To: | N3, LLC (artoush@ohanianip.com) |
Subject: | U.S. Trademark Application Serial No. 88168355 - MIA - N3-0003 |
Sent: | November 16, 2020 04:33:09 PM |
Sent As: | ecom101@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88168355
Mark: MIA
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Correspondence Address:
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Applicant: N3, LLC
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Reference/Docket No. N3-0003
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.
Issue date: November 16, 2020
On August 28, 2019, action on this application was suspended pending the disposition of U.S. Application Serial Nos. 86211181 and 87318209. The following prior-pending application has abandoned and is no longer a potential bar to the registration of applicant’s mark: Application Serial No. 87318209. However, Application Serial No. 86211181 has since registered. Therefore, registration is refused as follows.
Moreover, the refusal under Trademark Act, Sections 1 and 45 is maintained and continued for the reasons set forth in the Office action of February 6, 2019.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant seeks registration of the mark MIA for “Downloadable voice command and recognition software for sales and business consulting services for live customer telephone calls for business to business sales and for displaying, organizing and analyzing the data, in the field of business to business sales and research services and consultancy with regard to business development, marketing, customer demand creation and lead generation activities.”
The cited registered mark is MIA for (in part) “Downloadable computer software used for the control of voice controlled information, namely, for providing customizable cloud based access to information in response to data inputted or voice-controlled end user inquiries in relation to locating, rating and providing directions for the consumption, purchase and use of end-user consumer and business products, services and information, and accessing information and data from end user and social networking contact databases via the internet, using any connected internet access mode such as mobile communications devices and personal computers; computer software used to process voice and text commands, and create audio and text responses to those commands, namely, providing location, rating, and direction information for consumer products and services, businesses, and restaurants; computer software which proactively provides access to relevant location based amenity and user convenience information, namely, location, rating, and direction information for consumer products and services, businesses, and restaurants; computer software which proactively provides access to relevant location based amenity and user convenience information via the internet and cellular networks, namely, user profile information and user usage data from social media user accounts, social networking user accounts and user contact databases; computer software which proactively provides relevant location based amenity and user convenience information, namely, information with respect to details as to nature of business, photographs, customer feedback based on a current location of a mobile computing device; computer software which controls devices with or without active commands from the user, namely, automatically controlling and modifying control settings on mobile computing devices.”
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.
In the case at hand, the two key factors are the similarity of the marks and the relatedness of the goods and/or services, both of which are discussed below.
COMPARISON OF THE MARKS
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 MIA in standard character and registrant’s mark is MIA in standard character. 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.
Therefore, the marks are confusingly similar.
COMPARISON OF THE GOODS/SERVICES
Therefore, regardless of what extrinsic evidence may reveal as to the particular nature of the goods and/or services at hand, the particular channels of trade or the class of consumers, the question of registrability of the applicant’s mark must be decided on the basis of the identification of goods and/or services set forth in the application and registration. When broad wording is used to describe the goods and/or services, the wording presumably encompasses all goods and/or services of the type described. 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).
Here, the registration uses wording broad enough to encompass the applicant’s goods. For example, the wording “Downloadable computer software used for the control of voice controlled information, namely, for providing customizable cloud based access to information in response to data inputted or voice-controlled end user inquiries in relation to locating, rating and providing directions for the consumption, purchase and use of end-user consumer and business products, services and information, and accessing information and data from end user and social networking contact databases via the internet, using any connected internet access mode such as mobile communications devices and personal computers” and “computer software used to process voice and text commands, and create audio and text responses to those commands, namely, providing location, rating, and direction information for consumer products and services, businesses, and restaurants” is presumed to encompass downloadable computer software used to respond to and process voice controlled data, inquiries and commands from live customer telephone calls for providing responses, namely, responses for inquiries and information on the consumption, purchase and use of end-user consumer and business products, services and information and responses for providing location, rating, and direction information for consumer products and services, businesses, and restaurants, all in the fields of business to business sales, consultancy with regard to business development, marketing, customer demand creation and lead generation activities.
It is also presumed that the applicant’s software goods include software for providing the same type of responses as the registrant’s software, e.g. downloadable voice command and recognition software for sales and business consulting services for live customer telephone calls, namely, for providing responses from the calls for inquiries and information on the consumption, purchase and use of end-user consumer and business products and services, for business to business sales and for displaying, organizing and analyzing the data, in the field of business to business sales and research services and consultancy with regard to business development, marketing, customer demand creation and lead generation activities.
Thus, the registrant’s and applicant’s software goods are legally identical and are presumed to travel in the same channels of trade to the same class of purchasers. 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)); 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)).
In support of the relatedness of the goods, attached is are webpages from applicant’s website that clearly indicate that the applicant’s software is for the same purpose. The evidence was found online at the following:
http://n3results.com/n3-offerings/practice-areas/mia-market-intelligence-assistant/
(With every customer or prospect action or conversation, Mia is listening and creating rich profiles on the company, the person and emerging needs – connecting the dots for the Advisor and identifying intent signals…Mia automatically prioritizes and routes opportunities to the right Advisor and dynamically delivers the right questions to ask or messages to ensure the dialogue is intelligent and relevant. Armed with the right information, at the right time, N3’s Advisors accelerate the sales process, increase consumption and expand cross-sell and upsell opportunities.”)
In sum, consumers encountering the registrant’s mark MIA and the applicant’s mark MIA for overlapping types of software, are reasonably likely to believe all the software originates from the same source.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Based on the foregoing, registration is refused under Trademark Act, Section 2(d).
How to respond. Click to file a response to this nonfinal Office action.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Jean H. Im/
Trademark Examining Attorney
Law Office 101
U.S. Patent and Trademark Office
571-272-9303
jean.im@uspto.gov
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