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. 88300125
Mark: PRISMA
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Correspondence Address: WILSON SONSINI GOODRICH & ROSATI
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Applicant: Palo Alto Networks, Inc.
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Reference/Docket No. 42284-TM1019
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: November 01, 2019
This Office action is in response to applicant’s communication filed on October 29, 2019.
In a previous Office action dated May 8, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with registered marks. In addition, applicant was required to satisfy the following requirements: amend the identification of goods and services and provide a translation of the foreign wording in the mark.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: definite amended identification provided. See TMEP §§713.02, 714.04.
The trademark examining attorney maintains and now makes FINAL the refusal and requirement in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
Partial Section 2(d) Refusal – Likelihood of Confusion
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
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.
Applicant has applied for the mark PRISMA (standard characters) for in relevant part
“Computer hardware, namely, firewalls and networks security devices in the nature of network routers” in International Class 009;
“Technological consultation in the field of computer networking and network security” in International Class 042.
The cited registrations are as follows:
PRISM (standard characters) (Reg. No. 4462888) for “computer and information security consulting conducted in connection with enterprise-wide plans, protocols, and mitigation strategies to address physical, computer, and information security” in International Class 042;
PRISM (standard characters) (Reg. No. 4955214) for in relevant part “computer hardware and computer peripheral devices; computer hardware and computer peripherals; computer hardware and peripheral devices” in International Class 009.
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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
In applicant’s October 29, 2019 response, applicant argues the marks create dissimilar commercial impressions. In doing so, applicant asserts the marks are different words all together and that the Spanish translation of applicant’s applied-for mark is irrelevant. The examining attorney respectfully disagrees with applicant’s arguments.
Concerning applicant’s first argument, applicant’s mark PRISMA is highly similar to the registrants’ marks PRISM where the entirety of registrants’ marks appear within that of applicant’s applied-for mark. Incorporating the entirety of one mark within another 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 Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); 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 LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
While the term “PRISM” has a dictionary definition and the term “PRISMA” does not, the slight sight and sound difference between the marks, which lies in the final syllable "A" of applicant's applied-for mark does not obviate the similarity of the marks where consumers will see and recognize the term “PRISM” in both marks. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Additionally, the entirety of registrants’ marks “PRISM” comprises the leading portion and majority of applicant’s applied-for mark. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
Turning to applicant’s argument that the Spanish translation is irrelevant as “there is no evidence suggesting that a typical, reasonable purchaser would view Applicant’s Mark as a direct translation”, if the evidence shows that the relevant English translation is literal and direct, and no contradictory evidence of shades of meaning or other relevant meanings exists, the doctrine generally should be applied by the examining attorney. See, e.g., In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (holding LUPO for men’s and boys’ underwear, and WOLF and design for various clothing items, likely to cause confusion, because, inter alia, "LUPO" is clearly the foreign equivalent of the English word "wolf").
Applicant’s mark is in Spanish, which is a common, modern language in the United States. See In re Aquamar, Inc., 115 USPQ2d 1122 (Spanish). Specifically, the attached evidence from the United Stated Census Bureau providing detail of languages spoken at home and the ability to speak English for the population 5 years and over for the United States for the years 2009-2013 shows the large number of U.S. consumers, greater than 37 million, who speak this language. See http://www.census.gov/data/tables/2013/demo/2009-2013-lang-tables.html for attached data.
The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A). The ordinary American purchaser includes those proficient in the foreign language. In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.
In this case, the ordinary American purchaser would likely stop and translate the mark because the Spanish language is a common, modern language spoken by an appreciable number of consumers in the United States. Specifically, the evidence from the wordreference.com, lexico.com, and spanishcentral.com shows the foreign term directly translates to the English term “PRISM”. See also previously attached translation evidence from Collins English Dictionary, spanishdict.com, and the Cambridge Dictionary.
As the marks look and sound similar and create the same commercial impression, the marks are considered similar for likelihood of confusion purposes.
Comparison of the Goods and/or Services
In this case, the application and registrations use broad wording to describe the goods and services which presumably encompasses all goods and/or services of those more narrowly 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). Specifically, Reg. No. 4955214 uses broad wording to describe “computer hardware”, which presumably encompasses all goods of the type described, including applicant’s more narrow “computer hardware, namely, firewalls and networks security devices in the nature of network routers”. Thus, applicant’s and registrant’s goods 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)).
Similarly, Reg No. 4462888 uses broad wording to describe “computer and information security consulting”, which presumably encompasses all services of the type described, including applicant’s more narrow “technological consultation in the field of network security”. Reg. No’s. 4462888 restriction as to performing its services “in connection with enterprise-wide plans, protocols, and mitigation strategies to address physical, computer, and information security” does not alter the analysis. Specifically, applicant’s consulting services are encompassed by Reg. No 4462888 and applicant is free to perform its narrower services in any manner, including “in connection with enterprise-wide plans, protocols, and mitigation strategies to address physical, computer, and information security”. Therefore, applicant’s and registrant’s services are legally identical. Id.
Additionally, the goods and/or services of the parties have no restrictions as to 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 registrants’ goods and/or services are related.
In response, applicant argues (1) the goods and services are dissimilar, (2) the trade channels are dissimilar, (3) the purchasers of the respective goods and/or services are sophisticated, and (4) the cited marks lack fame. The examining attorney respectfully disagrees with applicant’s first three arguments and remains neutral as to the last argument.
Applicant first argues the “Examining Attorney assumes the goods and services in question are related” where the goods and services cover the “general field of computers.” Applicant presents specimen evidence from the cited registrations demonstrating how registrant’s actual use differs from that of the applicant. As noted above, 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)). While registrant’s are free to use their mark as narrowly as they wish in commerce, the scope of their protection extends to that of the stated goods and services in each respective registration. It is upon this scope of protection in the identifications of the registrations’ that the relatedness is analyzed, rather than that the goods and services merely cover the “general field of computers” as applicant asserts. In this case, applicant’s goods and services as identified are encompassed by that of the registrants’.
Concerning applicant’s argument the “trade channels are unrelated” where the target purchasers are dissimilar, the examining attorney maintains that based on the description of the goods and/or services stated in the application and registrations at issue, applicant’s goods and services as identified are either encompassed by that of the registrants’ or established by evidence to be related. As the identifications are not limited by trade channels or classes of purchasers, the goods and/or services of the parties have no restrictions as to channels of trade and 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)).
Applicant next argues without evidence its consumers are large companies with sensitive and large-scale cyber security issues while registrants’ consumers are professional engineers and IT professionals. Even if the target consumers were established by evidence, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163). Further, large companies with sensitive and large-scale cyber security issues often hire engineers and IT professional that might procure the goods and/or services of either party. See attached Internet evidence from symantec.com and myworkdayjobs.com.
Applicant finally argues the cited marks are not famous and therefore not entitled to a broader scope of protection. The examining attorney asserts no position on this argument because of the nature of the evidence required to establish the fame of a registered mark. The Board normally does not expect the examining attorney to submit evidence as to the fame of the cited mark in an ex parte proceeding. See In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006) ; see also In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1086-88 (TTAB 2016) (considering and finding persuasive examining attorney’s evidence of fame of the registered mark JAWS, but reiterating that examining attorneys are not expected to submit evidence of fame). Additionally, in an ex parte analysis of the du Pont factors for determining likelihood of confusion, the "fame of the mark" factor is normally treated as neutral when no evidence as to fame has been provided. See id.; see also In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009) (noting that the absence of evidence as to the fame of the registered mark "is not particularly significant in the context of an ex parte proceeding"). TMEP § 1207.01(d)(ix).
Conclusion
In conclusion, the parties utilize highly similar marks conveying a highly similar overall sound and impression in connection with legally identical goods and/or services marketed to the same consumers through similar channels of trade. Therefore, registration of the applied-for mark is refused.
“Computer hardware, namely, firewalls and networks security devices in the nature of network routers” in International Class 009;
“Technological consultation in the field of computer networking and network security” in International Class 042.
(1) Deleting the goods and/or services to which the refusal pertains;
(2) Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
The following requirement is also maintained and made final.
English Translation Required
In applicant’s October 29, 2019 response, applicant asserts the translation requirement is “without basis” where consumers would not perceive applicant’s mark as a foreign term with English meaning. Applicant further argues similar PRISMA-related marks have been allowed to register without an English translation.
The examining attorney notes consumer perception is inapplicable when requiring a translation. An application to register a mark that includes non-English wording must include an English translation of that wording. 37 C.F.R. §2.32(a)(9); TMEP §809. This is critical because the foreign equivalent of an English term may be regarded in the same way as the English term for purposes of determining descriptiveness, requiring disclaimer, and citing marks under §2(d) of the Act. Id. The attached evidence from wordreference.com, lexico.com, and spanishcentral.com as well as the previously attached evidence from Collins English Dictionary, spanishdict.com, and the Cambridge Dictionary in the May 8, 2019 Office action establishes that the application includes non-English wording.
To the extent other applications have proceeded to registration in the absence of a translation statement, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).
The English translation of “PRISMA” in the mark is “PRISM”.
TMEP §809.03.
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.
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
Christopher Hoffman
/Christopher Hoffman/
Trademark Examining Attorney
Law Office 128
(571)272-3351
christopher.hoffman@uspto.gov
RESPONSE GUIDANCE
