United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  April 08, 2022

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on February 28, 2022.

 

In a previous Office action dated August 26, 2021, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.

 

The trademark examining attorney maintains and now makes FINAL the refusals in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

·         Section 2(d) Refusal – Likelihood of Confusion

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration Nos. 3184203, 3567083, and 6418702.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

Applicant seeks to register AKTIFY in standard characters for “Software as a service (SAAS) services featuring software using artificial intelligence for generating deep learning models in the field of identifying interested sales prospects, automating the follow-up with sales prospects, and delivering inbound phone calls” in Class 42.

 

U.S. Registration No. 3184203 is ACTIFI in standard characters for “Application service provider (ASP) featuring software for workflow automation; ASP featuring software for integrating various computer systems and software packages; ASP featuring software for managing and processing client financial information; computer services, namely, computer software consultation, computer systems integration, database management and software design for others” in Class 42.

 

U.S. Registration No. 3567083 is ACTIFI ROADMAP in standard characters for “Application Service Provider (ASP) that provides online interactive strategic/business planning resources” in Class 42.

 

U.S. Registration No. 6418702 is ACTIFI SUCCESSPRO in standard characters for “temporary use of non-downloadable software used to specify methods, define rules, and construct customized computer programs in the field of workflow automation, to integrate other computer systems and software packages, and to develop methods to automate processes, practices, and procedures in the field of tools for professionals to manage and process client financial information” in Class 42.

 

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. 

 

Similarity of the Marks

 

Applicant argues the marks are different because the marks in the cited registrations contain the wording FI, and applicant argues FI is a reference to “financial industry.”

 

Applicant seeks to register AKTIFY in standard characters. U.S. Registration No. 3184203 is ACTIFI in standard characters. U.S. Registration No. 3567083 is ACTIFI ROADMAP in standard characters. U.S. Registration No. 6418702 is ACTIFI SUCCESSPRO in standard characters.

 

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).

 

Here, the applicant’s mark AKTIFY and the wording in the registrant’s marks, namely, ACTIFI are essentially phonetic equivalents and thus sound similar. Moreover, there is no correct pronunciation of a mark; thus, consumers may pronounce a mark differently than intended by the mark owner.  See In re Viterra, Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012) (citing Interlego AG v. Abrams/Gentile Entm’t, Inc., 63 USPQ2d 1862, 1863 (TTAB 2002)); TMEP §1207.01(b)(iv). In the present case, the wording ACTIFI and AKTIFY could clearly be pronounced the same. Such similarity in sound alone may be sufficient to support a finding that the compared marks are confusingly similar.  In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007) (citing Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732, 156 USPQ 523, 526 (C.C.P.A. 1968)); TMEP §1207.01(b)(iv). In this case, the wording sounds similar and would leave a consumer with the commercial impression that the services provided originate from the same source. Therefore, the marks are confusingly similar.

 

With respect to U.S. Registration Nos. 3567083 and 3567083, the wording ACTIFI is the first word in both marks. 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”). In this case, the wording ACTIFI is the first word in both registered marks; therefore, the wording is considered the dominant portion of both marks. Therefore, the dominant portion of U.S. Reg. Nos. 3567083 and 3567083 is phonetically equivalent to the applicant’s mark, creating a highly similar commercial impression that would lead consumers to believe the services originate from the same source. Thus, the marks are confusingly similar.

 

Applicant argues the wording FI in the registrant’s marks stands for “financial industry,” thus differentiating the applicant’s mark from the registrant’s mark. However, the significance of the wording FI, which appears at the end of the wording ACTIFI, has no bearing on the likelihood of confusion by the average consumer. Specifically, applicant has provided no arguments demonstrating that FI is the dominant portion of the registered marks nor has the applicant provided arguments showing that FI creates a separate and significant commercial impression in the registered marks. Moreover, as discussed above, the wording AKTIFY and ACTIFI are phonetic equivalents. Therefore, applicant’s argument regarding the significance of the wording FI is unpersuasive.

 

Because the marks share phonetically equivalent wording and create a highly similar commercial impression, the marks are considered similar for likelihood of confusion purposes.

 

Relatedness of the Services

 

Applicant argues that the services are not related because the applicant’s services serve a different function than the registrant’s services.

 

Applicant has applied for “Software as a service (SAAS) services featuring software using artificial intelligence for generating deep learning models in the field of identifying interested sales prospects, automating the follow-up with sales prospects, and delivering inbound phone calls” in Class 42.

 

The services for U.S. Registration No. 3184203 are “Application service provider (ASP) featuring software for workflow automation; ASP featuring software for integrating various computer systems and software packages; ASP featuring software for managing and processing client financial information; computer services, namely, computer software consultation, computer systems integration, database management and software design for others” in Class 42.

 

The services for U.S. Registration No. 3567083 are “Application Service Provider (ASP) that provides online interactive strategic/business planning resources” in Class 42.

 

The services for U.S. Registration No. 6418702 are “temporary use of non-downloadable software used to specify methods, define rules, and construct customized computer programs in the field of workflow automation, to integrate other computer systems and software packages, and to develop methods to automate processes, practices, and procedures in the field of tools for professionals to manage and process client financial information” in Class 42.

 

The 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 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).

 

The previously attached Internet evidence, consisting of website screenshots from Salesforce, HubSpot, and Pipedrive, and the newly attached evidence from SalesLoft and Freshworks, establishes that the same entity commonly manufactures, produces, or provides the relevant services and markets the services under the same mark. Specifically, entities that provide business software for sales also provide business-related solutions and products, including apps that are engineered to integrate with external software and that are customizable with a user’s preferences. Thus, applicant’s and registrant’s services are considered highly 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).

 

With respect to applicant’s argument that the applicant and registrant provide services with different functionalities, services do not have to be identical to be considered related. Services 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). As shown by the previously and newly attached evidence and the discussion above, the applicant and registrant provide services that are commonly provided by the same entity. Therefore, applicant’s argument is unpersuasive.

 

The applicant’s and registrant’s services are often provided by the same entity; therefore, they are considered related for the purposes of the likelihood of confusion analysis.

 

Conclusion

 

Because the marks are similar and the services are related, there is a likelihood of confusion as to the source of applicant’s services.

 

Applicant’s response did not overcome the refusal because the marks are similar and the services are considered related for the purposes of the likelihood of confusion analysis. The overriding concern is not only to prevent buyer confusion as to the source of the 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).

 

In view of the foregoing, the refusal to register under Section 2(d) of the Trademark Act is continued and made FINAL.

 

RESPONSE GUIDANCE

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)        A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)        An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Alexis L. Santiago/

Alexis L. Santiago

Examining Attorney

Law Office 104

571-272-4726

Alexis.Santiago@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.