Offc Action Outgoing

ATOS SYNTEL

ATOS SE

U.S. TRADEMARK APPLICATION NO. 88252293 - ATOS SYNTEL - 879604

To:	ATOS SE (docket@lawabel.com)
Subject:	U.S. TRADEMARK APPLICATION NO. 88252293 - ATOS SYNTEL - 879604
Sent:	3/9/2019 1:23:31 PM
Sent As:	ECOM115@USPTO.GOV
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UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

U.S. APPLICATION SERIAL NO. 88252293

MARK: ATOS SYNTEL

*88252293*

CORRESPONDENT ADDRESS:

LAWRENCE E. ABELMAN

ABELMAN, FRAYNE & SCHWAB

666 THIRD AVENUE

NEW YORK, NY 10017-5621

CLICK HERE TO RESPOND TO THIS LETTER:

http://www.gov.uspto.report/trademarks/teas/response_forms.jsp

VIEW YOUR APPLICATION FILE

APPLICANT: ATOS SE

CORRESPONDENT’S REFERENCE/DOCKET NO:

879604

CORRESPONDENT E-MAIL ADDRESS:

docket@lawabel.com

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: 3/9/2019

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

SUMMARY OF ISSUES:

Section 2(d) – Likelihood of Confusion Refusal
Foreign Registration Certificate Required
Identification of Goods/Services
Multiple Class Application

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. 4698961, 4695210, 5278810, 3879263, 1692076, 2875965, 2932357, 5364243, 3664282, 4445040, 4476177 and 4666434. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.

The applied-for mark is ATOS SYNTEL (in stylized form) for goods and services in International Classes 009, 035, 036, 038, 041, 042. The specific goods/services to which this refusal applies are identified in further detail below.

The cited registrations, along with the relevant goods and/or services to which each cite pertains, are:

CITED MARK AND REGISTRATION NO.

REGISTRANT’S RELEVANT GOODS AND/OR SERVICES

APPLICANT’S RELEVANT GOODS AND/OR SERVICES

U.S. Registration No. 4698961 for the mark ATOS BRAZILIAN JIU JITSU, with a design

International Class 009:

DVD's featuring live action and instruction in jiu jitsu; pre-recorded digital materials, namely downloadable audio and video files, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital disks featuring action and fight sequences; pre-recorded digital media, digital video discs, digital versatile discs, compact discs, and DVDs all featuring sports and entertainment, instructional and training programs in the art of Jiu-Jitsu, martial arts, non-lethal martial arts techniques, self-defense, attack prevention, sexual assault prevention, physical attack escape techniques, personal safety, rape prevention, physical exercise and education, and physical fitness; prerecorded DVDs featuring entertainment, instructional and training programs in the art and history of Jiu-Jitsu, martial arts, non-lethal martial arts techniques, self-defense, attack prevention, physical attack escape techniques, personal safety, physical exercise and education, and physical fitness; video recordings featuring sports, mixed martial arts, and fight events and sports programming.

International Class 041:

Providing classes, workshops, and seminars in the field of Jiu Jitsu and mixed-martial arts; Educational services, namely, instructor training in the field of Jiu Jitsu and mixed-martial arts.

International Class 009:

DVDs and other digital recording media

International Class 041:

Teaching

U.S. Registration No. 4695210 for the mark ATOS, in standard character form

International Class 009:

International Class 041:

Providing classes, workshops, and seminars in the field of Jiu Jitsu and mixed-martial arts; Educational services, namely, instructor training in the field of Jiu Jitsu and mixed-martial arts.

International Class 009:

DVDs and other digital recording media

International Class 041:

Teaching

U.S. Registration No. 3879263 for the mark ATOS MEDICAL, with a design

International Class 035:

Advertising within the field of medical devices; business management within the field of medical devices; business administration within the field of medical devices; office functions within the field of medical; business management consulting services in the planning, organization and implementation of health care services; compilation of statistical data relating to medical research; wholesale distributorships featuring medical and surgical equipment and instruments

Class 041:

Education services, namely, providing training services in the field of medicine, medical instruments and technology, and medical procedures; medical training and teaching; conducting of educational seminars relating to medical matters or speech therapy; organization of conferences and symposia in the field of medical science; instruction in the use of medical products; publication of medical texts

Class 042:

Scientific and technological services and research and design in the field of medicine and medical technology; scientific research; evaluation and processing of scientific information; conducting of research and development in the field of medical equipment, apparatus and instruments; design of medical apparatus

International Class 035:

Advertising; business management; business administration; clerical services; business organization and management consultancy; business information in administrative, commercial, management and organizational field, in particular in the field of information technology, telecommunications and payment/financial transactions; data entry and data processing; distribution of leaflets and samples for advertising purposes; book-keeping; document reproduction services; data processing management; organization of exhibitions for commercial or advertising purpose; computerized file management; rental of computer files; outsourcing the processing of documents and data for a company, namely, compilation of information in computer databases, input and processing of data, information, images and documents, updating of databases and image banks ; business consultation services, namely, consultation relating to business strategy, including assessing a company's existing operations, and advising on the development of technology-related methodologies in the field of project management; consultation relating to outsourcing of computerized business functions; business consultation relating to the fields of electronic commerce and electronic business; business consultation relating to the field of on-line business transactions, namely, marketing, order processing, and order fulfillment; customer relationship management; and employee leasing services, namely, providing information technology professionals to others

Class 041:

Teaching; organization of conferences, seminars and exhibitions for cultural or educational purposes

Class 042:

Scientific and technological services and research and design relating thereto; industrial analysis and research services

U.S. Registration No. 5278810 for the mark ATOS ATOS MEDICAL YOUR VOICE in stylized form

Class 035:

Advertising within the field of medical devices; business management within the field of medical devices; business administration within the field of medical devices; office functions within the field of medical devices; business management consultancy services in the planning, organization and implementation of health care services; compilation of statistical data into computer databases related to medical research; wholesale distributorship services in relation to medical and surgical equipment and instrument

Class 041:

Education, namely providing workshops and classes in the field of medical and surgical equipment and instruments; providing of training in the field of medical and surgical equipment and instruments; medical training and educational services, namely teaching; arranging of educational seminars relating to medical matters and speech therapy; organisation of educational conferences and symposiums in the field of medical research; instruction in the use of medical products; publication of medical texts

Class 042:

Research and development in the field of medical equipment, apparatus and instruments; design of medical apparatus

International Class 035:

Class 041:

Teaching; organization of conferences, seminars and exhibitions for cultural or educational purposes;

Class 042:

Scientific and technological services and research and design relating thereto; industrial analysis and research services

U.S. Registration No. 1692076 for the mark SYNTEL in standard character form

Class 042:

Custom designing of computer software and computer programming services

Class 042:

Design and development of computer hardware and software; computer programming; Design, development, maintenance and updating of computer software, computers and computer peripherals; computer programming, software programming, integration of computer systems and of networks in the fields of information technologies, telecommunications, payment transactions and cloud computing; Management of computer servers, facilities management, namely, hosting of computer servers; Computer software programming for making financial transactions secure, Consultancy and information relating to the aforesaid services; technological advisory services relating to computer programs; Design, installation, testing and maintenance of computer software, and information security in relation to business interaction via the computer network (programming);

U.S. Registration No. 2875965 for the mark SYNTEL, in standard character form

Class 035:

Business consultation services, namely, consultation relating to business strategy, including assessing a company's existing operations, and advising on the development of technology-related methodologies in the field of project management; consultation relating to outsourcing of computerized business functions; business consultation relating to the fields of electronic commerce and electronic business; business consultation relating to the field of on-line business transactions, namely, marketing, order processing, and order fulfillment; customer relationship management; and employee leasing services, namely, providing information technology professionals to others.

Class 042:

Computer consultation services in the fields of web site design, web site development, web site maintenance, web site upgrading, web site hosting, web site privacy, web site security, database design, selection of operating environment, development of operating environment, development and integration of interactive content and design; and in the fields of computer software applications, computer software maintenance, and computer software development; technical support services via telephone, email, facsimile, pager, and in person; and enabling legacy applications for use on the world wide web

Class 035:

Advertising ; business management ; business administration ; clerical services ; business organization and management consultancy ; business information in administrative, commercial, management and organizational field, in particular in the field of information technology, telecommunications and payment/financial transactions ; data entry and data processing ; distribution of leaflets and samples for advertising purposes ; book-keeping ; document reproduction services ; data processing management ; organization of exhibitions for commercial or advertising purpose ; computerized file management ; rental of computer files ; outsourcing the processing of documents and data for a company, namely, compilation of information in computer databases, input and processing of data, information, images and documents, updating of databases and image banks ; business consultation services, namely, consultation relating to business strategy, including assessing a company's existing operations, and advising on the development of technology-related methodologies in the field of project management; consultation relating to outsourcing of computerized business functions; business consultation relating to the fields of electronic commerce and electronic business; business consultation relating to the field of on-line business transactions, namely, marketing, order processing, and order fulfillment; customer relationship management; and employee leasing services, namely, providing information technology professionals to others

Class 042:

U.S. Registration No. 2932357 for the mark SYNTEL, in stylized form

Class 035:

Business consultation services, namely consultation relating to business strategy, namely, assessing a company's existing operations, and advising on the development of technology-related methodologies in the field of project management; consultation relating to outsourcing of computerized business functions; business consultation relating to the fields of electronic commerce and electronic business; business consultation relating to the field of on-line business transactions, namely marketing, order processing, and order fulfillment; customer relationship management; and employee leasing services, namely, providing information technology professionals to others.

Class 042:

Computer consultation services in the fields of web site design, web site development, web site maintenance, web site upgrading, web site hosting, web site privacy, web site security, database design, selection of operating environment, development of operating environment, development and integration of interactive content and design; and in the fields of computer software applications, computer software maintenance, and computer software development; custom designing of computer software and computer programming services for others; custom computer software development, namely, enabling legacy applications for use on the world wide web; and technical support services, namely, troubleshooting of computer hardware and software problems

Class 035:

Advertising ; business management ; business administration ; clerical services ; business organization and management consultancy ; business information in administrative, commercial, management and organizational field, in particular in the field of information technology, telecommunications and payment/financial transactions ; data entry and data processing ; distribution of leaflets and samples for advertising purposes ; book-keeping ; document reproduction services ; data processing management ; organization of exhibitions for commercial or advertising purpose ; computerized file management ; rental of computer files ; outsourcing the processing of documents and data for a company, namely, compilation of information in computer databases, input and processing of data, information, images and documents, updating of databases and image banks ; business consultation services, namely, consultation relating to business strategy, including assessing a company's existing operations, and advising on the development of technology-related methodologies in the field of project management; consultation relating to outsourcing of computerized business functions; business consultation relating to the fields of electronic commerce and electronic business; business consultation relating to the field of on-line business transactions, namely, marketing, order processing, and order fulfillment; customer relationship management; and employee leasing services, namely, providing information technology professionals to others

Class 042:

U.S. Registration No. 5364243 for the mark SYNTEL CONSIDER IT DONE, in stylized form

Class 009:

Downloadable computer software for use in capturing the environment and inventory details on an IT estate, and monitoring, providing, and managing IT infrastructure; Downloadable computer software for use as a task automation and accelerator tool that enhances productivity and creates non-linearity in the field of information management; Downloadable computer software for use as a tool for analyzing and migrating legacy content and document management applications to web-based collaboration and content management platforms; Downloadable computer software for use in assessing and optimizing operations and processes in the field of IT service management; Downloadable computer software for use in social networking and analyzing social media activity in the field of social media; Downloadable computer software for use in trade settlement; Downloadable computer software for use in processing of health care claims.

Class 035:

Business consultation services; Business consultation about business technology software and outsourcing of business processes; Outsource service provider in the field of business management; Customer relationship management; Employee leasing services, namely, providing information technology professionals to others

Class 042:

Information technology consulting services; Business technology software consultation services; Custom design and development of computer software; Technical support services, namely, troubleshooting of computer hardware and software problems, namely, troubleshooting of software problems and diagnosing problems with computer hardware; Outsource service providers in the field of information technology; Platform as a service consultation in the nature of providing computer software platforms for system testing, test data management, and development and implementation of computer-based information systems for evaluation and assessment of business systems; Platform as a service featuring software platforms where users can access, organize, transmit, manage, track, measure, and analyze updates from social media and other online communications networks on a community page; Platform as a service (PAAS) featuring computer software platforms for integrated robotic process automation, automated software development operations, automated testing, automated IT infrastructure management, and automated data center operations; Providing online, non-downloadable computer software for integrated robotic process automation, automated software development operations, automated testing, automated IT infrastructure management, and automated data center operations; Software as a service (SAAS) featuring computer software for integrated robotic process automation, automated software development operations, automated testing, automated IT infrastructure management, and automated data center operations; Computer services, namely, providing a nondownloadable web-based system for others featuring technology for others to evaluate the knowledge, skills and abilities of employees for the purpose of evaluating employees' strengths and competencies and the proper staffing of projects; Computer services, namely, providing a nondownloadable web-based systems for others, featuring technology that automates customer self-service and allows businesses to interact with consumers over global social communications channels, to track and analyze communications across those channels, and to maintain records of those communications, all in order to improve business operations and strengthen business-to-consumer communication.

Class 009:

Software; downloadable computer programs and application software ; computers, microcomputers, computer terminals; computer software packages; connecting hardware for computer equipment (modems); software and software applications for mobile devices (telephone, smartphone)

Class 035:

Advertising ; business management ; business administration ; clerical services ; business organization and management consultancy ; business information in administrative, commercial, management and organizational field, in particular in the field of information technology, telecommunications and payment/financial transactions ; data entry and data processing ; distribution of leaflets and samples for advertising purposes ; book-keeping ; document reproduction services ; data processing management ; organization of exhibitions for commercial or advertising purpose ; computerized file management ; rental of computer files ; outsourcing the processing of documents and data for a company, namely, compilation of information in computer databases, input and processing of data, information, images and documents, updating of databases and image banks ; business consultation services, namely, consultation relating to business strategy, including assessing a company's existing operations, and advising on the development of technology-related methodologies in the field of project management; consultation relating to outsourcing of computerized business functions; business consultation relating to the fields of electronic commerce and electronic business; business consultation relating to the field of on-line business transactions, namely, marketing, order processing, and order fulfillment; customer relationship management; and employee leasing services, namely, providing information technology professionals to others

Class 042:

U.S. Registration No. 3664282 for the mark SYNTEL SMALL ENOUGH TO LISTEN, BIG ENOUGH TO DELIVER, in standard character form

Class 035:

Business consultation, namely, consultation relating to the outsourcing of business processes; business consultation services, namely, consultation relating to business strategy, including assessing a company's existing operations, and advising on the development of technology-related methodologies in the field of project management; consultation relating to outsourcing of computerized business functions; business consultation relating to the fields of electronic commerce and electronic business; business consultation relating to the field of on-line business transactions, namely, marketing, order processing, and order fulfillment; customer relationship management; and employee leasing services, namely, providing information technology professionals to others

Class 042:

computer consultation services in the fields of web site design, web site development, web site maintenance, web site upgrading, web site hosting, web site privacy, web site security, database design, selection of operating environment, development of operating environment, development and integration of interactive content and design; and in the fields of computer software applications, computer software maintenance, and computer software development; technical support services, namely, computer troubleshooting via telephone, email, facsimile, pager, and in person.

Class 035:

Advertising ; business management ; business administration ; clerical services ; business organization and management consultancy ; business information in administrative, commercial, management and organizational field, in particular in the field of information technology, telecommunications and payment/financial transactions ; data entry and data processing ; distribution of leaflets and samples for advertising purposes ; book-keeping ; document reproduction services ; data processing management ; organization of exhibitions for commercial or advertising purpose ; computerized file management ; rental of computer files ; outsourcing the processing of documents and data for a company, namely, compilation of information in computer databases, input and processing of data, information, images and documents, updating of databases and image banks ; business consultation services, namely, consultation relating to business strategy, including assessing a company's existing operations, and advising on the development of technology-related methodologies in the field of project management; consultation relating to outsourcing of computerized business functions; business consultation relating to the fields of electronic commerce and electronic business; business consultation relating to the field of on-line business transactions, namely, marketing, order processing, and order fulfillment; customer relationship management; and employee leasing services, namely, providing information technology professionals to others

Class 042:

U.S. Registration No. 4445040 for the mark SYNTEL OPTIMAI, with a design

Class 009:

Computer software, namely, a tool for assessing and optimizing IT Service Management

Class 009:

U.S. Registration No. 4476177 for the mark SYNTEL SOCIOCALYX, with a design

Class 009:

software for mobile devices, namely, software platforms where users can access, organize, transmit, manage, track, measure, and analyze updates from social media and other online communication networks on a community page; software for mobile devices that enables users to access, organize, transmit, manage, track, measure, and analyze updates from social media and other online communication networks on a community page

Class 009:

U.S. Registration No. 4666434 for the mark SYNTEL DIGITAL ONE

Class 042:

Computer consultation services, namely, consulting in the fields of mobile applications, big data analytics, public and private cloud computing solutions, social media, evaluation, Internet Of Things (IoT), and integration of IT environments.

Class 042:

advice and consulting relating to use of internet

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.

SIMILARITY OF THE MARKS

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

In this case, applicant’s mark is ATOS SYNTEL, in stylized form.

The marks in U.S. Registration Nos. 4698961 and 4695210 which are owned by the same owner are ATOS BRAZILIAN JIU JITSU and ATOS, respectively. These marks are highly similar to applicant’s mark because each possesses the identical term ATOS at the outset of the marks. 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”).

Note, the term BRAZILIAN JIU JITSU is descriptive of registrant’s services and is therefore rendered less dominant. Note, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). 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). Thus, the term ATOS is the significant portion of the marks

Similarly, the marks in U.S. Registration Nos. 3879263 and 5278810 which share the same owner are ATOS MEDICAL and ATOS ATOS MEDICAL YOUR VOICE, respectively. These marks are highly similar to applicant’s mark as each share the identical term ATOS at the outset of the marks. Note, the term “MEDICAL” in U.S. Registration No. 3879263 is disclaimed which renders the term ATOS as the dominant portion of the mark. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). With regard to the additional wording, “ATOS MEDICAL YOUR VOICE” in U.S. Registration No. 5278810, this is merely a tagline for registrant’s goods and services as demonstrated by the appearance of the mark. Thus, ATOS is the term that consumers focus on within this mark.

Next, with regard to the remaining cited registrations which all share the same owner, the marks are highly similar because each possesses the identical term and house-mark SYNTEL. Specifically, the marks in U.S. Registration Nos. 1692076, 2875965 and 2932357 are each SYNTEL. Note, adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). Thus, the addition of the term “ATOS” in applicant’s mark does not obviate the similarity of the marks and in the present case, the marks are identical in part.

Similarly, with regards to the marks in U.S. Registration Nos. 5364243 SYNTEL CONSIDER IT DONE, U.S. Registration No. 3664282 SYNTEL SMALL ENOUGH TO LISTEN, BIG ENOUGH TO DELIVER, U.S. Registration No. 4445040 SYNTEL OPTIMAI, U.S. Registration No. 4476177 SYNTEL SOCIOCALYX, U.S. Registration No. 4666434 SYNTEL DIGITAL ONE, the marks each possess the wording “SYNTEL” followed by a less dominant tagline or slogan. Thus, the emphasis is on the term “SYNTEL” which is highly similar to applicant’s mark ATOS SYNTEL. As aforementioned, adding a term to a registered mark generally does not obviate the similarity between the compared marks. See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009). Further, marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

Lastly, the design components of applicant’s mark and the cited registered marks does not obviate the similarity between the marks because when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods 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)).

Accordingly, the marks are similar under the Trademark Act.

RELATEDNESS OF THE GOODS/SERVICES

The goods and/or 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/or 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/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)); TMEP §1207.01(a)(i).

U.S. Registration Nos. 4698961 and 4695210 - ATOS BRAZILIAN JIU JITSU and ATOS, respectively

The goods in both registrations are, in relevant part, “DVD's featuring live action and instruction in jiu jitsu; pre-recorded digital materials, namely downloadable audio and video files, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital disks featuring action and fight sequences; pre-recorded digital media, digital video discs, digital versatile discs, compact discs, and DVDs all featuring sports and entertainment, instructional and training programs in the art of Jiu-Jitsu, martial arts, non-lethal martial arts techniques, self-defense, attack prevention, sexual assault prevention, physical attack escape techniques, personal safety, rape prevention, physical exercise and education, and physical fitness; prerecorded DVDs featuring entertainment, instructional and training programs in the art and history of Jiu-Jitsu, martial arts, non-lethal martial arts techniques, self-defense, attack prevention, physical attack escape techniques, personal safety, physical exercise and education, and physical fitness; video recordings featuring sports, mixed martial arts, and fight events and sports programming” in International Class 009 and “Providing classes, workshops, and seminars in the field of Jiu Jitsu and mixed-martial arts; Educational services, namely, instructor training in the field of Jiu Jitsu and mixed-martial arts” in International Class 041.

Determining likelihood of confusion is based on the description of the goods and/or 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)).

In this case, the application use(s) broad wording to describe “DVDs and other digital recording media” and “Teaching”, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow “DVD's featuring live action and instruction in jiu jitsu; pre-recorded digital materials, namely downloadable audio and video files, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital disks featuring action and fight sequences; pre-recorded digital media, digital video discs, digital versatile discs, compact discs, and DVDs all featuring sports and entertainment, instructional and training programs in the art of Jiu-Jitsu, martial arts, non-lethal martial arts techniques, self-defense, attack prevention, sexual assault prevention, physical attack escape techniques, personal safety, rape prevention, physical exercise and education, and physical fitness; prerecorded DVDs featuring entertainment, instructional and training programs in the art and history of Jiu-Jitsu, martial arts, non-lethal martial arts techniques, self-defense, attack prevention, physical attack escape techniques, personal safety, physical exercise and education, and physical fitness; video recordings featuring sports, mixed martial arts, and fight events and sports programming” and “Providing classes, workshops, and seminars in the field of Jiu Jitsu and mixed-martial arts; Educational services, namely, instructor training in the field of Jiu Jitsu and mixed-martial arts.” 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). Thus, applicant’s and registrant’s goods/services are legally identical. 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, the goods and/or services of the parties 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 registrant’s goods and/or services are related.

U.S. Registration Nos. 3879263 and 5278810 - ATOS MEDICAL and ATOS ATOS MEDICAL YOUR VOICE, respectively

Here, the services in U.S. Registration No. 3879263 are, in pertinent part, “Advertising within the field of medical devices; business management within the field of medical devices; business administration within the field of medical devices; office functions within the field of medical; business management consulting services in the planning, organization and implementation of health care services; compilation of statistical data relating to medical research; wholesale distributorships featuring medical and surgical equipment and instruments” in International Class 035, “Education services, namely, providing training services in the field of medicine, medical instruments and technology, and medical procedures; medical training and teaching; conducting of educational seminars relating to medical matters or speech therapy; organization of conferences and symposia in the field of medical science; instruction in the use of medical products; publication of medical texts” in International Class 041 and “Scientific and technological services and research and design in the field of medicine and medical technology; scientific research; evaluation and processing of scientific information; conducting of research and development in the field of medical equipment, apparatus and instruments; design of medical apparatus” in International Class 042.

The services in U.S. Registration No. 5278810 are “Advertising within the field of medical devices; business management within the field of medical devices; business administration within the field of medical devices; office functions within the field of medical devices; business management consultancy services in the planning, organization and implementation of health care services; compilation of statistical data into computer databases related to medical research; wholesale distributorship services in relation to medical and surgical equipment and instrument” in International Class 035, “Education, namely providing workshops and classes in the field of medical and surgical equipment and instruments; providing of training in the field of medical and surgical equipment and instruments; medical training and educational services, namely teaching; arranging of educational seminars relating to medical matters and speech therapy; organisation of educational conferences and symposiums in the field of medical research; instruction in the use of medical products; publication of medical texts” in International Class 041 and “Research and development in the field of medical equipment, apparatus and instruments; design of medical apparatus” in International Class 042.

In this case, the application use(s) broad wording to describe: “Advertising; business management; business administration; clerical services; business organization and management consultancy; data entry and data processing; distribution of leaflets and samples for advertising purposes; book-keeping; document reproduction services; data processing management; organization of exhibitions for commercial or advertising purpose,” “Teaching; organization of conferences, seminars and exhibitions for cultural or educational purposes;” and “scientific and technological services and research and design relating thereto; industrial analysis and research services,” which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow “Advertising within the field of medical devices; business management within the field of medical devices; business administration within the field of medical devices; office functions within the field of medical; business management consulting services in the planning, organization and implementation of health care services; compilation of statistical data relating to medical research,” “education services, namely, providing training services in the field of medicine, medical instruments and technology, and medical procedures; medical training and teaching; conducting of educational seminars relating to medical matters or speech therapy; organization of conferences and symposia in the field of medical science; instruction in the use of medical products” and “Scientific and technological services and research and design in the field of medicine and medical technology; scientific research; evaluation and processing of scientific information; conducting of research and development in the field of medical equipment, apparatus and instruments. 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). Thus, applicant’s and registrant’s services are legally identical. 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)).

U.S. Registration Nos. 2875965, 2932357 and 1692076, wherein, the marks are all SYNTEL

The services in U.S. Registration Nos. 2875965 and 2932357 are “business consultation services, namely, consultation relating to business strategy, including assessing a company's existing operations, and advising on the development of technology-related methodologies in the field of project management; consultation relating to outsourcing of computerized business functions; business consultation relating to the fields of electronic commerce and electronic business; business consultation relating to the field of on-line business transactions, namely, marketing, order processing, and order fulfillment; customer relationship management; and employee leasing services, namely, providing information technology professionals to others” in International Class 035 and “computer consultation services in the fields of web site design, web site development, web site maintenance, web site upgrading, web site hosting, web site privacy, web site security, database design, selection of operating environment, development of operating environment, development and integration of interactive content and design; and in the fields of computer software applications, computer software maintenance, and computer software development; technical support services via telephone, email, facsimile, pager, and in person; and enabling legacy applications for use on the world wide web” in International Class 042. The services in U.S. Registration No. 1692076 are “custom designing of computer software and computer programming services” in International Class 042.

In this case, applicant and registrant render identical services, namely, “consultation relating to outsourcing of computerized business functions,” “customer relationship management,” “business consultation relating to the field of on-line business transactions, namely, marketing, order processing, and order fulfillment” and “employee leasing services, namely, providing information technology professionals to others.”

Further, the application use(s) broad wording to describe “advertising; business management; business administration; clerical services; business organization and management consultancy; business consultation services, namely, consultation relating to business strategy, including assessing a company's existing operations, and advising on the development of technology-related methodologies in the field of project management; business consultation relating to the fields of electronic commerce and electronic business” and “design and development of computer hardware and software; computer programming; Design, development, maintenance and updating of computer software, computers and computer peripherals; computer programming, software programming” which presumably encompasses applicant’s more narrow services of the type described above. 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). Thus, applicant’s and registrant’s services are legally identical. 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)).

U.S. Registration Nos. 5364243 SYNTEL CONSIDER IT DONE

In this case, registrant produces “Downloadable computer software for use in capturing the environment and inventory details on an IT estate, and monitoring, providing, and managing IT infrastructure; Downloadable computer software for use as a task automation and accelerator tool that enhances productivity and creates non-linearity in the field of information management; Downloadable computer software for use as a tool for analyzing and migrating legacy content and document management applications to web-based collaboration and content management platforms; Downloadable computer software for use in assessing and optimizing operations and processes in the field of IT service management; Downloadable computer software for use in social networking and analyzing social media activity in the field of social media; Downloadable computer software for use in trade settlement; Downloadable computer software for use in processing of health care claims” in International Class 009 “Business consultation services; Business consultation about business technology software and outsourcing of business processes; Outsource service provider in the field of business management; Customer relationship management; Employee leasing services, namely, providing information technology professionals to others” in International Class 035 and “Information technology consulting services; Business technology software consultation services; Custom design and development of computer software; Technical support services, namely, troubleshooting of computer hardware and software problems, namely, troubleshooting of software problems and diagnosing problems with computer hardware; Outsource service providers in the field of information technology; Platform as a service consultation in the nature of providing computer software platforms for system testing, test data management, and development and implementation of computer-based information systems for evaluation and assessment of business systems; Platform as a service featuring software platforms where users can access, organize, transmit, manage, track, measure, and analyze updates from social media and other online communications networks on a community page; Platform as a service (PAAS) featuring computer software platforms for integrated robotic process automation, automated software development operations, automated testing, automated IT infrastructure management, and automated data center operations; Providing online, non-downloadable computer software for integrated robotic process automation, automated software development operations, automated testing, automated IT infrastructure management, and automated data center operations; Software as a service (SAAS) featuring computer software for integrated robotic process automation, automated software development operations, automated testing, automated IT infrastructure management, and automated data center operations; Computer services, namely, providing a nondownloadable web-based system for others featuring technology for others to evaluate the knowledge, skills and abilities of employees for the purpose of evaluating employees' strengths and competencies and the proper staffing of projects; Computer services, namely, providing a nondownloadable web-based systems for others, featuring technology that automates customer self-service and allows businesses to interact with consumers over global social communications channels, to track and analyze communications across those channels, and to maintain records of those communications, all in order to improve business operations and strengthen business-to-consumer communication” in International Class 042.

In this case, the application use(s) broad wording to describe “software; downloadable computer programs and application software; software and software applications for mobile devices (telephone, smartphone)” in International Class 009, “advertising ; business management ; business administration; business organization and management consultancy and employee leasing services, namely, providing information technology professionals to others” International Class 035 and “design and development of computer hardware and software; computer programming; Design, development, maintenance and updating of computer software, computers and computer peripherals; computer programming, software programming, integration of computer systems and of networks in the fields of information technologies, telecommunications, payment transactions and cloud computing; Design, installation, testing and maintenance of computer software, and information security in relation to business interaction via the computer network (programming)” in International Class 042, which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow services listed above. 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). Thus, applicant’s and registrant’s services are legally identical in part. 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)).

U.S. Registration No. 3664282 SYNTEL SMALL ENOUGH TO LISTEN, BIG ENOUGH TO DELIVER,

Registrant’s services are “business consultation, namely, consultation relating to the outsourcing of business processes; business consultation services, namely, consultation relating to business strategy, including assessing a company's existing operations, and advising on the development of technology-related methodologies in the field of project management; consultation relating to outsourcing of computerized business functions; business consultation relating to the fields of electronic commerce and electronic business; business consultation relating to the field of on-line business transactions, namely, marketing, order processing, and order fulfillment; customer relationship management; and employee leasing services, namely, providing information technology professionals to others” in International Class 035 and “computer consultation services in the fields of web site design, web site development, web site maintenance, web site upgrading, web site hosting, web site privacy, web site security, database design, selection of operating environment, development of operating environment, development and integration of interactive content and design; and in the fields of computer software applications, computer software maintenance, and computer software development; technical support services, namely, computer troubleshooting via telephone, email, facsimile, pager, and in person” in International Class 042.

Here, applicant and registrant render identical services, namely, “technical support services, namely, computer troubleshooting via telephone, email, facsimile, pager, and in person” in International Class 042. Further, applicant’s broad identification, namely, “Advertising ; business management ; business administration; business organization and management consultancy; outsourcing the processing of documents and data for a company, namely, compilation of information in computer databases, input and processing of data, information, images and documents, updating of databases and image banks ; consultation relating to outsourcing of computerized business functions; business consultation relating to the fields of electronic commerce and electronic business; business consultation relating to the field of on-line business transactions, namely, marketing, order processing, and order fulfillment; customer relationship management; and employee leasing services, namely, providing information technology professionals to others” in International Class 035 encompasses registrant’s more narrow identified services listed above.

U.S. Registration Nos. 4445040 SYNTEL OPTIMAI and 4476177 SYNTEL SOCIOCALYX

In regards to U.S. Registration No. 4445040, registrant produces “Computer software, namely, a tool for assessing and optimizing IT Service Management” in International Class 009. U.S. Registration No. 4476177 produces “software for mobile devices, namely, software platforms where users can access, organize, transmit, manage, track, measure, and analyze updates from social media and other online communication networks on a community page; software for mobile devices that enables users to access, organize, transmit, manage, track, measure, and analyze updates from social media and other online communication networks on a community page.” These goods are wholly encompassed by applicant’s broad “Software; downloadable computer programs and application software.”

4666434 SYNTEL DIGITAL ONE

Registrant’s services are “Computer consultation services, namely, consulting in the fields of mobile applications, big data analytics, public and private cloud computing solutions, social media, evaluation, Internet Of Things (IoT), and integration of IT environments” in International Class 042.

In this case, the application uses broad wording to describe “advice and consulting relating to use of internet,” which presumably encompasses all services of the type described, including registrant(s)’s more narrow consultation services in the field of Internet of Things (IoT). 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). Thus, applicant’s and registrant’s services are legally identical in part. 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)).

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or 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).

In sum, the marks are highly similar and the goods and/or services are closely related. As such, consumers encountering the marks of the parties on or in connection with the identified goods and/or services are likely to be confused as to the source of the goods and/or services. Accordingly, registration is refused under Section 2(d) of the Trademark Act.

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

FOREIGN REGISTRATION CERTIFICATE REQUIRED

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

IDENTIFICATION OF GOODS/SERVICES

Applicant must clarify some of the wording in the identification of goods because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear the exact nature of the goods. Further, this wording could identify goods in more than one international class.

Applicant should note that any wording in bold italics below offers guidance and/or shows the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the identification of goods and/or services which should be removed, it will be shown with a line through it such as this: ~~strikethrough~~. When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL CAPS.

Applicant may adopt the following classification and identification, if accurate:

CLASS 007: 3D printers

CLASS 009: ~~Scientific (except for medical), surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments~~; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, ________________ {please specify the common commercial name of the apparatus, e.g, electrical relays and transformers}; apparatus for recording, transmission or reproduction of sound or images; _________________ {please clarify the type of magnetic data carriers, e.g. blank magnetic data carriers, prerecorded magnetic data carriers featuring _______________{please indicate subject matter}} magnetic data carriers, blank recording discs; blank compact discs, blank recordable DVDs and other digital recording media in the nature of pre-recorded video cassettes, digital video discs, digital versatile discs featuring _______________{please indicate subject matter}; coin-operated mechanisms for television sets; cash registers, calculating machines, data processing equipment in the nature of couplers, computers; downloadable software for__________________{please specify the function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field- specific, the content or field of use}; fire extinguishers; devices for entry, recording, storage, manipulation, transmission, reproduction of sound, data, images, namely, electronic key cards, audio recorders, blank flash drives and apparatus for transmission of communication; electronic cards for processing images; camcorders; interface circuits for video cameras; blank magnetic, optical, digital data carriers; radio transmitters and receivers for radio broadcasting, broadcasting and remote transmission; satellites; read-only discs in the nature of blank digital compact discs ~~(digital compact discs)~~; phonograph records featuring _____________{please indicate subject matter}; data processing equipment, namely, couplers; terminals, ~~including~~ namely, home computer terminals; computers, ~~including~~ namely, personal computers and calculating microcomputer; microprocessor devices in the nature of micro-processors and microprocessor systems; downloadable computer programs for __________________{please specify the function of the programs, e.g., use in database management, use as a spread sheet, word processing, etc. and, if program is content- or field-specific, the content or field of use} and downloadable computer application software for ___________________ {specify items, e.g., mobile phones, portable media players, handheld computers}, namely, software for ____________ {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.}; computers, microcomputers, computer terminals; control desks in the nature of electrical controllers and electric control panels; keyboards; flat panel display screens; printers namely, ____________{please specify the type of printers, e.g. photo printers, impact printers}; cassettes in the nature of _________________{please clarify the type of cassettes, e.g., computer game cassettes, blank audio cassettes}; memories and generators of images, lines or characters, namely, computer memories; image frequency synthesizers; entertainment and educational devices connected to a television receiver or telematics terminal, namely, ____________________ {please specify the goods using the common commercial name of the goods, e.g. hand-held electronic dictionaries}; radio pagers and transmitters; answering machines; computer software packages featuring downloadable computer software for ___________________{specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; telephone apparatus; mobile telephones and fixed location telephones; visual display units in the nature of electronic LCD advertisement display units with multi-networking (TCP/IP) capabilities; audiovisual apparatus, namely, audiovisual receivers; telecommunication apparatus in the nature of wireless receivers in the form of jewelry; equipment for entering, storing, processing information or data, namely, computers and microcomputers; blank optical data carriers for recording and reproduction of sounds, pictures, signals and data; connecting hardware for computer equipment in the nature of modems ~~(modems)~~; apparatus for data transmission, collection, processing, namely, electronic communications systems comprised of computer hardware and software for the transmission of data between two points; printed circuit board sets in the nature of circuit boards; peripherals for computers, namely, USB cables; downloadable computer software and software applications for mobile devices ~~(telephone, smartphone)~~ namely, software for ____________ {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.}; downloadable computer software for managing the security of people and property and the security of financial transactions; electronic payment terminals

CLASS 020: Visual retail display units

CLASS 035: Advertising services; business management; business administration for others; clerical services; business organization and management consultancy; providing business information in administrative, commercial, management and organizational fields, in particular in the fields of information technology, telecommunications and ~~payment/financial transactions~~ payment and financial transactions; computer data entry and data processing services; distribution of leaflets and samples for others, for advertising purposes; book-keeping; document reproduction services; data processing management services; organization of exhibitions for commercial or advertising purposes; computerized file management; rental of computer files; outsourcing the processing of documents and data for a company, namely, outsourcing services in the nature of compilation of information in computer databases, input and processing of data, information, images and documents, updating of databases and image banks; business consultation services, namely, consultation relating to business strategy, including assessing a company's existing operations, and advising on the development of technology-related methodologies in the field of project management; consultation relating to outsourcing of computerized business functions; business consultation ~~relating to~~ in the fields of electronic commerce and electronic business transactions; business consultation ~~relating to~~ in the field of on-line business transactions, namely, marketing, order processing, and order fulfillment; customer relationship management; and employee leasing services, namely, providing information technology professionals to others; processing of data

CLASS 036: Insurance services, namely, underwriting {specify field, e.g. life, health, accident, fire} insurance; banking; monetary affairs, namely, financial information, management and analysis services; real estate affairs, namely, ______________{please specify the real estate affairs, e.g., appraisal of real estate, leasing of real estate}; electronic payment and financial transaction services, namely, electronic processing and subsequent transmission of bill payment data; online payment services, namely, processing of debit card payments; finance services in the nature of financing services; Processing of payments made via banking cards, payment cards and cheques; Management of payment transactions and payment cancellations made with debit cards and credit cards ~~(debits, credits and cancellations)~~; debit card transaction processing services; consultation and financial information relating to the above-mentioned services

CLASS 037: Maintenance and updating of computer hardware in the nature of computers and computer peripherals; consultancy in the field of repair of computer hardware

CLASS 038: Providing access to databases; Telecommunication access services; communications by computer terminals; provision of access to on line services via provision of access to the internet ; Providing access to _______________{please specify the nature of what is being provided access to, e.g., access to databases, access to the Internet} for the computerised management of systems for data transmission and telecommunications systems for processing data; Transmission of electronic mail; computer-aided transmission of data in the nature of messages and images; communication services for commercial interaction in the field of global computer networks, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks; ~~leasing access time to computer database servers~~ providing access to databases; services for providing user access to computers for business management, namely, providing user access to global computer networks; Providing secure user access to global computer networks, servers and to the Internet; telecommunication access services for the security of people and of goods for secure remote transactions and payment; providing of Internet access for the computerized management of secure remote transactions and payment system; Electronic transmission of e-commerce transaction data and information via a global computer network; Providing of temporary access to computer software; ~~Providing temporary use of online, non-downloadable software~~; transmission of data via satellites

CLASS 041: Teaching in the field of _______________ {please indicate specific field, e.g. music, remedial reading}; entertainment services in the nature of _______________{please indicate specific event or act, and field, e.g. live performances by a musical group, television comedy series, ethnic festivals}; coaching in the field of sports; organization of conferences, seminars and exhibitions in the fields of education, culture, sports and entertainment for cultural or educational purposes; production of radio and television programs; Sporting and cultural activities, namely, organizing community sporting and cultural events; organization and leading of conferences, symposiums, congresses for non-business and non-commercial purposes; leading of cultural or educative ~~purposes~~ purposed exhibitions

CLASS 042: ~~Scientific and technological services and research and design relating thereto~~; industrial analysis and research services in the field of ____________{indicate field or subject matter}; design and development of computer hardware and software; computer programming; Design, development, maintenance and updating of computer software, design and development of computers ~~computers and computer peripherals~~; computer programming services, software programming, integration of computer systems and of networks in the fields of information technologies, telecommunications, payment transactions and cloud computing; Management of computer servers, facilities management, namely, hosting of computer servers on a global computer network for the purpose of facilitating e-commerce via such a server; Computer software programming for making financial transactions secure, consultancy and information relating to the aforesaid computer services; technological advisory services relating to computer programs; Design, installation, testing and maintenance of computer software, and consulting in the field of computer information security in relation to business interaction via the computer network ~~(programming)~~; Technical project studies in the field of computer hardware and software, namely, scientific research and development of computer hardware and software; consultancy in the field of design and development of computer hardware; computer systems analysis services; advice and consulting relating to use of internet, namely, internet security consultancy; rental of computers and computer software; duplication of computer programs; scientific and industrial research services, namely, research and development of new products for third parties and technical research in conjunction therewith; collection, interpretation and processing of data, namely, data automation and collection service using proprietary software to evaluate, analyze and collect service data; provision of online information and data in the fields of technology and software development through land, sea and air monitoring; website services, ~~including~~ namely, rental of website access time in the nature of rental of software for Internet access, website design, _______________ {indicate type of website, e.g., electronic commerce, etc.} website hosting, website development for others; Computer consultation services in the fields of web site design, web site development, web site maintenance, web site upgrading, web site hosting, web site privacy, web site security, database design, selection of computer software operating environment, development of computer software operating environment, development and integration of interactive computer software content and design, and in the fields of computer software applications, computer software maintenance, and computer software development; technical support services via telephone, email, facsimile, pager, and in person, namely, troubleshooting of computer software problems and enabling legacy applications for use on the world wide web

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

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.

MULTIPLE-CLASS APPLICATION REQUIREMENTS

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44>:

(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least nine classes; however, applicant submitted a fee(s) sufficient for only six class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

RESPONSE GUIDELINES

Please call or email the assigned trademark examining attorney with questions about this Office action. 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(s) and/or requirement(s) 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.

Udeme U. Attang

/Udeme U. Attang/

Examining Attorney

Law Office 115

571-272-9286

udeme.attang@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.

Offc Action Outgoing [image/jpeg]

U.S. TRADEMARK APPLICATION NO. 88252293 - ATOS SYNTEL - 879604

To:	ATOS SE (docket@lawabel.com)
Subject:	U.S. TRADEMARK APPLICATION NO. 88252293 - ATOS SYNTEL - 879604
Sent:	3/9/2019 1:23:33 PM
Sent As:	ECOM115@USPTO.GOV
Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/9/2019 FOR U.S. APPLICATION SERIAL NO. 88252293

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 3/9/2019 (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.