To: | LivePerson, Inc. (kim@olivergrimsley.com) |
Subject: | U.S. Trademark Application Serial No. 88665393 - MAVEN - N/A |
Sent: | January 09, 2020 04:04:18 PM |
Sent As: | ecom106@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88665393
Mark: MAVEN
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Correspondence Address: |
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Applicant: LivePerson, Inc.
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Reference/Docket No. N/A
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 09, 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.
Search of Marks – Prior Pending 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.
Section 2(d) Refusal
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.
In the present case, applicant’s mark is MAVEN and registrant’s mark is MAVEN. 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 goods and/or services. Id.
Therefore, the marks are confusingly similar.
Registrant’s goods are “Computer application software for case management systems, namely, software for configurable, scalable, secure solutions across many industries, including but not limited to public health, justice services, and financial services.” Applicant’s goods are “Downloadable computer software for processing electronic payments to and from others that may be downloaded from a global computer network and/or recorded on computer media; Authentication software that may be downloaded from a global computer network and/or recorded on computer media; Computer software used to process mobile payments; Downloadable computer software for use in contactless transactions with retailers, merchants, and vendors via mobile devices used to process mobile payments; Downloadable computer software for transmitting, processing, facilitating, verifying, and authenticating credit and debit card information and transaction and payment information; Downloadable computer software for ensuring the security of mobile payments, of contactless transactions with retailers, merchants and vendors via mobile devices, and of credit and debit card information; Downloadable computer software for the storage, transmission, verification, and authentication of credit and debit card and other payment and transaction information,” and its services include “Providing temporary use of on-line non-downloadable authentication software for controlling access to and communications with computers and computer networks; Software as a Service (SaaS) services featuring software for processing electronic payments to and from others; Software as a Service (SaaS) services featuring software for authentication; Software as a Service (SaaS) services featuring software for processing mobile payments; Software as a Service (SaaS) services featuring software for use in contactless transactions with retailers, merchants, and vendors via mobile devices used to process mobile payments; Software as a Service (SaaS) services featuring software for transmitting, processing, facilitating, verifying, and authenticating credit and debit card information and transaction and payment information; Software as a Service (SaaS) services featuring software for ensuring the security of mobile payments, of contactless transactions with retailers, merchants and vendors via mobile devices, and of credit and debit card information; Software as a Service (SaaS) services featuring software for for the storage, transmission, verification, and authentication of credit and debit card and other payment and transaction information.”
In this case, the registration use(s) broad wording to describe the goods/services, which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow goods. 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). Specifically, registrant’s software for solutions in the financial services industry could include applicant’s software for authentication and authentication software services, as well as its other software goods and services in the financial field. Thus, applicant’s and registrant’s goods/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)).
For the reasons set forth above, registration is refused based on the Trademark Act Section 2(d).
Identification
The wording “Authentication software that may be downloaded from a global computer network and/or recorded on computer media; Computer software used to process mobile payments;” “Providing a wide variety of banking services and providing financial services, namely, credit card services, processing and transmission of bills and payments thereof, and insurance for financial transactions conducted via global computer network; Providing a wide variety of payment and financial services, namely, credit card services, issuing credit cards and lines of credit, processing and transmission of bills and payments thereof, bill payment services with guaranteed payment delivery, and brokerage of money market funds, all conducted via a global communications network;” and “Software as a Service (SaaS) services featuring software for authentication;” in the identification is indefinite and must be clarified because it is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must more clearly indicate the function of the software, and whether the software is recorded or downloadable. Applicant may substitute the following wording, if accurate:
Class 9 –
Downloadable computer software for processing electronic payments to and from others that may be downloaded from a global computer network and/or recorded on computer media; Downloadable computer software used to process mobile payments; Downloadable computer software for use in contactless transactions with retailers, merchants, and vendors via mobile devices used to process mobile payments; Downloadable computer software for transmitting, processing, facilitating, verifying, and authenticating credit and debit card information and transaction and payment information; Downloadable computer software for ensuring the security of mobile payments, of contactless transactions with retailers, merchants and vendors via mobile devices, and of credit and debit card information; Downloadable computer software for the storage, transmission, verification, and authentication of credit and debit card and other payment and transaction information
Class 36 –
Clearing and reconciling financial transactions via a global computer network; Providing a wide variety of banking services and providing financial services conducted via global computer network, namely, credit card payment processing services, electronic payment services involving electronic processing and subsequent transmission of bill payment data; Financial services, namely, electronic funds transfer via electronic communications networks; Clearing and reconciling financial transactions via electronic communications networks; Providing a wide variety of payment and financial services, namely, issuing credit cards and lines of credit, bill payment services with guaranteed payment delivery, and brokerage of money market funds, all conducted via a global communications network; Bill payment services; Providing electronic mobile payment services for others; Financial services, namely, providing, processing, verifying, and authenticating mobile payments, and contactless credit and debit card transactions, loyalty reward card transactions, and bill payment transactions with retailers, merchants, and vendors via mobile devices; Providing financial information by electronic means, namely, providing credit and debit card information; Financial services, namely, processing and administration of mobile payments and contactless debit and credit card transactions, loyalty reward card transactions, and bill payment transactions with retailers, merchants, and vendors via mobile devices
Class 42 –
Providing temporary use of on-line non-downloadable authentication software for controlling access to and communications with computers and computer networks; Software as a Service (SaaS) services featuring software for processing electronic payments to and from others; Software as a Service (SaaS) services featuring software for processing mobile payments; Software as a Service (SaaS) services featuring software for use in contactless transactions with retailers, merchants, and vendors via mobile devices used to process mobile payments; Software as a Service (SaaS) services featuring software for transmitting, processing, facilitating, verifying, and authenticating credit and debit card information and transaction and payment information; Software as a Service (SaaS) services featuring software for ensuring the security of mobile payments, of contactless transactions with retailers, merchants and vendors via mobile devices, and of credit and debit card information; Software as a Service (SaaS) services featuring software for the storage, transmission, verification, and authentication of credit and debit card and other payment and transaction information
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.
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.
/Tejbir Singh/
Trademark Attorney
Law Office 106
571-272-5878
571-273-9106 (fax)
Tejbir.Singh@uspto.gov
RESPONSE GUIDANCE