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:  December 09, 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:

• PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
• PRIOR-FILED APPLICATION ADVISORY
• THE IDENTIFICATION OF GOODS AND SERVICES MUST BE AMENDED

 

PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3582059, 5126607, and 5414151.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

This refusal applied to “Research, development and design all relating to microprocessors, processors, microcontrollers, microprocessor design files, semiconductor intellectual property cores, computer hardware accelerators, neural network processors, neural processing units, machine learning processors and artificial intelligence, deep learning, neural processing and machine learning computer software; research, development and design, all relating to computer software used in, and for use in the design, verification and construction of microprocessors, processors, microcontrollers, microprocessor design files, semiconductor intellectual property cores, computer hardware accelerators, neural network processors and machine learning processors” in Class 42 only.

 

The applied-for mark is ETHOS identified for “Semiconductors; interfaces between computer hardware and computer software; microprocessors; microcontrollers; semiconductor intellectual property cores; computer hardware accelerators; computer software used in, and for use in the design, verification, construction and operation of microprocessors, neural network processors, neural processing units and machine learning processors; computer software and computer software libraries for use in relation to machine learning computer hardware platforms, deep learning computer hardware platforms and artificial intelligence computer hardware platforms; artificial intelligence, deep learning, neural processing and machine learning computer software; downloadable electronic data files featuring microprocessor designs, neural network processor designs, neural processing unit designs and machine learning processor designs; electronic publications, downloadable, in the nature of instruction manuals, user manuals, technical manuals, development manuals, datasheets, brochures, articles and white papers in the field of microprocessors, processors, neural network processors, neural processing units, machine learning processors, microcontrollers, semiconductor intellectual property cores, computer hardware accelerators, machine learning computer hardware and software platforms, deep learning computer hardware and software platforms and artificial intelligence computer hardware and software platforms” in Class 9 and “Research, development and design all relating to microprocessors, processors, microcontrollers, microprocessor design files, semiconductor intellectual property cores, computer hardware accelerators, neural network processors, neural processing units, machine learning processors and artificial intelligence, deep learning, neural processing and machine learning computer software; research, development and design, all relating to computer software used in, and for use in the design, verification and construction of microprocessors, processors, microcontrollers, microprocessor design files, semiconductor intellectual property cores, computer hardware accelerators, neural network processors and machine learning processors; technical consultancy and technical support services in the nature of diagnosing problems with the verification and construction of microprocessors, processors, microcontrollers, microprocessor design files, semiconductor intellectual property cores, computer hardware accelerators, neural network processors and machine learning processors; technical consultancy and technical support services in the nature of diagnosing problems with microprocessors, processors, microcontrollers, application specific integrated circuits, microprocessor design files, semiconductor intellectual property cores, computer hardware accelerators, neural network processors and machine learning processors; software-as-a service (SaaS) services featuring software for use in relation to electronic data processing apparatus for machine learning, neural processing, artificial intelligence and deep learning” in Class 42.

 

U.S. Registration No. 3582059 ETHOS SOLUTIONS is identified for “Web site design for others, web site development for others, and computer programming for others”.

 

U.S. Registration No. 5126607 ETHOS GROUP is identified for, in relevant part, “design and development of computer hardware and software”.

 

U.S. Registration No. 5414151 ETHOS is identified for, in relevant part, “Web site design for others, web site development for others, and computer programming for others”.

 

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 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 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.

 

Similarity 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).

 

U.S. Registration No. 5414151

 

The applied-for mark is ETHOS. U.S. Registration No. 5414151 is ETHOS.

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); 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). 

 

In the present case, applicant’s mark is ETHOS and registrant’s mark is ETHOS.  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 of a distinguished character when considered in connection with applicant’s and registrant’s respective goods and services.  Id. See attached http://www.merriam-webster.com/dictionary/ethos; http://en.wikipedia.org/wiki/Ethos.

 

Therefore, the marks are confusingly similar. 

 

U.S. Registrations Nos. 3582059 and 5126607

 

The applied-for mark is ETHOS.

 

U.S. Registration No. 3582059 is ETHOS SOLUTIONS. U.S. Registration No. 5126607 is ETHOS GROUP.

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). The wording SOLUTIONS and GROUP in the registrations is disclaimed, making ETHOS the dominant wording in each.

 

Here, the dominant wording the registered marks, ETHOS, is identical to the entirety of the applied-for mark, being identical in sound, appearance, and commercial impression of distinguished character. See attached http://www.merriam-webster.com/dictionary/ethos; http://en.wikipedia.org/wiki/Ethos.

 

Relatedness of Services

 

The 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 applied-for mark is ETHOS identified for, in relevant part, “Research, development and design all relating to microprocessors, processors, microcontrollers, microprocessor design files, semiconductor intellectual property cores, computer hardware accelerators, neural network processors, neural processing units, machine learning processors and artificial intelligence, deep learning, neural processing and machine learning computer software; research, development and design, all relating to computer software used in, and for use in the design, verification and construction of microprocessors, processors, microcontrollers, microprocessor design files, semiconductor intellectual property cores, computer hardware accelerators, neural network processors and machine learning processors” in Class 42.

 

U.S. Registration No. 3582059 is identified for, in relevant part, “computer programming for others”.

 

U.S. Registration No. 5126607 is identified for, in relevant part, “design and development of computer hardware and software”.

 

U.S. Registration No. 5414151 is identified for, in relevant part, “computer programming for others”.

 

Determining likelihood of confusion is based on the description of the 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 registrations use broad wording to describe “computer programming for others” and “design and development of computer hardware and software”, which presumably encompasses all services of the type described, including applicant’s more narrow “Research, development and design all relating to microprocessors, processors, microcontrollers, microprocessor design files, semiconductor intellectual property cores, computer hardware accelerators, neural network processors, neural processing units, machine learning processors and artificial intelligence, deep learning, neural processing and machine learning computer software; research, development and design, all relating to computer software used in, and for use in the design, verification and construction of microprocessors, processors, microcontrollers, microprocessor design files, semiconductor intellectual property cores, computer hardware accelerators, neural network processors and machine learning processors”.  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). See attached http://en.wikipedia.org/wiki/Computer_programming; http://en.wikipedia.org/wiki/Software_development. 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 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 services are related.

 

Conclusion

 

For the above reasons, registration is refused as to “Research, development and design all relating to microprocessors, processors, microcontrollers, microprocessor design files, semiconductor intellectual property cores, computer hardware accelerators, neural network processors, neural processing units, machine learning processors and artificial intelligence, deep learning, neural processing and machine learning computer software; research, development and design, all relating to computer software used in, and for use in the design, verification and construction of microprocessors, processors, microcontrollers, microprocessor design files, semiconductor intellectual property cores, computer hardware accelerators, neural network processors and machine learning processors” under Section 2(d) of the Trademark Act.

 

PRIOR-FILED APPLICATION ADVISORY

 

The filing date of pending U.S. Application Serial No. 88616299 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

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 mark in the referenced application.  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.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

THE IDENTIFICATION OF GOODS AND SERVICES MUST BE AMENDED

 

The identification for software in International Class 9 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its 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).   

 

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).

 

Suggested Amendment

 

The wording with additions in bold in the identification of goods and services is indefinite and must be clarified because the nature of the goods and services are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods and 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.

 

Applicant may adopt the following wording, if accurate, with suggested changes in bold:

 

Class 9: Semiconductors; interfaces between computer hardware and computer software; microprocessors; microcontrollers; semiconductor intellectual property cores in the nature of integrated circuits; computer hardware accelerators, namely, computer accelerator board; downloadable computer software for use in the design, quality verification, construction and operation of microprocessors, neural network processors, neural processing units and machine learning processors; downloadable computer software and computer software libraries for use in processing images, graphics and text in machine learning computer hardware platforms, deep learning computer hardware platforms and artificial intelligence computer hardware platforms; downloadable computer software for use in designing artificial intelligence, deep learning, neural processing and machine learning; downloadable electronic data files featuring microprocessor designs, neural network processor designs, neural processing unit designs and machine learning processor designs; electronic publications, downloadable, in the nature of instruction manuals, user manuals, technical manuals, development manuals, datasheets, brochures, articles and white papers in the field of microprocessors, processors, neural network processors, neural processing units, machine learning processors, microcontrollers, semiconductor intellectual property cores, computer hardware accelerators, machine learning computer hardware and software platforms, deep learning computer hardware and software platforms and artificial intelligence computer hardware and software platforms

 

Class 42: Research, development and design of microprocessors, processors, microcontrollers, microprocessor design files, semiconductor intellectual property cores, computer hardware accelerators, neural network processors, neural processing units, machine learning processors and artificial intelligence software, deep learning software, neural processing software and machine learning computer software; research, development and design of computer software for use in the design, quality verification and construction of microprocessors, processors, microcontrollers, microprocessor design files, semiconductor intellectual property cores, computer hardware accelerators, neural network processors and machine learning processors; technical consultancy and technical support services in the nature of diagnosing computer hardware and software problems in the quality verification and construction of microprocessors, processors, microcontrollers, semiconductor intellectual property cores, computer hardware accelerators, neural network processors and machine learning processors; technical consultancy and technical support services in the nature of diagnosing computer hardware and software problems in microprocessors, processors, microcontrollers, application specific integrated circuits, semiconductor intellectual property cores, computer hardware accelerators, neural network processors and machine learning processors; software-as-a service (SaaS) services featuring software for use in operating electronic data processing apparatus for machine learning, neural processing, artificial intelligence and deep learning

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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 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.

 

INFORMATION REGARDING THIS APPLICATION

 

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.    

 

 

Michael Larkey

/Michael Larkey/

Trademark Examining Attorney

Law Office 116

(571) 270-5492

michael.larkey@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 December 09, 2019 for

U.S. Trademark Application Serial No. 88618588

 

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. 

 

 

Michael Larkey

/Michael Larkey/

Trademark Examining Attorney

Law Office 116

(571) 270-5492

michael.larkey@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 December 09, 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.”