UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 12/12/2011

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on November 17, 2011.  Applicant’s amendment to its identification of services is noted and made of record.

 

Section 2(d) - Likelihood of Confusion Refusal--FINAL

Registration was refused under Trademark Action Section 2(d), 15 U.S.C. Section 1052(d), on the ground that applicant’s mark, when used on or in connection with the identified services, so resembles the marks in U.S. Registration Nos. 3767180 and 3767182 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  The cited registrations were sent previously.  Although the examining attorney has carefully considered applicant’s arguments in support of registration, she finds them unpersuasive for the following reasons:

 

As noted previously, 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 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.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity of the services, and similarity of trade channels of the services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

 

The overriding concern is not only to prevent buyer confusion as to the source of the services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).

 

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).

 

Identical and/or Nearly Identical Marks

 

Applicant’s mark, “TPS,” is identical to the registrant’s mark “TPS,” (Reg. No. 3767182) since both are presented in standard character format.

 

The only difference between applicant’s mark and Registration No. 3767180 (“TPS” in a stylized font) is that the registrant’s mark is stylized and applicant’s mark is not.  However, the fact that registrant’s mark also includes a design element would not obviate a likelihood of confusion.  When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods.  Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii).

 

In its response, applicant argues that the marks have different meanings, since applicant’s mark stands for “The Personnel Store,” and registrant’s mark stands for “Therapy Placement Services.”  Yet this difference in meaning may only be obtained by viewing additional information about applicant’s and registrant’s business—not from the marks themselves.  Plus, the marks are identical in sound.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

In sum, all three marks share the identical and distinctive acronym
“TPS.”  Consumers who are familiar with registrant’s mark “TPS” for employment staffing services in the field of speech therapy, occupational therapy and physical therapy are likely to assume that applicant’s mark “TPS,” also for employment staffing services, simply represents new or special services offered from the registrant.  In re Compania Pequera Vikingos de Colombia, S.A., 221 USPQ 556 (TTAB 1984).

 

Closely Related Services

 

Both applicant and registrant provide employment staffing services.  In particular, registrant’s services are “staffing services in the field of speech therapy, occupational therapy and physical therapy.”  The applicant’s amended services are “Employment agency services, namely, filling the temporary and permanent staffing needs of businesses, excluding in the fields of speech therapy, occupational therapy and physical therapy.”

 

Despite applicant’s amendment to its identification of services excluding staffing services “in the fields of speech therapy, occupational therapy and physical therapy,” the services are still very closely related.  As the attached e-commerce evidence shows, employment staffing agencies commonly provide services in a wide variety of fields, from healthcare to diverse fields such as finance, legal, hospitality, IT, etc.  See Exhibits 1-4 attached. 

 

In addition, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar services as those of both applicant and registrant in this case.  This evidence shows that the services listed therein, namely, staffing services in the healthcare field as well as other diverse fields such as finance, legal services, hospitality, IT, etc., are of a kind that may emanate from a single source under a single mark.  See In re Davey Prods. Pty Ltd.,92 USPQ2d 1198, 1203 (TTAB 2009); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).

 

Thus, despite applicant’s argument to the contrary, this evidence clearly shows that consumers are accustomed to seeing a single service provider offering employment staffing services in a wide variety of industries, and that staffing services in diverse fields from healthcare to finance to hospitality are commonly offered in the same channels of trade.  In fact, one of the attached third-party registrations (Reg. No. 3885211) specifically offers staffing services in the field of “physical therapy, occupational therapy and speech therapy” as well as “finance professionals,” “business managers and executives,” “information technology professionals,” “light industrial and warehouse workers,” etc.  Thus, applicant’s argument that there is no overlap in the channels of trade of these types of staffing services is not convincing.

 

Applicant further argues that similar marks “can co-exist for staffing services when the services are offered to distinct purchasing groups.”  In support of this, applicant points out Registration No. 3917096 for “ADVANTAGE RN” and allowed Serial No. 77944179 for “ADVANTAGE STAFFING.”  However, these marks are quite distinguishable from the applicant and registrant’s marks since these marks are not identical or nearly identical, as are applicant’s and registrant’s.  Plus, the examining attorney notes that there are no other registered marks containing the distinctive acronym “TPS” for employment staffing services on the Register, making the registrant’s mark particularly strong.  In contrast, the examining attorney has attached five additional third-party registrations that include the word “ADVANTAGE” for employment staffing services, demonstrating that the term “ADVANTAGE” is diluted for these services.  See Registration Nos. 3247137 (TAX ADVANTAGE PERSONNEL), 4046092 (ADVANTAGE XPO), 3355777 (AK ADVANTAGE), 3366268 (TALENT ADVANTAGE) and 2017198 (SELECT ADVANTAGE ) attached.

 

Next, it is highly significant that all three marks share the identical literal element, “TPS.”  Where the marks of the respective parties are identical or virtually identical, the relationship between the relevant services need not be as close to support a finding of likelihood of confusion.  See In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); TMEP §1207.01(a).

 

Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the services of the respective parties that is required to support a finding of likelihood of confusion.  In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).

 

Last, applicant argues that there has been no actual confusion of the marks during four years of concurrent use.  However, this is inapposite.  The test under Trademark Act Section 2(d) is whether there is a likelihood of confusion.  It is unnecessary to show actual confusion in establishing likelihood of confusion.  TMEP §1207.01(d)(ii); e.g., Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990).  The Trademark Trial and Appeal Board stated as follows:

                                                            

[A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the contemporaneous use of the marks of applicant and registrant is of little probative value in an ex parte proceeding such as this where we have no evidence pertaining to the nature and extent of the use by applicant and registrant (and thus cannot ascertain whether there has been ample opportunity for confusion to arise, if it were going to); and the registrant has no chance to be heard from (at least in the absence of a consent agreement, which applicant has not submitted in this case).

 

In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).

 

Since the marks are identical or nearly identical and the evidence shows the services are closely related, there is a likelihood that purchasers would confuse the sources of the services or believe they stemmed from a single source.  Accordingly, the refusal to register under Section 2(d) of the Trademark Act due to a likelihood of confusion is proper, and is thus maintained and made final.

 

Response Guidelines

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned.  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).

 

 

 

 

 

/Allison P. Schrody/

Examining Attorney

Law Office 115

allison.schrody@uspto.gov

(571) 272-5893

(571) 273-9115 (fax)

 

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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 12/12/2011 FOR

SERIAL NO. 85285652

 

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

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.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 e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 12/12/2011 (or sooner if specified in the office action).

 

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.

 

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

 

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