To: | Zoosk, Inc. (trademarks@fenwick.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87743568 - INSIGNIA - 30480-00070 |
Sent: | 4/30/2018 11:46:02 AM |
Sent As: | ECOM122@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87743568
MARK: INSIGNIA
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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: Zoosk, Inc.
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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: 4/30/2018
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF THE ISSUES:
SECTION 2(d) LIKELIHOOD OF CONFUSION – PARTIAL REFUSAL
This refusal is limited to the following goods and services:
“Downloadable computer and mobile application software for use in posting, transmitting, retrieving, accessing, receiving, reviewing, organizing, searching and managing text, audio, video, photographs, data, visual and multimedia data, information and content” and “software” in International Class 009
“Providing temporary use of nondownloadable software for use in posting, transmitting, retrieving, accessing, receiving, reviewing, sharing, organizing, searching and managing text, audio, data, visual and multimedia data, information and content” and “providing temporary use of nondownloadable software that enables users to send status updates and to share content and electronic files with others” in International Class 042
Applicant seeks registration of the mark INSIGNIA. Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 1704661, 3042446, and 3719292. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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 registrants. 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 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.
Applicant seeks registration of the mark INSIGNIA for “Downloadable computer and mobile application software for use in posting, transmitting, retrieving, accessing, receiving, reviewing, organizing, searching and managing text, audio, video, photographs, data, visual and multimedia data, information and content” and “software” in International Class 009, and “Providing temporary use of nondownloadable software for use in posting, transmitting, retrieving, accessing, receiving, reviewing, sharing, organizing, searching and managing text, audio, data, visual and multimedia data, information and content” and “providing temporary use of nondownloadable software that enables users to send status updates and to share content and electronic files with others” in International Class 042, among other goods and services that are irrelevant to this discussion.
The registered mark in U.S. Registration No. 1704661 is INSIGNIA for “computer utilities programs and user manuals for use therewith, supplied as a unit” in International Class 009.
The registered mark in U.S. Registration No. 3042446 is INSIGNIA for “Computer software, hardware and firmware used to scan and capture an image of a body extremity or extremity remnant or other body part, then convert the scan or image into a three dimensional digital image, which three dimensional image is further converted into a dimensioned virtual object which is scaled exactly to the scanned body part measurements for the exact shaping and manufacturing of a prosthesis or orthoses or other orthopedic appliance” in International Class 009.
The registered mark in U.S. Registration No. 3719292 is INSIGNIA HEALTH for “Providing online nondownloadable software for use in assessment, modification, and management of patient and consumer behavior and measuring patient and consumer knowledge, skill, and confidence of self-management of health-related behavior; providing online nondownloadable software for use in receiving, collecting, storing, organizing, analyzing, evaluating, reporting, and displaying patient and consumer behavior data; providing online nondownloadable software for use in conducting patient and consumer surveys and assessments” in International Class 042.
Similarity of the Marks
Similarity with U.S. Registration Nos. 1704661 and 3042446
In the present case, Applicant’s mark is INSIGNIA and Registrants’ marks are INSIGNIA. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with Applicant’s and Registrants’ respective goods and services. Id.
Therefore, the marks are confusingly similar.
Similarity with U.S. Registration No. 3719292
Applicant’s INSIGNIA mark is confusingly similar to Registrant’s INSIGNIA HEALTH mark in terms of appearance, sound, and commercial impression. 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). Here, Applicant’s and Registrant’s marks share the identical term INSIGNIA; thus, they appear and sound identical in part.
Further, INSIGNIA mark is confusingly similar to Registrant’s INSIGNIA HEALTH mark despite the presence of the term HEALTH in the registered mark. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and services 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 at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii). Here, Registrant has disclaimed the term HEALTH from the mark, as it is merely descriptive of its goods and services. Accordingly, the dominant portion of Registrant’s mark that must be given greater weight in this analysis is the INSIGNIA portion – which is identical to Applicant’s mark.
Therefore, the marks are confusingly similar.
Relatedness of the Goods and Services
The compared goods and 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 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).
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)).
As stated above, Applicant seeks registration of the mark INSIGNIA for “Downloadable computer and mobile application software for use in posting, transmitting, retrieving, accessing, receiving, reviewing, organizing, searching and managing text, audio, video, photographs, data, visual and multimedia data, information and content…software” in International Class 009 and “Providing temporary use of nondownloadable software for use in posting, transmitting, retrieving, accessing, receiving, reviewing, sharing, organizing, searching and managing text, audio, data, visual and multimedia data, information and content” and “providing temporary use of nondownloadable software that enables users to send status updates and to share content and electronic files with others” in International Class 042.
The registered mark in U.S. Registration No. 1704661 is INSIGNIA for “computer utilities programs and user manuals for use therewith, supplied as a unit” in International Class 009. The registered mark in U.S. Registration No. 3042446 is INSIGNIA for “Computer software, hardware and firmware used to scan and capture an image of a body extremity or extremity remnant or other body part, then convert the scan or image into a three dimensional digital image, which three dimensional image is further converted into a dimensioned virtual object which is scaled exactly to the scanned body part measurements for the exact shaping and manufacturing of a prosthesis or orthoses or other orthopedic appliance” in International Class 009. The registered mark in U.S. Registration No. 3719292 is INSIGNIA HEALTH for “Providing online nondownloadable software for use in assessment, modification, and management of patient and consumer behavior and measuring patient and consumer knowledge, skill, and confidence of self-management of health-related behavior; providing online nondownloadable software for use in receiving, collecting, storing, organizing, analyzing, evaluating, reporting, and displaying patient and consumer behavior data; providing online nondownloadable software for use in conducting patient and consumer surveys and assessments” in International Class 042.
In the present case, the goods and 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)). Further, the application uses broad wording to describe “software,” “software for use in posting, transmitting, retrieving, accessing, receiving, reviewing, organizing, searching and managing text, audio, video, photographs, data, visual and multimedia data, information and content,” and “providing temporary use of nondownloadable software that enables users to send status updates and to share content and electronic files with others,” which presumably encompasses all goods and services of the type described, including Registrants’ more narrowly defined software and programs. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).
Thus, Applicant’s and Registrants’ goods and services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Conclusion
Because Applicant's and Registrants’ marks are similar and because the goods and services are related, Applicant's mark must be refused registration pursuant to Section 2(d) of the Lanham Act, as to the goods and services listed in the limitation set out at the beginning of this refusal.
Although Applicant's mark has been refused registration, Applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if Applicant responds to the refusal, Applicant must also respond to the requirement set forth below.
IDENTIFICATION OF THE GOODS AND SERVICES – CLARIFICATION REQUIRED
Applicant’s current identification of the goods and services is not acceptable and requires clarification.
International Class 009
The identification for “software” in International Class 009 is indefinite and must be clarified by amending to specify the purpose or function of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d). If the software is content- or field-specific, Applicant must also specify its content or field of use. See TMEP §1402.03(d). The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d). The following are examples of acceptable identifications for software in International Class 009: “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.”
International Class 042
International Class 045
Suggested Identification
Applicant may substitute the following wording, if accurate:
“Downloadable computer and mobile application software for use in posting, transmitting, retrieving, accessing, receiving, reviewing, organizing, searching and managing text, audio, video, photographs, data, visual and multimedia data, information and content; downloadable computer and mobile application software for online introduction, matchmaking, dating and social networking services; software for use in soliciting feedback; downloadable computer and mobile application software that enables users to send status updates and to share content and electronic files with others; computer software for calculating, mapping, transmitting and reporting information relating to the location, movement, proximity, departure and arrival of individuals and objects; downloadable computer software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; downloadable computer and mobile application software for use by members and veterans of the United States Military and other members of the armed forces to verify their military status and receive a digital badge certifying such status, and to enable others to conduct electronic searches of such badges and military status” in International Class 009
“Providing temporary use of non-downloadable software for use in posting, transmitting, retrieving, accessing, receiving, reviewing, sharing, organizing, searching and managing text, audio, data, visual and multimedia data, information and content; providing temporary use of non-downloadable software for online introduction, dating and social networking services; providing temporary use of non-downloadable software for use in soliciting feedback; providing temporary use of non-downloadable software that enables users to send status updates and to share content and electronic files with others; computer services, namely, providing an interactive website featuring technology for use by members and veterans of the United States Military and other members of the armed forces to verify their military status and receive a digital badge certifying such status, and to enable others to conduct electronic searches of such badges and military status; verification services, namely, providing user identity services in the nature of {indicate the nature of the services technology, e.g., electronic signature verification services using technology to authenticate user identity}” in International Class 042
“Online social networking services; online social introduction services; online dating services; online matchmaking services; providing an online searchable database featuring information in the area of dating, personal relationships and social introduction” in International Class 045
Amendment Guidelines
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. See TMEP §1402.04.
ASSISTANCE
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.
/Xheneta Ademi/
Examining Attorney
Law Office 122
(571) 272-7151
xheneta.ademi@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.