To: | Muse Software, Inc. (jgerben@gerbenlawfirm.com) |
Subject: | U.S. Trademark Application Serial No. 88853347 - MUSE - 08457-0001 |
Sent: | June 24, 2020 07:32:47 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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88853347
Mark: MUSE
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Correspondence Address: |
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Applicant: Muse Software, Inc.
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Reference/Docket No. 08457-0001
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: June 24, 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.
PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is partially refused as to “Downloadable computer software for use in note-taking; Downloadable computer software for electronic storage of data that allows the user to organize projects, keep all the relevant information in one place, take photos, add notations, draw dimensions, and pin information to photos; Downloadable computer software for document reading and document annotating” because of a likelihood of confusion with the mark in U.S. Registration Nos. 3162432. 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 Identical
In the present case, applicant’s mark is MUSE and registrant’s mark is MUSE. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
The Goods Are Related
Applicant’s goods are identified as “Downloadable computer software for use in note-taking; Downloadable computer software for electronic storage of data that allows the user to organize projects, keep all the relevant information in one place, take photos, add notations, draw dimensions, and pin information to photos; Downloadable computer software for document reading and document annotating; Downloadable computer software for managing website links.”
The goods for Registration No. 3162432 are identified as “Computer software for the acquisition, processing, reporting and/or storage of cardiology data; [ Computer workstations, comprised of a disc drive, monitor, keypad, data storage software, computer interface board, printer, voice retrieval software, and mouse ].”
In this case, the application use(s) broad wording to describe Downloadable computer software for use in note-taking; Downloadable computer software for electronic storage of data that allows the user to organize projects, keep all the relevant information in one place, take photos, add notations, draw dimensions, and pin information to photos; Downloadable computer software for document reading and document annotating, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow Computer software for the acquisition, processing, reporting and/or storage of cardiology data. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
Thus, upon encountering the MUSE mark used on “Downloadable computer software for use in note-taking; Downloadable computer software for electronic storage of data that allows the user to organize projects, keep all the relevant information in one place, take photos, add notations, draw dimensions, and pin information to photos; Downloadable computer software for document reading and document annotating”, and the MUSE mark used on Computer software for the acquisition, processing, reporting and/or storage of cardiology data; [ Computer workstations, comprised of a disc drive, monitor, keypad, data storage software, computer interface board, printer, voice retrieval software, and mouse ], 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.
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