To: | Metispro Corp. (vkaushik@metispro.com) |
Subject: | U.S. Trademark Application Serial No. 88618020 - QUANTIC - N/A |
Sent: | December 30, 2019 09:38:56 AM |
Sent As: | ecom105@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 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88618020
Mark: QUANTIC
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Correspondence Address:
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Applicant: Metispro Corp.
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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 30, 2019
REFUSAL UNDER SECTION 2(d) – LIKELIHOOD OF CONFUSION
- Reg. No. 3825215 – QUANTIC
- Reg. No. 4637476 – QUANTICA
- Reg. No. 4754012 – QUANTEC GEOSCIENCE
- Reg. No. 4797533 – Q QUANTEC GEOSCIENCE
- Reg. No. 5011280 – QUANTICMIND
- Reg. No. 5084114 – QUANTEC
- Reg. No. 5142531 – PARQUANTIX
- Reg. No. 5223295 – QUANTECON
- Reg. No. 5239055 – QUANTEX
- Reg. No. 5322605 – QUANTIX
- Reg. No. 5876848 – QUENTIC
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). In the seminal decision In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all the factors are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
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.
Similarity of the Marks
The respective marks are substantially similar in appearance, sound and meaning.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v). Similarity in any one of these elements may be sufficient to find the marks 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).
In the instant case, both applicant’s and registrants’ marks begin with the same dominant syllable beginning with “QUA”- or “QUE”.
Here, the applicant’s mark is incorporated in Reg. Nos. 4637476 and 5011280; therefore, the marks are identical in part.
Generally, slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).
Consequently, applicant’s mark and registrants’ marks are similar in sound, appearance, and meaning.
Relatedness of the Goods/Services
Applicant’s mark is for “Mobile software application to download on the phone or tablet devices” in International Class 9.
The relevant identifications in registrants’ marks include the following goods/services:
Reg. No. 3825215 |
Cl. 42: Software outsourcing services excluding services for engineering and scientific applications, namely, computer software consulting, computer software design for others, computer software development and computer programming development for others, installation, maintenance and repair of computer software, and technical support services, namely, troubleshooting of computer software problems |
Reg. No. 4637476 |
Cl. 9: computer software for use in the quantification of biological molecules; |
Reg. No. 4754012 |
Cl. 9: computer software for inverting and interpreting waveform data in the field of geophysical exploration, mineral exploration, geothermal exploration, oil and gas exploration for creating survey reports, maps and charts |
Reg. No. 4797533 |
Cl. 9: computer software for inverting and interpreting waveform data in the field of geophysical exploration, mineral exploration, geothermal exploration, oil and gas exploration for creating survey reports, maps and charts |
Reg. No. 5011280 |
Cl. 42: Software as a service (SAAS) services featuring advertising management software for campaign management, optimization, and reporting in the field of search engine marketing; Computer services, namely, providing temporary use of an online, non-downloadable software interface for online advertisers to use in optimizing, managing, automating, measuring, reporting, tracking and monitoring advertising, marketing and promotions conducted on the Internet, in search engines, mobile ads, paid search ads, display ads and social networking website ads; providing computer services in the field of web analytics, namely, providing on-demand software for the purpose of collecting, analyzing, editing, organizing, modifying, reporting, storing, and sharing of information related to website traffic, e-commerce transactions, and marketing campaigns conducted via the internet for purposes of marketing and advertising; Providing on-demand software in the field of advertising and marketing for the purpose of providing measurement, collection, analysis and reporting of internet data for purposes of understanding and optimizing web site usage; computer services, namely, providing on-demand software in the field of web analytics to host applications that collect, manage, integrate, analyze, monitor, and track web user behavior; computer services, namely, providing page tagging services utilizing temporary use of online non-downloadable computer language processors and interpreters to pass along with the request for an image from a web page certain information about the page and the visitor and processing such information remotely and generating statistics related thereto; Information technology consultation in the fields of web analytics and online marketing; computer services, namely, page tagging services utilizing technology that collects demographic and profile data about website visitors in business to business and business to consumer environments and processes it into information that can be used to identify potential customers; Providing on-demand software for use in collecting demographic and profile data about website visitors in business to business and business to consumer environments and processing it into information that can be used to identify potential customers through web analytics; Providing on-demand software for use in building real time behavioral profiles of website users based on actual visit and browsing history of previous visits and predicting which information will personalize the web experience of web users; computer services, namely, page tagging services utilizing technology that collects data on website visitors in business to business and business to consumer environments and converts it into data on specific website information for particular visitors; Website analytics and maintenance, namely, providing on-demand software for use in collection of data on website visitors in business to business and business to consumer environments and converting it into data on specific website information for particular visitors; Providing web analytics tools in the nature of non-downloadable software and web analytics reports to clients for building real time behavioral profiles of website users based on actual visit and browsing history of previous visits and predicting which information will personalize the web experience of web users; and providing non-downloadable software for customizing a client's website so that it can record and collect web browser data and information on the history of activities of a website user on said website, so that the client's website can feature information tailored to that website user when the website user again visits the website; Providing a website that features technology in the nature of online, non-downloadable software which assists and enables marketing professionals to customize and deliver targeted marketing content to website users and allows marketers to customize the content of their websites based on data gathered about web browsers on the site, and offers tools to show targeted offers or announcements, and launch one-to-one interactions on a website; Digital advertising technology provider featuring software and services to enable the distribution of digital and video advertising through an electronic media, specifically the Internet, wireless networks, and mobile and portable devices; namely, providing temporary use of an online, non-downloadable Internet software platform for use in creating and transmitting via the Internet messages and advertisements, in connection with digital advertising campaign management services; online non-downloadable software that analyzes the meaning of website content in order to optimize and provide targeted advertising to consumers while protecting advertiser brands in real-time; Providing temporary use of non-downloadable advertising management software for distributing and managing advertising campaigns of others across websites on the internet; Providing temporary use of non-downloadable advertising management software for distributing and managing click-to-call advertising tracked on telephone networks; Providing temporary use of non-downloadable advertising management software for distributing and managing offline advertising; Providing temporary use of non-downloadable software for optimization of online advertising impressions, and participation in online advertising auctions and exchanges and also featuring real time bidding; Providing temporary use of non-downloadable software for managing online advertisements featuring analytics and reporting, brand control, and general optimization of digital content via the internet, mobile, video, internet and other digital formats; Software as a service (SAAS) services featuring software for optimization of online advertising impressions, and participation in online advertising auctions and exchanges, and also featuring real time bidding; Software as a service (SAAS) services featuring software for managing online advertisements featuring analytics and reporting, brand control, and general optimization of digital content; Software as a Service (SAAS), namely, predictive analytic software used to predict financial, operation and merger and acquisition outcomes in the business and corporate field; Software as a Service (SAAS), namely, business intelligence software, namely, computer software to facilitate access to a wide variety of information related to the operation of a business |
Reg. No. 5084114 |
Cl. 9: remote controlled apparatus and instruments for controlling and regulating machines, manufacturing installations, robots, namely, electric and electronic installations for the remote control of industrial operations and industrial robots, control system for the remote observation, management and operation of industrial robots and factories, cranes, comprising computers, software, electromechanical controls, and video display screens; data processing equipment and computers, recorded computer operating programs, other than for medical diagnostics and therapy, environmental rehabilitation or financing, namely, computer software for use in connection with operation of robotic machines in the field of robotics excluding computer software in the fields of medical diagnostics and therapy, environmental rehabilitation or financing; downloadable computer programs, other than for medical diagnostics and therapy, environmental rehabilitation or financing, namely, recorded and downloadable computer programs, namely, computer software used to control, diagnose and operate industrial machines in the field of robotics excluding computer software in the fields of medical diagnostics and therapy, environmental rehabilitation or financing; electric/electronic operating apparatus for machines and tools, namely, electronic apparatus for operating robots, testing compression, strength, hardness and tensile characteristics of industrial materials |
Reg. No. 5142531 |
Cl. 42: Providing on-line non-downloadable software for use in on-demand instance pricing or reserved instance pricing, and for use in end-customer invoicing |
Reg. No. 5223295 |
Cl. 9: Computer software, namely, software programming development tools for creation of applications and client interfaces |
Reg. No. 5239055 |
Cl. 42: Platform as a service (PAAS) featuring software for analysis of commodity derivatives |
Reg. No. 5322605 |
Cl. 9: Computer software for use in electronic design automation; Computer software for semiconductor test data analytics |
Reg. No. 5876848 |
Cl. 9: Computer operating software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; computer application software for mobile phones, namely, software in the field of occupational health and safety management, environmental management and sustainability management; all the aforesaid goods solely in connection with software solutions for the organization, documentation and evaluation of business processes and requirements in the field of occupational safety and health, environmental management and sustainability, as well as the conformity with the legal and regulatory requirements in these areas Cl. 42: software as a service (SAAS) services featuring software in the field of occupational health and safety management, environmental management and sustainability management |
Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the application use(s) broad wording to describe mobile software application to download on the phone or tablet devices, which presumably encompasses all software, including registrant’s more narrow software identifications which specify the function of the software. 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). Thus, applicant’s and registrant’s goods/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.
Thus, upon encountering applicant’s and registrant’s mark, consumers are likely to be confused and mistakenly believe that the respective goods and/or services emanate from a common source.
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).
PRIOR-FILED PENDING APPLICATIONS – ADVISORY
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.
Applicant should note the following additional ground for refusal.
REFUSAL FOR UNACCEPTABLE SPECIMEN
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for downloadable software include instruction manuals and screen printouts from (1) web pages showing the mark in connection with ordering or purchasing information or information sufficient to download the software, (2) the actual program that shows the mark in the title bar, or (3) launch screens that show the mark in an introductory message box that appears after opening the program. See TMEP §904.03(e), (i), (j). Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §§904.03(i) et seq.
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the software identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to the Specimen webpage.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
REQUIREMENT FOR ACCEPTABLE IDENTIFICATION OF GOODS
Some of the wording in the recitation of goods must be clarified because it is indefinite and/or too broad. See TMEP §1402.01.
The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark. In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).
Where applicant’s goods are properly classified in other classes, applicant is required to either (1) specify the goods acceptably, add the appropriate international class(es) to the application, and classify the good therein, or (2) delete the good from the application. See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq.
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 computer application software for mobile phones and tablet computers for use as a point-of-sale (POS) for inventory management, employee management, operating computer systems, processing and reconciliation of sales transactions, purchase order generation, purchase order submission, purchase order management, data and accounting management, customer relationship management, transmission of payment information, reservation management, kitchen and bar orders and inventory management, management of consumer loyalty programs, coordination of gift card delivery, facilitating online and mobile ordering, creating and displaying digital menus, and managing table reservations and availability
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.
Requirement for Acceptable Description of the Mark
Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Descriptions must be accurate and identify all the literal and design elements in the mark. See 37 C.F.R. §2.37; TMEP §§808 et seq.
The following description is suggested, if accurate:
The mark consists of the stylized wording “QUANTIC”.
APPOINTMENT OF A TRADEMARK ATTORNEY – ADVISORY:
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
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.
/Jeanie H. Lee/
Examining Attorney
Law Office 105
571-272-6110
jeanie.lee@uspto.gov
RESPONSE GUIDANCE