United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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:  April 27, 2021

 

 

PRIORITY ACTION

 

 

Applicant must address issues shown below.  On April 22, 2021, the examining attorney and Chrissy Milanese, Esq., discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

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.

 

The term “TMEP” refers to the USPTO’s Trademark Manual of Examining Procedure, a manual written by USPTO trademark attorneys that explains the laws and procedures applicable to the trademark application, registration, and post-registration processes.  The USPTO updates the TMEP periodically to reflect changes in law, policy, and procedure. 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

In regard to applicant’s “technical support services, namely, troubleshooting in the nature of diagnosing problems with computer systems, computer networks, and software applications; computer system, computer network, and software application consulting services; computer security consultancy; maintenance of computer software relating to computer security and prevention of computer risks; providing information in the fields of technology; providing technology information in the fields of computers, software, applications, and computer peripherals” in International Class 42, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5075248.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

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 

 

Applicant’s mark is SENTRY.  Registrant’s mark is SENTRYCLOUD.

 

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).

 

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).

 

Applying the above analysis, the marks are substantially similar in appearance, sound, connotation, and commercial impression.  Applicant's mark is the word "SENTRY" which is identical to the first part and recognizable and dominant portion of the registered mark. 

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

 

In the instant case, it is appropriate to give more weight to the "SENTRY" portion of registrant's mark because of the descriptive nature of the word "CLOUD" in relationship to the field of information technology.   See attached website excerpt from http://pc.net/glossary/definition/cloud_computingwww.thefreedictionary.com [“Cloud computing is a general term used to describe Internet services.”].

 

Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

Here, the first word in registrant’s mark is the term “SENTRY”.  As such, more weight is given to this term.

 

 

Even if potential purchasers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in sound, appearance, connotation, and commercial impression in the respective marks, that applicant's services rendered under its proposed mark constitute a new or additional type of service from the same source as the services rendered under the registered mark with which they are acquainted or familiar, and that applicant’s mark is merely a variation of, or derivative of, the registrant’s mark.  See, e.g., SMS, Inc. v. Byn-Mar Inc. 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer's preexisting mark [ANDREA SIMONE] for its established line of clothing.”); In re Comexa Ltda., 60 USPQ2d 1118 (TTAB 2001) (applicant’s use of term “AMAZON” and parrot design for chili sauce and pepper sauce is likely to cause confusion with registrant’s “AMAZON” mark for restaurant services).

 

Comparison of the Services

 

Applicant’s services include “technical support services, namely, troubleshooting in the nature of diagnosing problems with computer systems, computer networks, and software applications; computer system, computer network, and software application consulting services; computer security consultancy; maintenance of computer software relating to computer security and prevention of computer risks; providing information in the fields of technology; providing technology information in the fields of computers, software, applications, and computer peripherals”.  Registrant’s services are “IT consulting services; IT integration services”.

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

In the present case, applicant’s services are closely related to registrant’s services because they are complementary computer technology services often rendered by the same sources under the same marks.

 

The attached Internet evidence, consisting of computer services companies offering IT consulting or integration services along with a wide range of computer services such as technical support services, troubleshooting and maintenance of software issues, and computer security consultation, establishes that the same entity commonly provides the relevant services and markets the services under the same mark, the relevant services are provided through the same trade channels and used by the same classes of consumers in the same fields of use and/or the services are similar or complementary in terms of purpose or function.  Thus, applicant’s and registrant’s 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).

 

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar services as those of both applicant and registrant in this case.  This evidence shows that the services listed therein, namely (1) IT consulting and/or integration services and (2) technical support services, troubleshooting and maintenance of software issues, computer security consultation, and/or providing technology information, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

It is noted that the attached third party registrations are representative of a larger number of similar registrations. 

 

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).

 

For the above reasons, there is a likelihood of confusion, and registration is refused pursuant to Section 2(d) of the Trademark Act. 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

THIS REFUSAL APPLIES TO PARTICULAR SERVICES ONLY

 

The stated refusal refers to the following services in International Class 42 and does not bar registration for the other goods and services:  "technical support services, namely, troubleshooting in the nature of diagnosing problems with computer systems, computer networks, and software applications; computer system, computer network, and software application consulting services; computer security consultancy; maintenance of computer software relating to computer security and prevention of computer risks; providing information in the fields of technology; providing technology information in the fields of computers, software, applications, and computer peripherals.”

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the services to which the refusal pertains; or

 

(2)  Filing a Request to Divide Application form (form #3) to divide out the goods and services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).

  

In response to a refusal or requirement that pertains only to certain classes, goods, and/or services, an applicant may file a request to divide the application (form # 3) into two or more separate applications so that any acceptable classes, goods, and/or services may be transferred to the divided out application(s) and proceed toward registration.  See 37 C.F.R. §2.87; TMEP §1110 et seq.  Any outstanding deadline in effect at the time the application is divided will generally apply to each new divided out application.  See 37 C.F.R. §2.87(e); TMEP §1110.05 (see list of exceptions).

 

There is a fee for each new application created.  See 37 C.F.R. §§2.6(a)(19)(ii), 2.87(b); TMEP §1110.04.  And if dividing out some, but not all, of the goods or services within a class, an additional application filing fee will be required for each new separate application created by the division.  37 C.F.R. §§2.6(a)(1)(i)-(iii), 2.87(b); TMEP §1110.02. 

 

CLOSING

 

 

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. 

 

 

 

EXAMINER’S AMENDMENT

 

Application has been amended as shown below.  As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below.  Please notify the examining attorney immediately of any objections.  TMEP §707.  In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted.  37 C.F.R. §2.71(a).

 

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES

 

 

The identification of goods and services is amended to read as follows: 

 

 

Class 9:

 

 

Mobile application software for use in computer system, computer network, and software application performance management and optimization; mobile application software for the collection, monitoring, editing, organizing, integration, analysis, transmission, storage and management of data and information; mobile application software for detecting, aggregating, synthesizing, managing, diagnosing, and reporting operational statistics, coding errors, and exceptions in computer systems, computer networks, and software applications; mobile application software development tools; mobile application software for customer relationship management; mobile application software for operational intelligence, business analytics, security information, troubleshooting, and monitoring of software applications and computing infrastructure; downloadable software for use in computer system, computer network, and software application performance management and optimization; downloadable software for the collection, monitoring, editing, organizing, integration, analysis, transmission, storage and management of data and information; downloadable software for detecting, aggregating, synthesizing, managing, diagnosing, and reporting operational statistics, coding errors, and exceptions in computer systems, computer networks, and software applications; data synchronization software; downloadable software development tools; downloadable software for customer relationship management; downloadable software for operational intelligence, business analytics, security information, troubleshooting, and monitoring of software applications and computing infrastructure

 

 

Class 42:

 

 

Providing temporary use of on-line non-downloadable software for use in computer system, computer network, and software application performance management and optimization; providing temporary use of on-line non-downloadable software for the collection, monitoring, editing, organizing, integration, analysis, transmission, storage and management of data and information; providing temporary use of on-line non-downloadable software for detecting, aggregating, synthesizing, managing, diagnosing, and reporting operational statistics, coding errors, and exceptions in computer systems, computer networks, and software applications; providing temporary use of on-line non-downloadable software for data synchronization; providing temporary use of on-line non-downloadable software development tools; providing temporary use of on-line non-downloadable software to log, capture and aggregate computer errors and exceptions in computer systems; providing temporary use of on-line non-downloadable software that allows users to enter, access, and synthesize information and generate reports for use in monitoring computer errors; providing temporary use of on-line non-downloadable software for customer relationship management; software as a service (SAAS) services featuring software for providing operational intelligence, business analytics, security information, troubleshooting, and monitoring of software applications and computing infrastructure; computer services, namely, machine data management services in the nature of electronically collecting, monitoring and analyzing data generated by software applications, computer systems, and computer networks; technical support services, namely, troubleshooting in the nature of diagnosing problems with computer systems, computer networks, and software applications; computer system, computer network, and software application consulting services; computer security consultancy; maintenance of computer software relating to computer security and prevention of computer risks; providing information in the fields of technology; providing technology information in the fields of computers, software, applications, and computer peripherals

 

 

See TMEP §§1402.01, 1402.01(e).

 

 

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

 

 

/Douglas M. Lee/

Trademark Examining Attorney

Law Office 129

U.S. Patent and Trademark Office

571-272-9343

douglas.lee4@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 April 27, 2021 for

U.S. Trademark Application Serial No. 90312168

 

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. 

 

 

/Douglas M. Lee/

Trademark Examining Attorney

Law Office 129

U.S. Patent and Trademark Office

571-272-9343

douglas.lee4@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 April 27, 2021, 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.”