To: | Multiview Inc. (tmcentral@pirkeybarber.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87792305 - MULTIVIEW - GOWL006US1 |
Sent: | 5/31/2018 11:34:25 AM |
Sent As: | ECOM108@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. 87792305
MARK: MULTIVIEW
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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: Multiview 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: 5/31/2018
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Standard of Analysis for Section 2(d) Refusal
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(s). 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.
Facts
Applicant has applied to register the mark MULTIVIEW (standard characters) for use on “Computer software used in the fields of accounting and finance for reviewing and analyzing data, and designing and preparing reports therefor; computer software in the field of enterprise resource planning” in International Class 09 and “Software as a service (SAAS) provider in the fields of accounting and finance for reviewing and analyzing data, and designing and preparing reports therefor; software as a service (SAAS) provider in the field of enterprise resource planning” in International Class 42.
The cited registrations, which are owned by the same entity, are:
(1) MULTIVIEW (standard characters) for “Providing information from searchable indexes and databases of information, namely, providing on-line directory information featuring hyperlinks to other websites and text, electronic documents, databases, and graphic and audio visual information” in International Class 09 and “Computer services, namely, providing non-downloadable computer software that allows users to interface over a network in order to create personalized on-line information services, to extract and retrieve information and data mining by means of global computer networks, and create indexes of information, indexes of web sites and indexes of other information sources in connection with the global computer network” in International Class 42
(2) MULTIVIEW (with design) for “Providing information from searchable indexes and databases of information, namely, providing on-line directory information featuring hyperlinks to other websites and text, electronic documents, databases, and graphic and audio visual information” in International Class 09 and “Computer services, namely, providing non-downloadable computer software that allows users to interface over a network in order to create personalized on-line information services, to extract and retrieve information and data mining by means of global computer networks, and create indexes of information, indexes of web sites and indexes of other information sources in connection with the global computer network” in International Class 42
Similarity of 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).
While, registrant’s mark in No. 4555356 also contains a design element, when evaluating a composite mark containing both words and designs, the word portion is more likely to indicate the origin of the goods and services because it is that portion of the mark that consumers use when referring to or requesting the goods and 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 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)).
Therefore, the marks are confusingly similar.
Relatedness of Goods and Services
Absent restrictions in an application and/or registration, the identified goods and 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, 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).
In this case, the identification set forth in the application uses broad wording to describe “computer software in the field of enterprise resource planning” and “software as a service (SAAS) provider in the field of enterprise resource planning”, which presumably encompasses all goods and services of the type described, including registrant’s narrower “Providing information from searchable indexes and databases of information, namely, providing on-line directory information featuring hyperlinks to other websites and text, electronic documents, databases, and graphic and audio visual information” and “Computer services, namely, providing non-downloadable computer software that allows users to interface over a network in order to create personalized on-line information services, to extract and retrieve information and data mining by means of global computer networks, and create indexes of information, indexes of web sites and indexes of other information sources in connection with the global computer network.” 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).
Indeed, without any identifiable function, applicant’s computer software is the same in form and function as the registrant’s computer software. Accordingly, the goods and services of applicant and the registrant(s) are considered related for purposes of the likelihood of confusion analysis.
In conclusion, 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, registration is refused pursuant to Section 2(d) of the Trademark Act.
UNSIGNED APPLICATION
The application was unsigned, resulting in the application not being properly verified. See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii), 2.193(e)(1). Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii), 2.193(e)(1); TMEP §804.02.
To respond to this requirement online using the Trademark Electronic Application System (TEAS) response Office action form, answer “yes” to the TEAS response form wizard question #10, and follow the instructions within the form for signing. The TEAS online form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section. For more information about a signed declaration and required verified statement and how to provide them using TEAS, please go to http://www.gov.uspto.report/trademark/laws-regulations/verified-statement.
IDENTIFICATION OF GOODS AND SERVICES
Applicant may adopt the following wording, if accurate:
International Class 09: Computer software used in the fields of accounting and finance for reviewing and analyzing data, and designing and preparing reports therefor; computer software in the field of enterprise resource planning for {specify function}
International Class 42: Software as a service (SAAS) provider in the fields of accounting and finance for reviewing and analyzing data, and designing and preparing reports therefor; software as a service (SAAS) provider in the field of enterprise resource planning for {specify function}
Applicant should note that the above bolded language indicate the examining attorney’s suggestions, and the braces indicate where applicant must insert specific types of goods and services. The braces should not appear in the amended identification; only the specific goods and services indicated, as inserted by applicant. Applicant need not amend its identification other than where specified by bold font.
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
MANDATORY ELECTRONIC FILING RULES ADVISORY
The USPTO proposes to change federal trademark rules to require applicants and registrants to (1) file submissions concerning applications and registrations online using the USPTO’s Trademark Electronic Application System (TEAS) and (2) provide and maintain an accurate email address for receiving correspondence from the USPTO. See the Mandatory Electronic Filing Rules webpage for more information.
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.
/Salima Parmar Oestreicher/
Examining Attorney
Law Office 108
(571) 272-6786
salima.oestreicher@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.