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:  October 15, 2019

 

INTRODUCTION

 

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.

 

ADVISORY: PRIOR-FILED APPLICATIONS PENDING

 

The filing dates of pending U.S. Application Serial Nos. 87895604, 79234123, and 79263542 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

SUMMARY OF ISSUES

 

• Section 2(d) Refusal – Likelihood of Confusion
• Identification of Services Requires Amendment
• Multi-Class Application Requirements
• Legal Entity Type Requires Clarification
• Foreign Registration Certificate Required

 

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. 5854908¸ 5668190, 5259455, 5269559, 5210924, 4918894, 4962917, 4182907¸4152006¸4131930¸4782403¸4672390¸4040329¸3846073¸3560308, 3629393, 3629382¸ 2247442¸ 2222353, 1700219, 1404756¸ and 4363138.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

U.S. Reg. No.	Mark	Goods and/or Services
5854908	COMPOSER	Class 9: computer software and hardware to enable parties to create and deploy contact center campaigns including campaign screens; computer software and hardware for managing telecommunications and website communications at contact centers; computer software for managing telecommunications and website communications at contact centers; computer hardware for managing telecommunications and website communications at contact centers; computer software and hardware for creating computer systems for use by contact center employees that allow for the employees' management of contact information, viewing of contact scripting materials, and real-time tracking of contact responses; computer software for creating computer systems for use by contact center employees that allow for the employees' management of contact information, viewing of contact scripting materials, and real-time tracking of contact responses; computer hardware for creating computer systems for use by contact center employees that allow for the employees' management of contact information, viewing of contact scripting materials, and real-time tracking of contact responses
5668190	RTCOMPOSER	Class 9: Computer hardware and computer software for the creation of logical flows for telecommunication applications by third parties for recording, reproducing, carrying, storing, processing, manipulating, transmitting, broadcasting, and retrieving publications, text, signals, software, information, data, code, sounds and images, namely, computer hardware and computer software for the creation of logical flows for telecommunication applications by third parties for transmission of communications; computer software and telecommunications apparatus telecommunications exchange software for the creation of logical flows for telecommunication applications by third parties to allow cloud based integrated website, SMS, instant messaging, email, voice and social media communications for the creation of logical flows for telecommunication applications by third parties allowing the managing and operating of communications for others, servers, and telecommunication cards, namely, smart cards for use in telecommunications
5259455	CLINICAL COMPOSER	Class 42: Providing temporary use of non-downloadable computer programs for use in training healthcare providers in the field of best clinical practices
5269559	RAYCOMPOSER	Class 9: Computer hardware and computer peripherals; Computer graphics software; Computer software and hardware for controlling laser apparatus, laser projection and laser shows
5210924	VISUAL COMPOSER	Class 9: Computer software for designing, hosting and managing websites
4918894	COMPOSER	Class 9: Software for use in configuring, monitoring and operating electronic control systems for industrial and commercial use, namely, in the application of industrial chambers, ovens and furnaces, food service equipment, semiconductors, plastics manufacturing equipment and packaging machinery, medical equipment, biotechnology research and clinical diagnostic instrumentation, laboratory and sterilization equipment, analytical instrumentation and thermal analyzers, pharmaceutical equipment, chemical and petrochemical equipment, energy generating equipment, aerospace equipment, metals processing equipment, industrial HVAC equipment, printing and photo equipment, telecommunications equipment, and diesel emissions reduction equipment; user interface in the nature of a keyboard or electronic touchscreen that allows remote access and control of electronic systems for industrial and commercial use, namely, in the application of industrial chambers, ovens and furnaces, food service equipment, semiconductors, plastics manufacturing equipment and packaging machinery, medical equipment, biotechnology research and clinical diagnostic instrumentation, laboratory and sterilization equipment, analytical instrumentation and thermal analyzers, pharmaceutical equipment, chemical and petrochemical equipment, energy generating equipment, aerospace equipment, metals processing equipment, industrial HVAC equipment, printing and photo equipment, telecommunications equipment, and diesel emissions reduction equipment
4962917	COMPOSER	Class 42: Providing online non-downloadable computer software and related web-based services for multi-platform omni-channel marketing content creation, namely, non-downloadable software that enables users to create and assemble marketing content within a web-based interface
4182907	COMPOSER	Class 9: Software for creating customized medical discharge instructions
4152006	XDCOMPOSER	Class 9: Computer software, namely, extracting, transforming and loading (ETL) software, for use in XML generation and real-time data collection; computer software for processing XML data based on XML related standards
4131930	PROCESSCOMPOSER	Class 9: Computer software for financial planning
4782403	MOBILE COMPOSER	computer software for managing, creating, designing and displaying software applications for mobile devices
4672390	BEAM COMPOSER	Class 9: Computer software and hardware for controlling and creating special effects with laser projectors
4040329	SMILE COMPOSER	Class 9: Computer software for 3D modeling, 3D visualization and 3D analysis of anatomical data, computer software for creating searchable databases for information and data, software for generation of 3D production data, 3D analysis and design in the field of dentistry, namely, dental implants, dental restorations, orthodontic appliances; computer databases for storing or managing 3D production data, electric apparatus to control and monitor production in the field of dental implants, dental restorations, orthodontic appliances
3846073	MOTION COMPOSER	Class 9: Software for automation programming and analysis
3560308	COMPOSER	Class 9: Electronic control software for mobile vehicles, namely, configurator and programming tool for creating new or modifying existing vehicle control programming
3629393	COMPOSER	Class 9: Computer software for managing security and access control to computer networks and network devices
3629382	COMPOSER	Class 9: Computer software for managing security and access control to computer networks and network devices
2247442	MAPCOMPOSER	Class 9: computer programs for map-making in separate layers
2222353	DL COMPOSER	Class 9: computer software for use in typographic pagination and formatting
1700219	MEDIA COMPOSER	Class 9: Computer hardware; namely, computers, video digitizers, audio digitizers, analog to digital audio converters, National Television Standards Committee (NTSC) to Red-Green-Blue (RGB) synchronization video and signal converters, sync generators, video local area network controllers, video monitor controllers, monitors; computer programs for use in video editing; audio amplifiers and loud speakers
1404756	PROFESSIONAL COMPOSER	Class 9: COMPUTER PROGRAMS AND ACCOMPANYING INSTRUCTION MANUALS SOLD AS A UNIT THEREWITH
4363138	COMPOSERIGHT	Class 42: Computer services, namely, creating computer network-based indexes of information, web sites and resources; web site hosting services; development of computer software application solutions; software creation; providing temporary use of a web-based software application for use in business, research and technical writing

 

Applicant’s mark is COMPOSER for “Computer programs, downloadable; downloadable electronic publications; Provision of an online marketplace; Electronic payment services; payment processing services; Providing access to online computer databases; providing access to databases; Computerised training; provision of information relating to training; provision of training courses; provision of educational webinars; providing online educational videos, not downloadable; electronic publication of training material, including online and over a global computer network; provision of online information about entertainment, social and educational events; educational assessment services; entertainment, cultural or sporting event booking or reservation services; providing information, including online, about education, training, entertainment, sporting and cultural activities; organisation of training courses; organisation of youth training schemes; setting of training standards; training consultancy; Creating and designing web pages for others; creating and designing web pages for others, including creating virtual communities for registered users to interact and participate in discussions; creating and maintaining web sites for others; creating indexes of web-based information for searching purposes; hosting web sites; online provision of non-downloadable web-based applications; online provision of non-downloadable web-based software; hosting of databases; hosting of software as a service; provision of online non-downloadable application service provider software; providing virtual computer systems through cloud computing.”

 

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’s Mark Compared to Reg. Nos. 5854908, 4918894, 4962917¸ 4182907¸ 3560308¸ 3629393¸ and 3629382

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

U.S. Reg. No.

Mark

 

5854908	COMPOSER
4918894	COMPOSER
4962917	COMPOSER
4182907	COMPOSER
3560308	COMPOSER
3629393	COMPOSER
3629382	COMPOSER

 

Applicant’s mark is COMPOSER.

 

In the present case, applicant’s mark is COMPOSER and registrants’ mark are COMPOSER.  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.  Id.

 

Therefore, the marks are confusingly similar. 

 

Applicant’s Mark Compared to Reg. Nos. 5668190¸ 5259455, 5269559, 5210924, 4152006, 4131930, 4782403, 4672390, 4040329¸ 3846073, 2247442, 2222353, 1700219, 1404756, and 4363138

 

U.S. Reg. No.	Mark
5668190	RTCOMPOSER
5259455	CLINICAL COMPOSER
5269559	RAYCOMPOSER
5210924	VISUAL COMPOSER
4152006	XDCOMPOSER
4131930	PROCESSCOMPOSER
4782403	MOBILE COMPOSER
4672390	BEAM COMPOSER
4040329	SMILE COMPOSER
3846073	MOTION COMPOSER
2247442	MAPCOMPOSER
2222353	DL COMPOSER
1700219	MEDIA COMPOSER
1404756	PROFESSIONAL COMPOSER
4363138	COMPOSERIGHT

 

Applicant’s mark is COMPOSER.

 

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).

 

In this case, the applied-for mark is confusingly similar to the registered marks because they contain the identical term “COMPOSER”. 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).

 

Moreover, because the parties’ marks contain the identical term “COMPOSER”, the marks are also similar in sound. 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).

 

Further, although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrants’ marks.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks.

 

As such, the parties’ marks are confusingly similar.

 

Comparison of the Goods and Services

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

U.S. Reg. No.	Goods and/or Services
5854908	Class 9: computer software and hardware to enable parties to create and deploy contact center campaigns including campaign screens; computer software and hardware for managing telecommunications and website communications at contact centers; computer software for managing telecommunications and website communications at contact centers; computer hardware for managing telecommunications and website communications at contact centers; computer software and hardware for creating computer systems for use by contact center employees that allow for the employees' management of contact information, viewing of contact scripting materials, and real-time tracking of contact responses; computer software for creating computer systems for use by contact center employees that allow for the employees' management of contact information, viewing of contact scripting materials, and real-time tracking of contact responses; computer hardware for creating computer systems for use by contact center employees that allow for the employees' management of contact information, viewing of contact scripting materials, and real-time tracking of contact responses
5668190	Class 9: Computer hardware and computer software for the creation of logical flows for telecommunication applications by third parties for recording, reproducing, carrying, storing, processing, manipulating, transmitting, broadcasting, and retrieving publications, text, signals, software, information, data, code, sounds and images, namely, computer hardware and computer software for the creation of logical flows for telecommunication applications by third parties for transmission of communications; computer software and telecommunications apparatus telecommunications exchange software for the creation of logical flows for telecommunication applications by third parties to allow cloud based integrated website, SMS, instant messaging, email, voice and social media communications for the creation of logical flows for telecommunication applications by third parties allowing the managing and operating of communications for others, servers, and telecommunication cards, namely, smart cards for use in telecommunications
5259455	Class 42: Providing temporary use of non-downloadable computer programs for use in training healthcare providers in the field of best clinical practices
5269559	Class 9: Computer hardware and computer peripherals; Computer graphics software; Computer software and hardware for controlling laser apparatus, laser projection and laser shows
5210924	Class 9: Computer software for designing, hosting and managing websites
4918894	Class 9: Software for use in configuring, monitoring and operating electronic control systems for industrial and commercial use, namely, in the application of industrial chambers, ovens and furnaces, food service equipment, semiconductors, plastics manufacturing equipment and packaging machinery, medical equipment, biotechnology research and clinical diagnostic instrumentation, laboratory and sterilization equipment, analytical instrumentation and thermal analyzers, pharmaceutical equipment, chemical and petrochemical equipment, energy generating equipment, aerospace equipment, metals processing equipment, industrial HVAC equipment, printing and photo equipment, telecommunications equipment, and diesel emissions reduction equipment; user interface in the nature of a keyboard or electronic touchscreen that allows remote access and control of electronic systems for industrial and commercial use, namely, in the application of industrial chambers, ovens and furnaces, food service equipment, semiconductors, plastics manufacturing equipment and packaging machinery, medical equipment, biotechnology research and clinical diagnostic instrumentation, laboratory and sterilization equipment, analytical instrumentation and thermal analyzers, pharmaceutical equipment, chemical and petrochemical equipment, energy generating equipment, aerospace equipment, metals processing equipment, industrial HVAC equipment, printing and photo equipment, telecommunications equipment, and diesel emissions reduction equipment
4962917	Class 42: Providing online non-downloadable computer software and related web-based services for multi-platform omni-channel marketing content creation, namely, non-downloadable software that enables users to create and assemble marketing content within a web-based interface
4182907	Class 9: Software for creating customized medical discharge instructions
4152006	Class 9: Computer software, namely, extracting, transforming and loading (ETL) software, for use in XML generation and real-time data collection; computer software for processing XML data based on XML related standards
4131930	Class 9: Computer software for financial planning
4782403	computer software for managing, creating, designing and displaying software applications for mobile devices
4672390	Class 9: Computer software and hardware for controlling and creating special effects with laser projectors
4040329	Class 9: Computer software for 3D modeling, 3D visualization and 3D analysis of anatomical data, computer software for creating searchable databases for information and data, software for generation of 3D production data, 3D analysis and design in the field of dentistry, namely, dental implants, dental restorations, orthodontic appliances; computer databases for storing or managing 3D production data, electric apparatus to control and monitor production in the field of dental implants, dental restorations, orthodontic appliances
3846073	Class 9: Software for automation programming and analysis
3560308	Class 9: Electronic control software for mobile vehicles, namely, configurator and programming tool for creating new or modifying existing vehicle control programming
3629393	Class 9: Computer software for managing security and access control to computer networks and network devices
3629382	Class 9: Computer software for managing security and access control to computer networks and network devices
2247442	Class 9: computer programs for map-making in separate layers
2222353	Class 9: computer software for use in typographic pagination and formatting
1700219	Class 9: Computer hardware; namely, computers, video digitizers, audio digitizers, analog to digital audio converters, National Television Standards Committee (NTSC) to Red-Green-Blue (RGB) synchronization video and signal converters, sync generators, video local area network controllers, video monitor controllers, monitors; computer programs for use in video editing; audio amplifiers and loud speakers
1404756	Class 9: COMPUTER PROGRAMS AND ACCOMPANYING INSTRUCTION MANUALS SOLD AS A UNIT THEREWITH
4363138	Class 42: Computer services, namely, creating computer network-based indexes of information, web sites and resources; web site hosting services; development of computer software application solutions; software creation; providing temporary use of a web-based software application for use in business, research and technical writing

 

Applicant’s goods and services are “Computer programs, downloadable; downloadable electronic publications; Provision of an online marketplace; Electronic payment services; payment processing services; Providing access to online computer databases; providing access to databases; Computerised training; provision of information relating to training; provision of training courses; provision of educational webinars; providing online educational videos, not downloadable; electronic publication of training material, including online and over a global computer network; provision of online information about entertainment, social and educational events; educational assessment services; entertainment, cultural or sporting event booking or reservation services; providing information, including online, about education, training, entertainment, sporting and cultural activities; organisation of training courses; organisation of youth training schemes; setting of training standards; training consultancy; Creating and designing web pages for others; creating and designing web pages for others, including creating virtual communities for registered users to interact and participate in discussions; creating and maintaining web sites for others; creating indexes of web-based information for searching purposes; hosting web sites; online provision of non-downloadable web-based applications; online provision of non-downloadable web-based software; hosting of databases; hosting of software as a service; provision of online non-downloadable application service provider software; providing virtual computer systems through cloud computing.”

 

In this case, the application uses broad wording to describe computer software and computer programs, which presumably encompasses all goods and services of the type described, including registrants’ more narrow software in fields such as computer software to enable parties to create and deploy contact center campaigns including campaign screens, computer software for the creation of logical flows for telecommunication applications by third parties for transmission of communications, computer programs for use in training healthcare providers in the field of best clinical practices, Computer graphics software, Computer software for designing, hosting and managing websites, software for use in configuring, monitoring and operating electronic control systems for industrial and commercial use, software that enables users to create and assemble marketing content within a web-based interface¸ Software for creating customized medical discharge instructions, software for processing XML data based on XML related standards, software for financial planning, software for managing, creating, designing and displaying software applications for mobile devices, software for 3D modeling, software for automation programming and analysis, electronic control software for mobile vehicles, software for managing security and access control to computer networks and network devices, software for managing security and access control to computer networks and network devices, programs for map-making in separate layers, programs for use in video editing, and application for use in business, research and technical writing .  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 registrants’ 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 registrants’ goods and/or services are related.

 

Section 2(d) Refusal – Conclusion

 

In summary, the parties’ marks are either identical or highly similar, and the parties’ goods and services are legally identical. It is therefore likely that a consumer would mistakenly believe that the parties’ goods and services emanate from the same source. As such, registration is refused under Trademark Act Section 2(d).

 

Section 2(d) Refusal – Response Options

 

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 requirements set forth below.

 

IDENTIFICATION OF SERVICES REQUIRES AMENDMENT AND RECLASSIFICATION

 

Applicant has incorrectly classified the following goods and/or services in International Class 42, with the proper classification for each items in brackets:

 

Computer programs, downloadable [properly classified in Class 9]

downloadable electronic publications [properly classified in Class 9]

Provision of an online marketplace [properly classified in Class 35]

Electronic payment services [properly classified in Class 36]

payment processing services [properly classified in Class 36]

Providing access to online computer databases [properly classified in Class 38]

providing access to databases [properly classified in Class 38]

setting of training standards [properly classified in Class 42]

Creating and designing web pages for others [properly classified in Class 42]

creating and designing web pages for others, including creating virtual communities for registered users to interact and participate in discussions [properly classified in Class 42]

creating and maintaining web sites for others [properly classified in Class 42]

creating indexes of web-based information for searching purposes [properly classified in Class 42]

hosting web sites [properly classified in Class 42]

online provision of non-downloadable web-based applications [properly classified in Class 42] online provision of non-downloadable web-based software [properly classified in Class 42] hosting of databases [properly classified in Class 42]

hosting of software as a service [properly classified in Class 42]

provision of online non-downloadable application service provider software [properly classified in Class 42]

providing virtual computer systems through cloud computing [properly classified in Class 42]

 

Additionally, applicant has provided the application fee for only 1 international class.  Thus, not all international classes in the application are covered by the application fee.  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

In addition, many of the entries in the identification of services are indefinite and require further clarification as explained more fully below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

Class 41: Computer programs, downloadable; [properly classified in Class 9] downloadable electronic publications; [properly classified in Class 9] Provision of an online marketplace; [properly classified in Class 35] Electronic payment services; [properly classified in Class 36] payment processing services; [properly classified in Class 36] Providing access to online computer databases; [properly classified in Class 38] providing access to databases; [properly classified in Class 38] Computerised interactive online training services in the field of {specify subject matter of training, e.g., math}; provision of information relating to {specify subject matter of training information, e.g., teacher} training; provision of training courses in the field of {specify subject matter, e.g., teaching}; provision of non-downloadable educational webinars in the field of {specify subject matter, e.g., math}; providing  online educational videos, not downloadable, in the field of {specify subject matter, e.g., pet care}; electronic publication of training material in the nature of {specify type of publications, e.g., magazines, textbooks}, including online and over a global computer network; provision of online information about entertainment, social and educational events; educational assessment services; entertainment, cultural or sporting event booking or and reservation services; providing information, including online, about education, {specify type, e.g., teacher} training, entertainment, sporting and cultural activities; organisation of training courses in the field of {specify subject matter of training courses, e.g., math}; organisation of youth training schemes in the nature of {further clarify nature of “training schemes” using common commercial or generic name, e.g., youth sports programs}; setting of training standards; [properly classified in Class 42] {specify subject matter, e.g., teacher} training consultancy; Creating and designing web pages for others; [properly classified in Class 42] creating and designing web pages for others, including creating virtual communities for registered users to interact and participate in discussions; [properly classified in Class 42] creating and maintaining web sites for others; [properly classified in Class 42] creating indexes of web-based information for searching purposes; [properly classified in Class 42] hosting web sites; [properly classified in Class 42] online provision of non-downloadable web-based applications; [properly classified in Class 42] online provision of non-downloadable web-based software; [properly classified in Class 42] hosting of databases; [properly classified in Class 42] hosting of software as a service; [properly classified in Class 42] provision of online non-downloadable application service provider software; [properly classified in Class 42] providing virtual computer systems through cloud computing [properly classified in Class 42]

 

Class 9: Computer programs, downloadable, for {indicate function or purpose of software, e.g., database management}; downloadable electronic publications in the nature of {indicate specific nature of publication, e.g., books} in the field of {indicate subject matter, e.g., math}

 

Class 35: Provision of an online marketplace for {further clarify nature of services, e.g., buyers and sellers of goods and services}

 

Class 36: Electronic payment services {further clarify nature of services using common commercial or generic name, e.g., involving electronic processing and subsequent transmission of bill payment data}; {specify type of payment processing, e.g., debit card} payment processing services;

 

Class 38: Providing access to online computer databases; providing access to databases

 

Class 42: setting development of training voluntary standards for training {indicate goods or services subject matter, e.g., teachers}; Creating and designing web pages for others; creating and designing web pages for others, including creating virtual communities for registered users to interact and participate in discussions; creating and maintaining web sites for others; creating indexes of web-based information for searching purposes using information technology; hosting web sites; online provision of non-downloadable web-based applications for {indicate function or purpose of software}; online provision of non-downloadable web-based software for {indication function or purpose of software}; hosting of websites featuring searchable databases; application service prover (ASP), namely, hosting of software as a service applications; provision of online non-downloadable application service provider software; providing virtual computer systems through cloud computing

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/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 and/or services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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.

 

MULTI-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(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).  The application identifies goods and/or services that are classified in at least 6 classes; however, applicant submitted a fee(s) sufficient for only 1 class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

LEGAL ENTITY TYPE REQUIRES CLARIFICATION

 

The application identifies applicant as a “public company,” which is not acceptable as an entity designation in the United States because there is no clear U.S. equivalent legal entity and the entity designation does not appear in Appendix D of the Trademark Manual of Examining Procedure . See TMEP §803.03(i). Applicant must indicate the U.S. equivalent of its legal entity or provide a description of the nature of the foreign entity. See 37 C.F.R. §§2.32(a)(3), 2.61(b); TMEP §803.03(i).

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

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  

 

 

Caroline L. Moran

/Caroline L. Moran/

Trademark Examining Attorney

Law Office 125

(571) 272-3255

caroline.moran@uspto.gov

 

 

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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 15, 2019 for

U.S. Trademark Application Serial No. 88521672

 

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. 

 

 

Caroline L. Moran

/Caroline L. Moran/

Trademark Examining Attorney

Law Office 125

(571) 272-3255

caroline.moran@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 October 15, 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.”