UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/696771
MARK: ISA
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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: Steve Simecek
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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
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or 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
The applicant’s mark is ISA with a circular design. The registrant’s typed mark is ISA. The applicant simply attaches a design to the registrant’s mark. The mere addition of a term to a registered mark generally does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Trademark Act Section 2(d). See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (THE LILLY and LILLI ANN); In re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO and MACHO COMBOS); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE and CREST CAREER IMAGES); In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and RICHARD PETTY’S ACCU TUNE); In re Cosvetic Labs., Inc., 202 USPQ 842 (TTAB 1979) (HEAD START and HEAD START COSVETIC); TMEP §1207.01(b)(iii).
Comparison of the Goods/Services
The applicant’s services are “administration of educational exchange programs, namely, administration of study abroad programs.” The registrant’s services are “administration of educational exchange programs, namely administration of study abroad programs.” The services are identical. Any goods or services in the registrant’s normal fields of expansion should be considered when determining whether the registrant’s goods and/or services are related to the applicant’s goods and/or services. TMEP §1207.01(a)(v); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581 1584 (TTAB 2007). Evidence that third parties offer the goods and/or services of both the registrant and applicant suggest that it is likely that the registrant would expand its business to include applicant’s goods and/or services. In that event, customers are likely to believe the goods and/or services at issue come from or, are in some way connected with, the same source. In re 1st USA Realty Prof’ls, 84 USPQ2d at 1584 n.4; see TMEP §1207.01(a)(v).
(1) Record the assignment with the Office’s Assignment Services Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;
(2) Submit copies of documents evidencing the chain of title; or
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “Applicant is the owner of U.S. Registration No. 2359098.”
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§3.25, 3.73; TMEP §502.02(a).
Merely recording a document with the Assignment Services Branch does not constitute a response to an Office action. TMEP §503.01.
APPLICANT MAY RESPOND
INFORMALITIES
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
Please note that the following issues are being raised in this letter in order to address every problem with the application. However, this does not obviate the original determination of non-registrability by the examining attorney. Applicant must still respond to the refusal by submitting arguments in support of registration.
ISSUE REGARDING APPLICANT’S ENTITY TYPE
The name of an individual person appears in the section of the application intended for the trademark owner’s name; however, the entity type is set forth as a corporation. Applicant must clarify this inconsistency. TMEP §§803.02(a), 803.03.
If applicant is an individual, applicant should request that the entity be amended to “individual” and must indicate his/her country of citizenship for the record. See 15 U.S.C. §1051(a)(2); 37 C.F.R. §2.32(a)(3)(i); TMEP §§803.02(a), 803.03(a), 803.04. Alternatively, if applicant is a corporation, applicant must set forth the correct name of the corporation and U.S. state or foreign country of incorporation or organization. 37 C.F.R. §2.32(a)(2), (a)(3)(ii); TMEP §§803.02(c), 803.03(c), 803.04.
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused under Trademark Act Section 1 because the application was void as filed. An application must be filed by the owner of the mark. 15 U.S.C. §1051; 37 C.F.R. §2.71(d); TMEP §§803.01, 803.06.
An application may be filed based on any of the following:
(1) Use of the mark in commerce under Trademark Act Section 1(a);
(2) A bona fide intention to use the mark in commerce under Section 1(b)
(3) A claim of priority, based on a foreign application filed within six months of the filing date of the U.S. application, under Section 44(d); and/or
(4) A foreign registration of a mark in applicant’s country of origin under Section 44(e).
15 U.S.C. §§1051(a)-(b), 1126(d)-(e); TMEP §806.01(a)-(d).
Therefore, applicant must (1) amend the application to specify at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted. TMEP §806.
Depending on the circumstances, applicant may be entitled to assert more than one of the above bases. When claiming more than one basis, applicant must (1) satisfy all requirements for each basis claimed; (2) state that more than one basis is being asserted; and (3) list separately each basis, followed by the goods or services to which that basis applies. 37 C.F.R. §2.34(b)(2); TMEP §806.02(a).
Although multi-basis applications are permitted, applicant cannot assert both use in commerce and intent to use for the same goods or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).
STANDARD CHARACTER CLAIM
The drawing of the mark includes a design element; however, the application also includes a standard character claim. A standard character drawing must show the mark depicted in Latin characters, Roman or Arabic numerals, with common punctuation or diacritical marks, with no design element or stylization of lettering/numbers, and no claim to any particular font, style, size or color. 37 C.F.R. §2.52(a); TMEP §807.03(a).
Therefore, applicant must delete the standard character claim from the application. The drawing of the mark will be processed as a special form drawing pursuant to 37 C.F.R. §2.52(b). TMEP §807.03(c).
COLOR CLAIM AND COLOR LOCATION STATEMENT
Applicant has submitted a color drawing but has not specified whether color is being claimed as a feature of the mark. Applications for marks depicted in color must include a complete list of all the colors that are claimed as a feature of the mark and a description of the literal and design elements in the mark that specifies where the colors appear in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). In addition, the color claim and mark description must reference all the colors in the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(a)(ii).
Therefore, applicant must clarify whether color is claimed as a feature of the mark by satisfying one of the following:
(1) If color is not a feature of the applied-for mark, applicant must submit a substitute black and white drawing of the mark to replace the color drawing of record. However, amendments or changes to the mark will not be accepted if the changes would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.07(a)(i), 807.14. Amending the drawing to agree with the specimen would likely not be considered a material alteration of the mark in this case.; or
(2) If color is a feature of the applied-for mark, applicant must submit both a statement listing all of the colors that are claimed as a feature of the mark and a statement describing the literal and design elements in the mark that specifies where the colors appear in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a). If black, white and/or gray appear in the mark and are not being claimed as colors, applicant must also include a statement that the colors <black, white, and/or gray> represent background, outlining, shading and/or transparent areas and are not part of the mark. TMEP §807.07(d). The following format is suggested: “The colors blue and green are claimed as a feature of the mark. The mark consists of the following: the letters ISA in blue followed by a green circular design.”
See TMEP §807.07(b).
/Tracy Cross/
Examining Attorney
Law Office 109
Phone: (571) 272-9271
Fax: (571) 273-9109
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.