UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88368006
MARK: DELL EMC POWER ONE
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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: DELL INC.
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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: 6/15/2019
I. SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 2886183, 2867297, and 1154641. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The applicant has applied for DELL EMC POWER ONE (standard character form) for, in relevant part, “Computer hardware, namely, computer servers; storage servers; networking servers; computer hardware and software, namely, data storage and retrieval apparatus, comprising processors, networks, memories, operating software and data storage units; computer software for data management, data storage, networking and virtualization; data backups and data restoration; computer network devices, namely, switches, routers, firewalls and telephony; computer hardware namely, firewalls and telephony; computer software for providing network and data security; computer software for capturing and storing streaming data,” and “Computer services, namely, computer consultation, customization of computer software, computer hardware and software design and development, deployment and installation of computer software.”
U.S. Registration No. 2886183 is the mark POWERONE (standard character form) which has been registered for, “Calculation and analysis software; calculation templates; calculator software; user and training manuals for use therewith all sold as a unit.”
U.S. Registration No. 2867297 is the mark POWER ONE (standard character form) which has been registered for “rechargeable batteries.” U.S. Registration No. 1154641 is owned by the same entity and is for the mark POWER ONE (standard character form) which has been registered for “Primary Batteries.”
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.
A. 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).
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).
i. U.S. Registration No. 2886183
ii. U.S. Registration Nos. 2886183 and 1154641
Moreover, adding a house mark like “DELL EMC” to an otherwise confusingly similar mark will not obviate a likelihood of confusion under Section 2(d). See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007) (finding CLUB PALMS MVP and MVP confusingly similar); In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE DIOR and CACHET confusingly similar); TMEP §1207.01(b)(iii). It is likely that goods and/or services sold under these marks would be attributed to the same source. See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007). Accordingly, in the present case, the marks are confusingly similar.
As such, considered in their entireties, applicant and registrant’s marks are confusingly similar pursuant to Section 2(d) of the Trademark Act.
B. Comparison of the Goods and Services
i. U.S. Registration No. 2886183
In this case, the application uses broad wording to describe “computer software for data management, data storage, networking and virtualization”, which presumably encompasses all goods of the type described, including registrant’s more narrow “Calculation and analysis software.” 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 goods are legally identical in terms of nature, use, and marketing channels. 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.
In this case, the applicant and registrant’s goods are highly similar in terms of their nature, use, and marketing channels. For instance, the applicant listed in the identification of goods that it will provide “computer software for data management, data storage, networking and virtualization; data backups and data restoration; computer software for providing network and data security; computer software for capturing and storing streaming data,” and “Computer services, namely, computer consultation, customization of computer software, computer hardware and software design and development, deployment and installation of computer software.”
Registrant provides in addition to its calculation and analysis software, the following goods “calculation templates; calculator software; user and training manuals for use therewith all sold as a unit.”
The attached Internet evidence, consisting of industry websites like Help SME, BPlans, Gainsight, and Cobblestone Software, establishes that the same entity commonly provides the relevant calculating and analysis software and data management software goods as well as software design services and markets the goods and services under the same mark. The attached evidence also shows that the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods 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).
ii. U.S. Registration Nos. 2886183 and 1154641
As noted above, applicant provides: “Computer hardware, namely, computer servers; storage servers; networking servers; computer hardware and software, namely, data storage and retrieval apparatus, comprising processors, networks, memories, operating software and data storage units; data backups and data restoration; computer network devices, namely, switches, routers, firewalls and telephony; computer hardware namely, firewalls and telephony.”
Registrant provides “rechargeable batteries” and “Primary Batteries” in connection with its respective marks in U.S. Registration Nos. 2886183 and 1154641.
As such, the evidence discussed above demonstrates that the goods in the application and registration are highly similar, particularly with respect to the nature of goods, use of the goods, and marketing channels involved. Since the marks are confusingly similar and the goods are related, there is a likelihood of confusion as to the source of the respective goods. Therefore, applicant’s mark is not entitled to registration.
II. IDENTIFICATION OF GOODS AND SERVICES
Certain wording in the identification of goods and services is indefinite and overly broad, and therefore could include a wide array of goods and services, including goods and services found in other international classes, as indicated below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the goods and services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the goods and services using clear and succinct language. See id. More specifically, the wording “storage servers” is indefinite as to the nature of the servers provided and therefore could refer to a wide variety of goods such as computer storage servers, digital media storage servers, and/or communications storage servers. As such, applicant must clarify this wording for an accurate and definite identification of goods.
Additionally, the wording “computer hardware and software, namely, data storage and retrieval apparatus, comprising processors, networks, memories, operating software and data storage units” and “computer software for data management, data storage, networking and virtualization” as well as “computer software for providing network and data security; computer software for capturing and storing streaming data” are indefinite since pursuant to the 11th edition of the Nice Agreement (2019) computer software must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods.
The wording “computer network devices, namely, switches, routers, firewalls and telephony” is indefinite as to the nature of the “telephony” goods provided and whether such goods are computer network interface devices or in some other form. As such, applicant must clarify this entry for an accurate and complete identification of goods.
The wording “Computer services, namely, computer consultation” is indefinite and broad enough to encompass services in multiple classes, such as “consultation about the repair of computer hardware” in Class 037 and “consultation about the maintenance and updating of computer software” in Class 042.
Applicant may substitute the following wording, if accurate:
International Class 009
Computer hardware, namely, computer servers; computer storage servers; networking servers; computer hardware and recorded computer software, namely, data storage and retrieval apparatus, comprising processors, networks, memories, operating software and data storage units; downloadable computer software for data management, data storage, networking and virtualization; data backups and data restoration; computer network devices, namely, switches, routers, firewalls and telephony in the nature of computer network interface devices; computer hardware, namely, firewalls and telephony; downloadable computer software for providing network and data security; downloadable computer software for capturing and storing streaming data
International Class 037
Computer services, namely, customization of computer hardware
International Class 042
Computer services, namely, computer consultation in the nature of computer technology consultancy, customization of computer software, computer hardware and software design and development, deployment and installation of computer software; computer security services, namely, monitoring the security status of computer networks and generating security responses based on network intrusion alerts
See TMEP §1402.01.
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 requirement stated below.
In this case, applicant must disclaim the wording “POWER” because it is not inherently distinctive. This unregistrable term is at best merely descriptive of a characteristic, function, and feature of applicant’s goods and services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from the American Heritage Dictionary, Lexico, and Merriam-Webster Dictionary shows this wording refers to the capacity of a system or machine to operate and/or the electrical energy used to operate such items. In the context of applicant’s identified computer hardware goods, computer hardware customization services, and technology consultancy services, the term “POWER” therefore merely describes a feature and characteristic, namely, that these goods and services entail the provision and design or production of devices for using electrical energy to operate systems. Thus, the wording merely describes applicant’s goods and/or services and must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “POWER” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Applicant should note the response guidelines provided below.
IV. RESPONSE GUIDELINES
Please note that foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).
The only attorneys who may practice before the USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories; and
(2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.
See 37 C.F.R. §§2.17(a), (e), 11.1, 11.14(a), (c); TMEP §602.
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.
/Amer Raja/
Examining Attorney
Law Office 121
(571) 270 5936
amer.raja@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.