To: | FIBONACCI INC. (david@law-dlc.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88228199 - FIBONACCI - N/A |
Sent: | 3/19/2019 11:45:46 AM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88228199
MARK: FIBONACCI
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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: FIBONACCI 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: 3/19/2019
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant has applied to register the mark FIBONACCI and design for “A series of non-fiction books in the field of trading and finance” in International Class 16. The mark in U.S. Registration No. 3559355 is FIBONACCI TRADER and design for “Computer software for performing multiple time frame charting analysis for providing guidance in trading either foreign or domestic stocks or futures, providing the capacity to plot indicators on three different time frames, enabling traders to display weekly and daily indicators along with intraday indicators on the same real time chart” in International Class 9. The mark in U.S. Registration No. 4803585 is FIBONACCI TRADER (in standard characters) for “Computer software for performing multiple time frame charting analysis for providing guidance in trading either foreign or domestic stocks or futures, providing the capacity to plot indicators on three different time frames, enabling traders to display weekly and daily indicators along with intraday indicators on the same real time chart” in International Class 9.
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 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. 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.
Similarity of the Marks
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).
Applicant has applied to register the mark FIBONACCI and Greek letter design. The mark in U.S. Registration No. 3559355 is FIBONACCI TRADER and snail design. The mark in U.S. Registration No. 4803585 is also FIBONACCI TRADER, but in standard characters.
It should first be noted that 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. 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)).
With regard to U.S. Registration No. 3559355, it is the wording “FIBONACCI TRADER” that is dominant over the snail design. This wording is identical to the wording in U.S. Registration No. 4803585. Likewise, in the applied-for mark, it is the wording that is dominant over the stylized style, “FIBONACCI.” Turning to the wording in general, the application is identical in part in that both the applied-for mark and the registered marks use the same term “FIBONACCI.” 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).
Therefore, the marks are identical in part, and highly similar in terms of connotation and overall commercial impression.
Similarity of the Goods
Applicant has identified “A series of non-fiction books in the field of trading and finance” in International Class 16. The marks in U.S. Registration Nos. 3559355 & 4803585 is for “Computer software for performing multiple time frame charting analysis for providing guidance in trading either foreign or domestic stocks or futures, providing the capacity to plot indicators on three different time frames, enabling traders to display weekly and daily indicators along with intraday indicators on the same real time chart” in International Class 9.
Therefore, the goods of applicant and registrant are closely related because applicant produces books about trading and finance, and registrant produces software that assists in the trading and finance fields.
Summary
In sum, applicant’s mark is identical in part and highly similar in connotation and overall commercial impression to both of the registered marks. In addition, applicant’s goods are related to the goods identified in the registrations. Thus, it is likely consumers will mistakenly believe the goods emanate from the same source. The overriding concern is not only to prevent buyer confusion as to the source of the goods, 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).
Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant has applied to register the mark FIBONACCI and design for “A series of non-fiction books in the field of trading and finance” in International Class 16.
The attached Internet evidence consists of web pages from entities in the financial services industry showing Fibonacci numbers or ratios are mathematically significant numbers that occur in financial markets that may be used to predict market trends in order to improve financial return on investment. Specifically, “Fibonacci” is used to describe the use of mathematically significant numbers or ratios to analyze stock market trends and used to describe numbers used in technical analysis to anticipate trends in financial markets.
Therefore, the wording FIBONACCI is merely descriptive of applicant’s goods because it immediately conveys to consumers that applicant’s books are provided for the specific purpose of educating purchasers regarding the use of Fibonacci numbers and ratios to predict market trends in order to improve financial return on investment.
In addition, the applied-for mark shows the wording in stylized lettering. Stylized descriptive or generic wording is registrable only if the stylization creates a commercial impression separate and apart from the impression made by the wording itself. See In re Cordua Rests., Inc., 823 F.3d 594, 606, 118 USPQ2d 1632, 1639-40 (Fed. Cir. 2016); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1561, 227 USPQ 961, 964 (Fed. Cir. 1985); TMEP §1209.03(w). Common and ordinary lettering with minimal stylization, as in this case with stylization only applying to a single letter, is generally not sufficiently striking, unique, or distinctive as to make an impression on purchasers separate from the wording. See In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1487 (TTAB 2012).
In sum, applicant’s mark is merely descriptive because it describes the subject matter of applicant’s goods and consumers are likely to perceive the proposed mark as describing a subject of the goods rather than the source of the goods.
Accordingly, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
Applicant should note the following potential grounds for refusal.
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 marks in the referenced applications. 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.
For this application to proceed, applicant must explicitly address each refusal and potentials refusal in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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. 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.
Cameron McBride
/Cameron McBride/
Examining Attorney - Trademarks
Law Office 106
(571) 272-0542
Cameron.McBride@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/.
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