, and credentials” in International Class 42.
The mark in Reg. No. 5926656 is SHAPE CONNECT in standard characters, for “Computer software as a service (SAAS) services featuring software for use by others for detecting, monitoring, and preventing network security risks and privacy risks; software as a service (SAAS) services featuring software for use by others featuring software for protecting and securing websites; software as a service (SAAS) services featuring software for use by others featuring software for preventing network attacks and network security breaches; software as a service (SAAS) services, namely, providing machine learning based security and threat detection to users seeking to protect and secure computer systems, accounts, and credentials; software as a service (SAAS) services, namely, providing security and threat detection to users seeking to protect and secure computer systems, accounts, and credentials” in International Class 42.
The mark in Reg. No. 5926485 is SHAPE in a stylized format, for “Computer software as a service (SAAS) services featuring software for use by others for detecting, monitoring, and preventing network security risks and privacy risks; software as a service (SAAS) services featuring software for use by others featuring software for protecting and securing websites; software as a service (SAAS) services featuring software for use by others featuring software for preventing network attacks and network security breaches; software as a service (SAAS) services, namely, providing machine learning based security and threat detection to users seeking to protect and secure computer systems” in International Class 42.
The mark in Reg. No. 5218097 is SHAPE in a stylized format, for “Software as a service (SAAS) services featuring software for viewing, managing, analyzing, tracking and editing digital marketing or advertising operations” in International Class 42.
The mark in Reg. No. 4810042 is SHAPE SECURITY in standard characters, for “Computer software as a service (SAAS) services featuring software for use by others featuring software for detecting, monitoring, and preventing network security risks and privacy risks; software as a service (SAAS) services featuring software for use by others featuring software for protecting and securing websites; software as a service (SAAS) services featuring software for use by others featuring software for preventing network attacks and network security breaches” in International Class 42.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
The applicant’s mark is SHAPE in a stylized format with a design.
The registrants’ marks are SHAPECONNECT, SHAPE DEFENSE, SHAPE ENTERPRISE DEFENSE, SHAPE CONNECT, SHAPE, and SHAPE SECURITY, in standard characters and a stylized format.
Reg. Nos. 5926485 (SHAPE) and 5218097 (SHAPE)
With regard to the registrants’ marks that are SHAPE in a stylized format (Reg. Nos. 5926485 and 5218097), in a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
In the present case, applicant’s mark is SHAPE in a stylized format with a design and registrants’ marks are SHAPE in a stylized format. The word portion of these marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrants’ respective services. Id. Therefore, the marks are confusingly similar.
Reg. Nos. 6058629 (SHAPE DEFENSE), 5937885 (SHAPE ENTERPRISE DEFENSE), and 4810042 (SHAPE SECURITY)
With regard to the marks in Reg. Nos. 6058629 (SHAPE DEFENSE), 5937885 (SHAPE ENTERPRISE DEFENSE), and 4810042 (SHAPE SECURITY), although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
The registered marks have disclaimed the additional matter in the marks, namely, DEFENSE, ENTERPRISE DEFENSE, and SECURITY, making “SHAPE” the dominant element of the mark. When comparing the dominant element of these marks with the applicant’s mark, which consists of the wording “SHAPE”, the marks are virtually identical in appearance, sound and meaning. This similarity creates the same overall commercial impression in the mind of the average purchaser. The marks are thus confusingly similar.
Reg. Nos. 6079531 (SHAPECONNECT) and 5926656 (SHAPE CONNECT
In the present case, the marks are identical in part because the entirety of the applicant’s mark, SHAPE, is encompassed in the registrants’ marks, SHAPECONNECT and SHAPE CONNECT. The virtually identical nature of the common element in the applicant and registrants’ marks creates the same overall commercial impression in the mind of the average purchaser. The marks are thus confusingly similar.
Similarity of the Services
The applied-for services are “business management consultancy” in International Class 35 and “computer programming” in International Class 42.
The services in Reg. No. 6079531 are “business development services” in International Class 35.
The services in Reg. No. 6058629 are “Computer software as a service (SAAS) services featuring software for use by others for detecting, monitoring, and preventing network security risks and privacy risks; software as a service (SAAS) services featuring software for use by others featuring software for protecting and securing websites; software as a service (SAAS) services featuring software for use by others featuring software for preventing network attacks and network security breaches; software as a service (SAAS) services, namely, providing machine learning based security and threat detection to users seeking to protect and secure computer systems, accounts, and credentials; software as a service (SAAS) services, namely, providing security and threat detection to users seeking to protect and secure computer systems, accounts, and credentials” in International Class 42.
The services in Reg. No. 5937885 are “Computer software as a service (SAAS) services featuring software for use by others for detecting, monitoring, and preventing network security risks and privacy risks; software as a service (SAAS) services featuring software for use by others featuring software for protecting and securing websites; software as a service (SAAS) services featuring software for use by others featuring software for preventing network attacks and network security breaches; software as a service (SAAS) services, namely, providing machine learning based security and threat detection to users seeking to protect and secure computer systems, accounts, and credentials; software as a service (SAAS) services, namely, providing security and threat detection to users seeking to protect and secure computer systems, accounts, and credentials” in International Class 42.
The services in Reg. No. 5926656 are “Computer software as a service (SAAS) services featuring software for use by others for detecting, monitoring, and preventing network security risks and privacy risks; software as a service (SAAS) services featuring software for use by others featuring software for protecting and securing websites; software as a service (SAAS) services featuring software for use by others featuring software for preventing network attacks and network security breaches; software as a service (SAAS) services, namely, providing machine learning based security and threat detection to users seeking to protect and secure computer systems, accounts, and credentials; software as a service (SAAS) services, namely, providing security and threat detection to users seeking to protect and secure computer systems, accounts, and credentials” in International Class 42.
The services in Reg. No. 5926485 are “Computer software as a service (SAAS) services featuring software for use by others for detecting, monitoring, and preventing network security risks and privacy risks; software as a service (SAAS) services featuring software for use by others featuring software for protecting and securing websites; software as a service (SAAS) services featuring software for use by others featuring software for preventing network attacks and network security breaches; software as a service (SAAS) services, namely, providing machine learning based security and threat detection to users seeking to protect and secure computer systems” in International Class 42.
The services in Reg. No. 5218097 are “Software as a service (SAAS) services featuring software for viewing, managing, analyzing, tracking and editing digital marketing or advertising operations” in International Class 42.
The services in Reg. No. 4810042 are “Computer software as a service (SAAS) services featuring software for use by others featuring software for detecting, monitoring, and preventing network security risks and privacy risks; software as a service (SAAS) services featuring software for use by others featuring software for protecting and securing websites; software as a service (SAAS) services featuring software for use by others featuring software for preventing network attacks and network security breaches” in International Class 42.
The attached sampling
of Internet evidence, consisting of webpages from Amazon
Web Services, HKH Consulting, and Solana, establishes that the same entity commonly provides
the relevant services, namely, software related to security and advertising data, along with business management consultancy and computer programming, and markets the services under the same mark. Thus, applicant’s services and registrants’ services are considered related for likelihood of
confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re
Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Based on the foregoing, registration for the applied-for mark is refused under Section 2(d) of the Trademark Act.
PRIOR PENDING APPLICATIONS
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 marks in the referenced applications. 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.
COLOR CLAIM AND MARK DESCRIPTION CLARIFICATION NEEDED
A complete color claim must reference all the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. Similarly, a complete description of a mark depicted in color must specify where the colors appear in the literal and design elements of the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following color claim and description are suggested, if accurate:
Color claim: “The colors black, blue and pink are claimed as a feature of the mark.”
Description: “The mark consists of the wording “SHAPE” in stylized black lettering, and to the top right of the wording are a blue triangle, a black square, and a pink circle.”
Applicant must be represented by a U.S.-licensed attorney. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
RESPONSE GUIDELINES
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
How to respond. Click to file a response to this nonfinal Office action.
/Harini Ganesh/
Harini Ganesh
Trademark Examining Attorney
Law Office 122
571-272-5128
harini.ganesh@uspto.gov
RESPONSE GUIDANCE