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:  September 12, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues 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
• Amendment of Identification of Goods and Services

 

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. 4428160 (“CYBER OPS”).  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 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 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.

 

a.     Comparing the Marks

 

Applicant’s mark is “CYBEROPS” in standard characters, and the registered mark is “CYBER OPS” in standard characters.

 

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 compared marks are identical except for a slight difference in appearance between applicant’s mark, which appears as a compound word with no space separating the words, that is, “CYBEROPS”; and registrant’s mark, which appears as multiple words with space separating the words, that is, “CYBER OPS”.  As such, the marks are identical in sound and virtually identical in appearance, and are thus confusingly similar for the purposes of determining likelihood of confusion.  See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal citation omitted].”); In re Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”); Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar.  The word marks are phonetically identical and visually almost identical.”).

 

Thus, the marks are confusingly similar and are likely to cause the same commercial impression on the mind of the consumer.

 

b.     Comparing the Goods and Services

 

Applicant seeks to register its mark in connection with “computer software, namely, software for management of security breach incidents and responses, for use in the fields of security, forensic, diagnostic, incident response, and education pertaining to information, computer and internet security; computer software, namely, software for the protection of digital assets from of cyber warfare, computer hacking and computer viruses” in International Class 9, and “consulting and testing of cybersecurity, incident response and data breach policies and plans of others in the field of computer network and internet computer security; computer consultation services in the fields of assessing technology risks and computer systems and network integration; research in the fields of computer forensic intelligence and information and computer and internet security technology; computer software development; technical support, namely, monitoring of technological functions of computer network systems and assistance with the management of cyber warfare, computer hacking and computer viruses, namely, on-line scanning, detecting, quarantining and eliminating of viruses, worms, trojans, spyware, adware, malware and unauthorized data and programs on computers and electronic devices and consulting thereof; counseling in the field of digital defense planning methodologies, namely, providing computer testing, systems analysis and software development of incident response plans of others; computer services, namely, management and protection of digital assets in the nature of computer virus protection services; information technology system security breach investigation and remediation services, namely, providing computer testing, systems analysis and software development of incident response plans of others; computer services, namely, providing forensic services to recover lost and deleted data; computer security consulting services in the field of critical incident response to information, computer and internet security breaches; software as a service (saas) services featuring software for management of security breach incidents and responses, for use in the fields of security, forensic, diagnostic, incident response, and education pertaining to information, computer and internet security; software as a service (saas) services featuring software for the protection of digital assets from of cyber warfare, computer hacking and computer viruses; software as a service (saas) services, namely, hosting software for use by others for use for management of security breach incidents and responses, for use in the fields of security, forensic, diagnostic, incident response, and education pertaining to information, computer and internet security; software as a service (saas) services, namely, hosting software for use by others for use for the protection of digital assets from of cyber warfare, computer hacking and computer viruses; platform as a service (paas) featuring computer software platforms for management of security breach incidents and responses, for use in the fields of security, forensic, diagnostic, incident response, and education pertaining to information, computer and internet security; platform as a service (paas) featuring computer software platforms for the protection of digital assets from of cyber warfare, computer hacking and computer viruses” in International Class 42.

 

Registrant’s goods are identified as “providing temporary use of on-line non-downloadable software and applications for collaboration among third parties to address cyber-security issues as well as an exchange of information about cyber-data” in International Class 42.

 

The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The attached Internet evidence, consisting of screenshots from Cyber Management Alliance, Bitdefender, and Kaspersky establishes that the same entity commonly provides the relevant goods and services, namely cybersecurity software, cybersecurity consulting services, and cybersecurity information, and markets the goods and services under the same mark.  Thus, applicant’s and registrant’s goods and 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).

 

McAfee:

• http://www.mcafee.com/consumer/en-us/store/m0/index.html (software)
• http://www.mcafee.com/enterprise/en-us/services.html (consulting)
• http://www.mcafee.com/enterprise/en-us/threat-center/mcafee-labs/threat-predictions.html (information)
• http://community.mcafee.com/ (community)
• http://www.mcafee.com/enterprise/en-us/products/mvision-cloud.html (non-downloadable software)

Bitdefender:

• http://www.bitdefender.com/solutions/ (software)
• http://www.bitdefender.com/business/enterprise-professional-services.html (consulting)
• http://www.bitdefender.com/business/service-providers-products/cloud-security-msp.html (software)
• http://www.bitdefender.com/partners/ (community)
• http://www.bitdefender.com/business/solution-briefs.html (information)

Kaspersky:

• http://usa.kaspersky.com/enterprise-security/cybersecurity-services (consulting)
• http://usa.kaspersky.com/home-security#all (software)
• http://usa.kaspersky.com/enterprise-security/resources (information)
• http://usa.kaspersky.com/enterprise-security/finance (non-downloadable software)
• http://community.kaspersky.com/ (community)

 

Accordingly, registration must be refused pursuant to Section 2(d) of the Trademark Act.

 

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

 

AMENDMENT OF IDENTIFICATION OF GOODS AND SERVICES

 

The wording “computer software” and “information” in the identification of goods is indefinite and must be clarified because it does not specify whether the software is downloadable, and does not specify the subject matter of the information.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Additionally, the wording “testing of cybersecurity” in the identification of services is also indefinite and must be clarified because it does not provide enough specificity as to the nature of the services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant may substitute the following wording, if accurate (changes and suggestions in bold):

 

• International Class 9: downloadable computer software, namely, downloadable software for management of security breach incidents and responses, for use in the fields of security, forensic, diagnostic, incident response, and education pertaining to cybersecurity information, computer and internet security; downloadable computer software, namely, software for the protection of digital assets from of cyber warfare, computer hacking and computer viruses

 

• International Class 42: consulting and testing of cybersecurity systems, incident response and data breach policies and plans of others in the field of computer network and internet computer security; computer consultation services in the fields of assessing technology risks and computer systems and network integration; research in the fields of computer forensic intelligence and information and computer and internet security technology; computer software development; technical support, namely, monitoring of technological functions of computer network systems and assistance with the management of cyber warfare, computer hacking and computer viruses, namely, on-line scanning, detecting, quarantining and eliminating of viruses, worms, trojans, spyware, adware, malware and unauthorized data and programs on computers and electronic devices and consulting thereof; counseling in the field of digital defense planning methodologies, namely, providing computer testing, systems analysis and software development of incident response plans of others; computer services, namely, management and protection of digital assets in the nature of computer virus protection services; information technology system security breach investigation and remediation services, namely, providing computer testing, systems analysis and software development of incident response plans of others; computer services, namely, providing forensic services to recover lost and deleted data; computer security consulting services in the field of critical incident response to information, computer and internet security breaches; software as a service (saas) services featuring software for management of security breach incidents and responses, for use in the fields of security, forensic, diagnostic, incident response, and education pertaining to information, computer and internet security; software as a service (saas) services featuring software for the protection of digital assets from of cyber warfare, computer hacking and computer viruses; software as a service (saas) services, namely, hosting software for use by others for use for management of security breach incidents and responses, for use in the fields of security, forensic, diagnostic, incident response, and education pertaining to information, computer and internet security; software as a service (saas) services, namely, hosting software for use by others for use for the protection of digital assets from of cyber warfare, computer hacking and computer viruses; platform as a service (paas) featuring computer software platforms for management of security breach incidents and responses, for use in the fields of security, forensic, diagnostic, incident response, and education pertaining to information, computer and internet security; platform as a service (paas) featuring computer software platforms for the protection of digital assets from of cyber warfare, computer hacking and computer viruses

 

Applicant may amend the identification to clarify or limit the goods or services, but not to broaden or expand the goods 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 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.

 

RESPONDING TO THIS OFFICE ACTION

 

 Applicant is encouraged to call or email the assigned attorney below to resolve the issues in this Office action.

 

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

 

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.

 

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 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.  

 

 

 

Scleidorovich, Joanna

/Joanna Scleidorovich/

Law Office 128

(571) 270-7384

Joanna.Scleidorovich@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 12, 2019 for

U.S. Trademark Application Serial No. 88481714

 

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. 

 

 

Scleidorovich, Joanna

/Joanna Scleidorovich/

Law Office 128

(571) 270-7384

Joanna.Scleidorovich@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 September 12, 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.”