To: | R5 Labs, LLC (darrin@hea-ip.com) |
Subject: | U.S. Trademark Application Serial No. 90039755 - CONFIDENCE - R5L-002 |
Sent: | October 16, 2020 06:30:37 PM |
Sent As: | ecom120@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90039755
Mark: CONFIDENCE
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Correspondence Address: |
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Applicant: R5 Labs, LLC
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Reference/Docket No. R5L-002
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: October 16, 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.
Trademark Act Section 2(d) Refusal – Likelihood of Confusion – Partial
This refusal applies only to the following goods and/or services:
Class 9:
Downloadable software for image analysis, namely, using artificial intelligence software
Class 42:
Providing on-line non-downloadable software for image analysis, namely, using artificial intelligence software
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4989029. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The applied for mark is CONFIDENCE for the following goods and services:
Class 9:
Downloadable software for image analysis, namely, using artificial intelligence software
Class 42:
Providing on-line non-downloadable software for image analysis, namely, using artificial intelligence software
The registered mark is CONFIDENSE for the following goods and services:
Class 9:
software module for medical imaging used as part of a medical diagnostic mapping system
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.
Similarity 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).
As such, the marks are confusingly similar.
Relatedness of the Goods and/or Services
In this case, the application(s) use(s) broad wording to describe Downloadable software for image analysis, namely, using artificial intelligence software, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow software module for medical imaging used as part of a medical diagnostic mapping system. 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 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 attached evidence shows that it is common to provide a non-downloadable and downloadable version of software.
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 and registration is refused.
Amendment to Identification of Goods and/or Services Required
International Class 9 |
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Suggestion |
Downloadable software in the nature of a mobile application for providing third party verification of compliance with health and safety guidelines |
Acceptable |
Downloadable software in the nature of a mobile application for providing third party verification of compliance with health and safety guidelines |
Downloadable software for image analysis, namely using artificial intelligence software |
Indefinite and must be clarified because the nature of the software is unclear. |
Downloadable software using artificial intelligence for analyzing images |
digital electronic device comprising a display device, and capable of providing access to the Internet and sending, receiving, and storing images and data |
Indefinite and must be clarified because the nature of the good is unclear. |
digital electronic device comprising a display device, and capable of providing access to the Internet and sending, receiving, and storing images and data in the nature of tablet computers |
International Class 42 |
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Providing on-line non-downloadable software for third party verification of compliance with health and safety guidelines |
Indefinite and must be clarified because the nature of the services is unclear. |
Providing on-line non-downloadable internet-based software for third party verification of compliance with health and safety guidelines |
Providing on-line non-downloadable software for image analysis, namely using artificial intelligence software |
Indefinite and must be clarified because the nature of the services is unclear. |
Providing on-line non-downloadable internet-based artificial intelligence software for analyzing images |
Software as a service (SAAS) services featuring software for use in verification of compliance with health and safety guidelines |
Acceptable |
Software as a service (SAAS) services featuring software for use in verification of compliance with health and safety guidelines |
providing on-line nondownloadable software for generating, managing, and storing health and safety guidelines |
Indefinite and must be clarified because the nature of the services is unclear. |
providing on-line nondownloadable internet based software for generating, managing, and storing health and safety guidelines |
Applicant may substitute the following wording, if accurate:
Class 9:
Downloadable software in the nature of a mobile application for providing third party verification of compliance with health and safety guidelines; Downloadable software using artificial intelligence for analyzing images; digital electronic device comprising a display device, and capable of providing access to the Internet and sending, receiving, and storing images and data in the nature of tablet computers
Class 42:
Providing on-line non-downloadable internet-based software for third party verification of compliance with health and safety guidelines; Providing on-line non-downloadable internet-based artificial intelligence software for analyzing images; Software as a service (SAAS) services featuring software for use in verification of compliance with health and safety guidelines; providing on-line nondownloadable internet based software for generating, managing, and storing health and safety guidelines
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.
Response Guidelines
How to respond. Click to file a response to this nonfinal Office action.
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.
/Grace Duffin/
Grace Duffin, Esq.
Trademark Examining Attorney
Law Office 120
571-270-7069
Grace.Duffin@uspto.gov
RESPONSE GUIDANCE