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The disclaimer of OCEAN and the amended Class 42 identification of services are acceptable. Applicant has met the requirements for multiple class applications.

The earlier filed pending applications 77-340500 and 77-340498 have matured into registrations which are cited against the applicant in the refusal below.

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3,652,793 and 3,652,794. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.

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 goods and/or 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).

The proposed mark is OCEAN EXPRESS for:

Property and ocean marine insurance underwriting services; providing information in the field of property and ocean marine insurance, in Class 36; and

Property and ocean marine insurance services, namely an online, non-downloadable interface for rating, quoting, binding, and issuing insurance coverage, in Class 42.

The registered marks are:

OCEANEXPRESS (Registration No. 3,652,793) for:

Shipping agency services, namely, freight deconsolidation services, namely, unloading of freight containers, parceling and transport of freight to designee; supply chain, logistics and reverse logistics services, namely, storage, transportation and delivery of documents, packages, raw materials, and other freight for others by air, rail, ship or truck; warehousing services, namely, storage, distribution, pick-up, and packing for shipment of documents, packages, raw materials, and other freight for others; shipping services, namely, shipping of goods; line haul services, namely, transport of goods by air, rail, ship or truck; marine transport services; surface transport services, namely, shipment of goods via truck or rail; shipping agency services, namely, freight on forwarding services, in Class 39; and

OCEAN EXPRESS (Registration No. 3,652,794) for:

The applicant’s mark is identical to the mark in Registration No. 3,652,793 and essentially identical to the mark in Registration No. 3,652,794. If the marks of the respective parties are identical, the relationship between the goods and/or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).

The parties provide related services. Consumers interested in obtaining shipping and freight transportation services are also interesting in obtaining insurance services relating to insuring against loss during the transportation. Consumers will encounter these services in the same channels of trade. As evidence of the relatedness of the parties’ services, the examining attorney refers to the 20 attached registrations from the Trademark Office’s X-search database showing the same parties providing shipping, transportation, supply chain and logistics services and insurance services, including in the field of property and marine insurance. These registrations are attached as a representative sample.

Consumers who see the parties’ identical and essentially identical marks used in connection with their related services are likely to be confused about the source of the services.

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

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

/Ellen Awrich/

Trademark Examining Attorney

Law Office 116

571-272-9123

ellen.awrich@uspto.gov

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.

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