To: | Blackbox Inc. (trademarkdocket@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88603553 - BLACKBOX - N/A |
Sent: | December 11, 2019 06:34:41 PM |
Sent As: | ecom121@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 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88603553
Mark: BLACKBOX
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Correspondence Address:
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Applicant: Blackbox Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: December 11, 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.
PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS REFUSAL PERTAINS ONLY TO THE SERVICES DISCUSSED HEREIN.
Applicant’s mark is BLACKBOX presented in special form with a design of a key forming the letter “B”, for use with the following applied-for services related to this refusal:
Class 038: Communicating with sensing devices, namely, wireless broadband communication services using RFID sensors, SONAR devices, RADAR devices, infrared cameras, microphones, stereoscopic cameras, light sensors and pressure sensors, controlling lights, motors, set pieces, cameras, projectors, monitors, sensing devices and also using media servers according to user-selected parameters;
Class 042: platform as a service (PAAS) featuring computer software platforms for use in the field of financial services for trading derivatives; technical support services in the form of troubleshooting of computer hardware and software problems; consultancy in the field of software design; Internet-based application service provider, namely, hosting, managing, developing, analyzing, and maintaining the code, applications, and software for web sites of others;
Class 045: Regulatory compliance consulting in the field of licensed reproduction of brands and trademarks; Trademark watch services
The registered marks are as follows:
· U.S. Reg. No. 4457230 BLACKBOX presented in standard character form, for use with the following goods related to this refusal:
Class 009: software for communicating with sensing devices, namely, RFID sensors, SONAR devices, RADAR devices, infrared cameras, microphones, stereoscopic cameras, light sensors and pressure sensors, and controlling lights, motors, set pieces, cameras, projectors, monitors, sensing devices, pyrotechnics and media servers according to user-selected parameters;
· U.S. Reg. No. 4580743 BLACK BOX presented in standard character form, for use with the following services related to this refusal:
Class 036: financial advice and consultancy services;
Class 045: legal services, including, legal risk analysis and assessment, case resolution management, and case evaluation; litigation services, including, providing customized legal information;
· U.S. Reg. No. 4602523 WNS BLACKBOX presented in standard character form, for use with the following services related to this refusal:
Class 042: design and development of computer software for converting manual instructions to electronic format
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.
Further, 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).
Comparison of Marks
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).
Here, applicant’s mark is BLACKBOX presented in special form with the letter “B” formed by a key, and the registered marks are BLACKBOX, BLACK BOX and WNS BLACKBOX all presented in standard character form.
In this case, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Here, applicant’s literal element BLACKBOX is identical to registrant’s mark BLACKBOX (U.S. Reg. No. 4457230) and virtually identical to BLACK BOX (U.S. Reg. No. 4580743) due to the slight difference of a space appearing between the terms. These marks are virtually 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 virtually identical (literal elements), these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id. Therefore, the marks are confusingly similar.
Similarly, registrant’s mark WNS BLACKBOX shares the identical term BLACKBOX to applicant’s entire literal element. 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).
Further, all of the registered marks appear in standard character form, which may be depicted in any stylization including that similar to applicant’s mark. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Accordingly, applicant’s BLACKBOX mark and the registered BLACKBOX, BLACK BOX, and WNS BLACKBOX marks are highly similar for purposes of determining likelihood of confusion under Section 2(d) of the Trademark Act.
Comparison of Goods/Services
First, U.S. Reg. No. 4457230 BLACKBOX, goods of “software for communicating with sensing devices, namely, RFID sensors, SONAR devices, RADAR devices, infrared cameras, microphones, stereoscopic cameras, light sensors and pressure sensors, and controlling lights, motors, set pieces, cameras, projectors, monitors, sensing devices, pyrotechnics and media servers according to user-selected parameters” performs the identical function as registrant’s services of “Communicating with sensing devices, namely, wireless broadband communication services using RFID sensors, SONAR devices, RADAR devices, infrared cameras, microphones, stereoscopic cameras, light sensors and pressure sensors, controlling lights, motors, set pieces, cameras, projectors, monitors, sensing devices and also using media servers according to user-selected parameters” in Class 038, thus, the goods and services perform the same function with the same devices and are virtually identical except for the medium of applicant’s conducting the service for consumers and registrant’s being the software that consumers use to perform the same functions.
Similarly, applicant’s and registrant’s services are encompassed by one another, as discussed herein. 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).
Specifically, the application use(s) broad wording to describe “consultancy in the field of software design” “Internet-based application service provider, namely, hosting, managing, developing, analyzing, and maintaining the code, applications, and software for web sites of others” and related “technical support services in the form of troubleshooting computer hardware and software problems”, which presumably encompasses all services of the type described, including registrant(s)’s U.S. Reg. No. 4602523 WNS BLACKBOX more narrow applicant’s services of “design and development of computer software for converting manual instructions to electronic format” (emphasis added). Indeed, both registrant and applicant provide development of creating of software for others; however, registrant’s more narrow purpose of doing so for conversion of manuals is encompassed by applicant’s services. 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 goods and/or 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.
Likewise, regarding U.S. Reg. No. 4580743 BLACK BOX, registrant’s services at issue consist of “financial advice and consultancy” in Class 036 and “legal services, including, legal risk analysis and assessment, case resolution management, and case evaluation; litigation services, including, providing customized legal information” in Class 045. Applicant’s related services are “platform as a service (PAAS) featuring computer software platforms for use in the field of financial services for trading derivatives” in Class 042 and “Regulatory compliance consulting in the field of licensed reproduction of brands and trademarks; Trademark watch services” in Class 045. Indeed, in this case registrant’s broad financial services and legal services encompass and perform the same function as applicant’s PAAS which performs financial services for trading derivatives and also encompasses registrant’s trademark and brand legal/regulatory services.
Accordingly, applicant’s and registrants’ services are related for purposes of determining likelihood of confusion under Section 2(d) of the Trademark Act.
If applicant responds to this issue, applicant must also respond to the issue(s) discussed below.
PRIOR-FILED APPLICATIONS – POTENTIALLY CONFLICTING MARKS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
MARK DESCRIPTION – AMENDMENT REQUIRED
The following description is suggested, if accurate:
The mark consists of the stylized wording "BLACKBOX." The upper left portion of the first letter "B" is formed the design of a key
If applicant responds to this issue, applicant must also respond to the issue(s) discussed below.
PARTIAL IDENTIFICATION OF GOODS – AMENDMENT REQUIRED
THIS REQUIREMENT PERTAINS ONLY TO GOODS SPECIFIED HEREIN.
The goods of “downloadable metronome software applications” in the applied-for Class 009 of the identification of goods is indefinite and must be clarified because it is unclear the function of the software e.g., if the software is used in electronic metronomes to operate the metronomes or if the software is mobile software that functions/acts like a metronome. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
Class 009: Downloadable mobile software applications for use as a metronome; downloadable computer software for controlling and managing access server applications; downloadable computer application software for mobile phones, namely, downloadable software for identifying the owner of personal items using a unique assigned number; downloadable software in the nature of a mobile application for identifying the owner of personal items using a unique assigned number for use in database management and electronic storage of data; downloadable decoder software; computer software, namely, downloadable software development tools for the creation of mobile internet applications and client interface
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.
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.
/Courtney M. Caliendo/
Courtney M. Caliendo
Trademark Examining Attorney
Law Office 121 - USPTO
Courtney.Caliendo@uspto.gov
571-270-1871
RESPONSE GUIDANCE