UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88259533
MARK: SIFT
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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: Aerstone Labs 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: 4/1/2019
The preliminary amendment dated February 13, 2019 has been accepted and entered.
SECTION 2(d) REFUSALS – LIKELIHOOD OF CONFUSION
Applicant seeks to register SIFT for software goods and services in Classes 9 and 42.
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks:
85122796 SIFTER (US Registration No. 4272663)
85402172 DATASIFT (US Registration No. 4141802)
85567287 SIFTPRO (US Registration No. 4300330)
86265101 SYFT (US Registration No. 4778487)
86444669 SIFT (US Registration No. 4760142)
86719035 SIFT (US Registration No. 5098321)
86878616 SIFT (US Registration No. 5130324)
86931491 CYFT. (US Registration No. 5134672)
87071175 SIFT SCIENCE INSTITUTE… (US Registration No. 5086791)
87111481 SIFT (US Registration No. 5449167)
87111505 SIFT (US Registration No. 5449168)
87354769 SIFT (US Registration No. 5349175)
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
SIMILARITY OF THE MARKS
In the present case, applicant’s mark is SIFT and many of the registrant’s marks are also SIFT. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, these marks are confusingly similar.
In the case of the remaining marks SYFT, and CYFT, the marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
The remaining marks are the composite marks SIFTER, DATASIFT, SIFTPRO, and SIFT SCIENCE INSTITUTE OF FITNESS TECHNOLOGY, which consists of applicant’s mark plus additional matter that does not significantly alter the commercial impression. 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). In the present case, the marks are identical in part.
Applicant may clearly note the clear co-existence of many SIFT or SIFT derivative marks in Classes 9 and Class 42, but applicant will also note that most, if not all, of these marks have clearly defined functions and/or fields that serve to differentiate the marks. Applicant’s description of its goods and services with the ufnctionalities of “for electronic data transfer”, “for electronic data management” “for data collection”, “for accessing data”, “for viewing data”, “for processing data”, “for analyzing data”, “for managing data”, “for sharing data” all provide no limiting language to distinguish from each of the registrant’s goods and services (or really, to differentiate its software function from any other general software function) and therefore are presumed to provide software goods and services that are legally identical to each of registrant’s services.
Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b). Applicant’s language in describing its software functionality results in each registrant having an identical or highly similar mark for what are either legally identical or highly related goods or services.
Because the marks are similar in appearance, sound, connotation and commercial impression, the marks are confusingly similar.
RELATEDNESS OF THE SERVICES
The applicant identifies the following good and services:
Class 9 Downloadable software for electronic data transfer, data storage and data management; Downloadable software for data migration; Downloadable software for use in data workflow storage and network archive solutions; Downloadable software for data automation and collection; Downloadable software for accessing, acquiring, viewing, searching, processing, extracting, ingesting, configuring, linking, organizing, analyzing, combining, managing, storing and sharing electronic data; Downloadable software for data transfer, storage and management for maintaining databases
Class 42 Cloud computing services featuring software for electronic data transfer, data storage and data management; Data migration services; Providing temporary use of on-line non-downloadable cloud computing software for use in data workflow storage and network archive solutions; Data automation and collection service using proprietary software to evaluate, analyze and collect service data; Providing temporary use of on-line non-downloadable software for accessing, acquiring, viewing, searching, processing, extracting, ingesting, configuring, linking, organizing, analyzing, combining, managing, storing and sharing electronic data; Software as a service (SAAS) services featuring software in the field of data transfer, storage and management for maintaining databases.
Registration No. 4300330 SIFTPRO identifies the following goods in International Class 9:
Class 9 Computer programs for using the internet and the world wide web
Registration No. 4760142 SIFT identifies the following goods in International Class 9:
Class 9 Computer software for identifying and analyzing enterprise hosts and networks for security risks in order to prevent loss of sensitive data to internal and external attackers
Registration No. 4778487 SYFT identifies the following goods in International Class 9:
Class 9 computer software for providing an online platform for users to upload, download, access, post, share, or aggregate media content via computer, the internet and other communication networks; computer application software for mobile devices, namely, software to enable uploading, downloading, accessing, posting, sharing, aggregating or otherwise providing electronic media or information via computer and communication networks; computer software for providing an online platform for users to define sharing groups between users; computer software for providing an online platform for users to curate social media content and other media content within user defined groups; application software for a mobile device for users to share media content or define sharing groups; and application software for a mobile device for users to curate social media content and other media content within the user defined groups
Registration No. 5098321 SIFT identifies the following goods in International Class 9:
Class 9 Computer application software for mobile phones, namely, software for transferring confidential records; computer application software for transferring confidential records to a recipient, namely, software for transferring confidential records; computer e-commerce software to allow users to perform electronic business transactions via a global computer network; computer software for organizing and viewing digital images and photographs; computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information
Registration No. 5349175 SIFT identifies the following goods and services:
Class 9 Downloadable mobile software application for administrative and organizational services and automated retail purchase management tools for online shoppers, namely, computer software to assist online retail consumers in unlocking and managing credit card benefits in the nature of price guarantees, special offers, travel rewards, purchase insurance, travel insurance, extended return policies, shopping rewards, air miles and extended product warranties; computer software and downloadable computer software to assist online retail consumers in organizing and centralizing online retail purchase information and corresponding credit card benefits in the nature of price guarantees, special offers, travel rewards, purchase insurance, travel insurance, extended return policies, shopping rewards, air miles, extended product warranties, facilitating automatic price-difference refunds and price match alerts, providing notifications regarding sales and promotions, providing shipment notifications for online purchases, storing and centralizing information concerning itemized billing details, returns, manuals, and warranty information
Class 42 Software as a service (SAAS) featuring software for administrative and organizational services, and automated credit card benefits management tools for online shoppers, namely, computer software to assist online retail consumers in organizing and centralizing online retail purchase information, unlocking and managing credit card benefits such as price guarantees, special offers, travel rewards, purchase insurance, travel insurance, extended return policies, shopping rewards, air miles and extended product warranties; providing temporary use of online downloadable computer software a to assist online retail consumers in organizing and centralizing credit card benefits associated with retail purchases such as price guarantees, special offers, travel rewards, purchase insurance, travel insurance, extended return policies, shopping rewards, air miles and extended product warranties
Registration No. 4141802 DATASIFT identifies the following services in International Class 42:
Class 42 Providing temporary use of non-downloadable Internet-based computer software, namely, providing software platform and interface over a global computer network for social website monitoring, data mining, database marketing, integration and formation of content streams, and extraction and retrieval of data and content.
Registration No. 4272663 SIFTER identifies the following services in International Class 42:
Class 42 Providing a website featuring non-downloadable customizable software for organizing, clarifying and reporting on text data in the nature of information stored in databases, e-mail archives, document management systems, multimedia files, intranet sites and Internet sites
Registration No. 5086791 SIFT SCIENCE INSTITUTE OF FITNESS TECHNOLOGY identifies the following services in International Class 42:
Class 42 Providing temporary use of on-line non-downloadable software for collecting data
Registration No. 5130324 SIFT identifies the following services in International Class 42:
Class 42 Software as a service (SAAS) services featuring software for real time analysis of data and bidding on advertisement opportunities on mobile devices in the field of digital advertising; software as a service (SAAS) services featuring software that enables an advertiser to evaluate and bid in real time on mobile device advertisement opportunities; software as a service (SAAS) services featuring software for disseminating mobile advertising; software as a service (SAAS) services featuring software for data integration and analysis of targeted advertisements delivered to mobile devices, analysis of targeted advertisements delivered to mobile devices, and management of targeted advertisements delivered to mobile devices; software as a service (SAAS) services featuring software for data integration, data analysis and data management of targeted advertisements delivered to mobile devices
Registration No. 5134672 CYFT identifies the following services in International Class 42:
Class 42 Software as a service (SAAS) services featuring software for use in data set correlation detection, benchmarking, and applying predictive analytics to healthcare data in order to optimize health outcomes and for use in cost, quality, and payment trending; software as a service (SAAS) services featuring software for helping healthcare providers identify and reduce operational and financial waste while improving patient health outcomes; cloud computing featuring software for use in healthcare analytics utilizing big data concepts and predictive modeling capabilities; cloud computing featuring software for use in predictive analytics and enterprise decision management in the field of healthcare; computer and technological professional services, namely, healthcare information technology consulting services
Registration Nos. 5449167 and 5449168 SIFT identifies the following services in Class 42:
Class 42 Software as a service (SAAS) services featuring software for collecting and analyzing employee data for the purpose of organizational development, employee engagement, and talent management in the field of human resources; Software as a service (SAAS) services featuring software for recording and reporting employee productivity, collecting and analyzing employee data for organizational development and talent management purposes in the field of employment.
As noted above, applicant describes its goods and services with the functionalities of “for electronic data transfer”, “for electronic data management” “for data collection”, “for accessing data”, “for viewing data”, “for processing data”, “for analyzing data”, “for managing data”, “for sharing data” with no additional overall limiting language.
Therefore, in this case, the application uses extremely broad wording to describe the overall functionality of its goods and services, which presumably encompasses all goods and/or services of the type described, including the software functionality of each of the registrant’s more narrowly described software. 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 or services (respectively) 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 services of the applicant have no restrictions as to nature, type, channels of trade, or classes of purchasers and therefore, as to each registrant, 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.
Because the marks are confusingly similar and the goods and/or services are related, there is a likelihood of confusion to relevant consumers, and therefore registration is refused.
ADVISORY: PRIOR-FILED APPLICATIONS
The filing dates of the pending U.S. Application Serial Nos. below precede applicant’s filing date:
87124744 SIFT
87124751 SIFT INTERFERENCE
87616545 SIFT SCIENCE
87616544 SIFT SCIENCE
87623111 SIFT
87623123 SIFT
87623126 SIFT
87666855 SIFT
88134502 SYFT
88211912 SYFT SYNERGY
79229954 SYFT
See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant should note the following additional ground for refusal.
SPECIMEN UNACCEPTABLE – CLASS 9
THIS PARTIAL REFUSAL APPLIES TO CLASS 9 ONLY
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 9. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Specifically, the specimen provided for Class 9 is purporting to show downloadable software but instead only shows non-downloadable internet based software services that are being provided in the context of an internet browser. Furthermore, everything else provided is at best advertising material for software, which is not acceptable for goods.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). However, leaflets, handbills, advertising circulars, and other advertising materials generally are not acceptable specimens for goods. See TMEP §§904.03 et seq.
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
The following description is suggested, if accurate:
The mark consists of the word "SIFT", in stylized black letters, to the right of a design of a blue arrow that is overlapped by a black arrow.
ASSISTANCE
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.
/benjaminrosen/
Benjamin Rosen
Examining Attorney
Law Office 120
(571) 272-8425
benjamin.rosen@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.
