To: | The Open University (rgetz@osheagetz.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85235462 - ISPOT - 1018-0003 |
Sent: | 11/15/2011 8:38:06 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 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85235462
MARK: ISPOT
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: The Open University
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 11/15/2011
THIS IS A FINAL ACTION.
This letter is in response to Applicant’s communication filed on October 25, 2011.
The Applicant has (1) argued against the Section 2(d) refusal, and (2) amended the identification of services. The examining attorney has considered the Applicant’s arguments, but has found them to be unpersuasive. For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 2543813 and 3473368. See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).
THIS PARTIAL FINAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN
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 Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.
COMPARISON OF MARKS
In the present case, applicant’s mark is ISPOT and the registered marks are (1) ISPOT (Reg. No. 2543813) and (2) EYESPOT (Reg. No. 3473368). The marks are either literally or phonetically identical. In addition, the meaning, connotation, and commercial impression of the marks do not differ when used in connection with the parties’ respective goods and/or services.
Thus, the marks are confusingly similar.
COMPARISON OF GOODS/SERVICES
The applicant’s services are “provision of online educational resources including images, videos and sound recordings”, and “Online social networking services” and the registered services are (1) “ELECTRONIC MAIL SERVICES”, and “COMPUTER SERVICES, NAMELY, CREATING AND MAINTAINING WEB SITE AND HOME PAGES FOR OTHERS; WEB PAGE HOSTING SERVICES FOR OTHERS; PRODUCT DEVELOPMENT IN THE FIELD OF INFORMATION TECHNOLOGY; PRODUCT DEVELOPMENT CONSULTATION IN THE FIELD OF INFORMATIONAL TECHNOLOGY; DESIGN AND IMPLEMENTATION OF COMPUTER NETWORKS FOR OTHERS; COMPUTER INFORMATION NETWORK CONSULTATION (Reg. No. 2542313) and (2) “Downloadable suite of computer software for uploading, editing and sending video clips, audio files and photos”, and “Providing a website featuring temporary use of nondownloadable software allowing website users to upload online video clips, files and photos for sharing with others for entertainment purposes.” (Reg. No. 3473368). Despite the applicant’s arguments to the contrary, the services are related because the applicant’s recitation encompasses services of the same sort as those offered by the registrants. The applicant’s services include providing blogs, chat rooms and discussion rooms, which is highly similar to that of providing electronic mail services and hosting web pages for others and in addition, is also very highly similar to that of providing a website in which video or photos can be shared with others. Further, the conditions surrounding the marketing of the services may be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the services come from a common source.
It is well settled that in a likelihood of confusion analysis, the comparison of the parties’ goods and/or services is based on the goods and/or services as they are identified in the application and registration, without limitations or restrictions that are not reflected therein. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); see Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638-39 (TTAB 2009); TMEP §1207.01(a)(iii).
The applicant argues that the services are not similar however, with regard to the specified services at issue in this case, the identification set forth in the cited registration uses broad wording to describe registrant’s goods and/or services and does not contain any limitations as to nature, type, channels of trade or classes of purchasers. Therefore, it is presumed that the registration encompasses all goods and/or services of the type described, including those in applicant’s more specific identification, that the goods and/or services move in all normal channels of trade, and that they are available to all potential customers. See Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); TMEP §1207.01(a)(iii).
RESPONSE TO OFFICE ACTION
The application will then proceed for the remaining services. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).
Applicant may respond to this final Office action by:
(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).
/Sanjeev K. Vohra/
Trademark Examining Attorney
Law Office 110
571.272.5885 - Work
571.273.5885 - Fax
sanjeev.vohra@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.