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. 88232142
Mark: SOCIAL CLOUD STORAGE
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Correspondence Address:
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Applicant: DISE Technologies, LLC
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Reference/Docket No. Raichur-1
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: December 10, 2019
In the incoming correspondence of September 30, 2019, the applicant seeks to (1) amend the mark, which is not acceptable; (2) argues against the refusal under Section 2(d), which is not acceptable; (3) argues against the refusal under Section 2(e)(1), which is not acceptable. All previous argument and evidence is incorporated herein. The applicant is advised as follows:
AMENDMENT TO THE MARK
The original drawing shows the mark as “SOCIAL CLOUD COMPUTING”. The proposed amended drawing shows the mark as “SOCIAL CLOUD STORAGE”.
The USPTO cannot accept an amendment to a mark if it will materially alter the mark in the drawing filed with the original application. 37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14. An amendment to the mark is material when the USPTO would need to republish the mark with the change in the USPTO Trademark Official Gazette to fairly present the mark to the public. In re Thrifty, Inc., 274 F.3d 1349, 1352, 61 USPQ2d 1121, 1123-24 (Fed. Cir. 2001) (citing In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997)); TMEP §807.14.
That is, an amendment is material if the altered mark does not retain “the essence of the original mark” or if the new and old forms do not “create the impression of being essentially the same mark.” In re Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740, 743-44 (TTAB 1983)); see, e.g., In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1218 (TTAB 2000) (amendment from “TACILESENSE” to “TACTILESENSE” a material alteration); In re CTB Inc., 52 USPQ2d 1471, 1475 (TTAB 1999) (amendment of TURBO with a design to just the typed word TURBO without design a material alteration).
When determining materiality, the addition of any element that would require a further search of the USPTO database for conflicting marks is also relevant. In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1747 (TTAB 2012) (citing In re Pierce Foods Corp., 230 USPQ 307, 308-09 (TTAB 1986)); In re Who? Vision Sys. Inc., 57 USPQ2d at 1218-19; TMEP §807.14.
In the present case, applicant’s proposed amendment would materially alter the mark in the drawing filed with the original application because use of the term “COMPUTING” is not generic for “STORAGE”. The different terms have separate meanings and this amendment would materially alter the meaning and commercial impression of the original mark.
To avoid the application from abandoning, applicant must respond to this issue. TMEP §807.17. Applicant may respond by (1) withdrawing the request to amend the drawing, or (2) arguing that the proposed amendment is not a material alteration of the mark.
For more information about changes to the mark in the drawing after the application filing date, please go to the Drawing webpage.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark was refused because of a likelihood of confusion with the mark in U.S. Registration No. 4958078. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration. The examiner has considered the applicant’s arguments and has found that clarification is required for the services. Pending a response to that inquiry, the refusal under Section 2(d) is maintained and continued.
The examiner has considered the applicant’s arguments and has found it to be unpersuasive. The refusal under Section 2(d) is maintained and continued.
The applicant seeks registration for the mark “SOCIAL CLOUD COMPUTING” for “electronic data storage.”
The registered mark is “SOCIALCLOUD” for “advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; Promoting and marketing the goods and services of others by providing search engine optimization through social media markups and hyperlinks; Promoting the goods and services of others by providing a website featuring search engine marketing services through social media markups and hyperlinks; Promoting the goods and services of others by providing search engine results through social media markups and hyperlinks; Promoting, advertising and marketing of the brands, products, services and online websites of individuals, businesses and nonprofit organizations; Promotion, advertising and marketing of on-line websites; Providing a searchable on-line advertising website and guide featuring the goods and services of other vendors via the Internet; Providing a searchable online advertising website and informational guide featuring the goods and services of other vendors via the internet in the field of search engine optimization; Providing business information in the field of social media; Providing marketing consulting in the field of social media; Social media strategy and marketing consultancy focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutions.”
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the services, and similarity of the trade channels of the services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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). Similarity in any one of these elements may be sufficient to find the marks confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).
The marks are highly similar and share the terms “SOCIAL CLOUD.” The applicant’s use of the descriptive, if not generic, term “COMPUTING” does not obviate the similarity of the marks. Moreover, the registrant’s use of the terms as a single word does not distinguish his mark.
The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the services they identify come from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b). For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The question is whether the marks create the same overall impression. See Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).
Because the marks are highly similar and contain the terms “SOCIAL CLOUD,” they sound and look very similar and evoke similar commercial impressions, such that users of the services are likely to believe that applicant’s and registrant’s services may emanate from the same party. Thus, the marks are confusingly similar.
Relatedness of the Services
The respective services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).
The applicant offers “data storage services” and argues that the services are not related to “marketing” services, such as offered by the registrant. However, as evidence that the applicant’s “data storage services” are related to the registrant’s “marketing” and “social media” services, note the previously-attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar services as those of both applicant and registrant in this case. This evidence shows that the services listed therein are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii). The services of the parties are complimentary and may be offered by the same party.
The overriding concern is not only to prevent buyer confusion as to the source of the 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).
The marks are highly similar and share the terms “SOCIAL CLOUD” and the applicant’s services may be related to the registrant’s; thus, purchasers are likely to be confused as to the source of the applicant’s services. Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
REQUEST FOR INFORMATION
(1) Explain who the target audience is for applicant’s “data storage” services.
(2) Explain whether the use of the “data” to be stored is for “marketing” purposes or in the “marketing” industry.
See 37 C.F.R. §2.61(b); TMEP §814.
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.
The applicant is advised of this second ground for refusal:
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
Registration was refused because the applied-for mark merely names the services and describes a feature and characteristic of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
The applicant’s proposed amendment to the mark is not acceptable; therefore, the applicant’s contention that “[A]s amended, the composite applied-for-mark creates a unitary mark with a non-descriptive meaning that is separate from each individual word” is not well taken.
A mark is merely descriptive if it describes a quality, characteristic, function, feature, purpose or use of the specified services. TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).
The determination of whether a mark is merely descriptive is considered in relation to the identified services, not in the abstract. In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (finding CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). “Whether consumers could guess what the product is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
The applicant seeks registration for the mark “SOCIAL CLOUD COMPUTING” for “electronic data storage.”
“CLOUD COMPUTING” is defined by The Columbia Encyclopedia as “the delivery of shared computing resources over a network in a manner that makes accessing and configuring those resources convenient and largely independent of the use of a required location, device, and the like.” “SOCIAL” refers to a “SOCIAL” network, which is an “online service or website through which people create and maintain interpersonal relationship.” (See previously-attached definition from the online Merriam Webster Dictionary) “SOCIAL CLOUD COMPUTING” refers to the sharing of computer resources in relation to such a “SOCIAL” network. (See previously-attached excerpt from the Wikipedia.org website)
The terms “social cloud computing,” as defined on the Wikipedia.org website is “also peer-to-peer social cloud computing, is an area of computer science that generalizes cloud computing to include the sharing, bartering and renting of computing resources across peers whose owners and operators are verified through a social network or reputation system.”
A mark that combines descriptive words may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning. In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968) (holding SUGAR & SPICE not merely descriptive of bakery products because of the mark’s immediate association with the nursery rhyme “sugar and spice and everything nice”). However, the mere combination of descriptive words does not automatically create a new nondescriptive word or phrase. See, e.g., In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) (holding GROUP SALES BOX OFFICE merely descriptive for theater ticket sales services).
The applicant argues that the amended mark “create a unitary mark with a non-descriptive meaning that is separate from each individual word.” The examiner disagrees. The use of the “separate” terms in the mark does not change their individual meaning, nor does it create a new or non-descriptive meaning for the mark as a whole.
Generally, if the individual components of a mark retain their descriptive meaning in relation to the services, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes, because “each component term retains its merely descriptive significance in relation to the goods, resulting in a mark that is also merely descriptive”); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows where the evidence showed that the term “BREATHABLE” retained its ordinary dictionary meaning when combined with the term “MATTRESS” and the resulting combination was used in the relevant industry in a descriptive sense); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1663 (TTAB 1988) (holding GROUP SALES BOX OFFICE merely descriptive of theater ticket sales services, because such wording “is nothing more than a combination of the two common descriptive terms most applicable to applicant’s services which in combination achieve no different status but remain a common descriptive compound expression”). Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
As evidence that the terms are commonly used in the marketplace in relation to related services, note the previously-attached internet evidence obtained via the Google search engine. For example, see the excerpt from the dl.acm.org website discussing the book, Social Cloud Computing: A Vision for Socially Motivated Resource Sharing by Kyle Chard or in the book, Mobile Cloud Computing: Architectures, Algorithms and Applications by Debashis De, which sets forth various aspects of “SOCIAL CLOUD COMPUTING” and how various social media platforms, as well as various online gaming and streaming are “using the concept of mobile SOCIAL CLOUD COMPUTING…” (emphasis added)
Also note the excerpt from the The Dishh.com website which appears to discuss the applicant’s services and repeatedly uses the terms “SOCIAL CLOUD” and “SOCIAL CLOUD STORAGE” (applicant’s proposed mark) generically throughout the article, as in the following:
“Do you know the origin of the cloud? The majority of media have reported, over time, that the cloud began with the goal of protecting, centralizing, and managing your data. Obviously, the cloud has grown up a lot since it was conceived. Before, the cloud was simply a data repository. Today, there is social cloud storage. The use case is also different today. Nowadays, it is used for both personal and professional reasons, with high level data management and organization. The greatest impact has come with social cloud storage. Here, information is stored in one fully searchable central area controlled by the user. Organization, access, control, and customization are the four keys to social cloud storage.”
Continuing,
“Social Cloud Storage ‘enables the sharing of content directly out of your cloud storage to a community beyond your contacts. Users can share information, while creating communities of curated information through their own personal cloud storage.’”
The terms are also used descriptively, if not generically, on the Cloudcow.com website which discusses the “Social Cloud – as people become more connected it has generated another area to do business in the social networking sites. The social cloud successfully integrated personal lives with business opportunities.”
Also note the description of services, such as those offered by the applicant, on the Spectrum.ieee.org website:
“But what if the content was held by people you know? That’s at least part of the promise behind social cloud computing, which combines the trust inherent in social networks with the services provided by cloud computing. The social cloud eschews the data center in favor of a cloud infrastructure made up of millions of individual PCs, a system known as peer-to-peer cloud computing.”
In this case, the applicant’s mark is merely a combination of descriptive terms which does not create a new or unique, incongruous or nondescriptive meaning in relation to the services. Potential users would readily understand that the “data storage services” are in relation to “CLOUD COMPUTING” on “SOCIAL” networks. Accordingly, the refusal to registration on the Principal Register under Section 2(e)(1) is maintained and continued.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
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 response to this nonfinal Office action.
/Paula Mahoney/
Trademark Examining Attorney
Law Office 119
571-272-9191
paula.mahoneyuspto.gov
RESPONSE GUIDANCE
