UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86301426
MARK: EPICENTER
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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: ENGEO Incorporated
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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: 9/23/2014
SUMMARY OF ISSUES that applicant must address:
· SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applicant has applied for the stylized design mark having the literal element EPICENTER with the design of a flattened globe and radiating rings for services identified as “non-downloadable computer software in the field of project management”.
The cited registrations are shown in the table below.
Mark |
Registration No. |
Relevant Goods/Services |
EPI CENTER |
3411936 |
Class 9: Computer software in the field of industrial equipment predictive maintenance and industrial equipment monitoring, for use by owners and operators of industrial equipment Class 42: : Computer services, namely, computer software installation and design for others, in the field of industrial equipment predictive maintenance and monitoring |
EPICENTER |
2246406 |
Class 9: Computer programs and accompanying user manuals sold as a unit for use in the health care industry for master patient indexing, and for coordinating, linking, indexing, accessing or integrating clinical, health care or related data among, across, from or to similar or disparate computer systems. |
EPICENTER |
2847812 |
Class 9: Network management software for managing and monitoring network nodes, network devices and network systems, namely, capabilities for network configuration, troubleshooting and status monitoring and users manuals packaged as a unit therewith |
EPICENTRE |
4123946 |
Class 42: Scientific and technological services, namely, research and design in the field of earthquake engineering, tsunami engineering, earthquake protection, tsunami protection, disaster risk reduction, and disaster management; industrial research services in the field of earthquake engineering, tsunami engineering, earthquake protection, tsunami protection, disaster risk reduction, and disaster management; design and development of computer hardware and software; engineering services for building and property condition assessment |
EPICENTRO |
3830008 |
Class 9: Computer software package comprised of middleware in the nature of software components consisting of source code compiled and executable object code and software applications for use in delivering multimedia content, data networking, person-to-person communication, namely, computer telephony software, computer software application for instant messaging and video conferencing, computer software for use in database management, use as a spreadsheet, word processing for health-care in the field of tele-medicine and wellness programs, domotics, namely, home and office automation systems comprising computer hardware and computer software for use in database management, use as a spreadsheet, word processing, for home and office monitoring, for use in database management, use as a spreadsheet, word processing, for control applications, and for network storage of data and computer hardware and computer software for use in database management, use as a spreadsheet, word processing for energy management services, sold embedded in as an integral component part of multimedia end user internet protocol set top boxes |
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.
COMPARISON OF MARKS
In this case, the applied-for mark is similar in sound, appearance and meaning to each of the registered marks. With respect to Registration Nos. 3411936, 2246406, 2847812, and 4123946
the applied-for mark shares a nearly identical literal element. The wording in the applied-for mark EPICENTER would be pronounced in an identical manner as the wording in each of these registered marks. Indeed, the marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Further, as the marks in Registration Nos. 2847812, 2246406, and 3411936, are claimed in either standard characters or as a typed drawings, there is no other stylization claimed to distinguish the marks. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
The marks have the same connotation and overall commercial impression. The differences between them are slight, and do not overcome the likelihood of confusion between the marks.
With respect to Registration No. 3830008, the registered mark is the Spanish word meaning EPICENTER. See http://translate.google.com/#auto/en/epicentro. Under the doctrine of foreign equivalents, a mark in a foreign language and a mark that is its English equivalent may be held to be confusingly similar. TMEP §1207.01(b)(vi); see, e.g., In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006); In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983). Therefore, marks comprised of foreign words are translated into English to determine similarity in meaning and connotation with English word marks. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Equivalence in meaning and connotation can be sufficient to find such marks confusingly similar. See In re Thomas, 79 USPQ2d at 1025.
The doctrine is applicable when it is likely that an ordinary American purchaser would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696; TMEP §1207.01(b)(vi)(A). The ordinary American purchaser refers to “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.” In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024 (citing J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §23:26 (4th ed. 2006), which states “[t]he test is whether, to those American buyers familiar with the foreign language, the word would denote its English equivalent.”).
Generally, the doctrine is applied when the English translation is a literal and exact translation of the foreign wording. See In re Thomas, 79 USPQ2d at 1021 (holding MARCHE NOIR for jewelry likely to be confused with the cited mark BLACK MARKET MINERALS for retail jewelry and mineral store services where evidence showed that MARCHE NOIR is the exact French equivalent of the English idiom “Black Market,” and the addition of MINERALS did not serve to distinguish the marks); In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (holding applicant’s mark LUPO for men’s and boys’ underwear likely to be confused with the cited registration for WOLF and design for various clothing items, where LUPO is the Italian equivalent of the English word “wolf”); In re Hub Distrib., Inc., 218 USPQ at 284 (holding the Spanish wording EL SOL for clothing likely to be confused with its English language equivalent SUN for footwear where it was determined that EL SOL was the “direct foreign language equivalent” of the term SUN).
Thus the applied-for mark is similar to the registered mark because the direct and literal translation of the registered mark is EPICENTER, the dominant feature of the applied-for mark. The applied-for mark and the mark in Registration No. 3830008 are thus considered similar.
Thus the applied for mark is similar to the registered marks.
COMPARISON OF GOODS/SERVICES
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).
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/or services travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application uses broad wording to describe the goods and/or services and this wording is presumed to encompass all goods and/or services of the type described, including those in registrants’s more narrow identification.
Specifically, the applicant has identified “non-downloadable computer software in the field of project management,” however, the applicant has not specified the purpose or function of the computer software. Thus the applicant’s computer software includes all computer software within the field of project management – which could include computer software with the specific functions in each of the cited registrations.
With respect to Registration No. 2246406, the applicant’s non-downloadable computer software in the field of project management is broad enough to include computer programs for use in the health care industry to index patient information and for coordinating, linking, indexing, accessing or integrating clinical, health care or related data among, across, from or to similar or disparate computer systems. Further, with Respect to Registration No. 2847812, the applicant’s non-downloadable computer software for project management is broad enough to include computer software for managing networks and for network configurations, and monitoring networks as part of project management. With respect to Registration No. 3411936, the applicant’s computer software in the field of project management is broad enough to include computer software for maintaining and monitoring industrial equipment. With respect to Registration No. 3830008, the applicant’s non-downloadable computer software in the field of project management is broad enough to include computer software for delivering multimedia content, data networking, communication, for database management, and for creating spreadsheets, sold as an integral part of internet protocol set top boxes.
Further, with respect to the services identified in Registration Nos. 3411936 and 4123946, the applicant’s services of non-downloadable computer software in the field of project management are related to the registrants’s services of “Computer services, namely, computer software installation and design for others, in the field of industrial equipment predictive maintenance and monitoring” and “design and development of computer hardware and software” because it is common for the same entity to provide computer software installation and design for others together with non-downloadable computer software in the field of project management together under the same mark and in the same channels of trade.
Specifically, the attached evidence from Microsoft (http://office.microsoft.com/en-us/project/, http://www.microsoft.com/en-us/microsoftservices/professional_services.aspx), Oracle (http://www.oracle.com/applications/primavera/solutions/products.html, http://www.oracle.com/us/solutions/index.html), and IBM (http://www-03.ibm.com/software/products/en/ibmtrircapiprojmanasoft, and http://www-01.ibm.com/software/sw-services/?lnk=mseIS-soft-usen) shows that it is common for computer software in the broad field of project management to be provided by the same company as computer software consulting and development and design.
Evidence obtained from the Internet may be used to support a determination under Trademark Act Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).
See Third Party Registration Nos. 3568268, 4569841, 4444554, 4568756, 4464280, 4500787, 4483729, 4518465, and 4082243.
Applicant may adopt the following identification of services, if accurate:
Class 42: Providing on-line non-downloadable computer software for {applicant must specify the function of the software, e.g., for database management, word processing} in the field of project management
See TMEP §1402.01.
Note that bolding, italics, and the like are used only to highlight suggested changes to the original language.
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.
The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements. See 37 C.F.R. §2.37; TMEP §§808 et seq.
To clarify whether black, white and/or gray are being claimed as color, applicant must satisfy one of the following:
(1) If black, white and/or gray are being claimed as colors in the mark, applicant must amend the color claim to include these colors, and amend the mark description to identify the literal and design elements that include these colors and specify where the black, white and/or gray appears in these elements; or
(2) If black, white and/or gray are not being claimed as colors in the mark, applicant must provide a statement that the colors black, white, and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark.
Id.
If the color white is being claimed as a feature of the mark, the applicant may substitute the below description of the mark and color claim, if accurate:
The mark consists of an image of with radiating circles displayed in red, the inner most of which are fully displayed and the outer circles are cut off, all in front of a flattened image of earth with the oceans displayed in light blue and the continents displayed in white. The letter “C” is displayed in navy blue and is placed at the center of the radiating circles with the wording “EPI” in gray lettering to the left of the letter “C” and the wording “ENTER” in navy blue lettering to the right of the letter C forming the overall literal element “EPICENTER”.
The color(s) gray, red, light blue, navy blue and white is/are claimed as a feature of the mark.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
/Natalie L. Kenealy/
Examining Attorney
Law Office 104
(571) 272-7817
Natalie.Kenealy@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.