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:  November 04, 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:

• Refusal – Likelihood of Confusion
• Earlier Filed Conflicting Applications
• Identification of Goods and Services
• Multiple Class Requirements

 

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. 5160293; 5855628; 5001056; 5531221.  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 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.

 

CONFUSION BASED ON REGISTRATION NO. 5160293

 

The proposed mark is ALICE in standard characters for:

 

IC 009: Computer software, including artificial intelligence software for performing audit-as-a service tasks in an information technology environment, including perform audits against specific standards, analyse process maturity, physical documents and written policies; carry out network scans, count devices and check logs

 

IC 035: Business management; business administration; collection and systematisation of information into computer databases; business data analysis; all in connection with the performance of audit-as-a-service in an information technology environment

 

IC 042: Computer aided diagnostic testing services; computer security consultancy; monitoring of computer systems for security purposes; artificial intelligence-based software as a service featuring software that performs audit-as-a service tasks in an information technology environment, including perform audits against specific standards, analyse process maturity, physical documents and written policies; carry out network scans, count devices and check logs

 

The registered mark is ALICE in standard characters for:

 

IC 045: Registering the identification of visitors and detection and logging of visitor entry for offices to ensure public safety; Providing security services for offices including detecting, logging and alerting occupants of visitor entry; Security services for offices, namely, registering visitors and providing physical access to offices with interactive kiosks; Security services for offices, namely, upgrading existing VoIP systems with interactive kiosks, wall mounted displays or software that detects visitor entry and notifies occupants of visitor entry to ensure public safety

 

The marks are identical.  Where the marks of the respective parties are identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

The parties provide related computer services used for security and the applicant provides related software for computer security.  The applicant’s software, computer security consultancy and other computer security services could be related to the registrant’s services that provide security services for offices, namely, upgrading existing VoIP systems with interactive kiosks, wall mounted displays or software that detects visitor entry and notifies occupants of visitor entry to ensure public safety.

Consumers interested in enhancing computer security are likely to encounter the applicant’s goods and services and the registrant’s services in the same channels of trade.

 

Consumers who encounter the parties’ identical marks used in connection with their related services are likely to be confused about the source of the services.

 

CONFUSION BASED ON REGISTRATION NO. 5855628

 

The proposed mark is ALICE in standard characters for:

 

IC 009: Computer software, including artificial intelligence software for performing audit-as-a service tasks in an information technology environment, including perform audits against specific standards, analyse process maturity, physical documents and written policies; carry out network scans, count devices and check logs

 

IC 035: Business management; business administration; collection and systematisation of information into computer databases; business data analysis; all in connection with the performance of audit-as-a-service in an information technology environment

 

IC 042: Computer aided diagnostic testing services; computer security consultancy; monitoring of computer systems for security purposes; artificial intelligence-based software as a service featuring software that performs audit-as-a service tasks in an information technology environment, including perform audits against specific standards, analyse process maturity, physical documents and written policies; carry out network scans, count devices and check logs

 

The registered mark is ALICE in standard characters for:

 

 IC 042: Information technology consulting services in the field of enterprise information management strategy, database development, enterprise analytics, data governance, data management, data solutions, data warehousing, data quality, data integration, data architecture, predictive analytics, optimization analytics, iterative development and business intelligence; information technology consulting services in the field of customized computer system and software application development, deployment and management; information technology consulting services in the field of enterprise application, web and mobile application development; information technology consulting services in the field of social media and rich internet applications

 

The marks are identical.  Where the marks of the respective parties are identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

The parties provide related computer services and the registrant’s data governance, data management, and data solutions could encompass security related computer services related to the applicant’s services.

 

Consumers who encounter the parties’ identical marks used in connection with their related services are likely to be confused about the source of the services.

 

CONFUSION BASED ON REGISTRATION NO. 5001056

 

The proposed mark is ALICE in standard characters for, among other things:

 

IC 035: Business management; business administration; collection and systematisation of information into computer databases; business data analysis; all in connection with the performance of audit-as-a-service in an information technology environment

 

The registered mark is ALICE & YOU in standard characters for, among other things,

 

 IC 035: business management; business administration services

 

The marks are similar and create the same general impression due to the identical term ALICE in the marks.  When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

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)).

 

The parties provide identical services, namely, business management and business administration services.  Where the services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines.  See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).  The identification in the cited registration has no restriction in the identification regarding the business management and business administration services, so these services in the registration are presumed to include all types of business management and business administration, including that provided by the applicant.

 

Consumers who encounter the parties’ similar marks used in connection with their related services are likely to be confused about the source of the services. 

 

CONFUSION BASED ON REGISTRATION NO. 5531221

 

The proposed mark is ALICE in standard characters for, among other things:

 

IC 035: Business management; business administration; collection and systematisation of information into computer databases; business data analysis; all in connection with the performance of audit-as-a-service in an information technology environment

 

The registered mark is ALICE in standard characters for, among other things,

 

IC 035: On-line business services, namely, providing an on-line searchable database of business resources in the nature of business contacts, events, business operations, business information, business workshops, business templates, business information provided via videos, mentor contacts, investor contacts, and investment opportunities  

 

The marks are identical.  Where the marks of the respective parties are identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

The parties provide related business services relating to computer databases.

 

Consumers who encounter the parties’ identical marks used in connection with their related services are likely to be confused about the source of the services.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

EARLIER FILED CONFLICTING APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 88129545 and 88458315 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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 applications.

 

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.

 

 

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS AND SERVICES

 

 

The identification of goods and services is unacceptable because some of the wording is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

CLASS 9

 

The wording “Computer software” is indefinite because software in Class 9 must be identified as either “downloadable” or “recorded”.

 

The wording “including” is indefinite everywhere it appears because the identification must be all-inclusive, listing the common commercial name of each good, and the function of each type of software.

 

The wording “audit-as-a-service tasks” is indefinite.  The applicant must specify the exact nature of the function performed by the tasks, for example, “for auditing computer security risks” 

 

The wording “; carry out network scans, count devices and check logs” is indefinite.  The applicant must list the exact nature of these services.

 

CLASS 35

 

The Class 35 identification of services is acceptable; no changes are needed for this class.

 

CLASS 42

 

The wording “Computer aided diagnostic testing services” is indefinite.  The exact purpose of the diagnostic testing services must be specified.  The following would be acceptable: Computer aided diagnostic testing services, namely, computer diagnostic services”

 

The wording “monitoring of computer systems for security purposes” is indefinite.  The applicant must specify the exact service comprising the monitoring, for example, “monitoring of computer systems for security purposes, namely, computer security services, namely, restricting unauthorized access to computer networks”

 

The wording “audit-as-a-service tasks” is indefinite.  The applicant must specify the exact nature of the function performed by the tasks, for example, “for auditing computer security risks” 

 

The wording “; carry out network scans, count devices and check logs” is indefinite.  The applicant must list the exact nature of these services.

 

 

SUGGESTED IDENTIFICATION OF GOODS AND SERVICES

 

Applicant may amend the identification to the following wording, if accurate: 

 

IC 009:  Downloadable artificial intelligence computer software for performing audit-as-a-service tasks for auditing computer security risks in an information technology environment by performing audits against specific standards, analyzing process maturity, physical documents and written policies, carrying out network scans, counting devices and checking logs

 

IC 035: Business management; business administration; collection and systematisation of information into computer databases; business data analysis; all in connection with the performance of audit-as-a-service in an information technology environment

IC 042: Computer aided diagnostic testing services, namely, computer diagnostic services; computer security consultancy; monitoring of computer systems for security purposes, namely, computer security services, namely, restricting unauthorized access to computer networks; artificial intelligence-based software as a service featuring software that performs audit-as-a-service tasks for auditing computer security risks in an information technology environment by performing audits against specific standards, analyzing process maturity, physical documents and written policies, carrying out network scans, counting devices and checking logs

 

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

 

MULTIPLE CLASSES

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for three classes.  Therefore, all filing fees have been paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

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  

 

 

 

/Ellen Awrich/

Trademark Examining Attorney

Law Office 116

571-272-9123

ellen.awrich@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 November 04, 2019 for

U.S. Trademark Application Serial No. 88656155

 

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. 

 

 

 

/Ellen Awrich/

Trademark Examining Attorney

Law Office 116

571-272-9123

ellen.awrich@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 November 04, 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.”