To: | Telesis Solutions Group, Inc. (matm@nixonpeabody.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85541031 - STEP - 063350-2 |
Sent: | 2/17/2013 7:58:55 PM |
Sent As: | ECOM114@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85541031
MARK: STEP
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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: Telesis Solutions Group, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 2/17/2013
The Office has reassigned this application to the undersigned trademark examining attorney.
This letter responds to applicant’s communication filed on August 20, 2012. Applicant amended the identification of services which is accepted. Thus, the requirement related thereto is withdrawn.
U.S. Application Serial No. 85133599 has since registered. Therefore, registration is refused as follows.
SECTION 2(D) REFUSAL DUE TO LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4199084. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
Applicant’s mark STEP and design for business services so resembles the mark STEP for business services in U.S. Registration No. 4199084 as to be likely to cause confusion, to cause mistake, or to deceive. Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d).
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
COMPARISON OF THE MARKS
Applicant’s mark is STEP and design. The mark in U.S. Registration No. 4199084 is STEP. Applicant’s mark and registrant’s mark are similar in appearance, sound, connotation and commercial impression related to the identical use of the word STEP. Although the applicant’s mark contains a design element, the word portions of the marks are nearly identical in sound, connotation, and commercial impression; therefore, applicant’s addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
Therefore, the marks are confusingly similar.
COMPARISON OF THE SERVICES
If the goods and/or services of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
Applicant’s services are business consulting services to businesses and companies, namely, analyzing, evaluating, designing, deploying, improving, managing, and/or monitoring new or existing strategic green and sustainable business policies, practices, techniques, and operations for reducing company expenses, improving productivity, increasing operational efficiencies, diminishing company carbon footprint, and positively affecting company profitability; Business consulting services to businesses and companies, namely, rating their new or existing green and sustainable business policies, practices, techniques, and operations and providing customized strategic plans for evaluation, improvement, implementation, management and monitoring of policies, practices, techniques, and operations for improving rating, increasing company profitability and reducing company carbon footprint; Providing web-based on-line portal that provides businesses and companies access to information about their green and sustainable strategic plan and green and sustainable business practices, techniques, and operations, and the ability to upload and input information about their green and sustainable business practices, techniques, and operations, to monitor progress and benchmarks and update status and rating of their green and sustainable practices, techniques, and operations, and to create models for decision-making purposes and assessment of their green and sustainable practices, techniques, and operations relative to their company's capital expenditures and expenses [emphasis added].
The services in U.S. Registration No. 4199084 are business services, namely, formulation of best practices for designing, integrating, constructing and operating environmentally sustainable in-building audio-visual systems [emphasis added].
Applicant’s services and registrant’s services are similar in kind and/or closely related because both are business services in the field of environmentally sustainability or green and sustainable business methodology. While registrant’s services are specifically limited to in-building audio-visual systems, applicant’s services involve designing strategic green and sustainable business policies, practices, techniques and operations for reducing company expenses, improving productivity, increasing operational efficiencies, diminishing company carbon footprint, and positively affecting company profitability. Applicant’s services are not mutually exclusive of that related to audio visual systems. Moreover, applicant’s business services relate to business operations are also not mutually exclusive of registrant’s business services related to audio-visual systems.
Absent restrictions in an application and/or registration, the identified goods and/or services are presumed to travel in the same channels of trade to the same class of purchasers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d at 1268, 62 USPQ2d at 1005. Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application use(s) broad wording to describe the goods and/or services and this wording is presumed to encompass all goods and/or services of the type described, including those in registrant(s)’s more narrow identification. Thus, given applicant’s overly broad identification of services, registrant’s more specific identification of environmentally business services are not mutually exclusive of applicant’s services.
Accordingly, the goods and/or services are considered related for purpose of the likelihood of confusion analysis.
Couple the similarity in commercial impression along with the related nature of the services and a consumer encountering both marks may wrongly assume that the services are derived from a common commercial source.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
/Brendan McCauley/
Brendan McCauley
Law Office 114
571-272-9459
Brendan.McCauley@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.