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:  May 27, 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.

 

Summary of Issues:

 

·       Section 2(d) Refusal – Likelihood of Confusion

·       Amend Identification of Goods and Services

 

Section 2(d) Refusal – 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. 5169130. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.

 

Applicant’s mark is GOOGLE MEET for the following goods and services:

 

Class 9: Downloadable software for publishing and sharing digital media and information via global computer and communication network; downloadable instant messaging software; downloadable communications software for electronically exchanging voice, data, video and graphics accessible via computer, mobile, wireless, and telecommunication networks; downloadable computer software for processing images, graphics, audio, video, and text; computer software development tools; downloadable computer software for use in developing computer programs; downloadable video and audio conferencing software; computer hardware, computers, video monitors, audio speakers, microphones, speaker microphones, video cameras

 

Class 38: Telecommunications services, namely, electronic transmission of data and digital messaging via global computer and communication networks; providing online forums, chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; digital multimedia broadcasting services over the Internet, namely, posting, displaying, and electronically transmitting data, audio and video; providing access to computer databases in the fields of general interest; instant messaging services; voice over ip (VOIP) services; video and audio conferencing services conducted via the web, telephone, and mobile devices; communications by computer terminals; local and long distance telephone services; mobile telephone communication services

 

Class 42: Providing temporary use of on-line non-downloadable software for publishing and sharing digital media and information via global computer and communication networks; providing temporary use of on-line non- downloadable software development tools; providing temporary use of on-line non-downloadable software for use as an application programming interface (API); Providing a web hosting platform for others for organizing and conducting meetings, social events and interactive text, audio, and video discussions; providing an on-line network environment that features technology that enables users to share data; computer software consulting; application service provider (ASP) services featuring computer software for transmission of text, data, images, audio, and video by wireless communication networks and the Internet; application service provider (ASP) services featuring computer software for electronic messaging and wireless digital messaging

 

Registrant’s mark is MEET for “Computer software to determine compatibility of individuals by analyzing information from external social networks; downloadable software in the nature of a mobile application for dating; Computer software to determine physical proximity of individuals using external social networks and GPS data from mobile telephones; Computer software to determine the compatibility and physical proximity of individuals using external social network and GPS data; Computer software to communicate and leave messages with individuals within a social network” in class 9.

 

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 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 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 [and services] and differences in the marks.”); TMEP §1207.01.

 

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, the marks are similar because the registered mark, MEET, is entirely incorporated within the applied-for mark, GOOGLE MEET. Incorporating the entirety of one mark within another, as in the present case, does not obviate the similarity between the compared marks, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.

 

Comparison of the Goods and Services

 

The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

In this case, the goods and services are related because they are types of software and communications services that are commonly offered under a single mark.

 

The determination of the likelihood of confusion is based on the description of the goods and services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).

 

In this case, the registration uses broad wording to describe “Computer software to communicate and leave messages with individuals within a social network,” which presumably encompasses all goods of the type described, including applicant’s more specific “downloadable instant messaging software.” 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). Similarly, applicant’s “Downloadable software for publishing and sharing digital media and information via global computer and communication network” presumably encompasses registrant’s “downloadable software in the nature of a mobile application for dating.” Thus, applicant’s and registrant’s software is 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 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 overlapping goods and services are related.

 

Furthermore, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a representative sample of third-party marks registered for use in connection with the same or similar goods and services as those of both applicant and registrant in this case. This evidence shows that the goods and services listed therein, namely, communication software and communication services, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

Therefore, upon encountering the relevant marks used in connection with the relevant goods and services, consumers are likely to be confused and mistakenly believe that the respective goods and services emanate from a common source. Consequently, registration is refused under Section 2(d).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

Identification of Goods and Services

 

The identification of goods and services currently reads:

 

Class 9: Downloadable software for publishing and sharing digital media and information via global computer and communication network; downloadable instant messaging software; downloadable communications software for electronically exchanging voice, data, video and graphics accessible via computer, mobile, wireless, and telecommunication networks; downloadable computer software for processing images, graphics, audio, video, and text; computer software development tools; downloadable computer software for use in developing computer programs; downloadable video and audio conferencing software; computer hardware, computers, video monitors, audio speakers, microphones, speaker microphones, video cameras

 

Class 38: Telecommunications services, namely, electronic transmission of data and digital messaging via global computer and communication networks; providing online forums, chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; digital multimedia broadcasting services over the Internet, namely, posting, displaying, and electronically transmitting data, audio and video; providing access to computer databases in the fields of general interest; instant messaging services; voice over ip (VOIP) services; video and audio conferencing services conducted via the web, telephone, and mobile devices; communications by computer terminals; local and long distance telephone services; mobile telephone communication services

 

Class 42: Providing temporary use of on-line non-downloadable software for publishing and sharing digital media and information via global computer and communication networks; providing temporary use of on-line non- downloadable software development tools; providing temporary use of on-line non-downloadable software for use as an application programming interface (API); Providing a web hosting platform for others for organizing and conducting meetings, social events and interactive text, audio, and video discussions; providing an on-line network environment that features technology that enables users to share data; computer software consulting; application service provider (ASP) services featuring computer software for transmission of text, data, images, audio, and video by wireless communication networks and the Internet; application service provider (ASP) services featuring computer software for electronic messaging and wireless digital messaging

 

The identification for “computer software development tools” in class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded software goods are in class 9, whereas providing their temporary, online non-downloadable use is a service in class 42. See TMEP §1402.03(d).

 

Applicant may adopt the following identification, if accurate (changes in bold):

 

Class 9: Downloadable software for publishing and sharing digital media and information via global computer and communication network; downloadable instant messaging software; downloadable communications software for electronically exchanging voice, data, video and graphics accessible via computer, mobile, wireless, and telecommunication networks; downloadable computer software for processing images, graphics, audio, video, and text; downloadable computer software development tools; downloadable computer software for use in developing computer programs; downloadable video and audio conferencing software; computer hardware, computers, video monitors, audio speakers, microphones, speaker microphones, video cameras

 

Class 38: Telecommunications services, namely, electronic transmission of data and digital messaging via global computer and communication networks; providing online forums, chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; digital multimedia broadcasting services over the Internet, namely, posting, displaying, and electronically transmitting data, audio and video; providing access to computer databases in the fields of general interest; instant messaging services; voice over ip (VOIP) services; video and audio conferencing services conducted via the web, telephone, and mobile devices; communications by computer terminals; local and long distance telephone services; mobile telephone communication services

 

Class 42: Providing temporary use of on-line non-downloadable software for publishing and sharing digital media and information via global computer and communication networks; providing temporary use of on-line non-downloadable software development tools; providing temporary use of on-line non-downloadable software for use as an application programming interface (API); Providing a web hosting platform for others for organizing and conducting meetings, social events and interactive text, audio, and video discussions; providing an on-line network environment that features technology that enables users to share data; computer software consulting; application service provider (ASP) services featuring computer software for transmission of text, data, images, audio, and video by wireless communication networks and the Internet; application service provider (ASP) services featuring computer software for electronic messaging and wireless digital messaging

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and services may not later be reinserted. See 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.

 

Advisory – Responding to a Non-Final Office Action

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.

 

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.

 

Click to file a response to this nonfinal Office action.    

 

 

/Sara Anne Helmers/

Sara Helmers (she/her)

Trademark Examining Attorney

Law Office 126

571-270-3639

Sara.Helmers@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 May 27, 2020 for

U.S. Trademark Application Serial No. 88861336

 

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. 

 

 

/Sara Anne Helmers/

Sara Helmers (she/her)

Trademark Examining Attorney

Law Office 126

571-270-3639

Sara.Helmers@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 May 27, 2020, 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.”