United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88358055
Mark: SIFT
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Correspondence Address:
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Applicant: Sift Science, Inc.
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Reference/Docket No. SFT-603A
Correspondence Email Address: |
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FINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: February 04, 2020
This Office action is in response to applicant’s communication filed on December 13, 2019.
In a previous Office action dated June 12, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d). In addition, applicant was required to satisfy the following requirement: Identification of Goods.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: Identification of Goods. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
Regarding Applicant’s arguments against the refusal to register the mark under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive. For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.
Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 5153888 as to be likely, when used in connection with the identified goods and services, as to cause confusion, or to cause mistake, or to deceive.
Applicant applied to register the mark SIFT and design for “downloadable software development kits (SDK); recorded software development kits (SDK).” The registered mark is SIFT for, in pertinent part, “computer software development.”
The applicant argues that the marks are different because they are different in appearance and overall commercial impression. In addition, it is the applicant’s belief that the design element in its mark distinguishes it from the registrant’s mark.
For these reasons, the applicant feels that the marks create a different overall impression to the consumer. The examining attorney respectfully disagrees with this conclusion.
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).
The applicant’s mark is SIFT and design and the registrant’s mark is SIFT. The marks of the parties are similar in sound, appearance and meaning. With the exception of the design element in the registrant’s mark, the literal elements of each party’s mark are identical.
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)).
In this case, the dominant part of each party’s mark is the word SIFT. Therefore, the similarities in the elements that exist are sufficient to find a likelihood of confusion.
The applicant believes that the goods and services of the parties are different, because consumers who buy software development kits and software development services exercise care in choosing the prospective goods and services.
For these reason, the applicant maintains that the goods and services of the parties differ.
The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163).
The compared goods and services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
The applicant’s goods are “downloadable software development kits (SDK); recorded software development kits (SDK)” and the registrant’s services are, in pertinent part, “computer software development.” The goods and services of the parties are related, because entities that offer “computer software development kits” also offer “computer software development services.” The examining attorney encloses several prior registrations showing the goods and services of the parties offered under a common trademark/service mark. Additionally, the examining attorney encloses Internet references from APPLE, RED HAT SOFTWARE and MICROSTRATEGY showing that computer software development kits and computer software development services are typically offered by the same entities. The conditions surrounding the marketing of the goods and services may be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods and services come from a common source.
Because of the similarities between the marks and the goods and services of the parties, a likelihood of confusion is created.
For the foregoing reasons, the refusal to register the mark under Trademark Act Section 2(d) is continued and made FINAL.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Charles L. Jenkins, Jr./
Charles L. Jenkins, Jr.
Trademark Attorney
Law Office 112
571-272-9305
charles.jenkins@uspto.gov
RESPONSE GUIDANCE
