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: November 04, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711,
718.03.
Summary of Issues
- Potential Section 2(d) Likelihood of Confusion—Prior Pending Applications
- Section 2(d) Likelihood of Confusion
- Particular Wording in the Identification of Services is Indefinite
Potential Section 2(d) Likelihood of Confusion—Prior Pending Applications
The filing dates of pending U.S. Application Serial Nos. 90018937, 90018957, 88490103,
88352915, 88876980, 88629145, 87982894 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.
Section 2(d) Likelihood of Confusion Refusal
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos.
5599348, 5474620, 5168185, 4031223 and 3765901. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s Mark is:
- ARC for:
-
- Class 42: Application service provider services featuring computer software, namely, computer software for creating, authoring, distributing, downloading, transmitting,
receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and multimedia content, computer software for personal
information management, database management software, computer-aided dispatch systems, database synchronization software, voice recognition software, speech to text conversion software, voice-enabled
software applications, computer software for accessing, browsing and searching online databases, computer software for the redirection of messages, Internet e-mail, and/or other data to one or more
electronic handheld devices from a data store on or associated with a personal computer or a server, computer software used to process voice commands and create audio responses to voice commands,
computer software for dictation, and computer software for enabling hands-free use of a portable electronic device through voice recognition; software as a service featuring computer software used
for controlling stand-alone voice controlled information and portable electronic devices; software as a service featuring computer software for accessing, browsing, and searching online databases,
audio, video and multimedia content and software applications; software as a service featuring computer software for accessing, monitoring, tracking, searching, saving, and sharing information on
topics in the field of public safety; software as a service featuring computer software for accessing, monitoring, tracking, searching, saving, and sharing information on topics in the field of first
responders; software as a service featuring computer software for accessing, monitoring, tracking, searching, saving, and sharing information on topics in the field of passenger vehicle management;
software as a service featuring computer software for accessing, monitoring, tracking, searching, saving, and sharing information on topics in the field of cargo management; software as a service
featuring computer software for use to connect and control portable electronic devices; providing information in the field of public safety; providing customized computer searching services, namely,
searching and retrieving information at the user's specific request via a database and the internet.
Registrants’ Marks are:
- ARC, slightly stylized, (5599348)
-
- Class 42: Online non-downloadable web based software and applications for corporate flight departments, private aviation commercial operators,
private aviation owners and operators, general aviation pilots, drone operators, and flight schools for submitting, storing, analyzing and auditing Safety Management System data as well as for the
development and distribution of operations support documentation.
- Scope: Cited for a likelihood of confusion with “Application service provider services featuring computer software, namely, computer software for
creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and
multimedia content, computer software for personal information management, database management software, computer-aided dispatch systems, database synchronization software, voice-enabled software
applications, computer software for accessing, browsing and searching online databases, software as a service featuring computer software for accessing, browsing, and searching online databases,
audio, video and multimedia content and software applications; software as a service featuring computer software for accessing, monitoring, tracking, searching, saving, and sharing information on
topics in the field of public safety;; software as a service featuring computer software for accessing, monitoring, tracking, searching, saving, and sharing information on topics in the field of
passenger vehicle management; software as a service featuring computer software for accessing, monitoring, tracking, searching, saving, and sharing information on topics in the field of cargo
management; providing information in the field of public safety” in Class 42.
- ARC (5474620)
-
- Class 9: Computer software for the retail and consumer packaged goods (CPG) industries, namely, software for
application and database integration, communications software for connecting computer network users, computer software for creating searchable
databases of information and data, computer software for statistical analysis and the production of electronic notifications and reports, computer software to automate data warehousing, and computer software that provides web-based access to applications and services through a web operating system or
portal interface
- Class 42: Application service provider (ASP) featuring software for use by the retail and consumer packaged goods (CPG) industries for the
automation of data warehousing, for application and database integration, for connecting computer network users, for creating searchable databases of information and data, for statistical analysis
and the production of electronic notifications and reports, and for providing web-based access to applications and services through a web operating system or portal interface; business technology
software consultation services; consulting in the field of software development and product development in the field of retail data warehousing
in the retail and consumer packaged goods (CPG) industries; customized software development services; design and writing of computer software;
design of computer machine and computer software for commercial analysis and reporting; design, development, installation, maintenance and updating of computer software; developing computer software; maintenance and updating of computer software; programming of computer software for others; repair of computer software; development, design and upgrading of computer software; software as a service
(SAAS) services, namely, hosting software for use by the retail and consumer packaged goods (CPG) industries for the automation of data warehousing, for application and
database integration, for connecting computer network users, for creating searchable databases of information and data, for statistical analysis and the production of electronic notifications and
reports, and for providing web-based access to applications and services through a web operating system or portal interface; software as a service (SAAS) services featuring
software for use by the retail and consumer packaged goods (CPG) industries for the automation of data warehousing, for application and database integration, for connecting
computer network users, for creating searchable databases of information and data, for statistical analysis and the production of electronic notifications and reports, and for providing web-based
access to applications and services through a web operating system or portal interface; design and development of computer software; technical support services, namely,
troubleshooting in the nature of diagnosing computer hardware and software problems; application service provider featuring software for use in
providing an on-line database in the field of transaction processing to upload transactional data, provide statistical analysis, and produce notifications and reports; application service provider
featuring application programming interface (API) software for allowing data retrieval, upload, access and management; consulting services in the field of design,
selection, implementation and use of computer hardware and software systems for retail and consumer packaged goods companies; data automation and collection service using
proprietary software to evaluate, analyze and collect service data
- Scope: Cited for a likelihood of confusion with “Application service provider services featuring computer software, namely, computer software for
creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and
multimedia content; computer software for personal information management, database management software, database synchronization software, voice-enabled software applications, computer software for
accessing, browsing and searching online databases, software as a service featuring computer software for accessing, browsing, and searching online databases, audio, video and multimedia content and
software applications” in Class 42.
- ARC, slightly stylized (5168185)
-
- Class 42: Providing temporary use of non-downloadable computer software accessible via a website for electronic processing and transmission of
travel-related transactions, said software allowing users to access and input travel data, travel marketplace data, and credit card processing data, for use by authorized
persons and entities in the travel industry; providing temporary use of non-downloadable computer software accessible via a website for accessing, managing, retrieving and
viewing travel service transaction data; technical support services, namely, troubleshooting of computer software problems; and providing technical computer consultation in
the field of online travel service transaction processing systems
- Scope: Cited for a likelihood of confusion with “Application service provider services featuring computer software, namely, computer software for
creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and
multimedia content, computer software for personal information management, database management software, database synchronization software, accessing, browsing and searching online databases,
computer software as a service featuring computer software for accessing, browsing, and searching online databases, audio, video and multimedia content and software applications” in Class 42.
- ARC, accompanied by a design (4031223)
-
- Class 42: Application service provider (ASP) featuring software for use by the retail and consumer packaged goods (CPG) industries for the
automation of data warehousing, for application and database integration, for connecting computer network users, for creating searchable databases of information and data, for statistical analysis
and the production of electronic notifications and reports, and for providing web-based access to applications and services through a web operating system or portal interface; business technology
software consultation services; consulting in the field of software development and product development in the field of retail data warehousing
in the retail and consumer packaged goods (CPG) industries; customized software development services; design and writing of computer software;
design of computer machine and computer software for commercial analysis and reporting; design, development, installation, maintenance and updating of computer software; developing computer software; maintenance and updating of computer software; programming of computer software for others; repair of computer software; development, design and upgrading of computer software; software as a service
(SAAS) services, namely, hosting software for use by the retail and consumer packaged goods (CPG) industries for the automation of data warehousing, for application and
database integration, for connecting computer network users, for creating searchable databases of information and data, for statistical analysis and the production of electronic notifications and
reports, and for providing web-based access to applications and services through a web operating system or portal interface; software as a service (SAAS) services featuring
software for use by the retail and consumer packaged goods (CPG) industries for the automation of data warehousing, for application and database integration, for connecting
computer network users, for creating searchable databases of information and data, for statistical analysis and the production of electronic notifications and reports, and for providing web-based
access to applications and services through a web operating system or portal interface; design and development of computer software; technical support services, namely,
troubleshooting in the nature of diagnosing computer hardware and software problems; application service provider featuring software for use in
providing an on-line database in the field of transaction processing to upload transactional data, provide statistical analysis, and produce notifications and reports; application service provider
featuring application programming interface (API) software for allowing data retrieval, upload, access and management; consulting services in the field of design,
selection, implementation and use of computer hardware and software systems for retail and consumer packaged goods companies; data automation and collection service using
proprietary software to evaluate, analyze and collect service data
- Scope: Cited for a likelihood of confusion with “Application service provider services featuring computer software, namely, computer software for
creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and
multimedia content; computer software for personal information management, database management software, database synchronization software, voice-enabled software applications, computer software for
accessing, browsing and searching online databases, software as a service featuring computer software for accessing, browsing, and searching online databases, audio, video and multimedia content and
software applications” in Class 42.
- ARC (3765901)
-
- Class 42: Providing temporary use of non-downloadable computer software accessible via a website for electronic processing and transmission of
travel-related transactions, said software allowing users to access and input travel data, travel marketplace data, and credit card processing data, for use by authorized
persons and entities in the travel industry; providing temporary use of non-downloadable computer software accessible via a website for accessing, managing, retrieving and
viewing travel service transaction data; technical support services, namely, troubleshooting of computer software problems; and providing technical computer consultation in
the field of online travel service transaction processing system
- Cited for a likelihood of confusion with “Application service provider services featuring computer software, namely, computer software for creating, authoring,
distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and multimedia content,
computer software for personal information management, database management software, database synchronization software, accessing, browsing and searching online databases, computer software as a
service featuring computer software for accessing, browsing, and searching online databases, audio, video and multimedia content and software applications” in Class 42.
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 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 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.
Comparison of the Marks
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial
impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP
§1207.01(b)-(b)(v).
In the present case, applicant’s mark is “ARC” and registrants’ marks are “ARC”. These marks are identical in appearance,
sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB
2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the
same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
- Regarding the marks with stylization or design: Registration Nos. 599348, 168185, 4031223
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).
When comparing marks, “[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).
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).
Here, the marks at issue share the wording “ARC”. This is the only wording in each of the marks. Sharing this wording contributes to a strong likelihood of consumer confusion.
Marks must be compared in their entireties and should not be dissected;
however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit
Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating
that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).
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)). Thus, the addition of minor design elements or stylization to the
registered marks does not detract from the likelihood of consumer confusion. Consumers will request the services by referring to the wording in the marks, not by referencing minor design
elements.
In light of the foregoing, it is evident that the marks are similar in sound, appearance, meaning and commercial impression and are
thus, likely to be confused.
Comparison of the Services
The 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 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).
When one party’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 the other party. See
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).
Regarding Registration No. 5599348: In the present case, many registrant’s software services are field specific to the flight and aviation field.
Applicant’s software services are not field specific. Thus, in this sense, applicant’s services are broader than registrant’s services. Each party’s software is for handling data. Each party’s
services include storing and submitting data. Applicant distributes data, which is a way of submitting it, and each party outwardly states that they store data. “Auditing” of data may include
receiving the data, organizing it, and doing whatever is necessary to analyze it, including downloading, decoding, displaying the data. Further, applicant’s software for information and database
management may encompass software for analyzing and auditing data, as data is a type of information. Applicant’s computer-aided dispatch system may encompass software for submitting safety data, as
it is not clear what the makeup of applicant’s systems are; they could be made up of the same type of software registrant identifies. Further, applicant’s “voice-enabled software applications” is
broad and could encompass registrant’s services, which do not specify that they are not voice enabled. Further, each party provides software for the purpose of handling
information in the field of safety. Applicant provides “software as a service featuring computer software for accessing, browsing, and searching online databases, audio, video and multimedia content
and software applications; software as a service featuring computer software for accessing, monitoring, tracking, searching, saving, and sharing information on topics in the field of public safety”,
and this may encompass software that interacts with data re: safety management and the sharing (i.e. distribution) of operations support documentation in the safety management field. Applicant’s
passenger vehicle management and cargo management software may also encompass registrant’s software, which deal with corporate and commercial flights, i.e. passenger vehicles which may carry cargo.
Here, registrant distributes “operations support documentation”. This is a form of safety information. Thus, applicant’s “providing information in the field of public safety” is encompassing of
applicant’s “distribution of operations support documentation” services.
Regarding Registration No. 5474620 and 4031223: In the present case, registrant provides “application service provider featuring application programming
interface (API) software for allowing data retrieval, upload, access and management”. This is broad and non-field specific. It can be presumed to encompass applicant’s software services, which
includes software for data retrieval, in that the software downloads, receives and extracts data, and software which can be used for data management in that the software displays, stores, organizes
and encodes/decodes data. Registrant’s services are also encompassing of applicant’s software for personal information management, as software for data management is software for information
management. Registrant’s services may also encompass software for database management. Further, applicant’s services for database management encompass registrant’s services for automation of data
warehousing, for application and database integration, as database integration is a form of managing a database. This is also the case with applicant’s database synchronization software. Applicant’s
software that is voice enabled may encompass any of registrant’s entries, as registrant’s software may be voice enabled; it is not specified. Further, registrant’s services for providing software for
allowing data retrieval, upload, access and management may encompass applicant’s software services for accessing, browsing and searching databases and other content, as databases contain data.
Regarding Registration Nos. 3765901 and 3765901: Here, registrant provides industry specific data access, input, managing, retrieving and viewing data. The
industry is the travel industry. Applicant provides software which provides many of the same functions but is not field specific. In these instances, applicant’s software is encompassing or
overlapping with registrant’s services. For example, applicant provides software services for creating, authoring, distributing, downloading, transmitting and receiving data, among other functions.
Here, one may create their own data and input it into a system. Applicant’s data allows for accessing data, which may include downloading, extracting and displaying it. Applicant’s services allow for
organization of data, this may include managing data. Further, applicant’s software for personal information management encompasses registrant’s software which allows users to manage their personal
transaction data re: travel service. Applicant’s services for accessing and interacting with databases may also encompass registrant’s services for accessing and interacting with field specific data,
which may or may not be housed in a database.
In light of the foregoing, it is presumed that the channels of trade and class(es) of purchasers are the same for these services. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s
services are related.
In light of the foregoing, it is evident that the marks at issue are likely to be confused. Applicant may provide arguments in support of registration. Applicant must still
address the issues below.
Particular Wording in the Identification of Services is Indefinite
Particular wording in the identification of services is indefinite and must be clarified. 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.
Specifically:
- “Application service provider services featuring computer software, namely, computer software for creating, authoring, distributing, downloading, transmitting, receiving,
playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and multimedia content” is indefinite as it is not clear how software could
be for use in “playing” “text” and “images”. “playing” should be attributed only to the elements it is for use in connection with, e.g. audio, video, multimedia content.
- “computer-aided dispatch systems” is indefinite and broad. It is not clear what software for computer-aided dispatch systems does. If
involves providing software for dispatching help in the form of someone or something to a destination, this may be clarified.
- “voice-enabled” software is indefinite and broad. It is lacking a function.
- “computer software for accessing, browsing and searching online databases, computer software for the redirection of messages, Internet e-mail, and/or other data to one or
more electronic handheld devices from a data store on or associated with a personal computer or a server” is indefinite in the use of “and/or”. This term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified
goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording. See TMEP
§1402.03(a). In this case, it is unclear whether applicant intends to use the mark in connection with software for the purpose of email, other data, or both. An
application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in
commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant
should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services
specified using definite and unambiguous language.
Applicant may adopt the following identification, if accurate:
Class 42: Application service provider services featuring computer software, namely, computer software for creating, authoring,
distributing, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and multimedia content, software for playing audio, video and multimedia content; providing temporary use of online non-downloadable computer software for personal information management,
database management software, computer-aided dispatch system software for sending messages that result in the sending of someone or something to a
destination, database synchronization software, voice recognition software, speech to text conversion software, voice-enabled software applications for {specify function
here}, computer software for accessing, browsing and searching online databases, computer software for the redirection of messages, Internet e-mail, and other data to one or
more electronic handheld devices from a data store on or associated with a personal computer or a server, computer software used to process voice commands and create audio responses to voice
commands, computer software for dictation, and computer software for enabling hands-free use of a portable electronic device through voice recognition; software as a service featuring computer
software used for controlling stand-alone voice controlled information and portable electronic devices; software as a service featuring computer software for accessing, browsing, and searching online
databases, audio, video and multimedia content and software applications; software as a service featuring computer software for accessing, monitoring, tracking, searching, saving, and sharing
information on topics in the field of public safety; software as a service featuring computer software for accessing, monitoring, tracking, searching, saving, and sharing information on topics in the
field of first responders; software as a service featuring computer software for accessing, monitoring, tracking, searching, saving, and sharing information on topics in the field of passenger
vehicle management; software as a service featuring computer software for accessing, monitoring, tracking, searching, saving, and sharing information on topics in the field of cargo management;
software as a service featuring computer software for use to connect and control portable electronic devices; providing information in the field of public safety; providing customized computer
searching services, namely, searching and retrieving information at the user's specific request via a database and the internet
Applicant may amend the identification to clarify or limit the goods and/or services, but not to
broaden or expand the goods and/or 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 goods and/or 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.
Response to Office Action
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.
Rosen, Amanda
/Amanda Rosen/
Examining Attorney
Law Office 121
(571) 270-5984
Amanda.Rosen@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.
