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:  November 23, 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:

 

• 2(d) Refusal for Likelihood of Confusion
• Prior Pending Application
• Identification of Goods and Services

 

SECTION 2(d) REFUSAL FOR 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. 5192457 and 5556160.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The refusals apply to the applicant’s goods and services as follows:

 

RN 5556160

 

Class 9:           Downloadable computer software for use in the field of video and image capture, storage, analysis, documentation, transmission, reproduction and sharing; downloadable software in the nature of a mobile application for video and image capture, storage, analysis, documentation, transmission, reproduction and sharing; downloadable computer software for determining, extracting, analyzing and sharing symbolic and numerical information and measurements from images, three-dimensional data points and other data and information from sensors; downloadable software in the nature of a mobile application for determining, extracting, analyzing and sharing symbolic and numerical information and measurements from images, three-dimensional data points and other data and information from sensors

 

Class 42:         Providing online non-downloadable software for use in the field of video and image capture, storage, analysis, transmission, reproduction and sharing; providing online non-downloadable software for capturing, storing, analyzing, documenting, transmitting, reproducing and sharing images, videos and multimedia content; providing online non-downloadable software for determining, extracting, analyzing and sharing symbolic and numerical information and measurements from images, three dimensional data points, and other data and information from sensors;

 

RN 5192457   

 

Class 9:           downloadable software for tracking, analyzing and reporting changes in physical space, physical structures, architecture, building design and materials; downloadable software in the nature of a mobile application for tracking, analyzing and reporting changes in physical space, physical structures, architecture, building design and materials;

 

Class 42:         providing online non-downloadable software for tracking, analyzing and reporting changes in physical space, physical structures, architecture, building design and materials

 

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. 

 

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).

 

Applicant’s mark is CLEARSIGHT.

 

The mark in registration number 5192457 is CLEARSIGHT.

 

The mark in registration number 5556160 is CLEAR SIGHT.

 

In this instance, the applicant’s mark is identical to the mark in registration 5192457 and the phonetic equivalent to registration 5556160.

 

Regarding registration 5192457, 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.

 

Regarding registration 5556160, the compared marks are identical except for a slight difference in appearance between registrant’s mark, which appears as a compound word with no space separating the words, that is, CLEAR SIGHT; and applicant’s mark, which appears as multiple words with space separating the words, that is, CLEARSIGHT.  As such, the marks are identical in sound and virtually identical in appearance, and are thus confusingly similar for the purposes of determining likelihood of confusion.  See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal citation omitted].”); In re Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”); Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar.  The word marks are phonetically identical and visually almost identical.”). 

 

In view of the above, the marks are similar and likely to be confusingly or mistakenly attributed to the same source.

 

Comparison of the Goods and Services

 

Applicant’s relevant goods and services regarding registration 5556160 are:

 

Downloadable computer software for use in the field of video and image capture, storage, analysis, documentation, transmission, reproduction and sharing; downloadable software in the nature of a mobile application for video and image capture, storage, analysis, documentation, transmission, reproduction and sharing; downloadable computer software for determining, extracting, analyzing and sharing symbolic and numerical information and measurements from images, three-dimensional data points and other data and information from sensors; downloadable software in the nature of a mobile application for determining, extracting, analyzing and sharing symbolic and numerical information and measurements from images, three-dimensional data points and other data and information from sensors; Providing online non-downloadable software for use in the field of video and image capture, storage, analysis, transmission, reproduction and sharing; providing online non-downloadable software for capturing, storing, analyzing, documenting, transmitting, reproducing and sharing images, videos and multimedia content; providing online non-downloadable software for determining, extracting, analyzing and sharing symbolic and numerical information and measurements from images, three dimensional data points, and other data and information from sensors;

 

The goods in registration number 5556160 are:

 

            Computer software for improving digital images and photographs in mobile device cameras

 

In this instance, the goods and services of the parties are closely related. Specifically, both parties are providing goods and services reproducing or altering digital content. As the attached evidence shows, those who provide software for capturing digital content, often include the ability to alter or improve images. For example:

 

• http://support.apple.com/en-us/HT205659
• http://www.colourmylearning.com/2013/04/top-5-free-ios-camera-app-alternatives/
• http://www.androidauthority.com/best-camera-apps-for-android-188148/

 

This evidence establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark. Further, it shows that the goods and services are similar or complementary in terms of purpose or function.  Thus, applicant’s and registrant’s goods and/or 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).

 

Applicant’s relevant goods and services regarding registration 5192457 are:          

 

downloadable software for tracking, analyzing and reporting changes in physical space, physical structures, architecture, building design and materials; downloadable software in the nature of a mobile application for tracking, analyzing and reporting changes in physical space, physical structures, architecture, building design and materials; providing online non-downloadable software for tracking, analyzing and reporting changes in physical space, physical structures, architecture, building design and materials

 

The goods in registration number 5192457 are:

 

Computer software for use in tracking and monitoring the location of people, assets, and vehicles; Software as a service (SAAS) services featuring a web-based software for tracking and monitoring people, assets, and vehicles

 

In this instance, the goods and services of the parties are closely related. Specifically, both parties provide software for tracking assets with the applicant also analyzing and reporting changes. As the attached evidence shows, goods and services for tracking often also commonly analyze or report changes. For example:

 

• http://www.brickhousesecurity.com/gps-tracking/gps-tracker-alerts

 

• http://amberalertgps.com/

 

• http://www.wisetrack.com/asset-tracking-software/
• http://www.wisetrack.com/wisetrack-asset-alerts/

 

This evidence establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark. Further, , it shows that the goods and services are similar or complementary in terms of purpose or function.  Thus, applicant’s and registrant’s goods and/or 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).

 

Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).

 

However, the compared goods and 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 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 overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

In view of the above, 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(s) by submitting evidence and arguments in support of registration. 

 

PRIOR PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 88757979 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.  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.

 

While applicant need not respond to the potential refusal, applicant must respond to the following.

 

IDENTIFICATION OF GOODS AND SERVICES

 

Applicant must clarify the wording “Downloadable computer software for use in the field of video and image capture, storage, analysis, documentation, transmission, reproduction and sharing” and “Providing online non-downloadable software for use in the field of video and image capture, storage, analysis, transmission, reproduction and sharing” in the identification of goods and/or services in International Classes 9 and 42 because it is indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear the function of the software. 

 

The wording “construction project progress tracking, risk management and reporting services” in the identification of services is indefinite and must be clarified because the nature of these services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  

 

Applicant may substitute the following wording, if accurate:

 

Class 9:           Downloadable computer software for video and image capture, storage, analysis, documentation, transmission, reproduction and sharing; downloadable software in the nature of a mobile application for video and image capture, storage, analysis, documentation, transmission, reproduction and sharing; downloadable software for tracking, analyzing and reporting changes in physical space, physical structures, architecture, building design and materials; downloadable software in the nature of a mobile application for tracking, analyzing and reporting changes in physical space, physical structures, architecture, building design and materials; downloadable computer software for determining, extracting, analyzing and sharing symbolic and numerical information and measurements from images, three-dimensional data points and other data and information from sensors; downloadable software in the nature of a mobile application for determining, extracting, analyzing and sharing symbolic and numerical information and measurements from images, three-dimensional data points and other data and information from sensors; downloadable computer software for applying for, analyzing, facilitating and verifying payment for products and services of others; downloadable software in the nature of a mobile application for applying for, analyzing, facilitating and verifying payment for products and services of others; downloadable computer software for payment processing, analysis, transmission and verification; downloadable software in the nature of a mobile application for payment processing, analysis, transmission and verification; downloadable construction project management software; downloadable software for construction project progress tracking, risk management and reporting; downloadable software for communicating with construction and construction safety professionals; downloadable software for providing building and construction site safety and risk assessments; all of the foregoing for use in the construction and architecture industries

 

Class 37:         Building inspection; construction project management; construction consultancy; Construction information services; construction project management, namely, progress tracking, risk management and reporting services

 

Class 42:         Providing online non-downloadable software for video and image capture, storage, analysis, transmission, reproduction and sharing; providing online non-downloadable software for capturing, storing, analyzing, documenting, transmitting, reproducing and sharing images, videos and multimedia content; providing online non-downloadable software for tracking, analyzing and reporting changes in physical space, physical structures, architecture, building design and materials; providing online non-downloadable software for determining, extracting, analyzing and sharing symbolic and numerical information and measurements from images, three dimensional data points, and other data and information from sensors; providing online non-downloadable software for facilitating and analyzing the payment for products and services of others; providing online non-downloadable software for payment processing, analysis, transmission and verification; providing online non-downloadable construction project management software; providing online non-downloadable software for construction project progress tracking, risk management and reporting; providing online non-downloadable software for communicating with construction and construction safety professionals; providing online non-downloadable software for providing building and construction site safety and risk assessments; all of the foregoing for use in the construction and architecture industries

 

Class 45:         Safety inspection services for building construction sites; Safety consultation in the field of construction site inspection and assessment; Consulting in the field of workplace safety; Information services in the field of construction site and workplace safety

 

In the identification of goods and services, applicant must use the common commercial or generic names for the goods and services, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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 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. 

 

/Christopher M. Nunley/

Examining Attorney

Law Office 104

(571) 270-3782

Christopher.Nunley@uspto.gov 

 

 

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

 

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 November 23, 2020 for

U.S. Trademark Application Serial No. 90077338

 

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. 

 

 

/Christopher M. Nunley/

Examining Attorney

Law Office 104

(571) 270-3782

Christopher.Nunley@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 November 23, 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.”