| To: | MKM GLOBAL PTY LTD (docketing@finnegan.com) |
| Subject: | U.S. Trademark Application Serial No. 88407923 - PIIQ - 14926.0001 |
| Sent: | July 10, 2019 01:13:02 PM |
| Sent As: | ecom110@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 88407923
Mark: PIIQ
|
|
|
Correspondence Address: FINNEGAN, HENDERSON, FARABOW, GARRETT &
|
|
|
Applicant: MKM GLOBAL PTY LTD
|
|
|
Reference/Docket No. 14926.0001
Correspondence Email Address: |
|
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: July 10, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS
SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5795193. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The applicant has applied to register PIIQ in standard character form for a variety of software related goods/services. The registered mark is PIIQ in standard character form for “providing software as a service (SAAS) services featuring software to measure employee performance and productivity and set and analyze employee goals, and for employee training, and personal effectiveness; providing technology information relating to measuring employee performance and productivity, setting and analyzing employee goals; providing a website featuring technology to create, assign, and take educational courses and training programs and to track employee training progress.”
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
The registered mark is for PIIQ in standard characters. The application is for the mark PIIQ in standard characters. The marks are identical.
COMPARISON OF THE GOODS/SERVICES
Applicant’s goods/services include a variety of broadly defined software products and services. The registrant’s services are providing software as a service (SAAS) services featuring software to measure employee performance and productivity and set and analyze employee goals, and for employee training, and personal effectiveness; providing technology information relating to measuring employee performance and productivity, setting and analyzing employee goals; providing a website featuring technology to create, assign, and take educational courses and training programs and to track employee training progress.
In this case, the application use(s) broad wording to describe software, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow 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 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/or services are related.
In total, the marks are identical and the goods/services are commercially related and likely to be encountered together in the marketplace by consumers. Therefore, consumers are likely to be confused and mistakenly believe that the products/services originate from a common source. Therefore, registration must be refused under Section 2(d) of the Lanham Act.
IDENTIFICATION OF GOODS/SERVICES
Some wording in the identification of services is indefinite and must be clarified as indicated in bold below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Please note that the identification for software and firmware in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d).
Applicant may substitute the following wording, if accurate:
Downloadable computer software for use in __________ [specify function (e.g. database management)] in the
field of __________ [specify field if content specific (e.g. beauty salon management)]; computer hardware; and downloadable firmware for use __________
[specify function (e.g. as a spreadsheet)] in the field of __________ [specify field if content specific (e.g. hair salon business management)]; downloadable application
software including application software for use in finding beauty and/or hair salons; downloadable electronic publications, namely,
_________ [specify type (e.g. magazines, books)] in the field of __________ [specify topic (e.g. hair styles)]; downloadable computer software that enables users to make
reservations and bookings for personal services; downloadable computer software for customers and potential customers to interact with and to compare personal service providers;
downloadable software for appointment management, notification, commercial evaluation, payment transactions, client management, rewards management, and for locating, geo-locating and comparing
personal services providers including beauty and/or hair salons; downloadable computer software for the collection, editing, organizing, modifying, transmission, storage and
sharing of data and information; on-line downloadable computer software in the nature of an application programming interface (API) for computer software which facilitates
online services for allowing data retrieval, upload, download, access and management; downloadable computer software to enable uploading, downloading, accessing, posting,
displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; downloadable computer
software for streaming audio-visual media content via a global computer network and to mobile and digital electronic devices; electronic publications; [delete duplicate listing]; downloadable appointment and booking tracking software; electronic point of sale (EPOS) terminals; electronic point of sale (EPOS)
systems comprising computer hardware and downloadable software for system management, telecommunications apparatus and instruments in the
nature of __________ [specify common commercial name (e.g. video telephones)]; downloadable computer software to allow users to perform electronic business transactions via a global computer
network; downloadable computer software to allow users to receive and process orders via a global computer network; downloadable computer software applications to allow users to search, order, browse
personal services, including beauty and hair salon services and/or rate and/or comment on those services; downloadable computer software applications relating to the sale, order
and booking of beauty and hair salon services; downloadable computer software for use in navigation for and location identification of beauty and/or hair salon services, in
International Class 9.
Publishing of __________ [specify type of publication (e.g. magazines)] for the lifestyle industry; creation and editing and publication [terminology indefinite in relation to non-printed matter] of motion picture film,
sound and video recording for the lifestyle industry; publishing of printed matter in the nature of __________ [specify type of printed matter (e.g. magazines)], books and
periodical publications; creating and publishing training materials for the lifestyle industry, in International Class 41.
Computer services, namely, hosting an interactive web site featuring technology that allows users to manage their appointments for beauty and hair salons; computer programming services; computer consultancy services; computer software design services; research and development of technology, namely, product research and development in relation to telecommunications goods and on-line computer services; mapping services, namely, electronic, on-line and digital mapping services; hosting of websites for others; designing of websites; computer design and implementation of IT systems; maintenance of computer software; data security consultancy services; provision of internet search engine services; software as a service (SAAS) services, namely, hosting software for use by others for use in website building and publishing; computer services, namely, providing on-line non-downloadable software for content management of websites; computer services, namely, website tracking of performance to determine the technological effectiveness of the website for non-business purposes; hosting websites for others featuring landing pages; computerized electronic data storage of business information; hosting an online website for others including a website featuring technology; hosting an online website for the management, booking, notification, location and payment of beauty and/or hair salon services; file sharing services, namely, hosting a web site featuring technology enabling users to upload and download electronic files; hosting on-line web facilities for others for managing and sharing on-line content; hosting computer software applications of others;
application service provider (ASP), namely, hosting computer software applications of others featuring publication of information in electronic form; computerized electronic data storage services; electronic data storage other than physical storage; electronic data storage; storage services other than physical storage for electronic media and data; information, advisory and consultancy services in relation to the aforementioned; application service provider (ASP) and software as a service (SaaS) services featuring software for electronic point of sale systems; application service provider (ASP) and software as a service (SaaS) services featuring software that allow users to perform electronic business transactions via a global computer network; providing on-line non-downloadable software and software platforms to facilitate electronic business transactions via a global computer network and/or to allow users to receive and process reservations, bookings and appointments online; providing temporary use online of non-downloadable software to facilitate the processing of _________ [specify type or facilitation and processing]; providing temporary use online of non-downloadable software to facilitate communication between beauty and/or hair salon and customer; providing temporary use online of non-downloadable software for use in navigation and location identification of a beauty and/or hair salon; computer consultancy services related to electronic point of sale (EPOS) systems and computer hardware and software, featuring telephonic and on-line support; computer consultancy services related to the setting up and operation of websites and internet portals; creating, maintaining and hosting websites and internet portals; installation, maintenance and repair of computer software; web site security services for the protection of personal and financial data in the nature of __________ [specify type of services (e.g. administering digital certificates)]; advisory services relating to computer security; rental and leasing of computer hardware and computer peripheral equipment for use in electronic point of sale (EPOS) systems; creating and maintain of blogs for beauty and/or hair salons; information and advisory services relating to the aforesaid, in International Class 42.
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
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.
SIGNED DECLARATION REQUIRED
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b), (c), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii), 2.59(a). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the TEAS online form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
SECTION 1(B) AND 44(D) WITH INTENT TO PERFECT
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
ASSISTANCE
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 response to this nonfinal Office action
/Tarah Hardy Ludlow/
Examining Attorney
Law Office 110
571-272-9361
tarah.hardy@uspto.gov
RESPONSE GUIDANCE