UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 3/28/2019

 

 

INTRODUCTION

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

SUMMARY OF ISSUES:

• Prior-Filed Applications Advisory
• Section 2(d) Refusal – Likelihood of Confusion
• Amended Identification of Goods Requirement

 

 

PRIOR-FILED APPLICATIONS ADVISORY

 

The filing dates of pending U.S. Application Serial Nos. 87774341, 87953770, 88040265, 88046090, 88105322, and 88125160 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

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.

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3922965, 3953286, 4723056, 4849649, 4858454, 4980966, 4989475, 5102059, 5365395, 5514836, and 5636290.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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.

 

The applied-for mark is “FS” for:

 

            “Computer e-commerce software to allow users to perform electronic business transactions via mobile devices, and local and global computer networks; Computer software applications to assist agricultural professionals with the inspection, research, data collection and analysis, spectral sampling, and information on crop health and precision agriculture methods and technology; Computer software applications for agricultural, automotive, energy, and industrial uses; Computer software applications to assist with product selection in the automotive, energy, fuel, grease, lubricant, and oil sectors; Computer software for budgeting, forecasting, consolidation of financial data and financial reporting, for use in financial reporting or analysis; Computer software for creating searchable databases of information and data; Computer software for monitoring the operation of mechanized agricultural equipment during agricultural operations; Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; Computer software, namely, electronic financial software that accommodates multiple types of payment and debt transactions in an integrated mobile device and web based environment; Computer software that provides business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Downloadable mobile applications for accessing, planning, and managing information for use in the fields of agriculture, agronomy, automotive, energy, horticulture, and industrial equipment; Downloadable mobile applications for recording field and crop observations related to pest pressure, tracking field conditions with GPS-enabled maps, and generating crop scouting reports; Downloadable computer software for use by customers to manage data relating to farm inputs, costs and crop yield results; Providing decision support systems comprising computer hardware and software in the field of precision agriculture and variable rate technology; Providing decision support systems comprising computer hardware and software in the fields of agriculture, agronomy, automotive, energy, horticulture, and industrial equipment; Simulators for driving or control of vehicles and farm equipment; Software applications for use with mobile phones, tablet computers, mobile telecommunication devices, and personal computers, namely, software for assisting agricultural professionals with the inspection, research, data collection and analysis, spectral sampling, and information on crop health and precision agriculture methods and technology; Software for accessing, planning, and managing information for use in the fields of agriculture, agronomy, automotive, energy, horticulture, and industrial equipment” in International Class 009.

 

 

The mark in Registration No. 3922965 (“the ‘965 mark”) is “FSDATA” for:

 

            “Computer software for use in programming, data collection, data storage, data analysis and report generation of fluid flow meters and wastewater sampler products” in International Class 009.

 

 

The mark in Registration No. 3953286 (“the ‘286 mark”) is “FS FORENSIC SOLUTIONS LLC FORENSIC AND INVESTIGATIVE ACCOUNTANTS” and design for, in pertinent part:

 

            “Forensic and investigative accounting; providing analysis in the field of economics, namely, economic damage analysis; electronic data analytics, namely, business data analysis; asset tracing services, namely, providing electronic tracking of intellectual and industrial property assets to others, providing tracking services and information concerning tracking of assets in transit; account auditing, namely, cost auditing” in International Class 035.

 

 

The mark in Registration No. 4723056 (“the ‘056 mark”) is “FS INVESTMENTS” for, in pertinent part:

 

            “Investment of funds for others; management of investment of funds for others; investment management services; Business Development Company funding services to small and mid-sized businesses; Business Development Company services, namely, providing financing to small and mid-sized businesses; Business Development Company fund management; Business Development Company financing; mutual fund brokerage, distribution, investment; investment administration, distribution, and management of mutual funds; financial portfolio and investment management; investment advisory services; investment consultation; financial asset management; stock brokerage services; fund investment consultation; funds investment; asset allocation services” in International Class 036.

 

 

The mark in Registration No. 4849649 (“the ‘649 mark”) is “FS” and design for:

 

            “Business organisation and management consulting services” in International Class 035.

 

 

The mark in Registration No. 4858454 (“the ‘454 mark”) is “FS” and design for:

 

            “Computer software for automatically importing, cleaning and managing data for immediate analysis, regardless of the input source and analyzes and presents the analysis in a user-friendly graphic format; Computer software for automatically importing, cleaning and managing data for immediate analysis, regardless of the input source and analyzes and presents the analysis in a user-friendly graphic format that may be downloaded from a global computer network” in International Class 009.

 

 

The mark in Registration No. 4980966 (“the ‘966 mark”) is “FS” in stylized format for, in pertinent part:

 

            “Providing downloadable computer software over a global computer network that provides geographic maps, makes a determination on flood zones, flood information, and creates a flood data file to mobile smart devices, for real estate risk assessment, mortgage, insurance and financial services purposes” in International Class 009, and

 

            “Providing real estate flood zone determination services, namely, inspecting, evaluating, assessing real estate properties to determine if the real estate properties are in a flood zone hazard area for insurance, mortgage, and financial services purposes; flood insurance, namely, providing real estate flood insurance; financial risk assessment, namely, providing flood risk analysis information and making flood hazard determinations of residential and commercial properties for insurance purposes” in Class 036.

 

 

The mark in Registration No. 4989475 (“the ‘475 mark”) is “FS INVESTMENTS” in stylized format for:

 

            “Investment of funds for others; management of investment of funds for others; investment management services; Business Development Company funding services to small and mid-sized businesses; Business Development Company services, namely, providing financing to small and mid-sized businesses; Business Development Company fund management; Business Development Company financing; mutual fund brokerage, distribution, investment; investment administration, distribution, and management of mutual funds; financial portfolio and investment management; investment advisory services; investment consultation; financial asset management; stock brokerage services; fund investment consultation; funds investment; asset allocation services” in International Class 036.

 

 

The mark in Registration No. 5102059 (“the ‘059 mark”) is “FS INVESTMENT SOLUTIONS” for:

 

            “Investment of funds for others; management of investment of funds for others; investment management services; Business Development Company funding services to small and mid-sized businesses; Business Development Company services, namely, providing financing to small and mid-sized businesses; Business Development Company fund management; Business Development Company financing; mutual fund brokerage, distribution, investment; investment administration, distribution, and management of mutual funds; financial portfolio and investment management; investment advisory services; investment consultation; financial asset management; stock brokerage services; fund investment consultation; funds investment; asset allocation services; financial services, namely, broker/dealer services on securities exchanges and over-the-counter markets” in International Class 036.

 

 

The mark in Registration No. 5365395 (“the ‘395 mark”) is “FS” in stylized format for:

 

            “Providing on-line information regarding personal finances, financial risk assessment, and budgeting” in International Class 036,

 

            “Educational services, namely, providing electronic courses in the field of personal finances that feature the teaching of a scale to determine financial health relative to personal finance and the distribution of course materials in connection therewith including in electronic video and audio formats and printed formats” in International Class 041, and

 

            “Providing temporary online use of non-downloadable software for predictive modeling in the fields of personal or customer finances, account management, and risk assessment” in International Class 042.

 

 

The mark in Registration No. 5514836 (“the ‘836 mark”) is “FS” in stylized format for:

 

            “Computer software and downloadable computer software used to manage, secure, store, back-up, synchronize, recover and share data, documents, files, and information via global computer networks” in International Class 009, and

 

            “Computer services, namely, data recovery services, data security consultancy and computer virus protection system services and integration of private and public cloud computing environments; Providing temporary use of non-downloadable computer software used to manage, secure, store, back-up, synchronize, recover and share data, documents, files, and information via global computer networks” in Internationals Class 042.

 

 

The mark in Registration No. 5636290 (“the ‘290 mark”) is “FS ONE” for:

 

            “Flight simulators for aircraft” in International Class 009.

 

 

Similarities of the Marks

 

Applicant’s mark is confusingly similar to registrants’ 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).

 

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).

 

When evaluating a composite mark consisting of words and a design, such as applicant’s mark and the ‘286, ‘649, ‘454, ‘966, ‘475, ‘395, and ‘836 marks, 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 and/or services.  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)).

 

In the present case, all the marks comprise the initial wording “FS”.  Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

Further, matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).   Accordingly, 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).

 

Here, the ‘286, ‘056, ‘475, and ‘059 marks disclaim all their additional wording appearing after “FS”.  In the ‘965 mark, the wording “DATA” is descriptive of the mark’s identified “data collection, data storage, [and] data analysis” software goods {emphasis added}.  Thus, these additional descriptive wording portions are less significant in terms of affecting the marks’ commercial impression, and renders the wording “FS” the more dominant element of the marks.

 

Therefore, the marks are confusingly similar. 

 

 

Relatedness of the Goods and Services

 

Applicant’s goods are related to registrants’ goods and services.  The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and 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)); TMEP §1207.01(a)(i).

 

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)). 

 

When an application or registration uses broad wording to describe goods and/or services, the broad identification(s) of goods and/or services are presumed to encompass all goods and/or services of the type described, including any narrower goods and/or services identified in other applications and registrations.  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).  In such cases, the broader identifications of goods and/or services are legally identical to the more narrowly identified goods and/or services.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, when comparing goods versus services, consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  TMEP §1207.01(a)(ii); see In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (finding retail shops featuring sports team related clothing and apparel related to various clothing items, including athletic uniforms); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (finding retail grocery and general merchandise store services related to furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (finding distributorship services in the field of health and beauty aids related to skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (finding various items of men’s, boys’, girls’ and women’s clothing related to restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (finding refinishing of furniture, office furniture, and machinery related to office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (finding trucking services related to motor trucks and buses).

 

 

The ‘965 Mark

 

Applicant’s broad identification of “Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information” encompasses all narrower goods, such as registrant’s identified “Computer software for use in programming, data collection, data storage, data analysis and report generation of fluid flow meters and wastewater sampler products.”

 

 

The ‘286 Mark

 

Applicant’s broad identifications of software “for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information” and software allowing “users to perform electronic business transactions” are similar or complementary to registrant’s identified “electronic data analytics, namely, business data analysis” services in terms of purpose or function {emphasis added}.

 

 

The ‘056 Mark

 

Applicant’s broadly identified “financial” software goods are similar or complementary to registrant’s various identified financial services in terms of purpose or function.

 

 

The ‘649 Mark

 

Applicant’s broadly identified “e-commerce software to allow users to perform electronic business transactions” are similar or complementary to registrant’s broadly identified “business organization and management consulting services” in terms of purpose or function.

 

 

The ‘454 Mark

 

Applicant’s broad identification of “Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information” encompasses all narrower goods, such as registrant’s identified “Computer software for automatically importing, cleaning and managing data for immediate analysis, regardless of the input source and analyzes and presents the analysis in a user-friendly graphic format” and “Computer software for automatically importing, cleaning and managing data for immediate analysis, regardless of the input source and analyzes and presents the analysis in a user-friendly graphic format that may be downloaded from a global computer network.”

 

 

The ‘966 Mark

 

Applicant’s broad identification of “Computer software for budgeting, forecasting, consolidation of financial data and financial reporting, for use in financial reporting or analysis” encompass registrant’s narrower “Providing downloadable computer software over a global computer network that provides geographic maps, makes a determination on flood zones, flood information, and creates a flood data file to mobile smart devices, for real estate risk assessment, mortgage, insurance and financial services purposes” {emphasis added}.  Further, applicant’s goods are similar or complementary to registrant’s identified services of “financial risk assessment, namely, providing flood risk analysis information and making flood hazard determinations of residential and commercial properties for insurance purpose” in terms of purpose or function.

 

 

The ‘475 Mark

 

Applicant’s broadly identified “financial” software goods are similar or complementary to registrant’s various identified financial services in terms of purpose or function.

 

 

The ‘059 Mark

 

Applicant’s broadly identified “financial” software goods are similar or complementary to registrant’s various identified financial services in terms of purpose or function.

 

 

The ‘395 Mark

 

Applicant’s broadly identified “financial” software goods are similar or complementary to registrant’s various identified services relating to “personal finances” and “financial risk” in terms of purpose or function.

 

 

The ‘836 Mark

 

Applicant’s broad identification of “Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information” encompasses all narrower goods, such as registrant’s identified software “used to manage, secure, store, back-up, synchronize, recover and share data, documents, files, and information via global computer network.”  Further, applicant’s goods are similar or complementary to registrant’s similarly identified software services “used to manage, secure, store, back-up, synchronize, recover and share data, documents, files, and information via global computer networks” in terms of purpose or function.

 

 

The ‘290 Mark

 

Applicant’s broad identification of “Simulators for driving or control of vehicles” encompasses all narrower goods, such as registrant’s identified “Flight simulators for aircraft.”

 

 

The goods and services of the parties also 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)).  Thus, applicant’s and registrants’ goods and services are related.

 

In conclusion, the marks are confusingly similar due to the similarity of the marks and the similarity of the goods and services.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

 

AMENDED IDENTIFICATION OF GOODS REQUIRED

 

Applicant must clarify the wording in the identification of goods in International Class 009 because it is indefinite and too broad, as indicated by suggested amended language shown in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods are.  Further, this wording could identify goods and/or services in more than one international class.  For example, downloadable software goods are in International Class 009 and providing non-downloadable software is in International Class 042. 

 

Applicant may substitute the following wording with amended language shown in bold, if accurate:

 

 

International Class 009:

 

            “Downloadable computer e-commerce software to allow users to perform electronic business transactions via mobile devices and local and global computer networks; Downloadable computer software applications to assist agricultural professionals with the inspection, research, data collection and analysis, spectral sampling, and information on crop health and precision agriculture methods and technology; Downloadable computer software applications for agricultural, automotive, energy, and industrial uses, namely, for ____ {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc.}; Downloadable computer software applications to assist with product selection in the automotive, energy, fuel, grease, lubricant, and oil sectors; Downloadable Computer software for budgeting, forecasting, consolidation of financial data and financial reporting, for use in financial reporting or analysis; Downloadable computer software for creating searchable databases of information and data; Downloadable computer software for monitoring the operation of mechanized agricultural equipment during agricultural operations; Downloadable computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; Downloadable computer software, namely, electronic financial software that accommodates multiple types of payment and debt transactions in an integrated mobile device and web based environment; Downloadable computer software that provides business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Downloadable mobile applications for accessing, planning, and managing information for use in the fields of agriculture, agronomy, automotive, energy, horticulture, and industrial equipment; Downloadable mobile applications for recording field and crop observations related to pest pressure, tracking field conditions with GPS-enabled maps, and generating crop scouting reports; Downloadable computer software for use by customers to manage data relating to farm inputs, costs, and crop yield results; Decision support systems in the nature of computer hardware and recordable software for ____ {specify the function of the systems, e.g., for use in database management, for use as a spreadsheet, for word processing, etc.}in the field of precision agriculture and variable rate technology; Decision support systems in the nature of computer hardware and recordable software for ____ {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc.} in the fields of agriculture, agronomy, automotive, energy, horticulture, and industrial equipment; Simulators for driving and control of vehicles and farm equipment; Software applications for use with mobile phones, tablet computers, mobile telecommunication devices, and personal computers, namely, software for assisting agricultural professionals with the inspection, research, data collection and analysis, spectral sampling, and information on crop health and precision agriculture methods and technology; Software for accessing, planning, and managing information for use in the fields of agriculture, agronomy, automotive, energy, horticulture, and industrial equipment”

 

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

ASSISTANCE

 

If applicant has questions regarding this Office action, please email the assigned trademark examining attorney.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal and/or requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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.  

 

 

 

J. Ian Dible

/J. Ian Dible/

Examining Attorney

Law Office 111

(571) 272-0209

ian.dible@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/28/2019 FOR U.S. APPLICATION SERIAL NO. 88241512

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/28/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.