To:
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`Subject:
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`Sent:
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`Sent As:
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`Attachments:
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`GROWMARK, Inc. (ip.docket@dorsey.com)
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`U.S. TRADEMARK APPLICATION NO. 88241512 - FS - T279453.US.1
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`3/28/2019 3:39:02 PM
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`ECOM111@USPTO.GOV
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`*88241512*
`
`CLICK HERE TO RESPOND TO THIS
`LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`U.S. APPLICATION
`SERIAL NO.   88241512
`
`           
`
`MARK: FS
`
`CORRESPONDENT
`ADDRESS:
`  
`       JAMIE N.
`NAFZIGER
`  
`       DORSEY &
`WHITNEY LLP
`         50 SOUTH SIXTH
`STREET
`           SUITE 1500
`    
`    MINNEAPOLIS, MN
`55402-1498
`APPLICANT:
`GROWMARK, Inc.
`
`    
`
`CORRESPONDENT’S
`REFERENCE/DOCKET
`
`   
`
`NO:       
`
`  T279453.US.1
`CORRESPONDENT E-
`
`MAIL ADDRESS:       
`
`ip.docket@dorsey.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.   A RESPONSE
`TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE
`MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
`
`ISSUE/MAILING DATE: 3/28/2019
`
`INTRODUCTION
`
`The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to
`the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
`
`SUMMARY OF ISSUES:
`Prior-Filed Applications Advisory
`Section 2(d) Refusal – Likelihood of Confusion
`Amended Identification of Goods Requirement
`
`PRIOR-FILED APPLICATIONS ADVISORY
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`The filing dates of pending U.S. Application Serial Nos. 87774341, 87953770, 88040265, 88046090, 88105322, and 88125160 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.
`
`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. 3922965, 3953286,
`4723056, 4849649, 4858454, 4980966, 4989475, 5102059, 5365395, 5514836, and 5636290.  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).  Only those factors that are “relevant and of record” need be considered.   M2 Software, Inc. v. M2 Commc’ns, Inc. , 450 F.3d
`1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed.
`
`Cir. 2004)); see In re Inn at St. John’s, LLC , 126 USPQ2d 1742, 1744 (TTAB 2018).  
`
`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 applied-for mark is “FS” for:
`
`            
`
`“Computer e-commerce software to allow users to perform electronic business transactions via mobile devices, and local and global
`computer networks; Computer software applications to assist agricultural professionals with the inspection, research, data collection and analysis,
`spectral sampling, and information on crop health and precision agriculture methods and technology; Computer software applications for
`agricultural, automotive, energy, and industrial uses; Computer software applications to assist with product selection in the automotive, energy,
`fuel, grease, lubricant, and oil sectors; Computer software for budgeting, forecasting, consolidation of financial data and financial reporting, for
`use in financial reporting or analysis; Computer software for creating searchable databases of information and data; Computer software for
`monitoring the operation of mechanized agricultural equipment during agricultural operations; Computer software for the collection, editing,
`organizing, modifying, transmission, storage and sharing of data and information; Computer software, namely, electronic financial software that
`accommodates multiple types of payment and debt transactions in an integrated mobile device and web based environment; Computer software
`that provides business management intelligence by combining information from various databases and presenting it in an easy-to-understand user
`interface; Downloadable mobile applications for accessing, planning, and managing information for use in the fields of agriculture, agronomy,
`automotive, energy, horticulture, and industrial equipment; Downloadable mobile applications for recording field and crop observations related
`to pest pressure, tracking field conditions with GPS-enabled maps, and generating crop scouting reports; Downloadable computer software for
`use by customers to manage data relating to farm inputs, costs and crop yield results; Providing decision support systems comprising computer
`hardware and software in the field of precision agriculture and variable rate technology; Providing decision support systems comprising computer
`hardware and software in the fields of agriculture, agronomy, automotive, energy, horticulture, and industrial equipment; Simulators for driving
`or control of vehicles and farm equipment; Software applications for use with mobile phones, tablet computers, mobile telecommunication
`devices, and personal computers, namely, software for assisting agricultural professionals with the inspection, research, data collection and
`analysis, spectral sampling, and information on crop health and precision agriculture methods and technology; Software for accessing, planning,
`and managing information for use in the fields of agriculture, agronomy, automotive, energy, horticulture, and industrial equipment” in
`International Class 009.
`
`The mark in Registration No. 3922965 (“the ‘965 mark”) is “FSDATA” for:
`
` 
` 
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`“Computer software for use in programming, data collection, data storage, data analysis and report generation of fluid flow meters and
`           
`wastewater sampler products” in International Class 009.
`
`The mark in Registration No. 3953286 (“the ‘286 mark”) is “FS FORENSIC SOLUTIONS LLC FORENSIC AND INVESTIGATIVE
`ACCOUNTANTS” and design for, in pertinent part:
`
`            
`
`“Forensic and investigative accounting; providing analysis in the field of economics, namely, economic damage analysis; electronic data
`analytics, namely, business data analysis; asset tracing services, namely, providing electronic tracking of intellectual and industrial property
`assets to others, providing tracking services and information concerning tracking of assets in transit; account auditing, namely, cost auditing” in
`International Class 035.
`
`The mark in Registration No. 4723056 (“the ‘056 mark”) is “FS INVESTMENTS” for, in pertinent part:
`
`            
`
`“Investment of funds for others; management of investment of funds for others; investment management services; Business Development
`Company funding services to small and mid-sized businesses; Business Development Company services, namely, providing financing to small
`and mid-sized businesses; Business Development Company fund management; Business Development Company financing; mutual fund
`brokerage, distribution, investment; investment administration, distribution, and management of mutual funds; financial portfolio and investment
`management; investment advisory services; investment consultation; financial asset management; stock brokerage services; fund investment
`consultation; funds investment; asset allocation services” in International Class 036.
`
`The mark in Registration No. 4849649 (“the ‘649 mark”) is “FS” and design for:
`
`            
`
`“Business organisation and management consulting services” in International Class 035.
`
`The mark in Registration No. 4858454 (“the ‘454 mark”) is “FS” and design for:
`
`            
`
`“Computer software for automatically importing, cleaning and managing data for immediate analysis, regardless of the input source and
`analyzes and presents the analysis in a user-friendly graphic format; Computer software for automatically importing, cleaning and managing data
`for immediate analysis, regardless of the input source and analyzes and presents the analysis in a user-friendly graphic format that may be
`downloaded from a global computer network” in International Class 009.
`
`The mark in Registration No. 4980966 (“the ‘966 mark”) is “FS” in stylized format for, in pertinent part:
`
`            
`
`“Providing downloadable computer software over a global computer network that provides geographic maps, makes a determination on
`flood zones, flood information, and creates a flood data file to mobile smart devices, for real estate risk assessment, mortgage, insurance and
`financial services purposes” in International Class 009, and
`
`            
`
`“Providing real estate flood zone determination services, namely, inspecting, evaluating, assessing real estate properties to determine if
`the real estate properties are in a flood zone hazard area for insurance, mortgage, and financial services purposes; flood insurance, namely,
`providing real estate flood insurance; financial risk assessment, namely, providing flood risk analysis information and making flood hazard
`determinations of residential and commercial properties for insurance purposes” in Class 036.
`
`The mark in Registration No. 4989475 (“the ‘475 mark”) is “FS INVESTMENTS” in stylized format for:
`
`            
`
`“Investment of funds for others; management of investment of funds for others; investment management services; Business Development
`Company funding services to small and mid-sized businesses; Business Development Company services, namely, providing financing to small
`and mid-sized businesses; Business Development Company fund management; Business Development Company financing; mutual fund
`brokerage, distribution, investment; investment administration, distribution, and management of mutual funds; financial portfolio and investment
`management; investment advisory services; investment consultation; financial asset management; stock brokerage services; fund investment
`consultation; funds investment; asset allocation services” in International Class 036.
`
`The mark in Registration No. 5102059 (“the ‘059 mark”) is “FS INVESTMENT SOLUTIONS” for:
`
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`

`            
`
`“Investment of funds for others; management of investment of funds for others; investment management services; Business Development
`Company funding services to small and mid-sized businesses; Business Development Company services, namely, providing financing to small
`and mid-sized businesses; Business Development Company fund management; Business Development Company financing; mutual fund
`brokerage, distribution, investment; investment administration, distribution, and management of mutual funds; financial portfolio and investment
`management; investment advisory services; investment consultation; financial asset management; stock brokerage services; fund investment
`consultation; funds investment; asset allocation services; financial services, namely, broker/dealer services on securities exchanges and over-the-
`counter markets” in International Class 036.
`
`The mark in Registration No. 5365395 (“the ‘395 mark”) is “FS” in stylized format for:
`
`            
`            
`
`“Providing on-line information regarding personal finances, financial risk assessment, and budgeting” in International Class 036,
`
`“Educational services, namely, providing electronic courses in the field of personal finances that feature the teaching of a scale to
`determine financial health relative to personal finance and the distribution of course materials in connection therewith including in electronic
`video and audio formats and printed formats” in International Class 041, and
`
`            
`
`“Providing temporary online use of non-downloadable software for predictive modeling in the fields of personal or customer finances,
`account management, and risk assessment” in International Class 042.
`
`The mark in Registration No. 5514836 (“the ‘836 mark”) is “FS” in stylized format for:
`
`            
`
`“Computer software and downloadable computer software used to manage, secure, store, back-up, synchronize, recover and share data,
`documents, files, and information via global computer networks” in International Class 009, and
`
`            
`
`“Computer services, namely, data recovery services, data security consultancy and computer virus protection system services and
`integration of private and public cloud computing environments; Providing temporary use of non-downloadable computer software used to
`manage, secure, store, back-up, synchronize, recover and share data, documents, files, and information via global computer networks” in
`Internationals Class 042.
`
`The mark in Registration No. 5636290 (“the ‘290 mark”) is “FS ONE” for:
`
`            
`
`“Flight simulators for aircraft” in International Class 009.
`
`Similarities of the Marks
`
`  Marks are compared in their entireties for similarities in appearance, sound,
`Applicant’s mark is confusingly similar to registrants’ marks.
`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));
`TMEP §1207.01(b).
`
`When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in
`terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the
`parties.”   Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning
`LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the
`average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC , 126 USPQ2d 1742, 1746
`(TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem.
`Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
`
`When evaluating a composite mark consisting of words and a design, such as applicant’s mark and the ‘286, ‘649, ‘454, ‘966, ‘475, ‘395,
`and ‘836 marks, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be
`remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181,
`1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus,
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`although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in
`determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67,
`101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc. , 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
`
`In the present case, all the marks comprise the initial wording “FS”.   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”).
`
`Further, matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other
`wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l
`Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).    Accordingly, disclaimed matter that is descriptive of or generic for a
`party’s goods and/or services is typically less significant or less dominant when comparing marks.   In re Detroit Athletic Co., 903 F.3d 1297,
`1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir.
`1997)); TMEP §1207.01(b)(viii), (c)(ii).
`
`  In the ‘965 mark, the wording
`Here, the ‘286, ‘056, ‘475, and ‘059 marks disclaim all their additional wording appearing after “FS”.
`“DATA” is descriptive of the mark’s identified “ data collection, data storage, [and] data analysis” software goods { emphasis added}.  Thus,
`these additional descriptive wording portions are less significant in terms of affecting the marks’ commercial impression, and renders the
`wording “FS” the more dominant element of the marks.
`
`Therefore, the marks are confusingly similar.   
`
`Relatedness of the Goods and Services
`
`  The goods and services are compared to determine whether they are similar,
`Applicant’s goods are related to registrants’ goods and services.
`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 goods and 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 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).
`
`Determining likelihood of confusion is based on the description of the goods and 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)).  
`
`When an application or registration uses broad wording to describe goods and/or services, the broad identification(s) of goods and/or services are
`presumed to encompass all goods and/or services of the type described, including any narrower goods and/or services identified in other
`applications and 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).  In such cases, the broader identifications of goods and/or services are legally identical to the more
`narrowly identified goods and/or services.  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, when comparing goods versus services, 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); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (finding various
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`Steelcase Inc. v. Steelcare Inc., 219 USPQ 433
`items of men’s, boys’, girls’ and women’s clothing related to restaurant services and towels);
`(TTAB 1983) (finding refinishing of furniture, office furniture, and machinery related to office furniture and accessories); Mack Trucks, Inc. v.
`Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (finding trucking services related to motor trucks and buses).
`
`The ‘965 Mark
`
`Applicant’s broad identification of “Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of
`data and information” encompasses all narrower goods, such as registrant’s identified “Computer software for use in programming, data
`collection, data storage, data analysis and report generation of fluid flow meters and wastewater sampler products.”
`
`The ‘286 Mark
`
`Applicant’s broad identifications of software “for the collection, editing, organizing, modifying, transmission, storage and sharing of data and
`information” and software allowing “users to perform electronic business transactions” are similar or complementary to registrant’s identified
`“electronic data analytics, namely, business data analysis” services in terms of purpose or function { emphasis added}.
`
`The ‘056 Mark
`
`Applicant’s broadly identified “financial” software goods are similar or complementary to registrant’s various identified financial services in
`terms of purpose or function.
`
`The ‘649 Mark
`
`Applicant’s broadly identified “e-commerce software to allow users to perform electronic business transactions” are similar or complementary
`to registrant’s broadly identified “business organization and management consulting services” in terms of purpose or function.
`
`The ‘454 Mark
`
`Applicant’s broad identification of “Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of
`data and information” encompasses all narrower goods, such as registrant’s identified “Computer software for automatically importing, cleaning
`and managing data for immediate analysis, regardless of the input source and analyzes and presents the analysis in a user-friendly graphic
`format” and “Computer software for automatically importing, cleaning and managing data for immediate analysis, regardless of the input source
`and analyzes and presents the analysis in a user-friendly graphic format that may be downloaded from a global computer network.”
`
`The ‘966 Mark
`
`Applicant’s broad identification of “Computer software for budgeting, forecasting, consolidation of financial data and financial reporting, for
`use in financial reporting or analysis” encompass registrant’s narrower “Providing downloadable computer software over a global computer
`network that provides geographic maps, makes a determination on flood zones, flood information, and creates a flood data file to mobile smart
`devices, for real estate risk assessment, mortgage, insurance and financial services purposes” { emphasis added}.   Further, applicant’s goods are
`similar or complementary to registrant’s identified services of “financial risk assessment, namely, providing flood risk analysis information and
`making flood hazard determinations of residential and commercial properties for insurance purpose” in terms of purpose or function.
`
`The ‘475 Mark
`
`Applicant’s broadly identified “financial” software goods are similar or complementary to registrant’s various identified financial services in
`terms of purpose or function.
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`The ‘059 Mark
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`Applicant’s broadly identified “financial” software goods are similar or complementary to registrant’s various identified financial services in
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`terms of purpose or function.
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`The ‘395 Mark
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`Applicant’s broadly identified “financial” software goods are similar or complementary to registrant’s various identified services relating to
`“personal finances” and “financial risk” in terms of purpose or function.
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`The ‘836 Mark
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`Applicant’s broad identification of “Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of
`data and information” encompasses all narrower goods, such as registrant’s identified software “used to manage, secure, store, back-up,
`synchronize, recover and share data, documents, files, and information via global computer network.”   Further, applicant’s goods are similar or
`complementary to registrant’s similarly identified software services “used to manage, secure, store, back-up, synchronize, recover and share
`data, documents, files, and information via global computer networks” in terms of purpose or function.
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`The ‘290 Mark
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`Applicant’s broad identification of “Simulators for driving or control of vehicles” encompasses all narrower goods, such as registrant’s
`identified “Flight simulators for aircraft.”
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`The goods and services of the parties also 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 registrants’ goods and services are related.
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`In conclusion, the marks are confusingly similar due to the similarity of the marks and the similarity of the goods and services.
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`Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support
`of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.
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`AMENDED IDENTIFICATION OF GOODS REQUIRED
`
`Applicant must clarify the wording in the identification of goods in International Class 009 because it is indefinite and too broad, as indicated by
`suggested amended language shown in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it
`does not make clear what the goods are.  Further, this wording could identify goods and/or services in more than one international class.  For
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`example, downloadable software goods are in International Class 009 and providing non-downloadable software is in International Class 042.  
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`Applicant may substitute the following wording with amended language shown in bold, if accurate:
`
`International Class 009:
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`“ Downloadable computer e-commerce software to allow users to perform electronic business transactions via mobile devices and local
`and global computer networks; Downloadable computer software applications to assist agricultural professionals with the inspection, research,
`data collection and analysis, spectral sampling, and information on crop health and precision agriculture methods and technology; Downloadable
`computer software applications for agricultural, automotive, energy, and industrial uses, namely, for ____ {specify the function of the
`programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc.}; Downloadable computer software
`applications to assist with product selection in the automotive, energy, fuel, grease, lubricant, and oil sectors; Downloadable Computer software
`for budgeting, forecasting, consolidation of financial data and financial reporting, for use in financial reporting or analysis; Downloadable
`computer software for creating searchable databases of information and data; Downloadable computer software for monitoring the operation of
`mechanized agricultural equipment during agricultural operations; Downloadable computer software for the collection, editing, organizing,
`modifying, transmission, storage and sharing of data and information; Downloadable computer software, namely, electronic financial software
`that accommodates multiple types of payment and debt transactions in an integrated mobile device and web based environment; Downloadable
`computer software that provides business management intelligence by combining information from various databases and presenting it in an
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`easy-to-understand user interface; Downloadable mobile applications for accessing, planning, and managing information for use in the fields of
`agriculture, agronomy, automotive, energy, horticulture, and industrial equipment; Downloadable mobile applications for recording field and
`crop observations related to pest pressure, tracking field conditions with GPS-enabled maps, and generating crop scouting reports; Downloadable
`computer software for use by customers to manage data relating to farm inputs, costs, and crop yield results; Decision support sys