To: | OPEX Corporation (bdinicola@opex.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87304192 - CORTEX - N/A |
Sent: | 2/26/2018 5:06:40 PM |
Sent As: | ECOM125@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87304192
MARK: CORTEX
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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: OPEX Corporation
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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. 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: 2/26/2018
On July 20, 2017, action on this application was suspended pending the disposition of U.S. Application Serial No. 79194853. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s applied-for mark is CORTEX in standard characters for “computer programs and computer software for an automated warehouse system, namely, software for managing, monitoring, controlling and directing of warehouse equipment” in Class 9 (as amended).
Registrant’s mark is CORETEX in standard characters for the following goods and services:
“Computer software, hardware and communications devices for planning, scheduling, controlling, monitoring and providing information on freight logistics, transportation vehicles, industrial automation machinery and equipment; computer software and hardware for telematics; computer software and hardware for telematics using global positioning systems (GPS) and cellular telecommunications; computer software for use in operating telecommunications systems; computer software and hardware for vehicle and mobile asset telematics including vehicle tracking, trailer tracking, cold store freight tracking and monitoring, fleet management, satellite navigation, mobile data, wireless vehicle safety communications, emergency warning system for vehicles, intelligent vehicle technologies and auto insurance applications, business intelligence, business activity monitoring and dispatch systems; computer software and hardware for use in planning, scheduling, controlling, tracking, monitoring and providing information on transportation assets and parts thereof, including vehicles, trailers, drivers, cargo and delivery containers; vehicle tracking devices comprised of cellular radio modules, computer software and computer hardware, sensors, transmitters, receivers and global positioning satellite receivers, all for use in connection with vehicle tracking, vehicle monitoring and anti-theft vehicle alarms” in Class 9;
“Provision of business management information, data, advice and consultancy services, including the provision of such services in respect of business efficiency, in respect of machinery and environmental performance assessment and diagnostic services used for freight logistics and transportation vehicles, provided via computer, and other electronic means; information, advisory and consultancy services in respect of the aforesaid” in Class 35;
“Installation, maintenance and repair of computer hardware; information, advisory and consultancy services in respect of the aforesaid” in Class 37;
“Telecommunication and telemetry services being electronic transmission of information via telecommunications networks including local and long distance transmission of voice, data, graphics by means of telephone, telegraphic, wireless, cable and satellite transmissions; electronic transmission of information via computers connected to the same telematic network; telematic services being automatic electronic transmission of information via telecommunications networks; telematic communication services being automatic electronic transmission of information via telecommunications networks; information, advisory and consultancy services in respect to all of the aforesaid” in Class 38;
“Supply chain logistics and reverse logistics services providing tracking services and information concerning tracking of assets in transit, including vehicles, trailers, drivers, cargo and delivery containers; information, advisory and consultancy services in respect of all the aforesaid excluding business management services” in Class 39; and
“Computer hardware and software consulting services related to design thereto; design and development of computer hardware and software; installation, diagnostic services, maintenance and repair of computer software and hardware; providing on-line non-downloadable software for use in telematics, vehicle and mobile asset telematics, business intelligence, business activity monitoring and dispatch systems and for use in planning, scheduling, controlling, tracking, monitoring and providing information on transportation assets and parts thereof, including vehicles, trailers, drivers, cargo and delivery containers; software as a service (SAAS) services, namely, hosting software for use by others for use in telematics, vehicle and mobile asset telematics, business intelligence, business activity monitoring and dispatch systems and in planning, scheduling, controlling, tracking, monitoring and providing information on transportation assets and parts thereof, including vehicles, trailers, drivers, cargo and delivery containers; research, development, design and upgrading of computer software; information, advisory and consultancy services in respect to all of the aforesaid” in Class 42.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and services of the applicant and registrant. See 15 U.S.C. §1052(d). Determining likelihood of confusion is made on a case-by-case basis by applying 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). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].” In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see TMEP §1207.01.
Comparison of the Marks
Applicant’s applied-for mark is nearly identical in appearance, sound and overall commercial impression to registrant’s mark.
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).
In this case, the only difference between the marks is that applicant removes the silent letter “E” in the middle of registrant’s mark. Otherwise, the marks are identical. They also sound identical. Further, the marks convey a similar commercial impression. Thus, the minor difference between the marks does not obviate a likelihood of confusion.
Comparison of the Goods
Applicant’s goods are related to registrant’s goods because they are commonly provided by the same entity under the same mark and travel in the same channels of trade.
In its Response to Office Action dated July 12, 2017, applicant contends that registrant uses its mark in connection with goods and services distinct from those of applicant. However, determining likelihood of confusion is based on the description of the goods and services stated in the application and registration at issue, not on evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). In this case, applicant’s goods and registrant’s goods, as set forth in the application and registration, are related for the reasons discussed above.
Applicant also contends that the relevant consumers are sophisticated and exercise care in their purchasing decision. However, 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). In this case, the applied-for mark is nearly practically identical to registrant’s mark. Thus, that the relevant consumers are sophisticated does not alter the conclusion that the marks are confusingly similar.
Because applicant’s applied-for mark is similar to registrant’s mark and applicant’s goods are related to registrant’s goods, there is a likelihood of confusion as to the source of applicant’s goods. Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.
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.
/Nicole Passman/
Nicole Passman
Examining Attorney
Law Office 125
(571) 272-3244
nicole.passman@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.