| To: | Wilkinson, Matthew Tyler (matt.t.wilkinson@gmail.com) |
| Subject: | U.S. Trademark Application Serial No. 88487054 - UNFOLD AI - N/A |
| Sent: | September 17, 2019 07:14:55 PM |
| Sent As: | ecom112@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 |
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. 88487054
Mark: UNFOLD AI
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Correspondence Address:
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Applicant: Wilkinson, Matthew Tyler
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Reference/Docket No. N/A
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 17, 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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5233167 & 5767408. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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 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 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.
Here, applicant’s applied-for mark is “UNFOLD AI” for downloadable and non-downloadable software goods and services in Classes 9 and 42. Registrants’ mark are “UNFOLDLABS” for computer software goods and services in Classes 9 and 42, and “UNFOLD” for computer software goods in Class 9, respectively.
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).
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).
Here, applicant’s mark is “UNFOLD AI” in standard characters; registrants’ marks are “UNFOLDLABS” and “UNFOLD” – both in standard characters.
Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). In this instance, all three marks begin with the word “UNFOLD” – including the applicant’s. Further, the addition of descriptive terms to the marks “UNFOLD AI” and “UNFOLDLABS” does not obviate the similarity between the marks. Matter that is descriptive of or generic for a party’s goods and services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the attached evidence shows that the wording “AI” in the applied-for mark and “LABS” in the registered mark are merely descriptive of or generic for their goods and services. See attached evidence from the American Heritage Dictionary, which demonstrates that the “AI” stands for artificial intelligence, a feature of computer software that enables a computer to perform tasks that otherwise require thought, and “LABS” is in reference to laboratory, a room or building equipped for scientific experimentation or research – in this instance experimenting in the field of computer science. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording “UNFOLD” the more dominant element of the mark.
Thus, the marks are similar for likelihood of confusion purposes.
RELATEDNESS OF THE GOODS AND SERVICES
In this instance, applicant’s goods and services are “Downloadable enterprise software in the nature of a database for non-transactional data and a search engine for database content; Downloadable project management software; Downloadable project management software in the field of work management, organization, automation, predictive insights, data visualization, and performance metrics; Downloadable software for processing images, graphics and text; Downloadable computer software for processing digital images; Downloadable computer software for word processing; Downloadable industrial process control software” in Class 9 and “Software design and development; Software development and product development in the field of work management, organization, automation, predictive insights, data visualization, and performance metrics; Application service provider, namely, hosting, managing, developing, analyzing, and maintaining applications, software, and web sites, of others in the fields of healthcare, benefits programs, employee productivity, risk management; Application service provider, namely, hosting, managing, developing, and maintaining applications, software, and web sites, in the fields of personal productivity, wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Computer project management services; Computer software development; Consulting services in the field of office and workplace automation; Data automation and collection service using proprietary software to evaluate, analyze and collect service data; Design and development of software and hardware for producing, recording and processing digital and analogue signals; Design of information graphics and data visualization materials; Providing technical information updates of industrial process control computer software via the global computer network; Smartphone software design” in Class 42.
Registration No. 5233167
In this case, the application uses broad wording to describe “Downloadable enterprise software in the nature of a database for non-transactional data and a search engine for database content; Downloadable project management software; Downloadable project management software in the field of work management, organization, automation, predictive insights, data visualization, and performance metrics; Downloadable industrial process control software” in Class 9 and “Software design and development; Software development and product development in the field of work management, organization, automation, predictive insights, data visualization, and performance metrics; Application service provider, namely, hosting, managing, developing, and maintaining applications, software, and web sites, in the fields of personal productivity, wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Computer software development; Data automation and collection service using proprietary software to evaluate, analyze and collect service data; Design and development of software and hardware for producing, recording and processing digital and analogue signals; Design of information graphics and data visualization materials; smartphone software design” in Class 42, which presumably encompasses all goods and services of the type described, including registrant’s more narrow “Computer application software for providing advanced innovation in applications, namely, for memory management of mobile applications, optimization of mobile phone memory and mobile phone battery when using mobile applications” in Class 9 and “Software as a service (SAAS) services featuring software for running advanced software platforms in the nature of providing a user interface for mobile phone platforms, providing strategy in the nature of software for analyzing mobile application usage trends and providing strategic information about mobile application trends, product development services in the nature of software for developing mobile phone applications; Web Services based product development in the nature of a website featuring non-downloadable software for developing mobile phone applications, Big Data in the nature of software for analyzing big data in the field of mobile phone application trends, Natural Language Processing and Artificial Intelligence in the nature of developing mobile applications; Cloud computing featuring software for use in SaaS and PaaS solutions that would combine mobile and web and cloud advanced analytics and big data processing in the field of mobile application usage trends” in Class 42. 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 and services 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)).
Further, the goods and 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 and services are related.
Registration No. 5767408
In this case, the application uses broad wording to describe “Downloadable enterprise software in the nature of a database for non-transactional data and a search engine for database content; Downloadable project management software; Downloadable project management software in the field of work management, organization, automation, predictive insights, data visualization, and performance metrics; Downloadable software for processing images, graphics and text; Downloadable computer software for processing digital images; Downloadable computer software for word processing; Downloadable industrial process control software” in Class 9, which presumably encompasses all goods of the type described, including registrant’s more narrow “Computer software containing templates for use in capturing, organizing, searching, indexing, storing, synchronizing, recognizing, sharing, transmitting and displaying digital files, including video, text, binary, still images, graphics, digital content and multimedia files; downloadable computer software containing templates for use in capturing, organizing, searching, indexing, storing, synchronizing, recognizing, sharing and transmitting digital files, including video, text, binary, still images, graphics, digital content, and multimedia files” in Class 9. 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 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 related.
Lastly, both registrants’ goods and services and applicant’s goods and service have the same function, being that they are software and application goods and services aimed at optimizing and automating data processing in computer databases, mobile applications, and online web applications in the field of work management.
Therefore, the goods and services are related for likelihood of confusion purposes.
Therefore, applicant’s mark is refused under Section 2(d) for likelihood of confusion purposes because the marks are similar and the goods and services are related.
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.
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “AI” because it is not inherently distinctive. These unregistrable term at best is merely descriptive of a characteristic or feature of applicant’s goods and services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The above-referenced evidence from The American Heritage Dictionary shows this wording is commonly used in connection with similar goods and services to mean “artificial intelligence” or the “ability of a computer to perform activities that normally require thought.” See above-referenced evidence from the American Heritage Dictionary. Thus, the wording merely describes applicant’s goods and services because it describes a feature or characteristic of applicant’s software goods and services, namely, that a computer will perform activities that normally require thought.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “AI” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and 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.
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.
How to respond. Click to file a response to this nonfinal Office action
/Tyler M. Seling/
Tyler M. Seling, Esq.
Examining Attorney
Law Office 112
(571) 272-0272
Tyler.Seling@uspto.gov
RESPONSE GUIDANCE
