To: | Abnormal Security Corporation (pctrademarks@perkinscoie.com) |
Subject: | U.S. Trademark Application Serial No. 88657465 - 135237-4004 |
Sent: | January 22, 2020 05:56:09 PM |
Sent As: | ecom111@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88657465
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Correspondence Address:
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Applicant: Abnormal Security Corporation
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Reference/Docket No. 135237-4004
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 22, 2020
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
COMPARISON 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).
In this case, Applicant’s proposed mark is a design that resembles a brain, within which appear lines with dot notes and a hexagonal shape. Registrant’s mark has a design identical in scale and shape, with all lines and nodes in identical locations, simply with the outer shape slightly more rounded and less angled, and with dots appearing in one brain’s hemisphere, as well as the additional term ONCOKDM.
Applicant has, in essence, merely removed a term from a registered mark and slightly harshened the lines creating the design itself. Indeed, the similarities between the two designs are uncanny, particularly the shape, location and angling of all node lines, including a bizarre short node horizontally through the center of the designs. See attachment showing designs at scale with one another.
This is particularly the case where, as here, the mark applicant is applying for is just the image, and if this registrant chooses to likewise isolate their design from the wording in presentation, the marks would be almost indistinguishable save when side by side.
To that effect, the examiner notes that this is not how marks are compared for similarity. 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 comparing designs, in paricular, the focus is on the overall commercial impression conveyed by such marks, not on specific differences. See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d at 587, 177 USPQ at 574; In re Triple R Mfg. Corp., 168 USPQ 447, 448 (TTAB 1970); TMEP §1207.01(c).
Therefore, the marks are confusingly similar for purposes of a likelihood of confusion analysis.
If the marks of the respective parties are highly similar, the inquiry must move to a consideration of the commercial relationship between the goods or services of the respective parties to determine whether there is a likelihood of confusion.
COMPARISON OF GOODS/SERVICES
Applicant’s goods and services at issue are:
Class 9: Software for ensuring the security of electronic mail; electronic mail and messaging software; computer software for collection, storage, analysis and presentation of data for forensic analysis of security events and for security compliance; computer software for the administration, monitoring, management, assessment and quantification of security and data breach vulnerability risks
Class 38: Secure email services
Class 42: Computer services, namely, electronic mail protection and security services; Software as a service (SaaS) featuring software for use in the analysis and protection of the security of email and network communications and data; Platform as a service (PAAS) for use in the analysis and protection of the security of email and network communications and data; Email and messaging management services for others, namely, threat protection in the nature of computer virus protection services, monitoring of computer systems for detecting unauthorized access or data breach, and electronic storage of data and emails recorded in electronic media; Software as a service (SAAS) featuring software for use in the analysis and protection of the security of email and network communications and data, cybersecurity, email management virus protection, email archiving, and email continuity and email security; design and development of antivirus software; computer security consultancy
Registrant’s services at issue are:
Class 42: data encryption services; design and development of downloadable mobile computer applications for computer devices; electronic data storage
Registrant’s “design and development of downloadable mobile computer applications for computer devices” is broad enough to include the design and development of antivirus software, as the latter is a form of downloadable software for computer devices.
Further, both applicant and registrant are offering identical electronic storage of data services.
Finally, applicant’s “electronic mail protection and security services” is broad enough to include such protections when achieved by data encryption, one of the registrant’s services. Indeed, as much of applicant’s software, email services, and Class 42 services are related to security, encryption services are likely a narrower form of many of these offerings.
Therefore, the goods and services are confusingly similar for purposes of a likelihood of confusion analysis.
Registration of Applicant’s proposed mark is therefore refused registration under Section 2(d) as likely to cause confusion with a registered mark.
SPECIMEN REFUSAL – NO USE WITH GOODS/SERVICES IDENTIFIED
Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods and services specified in International Class(es) 9 and 38 in the application or amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).
Specifically, as to Class 9, the screenshot does not show any of the acceptable forms of specimen for this class. It is a shot of a website, and does not show use with downloaded or recorded software. Applicant should note that their website, attached hereto, does not identify Class 9 software as a product anywhere on its pages.
Applicant’s specimen does not meet these criteria, and is further blurred due to cropping out additional matter, making the image expand to fill the removed space and rendering it partly illegible, an additional issue.
As to Class 38, applicant’s specimens show use only with analyzing emails, not with a Class 38 service providing an email service themselves. The applicant is offering Class 42 security services, but they do not appear to be the email client, which is what is required for Class 38 email services.
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 and/or services 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 services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
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 goods and/or services 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 http://www.gov.uspto.report/trademarks/law/specimen.jsp.
IDENTIFICATION OF GOODS & SERVICES
The wording in the identification of goods and services is indefinite, overbroad, or does not sufficiently distinguish the form or function of the goods to be proper beneath the present guidelines of the Trademark Act. Thus, the language must be better-clarified where indicated below, in bold. Explanations for the reasoning behind the indefiniteness, and proper re-classification where applicable, is provided below within the identifications.
Applicant may therefore adopt the following identification(s), if accurate. See TMEP §1402.01.
Class 9: {specify downloadable or recorded} software for ensuring the security of electronic mail by {specify function of software; “ensuring” does not identify how the software functions or is used by the end consumer}; {specify downloadable or recorded} electronic mail and messaging software; {specify downloadable or recorded} computer software for collection, storage, analysis and presentation of data for forensic analysis of security events and for security compliance; {specify downloadable or recorded} computer software for the administration, monitoring, management, assessment and quantification of security and data breach vulnerability risks
Class 38: Providing electronic transmission of secure e-mail
Class 42: Computer services, namely, electronic mail protection and security services, namely, {specify actual service proper in Class 42}; Software as a service (SaaS) featuring software for use in the analysis and protection of the security of email and network communications and data; Platform as a service (PAAS) featuring computer software
platforms for use in the analysis and protection of the security of email and network communications and data; Email and
messaging management services for others, namely, threat protection in the nature of computer virus protection services, monitoring of computer systems for detecting unauthorized access or data
breach, and electronic storage of data and emails recorded on electronic media; Software as a service (SAAS) featuring software for use in the analysis and protection of the security of email and network communications and data, cybersecurity, email management virus protection, email
archiving, and email continuity, and email security; design and development of antivirus software;
computer security consultancy
The applicant is advised that the above suggestions may not be a complete listing of amended specifications available to the applicant, but are instead provided only as suggestions. Given the extremely indefinite nature of some of the goods in part and given that the application is based on intent to use, the examiner is unable to suggest a more comprehensive amended identification for the applicant’s consideration and possible adoption in responding to this Office Action. It is the applicant's duty and prerogative to identify the goods and services. TMEP section 1402.01(d).
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.
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.
/Caitlin Watts-Fitzgerald/
Caitlin Watts-FitzGerald
Examining Attorney
Law Office 111
571-272-9015
Caitlin.Watts-Fitzgerald@USPTO.GOV
RESPONSE GUIDANCE