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:  August 12, 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:

 

• Pending Section 2(d) Refusal – Pending Application
• Section 2(d) Refusal – Likelihood of Confusion

 

PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 88905504, 88231776, 88111302, 88738794, 88122523, 88754967, 88754919, 88131511, 88587163, 88663860, and 88675119 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.

 

While applicant is not required to respond to the issue of the pending application, applicant must respond to the following refusals and the requirements within six months of the mailing date of this Office action to avoid abandonment.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5819302 (SOCCER LEGEND); 5744877 (LEGEND LIVE); 5528805 (CITYLEGEND); 5707103 (BUBBLE SHOOTER LEGEND); 5167834 (DICE LEGENDS); 5149061 (LEGEND REPRICING); 4386794 (LEGEND PERFORMANCE CALCULATOR); 4149411 (SURVEY LEGEND); 2965945 (LEGEND); 3480600 (THE LEGEND GROUP); 3532871 (LEGEND FINANCIAL ADVISORS, INC.);  2654221 (LEGEND FINANCIAL ADVISORS, INC.);  4762904 (LEGEND CAPITAL MANAGEMENT); 5498787 (LEGENDELEVEN); 5494969 (FAIRYTALE LEGENDS); 4903897 (LEGEND OF EMPIRE); and 5699735 (BIG BANG LEGENDS).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Standard of Analysis for Section 2(d) Refusal

 

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/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. 

 

Facts

 

Applicant has applied to register the mark LEGEND (in standard characters) for use on:

 

Downloadable computer software for a platform for finding, sharing, querying, modeling, transforming and visualizing data in International Class 09;

 

Financial data analysis in International Class 36; and

 

Platform as a service (PAAS) featuring computer software platforms for finding, sharing, querying, modeling, transforming and visualizing data; Cloud computing featuring software for use finding, sharing, querying, modeling transforming and visualizing data; Computer programming and software design; development of computer platforms in International Class 42.

 

Similarity of 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 proposed mark is confusingly similar to the registered marks because the marks share the word LEGEND/LEGENDS, which may be pronounced or displayed identically, thereby creating similarities in sound, appearance, and commercial impression.

 

An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar.  Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).

 

Although applicant’s mark does not contain the entirety of some of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrants’ marks.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from the registered marks.

 

In any event, even if potential purchasers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in sound, appearance, connotation, and commercial impression in the respective marks, that applicant’s goods and services sold under the “LEGEND” mark constitute a new or additional product line from the same source as the goods and services sold under the registered marks with which they are acquainted or familiar, and that applicant’s proposed mark is merely a variation of registrants’ marks.  See, e.g., SMS, Inc. v. Byn-Mar Inc., 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer’s preexisting mark [ANDREA SIMONE] for its established line of clothing.”).

 

Therefore, the marks are confusingly similar.

 

Relatedness of Goods and Services

 

Determining 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)).  

 

International Classes 09 and 42

 

When applicant’s software is identified broadly without restriction or limitation as to the purpose or function, the software is presumed to encompass all goods of that type, including the same type of software as registrant.  Cf. In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1207.01(a)(iii).

 

In this case, the application uses broad wording to describe “Downloadable computer software for a platform for finding, sharing, querying, modeling, transforming and visualizing data,” which presumably encompasses all goods of the type described, including registrants’ narrower:

 

“Computer programs for editing images, sound and video” and “Computer application software for mobile phones or handheld computers, namely, search engine software” in No. 5819302 (SOCCER LEGEND)

 

“Software for recording live oil and gas well-site data” in No. 5744877 (LEGEND LIVE)

 

“Downloadable computer application software for mobile phones, portable media players and handheld computers, namely, software for searching, posting and sharing plans, events and activities” in No. 5528805 (CITYLEGEND)

 

“Downloadable mobile applications for managing bank accounts, editing photos, making restaurant reservations, playing online games” in No. 5707103 (BUBBLE SHOOTER LEGEND)

 

“Downloadable . . . computer software platforms for social networking that may be accessed via the internet, computers and wireless devices; computer software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing media or information in the fields of virtual communities, gaming, entertainment, and general interest via the internet or other communications networks with third parties” No. 5167834 (DICE LEGENDS)

 

“Computer e-commerce software to allow users to perform electronic business transactions via a global computer network” in No. 5149061 (LEGEND REPRICING)

 

“Software tool designed to accommodate input of customer data to provide measures of inventory return on investment, providing calculation of dollars gained or lost when factoring in performance in terms of fill rates, accuracy, lead times and the like of a user's vendors” in No. 4386794 (LEGEND PERFORMANCE CALCULATOR)

 

“Computer application software for mobile phones and handheld computers, namely, software for enabling users to conduct picture-, text-, video-, and audio-based surveys and questionnaires” in No. 4149411 (SURVEY LEGEND)

 

“Software programs for use in providing mobile viewing capability to users of GIS (Geographic Information System) data consisting of non-graphical and graphical files with an associated quadtree spatial index” in No. 2965945 (LEGEND)

 

Also, the application uses broad wording to describe “Platform as a service (PAAS) featuring computer software platforms for finding, sharing, querying, modeling, transforming and visualizing data; Cloud computing featuring software for use finding, sharing, querying, modeling transforming and visualizing data; Computer programming and software design; development of computer platforms,” which presumably encompasses all services of the type described, including registrants’ narrower:

 

“Providing temporary use of on-line non-downloadable software development tools for enabling users to conduct picture-, text-, video-, and audio-based surveys and questionnaires” in No. 4149411 (SURVEY LEGEND)

 

“Computer programming; computer software design” and “cloud computing featuring software for use in database management in the field of mobile games of playing football” in No 5498787 (LEGENDELEVEN)

 

“Research, development and design of computer software in connection with software platforms containing one or a plurality of programs with graphic elements and applications for mobile devices” in No. 5494969 (FAIRYTALE LEGENDS)

 

“Computer programming; computer software design” in No. 4903897 (LEGEND OF EMPIRE)

 

“Software development, programming and implementation” in No. 5699735 (BIG BANG LEGENDS) 

 

International Class 36

 

In this case, the registrations use broad wording to describe: “A full line of investment services and financial products, namely, investment advisory services; general investment and retirement account management and administration; general financial planning services; financial planning services targeted for retirement; computerized financial analysis, tracking, and reporting of pension and retirement benefits and account returns” in No. 3480600 (THE LEGEND GROUP); “Financial advisory services” in Nos. 3532871 (LEGEND FINANCIAL ADVISORS, INC.) and 2654221 (LEGEND FINANCIAL ADVISORS, INC.); and “Hedge fund investment services” in No. 4762904 (LEGEND CAPITAL MANAGEMENT), which presumably encompasses all services of the type described, applicant’s narrower “Financial data analysis.”  Indeed, registrant’s specimen of record in No. 4762904 (LEGEND CAPITAL MANAGEMENT) specifically states that its “investment research involves financial analysis.”   

 

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 andservices 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 goods and services are related.

 

In conclusion, because the marks are similar and the goods and services are related, there is a likelihood of confusion as to the source of applicant’s goods and services.  Therefore, registration is refused pursuant to Section 2(d) of the Trademark Act.

 

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

 

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. 

 

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

 

 

/Salima Parmar Oestreicher/

Salima Parmar Oestreicher

Examining Attorney

Law Office 108

(571) 272-6786

Salima.Oestreicher@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 August 12, 2020 for

U.S. Trademark Application Serial No. 88908658

 

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. 

 

 

/Salima Parmar Oestreicher/

Salima Parmar Oestreicher

Examining Attorney

Law Office 108

(571) 272-6786

Salima.Oestreicher@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 August 12, 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.”