| To: | ASAP Customized Accounting and Payroll S ETC. (nicole.pieterse@lawtelluride.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 85415359 - ASAP - Colo. Atty. |
| Sent: | 12/28/2011 8:02:56 AM |
| Sent As: | ECOM105@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 85415359
MARK: ASAP
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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: ASAP Customized Accounting and Payroll S ETC.
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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: 12/28/2011
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
Summary of Issues That Applicant Must Address
Section 2(d) Refusal – Likelihood of Confusion
Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361-62, 177 USPQ 563, 567 (C.C.P.A. 1973); In re 1st USA Realty Prof’ls Inc., 84 USPQ2d 1581, 1584 (TTAB 2007); see also In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). 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).
Comparison of the Marks
The applicant's mark “ASAP” and design and the registrants’ marks “A.S.A.P. PERSONNEL” and “UP TO SPEED, ASAP!” are similar in appearance, sound, connotation, and commercial impression. These marks contain the term “ASAP.” Overall, the marks have the same commercial impression.
The applicant’s mark merely deletes the periods between the letters and the generic term “PERSONNEL” from the registered mark “A.S.A.P. PERSONNEL” and deletes the wording “UP TO SPEED” and the exclamation mark from the registered mark “UP TO SPEED, ASAP!” The mere deletion of wording from registered marks may not be sufficient to overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). The applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registrants’ marks, and there is no other wording to distinguish it from the registrants’ marks.
Comparison of the Goods/Services
The applicant has applied for use of its mark with business consultation and human resource services, among other related services. The registrants use their marks with business consulting and employment agency services. As explained below, the wording “human resource services” is indefinite and could include employment agency services, Therefore, the applicant’s and registrants’ services are likely to be encountered by the same purchasers in the same channel of trade. The applicant’s and registrants’ services are sufficiently similar to cause the incorrect conclusion that the services come from the same source.
For the reasons stated above, the examining attorney finds that because a likelihood of confusion exists between the applicant's mark and registered marks, registration of the applicant's mark is barred under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following requirements.
Identification and Classification of Services
The identification of services is unacceptable because the terms “payroll services” and “human resource services” are indefinite. The applicant must indicate the specific types of payroll services, e.g., payroll preparation services (Class 35), payroll tax debiting services (Class 36). The applicant must also indicate the specific types of human resource services, e.g., human resources consultation (Class 35), employment agency services (Class 35).
See TMEP §1402.01.
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. See TMEP §1402.04.
Multiple Class Requirements
(1) LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods and/or services by international class;
(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”); and
(3) SUBMIT REQUIRED STATEMENTS AND EVIDENCE: For each international class of goods and/or services, applicant must also submit the following:
(a) DATES OF USE: 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) SPECIMEN: One specimen showing the mark in use in commerce for each international class of goods and/or services. Applicant must have used the specimen in commerce at least as early as the filing date of the application. If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports. Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the goods at their point of sale. See TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.;
(c) STATEMENT: The following statement: “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: Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20. A sample declaration is attached for the applicant’s use. 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, and (2) the original specimens are acceptable for the added class(es).
See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).
With respect to the specimen requirement in 3(b) above in which a specimen is required for each international class of services, the specimens of record are acceptable for Class 35 only. Applicant must submit additional specimens if different international classes are added to the application.
Option to Change Filing Basis. If applicant cannot provide a specimen of use as to the other suggested classes, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis) as to those classes, for which no specimen is required before publication. However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen and filing fee. 15 U.S.C. Section 1051(c); 37 C.F.R. Section 2.76, 2.88; TMEP Chapter 1100.
In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. Section 2.20: “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 (specify particular classes) as of the filing date of the application.” 15 U.S.C. Section 1051(b); 37 C.F.R. Sections 2.34(a)(2), 2.35(b)(1); TMEP Section 806.03(c). A sample declaration is attached for the applicant’s use.
/Leigh Caroline Case/
Trademark Attorney, Law Office 105
(571) 272-9140
leigh.case@uspto.gov (informal communication)
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.
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NUMBER: 85415359
EXAMINING
ATTORNEY: Leigh Case
LAW OFFICE: 105
DECLARATION FOR USE-BASED APPLICATION
(for use in adding classes)
The mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date.
The date of first use of the mark in commerce ________; the date of first use of the mark anywhere: ______.
The specimen submitted by the applicant was in use in commerce at least as early as the filing date of the application.
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 the facts set forth in this declaration are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
Date:
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NUMBER: 85415359
EXAMINING
ATTORNEY: Leigh Case
LAW OFFICE: 105
The 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 in Classes [indicate] since the filing date of the application.
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 the facts set forth in this declaration are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
Date:
