To: | Pacifera, LP (docketing@fgd-law.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85744602 - SIMPLICITY - 98-493 |
Sent: | 2/2/2013 6:07:25 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85744602
MARK: SIMPLICITY
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CORRESPONDENT ADDRESS: EMILY A. DANCHUK 215 MAIN ST STE 101 |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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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: 2/2/2013
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.
Section 2(d) - Likelihood of Confusion Refusal
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 4252265. 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 where an applied-for mark so resembles a registered mark that it is likely, when applied to the services, to cause confusion, mistake or to deceive the potential consumer as to the source of the services. TMEP §1207.01. 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 consider in determining whether there is a likelihood of confusion. Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression, and the relatedness of the services. The overriding concern is to prevent buyer confusion as to the source of the services. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).
Here, applicant applied for the mark SIMPLICITY for “Computer services, namely, providing virtual and non virtual application servers, web servers, file servers, co-location servers, load balancing servers, redundancy servers, media servers and database servers of variable capacity to third party computing and data storage facilities; Computer services, namely, remote management of the information technology (IT) systems of others; Consulting in the field of information technology; Hosting the software, websites and other computer applications of others on a virtual private server; Planning, design and management of information technology systems; Providing virtual computer systems and virtual computer environments through cloud computing; Technical consulting services in the fields of datacenter architecture, public and private cloud computing solutions, and evaluation and implementation of internet technology and services; Technical support services, namely, remote and on-site infrastructure management services for monitoring, administration and management of public and private cloud computing IT and application systems”.
Registrant’s mark is SYMPLICITY for “Application service provider services for transaction processing, uploading transactional data, providing statistical analysis, and producing notifications and reports; application service provider services for delivering information for wireless communication, mobile information access, and delivery of content to handheld computers, laptops and mobile electronic devices; application service provider services for managing, developing, researching, analyzing, reporting and maintaining applications and software of others in the fields of healthcare, benefits programs, employee productivity and risk management; computer services, namely, providing a web-based system and online portal for customers to remotely manage, administer, modify and control their end user computer devices and software applications; computer software development services for mobile applications; consulting in the field of software and product development in the field of student affairs, recruitment, survey, scheduling, housing, CRM, and business process improvement; design and development of on-line computer software systems; software as a service (SAAS) services, namely, hosting software for managing online content, applications, and receiving data on web sites in the fields of student affairs, recruitment, surveys, scheduling, housing, CRM, and business processes improvement.”
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)-(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).
Here, the only difference between the marks is that one begins with “SIM” and the other with “SYM.” This difference amounts to a slightly different appearance, and the words “SIMPLICITY” and “SYMPLICITY” are the same in sound and meaning. As a whole, the marks are therefore similar.
Comparison of Services
The 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 to show that because of the conditions surrounding their marketing, or because they are otherwise related in some manner, the goods and/or services would be encountered by the same consumers under circumstances such that offering the goods and/or services under confusingly similar marks would lead to the mistaken belief that they come from, or are in some way associated with, the same source. In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); TMEP §1207.01(a)(i).
Here, applicant’s and registrant’s identifications of services refer to very closely related activities.
Applicant provides servers to data storage facilities, software and application hosting, technical support services, as well as IT planning, design, management and consulting services. Registrant’s services include design and development of on-line computer software systems; software as a service (SAAS) services including hosting software. These services are all closely related; some companies provide these services as complements to one another, and the distinctions between these services are often small enough that they must be charted out and described in detail so that any differences between them may be pointed out and clarified. For example, the attached Internet evidence consists of website printouts from Selfgrowth.com, ITsolutionsnow, PeachTree Hosting, Hosted Environments, and Synygy. This evidence establishes that the same entity commonly provides the relevant services and markets the services under the same mark, that the relevant services are provided through the same trade channels and used by the same classes of consumers in the same fields of use, and that the services are similar or complementary in terms of purpose or function. Therefore, applicant’s and registrant’s 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 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).
Because the marks are similar and because the marks refer to closely related, if not the same, services, consumers would be likely to mistakenly believe that the services emanate from a single source. Accordingly, registration is refused under Trademark Section 2(d).
Response to Office Action
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/trademarks/teas/index.jsp. 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/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.
/kristindahling/
Kristin M. Dahling
Trademark Examining Attorney, LO113
kristin.dahling@uspto.gov
(571) 272-8277
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.
Please wait at least 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.
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.