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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

ISSUE/MAILING DATE: 9/13/2017

THIS IS A FINAL ACTION.

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 $125 per 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 or e-mail without incurring this additional fee.  

INTRODUCTION

This Office action is in response to applicant’s communication filed on August 31, 2017.

In a previous Office action(s) dated March 3, 2017, the trademark examining attorney refused registration of the applied-for mark based on the following:  SECTION 2(D) REFUSAL – LIKELIHOOD OF CONFUSION. 

In addition, applicant was required to satisfy the following requirements:  CLASSIFICATION AND IDENTIFICATION OF SERVICES/MULTIPLE-CLASS APPLICATION REQUIREMENTS.

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied:  CLASSIFICATION AND IDENTIFICATION OF SERVICES/MULTIPLE-CLASS APPLICATION REQUIREMENTS.  See TMEP §§713.02, 714.04. 

Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of the issue below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

SUMMARY OF THE ISSUE MADE FINAL that applicant must address:

• SECTION 2(D) REFUSAL – LIKELIHOOD OF CONFUSION

SECTION 2(D) REFUSAL – LIKELIHOOD OF CONFUSION

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 2039948.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2039948.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

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.

COMPARISON OF THE MARKS

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

Applicant’s mark is “CONNECTION” stylized with arc design.

The mark in U.S. Registration No. 2039948 is the typed drawing mark “CONNECTIONS”.

Connection is primarily defined as:  the act of being connecting (or being joined).  See attached definitions of connection and connect from Merriam-Webster.

Applicant’s mark and registrant’s mark are similar sound, connotation and commercial impression because the word portion of applicant’s mark is the singular form of the registrant’s mark.  An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar.  Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).  Thus, in the present case both marks have a similarity in commercial impression related to the meaning of the term “CONNECTION” or “CONNECTIONS” as defined.

In addition, 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”).  In the present case, registrant’s mark may be presented in the same stylized display as “CONNECTION” in applicant’s mark.

In addition, although marks must be compared in their entireties, the word portion generally may be considered the dominant and most significant feature of a mark because consumers will request the goods and/or services using the wording.  See Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  For this reason, greater weight is often given to the word portion of marks when determining whether marks are confusingly similar.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  Although applicant’s mark contains a design element of an arc, the marks are similar in commercial impression based on the singular and plural form for of the same word.  Furthermore, the arc design element is perhaps also suggestive of the bringing together meaning of the word in applicant's mark because an arc connects one side to the other.  Thus, the arc design element reinforces the common meaning of "CONNECTION" and "CONNECTIONS" between the marks.  

Therefore, the marks are confusingly similar.

COMPARISON OF THE SERVICES

Applicant’s services as amended are:  Information technology consulting services; technical support services, namely, troubleshooting of computer software problems; integration and configuration of computer systems and computer networks for others; information technology support services, namely, monitoring network systems via information technology service support centers and helpdesks; computer systems analysis; maintenance of computer software; computer virus protection services; managing and protecting electronic messaging systems by means of anti-spam protection and filtering of unwanted e-mails; the provision of firewalls for computer networks; providing a web site featuring temporary use of non-downloadable software for enabling users to review information technology (IT) products and services, submit and approve requisitions for IT equipment and services, and purchase IT equipment and services.

The services in U.S. Registration No. 2039948 are computer programming services and consultation services in the field of computer software development.

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).

The examining attorney notes that applicant's services include information technology consulting services.  Information technology is defined as:  the technology involving the development, maintenance, and use of computer systems, software, and networks for the processing and distribution of data.  See attached definition from Merriam-Webster.  In addition, the term is defined as:   (IT) Applied computer systems - both hardware and software, and often including networking and telecommunications, usually in the context of a business or other enterprise. Often the name of the part of an enterprise that deals with all things electronic.  See attached definition form http://foldoc.org/information%20technology.  Therefore, registrant's consultation services in the field of computer software development are services which are encompassed by applicant's information technology services which include computer software by definition.  Applicant's information technology consultation services are also broad enough to encompass consultation as related to computer programming which are also the nature of registrant's services.  Hence, in particular applicant's information technology consulting services and registrant's services are similar in kind and/or closely related.

Applicant’s services and registrant’s services are similar in kind and/or closely related services because both are computer and software services which may emanate from the same source.  This is particularly true as both relate specifically to computer software as set forth in the identifications of record, namely, registrant’s consulting in the field of computer software which would include consultation related to applicant’s specific software services, namely, troubleshooting of computer software problems, integration and configuration of computer systems and computer networks for others (inclusive of software for such systems),  maintenance of computer software, computer virus protection services (i.e. virus software), and providing a web site featuring temporary use of non-downloadable software for enabling users to review information technology (IT) products and services, submit and approve requisitions for IT equipment and services, and purchase IT equipment and services.

In addition, 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 are 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 trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely, information technology consulting services and computer programming services, 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).

See attached U.S. Registration Nos. 5264575, 5189730, 5127529, 4838394, 5072458, 5048891, 5011432, 5010722, 5006702, 4976817, 4971492, 4951108, 4917381, 48150042, 4648479, 4537226, 4347478, 3977524, 3947782, and 3802862 for information technology consulting services and computer programming services.

See also attached U.S. Registration Nos. 5280257, 5264575, 5203968, 5093897, 5059855, 5006702, 4977663, 4870386, 4936717, 4882206, 4866373, 4840815, 4807756, 4784116, 4152932, 3939178, 4242817, 3993526, 3507423, and 3387436 for troubleshooting of computer software problems and computer programming services.

See also attached U.S. Registration Nos. 5132855, 4967472, 5247086, 5174562, 5174301, 5027262, 4859678, 4644630, 4799672, 4799671, 4700692, 4674837, 4197098, 4011827, 3977012, 4274607, 4125442, 4141092, 3947782 and 3793904 for computer system analysis and computer programming services.

Moreover, with respect to these services in particular the examining attorney notes the following services entry from the U.S. Acceptable Identification of Goods and Services Manual, namely, computer programming and computer system analysis with an effective dated of November 29, 2007.  See attached information from http://tmng.gov.uspto.report/tmngidm/id-master-list-public.html?&status=A&status=M&status=X&status=D&class-valid=true&search-by=all&status-all=All&pageNum=1&rows=10&search-term=computer%20systems%20analysis.  The fact that the this entry exists which incorporates both applicant’s and registrant’s services supports the related nature of the services because this entry identifies the common commercial name for the services which would emanate from the identical source by an applicant providing such services and adopting the use of this identification.

See also attached U.S. Registration Nos. 5264575, 5189969, 5170040, 5136225, 4814691, 5163993, 5161504, 5143577, 5127052, 4690826, 5039380, 5027078, 4990668, 4976817, 4951108, 4754182, 4743107, 4702828, 4648479 and 4012288 for maintenance of computer software and computer programming services.

See also attached U.S. Registration Nos. 5264575, 5203968, 5247086, 3939178, 3947782, 3871250, 3653538, 3663166, 3959154 and 3507423 for computer virus protection services and computer programming services.

The examining attorney notes that the following registration are duplicated as third-party registrations provided as evidence to support the related nature of applicant’s various services and registrant’s computer programming services, namely, U.S. Registration Nos. 5006702, 5264575, 3947782, 4648479, 4951108, 4976817, 3507423, 3939178 3947782, 5247086 and 5203968.  These duplicate registrations supports the related nature of the services in particular because these registrations demonstrate that both the multiple computer services as provided by the applicant and registrant’s computer programming services emanate from a single source.

Moreover, as additional evidence of the related nature of the services in this case, the examining attorney attaches the following webpages for companies which provide the services at issue, namely:

1.     See attached webpage for http://www.paladn.com/services/it-consulting.html for Paladin Consultants providing IT and Computer consulting including computer programming.

2.     See attached webpages for ASPA providing information technology and support services for business and individuals, namely, Tech support, programming and consulting services. 

3.     See attached webpage http://stjohnbotnf.chambermaster.com/list/member/ascs-it-consulting-management-st-john-s-2176 for ASCS, IT Consulting and Management providing information technology consulting, computer networking, computer programming, computer services, computers systems, information technology services and other services.

4.     See attached webpage http://www.surgeforward.com/computer-programming-for-any-platform/?utm_source=google&utm_medium=cpc&utm_campaign=897291084&gclid=CKz8keLfotYCFdGCswod7jEFxw for SURGE a custom computer programming company providing high-end software programming and consulting services. From database design to web application development, systems integration to cloud consulting (a form of IT consulting), mobile app development to Software-as-a-Service (SaaS), or software product development, SURGE has the experience, expertise, and technology to build your next software application.

Applicant should note that material obtained from the Internet is generally accepted as competent evidence.  See In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-03 (TTAB 2009) (accepting Internet evidence to show relatedness of goods in a likelihood of confusion determination); TBMP §1208.03; TMEP §710.01(b).

While the services are not identical, the nature of the services are sufficiently similar computer and software related sufficient to support the conclusion that the services are indeed considered related for purpose of the likelihood of confusion analysis.  Moreover, applicant should note that where the marks of the respective parties are identical or virtually identical, as in this case with the word elements in the respective marks, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)); TMEP §1207.01(a).

APPLICANT’S ARGUMENTS

Applicant contends that applicant’s amendment of the identification of services on August 31, 2017 obviates the related nature of the services in this case.  However, as noted above, given the identifications of record, although not identical, the services are related software and computer technology services, and the related nature of the services are supported by the evidence of record.  Thus, applicant’s amendment of the identification of services has not obviate the refusal particularly in light of the virtually identical word elements between the marks. 

This is particularly true despite applicant’s arguments that registrant’s services are merely related to Cadence software as supported by the specimen of record in connection with U.S. Registration No. 2039948 which applicant has provided as Exhibit A to applicant’s response.  In the present case, 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.  Although registrant’s specimen indicates otherwise, registrant’s identification of services is not limited to third-party software suppliers that offer solutions that complement those of the registrant as applicant asserts.  Moreover, applicant’s identification is similarly not limited and may include those very same suppliers as those referenced by applicant’s specimen despite applicant’s focus entirely on the logistics, acquisition and management of information technology products and services.  Moreover, applicant’s observation that applicant’s services concern the consumption of IT products and the associated channels of trade while the registrant’s services concern their production and the associated channels of trade does not negate the evidence of record that both the consumption and production of IT products are provided by single source as the evidence of record establishes such that services are indeed related. 

Applicant contends that applicant's mark and registrant's mark are different in particular because applicant's mark contains what applicant identifies as a very distinct graphical element consisting of an arc design over the "ONNEC" portion of the word "CONNECTION" in the mark creating a visual of a bridge.  According to the applicant, the arc design as used in the mark immediately draws in the eye making it attention-grabbing as well as quite distinctive while creating the impression of unity and of bringing elements together.  This is in contrast to the cited registration which is merely just the word.  However, for a composite mark containing both words and a design, the word portion may be more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services.  Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  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 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  Thus, despite what applicant claims is an attention-grabbing and quite distinctive arc, this design element does not obviate the similarity in commercial impression between the marks based on the similar word portions.  Furthermore, as described by applicant as a visual of a bridge which connects, the element reinforces the similar word portion meaning of the marks as bridging, bringing together or connecting.

Applicant notes and provides information of record regarding U.S. Registration No. 4124603 for the standard character mark “QONNECTIONS” and U.S. Registration No. 3722787 for the standard character mark “CONNECTION OPEN” which coexist with registrant’s mark.  The applicant argues that the coexistence of these marks also supports the registrations of applicant’s mark particularly as the design element of applicant’s mark in light of these registrations would be sufficient to distinguish applicant’s mark in the field of such marks. 

Third-party registrations are entitled to little weight on the issue of confusing similarity because the registrations are “not evidence that the registered marks are actually in use or that the public is familiar with them.”  In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1167 n.5 (TTAB 2013) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); see TMEP §1207.01(d)(iii).  Moreover, the existence on the register of other seemingly similar marks does not provide a basis for registrability for the applied-for mark.  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1477 (TTAB 1999). 

Moreover, applicant has submitted printed or electronic copies of third-party registrations for marks containing the wording “CONNECTION” or its phonetic equivalent to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection.  With respect to U.S. Registration No. 4124603, this registrations appear to be for services in different international classes that are predominantly different from or unrelated to those identified in applicant’s application. 

The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services.  See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that industry or field.  Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003).  Thus, applicant’s one registration, namely, U.S. Registration No. 3722787 for the standard charcter mark “CONNECTION OPEN” for similar services to that of the registration is unpersuasive on the issue of relatedness particularly in light of the fact that word portions of the marks in this case are virtually identical.

In general, and in this case, evidence comprising only a small number of third-party registrations for similar marks with similar goods and/or services, as in the present case, is generally entitled to little weight in determining the strength of a mark.  See AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); Richardson-Vicks Inc. v. Franklin Mint Corp., 216 USPQ 989, 992 (TTAB 1982).  These few registrations are “not evidence of what happens in the market place or that customers are familiar with them.”  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; see Richardson-Vicks Inc. v. Franklin Mint Corp., 216 USPQ at 992.  Thus, the few similar third-party registrations submitted by applicant are insufficient to establish that the wording “CONNECTION” is weak or diluted. 

Further, evidence comprising third-party registrations for similar marks with different or unrelated goods and/or services (i.e. U.S. Registration No. 4124603), as in the present case, is of limited probative value in determining the strength of a mark.  See Kay Chems., Inc. v. Kelite Chems. Corp., 464 F.2d 1040, 1042, 175 USPQ 99, 101 (C.C.P.A. 1972); In re Thor Tech, Inc., 90 USPQ2d 1634, 1639 (TTAB 2009).  Thus, these third-party registrations submitted by applicant are insufficient to establish that the wording “CONNECTION” is weak or diluted.  Moreover, the evidence fails to establish that marks containing the term “CONNECTION” or “CONNECTIONS” alone in the single or plural form as are the marks in the present case are weak or diluted.  

Applicant notes that it is well established that the circumstances suggesting care in purchasing minimize the likelihood of confusion which is an important factor in this case which the examining attorney has failed to consider.  This is particularly true applicant contends as it is clear the services do not involve impulse purchases in a check-out line, but by companies seeking infrastructure services related to the acquisition of information technology products and services.  Applicant contends that applicant’s and registrant’s consumers are both discerning with respect to the services offered by both parties.  However, even though the services are not identical, 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).  This is particularly true given the evidence of record which establish that the different services at issue do indeed emanate from a single source.

CONCLUSION

Couple the similarity in commercial impression along with the related nature of the services and a consumer encountering both marks may wrongly assume that the services are derived from a common commercial source.

Particularly in this case, 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).

Thus, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 2039948. 

RESPONSE TO THIS ACTION

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

/Brendan McCauley/

Brendan McCauley

Trademark Examining Attorney

Law Office 114

571-272-9459

Brendan.McCauley@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 9/13/2017 FOR U.S. APPLICATION SERIAL NO. 87242244

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 9/13/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  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 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.