To: | Bain & Company Inc. (kherman@sullivanlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88629145 - ARC - N/A |
Sent: | April 01, 2021 05:53:36 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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88629145
Mark: ARC
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Correspondence Address:
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Applicant: Bain & Company Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: April 01, 2021
This Office action is in response to applicant’s communication filed on February 24, 2021.
In a previous Office action dated August 27, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.
SECTION 2(d) REFUSAL- LIKELIHOOD OF CONFUSION
Registration of the applied-for mark, ARC, is refused because of a likelihood of confusion with the mark, ARC, in U.S. Registration No. 6114476. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registration.
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 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.
Here, there is a likelihood of confusion because the marks are identical and the services are related.
Similarity of the Marks
In the present case, applicant’s mark is ARC and registrant’s mark is ARC. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective services. Id.
Therefore, the marks are confusingly similar.
Similarity of the Services
Applicant’s services are “Providing online, non-downloadable cloud-based software for use as a management tool for organizational transformations, including tracking initiatives, reporting capabilities and collaboration tools” in International Class 42.
Registrant’s services are “Software as a service (SAAS) services featuring software for managing business processes, measuring and reporting employee performances, and optimizing revenue cycle operations” in International Class 42.
In this case, the application uses broad wording to describe “providing online, non-downloadable cloud-based software for use as a management tool for organizational transformations, including tracking initiatives, reporting capabilities and collaboration tools,” which presumably encompasses all services of the type described, including registrant’s more narrow “Software as a service (SAAS) services featuring software for managing business processes, measuring and reporting employee performances, and optimizing revenue cycle operations.” 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 also the attached evidence from infoworld.com defining software as a service as a cloud computing service. 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)).
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)).
Additionally, the attached Internet evidence, consisting of website screenshots from www.cu.net, http://www.medsphere.com/, http://www.brightree.com/, http://encoda.com/, http://monday.com/, http://kissflow.com/, http://www.pipedrive.com/, freshbooks.com, and http://www.ntaskmanager.com/ establishes that the same entity commonly provides the relevant services and markets the services under the same mark. Specifically, the evidence shows that companies providing software for use as a business management tool that includes tracking, reporting, and collaboration, like the type in the application, is broad enough to encompass software for managing business processes, reporting employee performances, and optimizing revenue cycle operations, like the type in the registration. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Moreover, where the marks of the respective parties are identical, as in this case, the degree of similarity or relatedness between the services needed to support a finding of likelihood of confusion declines. See In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
Applicant argues that the “cited mark is inherently weak and entitled to narrow protection,” citing third party registrations in International Class 42. This evidence is unpersuasive because the software functions in the third party registrations are not related to applicant’s or cited registrant’s software services, excluding the fact the services include software in International Class 42. Additionally, when determining whether an applied-for mark is eligible for registration, each application must be considered on its own record. In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (“[The Federal Circuit], like the Board, must evaluate the evidence in the present record to determine whether there is sufficient evidence . . . .”); In re Shinnecock Smoke Shop, 571 F.3d 1171, 1174, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009) (“Applicant’s allegations regarding similar marks are irrelevant because each application must be considered on its own merits.”); see also In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to Nett Designs’ application, the PTO’s allowance of such prior registrations does not bind the [Trademark Trial and Appeal] Board or this court.”).
Further, applicant contends that the nature of the services are different because registrant is an “accounting firm” and the services are “marketed to healthcare provider organizations seeking to improve their revenue performance” and applicant is a “business management consulting firm” whose services are “cloud-based software for managing organizational transformations.” However, the determination for likelihood of confusion is based on the description of the services stated in the application and registration. 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)). Thus, the fact that registrant is an accounting firm and applicant is a business management firm does not obviate the similarities in the services established by the evidence.
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).
Accordingly, the applicant’s mark is similar to the registered mark, and the services of the parties are related in such a way that there would be a likelihood of confusion as to the source of the services. Therefore, registration is refused under Trademark Section 2(d).
This refusal is hereby made FINAL.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Omolayo Adebayo/
Examining Attorney
United States Patent and Trademark Office
Law Office 121
Tel: (571) 272-4711
Email: Omolayo.Adebayo@USPTO.GOV
RESPONSE GUIDANCE