To: | VBrick Systems, Inc. (trademarkdocket@venable.com) |
Subject: | U.S. Trademark Application Serial No. 88522411 - REVIQ - 128051507120 |
Sent: | October 08, 2019 05:38:33 PM |
Sent As: | ecom128@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 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88522411
Mark: REVIQ
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Correspondence Address:
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Applicant: VBrick Systems, Inc.
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Reference/Docket No. 128051507120
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: October 08, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In the current case, the applicant seeks registration of the mark REVIQ in standard characters for use in connection with “Providing temporary use of non-downloadable enterprise video streaming software for managing multimedia content, namely, audio and visual content; providing temporary use of non-downloadable software in the form of a web based interface for managing multimedia materials and audio and visual content by others; providing temporary use of non-downloadable enterprise video streaming software and non-downloadable enterprise video streaming software development tools to edit and process multimedia content of others, namely, perform facial recognition, object detection, machine transcription, enhanced searching and AI related capabilities in digital audio and video files” in International Class 42.
The mark in Registration No. 5161504 is REV in standard characters for use in connection with “Research, development, design, upgrading and maintenance of computer software; computer programming services; computer project management services; computer programming consultancy services; cloud computing featuring software for use in data integration and data quality, and consulting related thereto; providing a website that features information on computer software, computer systems, computer programming and cloud computing; providing a website featuring online publications in the field of computer software, computer systems and computer programming; Development, updating and maintenance of data warehouses for use in data integration and data quality; providing temporary use of on-line non-downloadable cloud computing software for collecting, exporting, collaborating, profiling, enriching, verifying, correcting, designing, documenting, monitoring, maintaining and managing performance of applications, databases, data warehouses and data integration; computer compatibility services, namely, data mapping and data integration; providing temporary use of on-line non-downloadable software for translating, transforming, mapping or converting data between file formats” in International Class 42.
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 goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Again, the applied-for mark is REVIQ, whereas the mark in Registration No. 5161504 is REV.
To that end, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
Therefore, when viewed as a whole, the applicant’s mark is substantially similar in commercial impression to the registered mark.
Comparison of the Services.
As noted previously, the application identifies “Providing temporary use of non-downloadable enterprise video streaming software for managing multimedia content, namely, audio and visual content; providing temporary use of non-downloadable software in the form of a web based interface for managing multimedia materials and audio and visual content by others; providing temporary use of non-downloadable enterprise video streaming software and non-downloadable enterprise video streaming software development tools to edit and process multimedia content of others, namely, perform facial recognition, object detection, machine transcription, enhanced searching and AI related capabilities in digital audio and video files.” In turn, the registration identifies “Research, development, design, upgrading and maintenance of computer software; computer programming services; computer project management services; computer programming consultancy services; cloud computing featuring software for use in data integration and data quality, and consulting related thereto; providing a website that features information on computer software, computer systems, computer programming and cloud computing; providing a website featuring online publications in the field of computer software, computer systems and computer programming; Development, updating and maintenance of data warehouses for use in data integration and data quality; providing temporary use of on-line non-downloadable cloud computing software for collecting, exporting, collaborating, profiling, enriching, verifying, correcting, designing, documenting, monitoring, maintaining and managing performance of applications, databases, data warehouses and data integration; computer compatibility services, namely, data mapping and data integration; providing temporary use of on-line non-downloadable software for translating, transforming, mapping or converting data between file formats.”
In relevant part, the application references “Providing temporary use of non-downloadable enterprise video streaming software for managing multimedia content, namely, audio and visual content; providing temporary use of non-downloadable software in the form of a web based interface for managing multimedia materials and audio and visual content by others.” In comparison, the registration identifies “providing temporary use of on-line non-downloadable cloud computing software for collecting, exporting, collaborating, profiling, enriching, verifying, correcting, designing, documenting, monitoring, maintaining and managing performance of applications, databases, data warehouses and data integration.”
Because the applicant’s and registrant’s marks are similar and their services related, it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the parties’ respective services. Accordingly, the applicant’s mark creates a likelihood of confusion with the registered mark, and registration is properly refused pursuant to Section 2(d) of the Trademark Act.
BASIS FOR APPLICATION REQUIRED
An applicant may add one or more of the following four bases to an application after filing:
(1) Use of the mark in commerce under Trademark Act Section 1(a);
(2) A bona fide intention to use the mark in commerce under Section 1(b);
(3) A foreign registration of the same mark for the same goods and/or services in an applicant’s country of origin, under Section 44(e); and/or
(4) A claim of priority based on an earlier-filed foreign application of the same mark for the same goods and/or services, which is filed within six months after the filing date of the foreign application, under Section 44(d).
Although an applicant may assert more than one basis, an applicant may not assert both Section 1(a) for use and Section 1(b) for intent to use for identical goods and/or 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.
UNSIGNED APPLICATION – VERIFICATION REQUIRED
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 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; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). 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 form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
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
/Jeffrey Oakes/
Jeffrey Oakes
Trademark Examining Attorney
U.S. Patent and Trademark Office
(571) 272-8653
Jeffrey.Oakes@uspto.gov
RESPONSE GUIDANCE