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:  September 26, 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

·       IDENTIFICATION OF SERVICES – AMENDMENT REQUIRED

·       DISCLAIMER REQUIRED

·       REQUEST FOR INFORMATION

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. 5455218, 2694744, 4418723 and 2624039.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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. 

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the services, and similarity of the trade channels of the services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

The applied-for mark is “LAKESIDE BOOK MERCHANT” for “Online tool to assist publishers with setting up, managing and automating direct fulfillment of book orders and accounts via the web; online tool to assist publishers with setting up, managing and automating direct fulfillment of book orders and accounts via the web which uploads inventory to a central sales location, allows publishers to identify data such as titles and units available for sale, uploads data such as titles and inventory to a central sales location, allows for collaboration on data such as price, monitors sales activity, downloads orders, converts orders, extracts order details, and facilitates receiving, assembling, picking, packing, consolidating and shipping orders directly to customers; providing temporary use of non-downloadable cloud and web-based software for publishing production management, content automation, and digital print management; providing temporary use of non-downloadable cloud and web-based software for the management, automation, distribution, print, and direct fulfillment of book orders; providing temporary use of non-downloadable cloud-based software for tracking, monitoring, customizing, and managing inventory, ordering, accounting, invoicing, publishing, production, distribution, and printing of books and digital content; providing temporary use of non-downloadable cloud and web-based applications featuring software and technology that enables users to manage and automate the inventory, ordering, invoicing, production, manufacturing, customization, publication, and printing of books and digital content from anywhere in the world; providing a cloud-based web hosting platform for print, document, and inventory management; platform as a service (PAAS) featuring computer software platforms for monitoring, tracking, invoicing, and accounting for book inventory and order management, publishing, and printing; software as a service (SAAS) services featuring software for providing workflow and supply chain solutions in the field of virtual warehouse management; computer services, namely, providing temporary use of a non-downloadable fully integrated automated workflow and supply chain management software system; providing temporary use of non-downloadable cloud and web-based computer software to automate data warehousing” in international class 42.

 

U.S. Registration No. 5455218 is for the mark “LAKESIDE” and is used in connection with “Computer software for the purpose of managing applications, users, and systems, and user manuals sold as a unit, where the computer software programs monitor, collect, organize, analyze and display data” in International Class 9.

 

U.S. Registration No. 4418723 is for the mark “LAKESIDE” and is used in connection with “Computer software for the purpose of managing applications, users, and systems, and user manuals sold as a unit, where the computer software programs monitor, collect, organize, analyze and display data” in international class 9.

 

U.S. Registration No. 2694744 is for the mark “LAKESIDE SOFTWARE, INC.” and is used in connection with “computer software programs that monitor, collect, organize, analyze and display data for the purpose of managing applications, users, and systems, and user manuals sold as a unit” in international class 9.

 

U.S. Registration No. 2624039 is for the mark “LAKESIDE SOFTWARE” and is used in connection with “computer software programs that monitor, collect, organize, analyze and display data for the purpose of managing applications, users, and systems, and user manuals sold as a unit” in international class 9.

 

These three marks are owned by Lakeside Software, Inc.

 

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, applicant's mark, “LAKESIDE BOOK MERCHANT”, is confusingly similar to registrant’s marks, “LAKESIDE”, “LAKESIDE”, “LAKESIDE SOFTWARE”, and “LAKESIDE SOFTWARE, INC.” because the marks are highly similar in sound, appearance, connotation, and commercial impression.  Specifically, the marks share the wording “LAKESIDE”, and this term would be pronounced and displayed identically, thereby creating similarities in sound and appearance. 

 

The applied for mark also contains the additional wording “BOOK MERCHANT”. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).

 

In the present case, the attached evidence shows that the wording “BOOK MERCHANT” in the applied for mark is merely descriptive of applicant’s services.  Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording “LAKESIDE” the more dominant element of the mark.

 

U.S. Registration Nos. 2624039 and 2694744 contain the additional wording “SOFTWARE” and “SOFTWARE, INC”. This additional wording does not obviate the similarity between the marks because although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

U.S. Registration Nos. 5455218 and 2694744 also have designs. This does not obviate the similarity between the marks because when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Ultimately, applicant’s mark is likely to cause confusion with the registered marks because the similarities in sound, appearance, and connotation create the same overall commercial impression in the minds of consumers.  Thus the marks are confusingly similar.

 

Comparison of the Services

 

The compared services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

In this case, both applicant and registrant use the marks on similar and/or closely related services.

 

Determining likelihood of confusion is based on the description of the goods and/or 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 registrations uses broad wording to describe “Computer software for the purpose of managing applications, users, and systems, and user manuals sold as a unit, where the computer software programs monitor, collect, organize, analyze and display data” and “computer software programs that monitor, collect, organize, analyze and display data for the purpose of managing applications, users, and systems, and user manuals sold as a unit” which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow “providing temporary use of non-downloadable cloud-based software for tracking, monitoring, customizing, and managing inventory, ordering, accounting, invoicing, publishing, production, distribution, and printing of books and digital content”, “platform as a service (PAAS) featuring computer software platforms for monitoring, tracking, invoicing, and accounting for book inventory and order management, publishing, and printing”.  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)).

 

The application also uses broad wording to describe “online tool to assist publishers with setting up, managing and automating direct fulfillment of book orders and accounts via the web which uploads inventory to a central sales location, allows publishers to identify data such as titles and units available for sale, uploads data such as titles and inventory to a central sales location, allows for collaboration on data such as price, monitors sales activity…” which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow “Computer software for the purpose of managing applications, users, and systems, and user manuals sold as a unit, where the computer software programs monitor, collect, organize, analyze and display data”, “computer software programs that monitor, collect, organize, analyze and display data for the purpose of managing applications, users, and systems, and user manuals sold as a unit”.  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/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 and/or services are related.

 

Accordingly, the services of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis.

 

Therefore, upon encountering “LAKESIDE BOOK MERCHANT”, “LAKESIDE”, “LAKESIDE”, “LAKESIDE SOFTWARE” and “LAKESIDE SOFTWARE, INC.” used on the identified services, consumers are likely to be confused and mistakenly believe that the respective services emanate from a common source. Accordingly, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5455218, 2694744, 4418723 and 2624039. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.

 

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

 

If applicant responds to the refusal, applicant must also respond to the requirement set forth below

 

IDENTIFICATION OF SERVICES – AMENDMENT REQUIRED

 

The wording “online tools” in the identification of services is indefinite and must be clarified because this wording is unclear as to the specific nature of the services being provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant may substitute the following wording, if accurate: 

 

             Class 42

 

            Online tool, namely {specify services of these types in class 42 e.g.,  Providing on-line      non-downloadable software} to assist publishers with setting up, managing and       automating direct fulfillment of book orders and accounts via the web; online tool namely        {specify services of these types in class 42 e.g.,  Providing on-line non-downloadable          software}to assist publishers with setting up, managing and automating direct fulfillment of    book orders and accounts via the web which uploads inventory to a central sales location,      allows publishers to identify data such as titles and units available for sale, uploads data such as titles and inventory to a central sales location, allows for collaboration on data such      as price, monitors sales activity, downloads orders, converts orders, extracts order details,      and facilitates receiving, assembling, picking, packing, consolidating and shipping orders             directly to customers; providing temporary use of non-downloadable cloud and web-based       software for publishing production management, content automation, and digital print          management; providing temporary use of non-downloadable cloud and web-based software           for the management, automation, distribution, print, and direct fulfillment of book orders;   providing temporary use of non-downloadable cloud-based software for tracking,      monitoring, customizing, and managing inventory, ordering, accounting, invoicing,           publishing, production, distribution, and printing of books and digital content; providing     temporary use of non-downloadable cloud and web-based applications featuring software     and technology that enables users to manage and automate the inventory, ordering,             invoicing, production, manufacturing, customization, publication, and printing of books and   digital content from anywhere in the world; providing a cloud-based web hosting platform         for print, document, and inventory management; platform as a service (PAAS) featuring       computer software platforms for monitoring, tracking, invoicing, and accounting for book    inventory and order management, publishing, and printing; software as a service (SAAS)          services featuring software for providing workflow and supply chain solutions in the field      of virtual warehouse management; computer services, namely, providing temporary use of       a non-downloadable fully integrated automated workflow and supply chain management        software system; providing temporary use of non-downloadable cloud and web-based           computer software to automate data warehousing

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 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.

DISCLAIMER REQUIRED

 

Applicant must disclaim the wording “BOOK MERCHANT” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached dictionary definition shows that wording “BOOK” means “A printed or written literary work” and “MERCHANT” means “One whose occupation is the wholesale purchase and retail sale of goods for profit”. See American Heritage Dictionary Definition attached. This wording is descriptive of the applicant’s services because applicant’s software and online tools can be used by book retailers. Therefore, the wording “BOOK MERCHANT” is descriptive of the applicant’s services.

 

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “BOOK MERCHANT” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

REQUEST FOR INFORMATION

 

To permit proper examination of the application, applicant must provide all the following information:

 

(1)  Explain whether the wording “LAKESIDE” in the mark has any meaning or significance in the trade or industry in which applicant’s goods and/or services are manufactured or provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry. 

 

(2)  Explain whether the wording “LAKESIDE” in the mark identifies a geographic place. 

 

See 37 C.F.R. §2.61(b); TMEP §814. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

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

 

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. 

 

/Odette Martins/

Trademark Examining Attorney

Law Office 123

(571) 270-0122

odette.martins@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 September 26, 2020 for

U.S. Trademark Application Serial No. 90004546

 

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. 

 

 

/Odette Martins/

Trademark Examining Attorney

Law Office 123

(571) 270-0122

odette.martins@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 September 26, 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.”