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:

 

This Office action is in response to applicant’s communication filed on March 23, 2011.

 

In the first Office action, a requirement was issued that the applicant adopt an acceptable identification of services.  The applicant has submitted an amended identification of services.  The amended identification in International Class 42 is acceptable.  However, the proposed amended identification in Class 45 is not acceptable, as further discussed below.  Accordingly, the requirement for an acceptable identification of services is maintained.

 

In addition, upon further review of the application, the examining attorney has determined that a prior registration presents a bar to registration of the applicant’s mark.  The examining attorney apologizes for any inconvenience caused to the applicant by the delayed issuance of this refusal.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3821471.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

A likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared for similarities in their appearance, sound, connotation and commercial impression.  TMEP §§1207.01, 1207.01(b).  Next, 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).

 

Similarity of the Marks

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).

 

The applicant’s proposed mark PRAETORIAN is similar to the registered mark PRAETORIAN GUARD and DESIGN because the applicant’s mark is identical to the dominant feature PRAETORIAN in the registered mark.  Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).

 

The additional wording and design in the registered mark does not change the finding of similarity.  First, the word GUARD in the registered mark is highly suggestive of the registrant’s services, which pertain to computer security.  Thus, it is not as significant as the term PRAETORIAN.  The design element in the mark is a Roman helmet surrounded by olive leaves, which merely reinforces the wording PRAETORIAN GUARD.  In addition, the design is less dominant because it is smaller in size than the wording in the mark.  Moreover, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services.  Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii).

 

Relatedness of the Goods/Services

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, they need only be related in some manner, 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).

 

That is the case here.  The applicant seeks to register its proposed mark for use in connection with various computer security services, including penetration testing of computers, computer applications, and computer networks to assess information security vulnerabilities and development of security systems for information systems, as well as providing security assessment, advisory and remediation services for information systems.  The registered mark is used in connection with software as a service services featuring software for use in network monitoring, and network security, user auditing and monitoring, disaster recovery, network reporting, and server administration.  The services of the parties are related because all pertain to computer security.  Although the registrant provides software that performs certain services, and the applicant provides the services directly, the purpose or function of the software and services are the same or highly related.  Further, as discussed below, the precise nature of some of the applicant’s services is not clear from the identification.  As currently identified, the applicant’s identification includes services or activities that may be the same as or closely related to the functions performed by the registrant’s software. 

 

Given the related computer security services provided by the applicant and registrant in this case, consumers encountering the services of the parties, marked under such similar marks, would reasonably believe that the services originate from a common source.  Accordingly, registration of the applicant’s mark is refused under Trademark Act Section 2(d) based on a likelihood of confusion with the mark in U.S. Registration No. 3821471.

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirement:

 

Identification of Services—International Class 45

The proposed amended identification of services in International Class 45 is not acceptable because the nature of the services is not clear.  TMEP §1402.01.  Security services are generally classified in either Class 42 or 45, depending on their nature and purpose.  Thus, the precise type and function of any security service must be clear in the identification.  In the applicant’s proposed identification, the wording “providing security advisory and remediation services for information systems” is unacceptable because the purpose or function of the services is not provided. 

 

For advisory services, the specific type of advisory services must be listed, as advisory services are classified according to subject matter.  Advisory services “for information systems” is not sufficiently specific.  In addition, this wording likely identifies services properly classified in International Class 42.  For example, “computer security advisory services” are properly classified in Class 42.  Advisory services regarding home security systems are classified in Class 45. 

 

In addition, the services “remediation” are unclear; and more information about these services must be provided.  Again, proper classification of the services depends upon their type.  In general, security services pertaining to computers and computer systems are in Class 42, while security services pertaining to security systems, buildings, and the like are in Class 45.

 

The applicant must amend the application to adopt an acceptable identification for those services currently listed in Class 45.  The applicant may wish to consult the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html  for assistance in identifying and classifying the services.

 

The applicant may amend to adopt one or both of the following, if accurate:

 

INTERNATIONAL CLASS 42:  Computer security services, namely: penetration testing of computers, applications and networks to assess information security vulnerabilities, development of security systems for information systems, and consulting services related thereto; computer security advisory services.

 

INTERNATIONAL CLASS 45:  Security services, namely, providing security assessments of information systems and providing advisory and remediation services to correct and improve areas of discovered security breach or weakness, and consulting services related thereto.

 

An applicant may amend an identification of services only to clarify or limit the services; adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

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

 

 

 

/Kimberly Frye/

Trademark Examining Attorney

Law Office 113

(571) 272-9430 (phone)

(571) 273-9430 (fax)

E-mail: kimberly.frye@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  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.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

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.