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: 3/24/2014

 

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.

 

Trademark Act Section 2(d) Refusal to Register – Likelihood of Confusion:

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 2039860.  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 of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  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 be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

 

Regarding the issue of likelihood of confusion, all circumstances surrounding the sale of the goods and/or services are considered.  These circumstances include the marketing channels, the identity of the prospective purchasers, and the degree of similarity between the marks and between the goods and/or services.  See Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973); TMEP §1207.01.  In comparing the marks, similarity in any one of the elements of sound, appearance or meaning may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).  In comparing the goods and/or services, it is necessary to show that they are related in some manner.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); TMEP §1207.01(a)(vi).

 

The Marks are Similar:

 

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 TIBURON and registrant’s mark is TIBURON.  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. 

 

The Goods/Services are Related:

 

The goods and/or 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, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

If the goods and/or services of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Here, applicant’s goods are:

 

International Class 9 – Computer hardware; digital video players; computer software

 

The goods of registrant(s) are:

 

International Class 9 – Computer software in the field of database, information and personnel management, inventory, archiving, and messaging systems

 

With respect to applicant’s and registrant’s goods and/or services, the question of likelihood of confusion is determined based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

 

Absent restrictions in an application and/or registration, the identified goods and/or services are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described.  See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). 

 

In this case, the identification set forth in the application has no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, it is presumed that these goods and services travel in all normal channels of trade, and are available to the same class of purchasers.  Further, the application use(s) broad wording to describe the goods and services and this wording is presumed to encompass all goods and/or services of the type described, including those in registrants’ more narrow identifications.  Specifically, applicant’s computer software could include the more specific type of software in the registration.

 

The goods and/or services of the applicant and registrant(s) are also highly related, as demonstrated by the attached copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods and/or services as those of applicant and registrant(s) in this case.  These printouts have probative value to the extent that they serve to suggest that the goods and/or services listed therein, namely computer hardware, somputer software, and digital video players, are of a kind that may emanate from a single source.  In re Infinity Broad. Corp.,60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).  Thus, such goods and/or services are likely to travel in the same channels of trade, likely to be displayed to consumers under circumstances giving rise to a likelihood of confusion, and likely to be perceived as emanating from the same source.

 

The relatedness of the goods and services is further demonstrated by the attached evidence from Dell, Austin Business Journal, and Toshiba, which shows the same entities offering the goods from the application and registration.

 

Viewing all of the factors together, based on the similarity of the registered mark(s) to the proposed mark and the similarity of the goods and/or services, confusion as to source is likely.  Purchasers familiar with the mark(s) of the cited registration(s), upon seeing applicant’s mark, would be likely to conclude that applicant’s goods and/or services emanated from the same source, or that applicant’s goods and/or services were associated with and/or sponsored by the registrant(s).  Accordingly, registration is refused due to the likelihood of confusion.

 

Please note that the overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant(s) from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant(s).  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).

 

Responding to Refusal to Register:

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  If applicant chooses to respond to the refusal(s) to register, applicant must respond to the requirement(s) set forth below.

 

Identification of Goods:

 

The wording “computer software” in the identification of goods is indefinite and must be clarified.  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).

 

Applicant may adopt the following identification, if accurate.  Suggestions are in boldface italics, and the matter in braces { } or brackets [ ] is explanatory material:

 

International Class 9 – Computer hardware; digital video players; 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}

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.  An applicant may amend an identification of goods and/or services only to clarify or limit the goods and/or 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.

 

Unsigned Application:

 

The application was not signed and verified, which are application requirements.  See 15 U.S.C. §1051(a); 37 C.F.R. §§2.33(a)-(b)(1), 2.34(a)(1)(i).  Therefore, applicant must verify the statements specified further below in a signed affidavit or declaration under 37 C.F.R. §2.20.  See 15 U.S.C. §1051(a)(3); 37 C.F.R. §§2.33(a)-(b)(1), (c), 2.193(e)(1); TMEP §§804.02, 806.01(a).

 

If applicant responds to this Office action online via the Trademark Electronic Application System (TEAS), applicant may satisfy this requirement by answering “yes” to the TEAS response form wizard question relating to submitting a “signed declaration,” and following the instructions within the form for signing.  See 37 C.F.R. §§2.33(a)-(b)(1), (c), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b). 

 

If applicant responds to this Office action on paper, via regular mail, applicant may satisfy this requirement by providing the following statements and declaration at the end of the response, personally signed by a person authorized under 37 C.F.R. §2.193(e)(1) and dated, with the printed or typed name of the signatory appearing immediately below the signature.  See 37 C.F.R. §§2.20, 2.33(a)-(b)(1), (c), 2.193(a), (d); TMEP §§611.01(b), 804.01(b).

 

STATEMENTS:  The undersigned is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered; the mark is in use in commerce and was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date; the specimen shows the mark as used on or in connection with the goods or services listed in the application; the facts set forth in the application are true and accurate; and to the best of the undersigned’s knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.

 

DECLARATION:  The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

Electronic Signature:

 

To properly “sign” a form online in the Trademark Electronic Application System (TEAS), applicant can do one of the following:

 

(1)  Enter in the signature block any combination of letters, numbers, spaces and/or punctuation marks that the filer has adopted as a signature, placed between two forward slash (/) symbols (e.g., /john doe/);

 

(2)  E-mail the completed form from within TEAS to a second party for his/her electronic signature, which will then be automatically returned to the original preparer for submission with the form; or

 

(3)  Fill out the form online, print it in text format, and mail or fax it to the signatory who will sign the printed form in the traditional pen-and-ink manner.  The signature portion, along with a declaration, if required, is then scanned to create a jpg or pdf image file and attached to the form for electronic submission. 

 

See 37 C.F.R. §2.193(c); TMEP §611.01(c). 

 

For each method, the proper signatory must personally sign or personally enter his/her electronic signature.  See 37 C.F.R. §2.193(a); TMEP §§611.01(c), 611.02.  The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing.  37 C.F.R. §2.193(d); TMEP §611.01(c).

 

Persons Who Can Sign Verifications/Declarations:

 

The following persons are properly authorized to sign a verification or declaration on behalf of an applicant:

 

(1)        A person with legal authority to bind the applicant (e.g., a corporate officer or general partner);

 

(2)        A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or

 

(3)        An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the applicant.

 

37 C.F.R. §§2.33(a), 2.193(e)(1); TMEP §§611.03(a), 804.04; see 37 C.F.R. §§11.1, 11.14.

 

Foreign Application Not from Applicant’s Country of Origin:

 

The application specifies both a basis under Trademark Act Section 1 and a claim of priority under Section 44(d) and indicates that applicant intends to rely on the foreign registration that will issue from its foreign application as a basis for registration under Section 44(e).  See 15 U.S.C. §§1051(a), (b), 1126(d), (e); 37 C.F.R. §2.34(a)(1)-(2), (a)(4); TMEP §1003.04(a).  To obtain registration under Section 44(e) based on a foreign registration that will issue from the foreign application relied on for priority, the country in which the foreign application was filed must be the applicant’s country of origin.  See 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.02, 1002.04.  Under Section 44(c), “country of origin” is defined as the country in which an applicant (1) is domiciled, (2) has a bona fide and effective industrial or commercial establishment, or (3) is a national.  15 U.S.C. §1126(c); TMEP §1002.04. 

 

In the present case, the U.S. application shows that applicant has a domicile in Delaware, but the foreign application was filed in “TRINIDAD/TOBAGO”. 

 

Because applicant’s domicile is in a country different from the country in which the foreign application was filed, and from which the foreign registration will issue, applicant will need to establish that this country is applicant’s country of origin as of the date of issuance of the foreign registration.  See 15 U.S.C. §1126(c); TMEP §§1002.02, 1002.04.  This requirement may be satisfied by providing the following written statement for the record, once the foreign registration issues:  “Applicant has had a bona fide and effective industrial or commercial establishment in TRINIDAD/TOBAGO as of the date of issuance of the foreign registration.”  TMEP §1002.04.

 

If applicant will not be able to assert that the country in which the foreign registration has issued is applicant’s country of origin, registration under Section 44(e) will be refused.  See 15 U.S.C. §1126(c); TMEP §1002.01-.02.  In that case, applicant may delete the Section 44(e) basis and rely solely on Section 1(b) as a basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b); TMEP §806.04.  However, applicant may still retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, if applicant’s U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date and applicant has a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).

 

Translation of the Mark:

 

Applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. §2.32(a)(9); see TMEP §809.  In the present case, the wording “TIBURON” requires translation, and the translation noted below is suggested based on the attached evidence from Google and Babylon.

 

The following format is acceptable for a translation statement:

 

The English translation of “TIBURON” in the mark is “SHARK.”

 

TMEP §809.02.

 

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

/James MacFarlane/

Examining Attorney

Law Office 104

(571) 270-1512 (phone)

(571) 270-2512 (fax)

james.macfarlane@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 3/24/2014 FOR U.S. APPLICATION SERIAL NO. 86136634

 

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 3/24/2014 (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.