Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NON-FINAL OFFICE ACTION

 

THE USPTO MUST RECEIVE APPLICANT’S RESPONSE TO THIS LETTER WITHIN SIX (6) 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:  August 26, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney. 

 

Applicant should note the following issues with this application:

 

(1)   Registration is refused on the ground that the applied-for mark is likely to be confused with the mark OSF GLOBAL SERVICES in U.S. Registration No. 4406954 (with an advisory concerning prior-pending Application Serial No. 88314366 for OSF DIGITAL);

 

(2)   A filing basis is required;

 

(3)   The description of the mark (and possibly the color claim) must be amended to clarify whether white is a feature of the mark; and

 

(4)   The application was not signed and therefore not properly verified.

 

Applicant must respond timely and completely to these four issues. 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 mark in U.S. Registration No. 4406954. 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 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 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 [services] and differences in the marks.”); TMEP §1207.01.

 

For the reasons set forth below, the examining attorney submits that there is a likelihood of confusion between applicant’s mark OSF for “Association services, namely, promoting the interests of individuals and organizations who build and operate open source computing infrastructure, including as it relates to artificial intelligence and machine learning, continuous software integration and delivery, software container infrastructure, data processing in the nature of edge computing, and public, private and hybrid clouds; promoting the adoption and acceptance of open source computing infrastructure, including as it relates to artificial intelligence and machine learning, continuous software integration and delivery, software container infrastructure, data processing in the nature of edge computing, and public, private and hybrid clouds; promoting public awareness of the principles of open source, open community, open development and open design in the field of computing infrastructure, including as it relates to artificial intelligence and machine learning, continuous software integration and delivery, software container infrastructure, data processing in the nature of edge computing, and public, private and hybrid clouds; business services, namely, assisting organizations with the business aspects of launching and growing open source computing infrastructure projects, including as they relate to artificial intelligence and machine learning, continuous software integration and delivery, software container infrastructure, data processing in the nature of edge computing, and public, private and hybrid clouds” in International Class 35, and registrant’s mark:

 

• OSF GLOBAL SERVICES for “Business process outsourcing services and business process consulting services in the fields of software products, professional services, financial services, healthcare, information technology, information, media and entertainment, eCommerce and call centers” in International Class 35.

 

COMPARISON OF THE SERVICES

 

A likelihood of confusion analysis is concerned not with confusion between particular services, but likelihood of confusion as to the source or sponsorship of those services. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01. In this analysis, the comparison of the parties’ services is based on the services as they are identified in the application and registration, without limitations or restrictions that are not reflected therein. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); see Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638-39 (TTAB 2009); TMEP §1207.01(a)(iii).  

 

In this case, registrant offers business process consulting services in the fields of software products and information technology. This service is broad enough to include consulting services relating to the business aspects of launching and growing open source computing infrastructure projects, including as they relate to artificial intelligence and machine learning, continuous software integration and delivery, software container infrastructure, data processing in the nature of edge computing, and public, private and hybrid clouds. See, e.g., Paul Francis, What Is Business Process Consulting?, BHW Group, http://thebhwgroup.com/blog/what-business-process-consulting. Because registrant’s services are broad enough to include applicant’s services, registrant’s and applicant’s services are considered 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 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)). 

 

The fact that these services are identical is sufficient to refuse registration of all the services identified in the application. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); see also Inter IKEA Systems B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007).

 

COMPARISON OF THE MARKS

 

Because the marks at issue will be used on identical goods, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).

 

In the present case, the term “OSF” forms the first part of the registered mark, and consumers are generally more inclined to focus on the first part of a 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”).

 

In addition, is the dominant portion of the registered mark because the wording “GLOBAL SERVICES” has been disclaimed. Disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

Furthermore, the term “OSF” is the dominant portion of both marks because, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).

 

As such, the marks are confusingly similar because they contain the identical, dominant term “OSF”.

 

CONCLUSION

 

Because applicant’s services are identical to the registrant’s services, and because the applied-for mark and the registered mark contain the identical, dominant term “OSF”, the applied-for mark must be refused registration under Trademark Act Section 2(d) on the ground that the marks are likely to be confused.

 

ADVISORY: POTENTIAL SECTION 2(d) REFUSAL – PRIOR-PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 88314366 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. 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 application.

 

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 mark in the referenced application. 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.

 

FILING BASIS REQUIRED

 

Applicant has not specified a filing basis in the application. An application must specify and meet the requirements of at least one filing basis. 37 C.F.R. §§2.32(a)(5), 2.34(a); TMEP §806. Accordingly, applicant must (1) amend the application to specify clearly at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted. 

 

An applicant may add one or both of the following bases to the application:

 

(1)  Use of the mark in commerce under Trademark Act Section 1(a); and/or

 

(2)  A bona fide intention to use the mark in commerce under Section 1(b).

 

Although applicant may assert more than one basis, applicant may not assert both Section 1(a) for use and Section 1(b) for intent to use for identical services. 37 C.F.R. §2.34(b); TMEP §806.02(b).

 

For more information about the different legal requirements for each basis, for submitting more than one basis, and for instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.

 

MARK DESCRIPTION (AND POSSIBLY COLOR CLAIM) REQUIRE AMENDMENT

 

The drawing shows the applied-for mark in various colors, including white; however, the color claim and description of the mark do not reference the color white. The color claim and description must be complete and reference all the colors in the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. Therefore, applicant must clarify whether white is used as color in the mark or to indicate transparent areas. TMEP §807.07(d); see 37 C.F.R. §2.61(b).

 

To clarify how white is being used in the mark, applicant may satisfy one of the following:

 

(1)  If white is a feature of the mark, applicant must amend the color claim to include it and amend the description to identify where white appears in the literal elements of the mark. The following color claim and description are suggested, if accurate:

 

Color claim: The colors white and red are claimed as a feature of the mark.

 

Description: The mark consists of the stylized letters “OSF” in white on a red rectangular background with rounded edges.

 

(2)  If white is not a feature of the mark, applicant must amend the description to state that white represents transparent area and are not part of the mark. The following description is suggested, if accurate:

 

The mark consists of the stylized letters “OSF” on a red rectangular background with rounded edges. The color white represents transparent area and is not part of the mark.

 

TMEP §807.07(d).

 

UNSIGNED APPLICATION

 

The application was unsigned, resulting in the application not being properly verified. See TMEP §804. Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.2(n), 2.33(a)-(c), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

 

The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b), (c), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii), 2.59(a). For more information about this, see the Verified statement webpage.

 

To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing.  In this case, the TEAS online form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.

 

A verified statement, which includes statements supported by a signed declaration under 37 C.F.R. §2.20, must be signed by the applicant or a person “properly authorized to verify facts” and sign on behalf of the applicant. 37 C.F.R. §2.193(e)(1); TMEP §804.04; see 37 C.F.R. §2.33(a). The following persons are properly authorized: (1) a person with legal authority to bind a juristic applicant (e.g., a corporate officer of a corporate applicant or a general partner of a partnership applicant); (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of applicant; and (3) an attorney who is authorized to represent the applicant and to practice before the USPTO. 37 C.F.R. §2.193(e)(1); TMEP §804.04. 

 

While a verified statement may be signed by the applicant or a person “properly authorized to verify facts” and sign on behalf of the applicant, applicant’s attorney must sign the response itself. 37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01. 

 

RESPONSE REQUIRED

 

For this application to proceed, applicant must explicitly address the Section 2(d) refusal and each requirement in this Office action. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Click to file a response to this non-final Office action 

 

 

Andrew Leaser

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@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 maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. All informal communications relevant to this application will be placed in the official application record.

 

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.

 

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 RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §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. §2.23(b); TMEP §820. TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of services. 37 C.F.R. §§2.6(a)(1)(v), 2.23(c); TMEP §820.04. However, in certain situations, 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.

 

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 August 26, 2019 for

U.S. Trademark Application Serial No. 88522297

 

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. 

 

 

Andrew Leaser

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@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 August 26, 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.”