To: | Attest Technologies Ltd. (rhilbert@holleymenker.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88341385 - ATTEST - N/A |
Sent: | 6/8/2019 8:53:44 PM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88341385
MARK: ATTEST
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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: Attest Technologies Ltd.
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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: 6/8/2019
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.
LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 1227678. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant has applied to register the mark ATTEST in standard character form for use on and in connection with “computer software, namely, downloadable software and software forcreating, using, organizing, editing, storing, sharing, accessing, uploading, downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence; computer software, namely, downloadable software and software for capturing, measuring, monitoring, analyzing and sharing demographic, lifestyle, consumer purchasing decision, and online behavioral data; computer software, namely, downloadable software and software for capturing, measuring, monitoring, analyzing and sharing brand awareness and brand engagement; computer software, namely, downloadable software and software for monitoring internet websites and online publications and content for customer-specified topics, and providing documentation and analysis of media content to others for business purposes,” “market research; opinion polling; opinion polling services; marketing, product and trend forecasting services; market forecasting; economic forecasting; advertising services; marketing services; production and dissemination of advertising matter; business assistance for commercial and industrial companies; business consultancy services; business management and business organisation, consultancy and assistance; business information; commercial information; business research; statistical information and processing; data processing; sales promotion; purchase for others of advertising space; rental of advertising space; purchase for others of publicity and advertising materials; direct mail advertising; organisation of exhibitions for commercial, trade, business and/or advertising purposes; radio, television, billboard and press advertising; publicity and promotional services; advertising agency services; marketing agency services; media planning and buying; business services relating to the provision of sponsorship; market analysis; accounting; compilation of advertisements for use as web pages on the internet; design services relating to advertising, promotional and marketing activities; information, consultancy and advisory services relating to aforesaid services,” and “software as a service (SAAS), namely, providing software forcreating, using, organizing, editing, storing, sharing, accessing, uploading, downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence; software as a service (SAAS), namely, providing software for capturing, measuring, monitoring, analyzing and sharing demographic, lifestyle, consumer purchasing decision, and online behavioral data; software as a service (SAAS), namely, software for capturing, measuring, monitoring, analyzing and sharing brand awareness and brand engagement; software as a service (SAAS), namely, software for monitoring internet websites and online publications and content for customer-specified topics, and providing documentation and analysis of media content to others for business purposes; information consultancy and advisory services relating to the aforesaid.”
The registered mark is ATEST CODE and design for use in connection with “administrative processing of purchase orders; advertising agencies; updating of advertising material; cost price analysis; tax preparation; invoicing; photocopying services; layout services for advertising purposes; economic forecasting; providing business information; commercial information agencies; import-export agencies; office machine and equipment rental; compilation of statistics; document reproduction; commercial administration of the licensing of the goods and services of others; marketing services; market studies; business management assistance; business organization consultancy; business inquiries; professional business consultancy; commercial or industrial management assistance; commercial information and advice for consumers, consumer advice shop; commercial business appraisals; business investigations; business research; business management of performing artists; business management and organization consultancy; telephone answering for unavailable subscribers; organization of trade fairs for commercial or advertising purposes; personnel management consultancy; compilation of information into computer databases; systematization of information into computer databases; sales promotion for others; business management consultancy; price comparison services; demonstration of products; news clipping services; relocation services for businesses; market research; public opinion polling; public relations; advertising services; online advertising on a computer network; distribution of advertising materials, namely, of leaflets, prospectuses, printed materials, samples; dissemination of advertisements; rental of advertising space; advertising by mail order; advisory services for business management; dissemination and distribution of advertising samples; secretarial services; outsourcing services being business assistance; computerized file management; employment agencies; shorthand services; accounting services; book-keeping,” “electronic messaging; communications by fiber-optic networks; communications by computer terminals; message transmission; provision of access to databases on a global computer network; transmission of digital files; computer-aided transmission of messages and images; information about telecommunication; provision of telecommunication channels for teleshopping services; teleconferencing services; transmission of information via a teleprinter; telecommunications routing and junction services,” and “updating of computer software; computer system analysis; consultancy in the design and development of computers; hosting of computer websites; installation of software; providing search engines for the internet; computer system design; recovery of computer data; computer virus protection services; research in the field of environmental protection; authentication of works of art; computer rental; programming for computers; computer software consultancy; duplication of computer programs; website design consultancy; information technology consultancy; consultancy in the field of energy-saving technology; hosting of servers; rental of computer software; rental of web servers; data conversion of computer programs and data, other than physical conversion; conversion of data or documents from physical to electronic media; testing of materials; creating and maintaining web sites for others; computer software development and design; computer software maintenance; research and development of new products for others.”
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.
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 this case, applicant’s mark and the registered mark contain the phonetically equivalent wording ATTEST and ATEST. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Comparison of the Goods and/or Services and Channels of Trade
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)).
In this case, the services of the parties are closely related and identical, in part. Both applicant and the registrant intend to provide/provide business related services such as opinion polling, advertising services, accounting services, etc. Thus, when marketed under substantially similar marks, consumers are likely to believe that the goods and/or services emanate from a common source.
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.
In summary, the similarities between the marks and the goods and/or services of applicant and the registrant are so great as to create a likelihood of confusion.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Although the examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If applicant responds to the refusal to register, applicant must also respond to the following informalities.
INFORMALITIES
Certificate of Foreign Registration
A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin. TMEP §1016.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin. If the foreign registration is not written in English, applicant must also provide an English translation. 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).
Identification of Services
Computer software, namely, downloadable software and software for creating, using, organizing, editing, storing, sharing, accessing, uploading, downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence; Computer software, namely, downloadable software and software for capturing, measuring, monitoring, analyzing and sharing demographic, lifestyle, consumer purchasing decision, and online behavioral data; Computer software, namely, downloadable software and software for capturing, measuring, monitoring, analyzing and sharing brand awareness and brand engagement; Computer software, namely, downloadable software and software for monitoring internet websites and online publications and content for customer-specified topics, and providing documentation and analysis of media content to others for business purposes, in INT. CLASS 9;
Market research; [indicate type, e.g., public, market] opinion polling; [indicate type, e.g., public, market] opinion polling services; marketing consultation services, namely, marketing, product and trend forecasting services; market consultation services, namely, market forecasting; economic forecasting; advertising services; marketing services; production and dissemination of advertising matter; business [clarify exact nature of services, e.g., marketing] assistance for commercial and industrial companies; business consultancy services; business management and business organization consultancy and assistance; business information; commercial information in the field of [indicate subject matter]; business research; statistical information and processing; data processing; sales promotion; purchase for others of advertising space; rental of advertising space; purchase for others of publicity and advertising materials; direct mail advertising; organization of exhibitions for commercial, trade, business and/or advertising purposes; radio, television, billboard and press advertising; publicity and sales promotional services; advertising agency services; marketing agency services; media planning and buying, namely, [clarify exact nature of services, e.g., advising the client on the correct times and stations to advertise based on media analysis of the market for that media, preparation and realization of media plans and concepts, advising client how much media time, and at what times the client should be purchasing advertising]; providing promotional sponsorship of [indicate specific event or activity]; market analysis; accounting; compilation of advertisements for use as web pages on the internet; design services relating to advertising, promotional and marketing activities; information, consultancy and advisory services relating to aforesaid services, in INT. CLASS 35;
Software as a service (SaaS), namely, providing software for creating, using, organizing, editing, storing, sharing, accessing, uploading, downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence; Software as a service (SaaS), namely, providing software for capturing, measuring, monitoring, analyzing and sharing demographic, lifestyle, consumer purchasing decision, and online behavioral data; Software as a service (SaaS), namely, software for capturing, measuring, monitoring, analyzing and sharing brand awareness and brand engagement; Software as a service (SaaS), namely, software for monitoring internet websites and online publications and content for customer-specified topics, and providing documentation and analysis of media content to others for business purposes; information consultancy and advisory services relating to the aforesaid, in INT. CLASS 42.
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.
TELEPHONE OR E-MAIL FOR CLARIFICATION
/Alicia Collins Edwards/
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 115
571-272-9147
alicia.edwards@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.