| To: | Artisan Systems Pty Ltd (gxbesq1@gmail.com) |
| Subject: | U.S. Trademark Application Serial No. 88225742 - ARTISAN - N/A |
| Sent: | December 06, 2019 11:31:16 AM |
| Sent As: | ecom100@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
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. 88225742
Mark: ARTISAN
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Correspondence Address: Law Offices of Gene Bolmarcich
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Applicant: Artisan Systems Pty Ltd
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Reference/Docket No. N/A
Correspondence Email Address: |
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FINAL OFFICE ACTION
The USPTO must receive the 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: December 06, 2019
The trademark examining attorney notes that the following requirement has been satisfied:
See TMEP §§713.02, 714.04.
In addition, the refusal to registration issued pursuant to Section 2(d) of the Trademark Act based on a likelihood of confusion with the marks in U.S. Registration Nos. 2,601,372, 3,699,891, and 4,359,267 is withdrawn.
Summary of the Issue to Which the Applicant Must Respond
Refusal – Section 2(d) – Likelihood of Confusion – Final
In the case at hand, the applicant has applied for the mark “ARTISAN” (in standard characters) and has identified its services as “SOFTWARE AS A SERVICE (SAAS) SERVICES FEATURING NON-DOWNLOADABLE COMPUTER SOFTWARE FOR THE COLLECTION, EDITING, ORGANIZING, MODIFYING, BOOK MARKING, TRANSMISSION, STORAGE, AND SHARING OF DATA AND INFORMATION, FOR USE IN CONNECTION WITH SPECIFYING, DESIGNING, DISCUSSING, CLARIFYING AND APPROVING THE DETAILED INFORMATION THAT DESCRIBES HOW ONE OR MORE FEATURES WITHIN A NEW OR EXISTING SOFTWARE PRODUCT, SHOULD BE IMPLEMENTED AND DEVELOPED; NONE OF THE FOREGOING INCLUDING SOFTWARE FOR CREATING AND MANAGING THE CONTENT OF WEB-BASED TRAINING COURSES, OR PHOTOGRAPHS AND DIGITAL SCRAPBOOKS.”
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.
Registration No. 4,013,741
In this case, the registered mark is “ARTISAN” (in standard characters) and the goods in the registration are identified as “Computer software, namely, computer software for the manipulation of digital content which may include digital media; Computer software for allowing users to: manipulate and edit digital media, comment on and describe digital media and digital media content, create stories, and create stories incorporating digital media content, including arranging, combining, creating, editing, personalizing, printing, processing, sharing and viewing digital content that may include digital media, stories, comments, descriptions or combinations thereof.”
Comparison of the Marks
In the present case, the applicant’s mark is “ARTISAN” (in standard characters) and the registrant’s mark is “ARTISAN” (in standard characters). 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 the applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar for purposes of review pursuant to Section 2(d) of the Trademark Act.
Comparison of the Goods and Services
Determining likelihood of confusion is based on the description of the goods and 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)). The wording “Computer software, namely, computer software for the manipulation of digital content which may include digital media” and “Computer software for allowing users to: manipulate and edit digital media, comment on and describe digital media and digital media content, create stories, and create stories incorporating digital media content, including arranging, combining, creating, editing, personalizing, printing, processing, sharing and viewing digital content that may include digital media, stories, comments, descriptions or combinations thereof” is clearly understandable and does not require clarification to understand the meaning of the identification.
In this case, the application and registration use broad wording to describe certain of the identified goods and services. Accordingly, the application is presumed to encompass all types of software as a service (SAAS) services featuring non-downloadable computer software for the collection, editing, organizing, modifying, book marking, transmission, storage, and sharing of data and information, for use in connection with specifying, designing, discussing, clarifying, and approving the detailed information that describes how one or more features within a new or existing software product should be implemented and developed, but not including software for creating and managing the content of web-based training courses, or photographs and digital scrapbooks, including software as a service (SAAS) services featuring non-downloadable computer software for the collection, editing, organizing, modifying, book marking, transmission, storage, and sharing of data and information, in the nature of digital content, over computer and communications networks, for use in connection with specifying, designing, discussing, clarifying, and approving the detailed information that describes how one or more features within a new or existing software product should be implemented and developed, but not including software for creating and managing the content of web-based training courses, or photographs and digital scrapbooks.
Similarly, the registrant’s identification is presumed to encompass all types of computer software for all types of manipulation of all types of digital content which may include digital media, including computer software for the manipulation, in the nature of editing, of digital content, in the nature of data and information, via computer and communications networks, for use in connection with specifying, designing, discussing, clarifying, and approving the detailed information that describes how one or more features within a new or existing software product should be implemented and developed, but not including software for creating and managing the content of web-based training courses, or photographs and digital scrapbooks. 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).
Because the identifications for both the registrant’s software goods and the applicant’s software services are broad enough to encompass the provision of computer software to users for the manipulation of digital content in the nature of data and information via computer and communications networks, for use in connection with specifying, designing, discussing, clarifying, and approving the detailed information that describes how one or more features within a new or existing software product should be implemented and developed, but not including software for creating and managing the content of web-based training courses, or photographs and digital scrapbooks, the goods and services of the parties are considered to be related for purposes of review pursuant to Section 2(d) of the Trademark Act.
Channels of Trade
The goods and 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)).
Sophistication of Consumers
The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163).
Conclusion
When encountering related goods and services offered under identical marks, a consumer is likely to have the mistaken belief that the goods and services come from the same source.
Because this likelihood of confusion with the mark in U.S. Registration No. 4,013,741 exists, the refusal to registration of the applied-for mark issued pursuant to Section 2(d) of the Trademark Act must be maintained and made FINAL.
Registration No. 5,191,520
In this case, the registered mark is “ARTESYN” (in standard characters) and the goods in the registration include “computer hardware and computer software for electronic transmission of voice, video and data over computer and communications networks.”
Comparison of the Marks
The applied-for mark “ARTISAN” (in standard characters) is confusingly similar in sound and commercial impression to the registered mark “ARTESYN” (in standard characters).
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 the case at hand, the minor differences in the spellings of the marks at issue is unlikely to be noted and retained by consumers upon cursory inspection of the marks at issue.
Based on the foregoing, the marks are considered to be confusingly similar for purposes of review pursuant to Section 2(d) of the Trademark Act.
Comparison of the Goods and Services
The applicant has argued that because, in its opinion, the “registrations clearly describe software that is embedded in hardware,” the goods and services of the parties are sufficiently distinct such that a likelihood of confusion should not be found. The examining attorney has considered the applicant’s argument, but must respectfully disagree with the applicant’s conclusion.
Determining likelihood of confusion is based on the description of the goods and 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)). The wording “computer hardware and computer software for electronic transmission of voice, video and data over computer and communications networks” is clearly understandable and does not require clarification to understand the meaning of the identification.
In this case, the application and registration use broad wording to describe certain of the identified goods and services. Accordingly, the application is presumed to encompass software as a service (SAAS) services featuring all types of non-downloadable computer software for the collection, editing, organizing, modifying, book marking, transmission, storage, and sharing of data and information, for use in connection with specifying, designing, discussing, clarifying, and approving the detailed information that describes how one or more features within a new or existing software product should be implemented and developed, but not including software for creating and managing the content of web-based training courses, or photographs and digital scrapbooks, including software as a service (SAAS) services featuring non-downloadable computer software for the collection, editing, organizing, modifying, book marking, transmission, storage, and sharing of data and information over computer and communications networks, for use in connection with specifying, designing, discussing, clarifying, and approving the detailed information that describes how one or more features within a new or existing software product should be implemented and developed, but not including software for creating and managing the content of web-based training courses, or photographs and digital scrapbooks.
Similarly, the registrant’s identification is presumed to encompass all types of computer software for electronic transmission of voice, video and data over computer and communications networks, including computer software for electronic transmission of data over computer and communications networks for use in connection with specifying, designing, discussing, clarifying, and approving the detailed information that describes how one or more features within a new or existing software product should be implemented and developed, but not including software for creating and managing the content of web-based training courses, or photographs and digital scrapbooks. 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).
Because the identifications for both the registrant’s software goods and the applicant’s software services are broad enough to encompass the provision of software to users for electronic transmission of data over computer and communications networks, for use in connection with specifying, designing, discussing, clarifying, and approving the detailed information that describes how one or more features within a new or existing software product should be implemented and developed, but not including software for creating and managing the content of web-based training courses, or photographs and digital scrapbooks, the goods and services of the parties are considered to be related for purposes of review pursuant to Section 2(d) of the Trademark Act.
Channels of Trade
The goods and 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)).
Sophistication of Consumers
The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163).
Conclusion
When encountering related goods and services offered under confusingly similar marks, a consumer is likely to have the mistaken belief that the goods and services come from the same source.
Because this likelihood of confusion with the mark in U.S. Registration No. 5,191,520 exists, the refusal to registration of the applied-for mark issued pursuant to Section 2(d) of the Trademark Act must be maintained and made FINAL.
Registration No. 5,396,637
In this case, the registered mark is “ARTESYN EMBEDDED TECHNOLOGIES” (in stylized lettering, with a disclaimer of “embedded technologies”) and the goods in the registration include “computer hardware and computer software for electronic transmission of voice, video and data over computer and communications networks.”
Comparison of the Marks
The applied-for mark “ARTISAN” (in standard characters) is confusingly similar in commercial impression to the registered mark “ARTESYN EMBEDDED TECHNOLOGIES” (in stylized lettering, with a disclaimer of “embedded technologies”).
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).
As noted above, 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).
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).
As discussed above, there is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv). In the case at hand, the non-disclaimed portion of the registered mark could clearly be pronounced the same as the applied-for mark.
Because, in the case at hand, the non-disclaimed portion of the registered mark can be pronounced the same as the applied-for mark, the marks are considered to be confusingly similar for purposes of review pursuant to Section 2(d) of the Trademark Act.
Comparison of the Goods and Services
The applicant has argued that because, in its opinion, the “registrations clearly describe software that is embedded in hardware,” the goods and services of the parties are sufficiently distinct such that a likelihood of confusion should not be found. The examining attorney has considered the applicant’s argument, but must respectfully disagree with the applicant’s conclusion.
Determining likelihood of confusion is based on the description of the goods and 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)). The wording “computer hardware and computer software for electronic transmission of voice, video and data over computer and communications networks” is clearly understandable and does not require clarification to understand the meaning of the identification.
In this case, the application and registration use broad wording to describe certain of the identified goods and services. Accordingly, the application is presumed to encompass software as a service (SAAS) services featuring all types of non-downloadable computer software for the collection, editing, organizing, modifying, book marking, transmission, storage, and sharing of data and information, for use in connection with specifying, designing, discussing, clarifying, and approving the detailed information that describes how one or more features within a new or existing software product should be implemented and developed, but not including software for creating and managing the content of web-based training courses, or photographs and digital scrapbooks, including software as a service (SAAS) services featuring non-downloadable computer software for the collection, editing, organizing, modifying, book marking, transmission, storage, and sharing of data and information over computer and communications networks, for use in connection with specifying, designing, discussing, clarifying, and approving the detailed information that describes how one or more features within a new or existing software product should be implemented and developed, but not including software for creating and managing the content of web-based training courses, or photographs and digital scrapbooks.
Similarly, the registrant’s identification is presumed to encompass all types of computer software for electronic transmission of voice, video and data over computer and communications networks, including computer software for electronic transmission of data over computer and communications networks for use in connection with specifying, designing, discussing, clarifying, and approving the detailed information that describes how one or more features within a new or existing software product should be implemented and developed, but not including software for creating and managing the content of web-based training courses, or photographs and digital scrapbooks. 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).
Because the identifications for both the registrant’s software goods and the applicant’s software services are broad enough to encompass the provision of software to users for electronic transmission of data over computer and communications networks, for use in connection with specifying, designing, discussing, clarifying, and approving the detailed information that describes how one or more features within a new or existing software product should be implemented and developed, but not including software for creating and managing the content of web-based training courses, or photographs and digital scrapbooks, the goods and services of the parties are considered to be related for purposes of review pursuant to Section 2(d) of the Trademark Act.
Channels of Trade
The goods and 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)).
Sophistication of Consumers
The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163).
Conclusion
When encountering related goods and services offered under confusingly similar marks, a consumer is likely to have the mistaken belief that the goods and services come from the same source.
Because this likelihood of confusion with the mark in U.S. Registration No. 5,396,637 exists, the refusal to registration of the applied-for mark issued pursuant to Section 2(d) of the Trademark Act must be maintained and made FINAL.
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.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/S. Michael Gaafar/
Michael Gaafar
Staff Attorney
Law Office 100
571-272-8259
Informal inquiries: michael.gaafar@uspto.gov
RESPONSE GUIDANCE
