To: | Aetas Company, LLC (paul@hdmnlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88804876 - WAMBI - WAMB21460TM |
Sent: | May 11, 2020 10:01:52 AM |
Sent As: | ecom110@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88804876
Mark: WAMBI
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Correspondence Address: |
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Applicant: Aetas Company, LLC
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Reference/Docket No. WAMB21460TM
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.
SUMMARY OF ISSUES:
Refusal under Section 2(d): 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. 5387766. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
Applicant’s mark is WAMBI for Software as a service, services featuring software for employee engagement powered by real-time patient feedback in the healthcare field.
Registered mark is WAMBI and design for Software as a service (SAAS) services featuring software for use in a healthcare management platform featuring use as a survey instrument, use as a rewards function, use as data analytics including predictive analytics, and use as a scheduling function
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity of the Marks
The respective marks are nearly identical in appearance, sound and meaning. The word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
Therefor the literal portion of the registered mark is the dominant feature of the mark. The literal part of the marks are identical since both are comprised of the term WAMBI which is identical in sound, appearance and meaning other than the stylization in the registered mark. As a result, the marks are confusingly similar.
Relatedness of the Goods/Services
The applicant’s software is highly related to the registrant’s software. Both are providing software as a service featuring software in the healthcare fields that could encompass the identical functions. It is unclear exactly what the function of the applicant’s software is but as worded it is broad enough to include the function of the registrant’s software.
As such, the respective services will travel through similar trade channels to the same class of consumer.
Thus, upon encountering the marks in association with the services, consumers are likely to be confused and mistakenly believe that the respective services emanate from a common source.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Applicant must respond to the requirement(s) set forth below.
APPLICANT MAY OWN PRIOR REGISTRATION
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;
(2) Submit copies of documents evidencing the chain of title; or
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration No. 5387766.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #9; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
IDENTIFICATION OF GOODS/SERVICES
The identification of goods/services is indefinite and must be clarified because the function of the software is unclear. The wording “for employee engagement powered by real time patient feedback” does not clearly state a function of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following identification, if accurate:
“Software as a service (SAAS) services featuring software for __________{specify the function of the program and indicate what employee engagement is as a function of the software) in the healthcare field.” International Class 42.
“Software as a service (SAAS) services featuring software for employee quality management and recognition that uses real time patient feedback and analytics to assess health provider performance in the healthcare field.” International Class 42.
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.
Meaning of the Mark
The applicant must indicate whether WAMBI has any significance in the relevant trade, any geographical significance or any meaning in a foreign language. 37 C.F.R. Section 2.61(b). An English translation of any foreign meaning must be provided.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
How to respond. Click to file a response to this nonfinal Office action.
/rebecca smith/
Rebecca A. Smith
Trademark Attorney
Law Office 110
(571) 272-9223
rebecca.smith6@uspto.gov
RESPONSE GUIDANCE