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 15, 2021

 

In a previous Office action dated November 23, 2020, the trademark examining attorney issued the following requirements: 

 

(1)   IDENTIFICATION OF GOODS AND SERVICES – AMENDMENT REQUIRED

 

Upon further review of the application, it has been determined that an additional refusal must issue because of likelihood of confusion with a registered mark.  The trademark examining attorney sincerely apologizes for any inconvenience that the subsequent refusal and/or requirement may cause the applicant. 

 

Applicant must respond to the following new issues:

 

(1)   SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Applicant must respond to all issues raised in this Office action within six months from the date of this Office action to avoid abandonment of the application.  15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §1104.10(a).

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

THIS REFUSAL APPLIES TO CLASSES 9, 41, AND 42

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4639762 and 4728243.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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. 

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the services, and similarity of the trade channels of the services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

The applied-for mark is “NAVER” and is used in relevant part in connection wiht “Computer programs for pre-recorded games; Recorded computer programs, recorded for creating advertisements, performing internet searches and displaying the search results, functioning as a search engine, mobile messaging, online advertising, content creation, using artificial intelligence for voice synthesis, voice recognition, voice generation of text to voice, and to enable users to order a wide variety of goods and services of others, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Computer programs, downloadable for creating advertisements, performing internet searches and displaying the search results, functioning as a search engine, mobile messaging, online advertising, content creation, using artificial intelligence for voice synthesis, voice recognition, voice generation of text to voice, and to enable users to order a wide variety of goods and services of others, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Computer mouse being computer peripherals; Mouse pads; Downloadable and recorded computer software for wireless content delivery; Downloadable and recorded computer programmes for document management; Video game cartridges; Downloadable and recorded software for processing images, graphics and text; Downloadable and recorded computer programs for editing images, sound and video; Downloadable and recorded software to control and improve audio equipment sound quality; Video games apparatus adapted for use with an external display screen or monitor; Apparatus for recording, transmission or reproduction of sound and images; Computer software, recorded for creating advertisements, performing internet searches and displaying the search results, functioning as a search engines, mobile messaging, online advertising, content creation, using artificial intelligence for voice synthesis, voice recognition, voice generation of text to voice and to enable users to order a wide variety of goods and services of others, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Downloadable electronic music files; Pre-recorded non-musical electronic media devices featuring translations, pronunciations and information to aid in translation services, except for computer software; Animated cartoons, namely, downloadable electronic cartoons, downloadable cartoon videos and video disks and video tapes with recorded animated cartoons; Exposed slide film; Downloadable electronic publications in the nature of magazines and newsletters in the field of creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Downloadable electronic books in the field of creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, cartoons, speech recognition, language translation, web browsing, navigation, and sharing content” in international class 9, “Production of radio and television programmes; Production of animated films; Reservation of theatre show tickets; Providing entertainment information; Film distribution; Providing information on cinema film; Providing online electronic publications, not downloadable, in the nature of magazines and newsletters in the field of creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Education information, namely, providing information about education; Online educational examination services; Education services in the nature of courses in the field of internet use, computer software, and online advertising, offered through the internet; Internet educational instruction in the field of internet use, computer software, and online advertising; Computer software academies, namely, providing courses of instruction in the field of computer software; Provision of game information, namely, provision of information relating to electronic computer games provided via the Internet; Game services provided on-line, namely, providing online video games; Booking of seats for sports competitions; On-line game service, namely, providing online electronic games” in international class 41 and “Industrial design services; Development of game software; Rental of a database server to third parties; Programming of multimedia applications; Hosting web sites relating to real estate; Creating and maintaining web sites for others; Hosting computer web sites; Provision of internet search engines; Provision of internet security programs, namely, providing temporary use of non-downloadable web application for monitoring and controlling computer and online activity; Provision of internet security programs, namely, computer software that allows users to take measures to protect the security of their internet connections; Conversion of data or documents from physical to electronic media; Maintenance of computer game software; Computer software development; Updating of computer software; Meteorological information” in international class 42.

 

U.S. Registration No. 4639762 is for the mark “NAVERA” and is used in relevant part in connection with “Educational services, namely, providing online animation-based education modules featuring product information for employees in the field of insurance and employee benefits via a website” in International Class 41 and “Computer services, namely, providing search platforms to allow users to input personal user experience and product information in a way that more effectively engages and educates employees on available employee benefits; software as a service (SAAS) services featuring software for product specific information, segmentation based product education, quote and pricing, decision support and general enrollment process support in the field of insurance and employee benefits” in international class 42.

 

U.S. Registration No. 4728243 is for the mark “NAVERA” and is used in relevant part in connection with “Educational services, namely, providing online animation-based education modules featuring product information for employees in the field of insurance and employee benefits via a website” in international class 41 and “Computer services, namely, providing search platforms to allow users to input personal user experience and product information in a way that more effectively engages and educates employees on available employee benefits; software as a service (SAAS) services featuring software for product specific information, segmentation based product education, quote and pricing, decision support and general enrollment process support in the field of insurance and employee benefits” in international class 42.

 

Both marks are owned by FJA-US, INC.

 

Comparison of the Marks

 

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).

 

In this case, applicant's mark, “NAVERA”, is confusingly similar to registrant’s marks, “NAVERA” and “NAVERA”, because the marks are highly similar in sound, appearance, connotation, and commercial impression. 

 

Specifically, the applied for mark and the registered marks are spelled similarly. The only difference between the marks is that the registered mark contains the additional letter “A”. This additional letter does not obviate the similarity between the marks because marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). In this case, the additional letter does not alter the commercial impression significantly enough to overcome the shared similarities.

 

U.S. Registration No. 4639762 also has a design element. This does not obviate the similarity between the marks because when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Ultimately, applicant’s mark is likely to cause confusion with the registered mark because the similarities in sound, appearance, and connotation create the same overall commercial impression in the minds of consumers.  Thus the marks are confusingly similar.

 

Comparison of the Services

 

The compared services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

In this case, both applicant and registrant use the marks on closely related services.

 

The attached Internet evidence, consisting of providers of software featuring product information in the field of insurance and software to enable users to order a wide variety of goods and services of others, establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark.  Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

COMARCH

• http://www.comarch.com/finance/insurance/comarch-digital-insurance/

 

DAMCO

• http://www.damcogroup.com/Insurance/

 

The attached Internet evidence, consisting of providers of courses in the field of advertising and providing online education featuring product information for employees in the field of insurance, establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark.  Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Richardons Sales Performance

• http://www.richardson.com/increase-revenue-by-industry/insurance-sales-training/
• http://www.richardson.com/increase-revenue-by-industry/print-media-ad-sales-training/

 

Lastly, The attached Internet evidence, consisting of providers of software for product specific information… in the field of insurance” in addition to software development, establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark.  Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

DXC

• http://www.dxc.technology/insurance/offerings/11097-insurance_software
• http://www.dxc.technology/application_services/offerings/139843/139844-applications_development

 

Accordingly, the goods and services of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis.

 

Therefore, upon encountering “NAVER”, “NAVERA” and “NAVERA” used on the identified services, consumers are likely to be confused and mistakenly believe that the respective services emanate from a common source. Accordingly, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 4639762 and 4728243. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.

 

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

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

If applicant does not timely respond to this Office action, the following classes will be deleted from the application:  Classes 9, 41, and 42.  See 37 C.F.R. §2.65(a); TMEP §718.02(a). 

 

In such case, the application will then proceed with the following classes only: Class 7, class 12, class 35, and class 38

 

See TMEP §718.02(a). 

 

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

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

/Odette Martins/

Trademark Examining Attorney

Law Office 123

(571) 270-0122

odette.martins@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 15, 2021 for

U.S. Trademark Application Serial No. 88815455

 

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. 

 

 

/Odette Martins/

Trademark Examining Attorney

Law Office 123

(571) 270-0122

odette.martins@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 15, 2021, 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.”