To: | Pango Inc. (TMDocket@mofo.com) |
Subject: | U.S. Trademark Application Serial No. 88786129 - TOUCH VPN - 184466018000 |
Sent: | April 14, 2020 10:13:40 AM |
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 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 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88786129
Mark: TOUCH VPN
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Correspondence Address:
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Applicant: Pango Inc.
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Reference/Docket No. 184466018000
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 14, 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.
Refusal of Registration: 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. 4995389. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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.
Similarity of the Marks
The applicant has applied to register TOUCH VPN, and the registered mark is for TOUCH GFX. 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Comparison of the Goods
The applicant has identified a variety of software, including “communications software for providing access to the Internet and communications software for connecting users with Internet sites.” The registered mark is for a variety of software, including “data communications software.”
Here, both parties offer communications software under marks that begin with “TOUCH” and the only element that distinguishes the marks is the addition of different letter strings (VPN versus GFX). When communications software is marketed under highly similar marks, confusion as to the source of the software is likely. For the above-stated reasons, the refusal of registration of the mark is warranted under Section 2(d) of the Trademark Act. Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If the applicant does respond, please address the following informalities.
Class 9: Recorded or downloadable anti-spyware software; recorded or downloadable communication software for providing access to the Internet; recorded or downloadable communications software for connecting users with Internet sites; recorded or downloadable computer application software for mobile phones for ensuring user security and privacy; recorded or downloadable computer software for controlling and managing access server applications; recorded or downloadable computer software for encryption; recorded or downloadable computer software for use in the safeguarding of digital files, including audio, video, text, binary, still images, graphics and multimedia files; downloadable software in the nature of a mobile application for ensuring user security and privacy; recorded or downloadable network access server operating software; recorded or downloadable VPN (virtual private network) operating software; Downloadable computer application software for mobile phones, namely, software for detecting and blocking trackers and malicious websites known to host malware, viruses, and other online threats; Downloadable computer software for detecting and blocking trackers and malicious websites known to host malware, viruses, and other online threats.
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.
To permit proper examination of the application, applicant must submit additional information about applicant’s goods and/or services. See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e). Specifically, applicant must submit the following:
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the VPN operating software in the application, including any materials using the terms in the applied-for mark;
(2) If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product or services will differ. If the goods feature new technology and information regarding competing goods is not available, applicant must provide a detailed factual description of the goods. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement; and
(3) Applicant must respond to the following questions:
(1) Does the software utilize touch screen technology, and/or does the term “touch” have a recognizable meaning in the VPN industry?
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Prior Pending Application
The filing date of pending U.S. Application Serial No. 88-151920 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. 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 application.
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 mark in the referenced application. 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.
How to respond. Click to file a response to this nonfinal Office action.
/Susan Leslie DuBois/
Examining Attorney
Law Office 111
571.272.9154
susan.dubois@uspto.gov
RESPONSE GUIDANCE