To: | RINGOLD VENTURES CORP. (trademarks@legalforce.com) |
Subject: | U.S. Trademark Application Serial No. 88632514 - CHECKER - 1150775 |
Sent: | January 02, 2020 05:14:15 PM |
Sent As: | ecom130@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88632514
Mark: CHECKER
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Correspondence Address: LEGALFORCE RAPC WORLDWIDE, P.C.
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Applicant: RINGOLD VENTURES CORP.
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Reference/Docket No. 1150775
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: January 02, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
· SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is CHECKER in standard characters for “Providing temporary use of online non-downloadable software for tracking equipment, appliances, or sites to determine if they need maintenance; Providing temporary use of online non-downloadable software for companies to manage maintenance work on streets and connect workers in the field with their remote offices; Providing temporary use of online non-downloadable software for managing maintenance work, namely, scheduling visits, configuring data collection, tracking activity on a roadmap, using geolocation of staff members, supervising activities being carried out on roads, and reporting results to maintenance companies.”
The cited registration (Reg. No. 4779776) is THE CHECKER with a design element for “computer software for permitting others to access and generate electronic forms for conducting inspections, audits, safety checks, compliance checks and maintenance checks; modular computer application software for permitting others to access and generate electronic forms for conducting inspections, safety checks, compliance checks and maintenance checks; providing a website featuring on-line non-downloadable software that enables users to access specifically generated electronic forms for conducting inspections, audits, safety checks, compliance checks and maintenance checks; and providing a website featuring on-line non-downloadable software that enables users to access specifically generated electronic forms for managing personnel, workplaces and assets.”
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.
Comparison of the Marks
Turning to the first prong of the test, a comparison must be made between applicant’s applied-for mark CHECKER in standard characters and Reg. No. 4779776 for the mark THE CHECKER with a design element.
In the present case, applicant’s mark is CHECKER and registrant’s mark is THE CHECKER. These marks are nearly 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 essentially 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 goods and services. Id.
Accordingly, giving each feature of the marks appropriate weight, the marks when compared in their entireties are sufficiently similar to create consumer confusion or mistake as to the source of the goods and services despite minor differences in the marks.
Comparison of the Goods and Services
Applicant’s identified services are “Providing temporary use of online non-downloadable software for tracking equipment, appliances, or sites to determine if they need maintenance; Providing temporary use of online non-downloadable software for companies to manage maintenance work on streets and connect workers in the field with their remote offices; Providing temporary use of online non-downloadable software for managing maintenance work, namely, scheduling visits, configuring data collection, tracking activity on a roadmap, using geolocation of staff members, supervising activities being carried out on roads, and reporting results to maintenance companies.”
Reg. No. 4779776’s identified goods and services are “computer software for permitting others to access and generate electronic forms for conducting inspections, audits, safety checks, compliance checks and maintenance checks; modular computer application software for permitting others to access and generate electronic forms for conducting inspections, safety checks, compliance checks and maintenance checks; providing a website featuring on-line non-downloadable software that enables users to access specifically generated electronic forms for conducting inspections, audits, safety checks, compliance checks and maintenance checks; and providing a website featuring on-line non-downloadable software that enables users to access specifically generated electronic forms for managing personnel, workplaces and assets.”
Applicant and registrant both provide software for use in connection with equipment maintenance. In this case, the application uses broad wording to describe software related to equipment maintenance, which presumably encompasses all goods and services of the type described, including software for forms related to equipment maintenance. 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 and 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 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 services are related.
Accordingly, with the contemporaneous use of sufficiently similar marks, consumers are likely to conclude that the goods and services are related and originate from a single source. As such, registration must be refused under Trademark Act Section 2(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
Black, Mildred
/Mildred Black/
Trademark Examining Attorney
Law Office 130
571.270.1217
mildred.black@uspto.gov
RESPONSE GUIDANCE