To: | FIS Investment Systems LLC (docketing@kelly-ip.com) |
Subject: | U.S. Trademark Application Serial No. 88577936 - RAINMAKER - 120.1323 |
Sent: | November 21, 2019 05:51:09 PM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88577936
Mark: RAINMAKER
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Correspondence Address: DAVID M. KELLY AND LYNN M. JORDAN 1300 19TH STREET, N.W., SUITE 300
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Applicant: FIS Investment Systems LLC
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Reference/Docket No. 120.1323
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 21, 2019
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.
Statutory Refusal
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.
There is a likelihood of confusion because applicant’s mark, RAINMAKER, and registrant’s mark, RAINMAKER (Reg. No. 4001453), are identical and the applicant’s services, namely, “Software-as-a-Service (SaaS) services featuring workflow automation and reporting software for use in investment and asset portfolio management; software-as-a-Service (SaaS) services for use in obtaining news feeds on public market and private equity investments and market data”, are identical and move in the same trade channels as registrant’s goods, namely, “Financial management software for businesses; financial management software for law firms; legal practice management software for managing information and documents; billing software; billing software for law firms; software for editing data for bills”, leading consumers to believe that applicant and registrant are related.
There is a likelihood of confusion because applicant’s mark, RAINMAKER, and registrant’s mark, RAINMAKER (Reg. No. 4846716), are identical and the applicant’s services, namely, “Software-as-a-Service (SaaS) services featuring workflow automation and reporting software for use in investment and asset portfolio management; software-as-a-Service (SaaS) services for use in obtaining news feeds on public market and private equity investments and market data”, are identical and move in the same trade channels as registrant’s services, namely, “Corporate finance services, namely, consultation in the field of asset sales; Corporate finance services, namely, consultation in the field of capital structure; Financial consulting; Financial services, namely, corporate workout, debt restructuring, receivership, and loan resolution for commercial loans; Insurance underwriting services for all types of insurance; Reinsurance underwriting; Strategic corporate financial advisory services”, leading consumers to believe that applicant and registrant are related.
In the present case, applicant’s mark is RAINMAKER and registrants’ marks are RAINMAKER. 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.
Applicant’s provides software to manage and review financial assets and receive news; Rainmaker Software’s goods (Reg. No. 4001453) also provides software that allows financial management of businesses.
Concerning Gabriel Holschneider’s services (Reg. No. 4846716), it should be noted that it offers financial consultation services which overlap with the function of applicant’s software.
Further action awaits response to the above.
How to respond. Click to file a response to this nonfinal Office action
/Raul Cordova/
Examining Attorney
Law Office 114
571-272-9448
Raul.Cordova@uspto.gov
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