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: June 07, 2021
This Office action is supplemental to and supersedes the previous Office action issued on November 2, 2020 in connection with this application. Based on a prior application since registering, the trademark examining attorney now issues the following new Section 2(d) Refusal. See TMEP §§706, 711.02.
In a previous Office action dated November 2, 2020, the trademark examining attorney issued:
- a prior-application advisory;
- a partial Section 2(d) Refusal;
- an identification requirement;
- two foreign-registration requirements; and
- an information requirement.
Based on applicant’s response, the trademark examining attorney notes that the information requirement is satisfied.
See TMEP §713.02.
However, applicant’s identification amendments failed to adequately resolve all outstanding issues, and applicant has not yet provided a foreign
registration. Accordingly, based on the outstanding identification issues, the trademark examining attorney finds them unpersuasive as to fully obviating the Section
2(d) Refusal. Accordingly, the Section 2(d) Refusal, the identification requirement, and the foreign registration requirements are continued and maintained through this action.
Applicant must respond to all issues raised in this Office action and the previous November 2, 2020 Office action within six (6) months of the date of
issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within
this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SUMMARY OF ISSUES
· Section 2(d)
Refusal—Likelihood of Confusion
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. 6219192. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Summary of the Marks and Goods/Services
Applicant’s CONTOUR, in standard characters, is for:
- Class 009: Downloadable software for digital trade; downloadable software for corporate transaction banking; downloadable software for trade finance; downloadable
software for telecommunications; downloadable software for use in distributed ledger platform technology, namely, for corporate transaction banking, trade, trade finance, telecommunications;
distributed ledger platform software; downloadable software for use in databases, record and ledger systems, namely, for corporate transaction banking, trade, trade finance, telecommunications;
downloadable software for facilitating transactions via telecommunications systems, data communication systems or global networks; downloadable software for use in processing financial transactions,
commercial transactions, electronic funds transfer, token transfers, and currency conversion; downloadable software for use in e-commerce or on-line networks to allow users to perform and record
electronic transactions via a peer to peer network service, global computer network or mobile device network; downloadable software for database management.
- Class 035: Operating on-line networks for the facilitation of financial services; operating on-line networks for the provision of financial services; operating on-line
networks for the buying and selling of financial services; provision of on-line networks for the buying and selling of collateral transfers and enhanced liquidity; providing business information via
a web site; provision of on-line networks for the buying and selling of collateral transfers and enhanced liquidity; providing business information via a digital platform; provision of on-line
networks for the buying and selling of collateral transfers and enhanced liquidity; providing business information via a distributed ledger technology software; updating and maintenance of data in
computer databases and information registries in the nature of computer databases; financial records management, namely, issuing, recording, verification and managing records of financial, banking
and monetary service instruments and documents; financial records management, namely, issuing, recording, verification and managing records of trade finance; financial records management, namely,
issuing, recording, verification and managing records of loans; financial records management, namely, issuing, recording, verification and managing records of bank guarantees; financial records
management, namely, issuing, recording, verification and managing records of credit guarantees.
- Class 036: Financial, banking, monetary services, namely, corporate transaction banking, trade, trade finance; providing online services for financial, banking, and
monetary services, namely, corporate transaction banking, trade, trade finance; providing financial information via a web site; financial administrative processing of transactions, namely, corporate
transaction banking, trade, trade finance.
- Class 038: Peer-to-peer network computer services, namely, electronic transmission of information, data and documents among computers; providing access to databases;
provision of access to global computer network systems; communications by computer terminals, cellular terminals, cellular terminal equipment, and telephones; data streaming services; transmission of
digital files, electronic mail and electronic communications data; providing online forums for trade, communications around trade; providing electronic communications channels, namely, communication
by electronic computer terminals, transmission of information by electronic communications networks; providing online services for financial, banking and monetary services, namely, corporate
transaction banking, trade, trade finance; providing online services for financial, banking and monetary services, namely, communications in corporate transaction banking, trade, trade finance;
providing online services for financial, banking and monetary services, namely, exchanges of information and documents in corporate transaction banking, trade, trade finance.
- Class 041: Education services, namely, providing classes, seminars, training sessions in the field of digital trade, digital corporate transaction banking, digital trade
finance; provision of training in the field of distributed ledger technology platforms; provision of training in the field of blockchain; provision of training the field of cloud software.
- Class 042: Software as a service featuring software for providing an electronic or online platform that facilitates development and usage of distributed ledger software
applications or database software applications; platform as a service featuring computer software platforms for providing an on-line environment for use of applications developed on a distributed
ledger software platforms or database software platforms; applications as a service, namely, providing online downloadable computer application programming interface software to facilitate
development and sharing of software applications, database applications and distributed ledger applications; computer programming; computer security, namely, secure platform for exchange of
information using distributed ledger technology; computer system analysis; consultancy services in the field of computer services and computer programming; digitalisation of documents; data
encryption services; electronic data storage; development of computer software platforms; consultancy services in the field of computer software; consultancy services in the field of design,
selection, implementation and use of computer hardware systems for others; consultancy services in the field of computer software platforms and computer security; consultancy services in the field of
networks, namely, consulting in the field of distributed ledger technology platforms and networks; consultancy services in the field of distributed ledger software platforms and distributed ledger
software technology; providing online downloadable software for financial services, namely corporate transaction banking, trade, trade finance; providing online downloadable software for use in
distributed ledger platform technology, namely, for corporate transaction banking, trade, trade finance; providing online downloadable distributed ledger platform software; providing online
downloadable software for use in databases, record and ledger systems, namely, for exchange of information in financial services, for communications in financial services; providing online
downloadable software for facilitating transactions via telecommunications systems, data communication systems or global networks; providing online downloadable software for use in processing
financial transactions, commercial transactions, electronic funds transfer, token transfers, and currency conversion; providing online downloadable software for use in e-commerce or on-line networks
to allow users to perform and record electronic transactions via a peer to peer network service, global computer network or mobile device network; providing online downloadable software for database
management.
Registrant’s CONTOUR & CO., in standard characters, is for:
- Class 035: Branding services, namely, consulting, development, management and marketing of brands for businesses and/or individuals; Marketing consulting; Marketing
services; Search engine optimization for sales promotion; Consulting services in the field of search engine optimization for sales promotion.
Basis for Likelihood of Confusion
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.
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).
Applicant’s mark is CONTOUR in standard characters, and registrant’s mark is CONTOUR & CO. in standard characters.
Applicant’s marks shares identical wording with registrant’s mark, being “CONTOUR”, and marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases
appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689,
690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding
COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor
Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Additionally, applicant’s mark is fully contained within registrant’s mark, and incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, 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.
Finally, consumers would have difficulty distinguishing
the marks because “[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).
This similarity in appearance, in conjunction with consumers’ general recollection, creates a shared commercial impression that would likely confuse consumers as to the
origin of applicant’s and registrant’s goods/services.
Therefore, applicant’s mark is similar to registrant’s mark.
Relatedness of the Goods/Services
The goods and/or 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).
The compared goods and/or 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).
The attached Internet evidence from
·
http://spiralscout.com/services,
·
http://www.valuecoders.com/industries/agencies-software-development-services,
· http://tuispace.com/blockchain-consulting-development/,
· http://www.accenture.com/us-en/services/blockchain-index with http://www.accenture.com/us-en/industries/financial-services-index, http://www.accenture.com/us-en/services/blockchain/blockchain-financial-services-infrastructure, http://www.accenture.com/us-en/services/blockchain-index,
· http://www.wipro.com/business-process/marketing-as-a-service/#:~:text=Wipro's%20marketing%20services%20span%20the,banking%2C%20financial%20services%20and%20transportation
with http://www.wipro.com/banking/, http://www.wipro.com/blockchain/blockchain-platform-services/,
establishes that the same entity commonly provides registrant’s marketing alongside wide varieties of services, such as various
(1) software, (2) software-related services, (3) educational/training services, (4) financial-related services, (5) business services, and (6) transmission/transaction services. Additionally, these services are marketed under the same mark, and they are sold or provided through the same trade channels. Thus,
applicant’s and registrant’s goods/services are considered related for likelihood of confusion purposes. See, e.g., In re
Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Conclusion
Taken together, the similarity of the marks and the relatedness of applicant’s goods/services to registrant’s services result in the determination that there is a
likelihood of confusion. Therefore, registration is refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the
refusal by submitting evidence and arguments in support of registration.
GENERAL RESPONSE GUIDELINES
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.
Sjogren, Jeffrey
/Jeffrey Sjogren/
Examining Attorney - Law Office 122
jeffrey.sjogren@uspto.gov
Phone: 571-272-5279
Fax: 571-273-5578
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.
