*85255200* - Ttabvue.uspto.gov

To: Metalogix International GmbH (kathleen@ansarilaw.com) Subject: U.S. TRADEMARK APPLICATION NO. 85255200 - METALOGIX - N/A Sent: 3/14/2013 12:13:23 PM Sent As: ECOM112@USPTO.GOV Attachments: Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO) OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION U.S. APPLICATION SERIAL NO. 85255200 MARK: METALOGIX CORRESPONDENT ADDRESS: KATHLEEN S. ANSARI ANSARI LAW GROUP 501 STOCKTON AVENUE SAN JOSE, CA 95126 APPLICANT: Metalogix International GmbH *85255200* CLICK HERE TO RESPOND TO THIS LET http://www.uspto.gov/trademarks/teas/response form

CORRESPONDENT’S REFERENCE/DOCKET NO : N/A CORRESPONDENT E-MAIL ADDRESS: kathleen@ansarilaw.com OFFICE ACTION STRICT DEADLINE TO RESPOND TO THIS LETTER TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. ISSUE/MAILING DATE: 3/14/2013 THIS IS A FINAL ACTION. This Office action is in response to applicant’s communication filed on February 12, 2013. The withdraw of the claim of distinctiveness is acceptable. The citations of U.S. Registration numbers 2801280 and 3411339 are withdrawn. The examining attorney has carefully reviewed, the applicant’s response but has found the arguments to be unpersuasive. Thus the refusal under Section 2(d), maintaining the citation of U.S. Registration number 3482955, and the requirement to amend the identification of goods, are maintained and made FINAL. 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. 3482955. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.

Applicant seeks to register the mark METALOGIX for use in connection with “computer software that provides migration and content management in the Microsoft Sharepoint and Microsoft Exchange environments.” The Registrant in 3482955, owns the mark METALOGIC SOLUTIONS in connection with “Business intelligence solutions development, namely, developing business intelligence computer software for data analysis, reporting and data management; design of business intelligence solutions computer software by using utility programs that are intended to facilitate business and consumer user access to live and stored data and to simplify e-commerce platforms; maintenance of business intelligence software; technical support services, namely, troubleshooting of business intelligence software problems via telephone, global computer network, local area network or on-site examination or a combination of any of the above; computer consultation on how to simplify access to data and improve performance of business intelligence computer software.” In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); TMEP §1207.01; see also In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v). Additionally, the goods and/or services are compared to determine whether they are similar or 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, (a)(vi). In the first step, the examining attorney finds that the applicant’s mark METALOGIX is the phonetic equivalent of the leading term METALOGIC in the registrant’s mark. The additional term SOLUTIONS in the registrant’s mark does not obviate the overall similarity of the marks. The mere addition of a term to a registered mark generally does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Trademark Act Section 2(d). See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (THE LILLY and LILLI ANN); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266 (TTAB 2009) (TITAN and VANTAGE TITAN); In re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO and MACHO COMBOS); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE and CREST CAREER IMAGES); In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and RICHARD PETTY’S ACCU TUNE); TMEP §1207.01(b)(iii).

Overall the marks METLOGIX and METALOGIC SOLUTIONS look and sound similar and impart a similar commercial impression. In the second step of the analysis, the examining attorney finds that the goods and services are related. In the original application, the applicant identifies computer software that uses another utility software for migrating, storing, archiving and securing enterprise data and software that uses another utility software to monitor the function of computer servers and operating systems. Then the applicant amended the goods to software for migrating, storing, archiving and securing business data. The registrant appears to develop software that uses another utility program in order to manage business data and facilitate access to business data. When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination 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 Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). In the present application, the applicant has broadly identified its goods. The goods as amended are not clear and for that reason, the goods appear to be related to the registrant’s services. The Trademark Trial and Appeal Board has held that where a registrant’s goods are broadly identified as computer programs recorded on magnetic disks, without any limitation as to the kind of programs or the field of use, it is necessary to assume that the registrant’s goods encompass all such computer programs, and that they would travel in the same channels of trade normal for those goods and be available to all classes of prospective purchasers for those goods. See In re N.A.D. Inc., 57 USPQ2d 1872 (TTAB 2000) (finding that when registrant’s goods do not include a limitation as to the kind of programs or field of use, software is presumed to be in the same field and even sophisticated purchasers would be confused); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); TMEP §1207.01(a)(iii). Thus the examining attorney refuses registration of the mark under Section 2(d) of the Trademark Act. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. Goods The wording “computer software that provides migration and content management in the Microsoft Sharepoint and Microsoft Exchange environments” in the identification of goods must be clarified because it is too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03.

In other words, the applicant’s computer software “provides migration and content management,” but of what? In its original identification, the applicant’s software appeared to be for use with storing and securing business content. But the current identification is not clear. Again the applicant has failed to specify the function of the software and the field in which the software functions. That is missing from the identification and the applicant needs to identify it. Use of the Registered marks is unacceptable in the identification and as stated again below, must be removed. The applicant failed to comply with the requirement that the applicant remove the Registered marks from its identifications of goods. As stated in the prior office action, the wording “SHAREPOINT” in the identification of goods is a registered mark not owned by applicant. See enclosed copy of U.S. Registration No(s). 2841861, 2849823, 2830919, 2793201 and 2854862. Moreover, the wording “MICROSOFT” and “MICROSOFT EXCHANGE” are also registered marks not owned by applicant. See enclosed copies of U.S. Registration No(s). 1200236, 2042216, 1684033, 1689468, 1741086 and 3625391. An applicant may not use a registered mark owned by another party in the identification. A registered mark indicates origin in one party and cannot be used to define goods or services that originate in a party other than the registrant. TMEP §1402.09; see Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958). The applicant does not own any of the Registered marks that it refers to in the identification of goods and the applicant must remove them. The applicant contends that other Registrants were allowed to use Registered marks they did not own, in their identifications of goods. Identifications are examined in accordance with the Trademark Rules of Practice and the USPTO’s policies and procedures in effect on the date an application is filed. See 37 C.F.R. §2.85(e)(1); TMEP §1402.14. Thus, descriptions of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined. See TMEP §§702.03(a)(iv), 1402.14. Therefore, the applicant must amend the identification of goods to delete all of the Registered marks as required, in the identification of goods and substitute the common commercial or generic name for the goods or the function of the goods. See TMEP §§1402.01, 1402.03. Applicant may substitute the following wording, if accurate: