UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 4/3/2019

 

 

 

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

 

SUMMARY OF ISSUES: 

• Section 2(d) Refusal – Likelihood of Confusion
• Prior-filed Applications
• Classification of Services Amendment Required
• Identification of Goods and Services Amendment Required

 

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. 1957288, 2777392, 4075963, 4762397, 4762396, 4887481, and 5263166.  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.

 

Comparison 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).

 

The marks at issue are:

 

• Application – “CI” with design features;
• Registration No. 1957288 – “CI DESIGN” with design features;
• Registration No. 2777392 – “CI” with design features;
• Registration No. 4075963 – “CI-VISION” in standard characters;
• Registration No. 4762397 – “CI SCAN” in standard characters;
• Registration No. 4762396 – “CI NOTE” in standard characters;
• Registration No. 4887481 – “C I HOST” in standard characters; and
• Registration No. 5263166 – “CI” with design features.

 

A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

Based on this principle, the design features of the applied-for mark do not obviate its similarity with the registered marks in standard characters because the registered marks could be presented in similar renditions as the applied-for mark.

 

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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

 

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)).

 

Pursuant to the above-stated principles of analysis, the design features of the applied-for mark and the registered marks which are not in standard characters do not obviate their similarity because the lettering and/or wording in the marks is more dominant than the design features of the marks.

 

Accordingly, the applied-for mark and the mark in RN. 5263166 are similar for purposes of the likelihood of confusion analysis because their dominant features are identical.

 

Consumers are generally more inclined to focus on the first lettering, 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”).

 

Based on this principle, the lettering “CI” is the dominant feature of the marks in RNs. 1957288, 2777392, 4075963, 4762397, and 4762396.  Thus, these marks are similar for purposes of the likelihood of confusion analysis because the dominant features of the registered marks and the applied-for mark are identical.

 

The dominant features of the applied-for mark and the mark in RN. 4887481 are identical except for a slight difference in appearance between the dominant feature of the applied-for mark mark, which appears as lettering with no space separating the letters, that is, “CI”; and dominant feature of the registrant’s mark, which appears as lettering words with space separating the letters, that is, “C I”.  As such, the dominant features of the marks are identical in sound and virtually identical in appearance.  Thus, the marks are confusingly similar for the purposes of determining likelihood of confusion because their dominant features are essentially identical.  See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal citation omitted].”); In re Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”); Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar.  The word marks are phonetically identical and visually almost identical.”). 

 

Comparison of Goods and/or 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).

 

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)).  

 

The goods and/or services at issue are:

 

• Application – Computer hardware and software for use in data management and protection solutions, namely, data protection, data management, data backup, data restoration, and data storage; computer hardware and software for storage, protection, monitoring, migration, integration, and management of data; computer hardware and software for managing and automating data protection operations; computer hardware and software for monitoring data protection operations, providing reports for data protection operations, and providing alerts for data protection operations; computer hardware and software for providing analytics for data storage, protection, monitoring, migration, integration, and management of data; computer hardware and software for providing security access controls for data, providing hierarchical, role-based management of data, and for providing management of data based on user access permissions; data storage and management devices; Electronic storage of data; physical storage of electronically stored data; Providing temporary use of non-downloadable computer software for data protection, data management, data backup, and restoration; Software as a service (SAAS) services featuring software for storage, protection, monitoring, migration, integration, archiving, and management of data; software as a service (SAAS) services featuring software for managing, automating, and monitoring data protection operations, providing reports for data protection operations, and providing alerts for data protection operations; software as a service (SAAS) services featuring software for providing analytics for data storage, protection, monitoring, migration, integration, and management of data; software as a service (SAAS) services featuring software for providing security access controls for data and providing hierarchical, role-based management of data and for providing management of data based on user access permissions; software as a service (SAAS) services featuring software for providing a portal for viewing and managing analytics and operations for data storage, protection, monitoring, migration, integration, and management of data; software as a service (SAAS) services featuring software for providing an interface for management of data operations, namely, enrolling systems into data protection management, creating and changing schedules for data protection and management operations, adjusting management policies for data protection and management operations; consulting in the field of information technology relating to data protection, data management, data backup and restoration;
• Registration No. 1957288 – computer hardware and peripherals; computer accessories, namely disc drive mounting rails, cables, face plates and external enclosures to house disc drives; and parts therefor;
• Registration No. 2777392 – Computer programs, namely, software used in cryptographic applications for digital data encryption; computers; magnetic coded cards; blank electronic chip cards; blank integrated circuit cards; blank optical cards; computer hardware, namely, memory cards, microprocessors, computer memories, magnetic and optical card readers; smart card readers; blank computer disks, blank floppy computer disks; blank optical disks;
• Registration No. 4075963 – devices for the identification of foreign materials within in food products, namely, radiation detectors, magnetic object detectors, metal detectors, devices for checking product integrity and control of packaged goods, namely, radiation detectors, magnetic object detectors, metal detectors; barcode scanners, hand scanners, electromagnetic scanners, optical scanners, image scanners and scanners for industrial inspection; Computer system comprised of computer hardware, software, displays and cameras for vision inspection solution applications, namely, locating, identifying, measuring and inspecting objects, namely, consumer products, food products, beverages, pharmaceutical products, medical products, medical devices, packaging materials, packaging, labeling materials, labels, bottles, containers, automotive parts; computer software for use in data storage; and data processors, electronic controls, electronic evaluation device for measuring, testing and control devices and systems as well as for the industrial process control; computer, data storage, computer software and data processing devices, for recording, statistical analysis, output and visualization of physical and chemical measurement values for quality and charge control; computer software for use in data storage; and data processors for safe-guarding of the undertaking of instructions, the back traceability and the compliance with legal requirements;
• Registration No. 4762397 – Scientific, photographic, optical, weighing, measuring, signaling, and checking apparatus and instruments, namely, digital input and output scanners, digital transmitters, laser scanners, optical data links, optical scanners, optical receivers, optical transceivers, optical data links, and scanners; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electrical current; apparatus for recording, transmission, and reproduction of sound or images; blank magnetic recording media, blank sound recording disks; blank compact disks, blank DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; software for use in detecting, verifying, checking, and classifying bank notes and security documents and analyzing authenticity of banknotes and security documents; electronic sensors for detecting, checking and classifying bank notes and securities documents; computer software for use in checking coins and bank notes; apparatus for checking coins and bank notes or similar means of exchanges of value, namely, coin changers, coin counting or sorting machines, banknote acceptors and separating authentic banknotes from counterfeits; mechanisms for moving and checking coins, for apparatus operated by coins, namely, coin changers, coin counting or sorting machines, and coin acceptors for separating good coins from counterfeits; banknote changers, banknote counting and sorting machines, banknote acceptors and separating authentic banknotes from counterfeits; apparatus for sorting, monitoring, checking, detecting, counting, testing, distributing or rejecting coins, tokens, tickets, paper money, bank notes or similar means of exchange of value, namely, coin changers, coin counting or sorting machines, and coin acceptors for separating good coins from counterfeits. banknote changers, banknote counting and sorting machines, banknote acceptors and separating authentic banknotes from counterfeits;
• Registration No. 4762396 – Scientific, photographic, optical, weighing, measuring, signaling, and checking apparatus and instruments, namely, digital input and output scanners, digital transmitters, laser scanners, optical data links, optical scanners, optical receivers, optical transceivers, optical data links, and scanners; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electrical current; apparatus for recording, transmission, and reproduction of sound or images; blank magnetic recording media, blank sound recording disks; blank compact disks, blank DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; software for use in detecting, verifying, checking, and classifying bank notes and security documents and analyzing authenticity of banknotes and security documents; electronic sensors for detecting, checking and classifying bank notes and securities documents; computer software for use in checking coins and bank notes; apparatus for checking coins and bank notes or similar means of exchanges of value, namely, coin changers, coin counting or sorting machines, banknote acceptors and separating authentic banknotes from counterfeits; mechanisms for moving and checking coins, for apparatus operated by coins, namely, coin changers, coin counting or sorting machines, and coin acceptors for separating good coins from counterfeits; banknote changers, banknote counting and sorting machines, banknote acceptors and separating authentic banknotes from counterfeits; apparatus for sorting, monitoring, checking, detecting, counting, testing, distributing or rejecting coins, tokens, tickets, paper money, bank notes or similar means of exchange of value, namely, coin changers, coin counting or sorting machines, and coin acceptors for separating good coins from counterfeits. banknote changers, banknote counting and sorting machines, banknote acceptors and separating authentic banknotes from counterfeits;
• Registration No. 4887481 – Application service provider (ASP), namely, hosting computer software applications of others; Computer services, namely, cloud hosting provider services; Computer services, namely, interactive hosting services which allow the user to publish and share their own content and images on-line; Consulting services in the field of hosting computer software applications; Design, creation, hosting and maintenance of internet sites for third parties; Design, creation, hosting, maintenance of websites for others; Developing and hosting a server on a global computer network for the purpose of facilitating e-commerce via such a server; Hosting internet sites for others; Hosting of digital content on the Internet; Hosting of web sites; Hosting the software, websites and other computer applications of others on a virtual private server; Hosting the web sites of others on a computer server for a global computer network; Hosting websites on the Internet; Maintenance of websites and hosting on-line web facilities for others; Providing an online website for creating and hosting micro websites for businesses; Technical support services, namely, remote administration and management of in-house and hosted datacenter devices, databases and software applications; Web site hosting services; and
• Registration No. 5263166 – Computer services, namely, cloud hosting provider services, namely, content asset management service; Cloud based media utility services in the nature of software as a service (SAAS) and cloud computing featuring software for use in organizing, reviewing, editing, sharing, authenticating, exporting, encrypting and storing media files and content/audio/video production; Providing a website featuring a media aggregator and search engine for internet content.

 

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)). 

 

In this case, the application uses broad wording to describe “data storage and management devices,” which presumably encompasses all goods and/or services of the type described, including registrants’ more narrow identifications for specific types of data storage devices.  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).  Moreover, the applicant’s and registrants’ software services for data management overlap because they software services are used for the purposes.  Thus, applicant’s and registrant’s goods and/or services are legally identical in part and related for purposes of the likelihood of confusion analysis.  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)).

 

In respect to the parties’ goods and/or services that are not legally identical, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a representative sample of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely physical storage of electronic data and computer hardware and or software for managing/storing data, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

Additionally, the attached Internet evidence, consisting of screenshots from HPE.com, WekaIO.com, WesternDigital.com, and Oracle.com.  This evidence establishes that the same entity commonly provides the relevant goods and/or services and markets the goods and/or services under the same mark, the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the goods and/or services are similar or complementary in terms of purpose or function. 

 

Based on the above-referenced evidence, applicant’s and registrants’ goods and/or services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Summary of Section 2(d) Refusal

 

In total: the parties’ marks are similar because their dominant features are identical or essentially identical; the parties’ goods and/or services are available in the same trade channels because neither the application nor the registrations have restricted channels of trade; and the parties’ goods and/or services are commercially related because they are legally identical, and/or the evidence shows that the parties’ goods and/or services are commercially related.  Thus, consumers encountering the marks are likely to confuse them and mistake the underlying sources of the goods and/or services.  Accordingly, registration must be refused under Section 2(d) of the Trademark Act.

 

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

 

PRIOR-FILED APPLICATIONS:  The filing dates of pending U.S. Application Serial Nos. 88003028, 88173160, and 88173200 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Applicant must, however, respond to the following requirement.

 

CLASSIFICATION OF SERVICES AMENDMENT REQUIRED:  Applicant has classified “electronic storage of data” in International Class 39; however, the proper classification is International Class 42.  Therefore, Applicant must amend the application to classify these services in International Class 42.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Applicant must also respond to the following requirement.

 

IDENTIFICATION OF GOODS AND SERVICES AMENDMENT REQUIRED:  The identification for software in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the software and could identify goods and/or services in two international classes – as a product in International Class 9 or a service in International Class 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Computer software is a product classified in International Class 9 if it is (1) recorded on media (such as CDs) or (2) downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis.  TMEP §1402.03(d).  However, on-line non-downloadable software is considered a computer service in International Class 42, unless it is non-downloadable game software provided online or for temporary use, which is classified in International Class 41.  See TMEP §§1402.03(d), 1402.11(a)(xii).

 

For example, the following are acceptable identifications for software in International Class 9:  “desktop publishing software,” “downloadable software for word processing,” and “downloadable mobile applications for managing bank accounts.”  Additionally, the following are acceptable identifications for software in International Class 42:  “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”  For assistance with software classification and identifications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.

 

The wording “data storage and management devices” in the identification of goods is indefinite and must be clarified because it could identify multiple, discrete types of goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Applicant may adopt the following identification, if accurate (bold text indicating suggested changes):

 

In Class 9, Computer hardware and recorded software for use in data management and protection solutions, namely, data protection, data management, data backup, data restoration, and data storage; computer hardware and recorded software for storage, protection, monitoring, migration, integration, and management of data; computer hardware and recorded software for managing and automating data protection operations; computer hardware and recorded software for monitoring data protection operations, providing reports for data protection operations, and providing alerts for data protection operations; computer hardware and recorded software for providing analytics for data storage, protection, monitoring, migration, integration, and management of data; computer hardware and recorded software for providing security access controls for data, providing hierarchical, role-based management of data, and for providing management of data based on user access permissions; data storage and management devices, namely, external computer hard drives featuring software for electronic storage of data

 

In Class 39, Physical storage of electronically stored data

 

In Class 42, Providing temporary use of non-downloadable computer software for data protection, data management, data backup, and restoration; Software as a service (SAAS) services featuring software for storage, protection, monitoring, migration, integration, archiving, and management of data; software as a service (SAAS) services featuring software for managing, automating, and monitoring data protection operations, providing reports for data protection operations, and providing alerts for data protection operations; software as a service (SAAS) services featuring software for providing analytics for data storage, protection, monitoring, migration, integration, and management of data; software as a service (SAAS) services featuring software for providing security access controls for data and providing hierarchical, role-based management of data and for providing management of data based on user access permissions; software as a service (SAAS) services featuring software for providing a portal for viewing and managing analytics and operations for data storage, protection, monitoring, migration, integration, and management of data; software as a service (SAAS) services featuring software for providing an interface for management of data operations, namely, enrolling systems into data protection management, creating and changing schedules for data protection and management operations, adjusting management policies for data protection and management operations; consulting in the field of information technology relating to data protection, data management, data backup and restoration; Electronic storage of data

 

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.

 

CONCLUSION:  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 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.  

 

 

 

/Joshua S. Toy/

Examining Attorney

Law Office 120

(571) 272-4856

joshua.toy@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/3/2019 FOR U.S. APPLICATION SERIAL NO. 88271630

 

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 4/3/2019 (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.