Suspension Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  March 01, 2020

 

 

The application is suspended for the reason(s) specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

Action on this application is SUSPENDED pending the disposition of the previously referenced potentially-conflicting pending application(s).  37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).

 

Applicant was previously provided information regarding pending U.S. Application Serial No(s). 88378484 (RAPIDS) and 88378485 (NVIDIA RAPIDS), which may present a bar to registration of applicant’s mark based on a likelihood of confusion under Trademark Act Section 2(d).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  In response, applicant argued that the marks in the pending applications are not likely to cause confusion with applicant’s mark.  Specifically, applicant argued that applicant’s applied-for services are in a separate class and are different than those in the prior pending applications, that the channels of trade are dissimilar, that the stylization in the applied-for mark is distinguishing, that the marks are dissimilar due to additional wording (with respect to Serial No. 88378485 for NVIDIA RAPIDS), and that the purchasers of applicant’s services are sophisticated and undertake a careful purchasing process.

 

With respect to applicant’s argument that applicant’s applied-for services are in a separate class and are different than those in the prior pending applications, as a threshold matter, both the application and the prior pending application incorporate software services in International Class 42.  Software development services are related to SAAS services in that the same entities may provide both software development services and the end-product software itself.  Additionally, the functions and features of the software set forth in the pending applications may be complementary to, related to, or similar to the functions of the software set forth in applicant’s application.  Further, the fact that the Office classifies goods or services in different classes does not establish that the goods and services are unrelated under Trademark Act Section 2(d).  See TMEP §1207.01(d)(v).  The determination concerning the proper classification of goods or services is a purely administrative determination unrelated to the determination of likelihood of confusion.  In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (citing Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993)). 

 

With respect to applicant’s argument that the channels of trade are dissimilar, there are no limitations on the goods and services in the pending applications.  In the absence of limitations as to channels of trade or classes of purchasers in the goods and/or services in the registration, the presumption is that the goods and/or services move in all trade channels normal for such goods and/or services and are available to all potential classes of ordinary consumers of such goods and/or services.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii).

 

Applicant’s mark in stylized form, and does not contain design elements.  With respect to applicant’s argument that the stylization in the mark is distinguishing, the stylization does not create a commercial impression separate and apart from the impression made by the wording itself.  The stylization is not sufficiently striking, unique, or distinctive as to make an impression on purchasers separate from the wording.  Further, the pending marks are in standard characters.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

With respect to applicant’s argument with respect to Serial No. 88378485 (NVIDIA RAPIDS) that the marks are dissimilar due to additional wording, incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

With respect to applicant’s argument that the purchasers of applicant’s services are sophisticated and undertake a careful purchasing process, The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).  Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser.  In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).

 

The trademark examining attorney has found applicant’s arguments unpersuasive and still believes there may be a likelihood of confusion between applicant’s mark and the marks in the cited prior-pending applications, should they register.  Thus, this application is suspended.

 

Requirement resolved.  The following requirement is satisfied:  identification of services.  See TMEP §713.02.

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

/Alina Morris/

Examining Attorney, Law Office 117

United States Patent and Trademark Office

571-272-2256

alina.morris@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 01, 2020 for

U.S. Trademark Application Serial No. 88523919

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/Alina Morris/

Examining Attorney, Law Office 117

United States Patent and Trademark Office

571-272-2256

alina.morris@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).

 

 

 

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.”