To: | PI Ltd. (emorehouse@kviplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88530622 - PILOT - 5101-0011TM |
Sent: | October 29, 2019 02:25:25 PM |
Sent As: | ecom122@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88530622
Mark: PILOT
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Correspondence Address:
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Applicant: PI Ltd.
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Reference/Docket No. 5101-0011TM
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 29, 2019
PRIOR-FILED PENDING 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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is PILOT for “Software platform and software as a services platform for the secure, federated development and deployment of data-science models and highly resilient, scalable, model-driven data pipelines and storing, managing, organizing, and serving data and entity objects.”
Registrants’ marks are:
PILOT for “computer software pertaining to the petrochemical and energy industries, namely, computer operating programs, computer utility programs, and computer software for use in the informatic managing of logistics and in the hand-keeping operations for machines pertaining to the petrochemical and energy industries” in Registration No. 2394501; and
PILOT for “Providing temporary use of non-downloadable computer programs for bookkeeping, for organizing data relating to and servicing receivables and payables, for performing revenue recognition, for tracking income, expenses, and other financial metrics, for creating financial reports and for importing and organizing financial data” in Registration No. 5550048.
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.
Similarity of the Marks
In the present case, applicant’s mark is PILOT and registrants’ marks are PILOT. 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 registrants’ respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Relatedness of the Goods and Services
Applicant’s goods are “Software platform and software as a services platform for the secure, federated development and deployment of data-science models and highly resilient, scalable, model-driven data pipelines and storing, managing, organizing, and serving data and entity objects.”
Registrants’ goods and services are “computer software pertaining to the petrochemical and energy industries, namely, computer operating programs, computer utility programs, and computer software for use in the informatic managing of logistics and in the hand-keeping operations for machines pertaining to the petrochemical and energy industries” and “Providing temporary use of non-downloadable computer programs for bookkeeping, for organizing data relating to and servicing receivables and payables, for performing revenue recognition, for tracking income, expenses, and other financial metrics, for creating financial reports and for importing and organizing financial data.”
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)).
All of the parties offer software for organizing and managing data.
Applicant’s identification is “Software platform and software as a services platform for the secure, federated development and deployment of data-science models and highly resilient, scalable, model-driven data pipelines and storing, managing, organizing, and serving data and entity objects”, which is so broadly worded as to encompass registrant’s more narrow “Providing temporary use of non-downloadable computer programs… for organizing data relating to and servicing receivables and payables…, and for importing and organizing financial data.” Applicant’s “software platforms” encompasses software delivered through any means, including as downloadable, recorded, SaaS and provided online in non-downloadable format. Similarly, applicant’s “Software as a Service platform” encompasses software provided in non-downloadable online format. See the attached evidence from G2 showing that SaaS software is provided online and does not require downloading.
Registrant’s broadly worded “computer software pertaining to the petrochemical and energy industries, namely, computer operating programs, computer utility programs, and computer software for use in the informatic managing of logistics” encompasses applicant’s “Software platform and software as a services platform for the secure, federated development and deployment of data-science models and highly resilient, scalable, model-driven data pipelines and storing, managing, organizing, and serving data and entity objects” because information management (also called data management) entails the organization, management, storage, and access, distribution of data. See the attached evidence from Aiim, PC Encyclopedia, and Smartsheet defining “information management.” Additionally, “data-science models” and “data pipelines” are used in data organization and management. See the attached evidence from Credera and Guru99 showing that data modeling is a process of organizing data and creating databases. See the attached evidence from Dremio shows that data pipelines refer to the management of data, specifically managing how the data is taken from various sources and served to applications for processing or analysis. Registrant’s “computer software” is so broad as to encompass software delivered by any means, including via SaaS.
While each registrant’s software is limited to a particular industry, registrant’s software has no restrictions as to nature, type, channels of trade, or classes of purchasers and is therefore “presumed to travel in the same channels of trade to the same class of purchasers” as registrants’ software. 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 registrant’s 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)).
Conclusion
Due to the similarity of the marks and the relatedness of the goods and services, there is a likelihood of confusion between the applied-for mark and registered marks. Accordingly, registration is refused under Section 2(d) of the Trademark Act.
AMENDED IDENTIFICATION OF GOODS REQUIRED
Further, the wording “software platform” is too broad and could identify goods and/or services in more than one international class. For example, recorded and downloadable software is in International Class 9 and non-downloadable software is in International Class 42.
Additionally, “software as a services platform” is misclassified, as SaaS services are properly classified in International Class 42.
Applicant may substitute the following wording, if accurate (suggestions in bold):
Class 9: ___ {indicate whether downloadable or recorded} software platform for the secure, federated development and deployment of data-science models and highly resilient, scalable, model-driven data pipelines and for storing, managing, organizing, and serving data and entity objects;
Class 35: Database management;
Class 38: Serving data, being the transmission and distribution of data via a global computer network or the Internet;
Class 42: Software as a service (SaaS) services featuring software platforms for the secure, federated development and deployment of data-science models and highly resilient, scalable, model-driven data pipelines and storing, managing, organizing, and for serving data and entity objects; Electronic storage of data.
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.
MULITPLE 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 fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE TO OFFICE ACTION
How to respond. Click to file a response to this nonfinal Office action
/Jillian Michaud-King/
Examining Attorney
Law Office 122
571.272.5153
Jillian.Michaud-King@uspto.gov
RESPONSE GUIDANCE