To: | connectFree Corporation (tm@sughrue.com) |
Subject: | U.S. Trademark Application Serial No. 88369344 - ZEN - S24173 |
Sent: | February 21, 2020 10:15:52 AM |
Sent As: | ecom119@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88369344
Mark: ZEN
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Correspondence Address: 2000 PENNSYLVANIA AVENUE, N.W.
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Applicant: connectFree Corporation
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Reference/Docket No. S24173
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: February 21, 2020
Since the prior filed application is now registered, this file is removed from suspension for the following action:
Registration Refused—Likelihood of Confusion with Registered mark under Section 2 (d):
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5795863. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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.
The mark in the cited registration is ZEN for class 9 goods, computer software platforms for developing, building, and operating distributed applications, and class 42 services, design development and implementation of software for distributed computer platforms; design development and implementation of software for blockchain software; developing customized software in the field of distributed computer platforms for others; developing customized software in the field of blockchain software for others; software development and product development consulting in the field of distributed computer platforms; software and product development consulting in the field of blockchain software.
The applicant seeks to register the mark ZEN for computer software development tools’ computer software for application development; computer programs and downloadable computer programs that implement an object –oriented computer programming language; computer programs and downloadable computer programs that implement compiler for computer programming language; computer software f or performing calculations, creating and executing calculation algorithims, analyzing data, connecting data, visualizing data and deploying electronic hardware implementations of computer software applications and calculation algorithims ; computer programs stored on external devices for implementing computer computer programming languages; downloadable computer programs for implementing computer programming languages; downloadable software that enables users to share and collaboratively develop software, software packages, software libraries and computer code; downloadable computer software in class 9;
Class 42 services are computer programming and computer software design, design and development of compute hardware and software; consultation services relating to the design and development of computer hardware for business purposes; providing technological information about computers, computer software and computer networks; providing a website featuring information in the field of computer development; IT programming services; design and development of computer programs; creating of computer programs; consulting services for the design and development of computer programs; providing computer programs on data networks; rental of computer software and programs; installation of compute programs; providing a website featuring non-downloadable computer software development tools that enable users to development, compose, share, edit and access compute software, computer software packages, computer software libraries and compute code; hosting an on-line community website featuring an indexed and catalogued system for the collaborative development, sharing and accessing of software, software packages, software libraries and computer code; providing information relating to a computer programming language and its development environment.
RELATED NATURE OF MARKS:
In the present case, applicant’s mark is ZEN and registrant’s mark is ZEN. 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.
RELATED NATURE OF GOODS/SERVICES:
Both parties appear to offer similar software for similar purposes: computer software development tools and computer software platforms and computer software for application development.
The services offered by both parties are, in many respects, similar: computer software design and development and software and product development consulting in the field of distributed computer platforms.
In this case, the application use(s) broad wording to describe computer hardware and software design and development and computer software for application development, which presumably encompasses all goods and services of the type described, including registrant’s more narrow purposes of the computer software, and particular design and development of computer software and hardware for specific purposes. 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/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 services are related.
For these reasons, given identical marks and related goods and services, likelihood of confusion as to source of the respective goods and services would arise. Registration is refused under the provisions of Section 2 (d) of the Trademark Act.
In addition to the above refusal, the following informal requirements are also made:
Clarification of Language in International Class 9:
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The following are examples of acceptable identifications in International Class 9: “recorded desktop publishing software” and “downloadable mobile applications for managing bank accounts.” Additionally, the following are acceptable identifications in International Class 41: “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.” Finally, the following are acceptable identifications in International Class 42: “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”
New Attorney Requirements:
To provide bar information. Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section. See 37 C.F.R. §2.17(b)(1)(ii). Bar information provided in any other area of the form will be viewable by the public in USPTO records.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Henry S. Zak/
Henry S. Zak
Examining Attorney
Law Office 119
(571)272-9354
henry.zak@uspto.gov
RESPONSE GUIDANCE