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: 8/5/2011

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions.  See 37 C.F.R. §2.23(a)(1). For a complete list of these documents, see TMEP §819.02(b). In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address. 37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

 

The trademark examining attorney has reviewed the trademark application identified above. Applicant must respond to all of the issues discussed below before the response deadline.  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 mark in U.S. Registration No. 3274802.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

In this case, applicant’s mark is PERFORCE and design, for use on:

 

Computer programs for versioning source code, digital assets (still images, video, and audio content), web content, and documents from business processes and intellectual property to medical images and legal records; Computer software platforms for versioning source code, digital assets (still images, video, and audio content), web content, and documents from business processes and intellectual property to medical images and legal records

 

The registered mark is POLYSERVE and design, used on goods and services including:

 

Computer utility software; computer software to enable high availability of storage, other computer program components and programs; computer software for use in file, disk and systems management; in data storage management and storage area networks; in disaster recovery; monitoring, identifying and rectifying file, disk, system, and computer network problems and errors; in the field of enterprise information management; in scheduling automated processes; in the central management of computers attached to a computer network; for replicating and archiving files from one data store to another; in high availability situations; and for monitoring, analyzing, reporting and solving data availability issues of application software, databases, network, storage, and other computer components and programs; and instruction manuals supplied as a unit with the foregoing, publications in electronic form, on magnetic and optical computer-readable media or downloadable via computer and communication networks, including the internet, namely, work books, quick reference guides, technical reference manuals, user manuals, technical support guides and evaluation guides in the field of computers, computer software, computer peripherals, and computer networks

 

The examining attorney has considered all of the du Pont factors as they apply here. They are discussed below to the extent of their relevance in this case. The analysis is structured in two parts. 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). First, the marks are compared for similarities in their appearance, sound, connotation and commercial impression.  TMEP §§1207.01, 1207.01(b).  Then the goods 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).

 

In this case, the design elements of applicant’s mark are very similar to the design elements of the registered mark in appearance and commercial impression. The marks both have an appearance of stacked squares represented by a colored diamond shape over two colored chevron shapes. While applicant’s design elements are yellow as opposed to the orange design in the registered mark, consumers will not recall this difference but will recall the overall shape and commercial impression of the marks and believe that they represent a single source for the goods.

 

For these reasons, applicant’s mark is similar to the registered mark. When an applicant’s mark is similar to a registered mark, confusion is likely if applicant’s goods are similar to the goods on which the registered mark is used.

 

SIMILARITY OF THE GOODS

 

The goods 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 are 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 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).

 

In this case applicant’s versioning software would be used to keep track of different versions of electronic information. Attached is the entry for “Software versioning” from the Wikipedia online encyclopedia, which reads in part:

 

Software versioning is the process of assigning either unique version names or unique version numbers to unique states of computer software. Within a given version number category (major, minor), these numbers are generally assigned in increasing order and correspond to new developments in the software. At a fine-grained level, revision control is often used for keeping track of incrementally different versions of electronic information, whether or not this information is actually computer software.

 

This is related to the software sold under the registered mark because that software is used in part for:

 

analyzing, reporting and solving data availability issues of application software, databases, network, storage, and other computer components and programs

 

These functions of the software sold under the registered mark would be discussed and reported based on the versions of the software that is being analyzed and therefore applicant’s versioning software would be used in conjunction with the software sold under the registered mark. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

Based on the foregoing, applicant’s goods are related to the goods on which the registered mark is used. Because applicant’s mark is similar to the registered mark and applicant’s goods are also related to the goods on which the registered mark is used, applicant’s mark is likely to be confused with the registered mark and may not register.

 

Although the examining attorney has refused registration, applicant may respond to the refusal 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

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified. Specifically, applicant’s use of parentheses makes the nature of the goods uncertain. See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. Applicant should avoid using parenthetical information in the identification of the goods.

 

Applicant may adopt the following identification (proposed changes are shown in bold italics) if accurate:

 

Class 9

 

Computer programs for versioning source code,  web content, and documents from business processes and intellectual property to medical images and legal records and for versioning digital assets in the nature of still images, video, and audio content; Computer software platforms for versioning source code, web content, and documents from business processes and intellectual property to medical images and legal records and for versioning digital assets in the nature of  still images, video, and audio content

 

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

 

For assistance with identifying and classifying goods in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services, found at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

COLOR CLAIM AND DESCRIPTION OF THE MARK

 

Applicant has submitted a color drawing, description and color claim. However, the wording of the description and color claim should be corrected for clarity. Applications for marks depicted in color must include a complete list of all the colors claimed as a feature of the mark and a mark description of the literal and design elements that specifies where all the colors appear in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §§807.07(a) et seq.  

 

Applicant may adopt the following claim and description, if accurate:

 

The colors yellow PMS 123U and black are claimed as a feature of the mark.

 

The mark consists of a yellow diamond above two yellow downward pointing chevrons, to the left of the word PERFORCE in black, stylized lettering.

 

RESPONSE GUIDELINES – TEAS Plus APPLICANTS

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

 

In addition, applicant filed a TEAS Plus application and therefore must respond online using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.htm to avoid incurring an additional fee.  See 37 C.F.R. §2.23(a)(1), (b). 

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status.  See 37 C.F.R. §2.66; TMEP §1714.   There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. 

 

 

/Fred Carl III/

Trademark Examining Attorney

Law Office 108

571 272 8867 direct telephone

fred.carl@uspto.gov (not for responses to actions)

 

 

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.

 

 

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

Your trademark application (Serial No. 85304149) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 8/5/2011 to which you must respond.  Please follow these steps:

 

1. Read the Office letter by clicking on this link OR go to http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.       

 

 PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification. 

 

2. Respond within 6 months, calculated from 8/5/2011 (or sooner if specified in the Office letter), using the Trademark Electronic Application System Response to Office Action form. If you have difficulty using the USPTO website, contact TDR@uspto.gov. 

 

3. Contact the examining attorney who reviewed your application with any questions about the content of the office letter:

 

/Fred Carl III/

Trademark Examining Attorney

Law Office 108

571 272 8867 direct telephone

fred.carl@uspto.gov (not for responses to actions

WARNING

Failure to file any required response by the applicable deadline will result in the ABANDONMENT 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.  Instead, please use the Trademark Electronic Application System Response to Office Action form.