Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

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 18, 2019

 

SUMMARY OF ISSUES:

• Likelihood of confusion refusal—partial
• Identification of goods/services

 

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.

 

THE FOLLOWING PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5152548.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

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.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

The applicant’s mark is MANTL for various goods and services including “computer software for use in . . .  storage and sharing of data and information” in class 9.  The registrant’s mark is MANTLE for “software for providing an open-source web based repository and platform for storing, cleaning, joining, and sharing data.”

 

The marks are similar in this case.  The only difference between the two marks is the deletion of the E from the end of MANTLE in the applicant’s mark.  However, this does not change the overall commercial impression of the marks.  The marks are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

The software are related in this case.  In a likelihood of confusion analysis, the comparison of the parties’ goods and/or services is based on the goods and/or services as they are identified in the application and registration, without limitations or restrictions that are not reflected therein.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); see Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638-39 (TTAB 2009); TMEP §1207.01(a)(iii). 

 

In this case, the identification set forth in the cited registration uses broad wording to describe registrant’s services and does not contain any limitations as to nature, type, channels of trade or classes of purchasers.  Therefore, it is presumed that the registration encompasses all goods and/or services of the type described, including those in applicant’s more specific identification, that the goods and/or services move in all normal channels of trade, and that they are available to all potential customers.  See Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); TMEP §1207.01(a)(iii).  The registrant’s software for storing and sharing data may encompass or be the same software as the applicant’s software for storing and sharing data and information.

 

The goods/services travel in the same channels of trade.  Or, the conditions surrounding their marketing may be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods/services come from a common source.

 

The similarities among the marks and the goods/services of the parties are so great as to create a likelihood of confusion.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

OPTION TO OVERCOME REFUSAL

 

The stated refusal refers to the following goods and does not bar registration for the other goods and/or services:  “Computer software for use in . . . storage and sharing of data and information.”

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the goods to which the refusal pertains;

 

(2)  Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).

 

INFORMALITIES

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

THE FOLLOWING PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

IDENTIFICATION OF GOODS/SERVICES

 

Some of the identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods/services.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

The identification for software in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).

 

For easier reference, the goods requiring amendment and the suggested amendments are shown in bold and italics.

 

Applicant may adopt the following wording, if accurate: 

 

(Recorded or downloadable ) computer software for use in database management, data processing, creating searchable databases of information and data, storage and sharing of data and information, transaction processing, document imaging and document management, online banking, financial management applications, namely, asset/liability management, risk management, financial analysis and financial planning, for banks, credit unions, insurance companies, thrift financial institutions and brokerage firms; (Recorded or downloadable ) computer software for use by financial institutions to monitor payments made to financial institution customers for deposit to identify possible irregularities in such payments; (Recorded or downloadable ) computer software for banks, credit unions, insurance companies, thrift financial institutions and brokerage firms for use in processing teller transactions, loan transactions and general ledger accounting; (Recorded or downloadable ) computer software licensed to banks, credit unions, insurance companies, thrift financial institutions and brokerage firms to provide online banking transactions and electronic bill paying functionality to commercial customers; (Recorded or downloadable ) computer software for banks, credit unions, insurance companies, thrift financial institutions and brokerage firms with the functionality to generate financial reports, budgets, interest rate risk analysis, forecast balance sheets and income statements, and spreadsheet analysis; (Recorded or downloadable ) computer software for use by banks, credit unions, insurance companies, thrift financial institutions and brokerage firms for loan and deposit pricing analysis, in international class 9;

 

Software as a service (SaaS), namely computer software for financial institutions, including banks, credit unions, insurance companies, thrift financial institutions and brokerage firms to grow deposits and streamline back office tasks; Software as a service (SaaS), namely, computer software that distributes data processing software tools to banks, credit unions, insurance companies, thrift financial institutions, brokerage firms and other financial service companies; Software as a service (SaaS) services, namely, hosting software for use by banks, credit unions, insurance companies, thrift financial institutions, brokerage firms and other financial service companies to monitor payments made to customers for deposit to identify possible irregularities in such payments; Software as a service (SaaS) services, namely, hosting software for use by banks, credit unions, insurance companies, thrift financial institutions, brokerage firms and other financial service companies for loan and deposit pricing analysis, in international class 42.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

ABANDONMENT FOR FAILURE TO RESPOND ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the following goods in International Class(es) 9 will be deleted from the application: 

 

Computer software for use in database management, data processing, creating searchable databases of information and data, storage and sharing of data and information, transaction processing, document imaging and document management, online banking, financial management applications, namely, asset/liability management, risk management, financial analysis and financial planning, for banks, credit unions, insurance companies, thrift financial institutions and brokerage firms; Computer software for use by financial institutions to monitor payments made to financial institution customers for deposit to identify possible irregularities in such payments; Computer software for banks, credit unions, insurance companies, thrift financial institutions and brokerage firms for use in processing teller transactions, loan transactions and general ledger accounting; Computer software licensed to banks, credit unions, insurance companies, thrift financial institutions and brokerage firms to provide online banking transactions and electronic bill paying functionality to commercial customers; Computer software for banks, credit unions, insurance companies, thrift financial institutions and brokerage firms with the functionality to generate financial reports, budgets, interest rate risk analysis, forecast balance sheets and income statements, and spreadsheet analysis; Computer software for use by banks, credit unions, insurance companies, thrift financial institutions and brokerage firms for loan and deposit pricing analysis.  

 

The application will then proceed with the following services in International Class(es) 42 only: 

 

Software as a service (SaaS), namely computer software for financial institutions, including banks, credit unions, insurance companies, thrift financial institutions and brokerage firms to grow deposits and streamline back office tasks; Software as a service (SaaS), namely, computer software that distributes data processing software tools to banks, credit unions, insurance companies, thrift financial institutions, brokerage firms and other financial service companies; Software as a service (SaaS) services, namely, hosting software for use by banks, credit unions, insurance companies, thrift financial institutions, brokerage firms and other financial service companies to monitor payments made to customers for deposit to identify possible irregularities in such payments; Software as a service (SaaS) services, namely, hosting software for use by banks, credit unions, insurance companies, thrift financial institutions, brokerage firms and other financial service companies for loan and deposit pricing analysis.

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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  

 

 

 

/Alex Seong Keam/

Attorney-Advisor

United States Patent and Trademark Office

Law Office 114

Phone: 571-272-9176

Email: alex.keam@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 18, 2019 for

U.S. Trademark Application Serial No. 88593029

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Alex Seong Keam/

Attorney-Advisor

United States Patent and Trademark Office

Law Office 114

Phone: 571-272-9176

Email: alex.keam@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 18, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”