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: 1/28/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) 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
• ADVISORY: PRIOR FILED PENDING APPLICATION
• IDENTIFICATION OF GOODS REQUIREMENT
• ADVISORY: MULTIPLE CLASS APPLICATION
• SECTION 1(b) & 44(d) WITH INTENT TO PERFECT: FOREIGN APPLICATION REQUIREMENT

 

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. 4866691, 2942912, 5598050, 3171015, 5434448, 4463510, 4141937, 3905523, 4956318, 5006021, 4526273, 4250559, 4363961, 4153231, 4940987, 5020299, and 4252935.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined 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) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See 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)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Comparison of the Marks

 

Applicant’s mark is SAPPHIRE in stylized form, owned by Sapphire Systems Limited.

 

Registrant, Sapphire Technology Limited is the owner of multiple marks (collectively, the “STL Marks”).  The STL Marks are as follows:

• Registration No. 4866691is S SAPPHIRE & Design;
• Registration No. 2942912 is S SAPPHIRE & Design;
• Registration No. 4141937 is SAPPHIRE in stylized form;
• Registration No. 4526273 is SAPPHIRE EDGE HD3 in standard character form;
• Registration No. 4250559 is SAPPHIRE EDGE in standard character form;
• Registration No. 4363961 is SAPPHIRE EDGE VS in standard character form;
• Registration No. 4153231 is SAPPHIRE EDGE – HD2 in standard character from;
• Registration No. 4940987 is SAPPHIRE PROFESSIONAL GRAPHIC SOLUTIONS in stylized form.

 

Registrant’s mark for Registration No. 5598050 is S SAPPHIRE BONDI BLUE & Design, owned by SapphireOne Pty. Ltd.

 

Registrant’s mark for Registration No. 3171015 is SAFFIRE in standard character form, owned by Focusrite Audio Engineering Limited.

 

Registrant’s mark for Registration No. 5434448 is SAPHYR in standard character form, owned by BioNano Genomics, Inc.

 

Registrant’s mark for Registration No. 4463510 is SAPPHIRE in standard character form, owned by Infogroup Inc.

 

Registrant’s mark for Registration No. 3905523 is SAPPHIRE in standard character form, owned by Mitek Holdings, Inc.

 

Registrant’s mark for Registration No. 4956318 is SAPPHIRE in standard character form, owned by Intergraph Corporation.

 

Registrant’s mark for Registration No. 5006021 is SAPPHIRE in standard character form, owned by BAE Systems PLC.

 

Registrant’s mark for Registration No. 5020299 is SAPPHIRE RESEARCH & Design, owned by Sapphire Research LLC.

 

Registrant’s mark for Registration No. 4252935 is SAPPHIRE & Design, owned by Wright Internet Strategies, LLC.

 

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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

The applied-for and registered marks are similar in appearance, sound, and overall commercial impression. The applied-for and registered marks are confusingly similar because the dominant feature of the marks is the wording SAPPHIRE.

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

 In the case of the applied-for mark and the marks in Registration Nos. 5006021, 4956318, 4141937, 4463510, and 3905523, SAPPHIRE is the dominant feature of the marks because it is the only wording to appear in the marks. In fact, the wording in the applied-for mark and these registered marks is identical. In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is SAPPHIRE and the registrants’ marks are SAPPHIRE.  The wording in 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 goods and/or services.  Id.

 

In the case of Registration Nos. 5434448 (SAPHYR), 4252935 (SAFFIRE & Design), and 3171015 (SAFFIRE), the applied-for and registered marks are confusingly similar because the registered marks are merely novel and/or intentional misspellings of the applied-for mark. However, the marks have the same sound and convey the same meaning. Accordingly, the marks also convey the overall same commercial impression. The marks are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

In the case Registration No. 4866691(S SAPPHIRE & Design), 2942912 (S SAPPHIRE & Design), and 5598050 (S SAPPHIRE BONDI BLUE), SAPPHIRE is the dominant feature because it is the first full wording to appear in the marks. Although these marks each contain the letter S as a design element before the word SAPPHIRE, consumers will interpret this element as merely a design or abbreviation of the word SAPPHIRE. Thus, upon reviewing the mark, consumers will associate SAPPHIRE as the dominant feature of the mark. Similarly, in the case of Registration Nos. 5020299 (SAPPHIRE RESEARCH & Design), 4940987 (SAPPHIRE PROFESSIONAL GRAPHICS SOLUTIONS), 4153231 (SAPPHIRE EDGE-HD2), 4363961 (SAPPHIRE EDGE VS), 4526273 (SAPPHIRE EDGE HD3), and 4250559 (SAPPHIRE EDGE), SAPPHIRE is the dominant feature of the marks because it is the first wording to appear in these marks.

 

Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

The fact that several of the registered marks contain a design element does not obviate a likelihood of confusion. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

The fact that marks in Registration Nos. 5020299 (SAPPHIRE RESEARCH & Design) and 4940987 (SAPPHIRE PROFESSIONAL GRAPHICS SOLUTIONS) include additional wording after the word SAPPHIRE does not obviate a likelihood of confusion. This is because this wording has been disclaimed. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

Because SAPPHIRE is the dominant feature in the applied-for and registered marks, the marks are similar in appearance, sound, and overall commercial impression. Accordingly, the marks are confusingly similar.

 

Comparison of the Goods/Services

 

Applicant’s goods and services are as follows:

 

·       Class 9: Computer software; computer software programs; computer hardware; machine readable data; data processing programs; computer peripherals; parts and accessories for the aforesaid goods

 

·       Class 35: Computer data processing; updating and maintenance of data in computer databases; advertising of software programs; business consultancy relating to data processing; computerised business information services; promoting the goods and services of others; retail services connected with software programs

 

·       Class 41: Computer based training; computer training advisory services; arranging and conducting seminars

 

·       Class 42:  Computer software advisory services; computer software consultancy; computer software design and development; computer support services (programming and software installation, repair and maintenance services); computer support services (computer hardware, software and peripherals advisory and information services); Software as a service (SaaS); cloud computing.

 

Registrant’s goods for the STL Marks are all in Class 9 and as follows:

 

• Registration No. 4866691 (S SAPPHIRE & Design): mini-PC and nettop computers, computer graphics cards

 

• Registration No. 2942912 (S SAPPHIRE & Design): blank magnetic data carriers; blank magnetic computer cards; blank computer memory storage discs; and computer system motherboard consisting of an integrated circuit microchip arrangement

 

• Registration No. 4141937 (SAPPHIRE): blank magnetic carriers; blank magnetic computer cards; blank computer memory storage discs; computer system motherboard consisting of an integrated circuit microchip arrangement; nettop computers; and graphics cards

 

• Registration No. 4526273 (SAPPHIRE EDGE HD3): Nettop computer, all in one computer with a mini format, namely, a CPU, main board, hard disk drive, graphics, memory and a personal computer case

 

• Registration No. 4250559 (SAPPHIRE EDGE): Nettop computer, all-in-one computer featuring a mini format, namely, a central processing unit, mainboard, hard disk drive, graphics board, memory, and a personal computer carrying case

 

• Registration No. 4363961 (SAPPHIRE EDGE VS): Nettop computer, all-in-one computer with a mini format, namely, a CPU, mainboard, hard disk drive, graphics, memory and PC case

 

• Registration No. 4153231 (SAPPHIRE EDGE – HD2): Nettop computer, all in one computer with a mini format, namely, a CPU, mainboard, hard disk drive, graphics, memory and a personal computer case

 

• Registration No. 4940987 (SAPPHIRE PROFESSIONAL GRAPHIC SOLUTIONS): computer graphic cards.

 

Registrant’s goods and services for Registration No. 5598050 (S SAPPHIRE BONDI BLUE & Design) include the following:

 

·       Class 9: Machine readable data media provided with programs for managing data flow, managing payroll, managing customer accounts, and other general business management; computer software for data processing in the field of business management, business administration, IT systems, and office functions; data processing programs for use in business management, business administration, IT systems, and in providing office functions

 

·       Class 41: Training in the field of using data processing programs

 

·       Class 42: Computer software consultation relating to the use of data processing.

 

Registrant’s goods for Registration No. 3171015 (SAFFIRE) are as follows:

• Class 9: Computer hardware and software for audio recording applications.

 

Registrant’s goods for Registration No. 5434448 (SAPHYR) include the following:

 

• Class 9: software for genomic analysis used for medical diagnostic purposes.

 

Registrant’s goods Registration No. 4463510 (SAPPHIRE) are as follows:

 

• Class 35: Business information services, namely, providing a database in the field of business information containing data for direct marketing used in connection with sales, lead and customer generation and to generate and customize integrated marketing campaigns.

 

Registrant’s goods for Registration No.  3905523 (SAPPHIRE) are as follows:

 

• Class 9: Computer software for use in the construction industry by engineers, builders, architects, manufacturers of building products, wholesalers of building products, and retailers of building products for computer-aided design (CAD) of building products, manufacture of building products, and invoicing, inventory control, and order processing in the manufacture and sale of building products.

 

Registrant’s goods for Registration No. 4956318 (SAPPHIRE) are as follows:

 

• Class 9: graphical user interface software integrated with industrial plant design, process, and building industry software to provide a consistent user experience, and user manuals sold therewith.

 

Registrant’s goods and services for Registration No. 5006021 (SAPPHIRE) are as follows:

 

• Class 9: Software for the electronic tracking, management and recordal of configuration and maintenance management activities relating to aircraft, air flight, aeronautics, aircraft maintenance, aircraft logistics, aircraft support and air crew

 

• Class 42: Technical support services in the nature of troubleshooting computer software problems and maintenance services all relating to software for the electronic tracking, management and recordal of configuration and maintenance management activities relating to aircraft, air flight, aeronautics, aircraft maintenance, aircraft logistics, aircraft support and air crew.

 

Registrant’s services Registration No. 5020299 (SAPPHIRE RESEARCH & Design) are as follows:

 

·       Class 35: Business consultation services.

 

Registrant’s services for Registration No. 4252935(SAFFIRE & Design) are as follows:

 

• Class 42: Providing a website featuring non-downloadable software for online marketing, event management, content management, contact management, social media marketing, ecommerce and volunteer and sponsor management.

 

The compared goods and/or 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).

 

Applicant’s and registrants’ goods and services are related because the majority of applicant’s goods and services are either identical to and/or encompass the registrant’s goods and services. For example, in the Case of STL Marks, applicant’s Class 9 goods include computer hardware, computer hardware parts, and computer hardware accessories. These goods encompass the various goods in the STL Marsks’ registrations such as mini-PC and nettop computers, computer graphic cards, blank computer memory storage discs, and computer system motherboards.

 

Similarly, Registration No. 3171015 (SAFFIRE) includes computer hardware for audio recording applications. Applicant’s computer hardware is broadly worded and could include computer hardware that is also used for audio recording applications.

 

Moreover, applicant’s Class 9 goods include computer software. However, the identification does not specify the function and purpose of the software. Registration Nos. 3171015 (SAFFIRE), 543448 (SAPHYR), 3905523 (SAPPHIRE), 4956318 (SAPPHIRE), 5006021 (SAPPHIRE), and 4252935 (SAFFIRE & Design) all include software with specific functions and purposes. Applicant’s “computer software” could include the same purpose and functions as these registrants’ software.

 

Additionally, in the Case of Registration No. 5006021, applicant’s Class 42 services include “computer support services (programming and software installation, repair and maintenance services).” These services could include this registrant’s technical support services for troubleshooting and providing maintenance to computer software in the aircraft and aeronautic industry.

 

Furthermore, in the case Registration No. 4463510 (SAPPHIRE), applicant’s “computerised business information services” could include registrant’s “Business information services, namely, providing a database in the field of business information containing data for direct marketing used in connection with sales, lead and customer generation and to generate and customize integrated marketing campaigns.”

 

Moreover, in the case of Registration No. 5020299 (SAPPHIRE RESEARCH & Design), applicant and registrant both provide business services such as business consulting.

 

Also, in the case of Registration No. 5598050 (S SAPPHIRE BONDI BLUE & Design), applicant’s and registrant’s goods and services both include machine readable data, computer training, and computer software consultancy.

 

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 extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe applicant’s computer hardware and software, business services, and computer training and consulting services, which presumably encompasses all goods and/or services of the type described, including the goods and services that are narrowly described in the registrants’ respective registrations.  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 goods and/or 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.

 

Thus, upon encountering SAPPHIRE and the above identified registered marks used on the identified goods and/or services, consumers are likely to be confused and mistakenly believe that the respective goods and/or services emanate from a common source. Accordingly, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 4866691, 2942912, 5598050, 3171015, 5434448, 4463510, 4141937, 3905523, 4956318, 5006021, 4526273, 4250559, 4363961, 4153231, 4940987, 5020299, and 4252935. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

ADVISORY: PRIOR FILED PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 87525860 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  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 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.

 

IDENTIFICATION OF GOODS REQUIREMENT

 

The identification of goods and services is unacceptable and must be clarified because the wording used to describe several of the goods and services does not adequately specify the function, purpose, nature, type, and/or common commercial name of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, “computer software” in Class 9 does not specify the type of software or function of the software. As another example, “computer support services (computer hardware, software and peripherals advisory and information services)” is too broad and could include services in more than one class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, these services could include “technical support services namely troubleshooting in the nature of repair of computer hardware” in Class 37 or “technical support services, namely troubleshooting and providing information related to computer software problems” in Class 42.

 

The identification of goods and/or services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

The examining attorney has provided a recommendation of an acceptable identification of goods and services below. The wording that has been bolded indicates the examining attorney’s recommendation which makes applicant’s initial wording acceptable. Applicant may amend the identification of goods and services to the followings:

 

Class 9: {specify type in Class 9, e.g., downloadable, recorded} computer software for {specify function, e.g., database management, application development, web hosting}; {specify type in Class 9, e.g., downloadable, recorded} computer software programs for {specify function, e.g., database management, application development, web hosting}; computer hardware; machine readable data, namely, {specify common commercial name of goods, e.g., blank magnetic data carriers, data carriers containing stored typographic typefaces}; data processing programs, namely, {specify type and nature of goods, e.g., downloadable computer software for processing data}; computer peripherals; {specify nature of goods, e.g., computer} parts and accessories, namely, {specify common commercial name of goods, e.g., computer motherboards, cases adapted for computers} {remove extraneous information for the aforesaid goods}

 

“Class 16: data processing programs in {specify nature, e.g., printed form}

 

Class 35: Computer data processing; updating and maintenance of data in computer databases; advertising of software programs; business consultancy relating to data processing; computerized business information services; promoting the goods and services of others; retail services connected with software programs, namely, {specify nature of services, e.g., retail store services featuring computer software programs}

 

Class 37: computer support services, namely, {specify nature of services, e.g., technical support services, particularly, troubleshooting in the nature of the repair of computer hardware, and peripherals}

 

Class 41: Computer based training, namely, {specify nature of services, e.g., training in the use and operation of computers}; computer training advisory services, namely, {specify nature of services, e.g., training in the use and operation of computers}; arranging and conducting seminars in the field of {specify field, e.g., computer programming, software design}

 

Class 42: Computer software advisory services; computer software consultancy; computer software design and development; computer support services, namely, programming and software installation, repair and maintenance services; computer support services, namely, software advisory and software information {specify type of information provided in Class 42, e.g., troubleshooting} services; Software as a service (SaaS) services featuring software for {specify function of software program, e.g., database management, word processing}; cloud computing featuring software {specify function of the programs, e.g., for use in database management, for word processing}.”

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found in or encompassed by those in the original U.S. application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

ADVISORY: MULTIPLE CLASS APPLICATION:

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 4 classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

SECTION 1(b) & 44(d) WITH INTENT TO PERFECT: FOREIGN APPLICATION REQUIREMENT

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

RESPONSE GUIDELINES

 

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.  

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

/Dean A. Hopkins II/

Examining Attorney

Law Office 123

(571) 272-5472

dean.hopkins@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 1/28/2019 FOR U.S. APPLICATION SERIAL NO. 88149212

 

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 1/28/2019 (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.