| To: | Express Messenger Systems, Inc. (frank@schwartz-cera.com) |
| Subject: | TRADEMARK APPLICATION NO. 77252930 - ONTRAC - N/A |
| Sent: | 3/30/2009 5:54:49 PM |
| Sent As: | ECOM110@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/252930
MARK: ONTRAC
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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: Express Messenger Systems, 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.
ISSUE/MAILING DATE: 3/30/2009
THIS IS A FINAL ACTION
This letter responds to the applicant's communication filed on March 5, 2009.
Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2308856 as to be likely, when used in connection with the identified services, to cause confusion, or to cause mistake, or to deceive.
The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive. For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.
The applicant applied to register the mark, “ONTRAC” in standard characters, for use in connection with, “messenger and parcel pick up and delivery services; overnight parcel and package delivery services; postal services, namely international mail and package delivery; packaging articles for transportation.”
The registered mark is, “ON-TRAC NETWORK”, for use in connection with, “daily scheduled transportation by truck, namely, pickup, packaging, forwarding and unpacking of freight,” and, “tracking services for retrieval of encoded freight items.”
Trademark Act Section 2(d) bars registration where an applied-for mark so resembles a registered mark that it is likely, when applied to the goods and/or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods and/or services. TMEP §1207.01. 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 consider in determining whether there is a likelihood of confusion. Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression, and the relatedness of the goods and/or services. The overriding concern is to prevent buyer confusion as to the source of the goods and/or services. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).
The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b).
In the instant case, the applicant’s mark consists of the wording, “ONTRAC”. The mark of the registrant contains the same wording, the only difference being that the term is hyphenated in the mark of the registrant. Notwithstanding that the term is hyphenated in the mark of the registrant, the terms are similar in appearance and identical in sound, connotation and commercial impression.
Additionally, and as a general rule, consumers are 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 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). Consequently, it is of note that this common term, “ON-TRAC”, is the first word in the mark of the registrant. As such, it is the term upon which consumers are more inclined to focus. Therefore, there is an increased likelihood of confusion in the instant case than would be the case if the common terms were position differently in the marks.
The marks are different in that the registrant’s mark contains the additional term, “network”. However, the registrant has disclaimed this term and disclaimed matter is typically less significant or less dominant when comparing marks. 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. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); and In re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ 2d 1001 (Fed. Cir. 2002); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).
Furthermore, the additional term “network” in the mark of the registrant merely refers to a feature of the registrant’s business such that it does not distinguish the overall commercial impression of the mark of the applicant from that of the registrant. Also, the applicant has merely deleted this term to arrive at its mark and the mere deletion of wording from a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d). See In re Optical Int’l, 196 USPQ 775 (TTAB 1977) (where applicant filed to register the mark OPTIQUE for optical wear, deletion of the term BOUTIQUE is insufficient to distinguish the mark, per se, from the registered mark OPTIQUE BOUTIQUE when used in connection with competing optical wear). Therefore, 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.
Applicant argues that, when considered in their entireties, the marks create different commercial impressions because the applicant’s “mark creates a commercial impression of a direct and speedy delivery of a parcel or package,” whereas the additional word in the registrant’s mark “implies that there is a network of interdependent or related parts for picking up, packaging, forwarding, and unpacking freight as identified in Registrant’s description of its services.” The examining attorney has considered this argument carefully but has found it unpersuasive.
The term, “network,” refers to, “a system of lines or channels that cross or interconnect: a network of railroads,” and, “a complex, interconnected group or system: an espionage network.” See the attached from The American Heritage Dictionary of the English Language, Fourth Ed., 2000. As applied to the services of the registrant, the term merely describes a feature of the registrant’s services, namely, that it utilizes or comprises a network. For that reason, the registrant has disclaimed the term such that the dominant portion of the mark of the registrant, with respect to the overall commercial impression created by the mark, is the term “ON-TRAC.” Furthermore, given that the applicant’s services are “messenger and parcel pick up and delivery services; overnight parcel and package delivery services; postal services, namely international mail and package delivery; packaging articles for transportation,” the term “network” would be equally descriptive of the applicant’s services in the sense that the applicant’s delivery and postal services may utilize a network. For these reasons, the term, “network,” in the mark of the registrant does not distinguish the overall commercial impressions of the marks. Therefore, the dominant portion of the mark of the registrant with respect to the commercial impression created by the mark is the term, “ON-TRAC,” and as that term is similar in appearance, sound, connotation and commercial impression as the mark of the applicant, there is a likelihood of confusion as to source with regard to the marks.
The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. Instead, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).
The applicant's services are, “messenger and parcel pick up and delivery services; overnight parcel and package delivery services; postal services, namely international mail and package delivery; packaging articles for transportation.” The registrant's services are “daily scheduled transportation by truck, namely, pickup, packaging, forwarding and unpacking of freight,” and, “tracking services for retrieval of encoded freight items.” The services could be marketed to and used by the same consumers, within the same channels of trade.
As provided in the Office action dated September 8, 2008, both parties provide pickup, packaging and delivery of goods. The applicant specifies parcel and package delivery whereas the registrant’s services are with respect to freight. However, the term “freight” refers to, “goods carried by a vessel or vehicle, especially by a commercial carrier; cargo.” See The American Heritage Dictionary of the English Language, Fourth Ed., 2000 (attached to the Office action dated September 8, 2008). Therefore, the term “freight” is sufficiently broad as to include the parcels and packages of the applicant. In the Office action dated September 8, 2008, the examining attorney also provided 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.
Applicant argues that its “messenger and parcel pickup and delivery services, overnight parcel and package delivery services, international mail and package delivery, and packaging of articles for transportation’ are clearly directed toward different consumers than those which are targeted by Registrant for providing ‘daily scheduled transportation by truck, namely, pickup, packaging, forwarding and unpacking of freight.” In support of this argument, applicant provides a dictionary definition of “freight” as being a “a burden; a load” (thefreedictionary.com), and, “the ordinary transportation of goods by a common carrier and distinguished from express” (dictionary.com).
However, these definitions do not establish that the term “freight” precludes reference to the movement of parcels and packages. In fact, applicant’s own evidence offers the following additional definitions of freight: “goods carried by a vessel or vehicle, especially by a commercial carrier; cargo”; “commercial transportation of goods” (thefreedictionary.com); “goods, cargo, or lading transported for pay, whether by water, land, or air” (dictionary.com). Furthermore, a “parcel” is defined as, “something wrapped up or packaged; a package”; and, “package” is defined as, “a wrapped or boxed object; a parcel,” and, “a container in which something is packed for storage or transportation.” See the attached from The American Heritage Dictionary of the English Language, Fourth Ed., 2000. A plain reading of these definitions of parcel and package support the conclusion that they are goods of a type that may me transported commercially such they would fit squarely within the definition of freight. Therefore, the examining attorney is not persuaded by applicant’s argument.
In addition to the dictionary evidence provided herein, and the third party registrations provided in the previous Office action, the attached web pages evidence that it is common for entities that provide parcel and/or package services, to also provide services with respect to freight. See the attached, www.fedex.com, 2008, www.ups.com, 2008, www.pdqabq.com, 2008, www.metroparcelfreight.com, 2008, www.thefreightrateco.com, 2006. The trademark examining attorney refers to the excerpted articles from his search of the internet using the Google search engine in which parcel and/or package appeared in reference to freight in numerous stories. See attachments.
Printouts of articles downloaded from the Internet are admissible as evidence of information available to the general public, and of the way in which a term is being used by the public. TMEP §710.01(b). In re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76 (TTAB 1999); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370-1 (TTAB 1998). Because services with respect to parcels and/or packages and freight are commonly provided by single entities, they are services of a type that would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source such that there would be a there is a likelihood of confusion as to source with regard to the services.
Further, applicant constructively argues that the mark of the registrant is weak in light of the similar marks that co-exist on the Registry. Even if applicant has shown that the cited mark is “weak,” such marks are still entitled to protection against registration by a subsequent user of the same or similar mark for the same or closely related goods or services. See Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB 1976) and cases cited therein. Here, the literal element of the applicant’s mark is nearly identical to that of the registrant. Furthermore, the services are the same or highly related.
Finally, a similar matter has already been decided by the Trademark Trial and Appeal Board involving facts similar to those at issue in the instant case and involving the same applicant and registrant. See, In re Express Messenger Systems, Inc., Serial No. 77293261 (TTAB 2009).
For the foregoing reasons, the similarities among the marks and the goods/services are so great as to create a likelihood of confusion. The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).
For all of the reasons outlined above, and based on the evidence of record, the refusal to register under Section 2(d) of the Trademark Act is hereby continued and is made FINAL.
Options
(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).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
Paul C. Crowley
/Paul C. Crowley/
Trademark Attorney
Law Office 110
(571) 272-8846
Fax (formal responses only) (571) 273-9110
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.
