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: 1/23/2019

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 THAT APPLICANT MUST ADDRESS

Section 2(d) Likelihood of Confusion Refusal
Identification of Goods/Services for International Classes 9 and 42
Disclaimer
Prior Pending Application

SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5092366. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.

The applicant has applied to register ACTION ENGINE in standard character form for among other things “hosting of computer sites (websites), in particular hosting of mobile applications; design and development of software in the field of mobile applications; computer-based monitoring services for tracking processes carried out in IT systems; computer programming and software design; computer programming services for commercial analysis and reporting; computer software development; computer software design; consulting services in the field of computer-based information systems for businesses; consulting services in the field of software as a service (SAAS); data conversion of computer program data and information; data decryption services; data encryption and decoding services; data mining; data warehousing; design and writing of computer software; design, development, maintenance, rental, installation, servicing and implementation of software; software development; development of software in the field of business process management; development of software in the field of process mining; development and creation of computer programmes for data processing; development of software for others for analysing businesses, for audits and for planning audits; process mining; software as a service through software for business process management; data mining”. The registered mark is ACTION ENGINE in standard character form for “software as a service (SAAS) services featuring software for managing patient engagement, patient education, and medication adherence programs and applications, in the field of healthcare; computer services, namely, designing, developing, and maintaining computer software applications for others and consulting services related thereto; online hosted computer services, namely, designing, developing, customizing, and maintaining computer software applications for others, and consulting services related thereto; computer software development in the field of mobile applications; computer software development in the field of online applications; web site design services.”

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

The registered mark is for ACTION ENGINE in standard characters. The application is for the mark ACTION ENGINE in standard characters. The marks are identical.

Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

COMPARISON OF THE GOODS/SERVICES

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 goods/services include hosting of computer sites (websites), in particular hosting of mobile applications; design and development of software in the field of mobile applications; computer-based monitoring services for tracking processes carried out in IT systems; computer programming and software design; computer programming services for commercial analysis and reporting; computer software development; computer software design; consulting services in the field of computer-based information systems for businesses; consulting services in the field of software as a service (SAAS); data conversion of computer program data and information; data decryption services; data encryption and decoding services; data mining; data warehousing; design and writing of computer software; design, development, maintenance, rental, installation, servicing and implementation of software; software development; development of software in the field of business process management; development of software in the field of process mining; development and creation of computer programmes for data processing; development of software for others for analysing businesses, for audits and for planning audits; process mining; software as a service through software for business process management; data mining.

The registrant’s services are software as a service (SAAS) services featuring software for managing patient engagement, patient education, and medication adherence programs and applications, in the field of healthcare; computer services, namely, designing, developing, and maintaining computer software applications for others and consulting services related thereto; online hosted computer services, namely, designing, developing, customizing, and maintaining computer software applications for others, and consulting services related thereto; computer software development in the field of mobile applications; computer software development in the field of online applications; web site design services. Both the applicant and registrant provide computer software design, development, and maintenance services.

In total, the two marks are identical and the goods/services are commercially related and likely to be encountered together in the marketplace by consumers. Therefore, consumers are likely to be confused and mistakenly believe that the products/services originate from a common source. Therefore, registration must be refused under Section 2(d) of the Lanham Act.

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

IDENTIFICATION OF GOODS/SERVICES FOR INTERNATIONAL CLASSES 9 AND 42

Some wording in the identification of services is indefinite and must be clarified as indicated in bold below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate:

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.

Mobile applications, namely, computer software for use in __________ [specify function (e.g. database management)] in the field of __________ [specify field if content specific (e.g. data mining)]; application software for mobile devices for use in __________ [specify function (e.g. database management)] in the field of __________ [specify field if content specific (e.g. data mining)]; downloadable computer software development tools; computer software for database management; computer software for application and database integration; computer software for creating searchable databases of information and data; computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; computer software that provides real-time, integrated business management information by combining information from various databases and presenting it in an easy-to-understand user interface dashboard; computer software to automate data warehousing; database management software for storing business process data; downloadable cloud-based software for analyzing and visualizing business processes; downloadable cloud-based software for retrieving and visualizing process data stored in IT systems; downloadable software for analyzing and visualizing business processes; downloadable software for retrieving and visualizing process data stored in IT systems; software for analyzing and visualizing business processes; software for analyzing and visualizing processes based on events stored as log files in IT systems; software for analyzing and visualizing business processes based on events stored as log files in IT systems; software for process mining; software for retrieving and visualizing process data stored in IT systems; software for organizing data stored in IT systems, in International Class 9.

Hosting of websites; application service provider, namely, hosting of mobile applications in the fields of __________ [specify subject matter (e.g. database mining)]; design and development of software in the field of mobile software applications; technical support, namely, computer-based monitoring services for tracking processes carried out in IT systems; computer programming and software design; computer programming services for commercial analysis and reporting; computer software development; computer software design; computer software consulting services in the field of computer-based information systems for businesses; computer consulting services in the field of software as a service (SAAS); data conversion of computer program data and information, not physical; data decryption services; data encryption and decoding services; data mining; data warehousing; design and writing of computer software; design, development, maintenance, rental, installation, servicing in the nature of updating and implementation of software; software development; development of software in the field of business process management; development of software in the field of process mining; development and creation of computer programs for data processing; development of software for others for analyzing businesses, for audits and for planning audits; process mining in the nature of data mining; software as a service featuring software for business process management; data mining, in International Class 42.

The services in International Class 35 and 41 are acceptable as written in the application.

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the 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 or encompassed by those in the original 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).

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.

DISCLAIMER REQUIRED

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

In this case, applicant must disclaim the wording “ENGINE” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).

The attached evidence from Macmillan Dictionary shows this wording means a computer program that performs an essential or special action for other programs. Thus, the wording merely describes applicant’s goods and/or services because the applicant is providing computer programs which perform essential actions for other programs. Furthermore, the applicant is providing services for use in connection with such programs including training and business advisory services related thereto.

Applicant may respond to this issue by submitting a disclaimer in the following format:

No claim is made to the exclusive right to use “ENGINE” apart from the mark as shown.

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

PRIOR PENDING APPLICATION

The filing date of pending U.S. Application Serial No. 86926986 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.

ASSISTANCE

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.

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.

/Tarah Hardy Ludlow/

Examining Attorney

Law Office 110

571-272-9361

tarah.hardy@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/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.uspto.gov/. 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.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.

To:	Celonis SE (tm@myerswolin.com)
Subject:	U.S. TRADEMARK APPLICATION NO. 88153214 - ACTION ENGINE - JONA 8548
Sent:	1/23/2019 1:24:54 PM
Sent As:	ECOM110@USPTO.GOV
Attachments:	Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10