To: | Next Force Technology, Inc. (aostergar@ostergar.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88021983 - NEXT - N/A |
Sent: | 4/25/2019 2:45:20 PM |
Sent As: | ECOM120@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88021983
MARK: NEXT
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Next Force Technology, 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: 4/25/2019
INTRODUCTION: The trademark examining attorney is suspending action on the application for the reasons 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) is attached.
- Application Serial Nos. 86938704, 86938709, 87541580, and 87808940
REFUSAL CONTINUED AND MAINTAINED: The Section 2(d) refusal is continued and maintained.
Applicant argues that the marks are not likely to be confused because the parties’ services differ based on the applicant’s proposed amendment to the identification of services in the application. However, this argument is unpersuasive because applicant’s proposed amendment is not acceptable for the reasons stated below in the following section of this Office action.
Applicant has submitted printed or electronic copies of third-party registrations for marks containing the word “NEXT” to support the argument that this word is weak, diluted, or so widely used that it should not be afforded a broad scope of protection. These registrations appear to be for goods and/or services that are predominantly different from or unrelated to those identified in applicant’s application.
The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services. See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003).
However, evidence comprising third-party registrations for similar marks with different or unrelated goods and/or services, as in the present case, has “no bearing on the strength of the term in the context relevant to this case.” See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751). Thus, these third-party registrations submitted by applicant are insufficient to establish that the word “NEXT” is weak or diluted.
Applicant also alleges that the marks are not similar because are not similar because the parties’ services are different. However, this argument is unpersuasive because the evidence of record demonstrates that the parties’ services are related.
Applicant contends that the marks are not similar because the common feature of the marks is not the dominant feature in the registered mark. Assuming arguendo such is the case, although the trademark examining attorney does not concede such, it is noted that although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 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 mark and does not add any wording that would distinguish it from that mark. Thus, applicant’s argument that the marks are not similar because the common feature of the marks is not the dominant feature in the registered mark is unpersuasive.
In this case, the application originally identified the services as follows: “providing use of on-line non-downloadable software for scheduling temporary employment shifts” in Class 42.
However, the proposed amendment identifies the following goods: “downloadable mobile application that creates a virtual pool of labor across the locations owned by a business and uses data science and learning algorithms to deliver intelligent matching of qualified, available and interested existing employees of that business, who are looking for extra work, to shifts where help is needed at the business's locations due to terminations, illness, breakage and disconnects inherent in a static periodic scheduling process” in Class 9.
This proposed amendment is beyond the scope of the original identification because the proposed amendment identifies software with functions that are broader than those originally identified.
CONCLUSION: 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.
Toy, Joshua
/Joshua S. Toy/
Trademark Examining Attorney
Law Office 120
(571) 272-4856
joshua.toy@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.