To: | GSFM, LLC (malassenet@gmail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88283304 - RHIOT - N/A |
Sent: | 4/11/2019 9:45:32 AM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88283304
MARK: RHIOT
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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: GSFM, 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: 4/11/2019
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
Summary of Refusals and/or Requirements
The following is a summary of the requirements and/or refusals outlined below to which the applicant must respond.
n Likelihood of confusion refusal
n Requirement to explain any industry meaning
n Requirement to amend description of services
LIKELIHOOD OF CONFUSION
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
The Marks at Issue
The applicant seeks to register RHIOT for:
Downloadable computer software and firmware for encryption and decryption of digital files, including audio, video, text, binary, still images, graphics and multimedia files; downloadable computer software and firmware for encrypting and unencrypting programs, including compiled and source code; downloadable computer software and firmware for performing manipulations of encrypted data and programs; downloadable computer software and firmware for the private query of encrypted or unencrypted data; downloadable computer software and firmware for creating, transmitting, receiving, updating and storing encryption keys; downloadable computer software and firmware for creating, transmitting, receiving, updating and storing decryption keys, in Class 9
and
Computer software services, namely, software as a service (SaaS) services featuring software for use in the encryption and decryption of digital files, including audio, video, text, binary, still images, graphics and multimedia files; computer software services, namely, software as a service (SaaS) services featuring software for encrypting and unencrypting programs, including compiled, source code; computer software for performing manipulations of encrypted data and programs; computer software services, namely, software as a service (SaaS) services featuring software for the private query of encrypted or unencrypted data; computer software services, namely, software as a service (SaaS) services featuring software for creating, transmitting, receiving, updating and storing encryption keys; computer software services, namely, software as a service (SaaS) services featuring software for creating, transmitting, receiving, updating and storing decryption keys, in Class 42
The registered mark is RIOT LABS (with LABS disclaimed) for: Software as a service (SAAS) services featuring software for managed information security services, namely, software for providing comprehensive security incident monitoring, detection, correlation, analysis, and remediation, in Class 42.
The Marks are Highly Similar
Both marks share the common term, RIOT, or RHIOT. 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).
The Goods/Services are Closely Related
The applicant’s downloadable software and web-based software services are used for encryption and decryption of files, programs and data. The registrant’s web-based software services are used to provide security incident monitoring, detection, correlation, analysis and remediation. The examining attorney has attached sample websites that show security services of the types mentioned above employ encryption and decryption to advance their objectives. See, e.g.:
http://www.infosec.gov.hk/english/computer/encrypt.html - Encryption is a process for scrambling and transforming data from an easily readable and understandable format (such as Plain Text) into an unintelligible format that seems to be useless and not readily understandable (known as Cipher Text).
Encryption techniques are used to protect data and enforce confidentiality during transmission and storage. Encryption is also used for e-commerce, wireless network security and remote access to prevent spoofing and eavesdropping. Data, files, emails, even whole hard disks can be encrypted.
http://www.upwork.com/hiring/development/introduction-to-encryption-data-security/ There’s a time-tested science that is increasingly becoming a crucial link in the security chain: encryption. Encryption scrambles text to make it unreadable by anyone other than those with the keys to decode it, and it’s becoming less of an added option and more of a must-have element in any security strategy for its ability to slow down and even deter hackers from stealing sensitive information. If good encryption is capable of hindering investigations by FBI experts, consider what it could do for you and your company’s sensitive information.
If you’ve been putting off adopting encryption as a part of your security policy, delay no more. Here’s a guide to the science of encryption, and how you can begin implementing an encryption strategy today.
http://searchsecurity.techtarget.com/definition/encryption In computing, encryption is the method by which plaintext or any other type of data is converted from a readable form to an encoded version that can only be decoded by another entity if they have access to a decryption key. Encryption is one of the most important methods for providing data security, especially for end-to-end protection of data transmitted across networks. Encryption is widely used on the internet to protect user information being sent between a browser and a server, including passwords, payment information and other personal information that should be considered private. Organizations and individuals also commonly use encryption to protect sensitive data stored on computers, servers and mobile devices like phones or tablets.
The above evidence shows that the software and software services of the applicant and software services of the registrant are complementary to one another in performing data security and protection tasks. Where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease).
Since the dominant elements of both marks create the same commercial impression and the goods/services are closely related, consumers are likely to believe that the goods/services of the parties emanate from the same source. Therefore, registration is refused under Section 2(d) of the Trademark Act.
MEANING
SERVICES
Class 9 is acceptable. The following pertains to Class 42.
In Class 42, the wording “computer software for performing manipulations of encrypted data and programs” is indefinite because the applicant must specify the nature of the software services, e.g., software as a service (SaaS) services, or the nature of the software as a good, e.g., recorded computer software for performing manipulations of encrypted data and programs. The downloadable software with this function already appears in Class 9.
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).
Applicant may substitute the following wording, if accurate. Suggested changes and additions are in bold and items the applicant must clarify are in italics. Wording that is extraneous, and which should be deleted, has a line drawn through it.
Class 9: Downloadable computer software and firmware for encryption and decryption of digital files, including audio, video, text, binary, still images, graphics and multimedia files; downloadable computer software and firmware for encrypting and unencrypting programs, including compiled and source code; downloadable computer software and firmware for performing manipulations of encrypted data and programs; downloadable computer software and firmware for the private query of encrypted or unencrypted data; downloadable computer software and firmware for creating, transmitting, receiving, updating and storing encryption keys; downloadable computer software and firmware for creating, transmitting, receiving, updating and storing decryption keys; recorded computer software for performing manipulations of encrypted data and programs
Class 42: Computer software services, namely, software as a service (SaaS) services
featuring software for use in the encryption and decryption of digital files, including audio, video, text, binary, still images, graphics and multimedia files; computer software services,
namely, software as a service (SaaS) services featuring software for encrypting and unencrypting programs, including compiled, source code; software as a service (SaaS) services
featuring computer software for performing manipulations of encrypted data and programs; computer software services, namely, software as a service (SaaS) services featuring software for
the private query of encrypted or unencrypted data; computer software services, namely, software as a service (SaaS) services featuring software for creating, transmitting, receiving, updating
and storing encryption keys; computer software services, namely, software as a service (SaaS) services featuring software for creating, transmitting, receiving, updating and storing decryption
keys.
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.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Beware of misleading notices sent by private companies about your application. Private companies not associated with the USPTO often use public information provided in USPTO trademark applications to mail and email trademark-related offers and notices – most of which require fees. These companies often have names similar to the USPTO. All official USPTO correspondence will only be emailed from the domain “@uspto.gov.” For a current list of companies the USPTO has received complaints about, information on how to identify these offers and notices, and what to do if you receive one, see the misleading notices webpage.
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
/Elissa Garber Kon/
Examining Attorney, Law Office 106
phone: 571-272-9181
email: elissagarber.kon@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.