UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/924927
APPLICANT: Bic D. Pho
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: MENTOR
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 78/924927
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Section 2(d) - Likelihood of Confusion Refusal
Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2410079. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration. The respective marks contain the identical term “MENTOR.” The marks are compared 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).
Applicant’s “real estate services” as identified encompass services related to the cited goods in the field of real estate selling skills. The broad identification of “real estate services” would include all services related to real estate. 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).
Upon viewing the respective marks, prospective consumers would likely believe that the applicant’s services and the goods in the cited registration emanate from the same source.
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
Identification and Classification of Services
The identification of services is indefinite and must be clarified because it is too broad and could include services in other international classes. TMEP §§1402.01 and 1402.03. Applicant must properly classify and specify the exact services, e.g., real estate brokerage-Class 36.
Proper identification and classification is required. TMEP §§1402.01 and 1402.03.
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.
Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.
Combined Applications
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):
(1) Applicant must list the goods/services by international class with the classes listed in ascending numerical order;
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and
(3) For each additional class of goods and/or services, applicant must submit:
(a) dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;
(b) one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;
(c) a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and
(d) verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20. (NOTE: Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)
37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).
The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.
Distinctiveness under Section 2(f)
Applicant states that the applied-for mark has acquired distinctiveness under Section 2(f) of the Trademark Act. However, this statement is unnecessary because the mark appears to be inherently distinctive. 15 U.S.C. §1052(f); TMEP §1212.02(d). Applicant can withdraw the claim of acquired distinctiveness by instructing the trademark examining attorney to delete it from the application record.
The application does not include the required dates of first use of the mark. Applicant must provide the following, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: (1) the date of first use of the mark anywhere, and (2) the date of first use of the mark in commerce. 15 U.S.C. §1051(a)(2); 37 C.F.R. §§2.34(a)(1)(ii)-(iii) and 2.71(c); TMEP §§903 et seq. These two dates must be provided even if they are the same. TMEP §903.04.
This application does not include a specimen for the identified services. A specimen showing use of the mark in commerce for the identified services is required for an application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a). TMEP §904.
Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce in the sale or advertising of the services, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.
Examples of acceptable 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.
To satisfy verification requirements for Trademark Act Section 1(a), applicant may add the following declaration paragraph at the end of its response, properly signed and dated:
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in application as of the application filing date; that the facts set forth in the application are true and correct; that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
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(Print or Type Name and Position)
_____________________________
(Date)
If the declaration is filed electronically through TEAS, then applicant should sign the declaration by entering a “symbol” that applicant has adopted as a signature (e.g., /john doe/, /drl/, and /544-4925/). The Office will accept any combination of letters, numbers, spaces and/or punctuation marks as a valid signature if it is placed between two forward slash (“/”) symbols. 37 C.F.R. §§2.33(d) and 2.193(c)(1)(iii); TMEP §§304.07 and 804.05.
If applicant cannot submit a proper specimen, applicant can amend the basis to Section 1(b) and satisfy all the requirements for this new basis. TMEP §806.03(c).
Where an application is based on a bona fide intention to use the mark in commerce, applicant must submit the following statement:
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.
This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).
To satisfy verification requirements for Trademark Act Section 1(b), applicant may add the following declaration paragraph at the end of its response, properly signed and dated:
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. 1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in commerce; that the applicant 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 application filing date; that the facts set forth in the application are true and correct; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.
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(Signature)
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(Print or Type Name and Position)
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(Date)
If the declaration is filed electronically through TEAS, then applicant should sign the declaration by entering a “symbol” that applicant has adopted as a signature (e.g., /john doe/, /drl/, and /544-4925/). The Office will accept any combination of letters, numbers, spaces and/or punctuation marks as a valid signature if it is placed between two forward slash (“/”) symbols. 37 C.F.R. §§2.33(d) and 2.193(c)(1)(iii); TMEP §§304.07 and 804.05.
/Fred Mandir/
Examining Attorney
Law Office 105
(571) 272-9192
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.