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 25, 2022

 

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:

• Section 2(d) Refusal – Likelihood of Confusion
• Advisory: Prior-Filed Applications
• 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. 6605605 and 2574796.  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).  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, applicant has applied to register the mark UAD SPARK in standard characters for “Downloadable computer software; downloadable audio and music computer software; downloadable cloud-based software; downloadable cloud-based software for audio recording; downloadable computer software for processing digital music files; downloadable computer software for manipulating digital audio information for use in audio media applications; downloadable computer software and firmware for downloading and organizing music files; downloadable computer software for creating and editing music and sounds; downloadable software to control and improve audio equipment sound quality; downloadable computer software for controlling the operation of audio and video devices” in Class 9 and “Providing non-downloadable computer software; providing non-downloadable audio and music computer software; providing temporary use of non-downloadable cloud-based software; providing temporary use of non-downloadable cloud-based software for audio recording; providing temporary use of non-downloadable computer software for recording music; providing temporary use of non-downloadable computer software for processing digital music files; providing temporary use of non-downloadable computer software for manipulating digital audio information for use in audio media applications; providing temporary use of non-downloadable computer software and firmware for downloading and organizing music files; providing temporary use of non-downloadable computer software for creating and editing music and sounds; providing temporary use of non-downloadable software to control and improve audio equipment sound quality; providing temporary use of non-downloadable computer software for controlling the operation of audio and video devices” in Class 42. 

 

The mark in Registration No. 6605605 is SPRK in standard characters for goods and services including “Downloadable computer software used for talent search, talent management and talent monitoring in the field of music; downloadable computer software to enable tagging, spot managing, displaying profile information and audio-visual media content, and analytical information over the Internet; downloadable computer software used for transmission of music; downloadable computer application software used for transmission of music; downloadable software applications, namely, downloadable computer application software used for transmission of music; downloadable computer software for streaming, sharing, distributing, transmitting and delivering audio-visual media content via the internet; mobile applications, namely, downloadable computer application software used for transmission of music; downloadable media streaming software used for transmission of music; media content, namely, downloadable music files; downloadable computer software to enable uploading, posting, showing, displaying, tagging, blogging, sharing, and providing electronic media and information over the Internet or other communications networks; downloadable music sound recordings; downloadable video recordings featuring musicians' performances and music artists' videos in the field of music; downloadable electronic publications, namely, downloadable magazines, blogs and articles in the field of music” in Class 9.

 

And the mark in Registration No. 2574796 is SPARKS in typed drawing form for “computer software for creating, editing and compositing special effects and editing visual and audio data” in Class 9.

 

Similarity 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).

 

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).

 

Here, applicant’s mark and both of the registered marks contain the word SPARK.  The only difference in this wording is Registration No. 6605605 has removed the “A” in the middle of the word, and Registration No. 2574796 has included a letter “S” at the end of the word.  However, this only alters the sound and appearance of the word slightly.  Therefore, the marks are similar in sound and appearance.

 

Also, the only other wording in applicant’s mark is the house mark UAD.  Adding a house mark to an otherwise confusingly similar mark will not obviate a likelihood of confusion under Section 2(d).  See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007) (finding CLUB PALMS MVP and MVP confusingly similar); In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE DIOR and CACHET confusingly similar); TMEP §1207.01(b)(iii).  It is likely that goods and/or services sold under these marks would be attributed to the same source.  See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007).  Accordingly, in the present case, the marks are confusingly similar.

 

Moreover, the marks convey the same commercial impression, as SPRK and SPARKS could be viewed as merely the shortened version of the UAD SPARK brand.  Therefore, the differences between the marks do not obviate the similarities between the marks, as the marks convey an overall similar commercial impression.

 

Because the marks look and sound similar and create the same commercial impression, they are considered similar for likelihood of confusion purposes.

 

Relatedness of Goods and 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).

 

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)).  

 

In this case, the application uses broad wording to describe its “Downloadable computer software” and “downloadable audio and music computer software,” which presumably encompasses all goods of the type described, including Registration No. 6605605’s more narrow “Downloadable computer software used for talent search, talent management and talent monitoring in the field of music; downloadable computer software to enable tagging, spot managing, displaying profile information and audio-visual media content, and analytical information over the Internet; downloadable computer software used for transmission of music; downloadable computer application software used for transmission of music; downloadable software applications, namely, downloadable computer application software used for transmission of music; downloadable computer software for streaming, sharing, distributing, transmitting and delivering audio-visual media content via the internet; mobile applications, namely, downloadable computer application software used for transmission of music; downloadable media streaming software used for transmission of music; media content, namely, downloadable music files; downloadable computer software to enable uploading, posting, showing, displaying, tagging, blogging, sharing, and providing electronic media and information over the Internet or other communications networks.”  And Registration No. 2574796 uses broad wording to describe its “computer software for…editing…audio data,” which presumably encompasses applicant’s more narrow “downloadable computer software for…editing music and sounds.”  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 registrants’ goods are legally identical in part.  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)).

 

The examining attorney also relies on the identification of goods and services in the present application to show relatedness of registrants’ goods to applicant’s goods and services.  Applicant itself identifies various downloadable and non-downloadable audio manipulation and processing software together with its downloadable computer software and sound editing software. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (Board erred in finding that there was insufficient evidence of relatedness, “because the Board did not consider the important evidence already before it, namely the ITU application and [opposer’s multiple] registrations”). See TMEP §1207.01(a)(vi).  Thus, applicant’s and registrants’ goods and services are considered related for likelihood of confusion purposes.

 

Because the marks are similar and the goods and services are related, there is a likelihood of confusion as to the source of applicant’s goods and services.  Therefore, applicant’s mark must be refused under Section 2(d) of the Trademark Act.

 

ADVISORY: PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 90005982, 87768924, and 79327707 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.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identifications for “Downloadable computer software; downloadable audio and music computer software; downloadable cloud-based software” in Class 9 and “Providing non-downloadable computer software; providing non-downloadable audio and music computer software; providing temporary use of non-downloadable cloud-based software” in Class 42 are indefinite and must be clarified to specify the purpose or function of the software and its content or field of use, if content- or field- specific.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Also, the identification for “Providing non-downloadable computer software; providing non-downloadable audio and music computer software” in Class 42 is indefinite and too broad and must be clarified to specify whether the format is recorded or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Recorded software goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).

 

Applicant may substitute the following wording, if accurate:

 

Class 9: Downloadable music-composition computer software; downloadable audio and music computer software for composing music; downloadable cloud-based music-composition software; downloadable cloud-based software for audio recording; downloadable computer software for processing digital music files; downloadable computer software for manipulating digital audio information for use in audio media applications; downloadable computer software and firmware for downloading and organizing music files; downloadable computer software for creating and editing music and sounds; downloadable software to control and improve audio equipment sound quality; downloadable computer software for controlling the operation of audio and video devices

 

Class 42: Providing online non-downloadable music-composition computer software; providing online non-downloadable audio and music computer software for composing music; providing temporary use of non-downloadable cloud-based music-composition software; providing temporary use of non-downloadable cloud-based software for audio recording; providing temporary use of non-downloadable computer software for recording music; providing temporary use of non-downloadable computer software for processing digital music files; providing temporary use of non-downloadable computer software for manipulating digital audio information for use in audio media applications; providing temporary use of non-downloadable computer software and firmware for downloading and organizing music files; providing temporary use of non-downloadable computer software for creating and editing music and sounds; providing temporary use of non-downloadable software to control and improve audio equipment sound quality; providing temporary use of non-downloadable computer software for controlling the operation of audio and video devices

 

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.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

ASSISTANCE

 

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.

 

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

 

 

/Maureen Reed/

Examining Attorney

Law Office 115

571-272-0851

maureen.reed@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 25, 2022 for

U.S. Trademark Application Serial No. 97264459

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 to ensure you receive important USPTO notices about your application.

 

·       Beware of trademark-related scams.  Protect yourself from people and companies that may try to take financial advantage of you.  Private companies may call you and pretend to be the USPTO or may send you communications that resemble official USPTO documents to trick you.  We will never request your credit card number or social security number over the phone.  And all official USPTO correspondence will only be emailed from the domain “@uspto.gov.”  Verify the correspondence originated from us by using your Serial Number in our database, TSDR, to confirm that it appears under the “Documents” tab, or contact the Trademark Assistance Center.

 

·       Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.