To: | Hart InterCivic, Inc. (trademarks@pogolaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85718606 - VERITY - c073277.0337 |
Sent: | 12/26/2012 4:12:36 PM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85718606
MARK: VERITY
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Hart InterCivic, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 12/26/2012
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(a), 2.65(a); TMEP §§711, 718.03.
LIKELIHOOD OF CONFUSION
In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); TMEP §1207.01; see also In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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). Additionally, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).
The applicant’s mark is VERITY for “Electronic voting systems, namely, computer software and hardware configured for entering data, recording, searching, displaying, managing, printing, and reporting public records and documents related to election administration, and for recording, tallying, and reporting votes and election data,” and “Electronic election administration services, namely, entering data, recording, searching, displaying, managing, printing, and reporting public records, documents, and data related to election administration; Computerized government records storage, search and retrieval systems, comprised of computer software for the collection, editing, organizing, modifying, book marking, transmission storage and sharing of data and information, and computer search engine software; Public document retrieval services.”
This mark is confusingly similar to the commonly owned registered marks VERITY for “computer programs to enhance searching and retrieval of computer databases of third parties,” and VERITY & design for “computer programs for searching, classifying, navigating, viewing, retrieving and distributing information in computer databases and information over computer network.”
Comparison of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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). Similarity in any one of these elements may be sufficient to find the marks confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).
The applicant’s mark VERITY is identical to the mark in Registration No. 1582400 VERITY and the applicant’s mark is identical to the literal portion of the registered mark in Registration No. 2473704 VERITY & design.
Comparison of the Goods/Services
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).
In this case, the goods and services of the applicant, specifically “computer software and hardware configured for entering data, recording, searching, displaying, managing, printing and reporting public records and documents related to election administration,” and “computerized government records storage, search and retrieval systems, comprised of computer software for the collection, editing, organizing, modifying, book marking, transmission storage and sharing of data and information and computer search engine software” are closely related to the software of the registrant. Both applicant’s and registrant’s software performs the same functions and therefore, would be encountered by the same consumers. Consumers would mistakenly presume the software marketed under VERITY originate from a common source.
Since the marks are similar and the goods/services are related, a likelihood of confusion exists. Therefore, registration is refused under Trademark Act Section 2(d).
Applicant must respond to the requirement set forth below.
RECITATION OF SERVICES
Further, the wording “electronic election administration services, namely, entering data, recording, searching, displaying, managing, printing and reporting public records, documents and data related to election administration” is indefinite and the applicant must specify the common commercial names of the services, e.g.; searching and retrieving information in the nature of public records, documents and data related to election administration available on computer networks for others.
Applicant may substitute the following wording, if accurate:
INTERNATIONAL CLASS 42
Electronic election administration services, namely, searching and retrieving information in the nature of public records, documents, and data related to election administration available on computer networks for others; Providing temporary use of online non-downloadable computer software for the collection, editing, organizing, modifying, book marking, transmission storage and sharing of data and information, and temporary use of online non-downloadable computer search engine software; Public document retrieval services
The identification of goods in International Class 9 and the recitation of services in International Class 40 are acceptable as submitted.
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.
For assistance with identifying and classifying goods and/or 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.
/Barbara Brown/
Trademark Examining Attorney
Law Office 116
TEL: 571-272-9134
FAX: 571-273-9116
barbara.brown@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 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.