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: 4/2/2019

 

 

 

 

 

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.  

 

REFUSALS & REQUIREMENTS

 

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:

 

• PRIOR-FILED APPLICATIONS
• SECTION 2(d) REFUSAL
• IDENTIFICATION

 

PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 87569807, 87859580, & 88225420 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.

 

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. 1626809, 3674937, 4732037, 4799257 & 5432255.  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

 

The application is for the word ACCELERATE with a triangle and diagonal line design.

 

Reg. No. 5432255 is for the standard character mark ACCELERATE.

 

Reg. No. 4799257 is for the standard character mark ACCELERATE.

 

Reg. No. 4732037 is for the standard character mark ACCELERATE.

 

Reg. No. 3674937 is for the standard character mark ACCELERATE.

 

Reg. No. 1626809 is for the typed drawing ACCELER8.

 

ACCELERATE is the dominant feature of the applied-for mark.

 

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)).

 

Therefore, the marks are confusingly similar.

 

Comparison of the Goods & Services

 

The application is for:

 

            Class 9

Downloadable computer software for providing a content management system; Downloadable computer application software for personal computers, mobile phones, portable media players, and handheld computers, namely, software for creating and presenting slide shows and presentations, sketching and drawing, and for managing and accessing databases for such created and stored documents, images, slide shows, presentations and media locally and/or in the cloud; Downloadable software for organizing, recording, planning, analyzing, transcription, taking notes, sharing, making bookmarks of web conferences; Downloadable software for organizing, profiling, customizing, distributing, and presenting digital information and content for use in business, sales, marketing and presentations

 

            Class 35

Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; Arranging and conducting special events for business purposes; Arranging and conducting special events for commercial, promotional or advertising purposes; Business marketing consulting services; Business networking; Career placement consulting services; Conducting marketing studies; Consulting in the field of sales methods, sales management, and sales improvement; Job and personnel placement; Marketing research services; On-line business networking services; Organizing business networking events in the field of marketing and sales; Organizing and conducting job fairs; Providing networking opportunities for individuals seeking employment; Providing on-line employment information in the field of recruitment, careers, job resources and listings and resumes; Statistical evaluations of marketing data

 

            Class 41

Arranging, organizing, conducting, and hosting social entertainment events; Educational services, namely, providing continuing professional education courses in the fields of sales and marketing; Organizing events in the field of marketing and sales for cultural or educational purposes; Providing information, news and commentary in the field of current events relating to education and training in the field of marketing and sales; Training courses in strategic planning relating to advertising, promotion, marketing and business; Training services in the field of training sales personnel

 

            Class 42

Platform as a service (PAAS) featuring computer software platforms for a content management system and sales enabling platform that helps businesses bring all their marketing and sales content and allowing business sales team to quickly access their marketing information and improve their efficiency; Platform as a service (PAAS) featuring computer software platforms for organizing, recording, planning, analyzing, transcription, taking notes, sharing, making bookmarks of web conferences; Software as a service (SAAS) services featuring software for training and skills improvement through individual practice, peer collaboration, and third party performance evaluation in the field of verbal and non-verbal communication; Software as a service (SAAS) services featuring software for business performance and employee training and education; Software as a service (SAAS) services featuring software for organizing, recording, planning, analyzing, transcription, taking notes, sharing, making bookmarks of web conferences; Computer services, namely, hosting and maintaining an on-line web site for others for use of on-line non-downloadable software tools for organizing, profiling, customizing, distributing, presenting digital content for use in business, sales, marketing and presentations

 

Reg. No. 5432255 is for “Educational services, namely, conducting classes, seminars, conferences and workshops in the field of electronic commerce and distribution of educational materials in connection therewith” in Class 41.

 

Reg. No. 4799257 is for “Computer software development; Consultancy in the field of software design” in Class 42.

 

Reg. No. 4732037 is for “Computer software, hardware and terminals for use in tracking employee time and attendance and for workforce management; Downloadable computer software application for use in tracking employee time and attendance and for workforce management” in Class 9 and “Application service provider (ASP) featuring software for use in tracking employee time and attendance and for workforce management; Software as a service (SAAS) services for use in tracking employee time and attendance and for workforce management” in Class 42.

 

Reg. No. 3674937 is for “computer software for use in risk management in the nature of tracking and assessment, operational risk management in the nature of tracking and assessment, risk evaluation, risk measurement, simulating adverse events, testing risk management strategies, regulatory compliance management in the nature of tracking and assessment” in Class 9.

 

Reg. No. 1626809 is for “computer programs for use in the field of data management applications” in Class 9.

 

The broad wording in the cited registrations includes, encompasses, and/or overlaps the applicant’s goods and services.

 

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)).  

 

Broad wording is presumed to encompass all goods and/or services of the type described.  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).

 

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.

 

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

 

IDENTIFICATION

 

The identification contains wording that must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Class 9

“and/or” is indefinite.

 

Class 41

“Organizing events in the field of marketing and sales for cultural or educational purposes” is overbroad.

 

Applicant may substitute the following wording, if accurate: 

 

            Class 9

Downloadable computer software for providing a content management system; Downloadable computer application software for personal computers, mobile phones, portable media players, and handheld computers, namely, software for creating and presenting slide shows and presentations, sketching and drawing, and for managing and accessing databases for such created and stored documents, images, slide shows, presentations and media locally and in the cloud; Downloadable software for organizing, recording, planning, analyzing, transcription, taking notes, sharing, making bookmarks of web conferences; Downloadable software for organizing, profiling, customizing, distributing, and presenting digital information and content for use in business, sales, marketing and presentations

 

            Class 35

Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; Arranging and conducting special events for business purposes; Arranging and conducting special events for commercial, promotional or advertising purposes; Business marketing consulting services; Business networking; Career placement consulting services; Conducting marketing studies; Consulting in the field of sales methods, sales management, and sales improvement; Job and personnel placement; Marketing research services; On-line business networking services; Organizing business networking events in the field of marketing and sales; Organizing and conducting job fairs; Providing networking opportunities for individuals seeking employment; Providing on-line employment information in the field of recruitment, careers, job resources and listings and resumes; Statistical evaluations of marketing data

 

            Class 41

Arranging, organizing, conducting, and hosting social entertainment events; Educational services, namely, providing continuing professional education courses in the fields of sales and marketing; Organizing educational seminars in the field of marketing and sales for cultural or educational purposes; Providing information, news and commentary in the field of current events relating to education and training in the field of marketing and sales; Training courses in strategic planning relating to advertising, promotion, marketing and business; Training services in the field of training sales personnel

 

            Class 42

Platform as a service (PAAS) featuring computer software platforms for a content management system and sales enabling platform that helps businesses bring all their marketing and sales content and allowing business sales team to quickly access their marketing information and improve their efficiency; Platform as a service (PAAS) featuring computer software platforms for organizing, recording, planning, analyzing, transcription, taking notes, sharing, making bookmarks of web conferences; Software as a service (SAAS) services featuring software for training and skills improvement through individual practice, peer collaboration, and third party performance evaluation in the field of verbal and non-verbal communication; Software as a service (SAAS) services featuring software for business performance and employee training and education; Software as a service (SAAS) services featuring software for organizing, recording, planning, analyzing, transcription, taking notes, sharing, making bookmarks of web conferences; Computer services, namely, hosting and maintaining an on-line web site for others for use of on-line non-downloadable software tools for organizing, profiling, customizing, distributing, presenting digital content for use in business, sales, marketing and presentations

 

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.

 

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.

 

 

/Samuel R. Paquin/

Examining Attorney

Law Office 101

(571) 272-2514

samuel.paquin@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 4/2/2019 FOR U.S. APPLICATION SERIAL NO. 88299625

 

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 4/2/2019 (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.