To: | Leoforce, LLC (ssood@questip.com) |
Subject: | U.S. Trademark Application Serial No. 90064183 - ARYA - 1888-TM-02US |
Sent: | November 11, 2020 10:22:13 PM |
Sent As: | ecom127@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90064183
Mark: ARYA
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Correspondence Address: |
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Applicant: Leoforce, LLC
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Reference/Docket No. 1888-TM-02US
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: November 11, 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:
The filing date of pending U.S. Application Serial No. 88855611 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks with respect to International Class 9. 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 application.
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 mark in the referenced application. 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 is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5603854 Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See enclosed registration.
In this case, applicant has applied to register the mark ARYA for use in connection with the following goods and services:
Class 9— Downloadable computer application software for digital and mobile devices, namely, software for controlling, accessing, and managing server applications and cloud based computer software for use by recruiters, staffing firms, hiring managers, and job seekers for the purpose of searching, creating, editing, displaying, tracking, and analyzing data, job openings, and applications for use in recruiting, hiring, employee retention, career planning, and human resource management
Class 42— Software as a service (SAAS) services featuring software using artificial intelligence for use by recruiters, staffing firms, hiring managers, and job seekers for the purpose of searching, creating, editing, displaying, tracking, and analyzing data, job openings, and applications for use in recruiting, hiring, employee retention, career planning, and human resource management
The mark in Registration no. 5603854 is ARYA for use in connection with the following goods and services:
Class 9— software for…collecting, editing, modifying, organizing, synchronizing, integrating, monitoring, transmitting, storing and sharing of data and information
Class 42— Scientific and technological services, namely, software as a Service (SAAS) services featuring software for content management…in the field of electronic data storage
Introduction to Section 2(d) Analysis
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 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).
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. 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 and differences in the marks.”); TMEP §1207.01.
Similarity 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 ARYA and registrant’s mark is ARYA. 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.
Relatedness of the Goods and Services
Determining likelihood of confusion is based on the description of the goods and services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the registrant uses broad wording in Class 9 to describe “software for…collecting, editing, modifying, organizing, synchronizing, integrating, monitoring, transmitting, storing and sharing of data and information” which presumably encompasses all goods of the type described, including applicant’s more narrow “Downloadable computer application software for digital and mobile devices, namely, software for…cloud based computer software” which describes a particular types of software for storing data and information—the cloud. 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)). Similarly, the registrant uses broad wording in Class 42 to describe “scientific and technological services, namely, software as a Service (SAAS) services featuring software for content management…in the field of electronic data storage” which presumably encompasses all services of the type described, including applicant’s more narrow “Software as a service (SAAS) services featuring software using artificial intelligence for…use in recruiting, hiring, employee retention, career planning, and human resource management” which describes a particular type of software for content management. Thus, applicant’s and registrant’s services are legally identical.
In summary, since the marks are identical and the goods and services are related, there is a likelihood of confusion as to the source of applicant’s goods and services. Therefore, applicant’s mark is not entitled to registration under Section 2(d) of the Trademark Act.
Response to Section 2(d) – Likelihood of Confusion Refusal
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
ASSISTANCE
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05..
How to respond. Click to file a response to this nonfinal Office action.
Byron S. Barahona, Esq.
/Byron Steve Barahona/
Examining Attorney
Law Office 127
Phone: (571)-270-5579
Byron.Barahona@uspto.gov
RESPONSE GUIDANCE