UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 9/12/2008

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues 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

This Refusal Applies ONLY to Applicant’s Services Currently Classified in Class 42

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2672688.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  The marks are compared for similarities in their appearance, sound, connotation and commercial impression.  TMEP §§1207.01, 1207.01(b).  The services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).

 

Similarity of the Marks

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 

The applicant’s mark is ZAPP in standard character.  The cited mark is ZAPPZ.

 

Consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).   The applied-for mark is wholly contained within the registered mark.  The only minor difference in the marks is the addition of the “Z” at the end of the registered mark, giving it the impression of being the plural form of “zapp.”  Service marks consisting of the singular and plural forms of the same term are essentially the same mark.  Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark); In re Pix of Am., Inc., 225 USPQ 691, 692 (TTAB 1985) (noting that the pluralization of NEWPORT is “almost totally insignificant” in terms of likelihood of confusion among purchasers); In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962) (finding no material difference between the singular and plural forms of RED DEVIL).

 

The marks have highly similar features, including a double “p.” The first four letters of the marks are identical (the entire applied-for mark). Therefore, the marks are highly similar and would lead to confusion when used on the same or similar services.

 

Comparison of the Services—Services are Identical

 

The applicant seeks registration of its mark for use in connection with application service provider (asp) services, namely, providing, hosting, managing, developing and maintaining applications, software, web sites, and databases in the fields of art show management and arts and crafts show management, for use by sponsors of art shows to collect, process, manage, evaluate and jury applications from artists for entry into juried art shows and by artists to complete applications and upload digital images of their art work for submission to the sponsors of juried art shows.

 

The registrant’s identified services consist of providing a computer database hosting computer software applications and web sites of others.

 

The attached internet evidence from SearchSOA.com discusses the role of an application service provider (ASP). An ASP provides a computer database of various computer applications.  The applicant’s identification of services includes the providing, hosting, managing, and maintaining applications, software, web sites, and databases.  These services are identical and/or highly related to those of the applicant.

 

If the services of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Therefore, registration is refused under Section 2(d) of the Trademark Act.

 

Applicant should note the following additional ground for refusal.

 

Refusal- Specimen Does Not Show Use in Connection with Identified Goods and Services

 

The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the goods or services specified in the application.  An application must include a specimen showing the applied-for mark in use in commerce for each class of goods and services based on Section 1(a) in the application.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a), 1301.04. 

 

In this case, the specimen consists of a web page screenshot advertising the benefits of the ZAPP software.  The specimen makes no reference to services other than those provided by the applicant’s software, and makes to reference to software applications created or offered by others.  To the extent that applicant’s application service provider (ASP) services involve the provision of applicant’s own software and services, the ASP services are not considered services in commerce.   See TMEP §1301.01, et. seq.  Applicant must submit a specimen of use demonstrating that its ASP services are performed for the benefit of others.  Based on the specimen of use and the applicant’s website (www.zapplication.org), it appears that the Class 35 services detailed in the application are performed by the applicant’s software.  As such, the specimen of use does not demonstrate that the applicant, not the applicant’s software, provides the services identified in Class 35.  Applicant’s website appears to be merely the method by which customers access applicant’s software.

 

While the specimen does reference computer software, this specimen does not show use with class 9 goods.  For downloadable computer software, classified in International Class 9 (See Identification of goods and services discussion below), an applicant may submit a specimen that shows use of the mark on an Internet website. Such a specimen is acceptable only if it provides sufficient information to enable the user to download or purchase the software from the website. If the website simply advertises the software without providing a way to download it, the specimen is unacceptable. In re Osterberg, 83 USPQ2d 1220 (TTAB 2007); In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004). See TMEP §904.03(i) regarding electronic displays as specimens for trademarks.  See TMEP §904.03(e).

 

Therefore, applicant must submit the following:

 

(1)   A substitute specimen showing use of the mark for each class of goods and/or services specified in the application; and

 

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.05.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c).

 

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

 

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.

 

If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required.  However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100. 

 

In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.”  15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2), 2.35(b)(1); TMEP §806.03(c).

 

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services.  15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a). 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.

 

Applicant must respond to the requirement set forth below.

 

Identification of Goods and Services

 

Applicant must clarify the identification of goods and services by specifying the nature of the website and software.  See TMEP §1402.01.  Specifically, applicant describes its services as “art show management services” and “arts and craft show management services,” however, based on applicant’s specimen of use, applicant’s website (www.zapplication.org), and the portion of the Class 35 that follows the wording “namely,” it appears that applicant’s services consist of computer software that performs all of the functions specified in the Class 35 identification.  Applicant must clarify this inconsistency.  Applicant must also specify whether applicant’s software is downloadable or non-downloadable.  If applicant’s software is downloadable, applicant’s software would be a Class 9 good. If applicant’s software is non-downloadable, applicant’s provision of said software is a Class 42 service.  Finally, in order for applicant’s application service provider (ASP) services to be services in commerce, applicant must specify that applicant’s ASP services consist of the provision, hosting, management, development and maintenance of the applications, software, web sites, and databases of others.

 

Applicant may adopt the following identification of goods and services (suggested changes in bold), if accurate:

 

International Class 9

 

Downloadable computer software for the collection, processing, management, evaluation and jurying by the sponsors of juried art shows of applications and associated digital images of art work submitted by artists through an on-line web site accessed via a global computer network for the purpose of applying for entry into a juried art show; Downloadable computer software for the collection, processing, management, evaluation and jurying by the sponsors of juried arts and crafts shows of applications and associated digital images of arts and crafts work submitted by artists and crafters through on-line web site accessed via a global computer network for the purpose of applying for entry into a juried arts and crafts show

 

International Class 42

 

Providing a website featuring temporary use of non-downloadable computer software for the collection, processing, management, evaluation and jurying by the sponsors of juried art shows of applications and associated digital images of art work submitted by artists through an on-line web site accessed via a global computer network for the purpose of applying for entry into a juried art show; Providing a website featuring temporary use of non-downloadable computer software for the collection, processing, management, evaluation and jurying by the sponsors of juried arts and crafts shows of applications and associated digital images of arts and crafts work submitted by artists and crafters through on-line web site accessed via a global computer network for the purpose of applying for entry into a juried arts and crafts show;  application service provider (asp), namely providing, hosting, managing, developing and maintaining applications, software, web sites, and databases of others in the field of art show management for use by sponsors of art shows to collect, process, manage, evaluate and jury applications from artists for entry into juried art shows and by artists to complete applications and upload digital images of their art work for submission to the sponsors of juried art shows; application service provider (asp), namely providing, hosting, managing, developing and maintaining applications, software, web sites, and databases of others in the field of arts and crafts show management for use by sponsors of arts and crafts to collect, process, manage, evaluate and jury applications from artists and crafters for entry into juried arts and crafts shows and by artists and crafters to complete applications and upload digital images of their arts and crafts work for submission to the sponsors of juried arts and crafts shows

 

See TMEP §1402.01.

 

Identifications of goods and services can be amended only to clarify or limit the goods or services; adding to or broadening the scope of the goods or 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 goods or services that are not within the scope of the goods and services set forth in the present identification.

 

For assistance with identifying and classifying goods 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.

 

Note:  The submitted specimen of use is acceptable only for the suggested identification of services in Class 42.

 

Comments

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

 

 

/Nicholas A Coleman/

Examining Attorney

Law Office 115

Office: 571-272-4917

Fax: 571-273-9115

 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 9/12/2008 FOR

APPLICATION SERIAL NO. 77488023

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77488023&doc_type=OOA&mail_date=20080912 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 9/12/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.