| To: | Q-Matic AB (adrienne@wrb-ip.com) |
| Subject: | U.S. Trademark Application Serial No. 88487871 - QMATIC - 000495-005 |
| Sent: | September 17, 2019 01:10:30 PM |
| Sent As: | ecom103@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 |
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. 88487871
Mark: QMATIC
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Correspondence Address:
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Applicant: Q-Matic AB
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Reference/Docket No. 000495-005
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 issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) PARTIAL 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 Nos. 5110596, 5114636, 5158427, 5348228, 5348240, 5377407, 5377409, 5609033, and 5609047. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s mark is QMATIC for use with “software; mobile apps; cloud computing software; information technology; data processing equipment and accessories; computers and computer hardware; measuring, detecting and monitoring instruments, indicators and controllers; self-service terminals; sensors” in International Class 9 and “software development, programming and implementation; IT consultancy; cloud computing services” in International Class 42, among other goods and services.
The cited registrations are:
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and 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) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Applicant’s and registrants’ marks are similar in appearance, sound, meaning and overall commercial impression due to use of the same term “MATIC” preceded by a letter. 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). This identical structure gives the marks similar appearances, sounds, and overall commercial impressions. The different letters used to precede the common term “MATIC” do not significantly alter the sounds, appearances, and overall commercial impressions.
Therefore, the marks are confusingly similar.
Relatedness of the Goods
The goods of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
In this case, the application uses broad wording to describe its goods and services, which presumably encompasses all goods and/or services of the type described, including registrants’s more narrow goods and services. 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). For example, the broad term “software” is encompassing of all types of software. Similarly, the term “controllers” is encompassing of all types of controllers. 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)).
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 and services are related.
Conclusion
Because the marks are confusingly similar and the goods are related, registration is refused under Section 2(d) of the Trademark Act.
Response to Section 2(d) Partial Refusal
(1) Deleting the goods and/or services to which the refusal pertains;
(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).
OVERBROAD AND INDEFINITE IDENTIFICATION OF GOODS AND SERVICES – AMENDMENT REQUIRED
Parenthesis
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
Class 9
If sold separately, the manuals are classified in International Class 9 if downloadable or in International Class 16 if printed. If sold separately, applicant must also indicate the subject matter of the manuals. See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(e).
If the manuals are sold as a unit with the International Class 9 computer software, the identification must indicate that the goods are “sold as a unit” and also specify the items that comprise the unit, with the predominant items listed first. See TMEP §1401.05(a). The predominant goods determine classification of the goods sold as a unit. Id. Accordingly, the goods are classified in International Class 9 when downloadable or recorded software or downloadable manuals are the predominant element, or in International Class 16 when printed manuals are the predominant element.
The wording “data processing equipment and accessories” in the identification of goods is indefinite and must be clarified because the accessories must be specified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “measuring, detecting and monitoring instruments, indicators and controllers” in the identification of goods is indefinite and must be clarified because the types of goods must be listed. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
The wording “self-service terminals” in the identification of goods is indefinite and must be clarified because the nature of the “terminals” is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, the goods could be computer terminals or telephone terminals, etc.
The wording “display monitors, terminals and screens” in the identification of goods is indefinite and must be clarified because the nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, it is not clear whether the goods are computer monitors and screens, television screens, projector screens, etc.
The wording “sensors” in the identification of goods is indefinite and must be clarified because the types of sensors must be identified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
Class 35
Class 42
The wording “cloud computing services” in the identification of services is indefinite and must be clarified because the nature of the services is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, the services could be consulting services or the provision of cloud-based software.
Suggested Amendments
Applicant may substitute the following wording, if accurate:
Class 7 –
3D printers
Class 9 –
Downloadable software for [specify function, e.g., database management, etc.] in the field of business intelligence, business analytics, queue management, customer flow management and appointment management; mobile apps being downloadable software for [specify function, e.g., database management, etc.] in the field of business intelligence, business analytics, queue management, customer flow management and appointment management; downloadable cloud computing software for [clarify cloud computing function, e.g., managing virtual machines on a cloud computing platform, etc.] in the field of business intelligence, business analytics, queue management, customer flow management and appointment management; information technology, namely, [specify the goods, e.g., downloadable software for use as a spreadsheet, etc.] in the field of business intelligence, business analytics, queue management, customer flow management and appointment management [;] and audio-visual, multimedia and photographic devices, namely, [specify the goods, e.g., cameras, etc.] in the field of business intelligence, business analytics, queue management, customer flow management and appointment management; data processing equipment and accessories, namely, [specify the goods, e.g., computer peripheral devices, keyboards, computer monitors, etc.] in the field of business intelligence, business analytics, queue management, customer flow management and appointment management; computers and computer hardware in the field of business intelligence, business analytics, queue management, customer flow management and appointment management; measuring, detecting and monitoring instruments, indicators and controllers, namely, [specify the goods or describe use, e.g., rulers, instruments for measuring height, etc.] in the field of business intelligence, business analytics, queue management, customer flow management and appointment management; self-service [specify the use, e.g., point-of-sale, telephone, computer, etc.] terminals in the field of business intelligence, business analytics, queue management, customer flow management and appointment management; display monitors, terminals and screens, namely, [clarify nature of the goods, e.g., video monitors, television monitors, video screens, etc.] in the field of business intelligence, business analytics, queue management, customer flow management and appointment management; media players in the field of business intelligence, business analytics, queue management, customer flow management and appointment management; printers, namely, [specify the goods in Class 9, e.g., document printers, etc.] in the field of business intelligence, business analytics, queue management, customer flow management and appointment management; sensors, namely, [specify the type of sensors or describe use of the sensor, e.g., infrared sensors, sensors for measuring pressure, etc.] in the field of business intelligence, business analytics, queue management, customer flow management and appointment management
Class 16 –
Queue and priority tickets made of paper, also such as bands or rolls
Class 35 –
Business assistance, management and administrative services in the field of business intelligence, business analytics, queue management, customer flow management and appointment management; research and information services in the field of business intelligence, business analytics, queue management, customer flow management and appointment management business [specify type of analysis, e.g., data, management, etc.] analysis; business intelligence services
Class 42 –
Software development, programming and implementation in the field of business intelligence, business analytics, queue management, customer flow management and appointment management; IT consultancy in the field of business intelligence, business analytics, queue management, customer flow management and appointment management; IT security services in the field of business intelligence, business analytics, queue management, customer flow management and appointment management; cloud computing services, namely, [specify the services, e.g., consulting services in the field of cloud computing, cloud computing featuring software for use in database management, etc.] in the field of business intelligence, business analytics, queue management, customer flow management and appointment management
Amendment Guidelines
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.
REQUIREMENT – SPECIFY NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
CLARIFICATION OF APPLICANT’S ENTITY TYPE REQUIRED
Alternatively, if applicant maintains that the legal entity in the application properly identifies applicant’s entity type, applicant must provide an explanation as to why the identified entity type is more similar to a “AB” in this instance than to the legal entities listed in TMEP Appendix D. See id.
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or 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/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
/Jacob Vigil/
Trademark Examining Attorney
Law Office 103
571-270-3586
jacob.vigil@uspto.gov
RESPONSE GUIDANCE
