To: | Enterprise Holdings, Inc. (ipdocket@thompsoncoburn.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88001867 - ACE - 51017-176442 |
Sent: | 4/4/2019 1:17:08 PM |
Sent As: | ECOM124@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88001867
MARK: ACE
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Enterprise Holdings, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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SUSPENSION NOTICE: NO RESPONSE NEEDED
ISSUE/MAILING DATE: 4/4/2019
The trademark examining attorney is suspending action on the application for the reason(s) stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The effective filing date of the pending application(s) identified below precedes the filing date of applicant’s application. If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, action on this application is suspended until the earlier-filed referenced application(s) is either registered or abandoned. 37 C.F.R. §2.83(c). A copy of information relevant to this referenced application(s) was sent previously.
- Application Serial No(s). 87577033 (NEULION ACE ANALYTICS), 87849932 (ACEMD), and 87103650 (ACE MICROSYSTEMS)
REFUSAL(S)/REQUIREMENT(S) CONTINUED AND MAINTAINED: The following refusal is continued and maintained:
The applicant has amended its identification and as such a number of the Section 2(d) registered marks have been removed from the refusal. However, the applicant has not amended sufficiently to overcome the refusal as to the mark listed above. The examining attorney also notes that one of the pending marks, Registration No. 5610685, has since registered and that an action will be forthcoming pending the outcome of the remaining pending applications.
Although applicant argued that the registration for ACE DOCS was limited to use as part of a quality management system, there is nothing in the wording of the applicant’s identification that clarifies that its document management software could not also have a similar function to the registrant’s. As such, the applicant’s software that features document management and organization could have a similar function on its face. Further, although the applicant has limited its field of use to automobiles, the registrant has no such restriction and therefore could operate in this space as well. Further, even assuming that the purchasers were sophisticated, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163). As such, this refusal is continued and maintained.
Regarding ORDERACE, the applicant has not fully overcome the problematic identification entries for this registration. The examining attorney notes that “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” in Class 42 features software for the purpose of database management as similarly noted in the application. As such, this refusal is continued and maintained.
Regarding ACE FACTORY, the applicant has not fully overcome the problematic identification entries for this registration. The examining attorney notes that “computer services, namely, design, development, implementation, installation, maintenance, and updating of computer software, and providing consultation for the aforesaid” in Class 42 features software development and consulting services. As such, this refusal is continued and maintained.
The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based. TMEP §§716.04, 716.05. Applicant will be notified when suspension is no longer appropriate. See TMEP §716.04.
No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.
/Alexandra El-Bayeh/
Trademark Examining Attorney
Law Office 124
(571) 270-5911
alexandra.el-bayeh@uspto.gov
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 Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.