United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88553762
Mark: DELL EMC POWERFLEX
|
|
Correspondence Address: |
|
Applicant: Dell Inc.
|
|
Reference/Docket No. 13279
Correspondence Email Address: |
|
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 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.
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). 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 has applied for the mark DELL EMC POWERFLEX in standard characters for use with “computer operating system software for data storage systems; software-defined storage” in Class 9 and “software as a service for operating data storage systems” in Class 42.
Registrant’s mark is POWERFLEX in standard characters for use with “computer hardware; electronic components for computers; blank storage apparatus for computer data; blank sound cards; blank memory storage devices; computer memory hardware; ram cards; motherboards; power units; power modules; wireless computer mice; wireless computer peripherals; pairable wireless speakers; computer keyboards; input devices for computers; camera stands; video camera stands; charging apparatus; battery charging equipment; USB hardware; USB cables; USB flash drives; devices for hands-free use of mobile phones; screen protectors for mobile phones; protective covers and cases for mobile phones; headsets for use with computers; sleeves for laptops; handheld personal computers; personal home computers; computerized personal organizers; smartphones in the shape of a watch; batteries; lithium batteries; solar battery chargers; solar batteries; rechargeable batteries; mobile phone stands; DVD players and recorders; digital cameras; compact digital cameras; USB chargers; power connectors; high definition multimedia interface cables; car audio apparatus, namely, in-car compact disc players, in-car radios, in-car media players, in-car loudspeakers, in-car amplifiers, in-car navigation equipment; camera mounts; tablet holders adapted for use in cars; in-car telephone handset cradles; audio cable connectors; ac chargers; charging cables; charging docks; external battery packs; external storage devices, namely, external computer hard drives; audio equipment, namely, amplifiers, vinyl record players, turntables, graphic equalizers, compact disc players, digital media players, microphones; portable media players; headphones; loudspeakers; loudspeaker stands; parts and fittings for all aforesaid goods; all of the aforementioned products for use with personal computers, tablet computers for personal use, and other personal electronic and mobile communications devices, and not for operational monitoring, regulation, and control of electric motors” in Class 9.
Similarity of the Marks
The applicant’s mark is confusingly similar to the registrant’s mark. 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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Incorporating the entirety of one mark, here registrant’s POWERFLEX 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). Further, the literal elements in applicant’s mark which are not in common with registrant’s mark, DELL EMC, is akin to a house mark as this is informational matter about the provider of the goods and services. See attached Wikipedia page about DELL EMC being a multinational corporation selling computer related goods and services such as data storage, information security, and cloud computing. Thus, the informational matter of DELL EMC does not obviate the similarity between the marks. This, therefore, makes POWERFLEX the dominant portion of both marks. In the present case, the marks are identical in part sharing identical dominant portions.
Therefore, the marks are confusingly similar.
Relatedness of the Goods and Services
In this case, the registration uses broad wording to describe “computer hardware,” “electronic components for computers,” “blank storage apparatus for computer data,” “blank memory storage devices,” and “computer memory hardware,” which is related to applicant’s “computer operating system software for data storage systems; software-defined storage” in Class 9 and “software as a service for operating data storage systems” in Class 42. 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).
Computer hardware “includes the physical, tangible parts or components of a computer, such as the cabinet, central processing unit, monitor, keyboard, computer data storage, graphics card, sound card, speakers and motherboard.” It is important to note that “hardware is typically directed by the software to execute any command or instruction. A combination of hardware and software forms a usable computing system, although other systems exist with only hardware components.” See the attached excerpt from Wikipedia.
Operating system or “OS” is “software installed on a computer's hard drive that enables computer hardware to communicate with and run computer programs.” “Without a computer operating system, a computer and software programs would be useless.” See attached excerpt from Computer Hope.
As the attached evidence demonstrates “computer operating system software,” like applicant’s, is a necessity to properly use “computer hardware,” like the registrant’s. Further, it is noted that applicant uses each of the following marks on both computer hardware and computer software, DELL EMC and DELL EMC POWERONE. See attached applications. Thus, applicant and registrant’s goods and services are closely related. 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
Since applicant’s mark is confusingly similar to registrant’s mark and the goods and services are related, there is a likelihood of confusion as to the source of applicant’s goods and services. Therefore, applicant’s mark is refused registration pursuant to §2(d) of the Trademark Act.
However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.
REQUIREMENT - IDENTIFICATION OF GOODS AND SERVICES
The identification of goods and services is indefinite and must be clarified because the nature of the goods and services is unclear and it can identify goods and services in more than one Class. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, “software” classified in Class 9 must specify that it is downloadable or recorded since non-downloadable software is properly classified in Class 42. Finally, in Class 42, “software as a service (SAAS)” must specify that it is services, i.e. that the software as a service (SAAS) is services being provided for the benefit of others and must specify the field or function of the software as a service (SAAS).
Suggested Amendments
Below is a suggested identification and classification. Bolded words represent wording that has been added or changed.
Applicant may substitute the following wording, if accurate:
Class 9:
Downloadable computer operating system software for data storage systems; downloadable or recorded computer software in the nature of software-defined storage (SDS)
Class 42:
Software as a service (SAAS) services featuring software for operating data storage systems
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.
ASSISTANCE
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
/Sean O'Tormey/
Sean O'Tormey
Examining Attorney
Law Office 111
(571) 272-3081
sean.otormey@uspto.gov
RESPONSE GUIDANCE