UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/638726

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified services, so resembles the mark in U.S. Registration Nos. 2374878, 2508231, 2573757, 2697051, 2766856, 2932723 and 2978034 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).

 

The applicant’s mark is VERTICAL and design.  The registrants’ marks are GET VERTICAL, VERTICALINX, VERTICALINX, VERTICAL ALLIANCE, VERTICALRESPONSE and design, VERTICAL INNOVATION, and VERTICAL COMMUNICATIONS. The marks are very similar because of the common use of the word VERTICAL. Therefore, the first prong of the likelihood of confusion is met.

 

The second prong of the likelihood of confusion test is a comparison of the goods and or services. The applicant’s services are graphic design, marketing and public relations services. The registrants’ services are advertising agency services; placing advertisements for others by means of a global computer information network; and providing information services in the field of advertising rendered by means of a global; computer information network; advertising and marketing services in the field of electronic on line commerce; online advertising and marketing services in the field of online trading communities; business information, namely, the dissemination of advertising for products and services of others via online electronic communications networks; computerized online retail store services in the field of electronic commerce; advertising services, namely, dissemination and transmission of advertising for others via a global computer communications network;  design, development, and implementation services of internet based software for customer acquisition, retention and optimization of internet based businesses for others; providing temporary use of on-line non-downloadable software for web generation, e-mail creating, and list collection and correction in the field of direct marketing, and for statistical analysis of business performance and reports; computer services, namely, web site design and development of computer software; advertising services, namely, creating corporate and brand identity for others; arranging and conducting business conference; business meeting planning; and providing an on-line computer database in the field of coordinating the activities for conducting trade show exhibitions and individual company exhibitions and events for others in a wide variety of fields; and computer services, namely, web site design and development of computer software. The services of the parties need not be identical or directly competitive to find a likelihood of confusion. They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the services come from a common source.  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB  1984): Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). In this case, the marks are very closely related because of the common use of the word VERTICAL. The services are also very closely related because they all deal with advertising, design and marketing. Consequently, the second prong of the likelihood of confusion test is met and registration is refused under Section 2(d) of the Trademark Act.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issues.

 

Identification of Services

The recitation of services is unacceptable as indefinite.  The applicant may adopt the following recitation, if accurate:  adverting and marketing services and public relation services, in class 35 and/or graphic design services, in class 42.  TMEP §1402.11.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

Insufficient Fee

Applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods and/or services that are classified in at least two international classes, however applicant paid the fee for only one class(es).

 

Applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

The filing fee for adding classes to an application is as follows:

 

(1)     $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

 

(2)     $375 per class, when the fees are submitted with a paper response. 

 

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

 

Prior Pending Applications

The examining attorney encloses information regarding pending Application Serial No. 78516383, 78537529, and 78605782.  The filing dates of the referenced applications precede the applicant’s filing date. There may be a likelihood of confusion between the marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). If the referenced application matures into a registration, the examining attorney may refuse registration in the case under Section 2(d). 37 C.F.R. Sec. 2.83; TMEP Sec.1208.01.

 

 

/Inga Ervin/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 111

571 272-9379

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.