| To: | AIXEP, Inc. (uspto@m-iplaw.com) |
| Subject: | U.S. Trademark Application Serial No. 88467290 - BACPAC - AIXP.T004 |
| Sent: | September 07, 2019 06:52:09 PM |
| Sent As: | ecom108@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 |
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. 88467290
Mark: BACPAC
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Correspondence Address:
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Applicant: AIXEP, Inc.
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Reference/Docket No. AIXP.T004
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: September 07, 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:
PARTIAL TRADEMARK ACT SECTION 2(d) REFUSAL –
LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3206238. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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).
Registrant’s mark is “BACKPACK”.
Applicant’s applied-for mark is “BACPAC”.
Overall “‘commercial impression’ is occasionally used as a proxy for the ultimate conclusion of similarity or dissimilarity of marks resulting from a comparison of their appearance, sound, and meaning.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1372, 73 U.S.P.Q.2d 1689, 1692 (Fed. Cir. 2005) (holding the marks VEUVE ROYALE and VEUVE CLICQUOT PONSARDIN confusingly similar); see also Money Station Inc. v. Cash Station Inc., 70 F.3d 1290, 38 U.S.P.Q.2d 1150, 1154 (Fed. Cir. 1995) (holding that MONEY STATION and CASH STATION are confusingly similar as applied to the services specified in its application). Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
As a primary matter, the marks are confusingly similar because they share a nearly identical dominant element. 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). Here, the words BACKPACK, BACPAC, and BAKPAK are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv). The marks have the same commercial impression because they are the same word (“backpack”) with minor variations in spelling.
Therefore, as the marks share nearly identical dominant elements and because overall, the marks have a highly similar commercial impression, the marks are highly similar in the context of the likelihood of confusion analysis.
Comparison of the Goods
Registrant’s goods are identified as “providing online non-downloadable software for organizing to-do lists, notes, images, and photos and setting email and mobile phone reminders”; and
Applicant’s relevant goods are identified as “Downloadable mobile applications for use in collecting, editing, organizing, modifying, managing, viewing, commenting on, storing, posting, annotating, displaying and sharing of digital images, photographs, text, media, information and data; Downloadable mobile applications for enabling users to create social networks to enable users to collect, edit, organize, modify, manage, view, comment on, share, post, display, and store user-created digital images, photographs, text, media, information and data; Downloadable mobile applications for the collection, editing, organizing, modifying, managing, viewing, commenting on, storage, posting, displaying and sharing of digital images, photographs, text, media, information and data; Downloadable mobile applications for enabling registered users to submit digital images, photographs, text, media, information and data from a mobile device into a back-end database; Downloadable mobile applications for enabling registered users to access back-end services by mobile software applications, namely, data storage and data management; Downloadable computer application software for mobile phones, namely, software for collecting, editing, organizing, modifying, managing, viewing, commenting on, annotating, storing, posting, displaying and sharing of digital images, photographs, text, media, information and data; Downloadable computer application software for mobile phones, namely, software for enabling users to create social networks to enable users to collect, edit, organize, modify, manage, view, comment on, share, post, display, and store user-created digital images, photographs, text, media, information and data; Downloadable computer application software for mobile phones, namely, software for the collection, editing, organizing, modifying, managing, viewing, commenting on, storage, posting, displaying and sharing of digital images, photographs, text, media, information and data; Downloadable computer application software for mobile phones, namely, software for enabling registered users to access back-end services by mobile software applications, namely, data storage and data management; Downloadable computer application software for mobile phones, mobile devices, and wireless devices, namely, software for collecting, editing, organizing, modifying, managing, viewing, commenting on, annotating, storing, posting, displaying and sharing of digital images, photographs, text, media, information and data; Downloadable computer application software for mobile phones, mobile devices, and wireless devices, namely, software for enabling users to create social networks to enable users to collect, edit, organize, modify, manage, view, comment on, share, post, display, and store user-created digital images, photographs, text, media, information and data; Downloadable computer application software for mobile phones, mobile devices, and wireless devices, namely, software for the collection, editing, organizing, modifying, managing, viewing, commenting on, storage, posting, displaying and sharing of digital images, photographs, text, media, information and data; Downloadable computer application software for mobile phones, mobile devices, and wireless devices, namely, software for enabling registered users to submit digital images, photographs, text, media, information and data from a mobile device into a back-end database; Downloadable computer application software for mobile phones, mobile devices, and wireless devices, namely, software for enabling registered users to access back-end services by mobile software applications, namely, data storage and data management; Downloadable software in the nature of a mobile application for collecting, editing, organizing, modifying, managing, viewing, commenting on, annotating, storing, posting, displaying and sharing of digital images, photographs, text, media, information and data; Downloadable software in the nature of a mobile application for entertainment, education and communication, namely, enabling users to create social networks to enable users to collect, edit, organize, modify, manage, view, comment on, share, post, display, and store user-created digital images, photographs, text, media, information and data in the fields of the fields of cultural commentary, art, performing arts, music, dance, education, politics, culture, economics, science, food, beverages, travel, self-improvement, self-fulfillment, personal experiences, and personal knowledge; Downloadable software in the nature of a mobile application for entertainment, education and communication, namely, enabling registered users to upload, download, post, view, comment on, display, share, and distribute digital images, photographs, text, media, information and data; Downloadable software in the nature of a mobile application for enabling users to create social networks to enable users to collect, edit, organize, modify, manage, view, comment on, share, post, display, and store user-created digital images, photographs, text, media, information and data; Downloadable software in the nature of a mobile application for entertainment, education and communication, namely, allowing registered users to share with other users recommendations and information; Downloadable software in the nature of a mobile application for enabling registered users to access back-end services by mobile software applications, namely, data storage and data management; Downloadable software in the nature of a mobile application for enabling registered users to submit digital images, photographs, text, media, information and data from a mobile device into a back-end database”.
In this case, the application uses broad wording, specifically, various iterations of “downloadable computer application software for mobile phones, mobile devices, and wireless devices, namely, software for collecting, editing, organizing, modifying, managing, viewing, commenting on, annotating, storing, posting, displaying and sharing of digital images, photographs, text, media, information and data” to describe applicant’s software which presumably encompasses all software of the type described, including registrant’s more narrow “providing online non-downloadable software for organizing to-do lists, notes, images, and photos and setting email and mobile phone reminders.” 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 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 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).
Partial Trademark Act Section 2(d) Refusal – Conclusion
The marks are similar in sound and appearance, and the goods are highly related. It is likely that a consumer could mistakenly believe applicant’s goods are offered by registrant or vice versa. For these reasons, as detailed supra, registration is refused pursuant to Section 2(d) of the Trademark Act.
Partial Trademark Act Section 2(d) Refusal – Response Options
(1) Deleting the goods and/or services to which the refusal pertains; or
(2) Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
ATTORNEY BAR INFORMATION
To provide bar information. Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section. See 37 C.F.R. §2.17(b)(1)(ii). Bar information provided in any other area of the form will be viewable by the public in USPTO records.
CLASSIFICATION
MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is not acceptable for any international class. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Plus application through TEAS is $225 per class. See 37 C.F.R. §2.6(a)(1)(iv); TMEP §§819.03, 819.04. See more information regarding the requirements for maintaining the lower TEAS Plus fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
ADDITIONAL FEE REQUIRED
Applicant must submit an additional processing fee of $125 per class because the application as filed did not meet the TEAS Plus application filing requirements. See 37 C.F.R. §§2.6(a)(1)(v), 2.22(a), (c); TMEP §§819.01 et seq., 819.04. Specifically, applicant failed to meet the following application filing requirements: the goods and/or services were not correctly classified.
The additional fee is required even if applicant later corrects these application requirements.
SPECIMEN
Registration is refused because the specimen in International Class 9 is not acceptable as a display associated with downloadable software and appears to be mere advertising material; thus, the specimen fails to show the applied-for mark in use in commerce for that international class. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Specifically, the specimen fails to provide the means to enable the user to download or purchase the software from the website. See In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957 (TTAB 2012); TMEP §§904.03(e), (i) et seq. Without this feature, the specimen is mere advertising material, which is not acceptable as a specimen to show use in commerce for goods. See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010)); In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); TMEP §904.04(b), (c).
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for downloadable software include instruction manuals and screen printouts from (1) web pages showing the mark in connection with ordering or purchasing information or information sufficient to download the software, (2) the actual program that shows the mark in the title bar, or (3) launch screens that show the mark in an introductory message box that appears after opening the program. See TMEP §904.03(e), (i), (j). Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §§904.03(i) et seq.
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the software identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to the Specimen webpage.
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.
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
/Laura E. Fionda/
Laura E. Fionda
Trademark Examining Attorney
Law Office 108
Phone: 571-272-7897
Email: laura.fionda@uspto.gov
RESPONSE GUIDANCE
