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:  September 12, 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:

• Likelihood of Confusion
• Prior Pending Application
• Description of Goods/Services

 

Likelihood of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 6211363.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

This bar to registration applies to classes 9, 37, 38, 41 and 42 only.

 

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. 

 

Here, the marks are identical.  Applicant has taken registrant’s POWERING POSSIBILITIES mark.

 

Next, the goods and services are related.  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).

 

Here, registrant provides retail services featuring products including computer hardware, computer software, business machines and telephones.

 

In class 9 applicant provides various software products as well as certain cables and computer hardware goods.  Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  TMEP §1207.01(a)(ii); see In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (finding retail shops featuring sports team related clothing and apparel related to various clothing items, including athletic uniforms); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (finding retail grocery and general merchandise store services related to furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (finding distributorship services in the field of health and beauty aids related to skin cream); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (finding refinishing of furniture, office furniture, and machinery related to office furniture and accessories).  The attached third party web pages from Micro Center show that it is common for providers of computer retail services such as provided by registrant to also provide software goods and items such as cables and computer hardware under the same marks and through the same channels of trade.  Thus, the goods and services are related.

Further, the third party web pages from Micro Center show that providers of computer related retail, such as provided by registrant, also commonly provide class 37 type repair of computer hardware (which may be used in VoIP, telecommunications and security) as well as class 42 type computer services such as data recovery and technical support for technology including related to malware and viruses, under the same marks and through the same channels of trade.  The evidence indicates that the services of the parties are related in classes 42 and 37. 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).

 

Furthermore, it is common for retail providers of telephones, such as registrant, to also provide class 38 telecommunications services as well as class 42 IT support services and class 41 programming guides and content such as provided by applicant.   See the attached pages from the Verizon website.  Thus, the services of the parties are related in classes 38, 41 and 42.

 

The marks are identical.  The goods and services are related.  Thus, there is a likelihood of confusion and registration must be denied.

 

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

 

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

 

Prior Pending Application

The filing date of pending U.S. Application Serial No. 88692335 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.

 

Identification of Goods/Services

Certain wording in the identification of goods/services is indefinite and must be clarified.  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 and services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.  Applicant may amend the description as follows:

 

Class 9

“Downloadable cloud-based software used to back up business data; downloadable cloud-based software used to share business data; downloadable cloud-based software used to send and manage secure documents; downloadable cloud-based software used to manage, secure and protect computer networks; downloadable cloud-based software used to create and transmit documents with electronic signatures; downloadable cloud-based software used to manage telephone systems; downloadable cloud-based software used to manage advanced telephone features; downloadable cloud-based software used to provide web conferencing; downloadable cloud-based software used to monitor business security systems; downloadable cloud-based software used to detect and remediate computer viruses, worms, trojans, spyware, adware, malware and unauthorized data and programs; high-definition multimedia interface cables;” is acceptable.

 

The specific items of hardware and “components” in “Ethernet and wireless networking hardware and computer hardware and components thereof” must be defined.  Applicant may state  “Ethernet and wireless networking hardware, namely, routers, transceivers, repeaters, controllers, switches, adapters and cables;  and computer hardware and components thereof, namely, computer microchips and computer memories.”

 

Class 37

“… and installation, repair and maintenance of telecommunications equipment” is acceptable.  

 

“Installation, repair and maintenance of business security systems; installation, repair and maintenance voice over internet protocol (VoIP) systems;” is unacceptable as such systems may include software.  Repair of software is a class 42 activity.  In class 37 applicant may state “Installation, repair and maintenance of hardware and equipment for business security systems; installation, repair and maintenance of voice over internet protocol (VoIP) systems, namely, hardware and equipment used in VoIP;”

 

Class 38

“Providing high-speed access to the Internet, mobile networks, wired and wireless networks and other electronic communications networks; telecommunication access services; telecommunications gateway services; wireless broadband communication services; wireless broadband telecommunications services; telecommunications services, namely, voice, video, and data transmissions provided through the use of cable television distribution facilities; telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of wireless communication networks; high-speed electronic data interchange services provided via modems, hybrid fiber coaxial cable networks, routers, and servers; electronic, local and long distance transmission of voice, data, and graphics by means of cable, telephone, wireless, ISDN, and technologies; telephone communication services; providing voice communications services via cable, fiber optics, the internet, wired and wireless networks, mobile networks and other electronic communications networks; providing fiber optic network services; Voice over Internet Protocol (VoIP) services;” is acceptable.

 

The activities involved in “Cable television services;” must be defined. Applicant may state “cable television services, namely, broadcasting and streaming video.” 

 

“cable television broadcasting services; cable television transmission services; providing access to telecommunication networks; provision of telecommunication access to video and audio content via video-on-demand, interactive television, pay per view, and pay television subscription services; video-on-demand transmission services; video conferencing services; wireless PBX services; cloud-based PBX services; streaming of video and audio material via the Internet, wired and wireless networks, mobile networks and other electronic communications networks; telecommunications services, namely, providing advanced calling features and leasing or rental of telecommunications equipment; leasing or rental of telecommunications equipment; computer network access services by means of a metro Ethernet; electronic transmission and streaming of digital media content for others via the Internet, wired and wireless networks, mobile networks and other electronic communications networks; cloud-based communications services in the nature of instant messaging, telephony, audio and video conferencing, screen sharing, file transfer, call control and management, voice mail, e-mail, SMS and facsimile services; providing wireless hot spots;….and providing telephone conference services” is acceptable.

 

“cloud computing services, namely, cloud computing provider services for general storage of data;” is too broad and likely indicates class 42 services.  Applicant may state “Class 42--cloud computing services, namely, cloud hosing provider services for general storage of electronic data;”  

 

Class 41

“Distribution of programming to cable television systems, cable multiple-system operators, and multichannel video programming distributors; provision of non-downloadable films, movies, television programs and other video and audio material via an online video-on-demand service; providing audio-visual media content in the fields of news, entertainment, sports, comedy, drama, music, and music videos via an online video-on-demand service; entertainment services, namely, providing digital media content via cable television, Internet protocol television (IPTV), the Internet, mobile networks, wired and wireless networks, mobile networks, fiber-optic networks, and other electronic communications networks on a wide variety of topics and subjects; providing a non-downloadable interactive resource for searching, selecting, managing, and recording television programming;” is acceptable.

 

“providing non-downloadable programming guides on the subjects of films, movies, videos, television programming and music tailored to viewers' programming preferences” is unclear as provision of television guides may occur in a class other than 41 such as “transmission” services in class 38.  It appears that applicant is providing an information service in class 41.  Applicant may amend the wording to state “Class 41--providing entertainment information, namely, providing non-downloadable programming guides featuring broadcast schedules on the subjects of films, movies, videos, television programming and music tailored to viewers' programming preferences;”

 

“and digital video recording (DVR) services” is acceptable.

 

Class 42

“Computer services, namely, cloud hosting provider services; computer technology support services, namely, help desk service; consulting services in the field of cloud computers; providing virtual computer systems and virtual computer environments through cloud computing;” is acceptable in class 42.

 

“data recovery services;” must be defined further and may be stated “class 42--computer services, namely, data recovery services.”

 

“technical consulting services in the field of datacenter architecture, public and private cloud computing solutions and evaluation and implementation of internet technology and servicestechnical support services, namely, remote and on-site infrastructure management services for monitoring, administration and management of private cloud computing IT and application systems; computer services, namely, on-line scanning, detecting, quarantining and eliminating of viruses, worms, trojans, spyware, adware, malware and unauthorized data and programs on computers and electronic devices; providing temporary use of on-line non-downloadable cloud computing software for use in storage of data, use in database management, accessing and using a cloud computing network;” is acceptable in class 42.

 

“providing Ethernet connections to cloud service providers;” is too broad and likely indicates a class 38 service rather than 42.  Applicant may state “Class 38-- providing Ethernet connections to cloud service providers in the nature of providing telecommunications connections to cloud service providers.

 

“providing temporary use of non-downloadable software for monitoring surveillance video; providing temporary use of non-downloadable computer database software for submission and remote management of surveillance video content through computers, smartphones, and tablets for commercial buildings and offices; providing temporary use of non-downloadable software for managing, reporting and trouble-shooting video surveillance systems for commercial buildings and offices; and providing temporary use of non-downloadable software that enables users to securely transmit and store surveillance video content” is acceptable in class 42.

 

Class 45

“Business security monitoring using video cameras and motion detectors; business security monitoring using high-definition cameras with night vision capability, motion detectors, high-definition multimedia interface cables and cloud-based transmission and storage of security videos; providing security surveillance of premises for businesses;” is acceptable in class 45.

 

“Providing temporary use of non-downloadable software to connect web enabled devices with video surveillance security cloud networks to permit users to access, stream and share live surveillance video content;” is a class 42 service.  Applicant must move the services to class 42.

 

“computer services, namely, providing a web-based system and online portal for customers to remotely monitor business premises” is too broad and likely indicates class 42 services.  Applicant may state “Class 42--Providing a web site featuring technology that enables customers to remotely monitor business premises.”

 

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.

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

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

 

 

/Daniel F. Capshaw/

Daniel F. Capshaw

Examining Attorney

Law Office 110

571-272-9356

daniel.capshaw@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 September 12, 2021 for

U.S. Trademark Application Serial No. 90621133

 

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. 

 

 

/Daniel F. Capshaw/

Daniel F. Capshaw

Examining Attorney

Law Office 110

571-272-9356

daniel.capshaw@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 September 12, 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.”