Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  November 27, 2019

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

On 5/17/18, action on this application was suspended pending the disposition of U.S. Application Serial Nos. 86412735, 87317749, 87317913, and 87385139.  The following prior-pending applications have abandoned and are no longer a potential bar to the registration of applicant’s mark:  Application Serial Nos. 87317749 and 87385139.  However, the following prior-pending applications have since registered:  Application Serial Nos. 87317913 and 86412735.  Therefore, registration is refused as follows.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5903613, 5435775, 2722637, 3237210, 4611549, 4960656, and 5070831.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations and the registrations attached to the 11/21/17 Office Action.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined 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) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See 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)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

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.

 

The applied for mark is BRIDGE in standard characters for use in connection with “cloud-based software service that enables users of different cloud storage providers to collaborate.”

 

Reg. Nos. 2722637 and 3237210 are owned by a common registration and are both for the mark HOSTBRIDGE for use in connection with “computer software programs, namely, programs that allow programs operating on different and distinct computer operating system platforms to interact with one another.”  The former is for a mark in stylized typeface beneath a design element, and the latter is for the wording in standard characters.

 

Reg. No. 4611549 is for the mark CLOUDBRIDGE in standard characters for use, in most relevant part, in connection with “computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information.”

 

Reg. No. 4960656 is for the mark SEVEN BRIDGES in standard characters for use, in most relevant part, in connection with “providing temporary use of non-downloadable computer programs for use in connecting and collaborating with other users.”

 

Reg. No. 5070831 is for the mark BLACKBERRY BRIDGE in standard characters for use, in most relevant part, in connection with “computer communication software for the synchronization, transmission and sharing of voice, images, data, calendar and content between one or more electronic handheld units and data stored on or associated with a computer.”

 

U.S. Reg. No. 5903613 mark is FARBRIDGE in standard characters for “Downloadable computer programs for enabling users of desktop and laptop computers, video game consoles, mobile phones, tablet computers, wearable computers, virtual reality devices, augmented reality devices, mixed reality devices and other computing devices to communicate with other users of such devices”

 

U.S. Reg. No. 5435775 mark is NEWBRIDGE in standard characters for, in relevant part to this refusal, “Computer software for the collection, comparison, integration, synchronization, verification, and validation of open data sets; Computer software for connecting open data sets to applications and networks; Business transaction software for order management, service provisioning, billings, collection and processing of event records; Computer software for the collection, comparison, integration, synchronization, verification, and validation of open data sets; Computer software for connecting open data sets to applications and networks; Business transaction software for order management, service provisioning, billings, collection and processing of event records”

 

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).

 

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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

Applicant’s entire mark is the wording BRIDGE in standard characters. Each of the registered marks contains the entire applied for mark with additional matter. Applicant has merely removed the additional matter from the registered marks. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

According to the Computer, Telephony & Electronics Industry Glossary (available at http://csgnetwork.com/glossaryb.html), in the context of computer software, a “bridge” is “software that translates files from one computer platform to another . . .” or otherwise “allows data to be accessed by a program that cannot read the native files.”  See evidence attached to 11/21/17 Office Action; accord Dictionary of Computing (6th Ed.) (used a verb meaning “to help transfer programs and data files to another system) and Webster’s New World College Dictionary (5th Ed.) (“a thing that provides connection, contact, or transition” or “to provide . . . connection [or] transition”).

 

 In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from those marks. 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).

 

The applied-for mark is the common term and each of the cited marks contains additional matter to help consumers differentiate the marks from one another. The applied-for mark is identical, in part, to each of the marks and contains no additional designs for consumers to recognize and help differentiate the marks.  The overall meanings of the marks being very similar, the examining attorney finds the applied-for mark confusingly similar to each of the cited marks.

 

Because the marks look and sound similar and create the same commercial impression, the marks are considered similar for likelihood of confusion purposes.

 

Comparison of the Goods and Services

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and/or services 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); TMEP §1207.01(a)(i).  They 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).

 

When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is 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.  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)). 

 

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 describes a software service, namely, “cloud-based software service that enables users of different cloud storage providers to collaborate.”  The wording must be presumed to encompass all software capable of allowing users on different online data storage platforms to collaborate.  The applicant’s software appears to encompass (or be encompassed by) the software of each of the registrants.  The wording “computer software programs, namely, programs that allow programs operating on different and distinct computer operating system platforms to interact with one another” (Reg. Nos. 2722637 and 3237210) describes software that enables users of different platforms to interact, which may include collaboration between different cloud storage platforms.  “Computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information” (Reg. No. 4611549) clearly encompasses the applicant’s software, which would necessarily involve transmission, storage, and sharing of data.  The applicant’s software is presumed to allow for all types of data collaboration, including software for “synchronization, transmission and sharing of voice, images, data, calendar and content between one or more electronic handheld units and data stored on or associated with a computer” identified in Reg. No. 5070831.

 

The features and functions of the software identified by each of the aforementioned registrants appear legally identical to the features and functions of the software identified by the applicant’s software.  The only differentiating factor here is that the registrants appear to offer the software recorded or physical media or available for download, which the applicant’s software is provided as a service.  The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a small representative sample of the many third-party marks registered for use in connection with the same or similar goods and services as those of both applicant and registrants in this case.  This evidence shows that software for performing particular functions, whether downloaded, recorded, or offered as a service, 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).

 

Further, “providing temporary use of non-downloadable computer programs for use in connecting and collaborating with other users” (Reg. No. 4960656) encompasses the provision of software as a service for collaboration among different cloud storage platforms.  As as the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)).  Thus, these services are legally identical.

 

The software of the applicant is functionally identical to the software of each of the registrants are is therefore similar for purposes of the likelihood of confusion analysis.

Accordingly, the goods and services are considered related for purposes of the likelihood of confusion analysis.  

 

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

 

Applicant should note the following additional ground for refusal.

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a feature, function, purpose or use of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

Applicant has applied for the mark BRIDGE in standard characters for “cloud-based software service that enables users of different cloud storage providers to collaborate.” 

 

As noted in the previously Office action, the definition of a software “bridge” includes software that “allows data to be accessed by a program that cannot read the native files.”  See the previously attached definition from the Computer, Telephony & Electronics Industry Glossary.  It is software which will “help transfer programs and data files to another system.”  See the Dictionary of Computer (6th ed.).  The applicant’s own explanation of its own software service demonstrates that it allows users of one software platform to make changes which will be reflected on versions of documents being used by users of another platform.  The applicant’s software clearly allows data to be accessed by programs that otherwise would be able to read or edit files native to the platform.

 

Insofar as the applicant’s software translates or transfers data between platforms, the term “bridge” directly describes a feature and function of the software, and likely identifies the primary characteristic of the software; the applicant’s BRIDGE software service is a “bridge” software.

Therefore, the mark is refused for being merely descriptive.

 

In this case, the term “bridge” immediately describes a kind of software for achieving a core function of the applicant’s software.  Therefore, the applied-for mark remains descriptive of the applicant’s services and the refusal to register under Trademark Act Section 2(e)(1) is continued and maintained.

 

ATTORNEY INFORMATION REQUIRED

 

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

To provide bar information.  Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section.  See 37 C.F.R. §2.17(b)(1)(ii).  Bar information provided in any other area of the form will be viewable by the public in USPTO records.

 

Attorney statement required.  Applicant’s attorney must provide the following statement:  “I am an attorney who is an active member in good standing of the bar of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  

 

RESPONSE

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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.  

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

Murray Jr., George

/George Murray/

Trademark Examining Attorney

Law Office 121

(571) 270-5101

George.Murray@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 27, 2019 for

U.S. Trademark Application Serial No. 87563787

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Murray Jr., George

/George Murray/

Trademark Examining Attorney

Law Office 121

(571) 270-5101

George.Murray@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 27, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”