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: 5/3/2019

 

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:

 

·       Section 2(d) – Likelihood Of Confusion Refusal

·       Advisory: Prior Filed Applications Potential Refusal

·       Amended Application Of Goods And Services Required

·       Amended Mark Description And Color Claim Required

·       Foreign Registration Required

 

SECTION 2(d) – LIKELIHOOD OF CONFUSION REFUSAL-IN-PART

 

THIS PARTIAL REFUSAL ONLY APPLIES TO INTERNATIONAL CLASSES 9 AND 42.

 

Registration of the applied-for mark is refused in part because of a likelihood of confusion with the mark in U.S. Registration Nos. 5080603, 4661894, 4860828, 4149033, 4762639, and 3030258.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant’s mark is SPARTAN and design (in stylized form) for, in relevant part,

 

“Computer hardware; computer software; mobile applications; application software; computer software applications; downloadable computer software applications; communication software; software for monitoring, controlling and running physical world operations; communications networks; computer software platforms; mobile application platforms; software for commerce over a global communications network; computer hardware and software for use in business operations; artificial intelligence and machine learning software; artificial intelligence software for analysis; machine learning software for analysis; workflow software; workflow applications; workflow management system software; computer software for the remote analysis and control of machines and equipment; product lifecycle management software; project management software; mobile device management software; computer hardware and software for managing field work, resources and industrial assets; computer software for use in planning, capturing and tracking progress of jobs, people and equipment; computer software for tracking and identifying people and objects; computer software for tracking and managing resources; predictive maintenance software; computer software for use in monitoring industrial processes; computer software for managing and interrogating the industrial internet of things; Internet of Things gateways; computer application software for use in implementing the Internet of Things; computer hardware modules for use in electronic devices using the Internet of Things; computer hardware and software system for tracking people and objects using RFID tags and readers; tracking devices; remote monitoring apparatus; radio-frequency identification (RFID) tags; radio-frequency identification (RFID) readers; electronic tags; electronic tracking apparatus and instruments; parts and fittings for tracking devices, RFID tags and readers; barcode scanners; optical Barcode Recognition software; databases; data management software; data and file management and database software; computer software for accessing, browsing and searching online databases; real-time data processing apparatus; intelligent gateways for real-time data analysis; apparatus for data storage; data storage devices and media” in Class 9; and

 

“Software development; Software as a Service; Software as a Service for use in implementing the Internet of Things; Software as a Service relating to artificial intelligence and machine learning software, artificial intelligence software for analysis, computer software for managing and interrogating the industrial internet of things, computer hardware modules for use with electronic devices using the Internet of Things; programming of software for inventory management; programming of software for use in planning, capturing and tracking progress of jobs, people and equipment; programming of software for managing field work, resources and industrial assets; rental of computer software and hardware; Platform as a Service; development of computer platforms; design and development of artificial intelligence and machine learning software; design and development of artificial intelligence software for analysis; design and development of computer software for managing and interrogating the industrial internet of things; design and development of Internet of Things gateways; design and development of computer application software for use in implementing the Internet of Things; design and development of computer hardware modules for use in electronic devices using the Internet of Things; electronic data storage; computerised data storage; rental of computer hardware and software system for tracking people and objects using RFID tags and readers, tracking devices, remote monitoring apparatus, radio-frequency identification (RFID) tags, radio-frequency identification (RFID) readers, electronic tags, electronic tracking apparatus and instruments, barcode scanners and optical Barcode Recognition software; providing temporary use of non-downloadable software; providing temporary use of non-downloadable software for inventory management; providing temporary use of non-downloadable software for use in planning, capturing and tracking progress of jobs, people and equipment; providing temporary use of non-downloadable software for managing field work, resources and industrial assets; development of computer software for logistics, supply chain management and e-business portals; machine condition monitoring; calibration of machines; testing of machinery; engineering services for the analysis of machinery; quality control testing services for industrial machinery; advisory services relating to man-machine interfaces for computer software; installation, maintenance, updating and repair of computer software; providing temporary use of non-downloadable computer software for tracking packages and freight over computer networks, intranets and the internet; information, advisory and consultancy in relation to all of the aforesaid services” in Class 42.

 

The registered marks are as follows:

 

1. The mark in Registration No. 5080603 is SPARTAN SECURITY COMPANY STRENGTH THROUGH SECURITY and design (in stylized form) for, in relevant part, “computer security consultancy” in Class 42.

 

2. The mark in Registration No. 4661894 is SPARTAN (in standard character form) for “electronic security and surveillance devices, namely, electronic security tags” in International Class 9.

 

3. The mark in Registration No. 4860828 is SPARTAN SALES PRO (in standard character form) for “computer software application for assisting in choosing the correct products for a sales proposal” in Class 9.

 

4. The mark in Registration No. 4149033 is SPARTAN (in standard character form) for, in relevant part, “computer software for use in janitorial or cleaning management and user manuals sold as a unit; computer software, namely, an operations program for staffing, scheduling, work loading, quality assurance, and inventory control and janitorial work cleaning management” in Class 9 and “consulting services in the field of the use of janitorial and cleaning management software for others; consulting services in the field of chemical analysis and the use of janitorial and cleaning software” in Class 42.

 

5. The mark in Registration No. 4762639 is SPARTAN MT (in standard character form) for, in relevant part, “computer software for inverting and interpreting waveform data in the field of geophysical exploration, mineral exploration, geothermal exploration, oil and gas exploration for creating survey reports, maps and charts” in Class 9.

 

6. The mark in Registration No. 3030258 is SPARTAN (in standard character form) for, in relevant part, “computer hardware and related computer software for controlling material handling machines, robots, and factory automation equipment” in Class 9.

 

Introduction to Section 2(d) Analysis

 

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 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). 

 

In this case, the following factors are most relevant:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Similarity of the Marks

 

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).

 

In the present case, applicant’s mark is confusingly similar in sound, appearance, meaning, and overall commercial impression to registrant’s mark.  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).  Specifically, the marks are highly similar in sound, appearance, and meaning because of the shared term “SPARTAN”.

 

Moreover, the additional wording in the registered marks (Registration Nos. 5080603, 4860828, and 4762639) does not overcome the similarities.  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.

 

Similarly, the design elements in the registered mark (Registration No. 5080603) does not affect the overall similarities.  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)).  Accordingly, consumers will focus on the wording in the marks, in particular “SPARTAN”, and perceive this as the dominant, source-identifying matter in the marks.  Consequently, purchasers will likely be confused as to the source of the parties’ goods and services because of the similarities between the marks. 

 

For these reasons, the marks are confusingly similar.

 

Relatedness of the Goods and Services

 

Determining likelihood of confusion is based on the description of the goods and 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)).  

 

First, the application uses broad wording to describe “computer hardware; computer software; application software; computer software applications; downloadable computer software applications; computer hardware and software for use in business operations; workflow software; workflow applications; workflow management system software; project management software”, which presumably encompasses all goods of the type described, including registrants’ more narrow “computer software application for assisting in choosing the correct products for a sales proposal” (Registration No. 4860828), “computer software for use in janitorial or cleaning management and user manuals sold as a unit; computer software, namely, an operations program for staffing, scheduling, work loading, quality assurance, and inventory control and janitorial work cleaning management” (Registration No. 4149033),  “computer software for inverting and interpreting waveform data in the field of geophysical exploration, mineral exploration, geothermal exploration, oil and gas exploration for creating survey reports, maps and charts” (Registration No. 4762639), and “computer hardware and related computer software for controlling material handling machines, robots, and factory automation equipment” (Registration No. 3030258), which specify types of computer hardware and software.  Applicant’s broad identification for electronic tags encompasses “electronic security and surveillance devices, namely, electronic security tags” (Registration No. 4661894).

 

See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). 

 

Thus, applicant’s and registrants’ 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)).

 

Applicant’s services in International Class 42 are also related to the goods and services of the relevant registrants. For example, applicant’s software development services are related to the software provided by the registrants. The attached Internet evidence, consisting of screenshots of the websites for XB software (http://xbsoftware.com/services/), Praxent (http://praxent.com/build/custom-software-development#) and Intectics (http://intetics.com/ ), establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark. The aforementioned entities offer software development services and may offer software that is similar to the software provided by the relevant registrants. The aforementioned entities also offer software consultation services and may provide consulting services in the field of software that is used in the field of janitorial cleaning services.

 

Finally, applicant’s software development services are also related to computer security consultancy. The attached screenshots of the websites for Nektra (http://www.nektra.com/custom-software-development-company/computer-security/), and TechStak (http://www.techstak.com/solutions/Software-Solutions/), establishes that entities often offer the services of the parties.

 

Thus, applicant’s and registrant’s goods and 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).

 

Accordingly, registration of the applied-for mark in International Classes 9 and 42 is hereby refused under Section 2(d) of the Trademark Act.

 

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

 

Applicant should note the additional potential grounds for refusal.

 

ADVISORY: PRIOR FILED APPLICATIONS POTENTIAL REFUSAL

The filing dates of pending U.S. Application Serial Nos. 88240893, 88240886, 79219511, 87732913, and 88146987 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.

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

First, applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services.  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

Next, the identification of goods and services is indefinite and must be clarified because it does not sufficiently indicate the type and function of the applied-for goods and services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Lastly, “communications networks” and “computer hardware modules for use with electronic devices using the Internet of Things” are classified incorrectly.  Applicant must amend the application to classify the goods and services in International Classes 38 and 9, respectively.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).  Moreover, “communications networks” is indefinite and must be clarified because it does not make clear the type of services applicant offers.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may adopt the following identification, with changes highlighted in bold, if accurate: 

 

Class 9 – “Computer hardware; {indicate type, e.g., downloadable} computer {indicate type, e.g., operating} software; {indicate type, e.g., downloadable} mobile applications for {indicate function, e.g., use in database management}; {indicate type, e.g., downloadable} application software for {indicate items, e.g., mobile phones}, namely, software for {indicate function, e.g., use in database management}; {indicate type, e.g., downloadable}computer software applications for {indicate function, e.g., use in database management}; downloadable computer software applications for {indicate function, e.g., use in database management}; {indicate type, e.g., downloadable} communication software for {indicate function, e.g., providing access to the Internet}; {indicate type, e.g., downloadable} computer software for monitoring, controlling and running physical world operations;  electronic devices for locating and tracking {indicate items, e.g., lost articles, people, pets} using cellular communications networks; {indicate type, e.g., downloadable} computer software platforms for {indicate purpose, e.g., application development, web hosting, database management}; {indicate type, e.g., downloadable} mobile application platforms for {indicate purpose, e.g., mobile application development}; {indicate type, e.g., downloadable} software for commerce over a global communications network; computer hardware and {indicate type, e.g., downloadable} software for use in business operations; {indicate type, e.g., downloadable} artificial intelligence and machine learning software; {indicate type, e.g., downloadable} artificial intelligence software for analysis; {indicate type, e.g., downloadable} machine learning software for analysis; {indicate type, e.g., downloadable} workflow software; {indicate type, e.g., downloadable} mobile applications for managing workflow; {indicate type, e.g., downloadable} workflow management system software; {indicate type, e.g., downloadable} computer software for the remote analysis and control of machines and equipment; {indicate type, e.g., downloadable} product lifecycle management software; {indicate type, e.g., downloadable} project management software; {indicate type, e.g., downloadable} mobile device management software; computer hardware and {indicate type, e.g., downloadable} software for managing field work, resources and industrial assets; {indicate type, e.g., downloadable} computer software for use in planning, capturing and tracking progress of jobs, people and equipment; {indicate type, e.g., downloadable} computer software for tracking and identifying people and objects; {indicate type, e.g., downloadable} computer software for tracking and managing resources; {indicate type, e.g., downloadable} predictive maintenance software; {indicate type, e.g., downloadable} computer software for use in monitoring industrial processes; {indicate type, e.g., downloadable} computer software for managing and interrogating the industrial internet of things; Internet of Things gateways, namely, {indicate type, e.g., downloadable software for connecting, operating, and managing networked cars, kitchen appliances, etc.}; {indicate type, e.g., downloadable} computer application software for use in implementing the Internet of Things; computer hardware modules for use in electronic devices using the Internet of Things; computer hardware and {indicate type, e.g., downloadable} software system for tracking people and objects using RFID tags and readers; {indicate type, e.g., GPS} tracking devices; remote monitoring apparatus, namely, {indicate type, e.g., wireless remote temperature and humidity monitors for building maintenance}; radio-frequency identification (RFID) tags; radio-frequency identification (RFID) readers; electronic tags for goods; electronic tracking apparatus and instruments, namely, {indicate type, e.g., GPS tracking devices}; structural parts and fittings for {indicate type, e.g., GPS} tracking devices, RFID tags and readers; barcode scanners; {indicate type, e.g., downloadable} optical Barcode Recognition software; {indicate type, e.g., downloadable} electronic databases, namely, {indicate type, e.g., business and tax forms} for {indicate function, e.g., use with computer software}; {indicate type, e.g., downloadable} data management software; {indicate type, e.g., downloadable} data and file management and database management software; {indicate type, e.g., downloadable} computer software for accessing, browsing and searching online databases; real-time data processing apparatus; intelligent gateways for real-time data analysis, namely, {indicate type, e.g., downloadable computer software for providing online database in the field of transaction processing}; apparatus for data storage being {indicate type, e.g., blank hard drives for computers}; data storage devices and media being {indicate type, e.g., blank hard drives for computers }; computer hardware modules for use with electronic devices using the Internet of Things”; and

 

Class 38 – “Provision of internet access to content, websites and portals; providing real-time internet access to information via data networks; providing access to a computer database; communications services, namely {indicate type, e.g., transmitting streamed sound and audiovisual recordings via the Internet}; computer terminal communication; providing Internet access; communications via radio; mobile telephone communication; communication via computer terminals by digital transmission; data communication services, namely, {indicate type, e.g., data communication by electronic mail}; communication services, namely, transmission of information in the form of {indicate type, e.g., audio, visual images} via the Internet; computer aided transmission of messages, information, data and images; electronic data transmission; electronic transmission of data by {indicate type, e.g., television and video} broadcasting; electronic transmission of data; electronic exchange of data stored in databases accessible via telecommunication networks; cable and satellite radio transmission; secure electronic transmission of data, sound or images; wireless transfer of data via the Internet by telecommunication; leasing of telecommunications equipment in the nature of installations and apparatus; providing third party users with access to telecommunication infrastructure; rental of wireless telecommunications equipment; telecommunication services provided via Internet platforms and portals, namely, {indicate type, e.g., providing e-mail notification alerts of rating changes that affect financial portfolios}; providing user access to electronic sites in the nature of platforms on the Internet; telecommunications portal services being {indicate type, e.g., telecommunications gateway services}; providing user access to computer programmes in data networks; provision of access to data or documents stored electronically in central files for remote consultation; operation of local area networks being electronic transmission of data via local area networks and leasing of telecommunication equipment in the nature of local area networks; rental of telecommunications systems in the nature of apparatus and equipment; providing virtual private network (VPN) services for communication via virtual private networks; providing virtual private network (VPN) services; mobile radio communication; wireless transfer of data via digital mobile telephony by telecommunication; information, advisory and consultancy in relation to all of the aforesaid services; information transmission via electronic communications networks”; andClass 42 –“Software development; Software as a Service, namely, {indicate type, e.g., hosting software for use by others for database management}; Software as a Service services, namely, hosting software for use by others for use in implementing the Internet of Things; Software as a Service, namely, hosting artificial intelligence and machine learning software for use by others; Software as a Service services, namely hosting artificial intelligence software for analysis and computer software for managing and interrogating the industrial internet of things for use by others; programming of computer software for inventory management for others; programming of computer software for use in planning, capturing and tracking progress of jobs, people and equipment for others; programming of computer software for managing field work, resources and industrial assets for others; rental of computer software and hardware; Platform as a Service services featuring {indicate type, e.g., computer software platforms} for {indicate function, e.g., for use in database management}; development of computer platforms; design and development of artificial intelligence and machine learning software; design and development of artificial intelligence software for analysis; design and development of computer software for managing and interrogating the industrial internet of things; design and development of Internet of Things gateway software; design and development of computer application software for use in implementing the Internet of Things; design and development of computer hardware modules for use in electronic devices using the Internet of Things; electronic data storage; computerised electronic data storage; rental of computer hardware and software system for tracking people and objects using RFID tags and readers, tracking devices, remote monitoring apparatus, radio-frequency identification (RFID) tags, radio-frequency identification (RFID) readers, electronic tags, electronic tracking apparatus and instruments, barcode scanners and optical Barcode Recognition software; providing temporary use of non-downloadable software being {indicate subject matter, e.g., computer anti-virus software}; providing temporary use of non-downloadable software for inventory management; providing temporary use of non-downloadable software for use in planning, capturing and tracking progress of jobs, people and equipment; providing temporary use of non- downloadable software for managing field work, resources and industrial assets; development of computer software for logistics, supply chain management and e-business portals; machine condition monitoring in the nature of testing the functionality of machines; calibration of machines in the nature of testing the functionality of machines; testing the functionality of machinery; engineering services for the analysis of machinery; product quality control testing services for industrial machinery; technological advisory services relating to man-machine interfaces for computer software; installation, maintenance, updating and repair of computer software; providing temporary use of non-downloadable computer software for tracking packages and freight over computer networks, intranets and the internet; information, advisory and consultancy in relation to all of the aforesaid services”

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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.

 

Applicant should note the following additional requirement.

 

AMENDED MARK DESCRIPTION AND COLOR CLAIM REQUIRED

 

Applicant must clarify whether color is a feature of the mark because, although the drawing shows the mark in color, the application does not state whether color is a feature of the mark.  37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); see TMEP §807.07(a)-(a)(ii).

 

Applicant may respond to this requirement by satisfying one of the following:

 

(1)       If color is not a feature of the mark, applicant must submit a black-and-white drawing of the mark to replace the color drawing.  See TMEP §807.07(a)(i).  However, any other amendments to the drawing will not be accepted if they materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.14 et seq.  Applicant must also submit a revised description of all literal and design elements in the mark, deleting any reference to color, if appropriate.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The following description is suggested, if accurate:  The mark consists of the word “SPARTAN”, with the letter “N” stylized in the shape of an ancient Greek helmet.

 

(2)       If color is a feature of the mark, applicant must submit a statement (a) listing all the colors that are claimed as a feature of the mark and (b) describing all the literal and design elements in the mark that specifies where each color appears in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).  Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).  The following color claim and description are suggested, if accurate: 

 

Color claim:  “The colors red and black are claimed as a feature of the mark.”

 

Description:  “The mark consists of the following:  the word “SPARTAN” in black with the letter “N” stylized in the shape of an ancient Greek helmet appearing in red.”

 

See TMEP §807.07(b).

 

Applicant should note the following additional requirement.

 

FOREIGN REGISTRATION REQUIRED

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

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.

 

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.  

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.

/Evonne M. Neptune/

Trademark Examining Attorney, Law Office 127

United States Patent and Trademark Office

(571) 270-1740

 

 

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 5/3/2019 FOR U.S. APPLICATION SERIAL NO. 88301207

 

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 5/3/2019 (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.