Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  August 29, 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:

• Partial Section 2(d) Refusal – Likelihood of Confusion
• Requirement – Amend Identification of Goods and Services

 

PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

The stated refusal applies to the specific services identified in International Class 42 and does not bar registration in the remaining services in Class 42 or the goods identified in International Class 9.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark “WHERE INSIGHTS DRIVE INNOVATION” in U.S. Registration No. 3079413.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

 

Applicant’s mark is “INSIGHT DRIVES INNOVATION” (in standard character form) for, in relevant part, “web-site hosting services”.

 

Registrant’s mark is “WHERE INSIGHTS DRIVE INNOVATION” (also in standard character form) for, in relevant part, “sales consulting services”.

 

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.

 

Similarity 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).

 

In the present case, the parties’ marks are similar in sound and appearance because both feature the same terms or plural thereof, namely, “INSIGHT DRIVES INNOVATION” and “INSIGHTS DRIVE INNOVATION” respectively.  Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

The applied-for mark, i.e., “INSIGHT DRIVES INNOVATION”, is essentially the singular form of a portion of the registrant’s mark, i.e., “INSIGHTS DRIVE INNOVATION”.  Applicant should note that an applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression.  Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).

 

Moreover, although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

Accordingly, the parties’ marks share essentially identical wording and as a result, are confusingly similar in terms of sound, appearance, meaning and commercial impression.

 

Relatedness of the Services

 

A likelihood of confusion also exists because the services of the parties are legally related.  Applicant offers web-site hosting services.  Registrant offers sales consulting services.  These services are related because they are often provided by the same entity under the same brand.  As such, when highly similar marks are used in connection with such services, a consumer would be likely to believe that these services originate from the same source.

 

The attached Internet evidence consists of screenshots from websites of such providers of the relevant services under a single source.  See http://dynamicenterprises.ca/; http://www.eprosper.ca/; http://www.rainmakergroupconsulting.com/.  This evidence establishes that the same entity commonly provides the relevant services and markets services under the same mark, the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the services are complementary in terms of purpose or function.  Thus, applicant’s and registrant’s 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).

 

Conclusion

 

Therefore, consumers who are familiar with the registrant’s sales consulting services offered in connection with the “WHERE INSIGHTS DRIVE INNOVATION”, upon encountering applicant’s web-site hosting services offered in connection with the mark “INSIGHT DRIVES INNOVATION”, are likely to be confused and believe that the services originate from the same source.  As a result, registration is refused under Section 2(d) of the Trademark Act. 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

REQUIREMENT – AMEND IDENTIFICATION OF GOOD AND SERVICES

 

For the reasons set forth below, specific wording in the identification of goods and services is unacceptable as indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

International Class 9

 

The wording “computer software for use in the acquisition, tracking and payment for goods and services” is indefinite and must be clarified because the nature of the goods remains unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01.  Computer software must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods.  Thus, applicant must amend the identification to further clarify the nature of the goods.

 

Applicant may adopt the following wording, specified in bold, if accurate (the italicized language is advisory only and not intended to be part of the suggested amended identification):

 

International Class 9: [Clarify nature of the goods as downloadable or recorded, e.g., downloadable] computer software for use in the acquisition, tracking and payment for goods and services; Downloadable software for managing the purchasing, sourcing, ordering, procurement functions, supply chain management, enterprise resource planning (ERP), spend analysis, spend management, accounts payable, electronic auction services and contract management of organizations;

 

International Class 42: Computer programming for the implementation and modification of computer software; Software as a service (SAAS) services featuring software for use in the acquisition, tracking and payment for goods and services; Cloud computing featuring software for use in the acquisition, tracking and payment for goods and services; Web site hosting services; Providing online non-downloadable software for managing the purchasing, sourcing, ordering, procurement functions, supply chain management, spend analysis, spend management, accounts payable, electronic auction services and contract management of organizations; Providing on-line non-downloadable software for creating searchable databases and modules of information and data that enable organizations to manage their product and service sourcing, procurement, supplier management, supply chain management, enterprise resource planning (ERP), contract management, spend management, spend analysis, and accounts payable activities; Providing on- line non-downloadable software enabling organizations to perform electronic transactions and procurement functions.

 

 

 

 

Scope Advisory

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

Applicant should note the following advisory.

 

ADVISORY – PARTIAL ABANDONMENT

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and services in International Classes 9 and 42 will be deleted from the application: “computer software for use in the acquisition, tracking and payment for goods and services” and  “web site hosting services”.  The application will then proceed with the following goods and/or services in International Classes 9 and 42 only:

 

International Class 9: Downloadable software for managing the purchasing, sourcing, ordering, procurement functions, supply chain management, enterprise resource planning (ERP), spend analysis, spend management, accounts payable, electronic auction services and contract management of organizations;

 

International Class 42: Computer programming for the implementation and modification of computer software; Software as a service services featuring software for use in the acquisition, tracking and payment for goods and services; Cloud computing featuring software for use in the acquisition, tracking and payment for goods and services; Providing online non-downloadable software for managing the purchasing, sourcing, ordering, procurement functions, supply chain management, spend analysis, spend management, accounts payable, electronic auction services and contract management of organizations; Providing on-line non-downloadable software for creating searchable databases and modules of information and data that enable organizations to manage their product and service sourcing, procurement, supplier management, supply chain management, enterprise resource planning (ERP), contract management, spend management, spend analysis, and accounts payable activities; Providing on- line non-downloadable software enabling organizations to perform electronic transactions and procurement functions.

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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.  

 

ASSISTANCE

 

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. 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

Rhoda Nkojo

Examining Attorney

Law Office 117

(571) 272-8468

Rhoda.Nkojo@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 August 29, 2019 for

U.S. Trademark Application Serial No. 88452223

 

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. 

 

 

Nkojo, Rhoda

Examining Attorney

Law Office 117

(571) 272-8468

Rhoda.Nkojo@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 August 29, 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.”