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. 88408836
Mark: VAPOR
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Correspondence Address: PILLSBURY WINTHROP SHAW PITTMAN, LLP
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Applicant: Vapor IO, Inc.
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Reference/Docket No. 34675-504612
Correspondence Email Address: |
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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 22, 2019
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.
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.
· Section 2(d) refusal – likelihood of confusion
Please see below for details.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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
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 marks are identical.
Comparison of the Goods/Services
Cisco
Networking and Interconnection services: http://www.cisco.com/c/dam/en/us/solutions/collateral/data-center-virtualization/data-center-interconnect/at_a_glance_c45-493703.pdf
Computer network servers: http://www.cisco.com/c/en/us/products/servers-unified-computing/index.html
Computer network switches: http://www.cisco.com/c/en/us/products/switches/index.html
Computer router: http://www.cisco.com/c/en/us/products/routers/index.html
Dell
Computer co-location services for servers: http://www.dell.com/en-us/work/learn/dell-cloud-dedicated-service
Networking Services, Interconnection services and Computer Switches : http://www.dellemc.com/en-us/networking/index.htm
Computer network servers: http://www.dell.com/en-us/work/shop/cty/sf/poweredge-tower-servers?dgc=SRVR&cid=emcprd&lid=PowerEdge
IBM
Networking and Interconnection services: http://www.ibm.com/services/network
Computer Software for use in provision of business, economic, commercial, financial and statistical information: http://www.ibm.com/us-en/marketplace/ims-15?mhsrc=ibmsearch_p&mhq=information%20storage
Computer network servers: http://www.ibm.com/it-infrastructure/servers
Computer network switches: http://www.ibm.com/us-en/marketplace/san50c-r?mhsrc=ibmsearch_p&mhq=switches
Iron Mountain
Computer co-location services for servers: http://www.ironmountain.com/digital-transformation/data-centers/colocation/server-colocation
Computer Software for use in provision of business information: http://www.ironmountain.com/information-management/reporting-and-inventory-management/accutrac
This evidence establishes that the same entity commonly provides the relevant goods and/or services and markets the goods and/or services under the same mark. Thus, applicant’s and registrant’s goods and/or services 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).
In further support of the relationship between applicant’s services and the cited registrant’s goods, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case. This evidence shows that the goods and/or services listed therein, namely, computer co-location services on the one hand and computer hardware, computer network servers and/or computer network bridges on the other hand, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
Please see attached U.S. Reg. Nos. 5212603, 5595896, 5453865, 5223775, 4879262, 4879261, 4119847 and 4479577 (all showing the relationship between computer co-location services on the one hand and computer hardware, computer network servers and/or computer network bridges on the other hand).
Since the marks are similar and the pertinent goods/services are related, there is a likelihood of confusion as to the source of applicant’s services. Therefore, applicant’s mark is not entitled to registration.
Applicant’s Response Options
If applicant chooses to respond to the above refusal, applicant must address the following requirement:
REQUIREMENT
REQUIREMENT THAT APPLICANT AMEND THE IDENTIFICATION OF SERVICES
“The purpose of the identification of goods [and/or services] is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods [and/or services].” In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)). If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person. See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.
An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.
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).
The applicant has applied to register the mark for:
IC 42: Computer co-location services, namely, providing facilities for the location of computer servers with the equipment of others; or for the exchange of traffic between the users of various networks in connected co-location data centers; computer services, namely, networking and interconnection services
Applicant may adopt the following wording, if accurate:
IC 42: Computer co-location services, namely, providing facilities for the location of computer servers with the equipment of others, said computer co-location services facilitating the exchange of data among the users of various computer networks in connected co-location data centers; computer services, namely, [clarify “networking and interconnection services”, e.g., computer network configuration services, providing temporary use of on-line, non-downloadable cloud-based software for connecting servers in the internet of things (loT), etc.]
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
GENERAL RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
How to respond. Click to file a response to this nonfinal Office action
/Nancy L. Clarke/
Examining Attorney
Law Office 102
Tel. (571) 272-9253
E-mail: nancy.clarke@uspto.gov
ADDITIONAL RESPONSE GUIDANCE
