UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88312938
MARK: AVALANCHE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Actian Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 5/10/2019
SUMMARY OF ISSUES:
· Section 2(d) Refusal – Likelihood of Confusion
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applicant’s mark is AVALANCHE for “Software as a service (SaaS) services featuring software for filing, organization, management, storage, recalling, analytics, querying, reporting, and mining of data and data statistics, and for data warehousing; computer services, namely, cloud hosting provider services.”
The registrant’s mark is AVALANCHE for, in relevant part “computer hardware, not related to graphic accelerators, and computer software for use in database management to dynamically build and manage communication to utility customers and utility stakeholders who are responsible for managing public works utility information, namely, for managing fault detection, utility outage and utility supply loss information and for dispatch and outage management and instructional manuals sold as a unit;” and “computer programming for others; installation, maintenance and updating of computer software, computer software design for others; computer systems analysis; consulting in the field of computer hardware and computer software; computer counseling; computer site design, namely designing and implementing utility network status web pages for others; information services related to computers, namely providing information about computers computer consultation, namely project management consultation services in the field of computers; product research and development; database development services; data conversion of computer data and information; computer services, namely providing search engines for obtaining data on a global computer network in the field of utility supply faults; consulting services in the field of computer related to fault detection and messaging services.”
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.
Similarity of the Marks
In the present case, applicant’s mark is AVALANCHE and registrant’s mark is AVALANCHE. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Relatedness of the Goods and Services
Applicant’s services are “Software as a service (SaaS) services featuring software for filing, organization, management, storage, recalling, analytics, querying, reporting, and mining of data and data statistics, and for data warehousing; computer services, namely, cloud hosting provider services.”
Registrant’s goods and services are “hardware, not related to graphic accelerators, and computer software for use in database management to dynamically build and manage communication to utility customers and utility stakeholders who are responsible for managing public works utility information, namely, for managing fault detection, utility outage and utility supply loss information and for dispatch and outage management and instructional manuals sold as a unit;” and “computer programming for others; installation, maintenance and updating of computer software, computer software design for others; computer systems analysis; consulting in the field of computer hardware and computer software; computer counseling; computer site design, namely designing and implementing utility network status web pages for others; information services related to computers, namely providing information about computers computer consultation, namely project management consultation services in the field of computers; product research and development; database development services; data conversion of computer data and information; computer services, namely providing search engines for obtaining data on a global computer network in the field of utility supply faults; consulting services in the field of computer related to fault detection and messaging services.”
In sum, due to the similarity of the marks and the relatedness of the goods and services, there is a likelihood of confusion between the compared marks. Accordingly, registration is refused under Section 2(d) of the Trademark Act.
RESPONSE TO OFFICE ACTION
Jillian Michaud-King
/Jillian Michaud-King/
Examining Attorney
Law Office 122
571-272-5153
jillian.michaud-king@uspto.gov
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.
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.