To: | Microsoft Corporation (tmpros@microsoft.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85953440 - BING - 26DOM8448091 |
Sent: | 8/22/2013 2:25:45 PM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85953440
MARK: BING
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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: Microsoft Corporation
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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: 8/22/2013
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, 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Comparing the Marks
The applicant’s mark is BING and the registrant’s mark is BING. The marks of the parties are similar in appearance, sound, connotation and commercial impression, because they are identical. Therefore, the similarities in the elements that exist are sufficient to find likelihood of confusion.
Comparison of the Goods
The applicant’s goods are “computer software; search engine software; mobile device software; graphical user interface software; voice-recognition software; computer software for the development of computer software applications” and the registrant’s goods are “computer software for management of system boot and startup parameters and environment; downloadable computer software for management of system boot and startup parameters and environment.”
The goods are related because the applicant’s identification of goods could encompass goods identical to those of the registrant. Further the goods are likely to travel in the same channels of trade. The conditions surrounding the marketing of the goods may be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source.
Identification of Goods
The wording “computer software” and “mobile device software” in the identification of goods is indefinite and must be clarified because it does not identify the goods with sufficient specificity. See TMEP §1402.01. An identification for computer software must specify the purpose or function of the software. See TMEP §1402.03(d). If the software is field-specific, the identification must also specify the field of use. Id. Clarification of the purpose, function, or field of use of the software is necessary for the USPTO to properly examine the application and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).
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.
Applicant may adopt the following identification of goods, if accurate:
International Class 9: Computer software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc., and, if software is content- or field-specific, the content or field of use}; search engine software; Computer application software for {specify items, e.g., mobile phones, portable media players, handheld computers}, namely, software for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.}; graphical user interface software; voice-recognition software; computer software for the development of computer software applications
See TMEP §1402.01.
Response Guidelines
There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.
The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants). TMEP §§605.02, 712.
The Trademark Status and Document Retrieval (TSDR) database on the USPTO website at http://tsdr.gov.uspto.report/ is available 24 hours a day, 7 days a week, and provides status information about trademark and service mark applications and registrations. To view this information, enter the application serial number or registration number and click on “Status.”
/Michael J. Souders/
Trademark Examining Attorney
Law Office 115
(571) 272-9483
michael.souders@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.