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:  April 21, 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.

SUMMARY OF ISSUES:

• Likelihood of Confusion
• Identification of Goods –Broad/Indefinite Wording 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4561715.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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. 

Applicant’s mark and the Registered Mark are Similar

Applicant's mark is the term OPENTITANIUM. The registered mark is the term TITANIUM. Applicant’s mark is similar in appearance and sound to the registered marks in that they share the common, dominant term TITANIUM.

Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

Moreover, the term OPEN is a descriptive reference to applicant’s open-source software goods and open-source software services, and is  descriptive term. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).

 

In the present case, the attached evidence of third-party registrations with the term OPEN source in the mark disclaimed or registered on the Supplemental Register or under Trademark Act Section 2(f) shows that the wording OPEN in the applied-for mark is merely descriptive of or generic for applicant’s open-source software goods and services.  Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording TITANIUM the more dominant element of the mark.

 

Therefore, the marks are confusingly similar.

 

 

The Software Goods and Services Are Related

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

 

Applicant’s class 009 goods are identified as “Open source software for use in developing, executing, and managing hardware-based Roots of Trust (RoTs), silicon microprocessors, microcontrollers and chipsets for use in access control, identification, authentication, security and safety; open source computer software development tools for deploying, running and managing hardware-based Roots of Trust (RoTs), silicon microprocessors, microcontrollers and chipsets for use in access control, identification, authentication, security and safety; open source computer software for remote attestation and certificate-based security.”

 

Applicant’s class 042 services are identified as “Design and development of open source computer hardware, silicon microprocessors, microcontrollers and chipsets for use in access control, identification, authentication, security and safety.”

 

The goods for Registration No. 4561715 are identified as “computer, data, and network security software; computer antivirus and content security software; computer utility software; malicious code and content screening software; anti-spam, anti-fraud, and anti-phishing computer software; computer software for monitoring, filtering, and reporting messages, files, programs and data retrieved or received from computer and communication networks; computer software for use in scanning, detecting, quarantining, eliminating, blocking and reporting on viruses, worms, trojans, spyware, adware, malware, security exploits, bots and unauthorized data and programs on computers, electronic devices, and handheld and mobile computing and communication devices; computer software for use in detecting viruses, worms, trojans, spyware, adware, malware, security exploits, bots and unauthorized data and programs on computers and electronic devices; web browser security add-on software, namely, computer software for protecting web browser users from malicious, untrustworthy and unwanted content and programs; computer software for ensuring the security of wireless communications; computer software for the authentication of wireless internet access points; computer software for remotely securing data and files in the event of theft; electronic software updates, namely, downloadable computer software and associated data files for updating computer software in the fields of computer and network security; computer software to protect the confidentiality of data and passwords; computer software for protecting the integrity of data, computers, computer software, and mobile computing and communication devices from viruses, worms, trojans, spyware, adware, malware and unauthorized access.”

 

Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion.  In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). Thus, the applicant's software goods and services are are sufficiently closely related to the registrant's software goods because all are for use computer software and/or network security purposes.

Thus, upon encountering the applicant’s OPENTITANIUM mark used on its software goods and services, and the registrant’s TITANIUM mark used on its software goods, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source.

Accordingly, registration is refused under Trademark Act Section 2 (d) based on a likelihood of confusion.

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

Prior Pending Applications

The filing dates of pending U.S. Application Serial Nos. 88206950 and 87741587 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.

Applicant must address the following requirements

 

Identification of Goods –Broad/Indefinite Wording

The following wording in bold in the identification of good and services needs clarification because it is too broad and could include goods/services classified in other international classes.  See TMEP §§1402.01, 1402.03.

 

International Class 009: “Open source software for use in developing, executing, and managing hardware-based Roots of Trust (RoTs), silicon microprocessors, microcontrollers and chipsets for use in access control, identification, authentication, security and safety; open source computer software development tools for deploying, running and managing hardware-based Roots of Trust (RoTs), silicon microprocessors, microcontrollers and chipsets for use in access control, identification, authentication, security and safety; open source computer software for remote attestation and certificate-based security”

 

Applicant must clarify the type of access control, identification, authentication, security and safety.

 

International Class 042:  “Design and development of open source computer hardware, silicon microprocessors, microcontrollers and chipsets for use in access control, identification, authentication, security and safety.”

 

Applicant must clarify the type of access control, identification, authentication, security and safety.

 

The identification for computer software in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  See TMEP §§1402.01, 1402.03(a).

 

Applicant may change this wording to following if accurate. 

 

International Class 009: Downloadable Open source software for use in developing, executing, and managing hardware-based Roots of Trust (RoTs), silicon microprocessors, microcontrollers and chipsets for use in computer hardware, software and network access control, identification, authentication, security and safety; downloadable open  source computer software development tools for deploying, running and managing hardware-based Roots of Trust (RoTs), silicon microprocessors, microcontrollers and chipsets for use in computer hardware, software and network access control, identification, authentication, security and safety; downloadable open source computer software for remote attestation and certificate-based security for computer hardware, software and networks”

 

International Class 042: Design and development of open source computer hardware, silicon microprocessors, microcontrollers and chipsets for use in access control, identification, authentication, security and safety; Providing temporary use of non-downloadable cloud-based Open source software for use in developing, executing, and managing hardware-based Roots of Trust (RoTs), silicon microprocessors, microcontrollers and chipsets for use in computer hardware, software and network access control, identification, authentication, security and safety; Providing temporary use of non-downloadable cloud-based open source computer software development tools for deploying, running and managing hardware-based Roots of Trust (RoTs), silicon microprocessors, microcontrollers and chipsets for use in computer hardware, software and network access control, identification, authentication, security and safety; Providing temporary use of non-downloadable cloud-based open source computer software for remote attestation and certificate-based security for computer hardware, software and networks”

 

See TMEP §1402.01.

 

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

Anthony Rinker

/Anthony Rinker/

Trademark Examining Attorney

Law Office 102

Ph. 571-272-5491

anthony.rinker@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 April 21, 2020 for

U.S. Trademark Application Serial No. 88772732

 

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. 

 

 

Anthony Rinker

/Anthony Rinker/

Trademark Examining Attorney

Law Office 102

Ph. 571-272-5491

anthony.rinker@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 April 21, 2020, 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.”