To: | Rhythm Group LLC (tmdjoseph@yahoo.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88248514 - STACK - 279 |
Sent: | 3/27/2019 6:11:55 PM |
Sent As: | ECOM116@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88248514
MARK: STACK
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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: Rhythm Group LLC
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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: 3/27/2019
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.
The assigned examining attorney has reviewed the referenced application and determined the following.
REGISTRATION
Likelihood of Confusion
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Registration No. 5059311
The proposed mark is closely related to the prior registered marks in each of the factors listed above in the DuPont case. The sound, commercial meaning, and impression of the marks are closely related. Applicant’s mark is STACK with a design. Registrant’s mark is STACK. The word portions of the marks are identical, thereby creating a highly similar overall commercial impression.
Applicant offers Software as a service (SAAS) services featuring software for healthcare, pharmacy and education; the registrant offers Application service provider (ASP) featuring software for use in providing an online database in the field of insurance claims processing to upload, manage, view, share, analyze and track claims data and to provide notifications and reports; Providing temporary use of on-line non-downloadable software for collection, storage, delivery and customized reporting for use in optimal insurance claims data management; Providing temporary use of non-downloadable computer software for tracking documents over computer networks, intranets and the internet; Providing a secured-access, members only website featuring technology that gives members the ability to upload, view, copy, print, download and share documents and images for the purposes of managing and tracking insurance claims data; Computer services, namely, acting as an application service provider in the field of information management to host computer application software for the purpose of management and tracking of insurance claims; Software as a service (SAAS) services featuring software for processing, management and tracking of insurance claims; Software as a service (SAAS) services, namely, hosting software for use by others for use in the management of insurance claims enabling users to upload, manage, view, share, analyze and track claims data and to provide notifications and reports. Applicant’s software is broad enough to overlap with registrant’s. Consumers, therefore, are likely to believe that the services of the parties originate from the same source.
Registration No. 3785426
The proposed mark is closely related to the prior registered marks in each of the factors listed above in the DuPont case. The sound, commercial meaning, and impression of the marks are closely related. Applicant’s mark is STACK with a design. Registrant’s mark is STACKS. The word portions of the marks are nearly identical, thereby creating a highly similar overall commercial impression.
Applicant offers Software as a service (SAAS) services featuring software for healthcare, pharmacy and education; the registrant offers Providing on-line non-downloadable software for project management and collaboration, namely, the assignment, visualization and reporting of specific tasks filtered by categories and/or individuals. Applicant’s software is broad enough to overlap with registrant’s. Consumers, therefore, are likely to believe that the services of the parties originate from the same source.
Registration of the proposed mark must therefore be refused. Applicant may, however, offer evidence in support of registration.
Prior Pending Application
The filing dates of pending U.S. Application Serial Nos. 87025748, 88247468, 88097401, 87913179, 87178551 and 86724853 precede applicant’s filing date. See attached referenced applications. If any 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 between the two marks. 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 mark in the referenced application. 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.
INFORMALITIES
If applicant chooses to respond to the refusal to register, applicant must also respond to the following informalities:
Recitation of Services
The recitation of services is unacceptable as indefinite. Applicant must specify the function of the software. The applicant may adopt the following identification, if accurate: Software as a service (SAAS) services featuring software for [applicant must specify the function, e.g. database maintenance] in the fields of healthcare, pharmacy and education (in International Class 42). TMEP §1402.01.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Description of the Mark
Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following description is suggested, if accurate: “The mark consists of a continuous line bent at right angles to resemble a stack of papers adjacent to the word "STACK". The entire mark is blue.”
Applicant’s Response
Guidelines for responding are set forth below.
/wgb/
William Breckenfeld
Trademark Attorney
Law Office 116
571-272-9133
william.breckenfeld@uspto.gov (informal queries)
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.