Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

 

EXAMINING ATTORNEY’S APPEAL BRIEF

 

The applicant has appealed the Trademark Examining Attorney’s refusal to register the mark RINCON standard characters.  The refusal was issued under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), finding that there is a likelihood of confusion with U.S. Registration No. 3463784 for the mark RINCON.  Applicant’s mark identifies “Computers; application development software; computer operating system software.”  The registrant’s mark identifies “Computer software for managing and improving business performance.” 

 

 

FACTS

 

On December 6, 2013, applicant filed an application under Sections 1(b) and 44(d) of the Trademark Act for the mark RINCON for “Computers; application development software; computer operating system software.” 

 

On March 18, 2014, the Trademark Examining Attorney refused registration for clarification on the basis for registration, as well as an unsigned application.  In addition, information on the significance of the wording Rincon was required.

 

On September 18, 2014, applicant responded and satisfied the requirements from the initial Office action.  On September 22, 2014, the Trademark Examining Attorney refused registration under Section 2(d) for a likelihood of confusion with the mark in U.S. Reg. Nos. 3463784. 

 

On October 22, 2014, the Office reassigned this application to the undersigned Trademark Examining Attorney.

 

On March 23, 2015, applicant filed a response to the Office action.  The applicant presented arguments against the 2(d) refusal. 

 

On April 24, 2015, the Examining Attorney issued a Final Refusal on the 2(d) issue with respect to U.S. Registration No. 3463784.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

Applicant subsequently filed a Request for Reconsideration and Notice of Appeal on October 26, 2015. The Examining Attorney denied the Request on November 12, 2015. 

 

The issue on appeal comprises whether a likelihood of confusion exists between applicant’s mark

and the mark in the cited registration.

 

 

ARGUMENT

 

A LIKELIHOOD OF CONFUSION EXISTS BETWEEN THE MARK “RINCON” AND THE MARK “RINCON” BECAUSE THE MARKS CREATE THE SAME COMMERCIAL IMPRESSION AND THE GOODS ARE CLOSELY RELATED

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, 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).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 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 and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

A.      APPLICANT’S MARK AND THE MARK IN THE CITED REGISTRATION ARE IDENTICAL

 

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 RINCON and registrant’s mark is RINCON.  Thus, the arbitrary 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.

 

Therefore, the marks are confusingly similar. 

 

Applicant presents no arguments against the first prong.

 

 

B.       THE GOODS OF THE PARTY ARE CLOSELY RELATED BASED ON THE IDENTIFICATION OF GOODS IN THE APPLICATION AND REGISTRATION

 

 

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)); TMEP §1207.01(a)(i).

 

The goods of the parties in each instance are computer software that would be used in business applications.  In particular, applicant’s computer operating system software could be used in improving business performance per the goods of registrant.  A consumer seeking software to establish and operate a business would likely encounter both marks.  Seeing the mark appear on both their computer, then the operating software and subsequent business function software would likely cause confusion for consumers. The goods would likely travel through the same channels of commerce to the same end-users. 

 

Applicant argues that the goods are not related in functionality and the channels are different.  In response, 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 Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).   Therefore, applicant’s evidence in Exhibits A, B, and C of its Brief and earlier Responses is not persuasive.

 

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 and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, it is presumed that these goods travel in all normal channels of trade, and are available to the same class of purchasers.  Further, the application and registration(s) use(s) broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in applicant’s and registrant(s)’s more narrow identification.

 

More importantly, where the arbitrary 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 House Beer, LLC, 114 USPQ2d 1073, 1077 (TTAB 2015); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); TMEP §1207.01(a).

 

Further, applicant asserts that the consumers are business professionals for which confusion is less likely.  Applicant also believes that as applicant’s goods are highly specialized and target knowledgeable customers, the channels of trade would be different for the goods.  In response, again, no limitations are found in the identification of goods that would affect the channels of trade.  Further, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).

 

Moreover, the Trademark Examining Attorney previously attached evidence from the USPTO’s X-Search database consisting of a representative sample of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case.  See pages 2-11 in TICRS in the Final Office action, dated April 24, 2015; See pages 2-19 in TICRS in the denial of Request for Reconsideration action, dated November 12, 2015.  This evidence shows that the goods and/or services listed therein, namely goods and services for operating software, as well as, business related software, are of a kind that may emanate from a single source under a single mark.  See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); TMEP §1207.01(d)(iii).

 

While the Examining Attorney inadvertently attached a single registration registered under Section 66(a), the remaining registrations clearly show single-source emanation for the goods. Further, applicant’s goods include computers. The Trademark Trial and Appeal Board has held that computer hardware products are related to computer software products, such that their marketing under the same or similar marks may be likely to cause source confusion.  See In re TIE/Commc’ns, Inc., 5 USPQ2d 1457, 1458 (TTAB 1987) (holding DATA STAR likely to cause confusion when used in connection with both registrant’s “computer programs recorded on magnetic media” and applicant’s “voice/data communications terminals and parts thereof”); In re Epic Sys. Corp., 228 USPQ 213, 214-15 (TTAB 1985) (holding EPIC for computer software for use in health care facilities likely to be confused with EPIC DATA for “electronic data collection terminals and electronic data collection units”); In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984) (holding Y NET for computer hardware likely to be confused with XYNET for computer software); Alpha Indus., Inc. v. Alpha Microsystems, 220 USPQ 67, 69, 71-72 (TTAB 1983) (holding ALPHA MICRO for digital computer equipment and programs likely to be confused with ALPHA MICROWAVE for microwave components and subassemblies).

 

Last, applicant asserts that registrations do not demonstrate that these registrants ever offered these types of software and that the “marks are actually used on all of the goods covered by the registrations.”    The Examining Attorney disagrees.  A trademark or service mark registration on the Principal Register is prima facie evidence of the validity of the registration and the registrant’s exclusive right to use the mark in commerce in connection with the specified goods and/or services.  See 15 U.S.C. §1057(b); TMEP §1207.01(d)(iv).

 

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 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.  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, 1026 (Fed. Cir. 1988).

 

 

C.       SUMMARY

 

Since the marks of the applicant and registrant are identical and the goods of the parties are closely related, there is likelihood that purchasers would confuse the sources of these goods.

 

CONCLUSION

 

 

For the foregoing reasons, the Board is requested to affirm the refusal to register the mark RINCON under Section 2(d) of the Trademark Act. 

 

 

 

                                                                        Respectfully submitted,

 

 

/Bernice Middleton/

Bernice Middleton

Trademark Examining Attorney

Law Office 106

Bernice.Middleton@uspto.gov

(571) 270.1514

             

 

 

Mary I. Sparrow

Managing Attorney

Law Office 106

 

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO EXAMINING ATTORNEY’S APPEAL BRIEF

HAS ISSUED ON 3/15/2016 FOR U.S. APPLICATION SERIAL NO. 86137335

 

Please follow the instructions below:

 

(1)  TO READ THE APPEAL BRIEF:  Click on this link or go to http://tsdr.gov.uspto.report/, enter the U.S. application serial number, and click on “Documents.”

 

The Examining Attorney’s Appeal Brief 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)  FILING A REPLY BRIEF:  You may file a reply brief within twenty (20) days of 3/15/2016, the date from which the Examining Attorney’s Appeal Brief issued. 

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail a reply brief because this mailbox is not monitored.  Instead, the Trademark Trial and Appeal Board recommends that you file a reply brief online using the Electronic System for Trademark Trials and Appeals (ESTTA) located at http://estta.uspto.gov.

 

(3)  QUESTIONS:  For technical assistance in accessing or viewing the appeal brief in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.