Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.

 

 

Issue date:  October 19, 2020

 

This Office action is in response to applicant’s communication filed on September 25, 2020.

 

In a previous Office action dated May 27, 2020, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to amend the identification of goods and services.

 

Based on applicant’s response, the trademark examining attorney notes that the applicant has amended the identification. See TMEP §713.02.

 

However, applicant’s arguments regarding the likelihood of confusion have been considered and found unpersuasive for the reasons set forth below. Therefore, the trademark examining attorney maintains and now makes FINAL the Section 2(d) refusal as it pertains to the goods and services listed below. See 37 C.F.R. §2.63(b); TMEP §714.04.

 

Summary of Issues Made Final:

 

·        Partial Section 2(d) Refusal – Likelihood of Confusion

 

Partial Section 2(d) Refusal – Likelihood of Confusion

 

THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

Applicant’s mark is GOOGLE MEET for, in relevant part, “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,” and “downloadable video and audio conferencing software” in class 9 and “Providing temporary use of on-line non-downloadable software for publishing and sharing digital media and information via global computer and communication networks,” “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,” “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” in class 42.

 

Registration No. 5169130, which was attached to the May 27, 2020 Office action, is for 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).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), 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 entire registered mark, MEET, is 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.

 

Applicant argues that the marks are different because of the addition of GOOGLE as the first word in the applied-for mark. However, adding a house mark to an otherwise confusingly similar mark will not obviate a likelihood of confusion under Section 2(d). See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007) (finding CLUB PALMS MVP and MVP confusingly similar); In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE DIOR and CACHET confusingly similar); TMEP §1207.01(b)(iii). It is likely that goods and services sold under these marks would be attributed to the same source. See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007). Accordingly, in the present case, the marks are confusingly similar.

 

In conclusion, the applied-for mark GOOGLE MEET and the registered mark MEET are similar because the word MEET is identical in both marks and therefore creates similar commercial impressions. Applicant has failed to show that this term is weak, diluted, or otherwise entitled to a narrow scope of protection such that the addition of the GOOGLE house mark would be sufficient to distinguish the marks.

 

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).

 

Applicant argues that the registrants goods are narrowly tailored to providing a dating app and that applicant’s goods and services are narrowly tailored to video and audio conferencing applications. However, 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, neither the application nor the registration are as narrowly tailored as applicant suggests. For example, the last entry in the registrant’s identification is “computer software to communicate and leave messages with individuals within a social network.” This identification is not limited to dating, to a particular medium of communication, or to a particular type of software. It therefore encompasses several of the identifications in the application, such as “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 communications software for electronically exchanging voice, data, video and graphics accessible via computer, mobile, wireless, and telecommunication networks,” “providing temporary use of on-line non-downloadable software for publishing and sharing digital media and information via global computer and communication networks,” “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,” “application service provider (ASP) services featuring computer software for transmission of text, data, images, audio, and video by wireless communication networks and the Internet,” and “application service provider (ASP) services featuring computer software for electronic messaging and wireless digital messaging.”

 

Similarly, applicant’s identifications of “downloadable computer software for processing images, graphics, audio, video, and text” does not limit the fields in which this processing is done, and could therefore include registrant’s “Computer software to determine compatibility of individuals by analyzing information from external social networks,” “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” all of which involve the processing of various types of 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 and services 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 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.

 

Conclusion

 

Therefore, upon encountering the relevant marks used for 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.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and services, but also to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

In view of the foregoing, the refusal to register under Section 2(d) of the Trademark Act is continued and made final.

 

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

 

Advisory – Responding to a Partial Final Office Action

 

For this application to proceed with all identified goods and services, applicant must explicitly address each refusal and/or requirement in this Office action. If applicant does not timely respond within six months of the issue date of this final Office action, the following goods and services to which the final refusal applies will be deleted from the application by Examiner’s Amendment: “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,” and “downloadable video and audio conferencing software” in class 9 and “Providing temporary use of on-line non-downloadable software for publishing and sharing digital media and information via global computer and communication networks,” “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,” “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” in class 42. 37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following goods and services only:

 

Class 9: Downloadable computer software development tools; downloadable computer software for use in developing computer programs; 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 development tools; providing temporary use of on-line non-downloadable software for use as an application programming interface (API); computer software consulting

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)       A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)       An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

In addition, applicant may respond by doing one of the following:

 

(1)  Deleting or amending the goods and services to which the refusal pertains; or

 

(2)  Filing a Request to Divide Application form (form #3) to divide out the goods and services that have not been refused registration, so that the mark may proceed toward publication for opposition in the class(es) to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).

 

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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/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 October 19, 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 October 19, 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.”