To: | Emerald Cloud Lab, Inc. (paul@st-ip.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88343411 - ECL CONSTELLATION - ECL.09 |
Sent: | 4/29/2019 5:53:58 AM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88343411
MARK: ECL CONSTELLATION
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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: Emerald Cloud Lab, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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FIRST 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: 4/29/2019
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.
Refusal Section 2(d) – Likelihood of Confusion
The applicant has applied to register the mark ECL CONSTELLATION (standard characters) for “Medical laboratory cloud computational services; scientific laboratory cloud computational services; cloud computational services for laboratory experiments conducted on behalf of others; software as a service featuring cloud computation data processing for laboratory experiments, for running laboratory experiments, for reviewing laboratory experiment controls, equipment, and environment data, and for reviewing laboratory experiment results; software as a service featuring cloud computing data processing for computer simulations of laboratory experiments and for computer simulations of biological and chemical phenomena and systems; cloud computation data processing for scientific testing of chemicals, pharmaceuticals, biologics, vaccines, and medical devices; cloud computation data processing for biopharmaceutical research design and scientific testing services; cloud computation data processing for product safety and quality assurance testing for pharmaceuticals, biopharmaceuticals, chemicals, medical devices, vaccines, and biologics; cloud computation data processing for toxicological safety and quality assurance testing for pharmaceuticals, chemicals, and consumer products; cloud computational services for indexing, storage, and searching of information relating to laboratory experiment controls, equipment, environment data, and experiment results as well as information relating to computer simulations of laboratory experiments and biological and chemical phenomena and systems; software as a service for creation and processing of un-structured, semi-structured, and structured information relating to laboratory experiments and computer simulations of laboratory experiments and biological and chemical phenomena and systems; software as a service for use in developing, executing, monitoring, and managing enterprise resource planning, manufacturing execution systems, and connected factories.”
The mark in U.S. Registration No. 4320534 is ECL EMPIRE CITY LABORITORIES and design for “Medical laboratories; Medical laboratory services.”
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks
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).
Here the applicant’s mark is highly similar to the mark in the cited U.S. Registration as they both contain the term ECL. 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).
The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner-Lambert Co., 203 USPQ 191 (TTAB 1979).
Comparison of the Goods and/or Services
The applicant’s services are “Medical laboratory cloud computational services; scientific laboratory cloud computational services; cloud computational services for laboratory experiments conducted on behalf of others; software as a service featuring cloud computation data processing for laboratory experiments, for running laboratory experiments, for reviewing laboratory experiment controls, equipment, and environment data, and for reviewing laboratory experiment results; software as a service featuring cloud computing data processing for computer simulations of laboratory experiments and for computer simulations of biological and chemical phenomena and systems; cloud computation data processing for scientific testing of chemicals, pharmaceuticals, biologics, vaccines, and medical devices; cloud computation data processing for biopharmaceutical research design and scientific testing services; cloud computation data processing for product safety and quality assurance testing for pharmaceuticals, biopharmaceuticals, chemicals, medical devices, vaccines, and biologics; cloud computation data processing for toxicological safety and quality assurance testing for pharmaceuticals, chemicals, and consumer products; cloud computational services for indexing, storage, and searching of information relating to laboratory experiment controls, equipment, environment data, and experiment results as well as information relating to computer simulations of laboratory experiments and biological and chemical phenomena and systems; software as a service for creation and processing of un-structured, semi-structured, and structured information relating to laboratory experiments and computer simulations of laboratory experiments and biological and chemical phenomena and systems; software as a service for use in developing, executing, monitoring, and managing enterprise resource planning, manufacturing execution systems, and connected factories.”
The services in U.S. Registration No. 4320534 is ECL EMPIRE CITY LABORITORIES and design for “Medical laboratories; Medical laboratory services.”
In this case, the registration uses broad wording to describe its medical laboratory services, which presumably encompasses all services of the type described, including applicant’s more narrow medical and scientific laboratory services. 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 registrant’s services 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)).
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.
For the foregoing reasons consumers and potential consumers would be likely to believe that applicant’s goods and/or services emanate from the same source as those provided by the registrant. Accordingly, registration is refused under Section 2(d) of the Act.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Prior Filed 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 mark in the referenced application. 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.
Action on this application will be suspended pending the dispositions of Application Serial Nos. 86634580 87888540 and 87888556, upon receipt of applicant’s response resolving the refusal(s) to register based on a likelihood of confusion and resolving the following requirements. The applicant must respond to the refusal to register based on a likelihood of confusion discussed previously herein and the requirements discussed subsequently herein within 6 months of the date of this Office Action to avoid ABANDONMENT.
Additional Requirements
Identification of Services
Finally, the wording “cloud computation data processing” is overly broad. If the applicant is providing cloud computing services featuring software for data processing, then this must be clarified for the record. However, if the applicant is providing data processing services, this is a services classified in International Class 35. The applicant must amend the wording of the identification to clearly and concisely indicate the services being offered and classify them accordingly. The applicant may substitute the following wording, if accurate:
International Class 35
data processing services for scientific testing of chemicals, pharmaceuticals, biologics, vaccines, and medical devices; data processing services for biopharmaceutical research design and scientific testing services; data processing services for product safety and quality assurance testing for pharmaceuticals, biopharmaceuticals, chemicals, medical devices, vaccines, and biologics; data processing services for toxicological safety and quality assurance testing for pharmaceuticals, chemicals, and consumer products;
International Class 42
Cloud computing for medical laboratories featuring software for use in _____ (applicant must indicate the function of the software, i.e. for monitoring laboratory equipment and recording data); Cloud computing for scientific laboratories featuring software for use in _____ (applicant must indicate the function of the software, i.e. for monitoring laboratory equipment and recording data); Cloud computing for laboratory experiments on behalf of others featuring software for use in _____ (applicant must indicate the function of the software, i.e. for monitoring laboratory equipment and recording data); software as a service featuring software for use in data processing for laboratory experiments, for running laboratory experiments, for reviewing laboratory experiment controls, equipment, and environment data, and for reviewing laboratory experiment results; software as a service featuring software for use in data processing for computer simulations of laboratory experiments and for computer simulations of biological and chemical phenomena and systems; cloud computing featuring software for use in data processing for scientific testing of chemicals, pharmaceuticals, biologics, vaccines, and medical devices; cloud computing featuring software for use in data processing for biopharmaceutical research design and scientific testing services; cloud computing featuring software for use in data processing for product safety and quality assurance testing for pharmaceuticals, biopharmaceuticals, chemicals, medical devices, vaccines, and biologics; cloud computing featuring software for use in data processing for toxicological safety and quality assurance testing for pharmaceuticals, chemicals, and consumer products; cloud computing featuring software for use in indexing, storage, and searching of information relating to laboratory experiment controls, equipment, environment data, and experiment results as well as information relating to computer simulations of laboratory experiments and biological and chemical phenomena and systems; software as a service featuring software for creation and processing of un-structured, semi-structured, and structured information relating to laboratory experiments and computer simulations of laboratory experiments and biological and chemical phenomena and systems; software as a service featuring software for use in developing, executing, monitoring, and managing enterprise resource planning, manufacturing execution systems, and connected factories.
Additions Not Permitted
ID Manual Online
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Response
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.
/Ellen J.G. Perkins/
Ellen J.G. Perkins
Trademark Examining Attorney, Law Office 110
U.S. Patent & Trademark Office
571 272-9372
Ellen.Perkins@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.