To: | Divvy, LLC (LMSLegalLLC@gmail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86059117 - DIVVY - N/A |
Sent: | 6/28/2014 3:25:22 PM |
Sent As: | ECOM110@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. 86059117
MARK: DIVVY
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Divvy, LLC
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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: 6/28/2014
The assigned examining attorney has reviewed the referenced application and determined the following.
Summary of Issues That Must Be Addressed
• Likelihood of Confusion
Likelihood of Confusion
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978). TMEP §§1207.01 et seq.
In determining whether there is a likelihood of confusion, the examining attorney must consider all circumstances surrounding the sale of the goods/offering of the services. Industrial Nucleonic Corp. v. Hinde Engineering Co., 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973). These circumstances include the marketing channels, the identity of the prospective purchasers and the degree of similarity between the marks and between the goods/services. In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion. If the goods/services of the parties differ, it is necessary to show that they are related in some manner. In re Mack, 197 USPQ 755 (TTAB 1977). TMEP §§1207.01 et seq.
Comparison of the Marks
The applicant’s proposed mark is “Divvy” for Computer application software for mobile phones, namely, software for viewing, aggregating, curating, managing, sharing and downloading photographs, text and other associated content imported from registered users' social media accounts.
The registrant’s referenced mark is “Divvy” for Software as a service (SAAS) services featuring software for interaction between and among users of computers, mobile and handheld computers and wired wireless communication devices and provides the means to access, transmit, store, distribute, organize, manage, edit, share and report user-generated content and tasks.
The respective marks are comprised in either whole or significant part of the term
“Divvy”.
Consequently, the marks share the same over-all sound, appearance and commercial impression.
Comparison of the Goods/Services
The goods/services of the parties need not be identical or directly competitive to find a likelihood of confusion. They need only be related in some manner, or the conditions surrounding their marketing 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. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). TMEP §1207.01(a)(i).
Since the respective marks are essentially identical, the only issue before the examining attorney is whether the applicant’s goods are so related to the registrant’s goods that confusion as to source of origin or sponsorship is likely to occur. The examining attorney must conclude that they are so related, for it is foreseeable that customers of the applicant might encounter the registrant’s respective goods and mark in the marketplace given similar channels of trade within which the identified goods travel. Specifically, it is likely that the applicant’s computer application software for mobile devices that allow users to share information and the registrant’s software as a service that allows users to share user-generated content will be marketed, advertised and ultimately sold or offered in the same or similar fashions.
Confusion as to source of origin or sponsorship is extremely likely if the applicant’s proposed mark is allowed to register. Registration is therefore refused by the examining attorney.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Giancarlo Castro/
Giancarlo Castro
Examining Attorney
Law Office 110
571-272-9357
giancarlo.castro@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.