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:  May 11, 2021

 

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:

 

• Refusal and potential refusal – Sec. 2(d) Likelihood of confusion with prior marks
• Requirement – Clarified identification of goods and services

 

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. 2203935, 4777759, 4022612, 5008280, 4140981, 4925941, 4722696, 3603741, 5018156, 5203311 and 6235074 .  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. 

 

The registered marks are:

 

1. Reg. No. 2203935 for ARCHER covering “airplanes”.

 

2. Reg. No. 4777759 for ARCHER covering “computer software for radiation transport simulations using Monte Carlo method”.

 

3. Reg. No. 4022612 for ARCHER covering “fonts, namely pre-recorded electronic and digital media featuring font typefaces, typeface designs and typographical ornaments; downloadable printing fonts”.

 

4. Reg. No. 5008280 for ARCHER covering, in relevant part, “Scientific and technological services and research and design related to oil and natural gas exploration and production; industrial analysis for oil-field exploitation and scientific research services; scientific and chemical analysis for oil-field exploitation; oil-well testing; geological surveys; engineering services; oil-field surveys; oil exploration.”

 

5. Reg. No. 4140981 for ARCHER covering “Computer software for managing risks and ensuring compliance in support of governance mandates” and “Professional services, namely, identifying and proposing technical solutions and technical support services, namely, business consultation for and implementation of business risk management and corporate compliance programs”.

 

6. Reg. No. 4925941 for ARCHER covering “Software as a service (SAAS) services featuring software for portfolio accounting, trade order management, performance measurement and data warehousing for separate account managers in the financial services industry.”

 

7. Reg. No. 4722696 for ARCHER covering, in part, “Software for processing real estate closing and title insurance transactions; Computer software for accessing information directories that may be downloaded from the global computer network; Computer software for application and database integration; Computer software for creating searchable databases of information and data; Computer software for use in customer relationship management; Computer software platforms for use in customer relationship management for use by the real estate industry; Computer software platforms for use in vendor management for use by the real estate industry; Computer software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface” and “Providing temporary use of non-downloadable computer software for use in connection with loan origination by loan originators and servicers; providing temporary use of non-downloadable computer software for loan default processing and management by lending professionals; information technology consulting services; home inspection services”.

 

8. Reg. No. 3603741 for ARCHER 3P LOGISTICS covering “Transportation logistics services, namely, arranging the transportation of goods for others”.

 

9. Reg. No. 5018156 for ARCHER THE WELL COMPANY covering, in part, “Scientific and technological services and research and design related to oil and natural gas exploration and production; industrial analysis for oil-field exploitation and scientific research services; scientific and chemical analysis for oil-field exploitation; oil-well testing; geological surveys; engineering services; oil-field surveys; oil exploration”.

 

10. Reg. No. 5203311 for SILENT ARCHER covering “A counter-unmanned aircraft system (UAS) for controlling radar and electronic warfare systems, comprised of computer hardware and software and which includes a camera and a 3-D user display all for providing spatial, frequency, and optical surveillance capabilities to detect, track, classify and identify the airborne threat as well as apply electronic methods to disrupt the UAS.”

 

11. Reg. No. 6235074 for ARCHER: DANGER PHONE covering “Downloadable software, namely, game software, computer game and video game software, downloadable computer game software, downloadable mobile application software used for playing electronic games and streaming audiovisual and multimedia content in the fields of games and entertainment; downloadable interactive game software, and downloadable computer software used for playing electronic games and streaming audiovisual and multimedia content in connection with animation; downloadable computer software featuring entertainment information in the field of animated content”.

 

The applicant's mark ARCHER is similar to the cited mark visually and phonetically given the shared presences of the word “ARCHER,” which comprises the sole or dominant element of each of the cited marks. 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).

 

Moreover, if the goods and/or services of the respective parties are "similar in kind and/or closely related," the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Determining likelihood of confusion is based on the description of the goods and/or 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)).  Here, the applicant's identification of software and software services is sufficiently ambiguous as to encompasses products and services which are highly similar to the more specifically described software and technology described in the cited registrations.  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 goods/services must be regarded as highly similar or 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, the goods and/or services of the parties 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.”  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.

 

Given the similarities of the marks and the goods, consumers are likely to conclude that the goods are somehow related or emanate from the same source.  Accordingly, because confusion is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.

 

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

 

Applicant also must note the following prior pending applications:

 

PRIOR-FILED APPLICATION(S)

 

The filing dates of pending U.S. Application Serial Nos. 88872711, 88757606 and 87447578 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.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods/services includes wording which is indefinite and must be clarified to ensure proper classification and to satisfy Office requirements for specificity and form. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods/services as indicated below.  See TMEP §1402.01.  If the goods/services have no common commercial or generic name, applicant must describe the product/service, its main purpose, and its intended uses.  See id.  In particular:

 

Class 9:

 

1. “Downloadable software and mobile applications” – The function/purpose of the software must be specified, e.g., “Downloadable software and mobile applications for {indicate function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use}”

 

2. “Downloadable software for operating and piloting vehicles” – The functionality of the software must be further specified, e.g., “Downloadable software for operating and piloting vehicles, namely, for vehicle navigation and control of self-driving and autonomous aircraft and land vehicles”.

 

3. “Navigation apparatus and instruments for vehicles” – The nature of the “instruments” must be further specified, e.g., “Navigation apparatus and instruments for vehicles in the nature of on-board computers”.

 

Class 42:

 

1. “Providing online non-downloadable software” – As with similar wording in Class 9, the function/purpose of the software must be specified,

 

2.  “Software as a service (SaaS) services” – The nature/function of the software must be specified.

 

3. “Providing online non-downloadable software for operating and piloting vehicles” – As with similar wording in Class 9, the function of the software must be further specified.

 

4. “Research and design in the fields of aircraft, air travel, and transportation services” – The subject matter of the research and design must be further specified.  The current wording could encompass services in more than one class, e.g., business research in the field of transportation services,” in Class 35. 

 

5. “Technical support services” – The wording is too broad and could encompass services in more than one class, e.g., “technical advice related to the repair of aircraft,” in Class 37.  Applicant must further specify the nature of the services.

 

Applicant may adopt the following wording, if accurate: 

 

“Downloadable software and mobile applications for (indicate function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use); Downloadable software for transportation logistics management; Downloadable software for accessing and booking transportation services; Downloadable communications software for transmitting and receiving electronic data, texts, images, and video; Downloadable software for the collection, editing, organizing, modifying, book marking, transmission, storage, and sharing of data and information; Downloadable software for geolocation tracking of vehicles and transportation passengers; Downloadable software for operating and piloting vehicles, namely, for vehicle navigation and control of self-driving and autonomous aircraft and land vehicles; Navigation apparatus and instruments for vehicles in the nature of on-board computers,” in Class 9

 

“Providing online non-downloadable software for (specify function); Software as a service (SaaS) services featuring software for (specify the function of the programs); Providing online non-downloadable software for transportation logistics management; Providing online non-downloadable software for accessing and booking transportation services; Providing online non-downloadable communications software for transmitting and receiving electronic data, texts, images, and video; Providing online non-downloadable software for the collection, editing, organizing, modifying, book marking, transmission, storage, and sharing of data and information; Providing online non-downloadable software for geolocation tracking of vehicles and transportation passengers; Providing online non-downloadable software for operating and piloting vehicles namely, for vehicle navigation and control of self-driving and autonomous aircraft and land vehicles; Research and design of computer software in the fields of aircraft, air travel, and transportation services; Technical support services, namely, troubleshooting of computer software problems; Design and development of software, vehicle navigation apparatus, and vehicle navigation equipment,” in Class 42.

 

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.

 

Advisory – Multi-class application requirements

 

The application identifies goods and/or services in more than two international classes; therefore, if the identification is amended to formally specify more than two classes, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only two class(es).  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.

 

If the applicant has any questions or needs assistance in responding to this Office action, please e-mail or telephone the assigned examining attorney.

 

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

 

 

/SMP/

Steven M. Perez

Trademark Attorney

Law Office 101

(571) 272-5888

steven.perez@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.  

 

• 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 May 11, 2021 for

U.S. Trademark Application Serial No. 90356075

 

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. 

 

 

/SMP/

Steven M. Perez

Trademark Attorney

Law Office 101

(571) 272-5888

steven.perez@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 May 11, 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.”