United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88114554
Mark: SPECTRUM
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Correspondence Address:
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Applicant: Spectrum Labs, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
On February 26, 2019, action on this application was suspended pending the disposition of U.S. Application Serial Nos. 87675466 and 86838675. The referenced prior-pending applications have since registered. Therefore, registration is refused as follows.
.SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 5795219 and 5921189. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations. The two cited registrations are owned by two different owners.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by-case basis and 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) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or 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.
Here, the applicant seeks registration of the mark SPECTRUM for its “Platform as a service (PAAS) featuring computer software for the monitoring, detection, identification, collection, mining, classification, labeling, scoring, augmentation, enrichment, organization, editing, modification, transmission, storage, management, and sharing of data, content, and information; Software as a service (SAAS) services featuring computer software for predictive, near real-time, live and passive monitoring, identification, collection, mining, classification, scoring, enrichment, modification, management, analysis, promotion, suppression, and deletion of user-generated content, messages, comments, multimedia, media, and various other content on, or through, websites, online ecosystems, digital platforms, digital applications, service providers, and evolving technological ecosystems.”
The registrant of U.S. Registration No. 5795219 applies the mark SHOPPER SPECTRUM to its “Software as a service (SAAS) services featuring software for use in managing and analyzing data.”
The registrant of U.S. Registration No. 5921189 applies the mark SPECTRUM to its “Providing temporary use of non-downloadable computer software for use in the motor vehicle industry for business automation, time inventory management, resource management, workforce management, appointment and reservation scheduling, and customer and workforce scheduling; providing temporary use of non-downloadable computer software for use in the motor vehicle industry for processing, tracking, and reporting appointment, reservation and scheduling requests; providing temporary use of non-downloadable computer software for use in the motor vehicle industry for processing, tracking and reporting of billing and payment information; providing temporary use of non-downloadable computer software for use in the motor vehicle industry for forecasting, planning, optimizing, collecting, tracking, reporting, and analyzing resource utilization information; providing temporary use of non-downloadable computer software for use in the motor vehicle industry for collecting, tracking, reporting, and analyzing customer or user information; providing temporary use of non-downloadable computer software for use in the motor vehicle industry for forecasting, planning, and optimizing time and resource inventory and customer and workforce scheduling; providing temporary use of non-downloadable computer software for use in the motor vehicle industry for use in self-service customer registration, training, and scheduling; technical consultation services in the field of computer hardware and business automation software in the motor vehicle industry; design and development of business automation software for others in the motor vehicle industry; installation and maintenance of business automation software in the motor vehicle industry; technical support services, namely, troubleshooting of problems with computer software for use in the motor vehicle industry, via telephone, e-mail, online messaging and in-person.” International Class 42.
Comparison of marks
The parties share the word SPECTRUM in their respective 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).
Comparison of goods/services
The parties all share related software services that feature the ability to monitoring, detection, identification, collection, mining, classification, labeling, scoring, augmentation, enrichment, organization, editing, modification, transmission, storage, management, and sharing of data, content, and information. The goods and/or services of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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).
In this case, the application use(s) broad wording to describe “Platform as a service (PAAS) featuring computer software for the monitoring, detection, identification, collection, mining, classification, labeling, scoring, augmentation, enrichment, organization, editing, modification, transmission, storage, management, and sharing of data, content, and information; Software as a service (SAAS) services featuring computer software for predictive, near real-time, live and passive monitoring, identification, collection, mining, classification, scoring, enrichment, modification, management, analysis, promotion, suppression, and deletion of user-generated content, messages, comments, multimedia, media, and various other content on, or through, websites, online ecosystems, digital platforms, digital applications, service providers, and evolving technological ecosystems,” which presumably encompasses all goods and/or services of the type described, including registrant(s)’s more narrow Software as a service (SAAS) services featuring software for use in managing and analyzing data” and “Providing temporary use of non-downloadable computer software for use in the motor vehicle industry for business automation, time inventory management, resource management, workforce management, appointment and reservation scheduling, and customer and workforce scheduling; providing temporary use of non-downloadable computer software for use in the motor vehicle industry for processing, tracking, and reporting appointment, reservation and scheduling requests; providing temporary use of non-downloadable computer software for use in the motor vehicle industry for processing, tracking and reporting of billing and payment information; providing temporary use of non-downloadable computer software for use in the motor vehicle industry for forecasting, planning, optimizing, collecting, tracking, reporting, and analyzing resource utilization information; providing temporary use of non-downloadable computer software for use in the motor vehicle industry for collecting, tracking, reporting, and analyzing customer or user information; providing temporary use of non-downloadable computer software for use in the motor vehicle industry for forecasting, planning, and optimizing time and resource inventory and customer and workforce scheduling; providing temporary use of non-downloadable computer software for use in the motor vehicle industry for use in self-service customer registration, training, and scheduling; technical consultation services in the field of computer hardware and business automation software in the motor vehicle industry; design and development of business automation software for others in the motor vehicle industry; installation and maintenance of business automation software in the motor vehicle industry; technical support services, namely, troubleshooting of problems with computer software for use in the motor vehicle industry, via telephone, e-mail, online messaging and in-person.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or 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)). Thus, applicant’s and registrant’s goods and/or services are related.
In this case, the similarity the marks SPECTRUM versus SHOPPER SPECTRUM and SPECTRUM, combined with the fact that the parties all share related software services that feature the ability to monitoring, detection, identification, collection, mining, classification, labeling, scoring, augmentation, enrichment, organization, editing, modification, transmission, storage, management, and sharing of data, content, and information, makes it likely that a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. Accordingly, the mark is refused registration on the Principal Register under Trademark Act Section 2(d), 15 U.S.C. Section 1052.
How to respond. Click to file a response to this nonfinal Office action.
/Warren L. Olandria/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 112
Phone: 571-272-9718
Warren.Olandria@uspto.gov
RESPONSE GUIDANCE