To: | Quartzdyne, Inc. (trademark@traskbritt.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88197598 - KNAC - 695-TM3632US |
Sent: | 1/29/2019 4:11:05 PM |
Sent As: | ECOM100@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88197598
MARK: KNAC
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Quartzdyne, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 1/29/2019
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Similarity of the Marks
Applicant’s mark is KNAC (in standard character form) for “Computer application software for mobile device, namely, software for remotely capturing images and video, streaming of audio visual and audiovisual material via a global computer network” in Class 9. Registrant’s mark is GOKNACK (also in standard character) for “Platform as a service (PAAS) featuring computer software platforms for users to upload images, writings, art, videos, and creative works, so as to monetize uploaded content.” in International Class [U1] 42.
KNAC and GOKNACK create the same overall commercial impression. The applicant’s mark is comprised in its entirety of the root term of the registrant’s mark. The differences between them are slight (the presence of “GO” and the ending “K” in the registrant’s mark), and do not overcome a likelihood of confusion.
Further, when comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
In this instance, consumers are likely to focus on and remember the key term KNAC or the phonetic equivalent KNACK in the marks and assume a connection between the respective parties
Relatedness of the Goods
The applicant’s “Computer application software for mobile device, namely, software for remotely capturing images and video” in Class 9 in particular is closely related to registrant’s “Platform as a service (PAAS) featuring computer software platforms for users to upload images, writings, art, videos, and creative works, so as to monetize uploaded content” in Class 42. Both are software that obtain images and videos.
It is noted that the applicant’s software is a good in Class 9 and the registrant’s is a software service in Class 42. Nevertheless, they are both software that, as identified, perform similar functions. The fact that the form of the software of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods or services, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.
Further, the applicant’s identified goods have no restrictions as to channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers” as that of the registrant. 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.
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
IDENTIFICATION OF GOODS
The identification of goods must be clarified as explained below.
1) The wording “software for remotely capturing images and video” in the identification must be clarified by amending to specify the purpose or function of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).
The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The following are examples of acceptable identifications for software in International Class 9: “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.”
2) Further, the wording “streaming of audio visual and audiovisual material via a global computer network” must be clarified to indicate that it is a function/purpose of the applicant’s computer software and not a separate streaming service.
Applicant may adopt the following wording, if accurate:
Downloadable computer application software for mobile device, namely, software used in connection with sensors for remotely capturing images and video in the downhole oil and gas industry and downloadable software for streaming of audio visual and audiovisual material via a global computer network.
The examining attorney refers to the applicant’s webpage attached to this Office action.
GENERAL INFORMATION
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.
/Hope E. Slonim/
Hope E. Slonim
Staff Attorney
Law Office 100
571-272-9661
Informal inquiries: hope.slonim@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.
[U1]The mark and the goods are clearly identified early on in the Office action. Where the identification of goods and/or services in the application is lengthy, an attempt should be made to summarize the items, rather than simply cutting-and-pasting the entire listing into the Office action. See Appendix to the “Excellent Writing and Evidence Guidelines” for samples.