To: | Altimetrik Corp. (psdocketing@pattersonsheridan.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88004281 - PLAYGROUND - ALTI/T002US |
Sent: | 10/11/2018 4:30:40 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88004281
MARK: PLAYGROUND
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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: Altimetrik Corp.
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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: 10/11/2018
In response to this Office action, applicant must address the following issues:
Also, please note the potential Section 2(d) – Likelihood of Confusion Refusal although no response is required to the issue of the pending applications.
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. 5055655, 5142881, 5387800. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
In this case, applicant has applied to register the mark PLAYGROUND for use in connection with “Consulting services including the development and improvement of an organization's culture through human and non-human resource improvement” and “Technology consulting and solution implementation services to improve the speed and effectiveness at which information technology programs and products are delivered.”
Registration No. 5055655 is for the mark PLAYGROUND used in connection with “Providing business management consulting and advisory services to entrepreneurs and emerging and start-up companies; business incubator services, namely, providing business management and business development services in the form of support for emerging and start-up companies; rental and leasing of office machinery and equipment.”
Registration No. 5142881 is for the mark PLAYGROUND HOSPITALITY used in connection with “Business consulting services in the field of operating and managing restaurants; Offering business management assistance in the establishment and/or operation of restaurants; Restaurant management for others.”
Registration No. 5387800 is for the mark used in connection with, in relevant part, “business management services, namely, providing business intelligence and analytics management services; business management consulting services relating to business intelligence, analytics, and reporting; providing general information of interest to the fields of business intelligence and analytics via a website” and “Computer programming; programming, design, development, analysis, implementation, installation, integration, maintenance, updating and repair of computer programs, software and mobile applications for others; deployment, namely, design and development of computer programs, software and mobile applications for others for distribution of multimedia contents; leasing and rental of computer software; technical support services for computer software, namely, problem troubleshooting; computer database development services; design of computer software for business intelligence; research, consultation and development services in the field of computer software, mobile applications, new business software products and systems for business intelligence and for storing, combining, managing, tracking, analyzing, creating reports and sharing data; computer systems analysis; software as a service, SAAS, services featuring software for secure, cloud-based file storage, transfer, and sharing; providing temporary use of on-line non-downloadable software and cloud computing featuring software for storing, combining, managing, tracking, creating reports and sharing data; data warehousing.”
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 services of the applicant and registrant. 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 [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.
Similarity of the Marks
In the present case, applicant’s mark is PLAYGROUND and registrant’s mark in Registration No. 5055655 is PLAYGROUND. 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 registrant’s respective services. Id. Therefore, the marks are confusingly similar.
Also in this case, applicant’s mark, PLAYGROUND, is confusingly similar to the registered marks PLAYGROUND HOSPITALITY and QLIK PLAYGROUND. Specifically, the two registered marks completely encompass the applied-for mark. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part. Therefore, the marks are similar for likelihood of confusion purposes.
Ultimately, when purchasers call for the services of the applicant and registrant using PLAYGROUND, PLAYGROUND HOSPITALITY and QLIK PLAYGROUND, they are likely to be confused as to the sources of those services by the similarities between the marks. Thus, the marks are confusingly similar.
Relatedness of the Services
In this case, applicant's “Consulting services including the development and improvement of an organization's culture through human and non-human resource improvement” are related to the services in Registration No. 5055655, “Providing business management consulting and advisory services to entrepreneurs and emerging and start-up companies; business incubator services, namely, providing business management and business development services in the form of support for emerging and start-up companies; rental and leasing of office machinery and equipment;” Registration No. 5142881, “Business consulting services in the field of operating and managing restaurants; Offering business management assistance in the establishment and/or operation of restaurants; Restaurant management for others,” and Registration No. 5387800, “business management services, namely, providing business intelligence and analytics management services; business management consulting services relating to business intelligence, analytics, and reporting; providing general information of interest to the fields of business intelligence and analytics via a website.” Specifically, both the application and registration identify business management services.
The registrations use broad wording to describe business management consultancy, which presumably encompasses all services of the type described, including applicant’s vaguely wording identification that appears to relate to business management for a wide variety of organizations and touches upon both “human and non-human resource improvement”. 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 applicant has 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” as those specified by the registrants. 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)).
Determining likelihood of confusion is based on the description of the 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)).
Also in this case, applicant's “Technology consulting and solution implementation services to improve the speed and effectiveness at which information technology programs and products are delivered” are related to the services in Registration No. 5387800, “Computer programming; programming, design, development, analysis, implementation, installation, integration, maintenance, updating and repair of computer programs, software and mobile applications for others; deployment, namely, design and development of computer programs, software and mobile applications for others for distribution of multimedia contents; leasing and rental of computer software; technical support services for computer software, namely, problem troubleshooting; computer database development services; design of computer software for business intelligence; research, consultation and development services in the field of computer software, mobile applications, new business software products and systems for business intelligence and for storing, combining, managing, tracking, analyzing, creating reports and sharing data; computer systems analysis; software as a service, SAAS, services featuring software for secure, cloud-based file storage, transfer, and sharing; providing temporary use of on-line non-downloadable software and cloud computing featuring software for storing, combining, managing, tracking, creating reports and sharing data; data warehousing.” Specifically, both the application and registration identify technology consultancy and services.
The application uses broad wording to describe technology consulting and “solution implementation services”, which presumably encompasses all services of the type described, including registrant’s more narrow specific information technology and computer services as well as consulting services related to computer software, mobile applications, new business software products and systems for business intelligence and for storing, combining, managing, tracking, analyzing, creating reports and sharing data; computer systems analysis. 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)).
When purchasers encounter the services of the applicant and registrant, they are likely to be confused as to the source of the goods by the relationship between them. Thus, the services are closely related.
Therefore, because the marks are confusingly similar and the services are closely related, purchasers encountering these services are likely to believe, mistakenly, that they emanate from a common source. Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. If applicant responds to the refusal, applicant must also respond to the requirements set forth below.
POTENTIAL SECTION 2(d) REFUSAL – 1 PENDING APPLICATION
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 mark in the referenced application. 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.
While applicant is not required to respond to the issue of the pending applications, applicant must respond to the Section 2(d) Refusal and Identification of Services and Class Clarification Requirement within six months of the mailing date of this Office action to avoid abandonment.
INDEFINITE IDENTIFICATION OF SERVICES – AMENDMENT REQUIRED
Class 35
Class 42
The wording “Technology consulting and solution implementation services to improve the speed and effectiveness at which information technology programs and products are delivered” in the identification of services for International Class 42 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, “solution implementation services” could encompass the installation of computer hardware in Class 37, installation of software in Class 42, or transmission of digital files in Class 38. Further, applicant must specify the kind of “technology” the consulting is being provided for, such as computer or telecommunications technology. In addition, the kind of “products” is indefinite as this could refer to digital or physical products. Therefore, applicant must clarify the services for classification purposes.
Applicant may adopt the following identification, if accurate:
Class 35 – “[applicant to specify, e.g. business management] consulting services, namely, [applicant to specify, e.g. providing advice regarding] the development and improvement of an organization's [applicant to specify, e.g. workplace, corporate] culture through human and non-human resource improvement.”
Class 37 – “technology solution implementation services, namely, [applicant to specify, e.g. installation of computer hardware] to improve the speed and effectiveness at which information technology programs and [applicant to specify, e.g. digital] products are delivered.”
Class 38 – “technology solution implementation services, namely, [applicant to specify, e.g. transmission of digital files, satellite transmission services, electronic data transmission] to improve the speed and effectiveness at which information technology programs and [applicant to specify, e.g. digital] products are delivered.”
Class 42 – “[applicant to specify, e.g. information, computer, telecommunications] technology consulting to improve the speed and effectiveness at which information technology programs and products are delivered; technology solution implementation services, namely, [applicant to specify, e.g. installation of software, development of software, IT integration services] to improve the speed and effectiveness at which information technology programs and [applicant to specify, e.g. digital] products are delivered.”
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.
CLARIFICATION OF THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT REQUIRED
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
ADVISORY- MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE TO THIS OFFICE ACTION
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.
/Emma Sirignano/
Examining Attorney, Law Office 113
United States Patent and Trademark Office
(571) 272-7031
emma.sirignano@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.