Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 8/9/2010

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

Trademark Act Section 2(d) Refusal to Register – Likelihood of Confusion:

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 3204588 (EVERON).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration(s).

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  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 when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

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 involves a two-part analysis.  See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361-62, 177 USPQ 563, 567 (C.C.P.A. 1973); In re 1st USA Realty Prof’ls Inc., 84 USPQ2d 1581, 1584 (TTAB 2007); see also In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).  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).

 

The Marks are Similar:

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  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).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 

Here, the marks of applicant and registrant(s) are confusingly similar in appearance, sound, and commercial impression.  Applicant’s proposed mark is identical to the mark of registrant – the word “EVERON.”  There is no stylization, design element, or additional wording to distinguish the marks.

 

The Goods/Services are Related:

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient that the goods and/or services are related in some manner and/or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

If the marks of the respective parties are identical, as they are here, the relationship between the goods and/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.  In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).

 

Here, applicant’s goods are “Computer hardware; Computer software for use in network attached storage filers.”  The services of registrant(s) are “Installation, maintenance and repair of computer hardware and networks, in person and via a global computer network,” “technical support services for computers and computer networks, namely, diagnosis of computer hardware, software, and network problems, provided in person, by telephone, and by means of a global computer network; installation, updating, maintenance, and repair of computer software for others, provided in person, by telephone, and by means of a global computer network; consulting services in the field of design, selection, implementation, and use of computer hardware, software, and networks for others, provided in person, by telephone, and by means of a global computer network,” and “Monitoring of computers and computer networks for security purposes, by means of a global computer network.”  Likelihood of confusion is determined on the basis of the goods and/or services as they are identified in the application and registration(s).  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); TMEP §1207.01(a)(iii).

 

Initially, it is important to note that the Trademark Trial and Appeal Board has held that computer hardware products are related to computer software products, such that their marketing under the same or similar marks may be likely to cause source confusion.  See In re Emulex Corp., 6 USPQ2d 1312 (TTAB 1987) (holding JAVELIN for computer peripheral software storage unit likely to be confused with JAVELIN for “prerecorded computer programs in machine readable form”); In re TIE/Commc’ns, Inc., 5 USPQ2d 1457 (TTAB 1987) (holding DATA STAR likely to cause confusion when used in connection with both registrant’s “computer programs recorded on magnetic media” and applicant’s “voice/data communications terminals and parts thereof”); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (holding CONCURRENT PC-DOS likely to be confused with CONCURRENT TECHNOLOGIES CORPORATION for “printed electronic circuit boards”); In re Epic Sys. Corp., 228 USPQ 213 (TTAB 1985) (holding EPIC for computer software for use in health care facilities likely to be confused with EPIC DATA for “electronic data collection terminals and electronic data collection units”); In re Teradata Corp., 223 USPQ 361 (TTAB 1984) (holding Y NET for computer hardware likely to be confused with XYNET for computer software); In re Compagnie Internationale Pour L’Informatique-Cii Honeywell Bull, 223 USPQ 363 (TTAB 1984) (holding QUESTAR for computer hardware likely to be confused with QUESTAN for computer programs); In re Graphics Tech. Corp., 222 USPQ 179 (TTAB 1984) (holding AGILE for computer programs likely to be confused with AGILE for computer data terminals); Alpha Indus., Inc. v. Alpha Microsystems, 220 USPQ 67 (TTAB 1983) (holding ALPHA MICRO for digital computer equipment and programs likely to be confused with ALPHA MICROWAVE for microwave components and sub assemblies); see also Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990) (affirming TTAB decision on summary judgment that found computer modems and computer programs highly related); cf. In re Quadram Corp., 228 USPQ 863 (TTAB 1985).

 

Apart from this support in the case law, the goods and services of the applicant and registrant(s) are also highly related, as demonstrated by the attached copies of 22 printouts from the USPTO X-Search database, from owners including Dell Inc. (3215023), IBM (3665065), Hewlett-Packard (3350462), Electronic Lifestyle Integration, Inc. (3188968), Symantec Corporation (3700317) and Intergraph Corporation (3747837).  These printouts show third-party registrations of marks used in connection with the same or similar goods and services as those of applicant and registrant(s) in this case.  These printouts have probative value to the extent that they serve to suggest that the goods and/or services listed therein, namely computer hardware and software and consulting, design, installation, maintenance, monitoring, and technical support related to computer hardware and software, are of a kind that may emanate from a single source.  In re Infinity Broad. Corp.,60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).  Thus, such goods and/or services are likely to travel in the same channels of trade, likely to be displayed to consumers under circumstances giving rise to a likelihood of confusion, and likely to be perceived as emanating from the same source.

 

This X-Search evidence is bolstered by the attached additional evidence from the websites of Barracuda Networks (Barracudanetworks.com), which shows computer hardware and software for sale and consulting regarding these goods offered from the same entity, and Repait-IT (Repair-itjax.com), which shows computer services such as installation, computer installation, repair, maintenance and upgrades offered alongside various types of computer hardware.

 

Viewing all of the factors together, based on the similarity of the registered mark(s) to the proposed mark and the similarity of the goods and/or services, confusion as to source is likely.  Purchasers familiar with the mark(s) of the cited registration(s), upon seeing applicant’s mark, would be likely to conclude that applicant’s goods and/or services emanated from the same source, or that applicant’s goods and/or services were associated with and/or sponsored by the registrant(s).  Accordingly, registration is refused due to the likelihood of confusion.

 

Please note that the overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant(s) from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant(s).  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).

 

In addition, please note the following refusal because the specimen does not show use with the goods specified in the application.

 

Specimen Refused – Does Not Show Use with Goods:

 

The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the goods specified in the application.  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

In this case, the specimen for the International Class 9 computer software consists of a guide for the goods.  Although a manual or guide may be an acceptable specimen for goods when it is distributed along with the goods, there is no indication in the application that this is the case.

Therefore, applicant must submit the following:

 

(1)  A substitute specimen showing the mark in use in commerce for each class of goods and/or services specified in the application; and

 

(2)  The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute 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; see 37 C.F.R. §2.193(e)(1).  If submitting a substitute 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:  “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), 2.193(e)(1).

 

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark and/or service mark for the identified goods and/or services.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

Declaration for a Substitute Specimen – TEAS:

 

To submit a verified substitute specimen online via the Trademark Electronic Application System (TEAS), applicant should do the following:  (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; (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.”; and (4) sign personally or enter personally his/her electronic signature and date after the declaration at the end of the TEAS response form.  See 37 C.F.R. §§2.59(a), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b).  Please note that these steps appear on different pages of the TEAS response form. 

 

If applicant experiences difficulty in submitting the required substitute specimen, supporting statement and/or declaration, please e-mail TEAS@uspto.gov for technical assistance regarding the TEAS response form.

 

Electronically Submitted Specimen:

 

If applicant files a response online using the Trademark Electronic Application System (TEAS), the substitute specimen must be submitted in jpg or pdf format.  37 C.F.R. §2.56(d)(4); TMEP §904.02(a).  The Office recommends that all black-and-white and color jpg images be scanned at no less than 300 dots per inch and no more than 350 dots per inch, with a length and width of no less than 250 pixels and no more than 944 pixels. 

 

When validating an electronic submission through TEAS, applicant should ensure that the substitute specimen is attached to the submission.  If the substitute specimen cannot be viewed from the “Validation Page,” the specimen failed to attach properly and will not be included with the response.

 

Responding to Refusal to Register:

 

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

 

TEAS Response Suggested:

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.

 

If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.

 

James W. MacFarlane

/James W. MacFarlane/

Trademark Examining Attorney

Law Office 104

Phone: 571-270-1512

Fax: 571-270-2512

 

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 85055011) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 8/9/2010 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=85055011&doc_type=OOA&mail_date=20100809 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 8/9/2010 (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.