To:
`Subject:
`Sent:
`Sent As:
`
`Elipsa. Inc(jkimmel@elipsa.ai)
`U.S. Trademark Application Serial No. 90798371 - ELIPSA
`November 16, 2022 10:20:53 AM EST
`tmng.notices@uspto.gov
`
`Attachments
`
`88397932
`88442698
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`
`
`U.S. Application Serial No.  90798371
`
`Mark:   ELIPSA
`
`Correspondence Address:  
`Elipsa. Inc
`24 Ardsmoor Rd
`Melrose MA 02176 UNITED STATES
`
`Applicant:   Elipsa. Inc
`
`Reference/Docket No.  N/A
`
`Correspondence Email Address:   jkimmel@elipsa.ai
`
`
`
`
`
`
`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:   November 16, 2022
`
`This Office Action is in response to applicant’s Response to Office Action, dated March 25, 2022.
`
`In a previous Office action dated March 24, 2022, the following issues were outstanding with this
`application:
`
`

`

`
`
`1.
`2.
`
`  Section 2(d) - Likelihood of Confusion Refusal
`  Substitute Specimen Not Properly Verified
`
`
`In the Response, applicant:
`
`
`•
`•
`
`Verified the previous specimen; and
`Provided arguments against the Section 2(d) Refusal.
`
`
`The examining attorney has reviewed the applicant’s response and determined the following:
`
`
`1.
`
`2.
`
`3.
`
`Applicant's verification of the previously submitted specimen is accepted. Accordingly, the
`specimen requirement is satisfied;
`Applicant's arguments against the Section 2(d) Refusal are not persuasive. Accordingly,
`the  Section 2(d) - Likelihood of Confusion Refusal is maintained and continued; 
`The assigned trademark examining attorney inadvertently omitted a potential refusal relevant to
`the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, pending U.S.
`Application Serial Nos. 88442698 and 88397932 precede applicant’s filing date and 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 marks. The trademark examining attorney apologizes for any inconvenience caused by
`the delay in raising this issue.
`
`
`SUMMARY OF ISSUES:
`
`
`•
`•
`
`Section 2(d) - Likelihood of Confusion Refusal
`NEW ISSUE:  Potential Section 2(D) Refusal - Two Pending Application
`
`
`SECTION 2(d) - LIKELIHOOD OF CONFUSION REFUSAL
`
`Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in
`U.S. Registration Nos. 5975570, 5918441 and 2901906 . Trademark Act Section 2(d), 15 U.S.C.
`§1052(d); see TMEP §§1207.01 et seq. See the previously attached registrations.
`
`Applicant has applied to register the mark ELIPSA  in standard characters for use in connection with
`“Software as a service (SAAS) services featuring software using artificial intelligence for use in
`machine learning, deep learning, diagnostic analytics, predictive analytics, prescriptive analytics,
`natural language processing, computer vision” in Class 42.
`
`Registration No. 5975570 is the mark  ELIPSE E3  in standard characters for use in connection with
`“Recorded and downloadable computer software to create supervisory control and data acquisition
`(SCADA) applications used in industrial, infrastructure and building automation” in Class 9.
`
`Registration No. 5918441 is the mark  ELIPSE SOFTWARE  in standard characters for use in
`connection with “Recorded and downloadable computer software for creating human machine
`interfaces, supervisory control and data acquisition applications and plant information management
`system applications, used in industrial, electrical, water and wastewater, infrastructure and building
`automation; and recorded and downloadable mobile software for creating human machine interfaces,
`supervisory control and data acquisition applications and plant information management system
`
`

`

`applications for on-the-go monitoring, used in industrial, electrical, water and wastewater,
`infrastructure and building automation” in Class 9.
`
`Registration No. 2901906 is the mark  ELLIPSE  in typed characters for use in connection with
`“Computer software, namely, computer software programs for managing maintenance, repair and
`operations, materials management, human resources and financial systems of a company; compact
`discs featuring software for managing maintenance, repair and operations, materials management,
`human resources and financial systems of a company; and instructional manuals sold therewith; data
`processing software programs and business to business e-commerce software applications, all
`specializing in the management of assets, and business process and logistics for capital intensive
`industries, namely, mining, utilities, transportation and government” in Class 9.
`
`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
`
`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).
`
`
`U.S. Registration Nos. 5975570 and 5918441
`
`
`the registered mark,  ELIPSE
`Here, applicant’s mark, ELIPSA,
`to
`is confusingly similar
`E3 and  ELIPSE SOFTWARE in appearance, sound and commercial impression.
`
`In particular, the marks share the similar terms ELIPSA and  ELIPSE which begin with the identical
`
`

`

`wording ELIPS.  Thus, the marks sound similar. The fact that the marks have different endings does not
`diminish the confusing similarity of the marks.  Slight differences in the sound of similar marks will not
`avoid a likelihood of confusion. In re Energy Telecomms. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB
`1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir.
`2012).  Additionally, the terms ELIPSA and ELIPSE both translate to ELLIPSE. Accordingly, the
`marks convey the same commercial impression of an oval or a closed plane curve generated by a point
`moving in such a way that the sums of its distances from two fixed points is a constant.  See the
`previously attached translation evidence from Collins and Linguee and the definition of ellipse from
`Merriam-Webster Dictionary.  
`Moreover, even if consumers do not know the translation of the terms ELIPSA and ELIPSE, the marks
`both generate the same impression of a misspelling of the term "ellipse" due to the wording ELIPS. 
`
`
`The inclusion of the additional wording E3 and SOFTWARE in the registered marks does not obviate
`the confusing similarity of the marks.  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., 901 F.3d 1367, 1373, 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 Ox
`Paperboard, LLC, 2020 USPQ2d 10878, at *4 (TTAB 2020) (citing In re Bay State Brewing Co., 117
`USPQ2d 1958, 1960 (TTAB 2016)); In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB
`2018); TMEP §1207.01(b); see In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085
`(Fed. Cir. 2014). While consumers may perceive differences in the marks, consumers with a general
`recollection of the marks are likely to recall the similar sound, appearance and commercial impression
`of the terms ELIPSA and ELIPSE in the marks and be confused as to the source of the goods and
`services. 
`
`
`U.S. Registration No. 2901906
`
`
`
`Here, applicant’s mark, ELIPSA, is confusingly similar to the registered mark,  ELLIPSE in
`appearance, sound and commercial impression. In particular, the marks share the similar wording
`ELIPS and ELLIPS. Additionally, the English translation of applicant's mark ELIPSA is ELLIPSE.
`Accordingly, the marks convey the same commercial impression of  an oval or a closed plane curve
`generated by a point moving in such a way that the sums of its distances from two fixed points is a
`constant. See the previously attached translation evidence from Linguee and the definition of ellipse
`from Merriam-Webster Dictionary.  
`
`Under the doctrine of foreign equivalents, a mark in a common, modern foreign language and a mark
`that is its English equivalent may be held confusingly similar. TMEP §1207.01(b)(vi); see, e.g., In re
`Aquamar, Inc., 115 USPQ2d 1122, 1127-28 (TTAB 2015); In re Thomas, 79 USPQ2d 1021, 1025
`(TTAB 2006). Consequently, marks comprised of foreign wording are translated into English to
`determine similarity in meaning and connotation with English word marks. See Palm Bay Imps., Inc. v.
`Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696
`(Fed. Cir. 2005). Equivalence in meaning and connotation may be sufficient to find such marks
`confusingly similar. See In re Aquamar, Inc., 115 USPQ2d at 1127-28; In re Thomas, 79 USPQ2d at
`1025.
`
`

`

`
`Applicant’s mark is in Polish, which is a common, modern language in the United States. See In re New
`Yorker Cheese Co., 130 USPQ 120 (TTAB 1961) (Polish).
`
`The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign
`term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan
`Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A). The ordinary
`American purchaser includes those proficient in the foreign language. In re Spirits Int’l, N.V., 563 F.3d
`1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.
`
`In this case, the ordinary American purchaser would likely stop and translate the mark because the
`Polish language is a common, modern language spoken by an appreciable number of consumers in the
`United States.
`
`Ultimately, when purchasers call for the goods and services of applicant and registrants using ELIPSA,
`ELIPSE E3,  ELIPSE SOFTWARE and ELLIPSE, they are likely to be confused as to the source of
`those goods and services by the similarities between the marks. Thus, the marks are confusingly
`similar.
`
`     Relatedness of the 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).
`
`
`U.S. Registration Nos. 5975570 and 5918441
`
`
`Here, applicant’s Class 42, "Software as a service (SAAS) services featuring software using artificial
`intelligence for use in machine learning, deep learning, diagnostic analytics, predictive analytics,
`prescriptive analytics, natural language processing, computer vision" are closely related to registrant's
`Class 9 "Recorded and downloadable computer software to create supervisory control and data
`acquisition (SCADA) applications used in industrial, infrastructure and building automation" and
`"Recorded and downloadable computer software for creating human machine interfaces, supervisory
`control and data acquisition applications and plant information management system applications, used
`in industrial, electrical, water and wastewater, infrastructure and building automation; and recorded
`and downloadable mobile software for creating human machine interfaces, supervisory control and
`data acquisition applications and plant information management system applications for on-the-go
`monitoring, used in industrial, electrical, water and wastewater, infrastructure and building
`automation". 
`
`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  services that feature  software that uses
`artificial intelligence for  machine learning, deep learning, diagnostic analytics, predictive analytics,
`prescriptive analytics, natural language processing, computer vision, which presumably encompasses
`
`

`

`all goods of the type described, including registrant’s more narrow  
`computer software to create supervisory control and data acquisition (SCADA) applications used in
`industrial, infrastructure and building automation and computer software for creating human machine
`interfaces, supervisory control and data acquisition applications and plant information management
`system applications, used in industrial, electrical, water and wastewater, infrastructure and building
`automation. In other words, applicant's services feature software that is identified broadly as artificial
`intelligence that performs various analytic functions in unspecified fields which presumably
`encompasses registrant's software for creating human machine interfaces, supervisory control and data
`acquisitions and information management systems applications specifically in the field of industrial,
`electrical, water and wastewater, infrastructure and building automation.    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 registrant’s goods and services are legally
`identical.  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, the goods and/or services of the parties 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 registrant’s goods and/or services are related.
`
`
`U.S. Registration No. 2901906
`
`
`Here, applicant’s Class 42, "Software as a service (SAAS) services featuring software using artificial
`intelligence for use in machine learning, deep learning, diagnostic analytics, predictive analytics,
`prescriptive analytics, natural language processing, computer vision" are closely related to registrant's
`Class 9, " Computer software, namely, computer software programs for managing maintenance, repair
`and operations, materials management, human resources and financial systems of a company; compact
`discs featuring software for managing maintenance, repair and operations, materials management,
`human resources and financial systems of a company; and instructional manuals sold therewith; data
`processing software programs and business to business e-commerce software applications, all
`specializing in the management of assets, and business process and logistics for capital intensive
`industries, namely, mining, utilities, transportation and government". 
`
`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 services that feature  software that uses
`artificial intelligence for  machine learning, deep learning, diagnostic analytics, predictive analytics,
`prescriptive analytics, natural language processing, computer vision, which presumably encompasses
`all goods and/or services of the type described, including registrant’s more narrow computer software
`for managing maintenance, repair and operations, materials management, human resources and
`financial systems of a company and  data processing software programs and business to business e-
`commerce software applications. As discussed above, applicant's identification of services includes
`broadly identified software which encompasses registrant's more specific software goods.    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 registrant’s goods and services are
`legally identical.  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, the goods and/or services of the parties 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 registrant’s goods and/or services are related.
`
`Ultimately, when purchasers encounter the goods and services of applicant and registrants they are
`likely to be confused as to the source of the goods and services by the commercial relationship between
`them in the marketplace. Thus, the goods and services are closely related.
`
`Preliminary Response to Applicant's Arguments
`
`Applicant argues that the applied-for mark, ELIPSA, does not translate to ELLIPSE, but that the
`applied-for mark translates to ELLIPSIS. Applicant also asserts that the fact that the cited registrations
`coexist for arguably more similar marks sets a precedent to accept the applied-for mark. 
`
`Applicant does not offer any evidence to support its contention that the appropriate translation of the
`applied-for mark is ELLIPSIS.  In contrast, the record evidence establishes that the direct translation of
`ELIPSA is ELLIPSE. Furthermore, as discussed above, even if the the applied-for mark did not
`translate to ELLIPSE, it is still similar in appearance, sound and commercial impression. In
`particular,  the terms ELLIPSE and ELLIPSIS have a similar meaning. See the previously attached
`evidence from Merriam-Webster Dictionary providing the term "ellipsis" as a definition of ellipse. 
`
`Moreover, the fact that the cited registrations coexist does not obviate the confusing similarity of the
`marks. First,  prior decisions and actions of other trademark examining attorneys in applications for
`other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial
`and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122
`USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands
`on its own merits. In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir.
`2016) (citing In re Shinnecock Smoke Shop, 571 F.3d 1171, 1174, 91 USPQ2d 1218, 1221 (Fed. Cir.
`2009); In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir.
`2001)).  Second, the identification in the registrations specify a field of use or subject for which the
`software is used. This specification makes them distinct from each other. The application uses broad
`wording to merely describe the function of the software, but does not offer the field of use, and
`therefore would include the uses identified in the registrants. Thus, the fact that the cited registrations
`co-exist does not diminish the confusing similarity between applicant's mark and the registered marks. 
`
`Therefore, because the marks are confusingly similar and the goods and services are closely related,
`purchasers encountering these goods and services are likely to believe, mistakenly, that they emanate
`from a common source. Accordingly, there is a likelihood of confusion and registration is refused
`pursuant to Section 2(d) of the Trademark Act.
`
`
`

`

`     Response to Section 2(d) - Likelihood of Confusion Refusal
`
`Although applicant’s mark has been refused registration, applicant may respond to the refusal by
`submitting evidence and arguments in support of registration.
`
`POTENTIAL SECTION 2(d) REFUSAL - TWO PENDING APPLICATION
`
`The filing dates of pending U.S. Application Serial Nos. 88442698 and 88397932 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.
`
`While applicant is not required to respond to the issue of the pending application,  applicant must
`respond to the refusal above  within six months of the mailing date of this Office action to avoid
`abandonment.
`
`RESPONSE GUIDELINES
`
`Response guidelines. For this application to proceed, applicant must explicitly address the refusal 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. Please see “Responding to Office
`Actions” and the informational video “Response to Office Action” for more information and tips on
`responding.
`
`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 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.
`
`Because of the legal technicalities and strict deadlines of the trademark application process, applicant is
`encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The
`assigned trademark examining attorney can provide only limited assistance explaining the content of an
`Office action and the application process. USPTO staff cannot provide legal advice or statements about
`an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for
`more information.
`
`How to respond.   Click to file a response to this nonfinal Office action.
`
`

`

`
`
`
`/Danielle Anderson/
`Danielle Anderson
`Trademark Examining Attorney
`Law Office 113
`(571) 272-6143
`danielle.anderson@uspto.gov
`
`
`
`
`RESPONSE GUIDANCE
`
`•
`
`•
`
`•
`
`Missing the response deadline to this letter will cause the application to abandon.  The
`response must be received by the USPTO before midnight Eastern Time of the last day of the
`response period.  TEAS 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.
`
`

`

`Print: Wed Nov 16 2022
`
`88397932
`
`(4) STANDARD CHARACTER MARK
`
`Mark Punctuated
`ELIPSE SOFTWARE
`Translation
`The English translation of "ELIPSE" in the mark is "ellipse".
`Goods/Services
`
`•
`
`IC 042. US 100 101.G & S: Software as a service (saas) services featuring software for use in creating
`human machine interfaces supervisory control and data acquisition applications and plant information
`management system applications used in industrial electrical water and wastewater infrastructure and
`building automation
`
`Mark Drawing Code
`(4) STANDARD CHARACTER MARK
`Design Code
`Serial Number
`88397932
`Filing Date
`20190423
`Current Filing Basis
`1B
`Original Filing Basis
`1B
`Publication for Opposition Date
`20190820
`Registration Number
`Date Registered
`Owner
`(APPLICANT) Elipse Software Ltda. LIMITED LIABILITY COMPANY BRAZIL Rua Mostardeiro 322 cj.
`902 Porto Alegre RS BRAZIL 90430-000
`Priority Date
`Disclaimer Statement
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "SOFTWARE" APART FROM THE MARK
`AS SHOWN
`Description of Mark
`Type of Mark
`
`

`

`SERVICE MARK
`Register
`PRINCIPAL
`Live Dead Indicator
`LIVE
`Attorney of Record
`JONATHAN A HYMAN
`
`

`

`Print: Wed Nov 16 2022
`
`88442698
`
`(4) STANDARD CHARACTER MARK
`
`Mark Punctuated
`ELIPSE E3
`Translation
`The English translation of "ELIPSE" in the mark is "ellipse".
`Goods/Services
`
`•
`
`IC 042. US 100 101.G & S: Software as a service (SaaS) services featuring software to create supervisory
`control and data acquisition (SCADA) applications used in industrial, infrastructure and building
`automation
`
`Mark Drawing Code
`(4) STANDARD CHARACTER MARK
`Design Code
`Serial Number
`88442698
`Filing Date
`20190523
`Current Filing Basis
`1B
`Original Filing Basis
`1B
`Publication for Opposition Date
`20190820
`Registration Number
`Date Registered
`Owner
`(APPLICANT) Elipse Software Ltda. LIMITED LIABILITY COMPANY BRAZIL Rua Mostardeiro 322 cj.
`902 Porto Alegre RS BRAZIL 90430-000
`Priority Date
`Disclaimer Statement
`Description of Mark
`Type of Mark
`SERVICE MARK
`Register
`PRINCIPAL
`
`

`

`Live Dead Indicator
`LIVE
`Attorney of Record
`JONATHAN A HYMAN
`
`

`

`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on November 16, 2022 for
`U.S. Trademark Application Serial No.  90798371
`
`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.
`
` 
`