To: | Smart Score Technologies, LLC (docket@techlawventures.com) |
Subject: | U.S. Trademark Application Serial No. 88577232 - SMARTSCORE - SST-0003TM09 |
Sent: | November 15, 2019 10:27:38 AM |
Sent As: | ecom114@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88577232
Mark: SMARTSCORE
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Correspondence Address:
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Applicant: Smart Score Technologies, LLC
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Reference/Docket No. SST-0003TM09
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 15, 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.
Summary of Issues:
A. Refusal—Likelihood Of Confusion
B. Indefinite Identification of Goods
A. Refusal—Likelihood Of Confusion
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
The applicant applied to register SMARTSCORE for “Downloadable software; Downloadable software for tracking analytics and metrics; Downloadable software in the field of mental health and well-being; Downloadable software for use in tracking analytics and metrics in the field of mental health and well-being; Downloadable software for tracking analytics and metrics relating to confidence, energy, mood, self-esteem, stress, eating habits, physical activity, sleep, socialization, and planned activities.”
The registered marks are:
SMARTSCORE NOTEREADER for “Computer application software for mobile phones, portable media players, tablets, and portable computers, namely, software for optical scanning, recognizing and playback of printed music;”
SMARTSCORE NOTEREADER for “Computer application software for mobile phones, portable media players, tablets, and portable computers, namely, software for optical scanning, recognizing and playback of printed music;”
SMARTSCORE for “Medical software for reviewing, analyzing and monitoring images obtained from CT scanners;”
SMARTSCORE for “Computer programs for audio and optical scanning, recognizing, performing, recording, transposing, and editing musical scores, musical notes, and sheet music;” and
SMARTSCORE for “computer [hardware and] software for collecting, managing and reporting data regarding process equipment leaks.”
In this case, both the registered marks and the applied-for mark contain the term SMARTSCORE. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
The applicant’s goods include “Downloadable software.” This identification is broad enough to include all the software functions described above. Thus, the goods must be considered related.
B. Indefinite Identification of Goods
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).
Applicant may adopt the following wording, if accurate:
Class 9
Downloadable software for [specify function of the software and its content or field of use]; Downloadable software for tracking analytics and metrics in the field of [specify field]; Downloadable software in the field of mental health and well-being for [provide specific functions of the software]; Downloadable software for use in tracking analytics and metrics in the field of mental health and well-being; Downloadable software for tracking analytics and metrics relating to confidence, energy, mood, self-esteem, stress, eating habits, physical activity, sleep, socialization, and planned activities
In the alternative, the applicant may simplify the identification to read:
Downloadable software for use in tracking analytics and metrics in the field of mental health and well-being; Downloadable software for tracking analytics and metrics relating to confidence, energy, mood, self-esteem, stress, eating habits, physical activity, sleep, socialization, and planned activities
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.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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
Brian Neville /bn/
Trademark Examining Attorney
Law Office 114
(571) 272-9203
Brian.neville@uspto.gov
RESPONSE GUIDANCE