Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88231118 HIVE(Standard Characters, see http://uspto.report/TM/88231118/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

RESPONSE TO Refusal of Registration

 

I. Refusal of Registration

The Examining Attorney has refused registration under Section 2(d) of the Trademark Act on the basis that Applicant’s mark, HIVE (“Applicant’s Mark”), in International Class 042, is likely to cause confusion, mistake or deceive with respect to the mark HYVE TECH having Registration No. 5,638,871 (“Registrant’s Mark”) in International Class 009 for:

 

Computer software for business management, namely, sales and manufacturing transaction management, sale transaction processing, inventory management, delivery order management, contact management, vendor management, marketing, and scheduling.

 

The Examining Attorney further notes Applicant’s Mark may be refused registration under Trademark Act Section 2(d) if one or more of the pending trademark applications listed below registers where a likelihood of confusion may exist with one or more of these pending applications having a senior filing date.  The referenced pending applications are the HIVE mark having Serial No. 79/216,026, the HIVE BOX mark having Serial No. 87/763,864 and the LEGALHIVE mark having Serial No. 87/780,626 (collectively referred to herein as the “Pending Applications”).

 

With regard to the Examining Attorney’s reference to the Pending Applications, in the event that a refusal should be entered under Section 2(d) in view of one or more of the Pending Applications, Applicant states that the arguments submitted in Section III, infra are applicable to the Pending Applications but reserves the right to submit particular arguments in response to such a refusal, as explained in Section IV, infra.  With regard to the requirement that Applicant amend the identification of services, Applicant has amended its identification of services, to remove the “installation” language that the Examining Attorney has identified as unclear, in Section II, infra.  With regard to the Examining Attorney’s refusal based on Trademark Act Section 2(d), Applicant respectfully requests the Examining Attorney reconsider the refusal for the reasons set forth in Section III, infra, withdraw the Section 2(d) refusal to register and approve Applicant’s mark for publication.

 

II. Amendment to Identification of Services

In response to the Examining Attorney’s concerns regarding the identification of services in the above referenced application, Applicant hereby amends its identification of services to eliminate any reference to “installation” so that it now reads as follows:

 

Computer software development in the field of transportation, warehousing, bid management, inbound shipments, outbound delivery and invoicing; Providing temporary use of on-line non-downloadable software and applications for transportation in the nature of freight shipment, warehousing, bid management, managing inbound shipments, managing outbound deliveries and invoicing

 

The services covered by Applicant’s application (“Applicant’s Services”) shall remain in International Class 042.

 

III. No Likelihood of Confusion with Registrant’s Mark

 

A. Differences between Applicant’s Services and Registrant’s Goods

The Examining Attorney concludes that Applicant’s mark and Registrant’s mark are likely to be confused where the Applicant’s services and Registrant’s goods are related based on the description of the services and goods stated in the respective application and registration at issue.  Applicant submits that the amendments to the identification of services in the application to register Applicant’s mark more clearly distinguish the differences between Applicant’s services and the goods that are the subject of the Registrant’s mark, and as such, there is no likelihood of confusion between the respective marks.

 

It is well established that a likelihood of confusion is not present merely because two parties use similar or identical marks.  Where the goods or services of the respective parties are different and unrelated, use of an identical mark does not automatically give rise to a likelihood of confusion.  See In re American Olean Tile Co., Inc., 1 U.S.P.Q.2d 1823 (T.T.A.B. 1986) (building products which were both sold under MILANO mark were not sufficiently related to cause confusion where applicant’s goods were limited to ceramic tile and the registered mark cited against it was used in connection with wood doors); Amcor Inc. v. Amcor Industries, Inc., 210 U.S.P.Q. 70, 78 (T.T.A.B. 1981) (where applicant and opposer both used an identical mark, AMCOR, the Board required the opposer “to show that [the goods] are related in some viable fashion” and/or that they were marketed and prom   oted in such a way that would lead consumers to reasonably assume they had a common origin).  Applicant’s services are different and unrelated to the goods listed in the Registrant’s mark.

 

Applicant’s description of services and Registrant’s descriptions of goods comport to how the respective services and goods are actually used.  Notably, these uses are unrelated and the respective users would recognize these differences.  Applicant submits the chart below showing the respective description of goods and services along with a written description of the goods and services as stated on Registrant’s and Applicant’s websites, respectively. 

 

 

When the description of goods and services for the respective marks are compared to their actual use, Applicant submits that it is evident Registrant’s goods are particularly limited to software for business management that relate to Cannabusiness, such as point-of-sale and delivery management.  These software goods are unrelated to software development and software application for project-based transportation, warehousing and vendor management as described in Applicant’s description of services which similarly comport to how the software services are actually used.

 

In addition to the differences in the respective services and goods, the services and goods are sold to different classes of purchasers, both of which are sophisticated buyers, and through different channels of trade.  Accordingly, with all of these differences between Applicant’s services and Registrant’s goods, their channels of trade and the sophistication of two different classes of buyers, Applicant submits that that there can be no likelihood of confusion.

 

i. Different Nature of the Software & Unrelated Uses

As noted by the Examining Attorney, both Applicant’s services and Registrant’s goods relate to software.  However, the distinction between the particular software development services and software application for project based transportation, warehousing and similar services covered by Applicant’s mark and the specific software goods for business management covered by the Registrant’s mark is very significant.

 

The software development services and software application within the scope of Applicant’s mark are made to enhance project management efficiency by monitoring project utility inbound and outbound transportation, material and equipment warehousing, vendor information and similar project-centric information.  For example, the project management system may be used by a commercial contractor as a commercial building is being completed.  In operation, the Applicant’s services are used for subcontractor bid management, inbound materials shipment, material and equipment warehousing, outbound delivery and invoicing.  Conversely, the Registrant’s software goods, according to Registrant’s website, are particularly suited for cannabis companies seeking point-of-sale systems and delivery management solutions include business-to-consumer transaction processing, inventory management, customer monitoring, loyalty programs, and business marketing.  For example, a cannabis sales company may use Registrant’s software goods for managing inventory, tracking customer orders, tracking customer data and targeting marketing efforts based on collected data.

 

The distinction between Applicant’s software development services and software application as compared with Registrant’s software goods is derived from the very different characteristics of use.  Software that simply monitors business variables such as inventory levels and consumer trends in a cannabis business is a software product that is particularly intended for retail or other business-to-consumer businesses.  Conversely, the software development and the software application for particular project based work are used in a business-to-business environment such as where a general contractor can manage vendors, project materials, equipment, and other project based utilities and information while permitting access to other involved parties, such as the customer, project managers and vendors.

 

Accordingly, the software services covered by Applicant’s mark is in a completely different category from the software covered by the Registrant’s mark and there is no likelihood of confusion because of the very different nature and uses of the respective goods.  Applicant’s services and the Registrant’s goods do not have a common or related use.

 

ii. Different Purchasers and Users of Goods

Applicant’s mark and the Registrant’s mark are not likely to be confused because Applicant’s services and the Registrant’s goods will be purchased and used by different categories of buyers.  The respective goods are so different in nature and function, that buyers with very different specialties would be necessary to make informed decisions regarding the purchase of the products and to make use of the products.  For the reasons discussed below, project managers and parties to a business-to-business project would be the users of the services associated with the Applicant’s mark whereas business-to-consumer cannabis e-commerce store managers would be the buyers of the Registrant’s goods.

 

The software services covered by Applicant’s mark is for use in enhancing project management efficiency by monitoring project utilities inbound and outbound transportation, material and equipment warehousing, vendor information and similar project-centric information  As described above, the users of such software services are parties to a business-to-business project, such general contractors, vendors and project managers who are collectively building a hotel, adding a franchise store, renovating an assisted living facility or completing a similar project.  These types of users would be the ones who know the features and functionality desired from such a program and would acquire and maintain these types of services for the respective projects.

 

On the other hand, the hardware and software covered by the Registrant’s mark is particularly suited for improving business-to-consumer business with their transaction processing, inventory management, customer monitoring and loyalty programs, and business marketing on a day-to-day basis, such as in an online cannabis store.

 

In comparing the respective users of Registrant’s goods and Applicant’s services directly, a store manager responsible for controlling inventory and managing customer satisfaction, and overall sales would not be involved in the construction of a brick and mortar store.  Similarly, the general contractor, subcontractors and other parties to the building construction project would not be involved in the day to day operation of the store after the building is completed.  Accordingly, the respective purchasers and users are different and are unlikely to confuse the services associated with Applicant’s mark with goods associated with Registrant’s mark.

 

iii. Sophisticated Purchasers

Although there are different users of Applicant’s services and buyers of Registrant’s goods, the respective buyers of these goods are similar in that they are sophisticated buyers.  Both Applicants services and Registrant’s goods are sold in the environment of a business negotiation rather than a retail environment, and each of the respective software services and goods require substantial investment which the buyers consider upon careful thought and deliberation.  Given the costs of these respective software development services and software applications, the buyers typically negotiate the purchase of the goods and do not purchase the goods or services impulsively.  Accordingly, both Applicant’s services and Registrant’s goods are purchased with a great care and with a high level of discrimination.  Therefore, not only do the class of buyers for Applicant’s services differ from the class of buyers for Registrant’s goods, both classes of buyers are sophisticated in nature further avoiding any likelihood of confusion.

 

When the visual and aural differences between the marks in their entireties, as explained below, are taken with the differences between the Applicant’s services and Registrant’s goods, it is clear that Registrant’s Mark and Applicant's Mark are not likely to be confused.  Accordingly, Applicant respectfully requests reconsideration of the initial refusal.

 

B. Visual and Aural Differences between the Marks

The Examining Attorney also concludes that Applicant’s mark is so similar to Registrant’s mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of Applicant’s services based on the Registrant’s mark discussed below.  Particularly, the Examining Attorney notes that the Applicant’s mark is confusingly similar to the HYVE TECH mark based on the conclusion that the marks are similar in structure, sound, and commercial impression because they share related dominant terms “HIVE” and “HYVE”.

 

The Trademark Trial & Appeal Board has consistently held that “it is well settled that marks must be considered in their entireties, not dissected or split into component parts and each part compared with other parts.” See Genesco Inc. v. Martz, 66 USPQ2d 1260 (TTAB 2003).  In Genesco, the Board explains that “it is the entire mark which is perceived by the purchasing public, and therefore, it is the entire mark that must be compared to any other mark.”

 

As in Genesco, Applicant’s mark HIVE and Registrant’s mark HYVE TECH must be considered in their entireties rather than dissected into their component parts.  Even where the Registrant has disclaimed the “TECH” term, the overall mark that must be evaluated is HYVE TECH which has a different visual, aural, and commercial impression than HIVE. 

 

Applicant's mark is drastically different in its visual appearance from the Registrant’s mark cited by the Examining Attorney. Because the marks must be considered in their entirety, the term HIVE on its own creates a markedly different visual appearance from HYVE TECH. While both of the marks contain a related terms, i.e. “HIVE” and “HYVE”, the addition of the “TECH” term in Registrant’s mark is telling where Applicant’s mark notably does not include any accompanying term.  Further, still, although “HIVE” and “HYVE” are related, they do not share the same spelling and are visually distinct.  Thus, when taken as a whole, a reasonable consumer would recognize the visual differences between the marks and confusion would be highly unlikely.

 

Spoken aloud, HYVE TECH does not sound similar to HIVE wherein the addition of the “TECH” term drastically changes the overall aural impression.  Accordingly, there is unlikely to be confusion among consumers who hear Registrant’s Mark and Applicant's Mark due to the lack of aural similarity overall.

 

When the visual and aural differences between the marks in their entireties are taken with the differences between the Applicant’s Services and Registrant’s Goods as explained above, it is clear that Registrant’s Mark and Applicant's Mark are not likely to be confused.  Accordingly, Applicant respectfully requests reconsideration of the initial refusal.

 

IV. No Likelihood of Confusion with Pending Applications

With regard to the cited pending applications, Applicant submits that the arguments submitted in Section III, supra, are also applicable to the pending applications. 

 

Applicant particularly submits that the goods and services offered in connection with the Pending Applications each relate to a different nature and use of software than Applicant’s services, are purchased by different classes of buyers, and that each differing buyer class is sophisticated in their purchase of the respective goods and services.  Accordingly, as explained with regard to the Registrant’s mark in Section III(A)(i-iii), supra, there is no likelihood of confusion between Applicant’s mark and the Pending Applications based on the same.

 

In addition, Applicant initially states that Applicant’s mark on its face is visually and aurally distinct and carries with it a different connotation than the HIVE BOX mark and the LEGALHIVE mark as explained with regard to Registrant’s mark in Section III(B), supra.  Accordingly, there is no likelihood of confusion between Applicant’s mark and the HIVE BOX mark or the LEGALHIVE mark based on the same.

 

In the event that one or more of the pending applications referenced be the Examining Attorney registers and refusal to register Applicant’s Mark is subsequently entered under Section 2(d), Applicant reserves the right to submit particular arguments in response to such a refusal.

 

V. Remarks

Applicant respectfully requests reconsideration of the refusal to register on the basis of Trademark Act Section 2(d), citing Registration No. 5,638,871.  Applicant believes that it is entitled to registration for the reasons set forth above.

 

The remaining issues raised in the instant action have been addressed herein.  Entry of this amendment, withdrawal of the Section 2(d) refusal to register, and approval for publication are respectfully requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Computer software development in the field of transportation, warehousing, bid management, inbound shipments, outbound delivery, installation and invoicing; Providing temporary use of on-line non-downloadable software and applications for transportation, warehousing, bid management, inbound shipments, outbound delivery, installation and invoicing
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 07/31/2017 and first used in commerce at least as early as 07/31/2017 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Computer software development in the field of transportation, warehousing, bid management, inbound shipments, outbound delivery, installation and invoicing; Computer software development in the field of transportation, warehousing, bid management, inbound shipments, outbound delivery, and invoicing; Providing temporary use of on-line non-downloadable software and applications for transportation, warehousing, bid management, inbound shipments, outbound delivery, installation and invoicing; Providing temporary use of on-line non-downloadable software and applications for transportation, warehousing, bid management, inbound shipments, outbound delivery, and invoicingClass 042 for Computer software development in the field of transportation, warehousing, bid management, inbound shipments, outbound delivery, and invoicing; Providing temporary use of on-line non-downloadable software and applications for transportation, warehousing, bid management, inbound shipments, outbound delivery, and invoicing
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 07/31/2017 and first used in commerce at least as early as 07/31/2017 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /Dennis JM Donahue III/     Date: 04/22/2019
Signatory's Name: Dennis JM Donahue III
Signatory's Position: Attorney of Record, Missouri State Bar Member

Signatory's Phone Number: 314-989-0807

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88231118
Internet Transmission Date: Mon Apr 22 17:24:32 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201904221724328
98411-88231118-6206bc8a7212e44fb78ea96dd
75d52bf5c6f737ff3fd512978841ae3f7b8073a1
-N/A-N/A-20190422170204835273