To: | r4 Technologies, Inc. (mdowns@finchamdowns.com) |
Subject: | U.S. Trademark Application Serial No. 88457504 - R4 - VS01-041-T01 |
Sent: | August 30, 2019 09:56:43 AM |
Sent As: | ecom107@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88457504
Mark: R4
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Correspondence Address: |
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Applicant: r4 Technologies, Inc.
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Reference/Docket No. VS01-041-T01
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: August 30, 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:
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
Applicant has applied for the mark R4 (design).
The mark in U.S. Registration No. 4025038 is R4 (stylized).
The mark in U.S. Registration No. 4058452 is R4 RISK & WEALTH SOLUTIONS (stylized).
The mark in U.S. Registration No. 5179940 is R4 ENTERPRISES (stylized).
The mark in U.S. Registration No. 5685117 is R4 (design).
The mark in U.S. Registration No. 5689691 is R4 STRATEGIES (standard character).
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).
Here, the dominant element of the mark “R4” or “R4” is pronounced identically and share the same overall commercial impression with any additional wording requiring a disclaimer in the case of registrants’ marks due to its highly descriptive and/or generic nature.
For the foregoing reasons, the marks share the same overall commercial impression.
COMPARISON OF THE SERVICES
The applicant’s services are “Consulting services in the fields of business data analysis; Business monitoring and consulting services, namely, compiling and analyzing business information to provide strategy, marketing, sales, and operation recommendations; Business information services, namely, compiling the business data of others in an analytic data environment to enable customer and marketing decisions, provide audience portraits, provide campaign and customer strategy recommendations, and facilitate customer data analytics; Business information services, namely, providing business information services in the fields of customer data cleansing and standardization” and “Data mining; Design, development, and consulting services related thereto in the field of cloud computing, data analytics and cognitive computing analytics; Software as a service (SAAS) services featuring software for analysis of business information; Software as a service (SAAS) services featuring software for analyzing, managing, and reporting on data; Software as a service (SAAS) services featuring software for data analytics and cognitive computing analytics; Software as a service (SAAS) services featuring software for providing a platform and tools for storing, accessing, cleansing, integrating, querying, analyzing, modeling, and reporting on structured and unstructured data; Software as a service (SAAS) services, namely, hosting software for use by others for use to provide business information collection and analysis.”
The services in U.S. Registration No. 4025038 are “Financial advice and consultancy services; Investment advisory services; Estate planning services; Financial planning for retirement; Financial asset management services; Insurance underwriting in the fields of life, health, and accident; Administration of employee benefit plans concerning insurance and finance; Consulting services in the fields of human resources development, namely, for the promotion of employee retention, career growth and increased productivity for employees and employers; Administration of employee benefit plans concerning insurance and finance; Advisory services in the field of employee benefits for group healthcare and business insurance offered to employees in addition to standard benefits such as medical, dental, life insurance including short term disability, long term disability, cancer insurance, accidental death and dismemberment.”
The services in U.S. Registration No. 4058452 are “Financial advice and consultancy services; Investment advisory services; Estate planning services; Financial planning for retirement; Financial asset management services; Insurance underwriting in the fields of life, health, and accident; Administration of employee benefit plans concerning insurance and finance; Administration of employee benefit plans concerning insurance and finance; Advisory services in the field of employee benefits for group healthcare and business insurance offered to employees in addition to standard benefits such as medical, dental, life insurance including short term disability, long term disability, cancer insurance, accidental death and dismemberment.”
The services in U.S. Registration No. 5179940 are “Insurance brokerage services; Insurance consultation; Insurance services, namely, underwriting, issuing and administration of life insurance; Insurance services, namely, writing property and casualty insurance; Insurance underwriting services for all types of insurance; Advice relating to investments; Dental health insurance administration; Financial consulting services, namely, advising others regarding intellectual property investments; Life insurance brokerage; Providing information and research in the field of finance and financial investments.”
The services in U.S. Registration Nos. 5685117 and 5689691 are “Business consultation services; Government relations consultancy services.”
U.S. Registration Nos. 4025038, 4058452, and 5179940
The attached Internet evidence from Bain & Company and Accenture demonstrates that applicant’s business data consulting services and financial investment advisory services commonly emanate from the same source under the same mark. For purposes of evaluating a trademark, material obtained from the Internet is generally accepted as competent evidence. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b).
U.S. Registration Nos. 5685117 and 5689691
In this case, the goods and/or services in the application and registration(s) are identical in part. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s services are related.
Accordingly, registration is refused under Section 2(d).
MARK DESCRIPTION AND COLOR CLAIM REQUIRED
A complete color claim must reference all the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. Similarly, a complete description of a mark depicted in color must specify where the colors appear in the literal and design elements of the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following color claim and description are suggested, if accurate:
Color claim: The colors black, purple, blue, orange, red, white, light purple, light blue, light orange, and pink are claimed as a feature of the mark.
Description: The mark consists of the lettering and superscript “R4” in black to the right of a flower design with four petals in, clockwise, purple, blue, orange, and red, with the center in white and overlapping portions of the petals displayed, clockwise, in light purple, light blue, light orange, and pink.
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
/Cynthia R. Smith/
Examining Attorney
Law Office 107
cynthia.smith@uspto.gov
571-272-4685
RESPONSE GUIDANCE