To: | Apereo Foundation Incorporated (ct@ctaylorlegal.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86599494 - CAS - CAS - two ma |
Sent: | 7/31/2015 4:28:08 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86599494
MARK: CAS
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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: Apereo Foundation 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.
SUMMARY OF ISSUES that applicant must address:
SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL – PARTIAL REFUSAL
THIS REFUSAL APPLIES TO CLASS 042 ONLY.
Applicant has applied to register the mark CAS for use in connection with the following relevant services: “Developing computer software and facilitating the cooperative development, maintenance, and improvement of computer software to allow users to authenticate data and sign on to several systems simultaneously” in International Class 042.
Registrant owns a registration for the mark CAS for use in connection with the following relevant services: “custom design of computer software for retail sales, distributors, lumber dealers, and businesses, to be used with personal computers and mini-computers; mail order services in the field of computer software; consulting services in the fields of computers, computer programming and software, excluding such services directed to the chemical or chemical engineering fields and scientific disciplines related thereto” in International Class 042.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the services, and similarity of the trade channels of the 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 the Marks
In the present case, applicant’s mark is CAS, and registrant’s mark is CAS. 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 services.
Accordingly, the marks are confusingly similar.
Comparison of the Services
Absent restrictions in an application or registration, the identified 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 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 identifications set forth in the application and registration have no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these services travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application and registration use broad wording to describe the services and this wording is presumed to encompass all services of the type described, including those in the more narrow identifications. Specifically, applicant’s computer software development is broad enough to encompass registrant’s more narrowly identified software development. In addition, registrant indicated that it provides consulting services related to computer software, and this language is presumed to encompass applicant’s more narrowly identified facilitation services. Accordingly, the services of the respective parties are related for likelihood of confusion purposes.
In sum, given the fact that applicant’s mark is virtually identical to registrant’s mark, and the services of the applicant and registrant are highly related, there is a likelihood of confusion in the marketplace. Therefore, applicant’s mark is refused registration pursuant to Section 2(d) of the Trademark Act.
ADVISORY REGARDING CITED REGISTRATION
The cited registration will enter the grace period for filing its maintenance documents on September 12, 2015. If applicant’s response is received after this date AND registrant still has not filed its maintenance documents, the examining attorney will suspend action pending a determination of whether the registrant timely files, and the USPTO accepts, the §8 or §71 affidavit and/or whether the registration is renewed. If the registrant timely files, and the USPTO accepts, the §8 or §71 affidavit and/or the cited registration is renewed, the examining attorney will remove the application from suspension and issue the final refusal. See TMEP § 716.02(e).
ADVISORY REGARDING RESPONSE OPTIONS FOR PARTIAL REFUSALS
(1) Deleting the class to which the refusal pertains; or
(2) Filing a request to divide out the goods or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the class to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
IDENTIFICATION REQUIREMENT – PARTIAL REQUIREMENT
THIS REQUIREMENT APPLIES TO THE FOLLOWING SERVICES ONLY: “facilitating the cooperative development, maintenance, and improvement of computer software to allow users to authenticate data and sign on to several systems simultaneously” in International Class 042.
The wording “facilitating the cooperative development, maintenance, and improvement of computer software to allow users to authenticate data and sign on to several systems simultaneously” is indefinite, because it is unclear the underlying nature of applicant’s “facilitation services”, and this information is necessary for classification purposes. If applicant hosts an online community focused on cooperative development, maintenance, and improvement of computer software, then it should indicate this accordingly. The following amendment in Class 042 is suggested:
“Developing computer software; Hosting an online community web site focused on cooperative development, maintenance, and improvement of computer software to allow users to authenticate data and sign on to several systems simultaneously” in International Class 042.
If the applicant chooses not to adopt the above suggestion, it is noted that an applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
For assistance with identifying and classifying 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.
SIGNIFICANCE INQUIRY REQUIREMENT
Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
RESPONSE GUIDELINES
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 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.
/Brin Anderson Desai/
Brin Anderson Desai
Trademark Examining Attorney
Law Office 113
571-272-6399
Brin.Desai@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.