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: 12/13/2013

 

 

 

 

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.

 

SUMMARY OF ISSUES that applicant must address:

 

• Refusal – Likelihood of Confusion
• Identification Requires Clarification
• Requirements Regarding Multiple Class Applications
• Requirement for Information

 

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. 1800502.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

--General Principles in Determining 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.  Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930, 1938 (TTAB 2013) (citing 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); see TMEP §1207.01.  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).

 

--Similarities Between the Marks

 

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 HARBOR and registrant’s mark is HARBOR.  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. 

 

--Similarities Between the Goods

 

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).

 

In this case, the applicant’s goods identified as “Downloadable and non-downloadable computer software providing a user interface and user-defined electronic folder system for receipt and storage of website information and pictures, images, text, video, animation, audio and multimedia content retrieved from online sources and for receipt and storage of user annotations, namely, text, hashtags, voice notes, and an indicator to share the content with other users , associated with the website information, pictures, images, text, video, animation, audio and multimedia content; downloadable and non-downloadable computer software providing an electronic pop up display for receipt and storage of user annotations associated with the website information and pictures, images, text, video, animation, audio and multimedia content retrieved from online sources; downloadable and non-downloadable computer software providing a user interface and user-defined electronic folder system storing electronic icons associated with website information, pictures, images, text, video, animation, audio and multimedia content retrieved from online sources and activatable to re-open the website from which the website information, pictures, images, text, video, animation, audio and multimedia content was retrieved; downloadable and non-downloadable computer software allowing a user to link electronic icons with one another to show connections and relationships between information or content represented by the electronic icons; downloadable and non-downloadable computer software providing a user interface and user-defined electronic folder system for display and ordering of website information and pictures, images, text, video, animation, audio and multimedia content retrieved from online sources” appear to be closely related to the registrant’s goods identified as “computer programs for automatic workstation backup, file/disk recovery, and workstation and network security, and user manuals sold therewith”.  That is, the function of applicant’s software that provides for the storing of information, data, content, etc., is appears to be closely related to the backup function of the registrant’s software.

 

Where the marks of the respective parties are identical or virtually identical, the relationship between the relevant goods and/or services need not be as close to support a finding of likelihood of confusion.  See In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); TMEP §1207.01(a).

 

--Conclusion

 

Where the marks are identical and the goods are closely related, confusion as to the source of the goods is likely.  For the foregoing reasons, the mark is refused registration under Section 2(d) of the Trademark Act.

 

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 AND/OR SERVICES

 

The wording “Downloadable and non-downloadable computer software …, associated with the website information, pictures, images, text, video, animation, audio and multimedia content; downloadable and non-downloadable computer software …; downloadable and non-downloadable computer software …; downloadable and non-downloadable computer software …; downloadable and non-downloadable computer software …,” in the identification of goods is indefinite and must be clarified.  See TMEP §1402.01. 

 

The wording “downloadable and non-downloadable computer software” creates and ambiguity as to whether the applicant is applying for just class 9 goods or both class 9 goods and class 42 services, since providing temporary use of online non-downloadable software is a Class 42 service, not a Class 9 goods.

 

The wording “associated with the website information, pictures, images, text, video, animation, audio and multimedia content” appearing at the end of the first clause in the identification appears to be a typographical error in that it makes no sense in the contexts of how it is being used. 

 

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

 

International Class 9

Computer software and downloadable computer software providing a user interface and user-defined electronic folder system for receipt and storage of website information and pictures, images, text, video, animation, audio and multimedia content retrieved from online sources and for receipt and storage of user annotations, namely, text, hashtags, voice notes, and an indicator to share the content with other users; computer software and downloadable computer software providing an electronic pop up display for receipt and storage of user annotations associated with the website information and pictures, images, text, video, animation, audio and multimedia content retrieved from online sources; computer software and downloadable computer software providing a user interface and user-defined electronic folder system storing electronic icons associated with website information, pictures, images, text, video, animation, audio and multimedia content retrieved from online sources and activatable to re-open the website from which the website information, pictures, images, text, video, animation, audio and multimedia content was retrieved; computer software and downloadable computer software allowing a user to link electronic icons with one another to show connections and relationships between information or content represented by the electronic icons; computer software and downloadable computer software providing a user interface and user-defined electronic folder system for display and ordering of website information and pictures, images, text, video, animation, audio and multimedia content retrieved from online sources.

 

International Class 42

Providing temporary use of online non-downloadable software providing a user interface and user-defined electronic folder system for receipt and storage of website information and pictures, images, text, video, animation, audio and multimedia content retrieved from online sources and for receipt and storage of user annotations, namely, text, hashtags, voice notes, and an indicator to share the content with other users; providing temporary use of online non-downloadable software providing an electronic pop up display for receipt and storage of user annotations associated with the website information and pictures, images, text, video, animation, audio and multimedia content retrieved from online sources; providing temporary use of online non-downloadable software providing a user interface and user-defined electronic folder system storing electronic icons associated with website information, pictures, images, text, video, animation, audio and multimedia content retrieved from online sources and activatable to re-open the website from which the website information, pictures, images, text, video, animation, audio and multimedia content was retrieved; providing temporary use of online non-downloadable software allowing a user to link electronic icons with one another to show connections and relationships between information or content represented by the electronic icons; providing temporary use of online non-downloadable computer software providing a user interface and user-defined electronic folder system for display and ordering of website information and pictures, images, text, video, animation, audio and multimedia content retrieved from online sources.

 

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

 

QUIDELINES REGARDING MULTIPLE CLASS APPLICATIONS

 

The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)        LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class.

 

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

INFORMATION ABOUT GOODS AND/OR SERVICES REQUIRED

 

The nature of the goods and/or services on which applicant intends to use its mark is not clear from the present record and additional information is required.  An applicant can be required to provide more information if it is necessary for proper examination of the application.  37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e); see In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003).

 

Therefore, applicant must submit samples of advertisements or promotional materials of the identified goods and/or services.  If such materials are not available, applicant must submit samples of advertisements or promotional materials of similar goods and/or services.  In addition, applicant must describe in detail the nature, purpose, and channels of trade of the goods and/or services.

 

Failure to comply with a request for information can be grounds for refusing registration.  In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d at 1701-02; TMEP §814.

 

 

 

 

/John Dwyer/

Examining Attorney

Law Office 116

571-272-9155

John.Dwyer1@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 12/13/2013 FOR U.S. APPLICATION SERIAL NO. 86045622

 

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 12/13/2013 (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.