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: 2/10/2015

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee. 

 

 

 

INTRODUCTION

 

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:  (*) Indicates Issues Applicant Must Address:

 

*  Section 2(d) Refusal – Likelihood of Confusion

*  Entity

*  Identification of Services

*  Mark Description

 

 

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. 3376922.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

The applicant has applied to register  RANGER (& DESIGN) for (CLASS 42) Computer consultation; Computer consultation in the field of computer security; Computer security consultancy; Computer services, namely, on-site management of information technology (IT) systems; Computer services, namely, remote and on-site management of computer systems and data processing facilities, namely, on-site management of information technology (IT) systems of others; Computer software consultancy; Computer technical support services, namely, 24/7 service desk or help desk services for IT infrastructure, operating systems, database systems, and web applications; Consulting services in the field of software as a service (SAAS); Design and development of electronic data security systems; Design and writing of computer software; Information technology consulting services; IT consulting services; IT integration services; Planning and design of integrated hardware, software and communication infrastructure; Software as a service (SAAS) services, namely, hosting software for use by others for use in database management; Technical support services, namely, 24/7 monitoring of network systems, servers and web and database applications and notification of related events and alerts; Technical support services, namely, installation, administration, and troubleshooting of web and database applications; Technical support services, namely, migration of datacenter, server and database applications; Technical support services, namely, troubleshooting of computer software problems.

 

 

The registered mark is RANGER TECHNICAL RESOURCES and the relevant class of services is (CLASS 42) Information technology consulting services; consulting services in the field of office and workplace automation.

 

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. 

 

In determining likelihood of confusion, 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.

 

 

            A.        COMPARISON OF THE MARKS

 

 

In the present case, applicant’s mark “RANGER (& DESIGN)” is similar to the registered mark “RANGER TECHNICAL RESOURCES” 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).  Similarity in any one of these elements 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).

 

 

Specifically, the dominant element of applicant’s mark, i.e., the term RANGER, is virtually identical to the dominant element of registrant’s mark, i.e., the term RANGER.  Although the marks are compared in their entireties in the Section 2(d) analysis, one feature of a mark may be recognized as more significant or dominant in creating a commercial impression.  Greater weight is generally given to that dominant feature in determining whether the marks are confusingly similar.  See TMEP §1207.01(b); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987).

 

 

The term RANGER in applicant’s mark is considered dominant because the only other element is a design element.  For a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and/or services. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)). Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

 

Likewise the term RANGER in registrant’s mark is considered dominant because the remaining terms in the mark, i.e., TECHNICAL RESOURCES, is a descriptive term that has been disclaimed.  Disclaimed matter is typically less significant or less dominant when comparing marks.  See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

 

When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result.  Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049, (TTAB 2014); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); TMEP §1207.01(b).

 

 

 

When considered in their entireties, applicant’s mark conveys the same overall commercial impression as the registered mark such that consumers are likely to regard the mark of the applicant and that of the registrant as confusingly similar.

 

 

B.        COMPARISON OF THE GOODS/SERVICES

 

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).

 

Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the respective parties that is required to support a finding of likelihood of confusion.  In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).

 

 

Applicant’s services are: (CLASS 42) Computer consultation; Computer consultation in the field of computer security; Computer security consultancy; Computer services, namely, on-site management of information technology (IT) systems; Computer services, namely, remote and on-site management of computer systems and data processing facilities, namely, on-site management of information technology (IT) systems of others; Computer software consultancy; Computer technical support services, namely, 24/7 service desk or help desk services for IT infrastructure, operating systems, database systems, and web applications; Consulting services in the field of software as a service (SAAS); Design and development of electronic data security systems; Design and writing of computer software; Information technology consulting services; IT consulting services; IT integration services; Planning and design of integrated hardware, software and communication infrastructure; Software as a service (SAAS) services, namely, hosting software for use by others for use in database management; Technical support services, namely, 24/7 monitoring of network systems, servers and web and database applications and notification of related events and alerts; Technical support services, namely, installation, administration, and troubleshooting of web and database applications; Technical support services, namely, migration of datacenter, server and database applications; Technical support services, namely, troubleshooting of computer software problems.

 

 

Registrant’s services are: (CLASS 42) Information technology consulting services; consulting services in the field of office and workplace automation.

 

 

The services of the applicant and registrant are identical with respect to Information technology consulting services.  The remaining services are related in that both parties are providing similar computer based services in the field of information technology.   

 

 

Since the services of the parties are related, they are likely to travel in the same channels of trade and will likely be encountered by the same group or class of purchasers.

 

Since the marks are similar and the services are related, there is a likelihood of confusion as to the source of applicant’s services.  Therefore, applicant’s mark is not entitled to registration.

 

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 responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

 

ENTITY INDEFINITE

 

The designation “INC.” is included in applicant’s name, but the entity type is set forth as a “limited liability company.”  Generally, “INC.” identifies a “corporation,” and not a limited liability company.  Therefore, applicant must specify whether the entity type is a limited liability company or a corporation and amend the application accordingly.  TMEP §803.03(h).

 

If applicant is a corporation, applicant must provide the legal name of the corporation and U.S. state or foreign country of incorporation or organization.  See 37 C.F.R. §2.32(a)(2), (a)(3)(ii); TMEP §§803.02(c), 803.03(c). If applicant is a limited liability company, applicant must amend the entity type and provide the U.S. state under whose laws it is organized.  Id. 

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused under Trademark Act Section 1 because the application was void as filed.  An application must be filed by the owner of the mark.  15 U.S.C. §1051; 37 C.F.R. §2.71(d); TMEP §§803.01, 803.06, 1201.02(b).

 

 

IDENTIFICATION OF SERVICES

 

Applicant has identified the services in the application as: (CLASS 42) Computer consultation; Computer consultation in the field of computer security; Computer security consultancy; Computer services, namely, on-site management of information technology (IT) systems; Computer services, namely, remote and on-site management of computer systems and data processing facilities, namely, on-site management of information technology (IT) systems of others; Computer software consultancy; Computer technical support services, namely, 24/7 service desk or help desk services for IT infrastructure, operating systems, database systems, and web applications; Consulting services in the field of software as a service (SAAS); Design and development of electronic data security systems; Design and writing of computer software; Information technology consulting services; IT consulting services; IT integration services; Planning and design of integrated hardware, software and communication infrastructure; Software as a service (SAAS) services, namely, hosting software for use by others for use in database management; Technical support services, namely, 24/7 monitoring of network systems, servers and web and database applications and notification of related events and alerts; Technical support services, namely, installation, administration, and troubleshooting of web and database applications; Technical support services, namely, migration of datacenter, server and database applications; Technical support services, namely, troubleshooting of computer software problems.

 

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

Specifically, the wording “Planning and design of integrated hardware, software and communication infrastructure;” in the identification of services requires clarification to indicate that the hardware and software is COMPUTER hardware and software.  In addition, the wording “communication infrastructure” is indefinite because it is unclear what “infrastructure” refers to.  If this refers to TECHNOLOGIES applicant may adopt the example below.  See TMEP §1402.01.  Suggested wording for amending the identification is provided in CAPS in the example below.

 

 

Applicant may adopt the following, if accurate:

 

 

CLASS 42      Computer consultation; Computer consultation in the field of computer security; Computer security consultancy; Computer services, namely, on-site management of information technology (IT) systems; Computer services, namely, remote and on-site management of computer systems and data processing facilities, namely, on-site management of information technology (IT) systems of others; Computer software consultancy; Computer technical support services, namely, 24/7 service desk or help desk services for IT infrastructure, operating systems, database systems, and web applications; Consulting services in the field of software as a service (SAAS); Design and development of electronic data security systems; Design and writing of computer software; Information technology consulting services; IT consulting services; IT integration services; Planning and design of integrated COMPUTER hardware, software and communication TECHNOLOGIES; Software as a service (SAAS) services, namely, hosting software for use by others for use in database management; Technical support services, namely, 24/7 monitoring of network systems, servers and web and database applications and notification of related events and alerts; Technical support services, namely, installation, administration, and troubleshooting of web and database applications; Technical support services, namely, migration of datacenter, server and database applications; Technical support services, namely, troubleshooting of computer software problems.

           

 

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

 

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.

 

 

MARK DESCRIPTION/COLOR LOCATION STATEMENT

 

Applicant has provided the following description of the mark:   The mark consists of RANGER as the literal element where RANGER appears in blue and curved in a white and blue banner located over in a blue badge icon within a circular blue border. The background color white is not claimed a a feature of the mark.

 

Applications for marks depicted in color must include a description of all the literal and design elements in the mark that specifies where all the colors appear in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §§807.07(a) et seq.

 

In the present case, it is unclear whether the color “white” referenced in applicant’s description as appearing in the banner is a feature of the mark or whether the white in the banner is also background.  Applicant must clarify this inconsistency.  If the white in the banner represents background, then applicant may amend the description to so clarify.  For example:

 

 

Mark Description:     The mark consists of the term “RANGER” in blue inside a curved banner outlined in blue and located over a blue badge, all within a blue circular design.  The white represents background as is not part of the mark.

 

 

On the other hand, if the white in the banner is claimed as a feature of the mark, then applicant must amend the color claim to include the color white, e.g., The color(s) blue and white is/are claimed as a feature of the mark.

 

 

ASSISTANCE

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

 

 

/deborah e. lobo/

Trademark Examining Attorney

Law Office 109

Email: deborah.lobo@uspto.gov

Phone: 571-272-3263

 

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 2/10/2015 FOR U.S. APPLICATION SERIAL NO. 86431030

 

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 2/10/2015 (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.