| To: | Natus Medical Incorporated (dpierron@uslegalteam.com) |
| Subject: | U.S. Trademark Application Serial No. 90185579 - DATALINK - 4735.01055 |
| Sent: | January 29, 2021 07:20:44 PM |
| Sent As: | ecom115@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 90185579
Mark: DATALINK
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Correspondence Address: |
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Applicant: Natus Medical Incorporated
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Reference/Docket No. 4735.01055
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: January 29, 2021
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.
1. Section 2(d) Refusal – 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. 3881888 and 4011401. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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.
In this case, applicant has applied to register DATALINK (Standard Characters) for “Computer software for syncing, storing, archiving and backing-up data to cloud servers; Computer software for managing, networking, collaborating within and providing remote access to databases.”
U.S. Registration No. 3881888 is DATALINX (Standard Characters) for “Computer software that provides web-based access to applications and services related to employment and background screening, specifically, background check results data, through a web operating system or portal interface.”
U.S. Registration No. 4011401 is DATALINK (Standard Characters) for “Computer services, namely, installation and hosting of software for use by businesses to manage and monitor their computer-based information systems and data center environments; IT consulting services in the nature of real-time performance reporting, managing and monitoring of data backup, data recovery, data storage, data capacity, data virtualization, and data center environment information.”
a. U.S. Registration No. 3881888
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).
Relatedness of the Goods and/or Services
In this case, the application uses broad wording to describe “Computer software for managing, networking, collaborating within and providing remote access to databases,” which presumably encompasses all software of the type described, including registrant’s more narrow “Computer software that provides web-based access to applications and services related to employment and background screening, specifically, background check results data, through a web operating system or portal interface.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s computer software goods and/or services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, applicant’s software goods and/or services have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers” as registrant’s software. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and/or services are related.
b. U.S. Registration No. 4011401
Comparison of the Marks
In the present case, applicant’s mark is DATALINK, in standard characters, and registrant’s mark is DATALINK, also in standard characters. 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.
Where the marks of the respective parties are 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).
Relatedness of the Goods and/or Services
In this case, the application uses broad wording to describe “Computer software for syncing, storing, archiving and backing-up data to cloud servers; Computer software for managing, networking, collaborating within and providing remote access to databases,” which presumably encompasses all software of the type described, including registrant’s more narrow “Computer services, namely, installation and hosting of software for use by businesses to manage and monitor their computer-based information systems and data center environments.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s computer software goods and/or services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, applicant’s software goods and/or services have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers” as registrant’s software services. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and/or services are related.
2. Section 2(e)(1) Refusal - Merely Descriptive
Registration also is refused because the applied-for mark merely describes the function or use of applicant’s computer software goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
A mark is merely descriptive if it describes a quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
In this case, applicant has applied to register DATALINK (Standard Characters) for “Computer software for syncing, storing, archiving and backing-up data to cloud servers; Computer software for managing, networking, collaborating within and providing remote access to databases.”
“Data” is “information in digital form that can be transmitted or processed.” See the attached excerpt from http://www.merriam-webster.com/dictionary/data. The word “data” appears in applicant’s identification, i.e., “Computer software for syncing, storing, archiving and backing-up data to cloud servers; Computer software for managing, networking, collaborating within and providing remote access to databases” [emphasis added]. A “link” is “a connecting element or factor.” See the attached excerpt from http://www.merriam-webster.com/dictionary/link.
The wording as a whole is merely descriptive because the function or purpose of applicant’s computer software is to allow users to connect to data, data systems, and/or databases in order to synchronize, store, archive, and back-up data to cloud servers and to manage, network, collaborate within and provide remote access to databases. The software provides a “link” to “data.” Thus, the wording “data link” is merely descriptive of the function or use of the software.
When descriptive terms are combined, the determination of whether the composite mark also has a descriptive significance turns upon the question of whether the combination of terms evokes a new and unique commercial impression. TMEP §1209.03(d). If each component retains its descriptive significance in relation to the goods and/or services, as is the case here, the combination results in a composite that is itself descriptive. Duopross Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753 (Fed. Cir. 2012); In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004); In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111–1112 (Fed. Cir. 1987).
Section 2.61(b) Information Request
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.;
(2) If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ. If the goods and/or services feature new technology and information regarding competing goods and/or services is not available, applicant must provide a detailed factual description of the goods and/or services. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement.; and
(3) Applicant must respond to the following questions: Will applicant’s computer software provide a connection to data, data systems and/or databases? For what purposes will the computer software be used? Do applicant’s competitors use the term “data link” to advertise similar computer software? Who is the typical consumer of applicant’s computer software?
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
Section 1(b) Applications NOT Eligible for Registration on the Supplemental Register
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Applicant is advised, however, that amending the application to the Supplemental Register will not overcome the Section 2(d) likelihood of confusion refusal explained in section 1 above.
Identification and Classification of Services and/or Goods
b. 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.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that may be classified in two classes; however, applicant submitted a fee sufficient for only one class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
d. Applicant may adopt the following identification of services in International Class 42, if accurate: Providing on-line non-downloadable software for syncing, storing, archiving and backing-up data to cloud servers; Providing on-line non-downloadable software for managing, networking, collaborating within and providing remote access to databases. See TMEP §1402.01.
e. If applicant adds International Class 9 to the application, it may adopt the following identification of goods in that class, if accurate: {Indicate “Downloadable” or “Recorded”} computer software for syncing, storing, archiving and backing-up data to cloud servers; {Indicate “Downloadable” or “Recorded”} computer software for managing, networking, collaborating within and providing remote access to databases.
How to respond. Click to file a response to this nonfinal Office action.
If applicant has any questions or needs assistance in responding to this Office action, please call or email the assigned examining attorney.
A prompt response to this Office action will expedite the handling of this matter.
/Barbara A. Gaynor/
Barbara A. Gaynor
Trademark Examining Attorney
Law Office 115
571-272-9164
Barbara.Gaynor@uspto.gov
RESPONSE GUIDANCE
