Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  December 23, 2019

 

INTRODUCTION

 

This Office Action is in response to applicant’s communication dated December 2, 2019 where applicant:

 

(1)   argued against the Section 2(d) Likelihood of Confusion Refusal.

 

The examining attorney has reviewed the applicant’s communication and determined the following:

 

(1)   Applicant’s arguments regarding the refusal under Trademark Act Section 2(d) are unpersuasive, and that refusal is maintained and made FINAL.

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now maintained and made FINAL with respect to U.S. Registration No. 4560285. See 15 U.S.C. §§1051, 1052, 1127; 37 C.F.R. §2.64(a).

 

SUMMARY OF ISSUES

 

(1)   Section 2(d) Refusal – Likelihood of Confusion

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

The examining attorney incorporates by reference all arguments and evidence in the previous Office action dated June 28, 2019.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4560285. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. The examining attorney attached the registration to the previous Office action.

 

Applicant has applied to register the standard character mark EMERGE for use in connection with “Software as a service (SAAS) services featuring cloud-based software solutions that enable customers and their channel partners to configure, price, quote and place orders in the field of doors and building materials” in International Class 42.

 

Registrant has registered the standard character mark EMERGE for use in connection with, in relevant part, “Providing non-downloadable software on a global computer network for obtaining data for business and consumer purposes” also in International Class 42.

 

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).

 

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 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 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.

 

In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the services, and similarity of the trade channels of the services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin's Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Similarity of the Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).

 

In the present case, applicant’s mark is EMERGE and registrant’s mark is EMERGE. 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 services. Id.

 

Therefore, the marks are confusingly similar.

 

Relatedness of the Services

 

The services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared 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/or 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) .

 

Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the services needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

Applicant’s services are identified as “Software as a service (SAAS) services featuring cloud-based software solutions that enable customers and their channel partners to configure, price, quote and place orders in the field of doors and building materials” in International Class 42.

 

Registrant’s services are identified as, in relevant part, “Providing non-downloadable software on a global computer network for obtaining data for business and consumer purposes” also in International Class 42.

 

Here, the registration uses broad wording to describe the relevant services which presumably encompasses all services of the type described, including the applicant’s more narrowly defined services. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000). Specifically, registrant’s broader wording “Providing non-downloadable software on a global computer network for obtaining data for business and consumer purposes” encompasses applicant’s narrower wording “Software as a service (SAAS) services featuring cloud-based software solutions that enable customers and their channel partners to configure, price, quote and place orders in the field of doors and building materials.” See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).

 

Applicant objects that the registrant’s services do not encompass the applicant’s services. The trademark examining attorney attaches to the instant Office action screenshots from Merriam-Webster.com which establish that the wording “obtaining” is a form of the verb “obtain” which means “to gain or get”; “data” means “facts or information used usually to calculate, analyze, or plan something”; “business” means “the activity of making, buying, and selling goods or services”; “consumer” means “a person who buys goods and services”; and “purpose” means “something set up as a goal to be achieved.” Accordingly, applicant’s services in Class 42 include providing non-downloadable software on a global computer network for getting information used usually to calculate, analyze, or plan something for goals related to making, buying, and/or selling goods and/or services. Applicant’s Software as a service (SAAS) services featuring cloud-based software solutions that enable customers and their channel partners to configure, price, quote and place orders in the field of doors and building materials are software-related services for getting information used usually to calculate, analyze, or plan something for goals related to making, buying, and/or selling goods and/or services.

 

Applicant argues that “The Cited Registration has nothing to do with and is in no way related to doors or building materials. A consumer would not think that background check information and information about doors and building materials were related or from the same source.”

 

The trademark examining attorney has shown above that the wording “data for business and consumer purposes” in the services identified in Class 42 of the cited registration is broad enough to encompass  information about prices, quotes and orders in the field of doors and building materials. Applicant’s argument references background check information. This is misleading. Although the cited registration is for use in connection with services in Class 42 and Class 45 (the class in which the background checking services appear), in the previous Office action, the examining attorney expressly stated that the services relevant to the Section 2(d) analysis were applicant’s Class 42 services, not applicant’s Class 45 services.

 

Applicant argues that the subject matter of registrant’s software-related services is not related to the subject matter of applicant’s software-related services: “the subject matter of the present application, i.e., doors and building materials, is not subject-matter related to data or consumer and business purposes of conducting background checks and identify verification.” However, applicant has mischaracterized the nature of the compared services. Registrant’s services in Class 42 include “Providing non-downloadable software on a global computer network for obtaining data for business and consumer purposes,” not “Providing non-downloadable software on a global computer network for obtaining data or consumer and business purposes of conducting background checks and identify verification.” The wording of the services identified in the cited registration is much broader than what applicant suggests.

 

Applicant argues that the wording of the services identified by the registrant has been so broadly construed “as to prevent all future applicants from obtaining a registration for any mark similar to EMERGE in association with goods or services that are offered on the Internet. That cannot be the intended scope of coverage of the Cited registration.” The trademark examining attorney disagrees. The problem is not that applicant offers any goods or services on the Internet under the mark EMERGE but rather that applicant offers a service encompassed by the registrant’s service under a mark identical to the registrant’s mark.

 

Applicant argues that “The Cited Registration’s identification of services, when taken as whole, makes clear that the data for business and consumer purposes is data that business [sic] and consumers use to conduct background checks and identity verification . . . there is no evidence of record showing the door and building material subject matter of the present application is related to background checks and identity verification so as to support a finding of likelihood of confusion.” Essentially, applicant argues for a rule whereby the services identified in a registration may be used by a third-party to narrow and limit other services in the same registration. Applicant has cited to no legal authority in support of this proposition. Applicant may not import language from some services identified by registrant into other services identified by registrant. For example, applicant may not extract the wording “background checking services to businesses and individuals” from registrant’s entry for Class 45 services “Providing pre-employment and other background checking services to businesses and individuals” and import that wording into registrant’s Class 42 services “Providing non-downloadable software on a global computer network for obtaining data for business and consumer purposes” so that the “data” in the Class 42 services are limited only to data regarding background checks.   

The applicant argues that it should be able to resort to extrinsic evidence of actual use to narrow the registrant’s identification of services. Applicant cites in support of this proposition “TMEP §12078.01(a)(iii)” and provides as an exhibit screenshots from registrant’s website. First, 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)). The extrinsic evidence of actual use including screenshots from the registrant’s website is irrelevant.

Second, TMEP §12078.01(a)(iii) does not exist. TMEP §1207.07(a)(iii), however, provides, in relevant part:

If the cited registration describes goods or services broadly, and there is no limitation as to their nature, type, channels of trade, or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that they move in all normal channels of trade, and that they are available to all classes of purchasers. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) ("We have no authority to read any restrictions or limitations into the registrant’s description of goods."); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) ; see also In re C.H. Hanson Co., 116 USPQ2d 1351 (TTAB 2015) (noting that, to the extent that the punctuation in registrant's identification of goods created ambiguity as to the scope of the identification, any doubt must be resolved in favor of the registrant). Therefore, if the cited registration has a broad identification of goods or services, an applicant does not avoid likelihood of confusion merely by more narrowly identifying its related goods. See, e.g., In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992) (noting that, where registrant’s goods are broadly identified as "computer programs recorded on magnetic disks," without any limitation as to the kind of programs or the field of use, it must be assumed that registrant’s goods encompass all such computer programs, including computer programs of the type offered by applicant, that they travel in the same channels of trade normal for such goods, and that they are available to all classes of prospective purchasers of those goods); In re Diet Ctr., Inc., 4 USPQ2d 1975 (TTAB 1987) (noting that, although applicant had limited its identification to indicate that its goods were sold only through franchised outlets offering weight-reduction services, the cited registration’s identification contained no limitations as to trade channels or classes of customers and thus it must be presumed that registrant’s goods travel through all the ordinary channels of trade); In re Uncle Sam Chem. Co., 229 USPQ 233 (TTAB 1986) (finding that although applicant’s cleaning preparations and degreasers were limited to those for industrial and institutional use, registrant’s liquid preparations for cleaning woodwork and furniture, as identified, were not restricted to any particular trade channels or classes of customers and thus could presumably be used for institutional and industrial purposes).

In re Linkvest S.A., cited in this passage, is particularly instructive under the circumstances. In that case, a registrant’s identification of goods as broad as "computer programs recorded on magnetic disks," without any limitation as to the kind of programs or the field of use, was held to encompass all such computer programs, including computer programs of the type offered by the applicant in that case. Similarly, here, registrant’s wording “Providing non-downloadable software on a global computer network for obtaining data for business and consumer purposes,” encompasses applicant’s more narrowly defined software-related services. The fact that the registrant’s identification is broadly worded (and, notably, the wording of the identification in the instant registration is narrower than that in the registration in In re Linkvest S.A.), does not obviate the refusal.

In support of its argument to submit extrinsic evidence of actual use, applicant quotes from this TMEP section: “In cases where the terminology in an identification is unclear or undefined, the Trademark Trial and Appeal Board has permitted an applicant to provide extrinsic evidence to show that the registrant’s identification has a specific meaning to members of the trade.” (emphasis supplied). This principle is inapplicable to the present circumstances. First, as shown above, the wording in the registrant’s identification of services is neither unclear nor undefined. The examining attorney has provided evidence from Merriam-Webster.com which establishes the clear meaning of the wording in the identification: providing non-downloadable software on a global computer network for getting information used usually to calculate, analyze, or plan something for goals related to making, buying, and/or selling goods and/or services. There is no need to resort to extrinsic evidence. Moreover, applicant’s evidence does not establish that “obtaining data for business and consumer purposes” has a specific meaning to members of the trade.

Ultimately, when purchasers encounter the applicant’s services and the registrant’s services, they are likely to be confused as to the source of services by the relationship between them. Thus, the services are closely related.

 

Therefore, because the marks are confusingly similar and the services are closely related, purchasers encountering these services are likely to believe, mistakenly, that they emanate from a common source. Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of the Trademark Act.

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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).

 

 

/Dana Dickson/

Dana Dickson

Examining Attorney

Law Office 113

571.270.7552

Dana.Dickson@USPTO.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 23, 2019 for

U.S. Trademark Application Serial No. 88388123

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Dana Dickson/

Dana Dickson

Examining Attorney

Law Office 113

571.270.7552

Dana.Dickson@USPTO.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 23, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”