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: 3/23/2012

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

Section 2(d)-Refusal To Register

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2542742 and 3760476.  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.  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).

 

The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).

 

The cited registered marks POSTALMATE in typed form and POSTALMATE and design, and applicant’s mark POSTMATES in standard character, are highly similar in their appearance, sound, connotation and commercial impression.  The marks are compared in their entireties under a Trademark Act Section 2(d) analysis.  See TMEP §1207.01(b).  Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression; greater weight is given to that dominant feature in determining whether the marks are confusingly similar.  See In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); TMEP §1207.01(b)(viii), (c)(ii).  Here, the similarities in appearance, sound, connotation and commercial impression between the wordings in both marks, namely “POSTALMATE” and “POSTMATES”, create the same overall impression.

 

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 and/or services; therefore, the word portion is normally accorded greater weight in determining whether marks are confusingly similar.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); TMEP §1207.01(c)(ii); see CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011).  Since the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison but whether the marks create the same overall impression, with the focus on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks, the high degree of similarity between the wordings in the marks in issue outweighs the fact that one of the cited registered marks for the identical wording features design elements, given that the word portion is normally accorded greater weight in determining whether marks are confusingly similar.  Therefore, the marks POSTALMATE in typed form and POSTALMATE and design, and applicant’s mark POSTMATES in standard character are confusingly similar marks.

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient to show that because of the conditions surrounding their marketing, or because they are otherwise related in some manner, the goods and/or services would be encountered by the same consumers under circumstances such that offering the goods and/or services under confusingly similar marks would lead to the mistaken belief that they come from, or are in some way associated with, the same source.  In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); TMEP §1207.01(a)(i).

 

The goods and services in the cited registrations, namely “computer software for automation of shipping and mailing functions, such as label printing, integrated point-of-sale, accounts receivable and mailbox management” and “Downloadable computer software for the retail mail and parcel shipping industry to automate commonly performed business functions, namely, point-of-sale cash register transactions, accounts receivable and inventory management, processing of shipping and mailing transactions using third party shipping companies, calculation and comparison of shipping rates and delivery times offered by third party shipping companies, printing of mailing and shipping labels, postage calculation and printing of postage labels, electronic communication with third party shipping companies, e-mail communication with shipping customers regarding transit and delivery status of shipments, self-service functionality to allow shipping customers to initiate and input data regarding their own shipments; reporting features to enable a retail mail and parcel shipping business to determine transaction volume and profits for the services it offers; and management of on-premises rented physical mailboxes” and applicant’s goods and services, namely “computer software for use in preparing and printing shipping documents and invoices and tracking shipped packages, cargo, freight, baggage and mail, and for logistics planning and supply chain management solutions; computer software in the field of transportation and delivery and in connection with pick-up, tracing and delivery; computer software for providing automated download of files, for preparing and printing of shipping labels, documents and invoices, for providing electronic shipping labels, shipping documents and invoices, for providing information on available transportation and delivery services, and for providing delivery documentation; computer software that enables users to manage and track shipping, storage, import and export processing, and transportation, distribution and delivery of packages, cargo, freight, baggage and mail; computer software that enables users to pay shipping fees, import and export processing fees, storage and transportation fees, and related fees over electronic and optical communications networks; computer software that enables users to manage and track shipping, storage, import and export processing, and transportation, distribution and delivery of packages, cargo, freight, baggage and mail; computer software that enables users to pay shipping fees, import and export processing fees, storage and transportation fees, and related fees over electronic and optical communications networks” and “providing temporary use of nondownloadable software for use in preparing and printing shipping documents and invoices and tracking shipped packages, cargo, freight, baggage and mail, and for logistics planning and supply chain management solutions; providing temporary use of nondownloadable software in the field of transportation and delivery and in connection with pick-up, tracing and delivery; providing temporary use of nondownloadable software for providing automated download of files, for preparing and printing of shipping labels, documents and invoices, for providing electronic shipping labels, shipping documents and invoices, for providing information on available transportation and delivery services, and for providing delivery documentation; providing temporary use of nondownloadable software that enables users to manage and track shipping, storage, import and export processing, and transportation, distribution and delivery of packages, cargo, freight, baggage and mail; providing temporary use of nondownloadable software that enables users to pay shipping fees, import and export processing fees, storage and transportation fees, and related fees over electronic and optical communications networks; providing temporary use of nondownloadable software that enables users to manage and track shipping, storage, import and export processing, and transportation, distribution and delivery of packages, cargo, freight, baggage and mail; providing temporary use of nondownloadable software that enables users to pay shipping fees, import and export processing fees, storage and transportation fees, and related fees over electronic and optical communications networks” are both computer software goods and software services providing nondownloadable software for the same, similar and/or highly related functions, uses and/or purposes as specified, namely mailing and shipping, tracking shipments, and printing shipping labels and documents.  Copies of web pages and/or web sites from a search of the online search engine Google.com are attached to this office action that show software for mailing, shipping tracking, printing and processing labels and shipping or mailing documents are offered from the same sources.  Since both the registrant’s goods and services and applicant’s goods and services are identified as for the same field, function, purpose and/or use, namely computer software for shipping and mailing functions and providing nondownloadable software for shipping and mailing functions, the computer software and nondownloadable software of both the registrant and the applicant are related for purposes of analysis under Section 2(d).

 

Based upon the foregoing, registration is refused under Section 2(d).

 

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 regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

/Dominic J. Ferraiuolo/

Attorney  US Patent & Trademark Office

Law Office 102

tel: (571)-272-9156

fax: (571) 273-9102

dominic.ferraiuolo@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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 3/23/2012 FOR

SERIAL NO. 85489289

 

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 3/23/2012 (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.