UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/690862
MARK: BTN
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Bizo, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
Section 2(d) Refusal—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. 2947713. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
In this case, the following factors are the most relevant: similarity of the marks, similarity of the services, and similarity of trade channels of the services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
Applicant’s mark, “BTN,” is highly similar to the registrant’s mark, “BTN ACCESS,” in appearance, sound and commercial impression. In fact, the only thing distinguishing the marks is that registrant’s mark adds the additional descriptive term “ACCESS,” which registrant has disclaimed. However, the dominant portion of registrant’s mark, “BTN,” is identical to applicant’s full mark.
In effect, applicant has merely deleted wording from an already registered mark. The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Optical Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(b)(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.
Furthermore, the services are very closely related. The applicant’s services are “online business and marketing services.” The registrant’s services include a number of business and advertising services, notably: “advertising agency services in the field of advertising and promotion,” “business information services, business information services, namely, providing information relating to business acquisitions, business appraisal, business auditing, business management, business planning, business supervision and business investigations;” “dissemination of advertising materials, updating of advertising materials, compilation of advertisements for use as web pages on the Internet;” “business consultation and providing information online information in the field of business consultation;” and “business consultancy; providing online information in the field of business management and consultation.” These services are closely related in that applicant’s broadly worded identification encompass all of registrant’s more narrowly identified business and advertising services.
When the application describes the services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the application encompasses all services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive . . . . There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold.”); TMEP §1207.01(a)(iii). In this case, it must be presumed that applicant’s “online business and marketing services” encompasses all of the registrant’s more precisely identified business and advertising services.
Since the marks are so highly similar and the services are so closely related, there is a likelihood that purchasers would confuse the sources of the services or believe they stemmed from a single source. Accordingly, registration is properly refused under Section 2(d) of the Trademark Act due to a likelihood of confusion.
Applicant must also respond to the requirements set forth below:
The wording “online business services” in the identification of services is indefinite and must be clarified because it is unclear as to the exact nature of the services. See TMEP §1402.01. For instance, this wording could describe business management services, business consultation services, or on-line business networking services, to name a few.
Applicant must amend the wording to specify the common commercial or generic name for the services. If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). TMEP §1402.01.
The examining attorney suggests, and applicant may adopt, any or all of the following identification of services, if accurate:
“Online business services, namely, [specify common commercial name of services, e.g., on-line business networking, business consultation, etc.] and online marketing services,” in International Class 35.
Identifications of services can be amended only to clarify or limit the services; adding to or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
/Allison P. Schrody/
Examining Attorney
Law Office 115
(571) 272-5893
(571) 273-9115 (fax)
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.