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: 11/11/2013

 

On November 20, 2012, action on this application was suspended pending the disposition of U.S. Application Serial No. 85045251.  The referenced prior-pending application has since registered.  Therefore, registration is refused as follows.

 

Refusal to Register – 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. 4246413.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, 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).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 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 and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Marks are Identical

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, 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)-(b)(v). 

 

In the present case, applicant’s mark is SIMPLIFY and registrant’s mark is SIMPLIFY.  Thus, the marks are identical in terms of appearance and sound.  In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods and/or services.

 

Therefore, the marks are confusingly similar. 

 

Comparison of the Services

 

The applicant’s services are “Computer systems and software for automating customer service and sales tasks, and for integrating automated customer service and sales tasks with live agent assistance; computer systems and software for managing customer service and sales interactions delivered to consumers through computing and communications devices, including computers, tablets, phones and kiosks; computer systems and software for automating, managing and analyzing live agent interactions with customers over computer and phone networks; computer systems and software for the classification, navigation, search, retrieval, display and distribution of information in computer databases and over computer networks; computer systems and software for measuring and analyzing customer activity in automated interactions and agent-assisted interactions to predict and understand customer requests, preferences and interests; computer systems and software used to create and administer software for automating customer service and sales tasks;” “Outsourcing services in the field of customer support and analysis in the nature of customer services, telemarketing and computer technical support; providing customer support for businesses including customer analytics, namely, predictive customer experience services, managing customer sales and service experiences, and measuring, analyzing, and predicting customer satisfaction; contact center services for managing end customer interactions across channels; customer contact services, namely, services for developing, managing, and maintaining enterprise-grade, integrated speech customer contact applications delivered as a universal managed service” and “Telecommunications services, namely, voice and speech activated operation by others of a computer through means of voice commands.” 

 

The registrant’s services are “business consultation services, excluding as such relates to the fields of health spas and telecommunications plans offered by carriers for the telecommunications needs of businesses; business consulting services, excluding as such relates to the fields of health spas and telecommunications plans offered by carriers for the telecommunications needs of businesses; compilation of information into computer databases; market research and business analysis of information from computer databases and the internet; collection and systematization of information into computer databases; compilation and systematization of information into computer databases; providing an on-line searchable database featuring business information; providing business information, namely, commercial, corporate and statistical information provided on-line from a computer database or the Internet; providing business information over global, local and internal computer networks on the subjects of business planning, business reengineering, on-line commerce and e-commerce; providing business information via the internet on the subjects of business planning, business reengineering, on-line commerce and e-commerce; business consultancy services in the field of business planning, business administration, product development, public relations and business development; business planning services, excluding as such relates to the fields of health spas and telecommunications plans offered by carriers for the telecommunications needs of businesses; business administration and management services, excluding as such relates to the fields of health spas and telecommunications plans offered by carriers for the telecommunications needs of businesses; public relations services; providing database services featuring business, commercial, enterprise and government contact information.”

 

The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).

 

The attached Internet evidence consists of screenshots from the following business consulting firms: McKinsey & Company, Deloitte, IBM and PWC.  This evidence establishes that the same entity commonly manufactures/produces/provides the relevant goods and/or services and markets the goods and/or services under the same mark; the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use; and the goods and/or services are similar or complementary in terms of purpose or function.  Therefore, applicant’s and registrant’s goods and/or 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).

 

Evidence obtained from the Internet may be used to support a determination under Trademark Act Section 2(d) that goods and/or services are related.  See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).

 

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely “Computer systems and software for automating customer service and sales tasks, and for integrating automated customer service and sales tasks with live agent assistance; computer systems and software for managing customer service and sales interactions delivered to consumers through computing and communications devices, including computers, tablets, phones and kiosks; computer systems and software for automating, managing and analyzing live agent interactions with customers over computer and phone networks; computer systems and software for the classification, navigation, search, retrieval, display and distribution of information in computer databases and over computer networks; computer systems and software for measuring and analyzing customer activity in automated interactions and agent-assisted interactions to predict and understand customer requests, preferences and interests; computer systems and software used to create and administer software for automating customer service and sales tasks;” “Outsourcing services in the field of customer support and analysis in the nature of customer services, telemarketing and computer technical support; providing customer support for businesses including customer analytics, namely, predictive customer experience services, managing customer sales and service experiences, and measuring, analyzing, and predicting customer satisfaction; contact center services for managing end customer interactions across channels; customer contact services, namely, services for developing, managing, and maintaining enterprise-grade, integrated speech customer contact applications delivered as a universal managed service” and “Telecommunications services, namely, voice and speech activated operation by others of a computer through means of voice commands” and “business consultation services, excluding as such relates to the fields of health spas and telecommunications plans offered by carriers for the telecommunications needs of businesses; business consulting services, excluding as such relates to the fields of health spas and telecommunications plans offered by carriers for the telecommunications needs of businesses; compilation of information into computer databases; market research and business analysis of information from computer databases and the internet; collection and systematization of information into computer databases; compilation and systematization of information into computer databases; providing an on-line searchable database featuring business information; providing business information, namely, commercial, corporate and statistical information provided on-line from a computer database or the Internet; providing business information over global, local and internal computer networks on the subjects of business planning, business reengineering, on-line commerce and e-commerce; providing business information via the internet on the subjects of business planning, business reengineering, on-line commerce and e-commerce; business consultancy services in the field of business planning, business administration, product development, public relations and business development; business planning services, excluding as such relates to the fields of health spas and telecommunications plans offered by carriers for the telecommunications needs of businesses; business administration and management services, excluding as such relates to the fields of health spas and telecommunications plans offered by carriers for the telecommunications needs of businesses; public relations services; providing database services featuring business, commercial, enterprise and government contact information,” are of a kind that may emanate from a single source under a single mark.  See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); 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).

 

The marks are identical and the goods and services offered by the parties are very closely related.  The evidence attached from the various websites and the third party registrations show that similar goods and services are commonly offered by a single source.  As such registration must be refused under Trademark Act Section 2(d) because confusion between these two marks is likely.  Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Applicant must respond to the requirement(s) set forth below.

 

Identification of Goods

 

The word “system” in the identification of goods is indefinite and must be amended to (1) list the primary parts or components of the system and (2) describe the nature, purpose, or use of the system.  TMEP §1401.05(d).  Applicant should use common generic terms to specify the parts or components of the system.  See TMEP §§1402.01, 1402.03(a).  Applicant should also classify the system in the same international class as its primary parts or components.  TMEP §1401.05(d). 

 

Applicant may adopt the following identification of goods, if accurate: 

 

Class 9:  Computer systems comprised of [specify common commercial name of component parts] and software for automating customer service and sales tasks, and for integrating automated customer service and sales tasks with live agent assistance; computer systems comprised of [specify common commercial name of component parts] and software for managing customer service and sales interactions delivered to consumers through computing and communications devices, including computers, tablets, phones and kiosks; computer systems comprised of [specify common commercial name of component parts] and software for automating, managing and analyzing live agent interactions with customers over computer and phone networks; computer systems comprised of [specify common commercial name of component parts] and software for the classification, navigation, search, retrieval, display and distribution of information in computer databases and over computer networks; computer systems comprised of [specify common commercial name of component parts] and software for measuring and analyzing customer activity in automated interactions and agent-assisted interactions to predict and understand customer requests, preferences and interests; computer systems comprised of [specify common commercial name of component parts] and software used to create and administer software for automating customer service and sales tasks.  See TMEP §1402.01.

 

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 and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Contact Information

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

/Katina S. Mister/

Katina S. Mister

Trademark Examining Attorney

Law Office 104

571-272-8889 (Office)

571-273-8889 (Fax)

katina.mister@uspto

 

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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 11/11/2013 FOR U.S. APPLICATION SERIAL NO. 85521331

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 11/11/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.