To: | uConnect, Inc. (ustrademark@foleyhoag.com) |
Subject: | U.S. Trademark Application Serial No. 88549218 - UCONNECT - 30279.00003 |
Sent: | November 01, 2019 02:20:27 PM |
Sent As: | ecom103@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88549218
Mark: UCONNECT
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Correspondence Address:
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Applicant: uConnect, Inc.
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Reference/Docket No. 30279.00003
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: November 01, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue 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 – Partial Refusal
The Section 2(d) refusal is limited to the following clauses: “Software as a service (SAAS) services featuring software for educational institutions for providing…marketing and analytics in the fields of career services, student affairs, student employment and career outcomes, for optimizing educational institution websites to maximize student admissions and student engagement by promoting career services, experiential learning and student development”.
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.
Applicant’s mark is UCONNECT for in relevant part, “Software as a service (SAAS) services featuring software for educational institutions for providing…marketing and analytics in the fields of career services, student affairs, student employment and career outcomes, for optimizing educational institution websites to maximize student admissions and student engagement by promoting career services, experiential learning and student development.”
Registrant’s mark is UCONNECT for “Providing a non-downloadable computer software platform for analyzing consumer data for marketing program strategy development; providing a non-downloadable computer software platform for managing the promotion of goods of others through the administration of digital incentives; providing a non-downloadable computer software platform for managing the promotion of services of others through the administration of digital incentives; providing a non-downloadable computer software platform for administering client-customized, interactive incentive programs; providing a non-downloadable computer software platform for analyzing data to determine consumer product brand loyalty; providing a non-downloadable computer software platform for managing the promotion of goods of others through administration of consumer-personalized incentives; providing a non-downloadable computer software platform for managing the promotion of services of others through the administration of consumer-personalized incentives; all of the foregoing excluding motor vehicles and in-vehicle communications systems.”
Similarity of Marks
In the present case, applicant’s mark is UCONNECT and registrant’s mark is UCONNECT. 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 registrant’s respective services. Id.
Therefore, the marks are confusingly similar.
Relatedness of Services
Applicant’s services are, in relevant part, “Software as a service (SAAS) services featuring software for educational institutions for providing…marketing and analytics in the fields of career services, student affairs, student employment and career outcomes, for optimizing educational institution websites to maximize student admissions and student engagement by promoting career services, experiential learning and student development.”
Registrant’s services are “Providing a non-downloadable computer software platform for analyzing consumer data for marketing program strategy development; providing a non-downloadable computer software platform for managing the promotion of goods of others through the administration of digital incentives; providing a non-downloadable computer software platform for managing the promotion of services of others through the administration of digital incentives; providing a non-downloadable computer software platform for administering client-customized, interactive incentive programs; providing a non-downloadable computer software platform for analyzing data to determine consumer product brand loyalty; providing a non-downloadable computer software platform for managing the promotion of goods of others through administration of consumer-personalized incentives; providing a non-downloadable computer software platform for managing the promotion of services of others through the administration of consumer-personalized incentives; all of the foregoing excluding motor vehicles and in-vehicle communications systems.”
In this case, the registration uses broad wording to describe “Providing a non-downloadable computer software platform for analyzing consumer data for marketing program strategy development”, which presumably encompasses all services of the type described, including applicant’s more narrow software for providing marketing and analytics. Similarly, the registrant uses broad wording to describe “providing a non-downloadable computer software platform for managing the promotion of services of others through the administration of digital incentives; providing a non-downloadable computer software platform for managing the promotion of services of others through the administration of consumer-personalized incentives” which presumably encompasses all services of the type described, including applicant’s more narrow software for promoting the career services, experiential learning, and student development services of others. 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 and registrant’s 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 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)). Thus, applicant’s and registrant’s goods and/or services are related.
In total, the marks are confusingly similar and the services are encompassing and therefore legally identical. As such, consumers are likely to be confused and mistakenly believe that the services come from a common source. Accordingly, registration is refused under Section 2(d) of the Trademark Act because of a likelihood of confusion with the cited registration.
Failure to Respond Will Result in Partial Abandonment of Application – Advisory
Response Guidelines
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
/Heather Schubert/
Heather Schubert
Trademark Examining Attorney
Law Office 103
571-272-5484
heather.schubert@uspto.gov
RESPONSE GUIDANCE