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: 9/19/2018

 

 

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 ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion
• Prior Pending Advisory

 

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. 4613381 (ACEGUARDER), 5083038 (PRIVACY ACE), 5035222 (ACEELITE), 5033068 (ACE TEAH), 4925288 (OUTACE), 4849355 (ACE DOCS), 4198282 (ORDERACE), 4531632 (ACE METRIX LIVE), 4327692 (ACE METRIX), 4433375 (ACE FACTORY), 4677245 (ACE DATA RECOVERY), 4348491 (ACE), 4206296 (ACE MOBILE), 2006801 (ACE*COMM), and 1459047 (SPELLING ACE).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant seeks to register the mark “ACE” for the following:

 

Class 9: Computer software for use in the capture, organization, analysis, and management of vehicle information to support automobile dealership services; Downloadable software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track advertising and marketing campaigns; Downloadable software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track sales, financing, trade-in vehicles, inventory, insurance, warranties, storage, parts supply, repair, and maintenance information; Downloadable software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to create and manage service sales leads and communicate with customers through multiple channels; Downloadable software for use in customer relationship management (CRM); Downloadable software for managing documents and forms in the automotive retail sales process including contract creation and management, namely, software for creating, archiving, and organizing documents and forms; Downloadable software for use in network management; Downloadable software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Computer hardware, namely, computers, personal computers, computer terminals, computers for network management, networking equipment, servers, computer peripherals, and printers; telephones; bar code scanners

 

Class 42: Providing temporary use of online non-downloadable software for organizing, managing, storing, tracking, analyzing and creating reports on information related to relationship management, sales, promotion and marketing; computer services, namely, design, development, implementation, installation, maintenance, and updating of computer software, providing technical support, namely, troubleshooting of computer hardware and software problems, and providing consultation for the aforesaid; providing online information regarding computer software and services; Providing online, non-downloadable software for use by automotive dealerships that allows users to perform internet lead management, customer relationship management, contract management, inventory management, and trade-in management; Software as a service (SAAS) services, namely, software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track advertising and marketing campaigns; Software as a service (SAAS) services, namely, software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track sales, financing, inventory, insurance, warranties, storage, parts supply, repair, and maintenance information; Software as a service (SAAS) services, namely, software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to create and manage service and sales leads and communicate with customers through multiple channels; Software as a service (SAAS) services, namely, software for use in customer relationship management (CRM); Software as a service (SAAS) services, namely, software for managing documents, forms and contracts in the automotive retail sales and financing process, namely, software for creating, archiving, and organizing documents and forms; Software as a service (SAAS) services, namely, software for use in network management; Software as a service (SAAS) services, namely, software that provide real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software; Computer software design, development, and programming services for others; Computer services, namely, designing, implementing, and maintaining web site for others; Hosting the web sites of others on computer servers for a global computer network; Installation of computer software

 

The registered marks are outlined below:

 

ACEGUARDER (4613381)	Feng Jianling	Class 9: Computer keyboards; Computer peripheral devices; Computers; Laptop computers; Mouse pads; Notebook computers; Wrist rests for use with computers.
PRIVACY ACE (5083038)	Qiigame (shanghai) Network Technology Development Co.,Ltd.	Class 9: Blank USB flash drives; Computer game programs; Computer memories; Computer operating programs; Computer operating software; Computer peripheral devices; Computer software for application and database integration; Laptop computers; Portable media players; Smartphones
ACEELITE (5035222)	Shenzhen Gelanhui Trading Co.,Ltd. limited company (ltd.)	Class 9: Blank USB flash drives; Computer disc drives; Computer keyboards; Computer mouse; Computer peripheral devices; Earphones; Headphones; Pedometers; Portable media players; Punched card office machines; Satellite navigational system, namely, a global positioning system (GPS); Smartphones; Tablet computer; Telescopes; Video baby monitors; Acoustic couplers; Navigation apparatus for vehicles in the nature of on-board computers
ACE TEAH (5033068)	Ace Teah, Inc.	Class 9: Anode batteries; Batteries; Batteries and battery chargers; Batteries for lighting; Battery chargers; Battery chargers for use with telephones; Battery jump starters; Battery packs; Cell phone cases; Cell phone covers; Cell phone straps; Cell phones; Cellular phone accessory charms; Cellular phones; Chargers for batteries; Chargers for electric batteries; Devices for hands-free use of mobile phones; Electric shaver chargers; Flip covers for smart phones; Fuel cells; Galvanic cells; Head-clip cell phone holders; Internet phones; Keyboards for mobile phones; Micro USB ports; Mobile phone straps; Mobile phones; Photoelectric cells; Photovoltaic cells; Protective covers and cases for cell phones, laptops and portable media players; Silicon solar cell material for electricity generation incorporated into pavement materials; Straps for mobile phones; Telephone call router, for home and office touchtone phones, for international and long distance calls made from various telephony platforms including VoIP platform without the requirement for internet; USB cables; USB card readers; USB hubs; Video phones; Vinyl covers specially adapted for cell phones, MP3 players, laptops, computers, portable satellite radios, personal digital assistants, remote controls, and television satellite recorders.
OUTACE (4925288)	Shenzhen Shangyang Technologies Co., Ltd.	Class 9: Computer peripheral devices; Signals, luminous or mechanical; Radios; Navigational instruments; Cell phone straps; Loudspeakers; Stands for photographic apparatus; Time recording apparatus, namely, counters for cameras; Optical goods, namely, optical lenses; Light-emitting diodes; Electrical sockets, plugs and contacts; Cables, electric; Couplings, electric; Connections, electric; Cases for telephone; Battery chargers; Batteries, electric.
ACE DOCS (4849355)	PSC Software	Class 42: Cloud computing featuring enterprise-scale computer software for managing, tracking, and sharing documents and files as part of a quality management system.
ACE DATA GROUP (4673789)	ACE Data Group, LLC DBA Data Recovery Services	Class 42: Computer forensic services; Computer services, namely, data recovery services.
ACE DATA RECOVERY (4677245)	ACE Data Group, LLC DBA Data Recovery Services	Class 42: Computer services, namely, data recovery services
ORDERACE (4198282)	Keidel Jr., John F.	Class 9: Computer software for use in database management and order processing
ACE METRIX LIVE (4531632)	Ace Metrix, Inc.	Class 35: Advertising and marketing services, namely, standardized testing in the field of advertising effectiveness; marketing research services   Class 42: Software as a service (SAAS) services featuring software for the conducting and monitoring of standardized testing of advertisements and marketing campaigns in the field of advertising effectiveness; survey design and research.
ACE METRIX (4327692)	Ace Metrix, Inc.	Class 9: Downloadable software in the nature of a mobile application to allow the conducting and monitoring of standardized testing of advertisements and marketing campaigns in the field of advertising effectiveness   Class 42: Software as a service (SAAS) services featuring software for the conducting and monitoring of standardized testing of advertisements and marketing campaigns in the field of advertising effectiveness; survey design and research.
ACE FACTORY (4433375)	Computer Sciences Corporation	Class 42: Computer software code refactoring services, namely, modifying computer code for others; computer software code conversion and programming services for others; computer software development and updating services; computer software application rehosting services, namely, migration of software applications to different operating system platforms; data migration services; computer software consulting services; all of the foregoing services in the field of cloud software migration and cloud software development.
ACE (4348491)	Pilatus Flugzeugwerke AG Aktiengesellschaft	Class 9: Instruments for aircraft, namely, electronic avionic instruments in the nature of electronic navigational, tracking and positioning, control, monitoring, communication and anti-collision apparatus and instruments, namely, altimeters, attitude indicators, aircraft airspeed indicators, directional and magnetic compasses, directional gyros, speed indicators, course deviation indicators, radio magnetic indicators, automatic direction finders; Instruments for aircraft, namely, instruments built in to aircraft in the nature of electronic navigational, tracking and positioning, control, monitoring, communication and anti-collision apparatus and instruments, namely, altimeters, attitude indicators, airspeed indicators, directional and magnetic compasses, directional gyros, speed indicators, course deviation indicators, radio magnetic indicators, automatic direction finders; Computer systems for aircraft comprising computer hardware, peripherals and software for navigation, tracking and positioning, control, monitoring, communication and collision-avoidance in the cockpit; Computer systems for aircraft comprising computer hardware, peripherals and software for navigational, tracking and positioning, control, monitoring, communication and anti-collision computer systems, built in to aircraft; Computer software for aircraft, namely, aircraft avionics software for use in navigating, tracking and positioning, controlling and monitoring, collision-avoidance avionic instruments, as well as for communication purposes; Computer hardware for use in aircraft
ACE MOBILE (4206296)	CT Miami LLC	Class 9: cellular phones
ACE*COMM (2006801)	American Computer and Electronics Corporation	Class 9: computer hardware and software for the operation and management of complex telecommunications networks
SPELLING ACE (1459047)	FEP Holding Company Limited LLC	Class 9: dedicated personal computer

 

 

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/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. 

 

In this case, the following du Pont factors are the most relevant:  similarity of the marks, similarity and nature of the goods and services, and similarity of the trade channels of the goods and 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.

 

Similarity 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).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  In re U.S. Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1795 (TTAB 2017) (citing Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)); TMEP §1207.01(b).

 

Although some of the registered marks appear in stylized form and/or with a design element, applicant’s mark appears in standard characters and therefore could appear in a similar manner. 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 this case, the applicant’s mark, ACE, creates a similar overall commercial impression to the cited registered marks because the applicant’s mark appears fully encompassed within each of the registered marks. Although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrants’ marks.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ707, 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 marks and does not add any wording that would distinguish it from those marks.

 

As such, the marks are highly similar and likely to cause confusion.

 

Relatedness of the Goods and Services

 

The goods and 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).

 

Determining likelihood of confusion is based on the description of the goods and/or 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)). 

 

ACE METRIX LIVE and ACE METRIX

 

The registrations use broad wording to describe “Downloadable software in the nature of a mobile application to allow the conducting and monitoring of standardized testing of advertisements and marketing campaigns in the field of advertising effectiveness” and “Software as a service (SAAS) services featuring software for the conducting and monitoring of standardized testing of advertisements and marketing campaigns in the field of advertising effectiveness; survey design and research”, which presumably encompasses all services of the type described, including applicant’s more narrow “Downloadable software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track advertising and marketing campaigns” and “Software as a service (SAAS) services, namely, software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track advertising and marketing campaigns”.  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).  Additionally, 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)). 

 

Further, 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/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 attached Internet evidence, consisting of third party sites—Dealer Center, Cars for Sale, and Vin Solutions, and Auto Manager—establishes that the same entities commonly provides software and software as a service that track marketing and advertisements and provide consumer relationship management, and markets the goods and services under the same mark. Thus, applicant’s and registrant’s 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).

 

ACE DOCS

 

The registrations use broad wording to describe “Cloud computing featuring enterprise-scale computer software for managing, tracking, and sharing documents and files as part of a quality management system”, which presumably encompasses all services of the type described, including applicant’s more narrow “Software as a service (SAAS) services, namely, software for managing documents, forms and contracts in the automotive retail sales and financing process, namely, software for creating, archiving, and organizing documents and forms”.  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).  Additionally, 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)). 

 

ACE*COMM

 

The application use broad wording to describe “Downloadable software for use in network management”, which presumably encompasses all services of the type described, including registrant’s more narrow “computer hardware and software for the operation and management of complex telecommunications networks”.  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).  Additionally, 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)). 

 

ORDERACE

 

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/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 attached Internet evidence, consisting of third party sites—Dealer Center, Cars for Sale, and Vin Solutions, and Auto Manager—establishes that the same entities commonly provides software and software as a service that provide database management, order processing, and consumer relationship management, and markets the goods and services under the same mark. Thus, applicant’s and registrant’s 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).

 

ACE DATA GROUP and ACE DATA RECOVERY

 

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/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 attached Internet evidence, consisting of third party sites—Envescent and Best Buy—establishes that the same entities commonly provides data recovery and troubleshooting computer diagnostic services and market the services under the same mark. Thus, applicant’s and registrant’s 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).

 

ACE FACTORY

 

The application use broad wording to describe “Computer software design, development, and programming services for others”, which presumably encompasses all services of the type described, including registrant’s more narrow “Computer software code refactoring services, namely, modifying computer code for others; computer software code conversion and programming services for others; computer software development and updating services; all of the foregoing services in the field of cloud software migration and cloud software development.”.  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).  Additionally, 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)). 

 

ACE

 

The registration use broad wording to describe “Computer hardware for use in aircraft”, which presumably encompasses all goods of the type described, including registrant’s more narrow “Computer hardware, namely, computers, personal computers, computer terminals, computers for network management, networking equipment, servers, computer peripherals”.  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).  Additionally, the goods 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)). 

 

ACEGUARDER

 

The registration use broad wording to describe “computers” and “computer peripheral devices”, which presumably encompasses all goods of the type described, including registrant’s more narrow “Computer hardware, namely, computers, personal computers, computer terminals, computers for network management, networking equipment, servers, computer peripherals, and printers”.  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).  Additionally, the goods 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)). 

 

OUTACE

 

The registration use broad wording to describe “computer peripheral devices”, which presumably encompasses all goods of the type described, including registrant’s more narrow “Computer hardware, namely, computer terminals, networking equipment, servers, computer peripherals, and printers”.  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).  Additionally, the goods 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)). 

 

PRIVACY ACE

 

The registration use broad wording to describe “computer peripheral devices” and “Laptop computers”, which presumably encompasses all goods of the type described, including registrant’s more narrow “Computer hardware, namely, computers, personal computers, computer terminals, computers for network management, networking equipment, servers, computer peripherals, and printers”.  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).  Additionally, the goods 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)). 

 

SPELLING ACE

 

The registration use broad wording to describe “dedicated personal computer”, which presumably encompasses all goods of the type described, including registrant’s more narrow “Computer hardware, namely, computers, personal computers, computer terminals, computers for network management”.  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).  Additionally, the goods 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)). 

 

ACE TEAH

 

The registration use broad wording to describe “laptops, computers”, which presumably encompasses all goods of the type described, including registrant’s more narrow “Computer hardware, namely, computers, personal computers, computer terminals, computers for network management”.  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).  Additionally, the goods 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)). 

 

ACE MOBILE

 

The application use broad wording to describe “telephones”, which presumably encompasses all goods of the type described, including applicant’s more narrow “cellular phones”.  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).  Additionally, the goods 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)). 

 

For these reasons, consumers are likely to encounter the parties’ goods and services in the same market channels.  Given the strong similarities between the key elements of the parties’ marks, consumers encountering the marks in the same commercial contexts are likely to confuse the marks and mistake the underlying sources of related goods and services provided under the marks.  Accordingly, registration is refused under Trademark Act Section 2(d).

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. 

 

The applicant should also note the following potential grounds for refusal.  If applicant responds to this action, applicant should note that the application may be suspended if the earlier-filed application below is still pending.

 

PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 87849932 (ACEMD), 87103650 (ACE MICROSYSTEMS), 87845510 (PROLIFIQ ACE), and 87577033 (NEULION ACE ANALYTICS) precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Response Guidelines

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

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.  

 

 

 

/Alexandra El-Bayeh/

Trademark Examining Attorney

Law Office 124

(571) 270-5911

alexandra.el-bayeh@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 9/19/2018 FOR U.S. APPLICATION SERIAL NO. 88001867

 

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 9/19/2018 (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.