To: | Google LLC (tmdocketing@google.com) |
Subject: | U.S. Trademark Application Serial No. 88772732 - OPENTITANIUM - GT-1466-US-1 |
Sent: | April 21, 2020 02:37:27 PM |
Sent As: | ecom102@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 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88772732
Mark: OPENTITANIUM
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Correspondence Address:
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Applicant: Google LLC
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Reference/Docket No. GT-1466-US-1
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: 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.
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). 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.
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
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.
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.
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.
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.
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