United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88530235
Mark: GRID
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Correspondence Address: MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND |
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Applicant: GRID ehf
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Reference/Docket No. 056111401T01
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 25, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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). The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
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.
Similarity of the Marks
Applicant’s mark is “GRID” in stylized text with a design element.
The registered marks are: “GRID” in stylized text with a design element (‘834 registration), “GRYD” in standard characters (‘065 registration), “GRIID” in standard characters (‘498 registration), and five marks for “GRID” in standard characters (‘964, ‘411, ‘611, 383, and ‘030 registrations).
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).
In the present case, the literal element of the applied-for mark, “GRID” is identical to the entirety of the marks in the ‘964, ‘411, ‘611, 383, and ‘030 registrations, each of which is “GRID” in standard characters. The literal elements of the 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.
Although the applied-for mark also contains a design element, the wording is dominant because it is the portion of the mark consumers will use when referring to applicant’s goods and services. 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 goods and/or 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). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Similarly, the literal element of the applied-for mark is identical to the literal element of the ‘834 registration. While the marks contain differing design elements, the wording of each mark is dominant because the wording is the portion of the mark consumers will use when referring to the parties’ respective goods and services.
Finally, the dominant literal element of the applied-for mark is the phonetic equivalent of the ‘065 and ‘498 registrations, “GRYD” and “GRIID”, respectively. The marks are essentially phonetic equivalents and thus sound similar. 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).
For the above reasons, the applied-for and registered marks are confusingly similar.
Relatedness of the Goods and/or Services
Applicant’s goods are “computer software” and applicant’s services are “Design and development of computer equipment and computer software.”
In the ‘835 registration, registrant’s goods are: “Downloadable software in the nature of a mobile application for use by homeowners, residents and managers of homeowner and condominium associations to monitor information about residential properties under their control; downloadable software in the nature of a mobile application for use by managers of homeowner and condominium associations to process accounts receivable and accounts payable, report and manage violations of homeowner and condominium association rules, and supervise property maintenance activities.”
In the ‘065 registration, registrant’s goods are: “Computer application software for mobile phones, tablet computers, handheld computers, and desktop computers, namely, software for employees to access career information within their companies.”
In the ‘498 registration, registrant’s goods are: “Downloadable software for creating, sharing, disseminating and posting videos, personal and general information for the purposes of social, personal and professional networking; downloadable software for social and personal networking; downloadable software for displaying and sharing a user's location and personal preferences and finding, locating, and interacting with other users and places.”
In the ‘964 registration, registrant’s goods include: “computer hardware” and a variety of types of computer software for communication and environmental control.
In the ‘411 registration, registrant’s goods are: “Computer software to process and transfer financial investment data.”
In the ‘611 registration, registrant’s goods are computer game software.
In the ’383 registration, registrant’s goods are: “feature of computer programs and pre-recorded sound recordings in the form of unique designations used to identify copyrighted works, for purposes including the allocation and payment of copyright royalties via a global computer network.”
In the ‘030 registration, registrant’s services are: “Entertainment services, namely, providing on-line computer games.”
In this case, the application uses broad wording to describe applicant’s “computer software”, which presumably encompasses all goods and services of the type described, including each registrant’s software goods and services. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s “computer software” and registrants’ software goods and/or 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 services of the parties have no restrictions as to 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 goods and registrant’s goods and/or services are related.
As to applicant’s “Design and development of computer equipment and computer software” and registrants’ software and, in the case of the ‘964 registration, computer hardware, the compared goods and services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Generally, the greater degree of similarity between the applied-for mark and the registered mark, as in this case, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
The attached Internet evidence consists of screenshots from www.agiloft.com, www.bsquare.com, www.compiere.com, and www.lunasoft.com, which provide a representative sampling of third parties that provide computer software products and the services of designing and developing computer software, and screenshots from www.bcmcom.com, www.equuscs.com, and www8.hp.com, which provide a representative sampling of third parties that provide computer hardware such as computers and design and development of computer hardware. This evidence establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark. Thus, applicant’s services and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
In summary, applicant’s and registrants’ marks are confusingly similar in appearance and create a similar overall commercial impression, and their respective goods and/or services are highly related. Therefore, consumers are likely to be confused and mistakenly believe that the goods and/or originate from a common source. Accordingly, registration must be refused under Section 2(d) of the Trademark Act.
Applicant should also note the existence of three prior-filed applications.
PRIOR-FILED APPLICATIONS—ADVISORY
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.
Applicant should note the following additional ground for refusal.
MARK IN U.S. APPLICATION DIFFERS FROM FOREIGN REGISTRATION
In this case, the U.S. drawing displays the mark as a geometric design in light purple and blue to the left of the word “GRID” in purple. However, the foreign registration displays the mark as a geometric design in what appears to be two shades of blue that are different from the blue in the U.S. application to the left of the word “GRID” in dark purple. The mark in the U.S. drawing does not match the mark on the foreign registration because the design element of the foreign registration appears to be in all blue, rather than shades of blue and purple.
Applicant may respond to this issue by satisfying the following:
(1) A new drawing of the mark in the colors that match the mark in the foreign registration.
(2) A request to amend the color claim and description in the U.S. application to match the mark in the foreign registration. See 37 C.F.R. §§2.51(c), 2.52(b)(1); TMEP §§807.07(d)(ii), 1011.01. The description must describe the literal and design elements of the mark and specify where all the colors appear in those elements. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a), 1011.01. Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii).
The following color claim and description are suggested, if accurate:
Color claim: The colors blue and purple are claimed as a feature of the mark.
Description: The mark consists of geometric figures consisting of a curved band over an oval-like shape, all of which are in shades of blue, with the stylized wording “GRID” in purple to the right side.
Alternatively, applicant may request to amend the filing basis to Trademark Act Section 1(a) or 1(b), if applicant can satisfy the requirements for the chosen basis. See 15 U.S.C. §1051(a)-(b); 37 C.F.R. §2.35(b)(1); TMEP §806.03. A Section 1 basis does not require applicant to submit a foreign registration but requires evidence of applicant’s mark in use in commerce. See 15 U.S.C. §1051(a)-(b); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.76(b)(2), 2.88(b)(2); TMEP §904.
For more information about drawings and a color claim and/or description, amending the basis, and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration. However, if applicant responds to the refusals, applicant must also respond to the requirements set forth below.
AMENDMENT TO DESCRIPTION OF MARK REQUIRED
The following description is suggested, if accurate (please note that this description does not account for the matching issue discussed above):
The mark consists of geometric figures consisting of a curved band that is purple on the left and gradually changes to blue on the right over a purple oval-like shape, with the stylized wording “GRID” in purple to the right side.
AMENDMENT TO IDENTIFICATION OF GOODS AND SERVICES REQUIRED
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The following are examples of acceptable identifications in International Class 9: “recorded desktop publishing software” and “downloadable mobile applications for managing bank accounts.” Additionally, the following are acceptable identifications in International Class 41: “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.” Finally, the following are acceptable identifications in International Class 42: “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”
The wording “computer equipment” in the identification of services is indefinite and must be clarified because the nature of the equipment is uncertain. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “computer hardware”.
In summary, applicant may adopt the following amended identification, if accurate (proposed amendments in bold);
Class 9: downloadable computer software for ___________ {applicant must specify purpose, e.g., creating spreadsheets, creating web applications, etc.)
Class 41: providing online non-downloadable computer game software
Class 42: Design and development of computer hardware and computer software; providing temporary use of on-line non-downloadable computer software for ___________ {applicant must specify purpose, e.g., creating spreadsheets, creating web applications, etc.)
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least three classes; however, applicant submitted fees sufficient for only two classes. 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 Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
INFORMATION ABOUT GOODS AND SERVICES REQUIRED
Applicant must respond to the following questions and/or requests for documentation to satisfy this request for information:
See 37 C.F.R. §2.61(b); TMEP §814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
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
Melissa S. Winter
/Melissa S. Winter/
Examining Attorney
Law Office 122
571-272-7913
Melissa.Winter@uspto.gov
RESPONSE GUIDANCE
