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.
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on April 13, 2009.
Section 2(d)—Likelihood of Confusion Refusal---FINAL
Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), on the grounds that applicant’s mark, when used on or in connection with the identified services, so resembles the mark in U.S. Registration No. 2947713 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. The cited registration was sent previously. Although the trademark examining attorney has carefully considered applicant’s arguments in support of registration, she finds them unpersuasive for the following reasons:
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.
Comparison of the Marks
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.
Applicant’s assertions that the differences between the two marks are “of major import” and that the dominant term of the registrant’s mark is “ACCESS” are unconvincing. It is clear the term “ACCESS” is merely descriptive of a feature of registrant’s business services because they are available to consumers via the Internet. The term “access” is defined as “to obtain access to, especially by computer.” Accordingly, registrant has disclaimed the term “ACCESS” apart from its mark. Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression. Disclaimed matter is typically less significant or less dominant when comparing marks. See In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).
In effect, applicant has merely deleted descriptive 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.
Consumers who are familiar with registrant’s mark “BTN ACCESS” are likely to assume that applicant’s mark “BTN” simply represent new or special services offered from the registrant. In re Compania Pesquera Vikingos de Colombia, S.A., 221 USPQ 556 (TTAB 1984).
In this case, the recollection of the average consumer upon seeing both marks would be the distinctive acronym “BTN,” thus making the marks confusing similar in the minds of the purchasing public.
Comparison of the Services
Despite applicant having amended its services, the respective services still remain very closely related. The applicant’s amended services are “on-line business services, namely, on-line business targeting and marketing services.” The registrant’s services include a number of advertising services, notably: “advertising agency services in the field of advertising and promotion,” and “dissemination of advertising materials, updating of advertising materials, compilation of advertisements for use as web pages on the Internet.” These services are closely related in that they all comprise advertising or marketing services. Applicant’s assertion that the registrant’s services are “so diverse as to be incomprehensible” is simply inapposite.
Furthermore, nothing in the registrant’s broadly worded identification of services would preclude it from offering its advertising services online, like applicant. A determination of whether there is a likelihood of confusion is made solely on the basis of the services identified in the application and registration, without limitations or restrictions that are not reflected therein. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); TMEP §1207.01(a)(iii). If the cited registration 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 registration 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. In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); TMEP §1207.01(a)(iii).
Moreover, these types of services are commonly provided together by a single source, and would be encountered by consumers in the same channels of trade. In support of this, please find attached copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar services as those of applicant and registrant in this case. These printouts have probative value to the extent that they serve to suggest that the services listed therein, namely on-line marketing services and advertising services of all varieties are of a kind that may emanate from a single source. In re Infinity Broad. Corp.,60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).
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, the refusal to register under Section 2(d) of the Trademark Act due to a likelihood of confusion is proper, and is thus maintained and is now made final.
Identification of Services—FINAL
THIS REQUIREMENT APPLIES ONLY TO THE SERVICES “BUSINESS TARGETING” SPECIFIED THEREIN:
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:
“On-line business services, namely, on-line targeted marketing services,” in International Class 35.
TMEP §1402.01.
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.
Accordingly, the requirement that applicant provide an acceptable identification of services is maintained and is now made final.
Response Guidelines
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or
(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.
37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.
In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/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.