United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88890781
Mark: MXC
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Correspondence Address: |
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Applicant: MatchX Inc
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Reference/Docket No. N/A
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: July 29, 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
· Specimen Refusal – International Class 9
· Specimen Refusal – International Class 38
· Entity Unclear
· 44(e) Filing Basis with U.S. Applicant
· Owner Name Differs on Foreign Registration
· Foreign Registration Required – International Class 38
· Particular Services Exceed Scope of Foreign Registration – International Class 36
· Prior Pending Application
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. 4654693. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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 has applied to register the mark “MXC” in standard characters for use in connection with, among other things, “Computer network server; Computer networking hardware; Computer hardware and recorded software for setting up and configuring wide area networks sold as a unit; Downloadable computer programs for connecting remotely to computers or computer networks; Downloadable WAN (wide area network) operating software; WAN (wide area network) hardware” in International Class 9.
Registrant’s mark is “MXC” in standard characters for use in connection with “Photographic and digital cameras; fax devices; television apparatus and monitors, namely, television monitors and apparatus in the nature of television and video converters, television apparatus for projection purposes, television cameras, television decoders, televisions; wired and wireless telephones and videophones; mobile telephones; radios and portable radios; blank CD-ROMs for sound or video recording, blank computer discs, blank digital audio tapes, blank digital storage media, blank discs for computers, blank electronic chip cards, blank electronic storage media, blank flash memory cards, blank floppy computer discs, blank hard computer discs, blank hard drives for computers, blank integrated circuit cards for recording, transmitting, and reproducing sound and images in mobile telephone services, blank magnetic data carriers, blank magnetic disks, blank optical data carriers, blank optical disks, blank recordable CD-Rs and DVD-Rs, blank recordable DVDs, blank recordable optical discs, blank USB cards, blank USB flash drives, blank video cassettes; computers, including handheld computers; computer peripherals and computer accessories, namely, computer mice and mouse pads; computer software for use in database management and use as a spreadsheet, word processing; computer game programs; equipment to copy, namely, photocopy machines; apparatus for recording and/or reproducing information, namely, apparatus for recording or reproducing sounds, images or data; satellite navigation devices, namely, satellite aided navigation systems” in International Class 9.
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).
Because the marks in this case look and sound identical and create the same commercial impression, the marks are considered similar for likelihood of confusion purposes.
Comparison of the Goods
The applicant’s relevant goods include “Computer networking hardware; WAN (wide area network) hardware” in International Class 9.
The registrant’s relevant goods include “computers, including handheld computers; computer peripherals and computer accessories, namely, computer mice and mouse pads” in International Class 9.
As a preliminary matter, where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
Because the marks are identical and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark is not entitled to registration.
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 requirements set forth below.
Specimen Refusal – International Class 9
Specimen does not show use of the mark in commerce. Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in International Class 9. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Specifically, none of applicant’s specimens provide with the application display or reference any of the applied-for goods. Accordingly, applicant has failed to provide evidence that the applied-for mark is actually in use in commerce with the identified goods.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
Specimen Refusal – International Class 38
Specimen does not show direct association between mark and services. Registration is refused because the specimen does not show a direct association between the mark and the services and fails to show the applied-for mark as actually used in commerce with the identified services in International Class 38. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (b)(2); TMEP §§904, 904.07(a), 1301.04(f)(ii), (g)(i). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user. In re JobDiva, Inc., 843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)). A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. See 37 C.F.R. §2.56(b)(2); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ2d 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii).
To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re The Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (TTAB 2019) (quoting In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)); TMEP §1301.04(f)(ii). Although the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
In the present case, the specimen does not show a direct association between the mark and services in that none of the provided specimens references or showcases the applied-for services (i.e., rental of access time to global computer networks and Telecommunications services for providing multiple-user access to a global computer network).
Examples of specimens. Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
Entity Unclear
If applicant is a corporation, applicant must specify the U.S. state or foreign country under which it is incorporated. 37 C.F.R. §2.32(a)(ii); TMEP §803.03(c).
If applicant is an association, applicant must specify the U.S. state or foreign country under whose laws the applicant is organized or exists, and indicate whether the association is incorporated or unincorporated. 37 C.F.R. §2.32(a)(ii); TMEP §803.03(c).
If applicant is a partnership, applicant must specify the U.S. state or foreign country under whose laws the partnership is organized. 37 C.F.R. §2.32(a)(ii); TMEP §803.03(b). In addition, for a U.S. partnership, applicant must list, if not yet specified, the names, legal entities, and national citizenship (for individuals), or the U.S. state or foreign country of organization or incorporation (for businesses) of all general partners. 37 C.F.R. §2.32(a)(iii). For foreign partnerships, the names and citizenships of the general partners are not required. See TMEP §803.03(b).
If applicant is a joint venture, applicant must specify the U.S. state or foreign country under whose laws the joint venture is organized. 37 C.F.R. §2.32(a)(ii); TMEP §803.03(b). In addition, for a U.S. joint venture, applicant must list the names, legal entities, and national citizenship (for individuals) or the U.S. state or foreign country of organization or incorporation (for businesses) of all active members of the joint venture. 37 C.F.R. §2.32(a)(iv); TMEP §803.03(b). For foreign joint ventures, the names and citizenships of the active members are not required. TMEP §803.03(b).
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
44(e) Filing Basis with U.S. Applicant
If applicant intends to rely on Section 44(e) as a basis for registration, applicant must submit the following:
(1) A true copy, photocopy, certification or certified copy of the foreign trademark registration upon which applicant is relying for U.S. registration, along with an English translation if the foreign registration certificate is not written in English. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.05, 1004 et seq. If applicant submits a copy of the foreign registration, it must be a copy of a document that has been issued to the applicant by or certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01; and
(2) A written statement that applicant has a bona fide and effective industrial or commercial establishment in the foreign country in which its mark is registered. See 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.04-.05.
If applicant cannot satisfy the above requirements for a Section 44(e) basis, applicant can amend the application to substitute a Section 1(a) or Section 1(b) basis, if applicant can satisfy all of the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b), TMEP §806.03.
Owner Name Differs on Foreign Registration
In an application filed solely under Section 44(e), the applicant must be the owner of the foreign registration on the filing date of the U.S. application. TMEP §1005; see 37 C.F.R. §2.34(a)(3); In re De Luxe, N.V., 990 F.2d 607, 609, 26 USPQ2d 1475, 1477 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690-91 (TTAB 1991). However, in this case, the foreign registration specifies an owner other than the U.S. applicant. Specifically, the U.S. application sets forth the owner as “MatchX Inc,” while the foreign registration sets forth the owner as “Polar Domain Foundation.”
If applicant can prove the foreign registration was assigned to applicant on or before the filing date of the U.S. application, the Section 44(e) basis can remain in the application. See TMEP §1005. Applicant may establish ownership of the foreign registration by submitting (1) a copy of an assignment document, (2) certification from the foreign trademark office that reflects applicant’s ownership of the foreign registration and the date of the assignment, or (3) a printout from the intellectual property’s office website that shows the foreign registration was assigned to applicant on or before the filing date of the U.S. application. See TMEP§§1005, 1006.
If applicant did not own the foreign registration on or before the filing date of the U.S. application, applicant will have to amend to an acceptable basis, such as Section 1(a) or 1(b). See TMEP §§806.03, 1005. A foreign registration certificate is not required for a Section 1(a) or 1(b) basis. See 15 U.S.C. §1051(a)-(b); TMEP §806.01(a)-(b).
Foreign Registration Required – International Class 38
A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin. TMEP §1016.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin. If the foreign registration is not written in English, applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
Particular Services Exceed Scope of Foreign Registration – International Class 36
In this case, the U.S. application identifies the particular services as follows: “Currency exchange and advice; Currency exchange services; Currency trading; Currency transfer services; Financial exchange; Financial information; Financial investment brokerage; Financial management; Electronic transfer of virtual currencies.”
However, the foreign registration identifies the following services: “Currency exchange, investment services, currency affairs, securities trading services.”
These services in the U.S. application exceed the scope of the services in the foreign registration because they identify services beyond those found in the foreign registration. Thus, these services in the U.S. application are not acceptable.
Applicant may respond to this issue by satisfying one of the following:
(1) Amending the identification of goods and/or services in the U.S. application to correspond to the goods and/or services in the foreign registration, if possible, to ensure that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Substituting a basis under Section 1(a) or 1(b) for those goods and/or services in the U.S. application that are beyond the scope of the foreign registration. An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods and/or services), provided all requirements are satisfied for each claimed basis.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b).
Additionally, applicant may respond by arguing that these services are within the scope of the foreign registration and should remain in the U.S. application.
Prior Pending Application
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 mark in the referenced application. 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.
Comments
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.
How to respond. Click to file a response to this nonfinal Office action.
/Faucette, Max/
Trademark Examining Attorney
Law Office 107
(571)270-5655
max.faucette@uspto.gov
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