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: 8/23/2012

 

 

 

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, 2.65(a); TMEP §§711, 718.03.

 

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. 3637892, 3949783 and 3949784.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The applicant applied to register JAMES CAMERON’S AVATAR for, “computer services in the field of providing on-line news and information via the Internet; providing on-line directories, databases, and search engines for obtaining data on a wide variety of topics and fields; hosting of digital content on the Internet, on-line journals and blogs.” The registered marks are all AVATAR for, “application service provider (ASP) featuring software for use in content development, instructional design, content input services, system customization, and web hosting services in the field of education management”(first registrant) and “computer services, namely, providing temporary use of nondownloadable computer software for use in recording, tracking, and reporting patient status, ambulatory notes, medical staff tasks, medical staff patient assignments, medical staff workflow management, bed availability status, nursing assessment information, patient diagnosis, patient treatment planning, patient progress notes and reports, and generating patient discharge instructions, all in the fields of behavioral health and mental health care; providing temporary use of nondownloadable computer software for use in the field of public health, namely, for tracking and providing data on public health related clinical assessments, clinical encounters, dental encounters, public health risks, disease monitoring and management, and plan of care information; providing temporary use of nondownloadable computer software for use in tracking and managing patient medical procedures and treatments, patient laboratory orders, patient medications, patient medical history, patient and insurance billing information, and for maintaining complete patient records, all in the fields of behavioral health,  mental health care and public health; providing maintenance and repair of computer software for use in  the fields of behavioral health, mental health care and public health; providing updates to computer software for use in the fields of behavioral health, mental health care and public health; technical support services, namely, troubleshooting of computer software problems for software used in the fields of behavioral health, mental health care and public health; installation of computer software for use in the fields of behavioral health, mental health care and public health.” Second and third registrant, owned by the same registrant).

 

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, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  In the seminal decision In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court 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 the factors are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 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 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

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v).  Similarity in any one of these elements may be sufficient to find the marks 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).

 

In the present case, applicant’s mark JAMES CAMERON’S AVATAR is similar to the registered marks AVATAR because the applicant’s mark is simply the registered mark with the name JAMES CAMERON’S added to it. Despite this slight difference, the marks share the word AVATAR, and therefore look alike, sound alike, and have the same commercial impression.

 

COMPARISON OF THE SERVICES

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).

 

Applicant’s “computer services in the field of providing on-line news and information via the Internet; providing on-line directories, databases, and search engines for obtaining data on a wide variety of topics and fields; hosting of digital content on the Internet, on-line journals and blogs” are related to the registrant’s services of for example, “providing temporary use of nondownloadable computer software for use in the field of public health, namely, for tracking and providing data on public health related clinical assessments, clinical encounters, dental encounters, public health risks, disease monitoring and management, and plan of care information” because the applicant’s database and search engines for obtaining data on a wide variety of topics and fields” encompasses a large array of different topics that could include education management (the subject matter of the first registrant’s software) and  public health (the subject matter of the second and third registrant’s software). Accordingly, the services would be used by the same class of purchasers and encountered under circumstances leading one to believe the services originate from the same source.

 

Please see the attached Internet stories. These stories show that search engines allow one to search for information on a wide variety of topics.

 

http://webserach.about.com/od/medicalsites/tp/Web-Md-Search.htm

http://collegetimes.us/100-search-engines-for-business-students/

http://www.archives.gov/research/alic/tools/online-databases.html

http://ncss.cua.edu/fise/

 

Since the marks and the services are similar, there is a likelihood of confusion as to the source of the applicant’s services. Therefore, applicant’s mark is not entitled to registration.

 

Identification of Services

The identification of services is indefinite and must be clarified because as written, some of the wording, namely, “directories” is misclassified. This wording is correctly classified in class 35.  See TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

Providing an online video business directory, in class 35;

 

Providing a web site featuring temporary use of non-downloadable software for [specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, in a wide variety of topics and fields; computer services, namely, providing search engines for obtaining data on a wide variety of topics and fields; hosting of digital content on the Internet, namely online journals and blogs, in class 42. 

An applicant may amend an identification of services only to clarify or limit the services; adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

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.

 

NOTICE OF IMPLEMENTATION OF THE NEW EDITION OF THE NICE AGREEMENT - CHANGES TO CLASSIFICATION APPLY TO APPLICATIONS FILED ON OR AFTER JANUARY 2, 2007:  Effective January 1, 2007, the Ninth Edition of the Nice Agreement brought about significant changes to the classification of certain goods and services.  All applications filed on or after January 2, 2007, must comply with the classification specified in the Ninth Edition.  TMEP §1401.10. 

 

For applications filed before January 2, 2007, compliance with the Ninth Edition is optional; and any such applicants who opt to follow the Ninth Edition must advise the assigned trademark examining attorney.  See TMEP §1401.11.  The Office’s online Acceptable Identifications of Goods and Services Manual, located at http://tess2.gov.uspto.report/netahtml/tidm.html, has been updated to reflect the classification changes in the Ninth Edition.  See TMEP §1402.04. 

 

Insufficient Fee

The application identifies goods and/or services that are classified in at least two classes; however, the fees submitted are sufficient for only one class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

The filing fees for adding classes to an application are as follows:

 

(1)  A $325 fee per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp, via the Trademark Electronic Application System (TEAS).

 

(2)  A $375 fee per class, when the fees are submitted with a paper response.

 

37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).

 

Particular Wording too Broad

The wording “COMPUTER SERVICES IN THE FIELD OF PROVIDING ON-LINE NEWS AND INFORMATION VIA THE INTERNET” in the identification of services needs clarification because it is too broad and could include services classified in other international classes.  For example,  “providing on-line information and news in the field of employment training” is in class 41; while “providing on-line information and news in the field of law” is in class 45. The applicant must state the field of the on-line information and news so that the service may be properly classified. .See TMEP §§1402.01, 1402.03.

 

Telephone for Clarification Recommended

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.

 

/Inga Ervin/

Inga Ervin

Law Office 111

571 272-9379

571-273-9379 (fax)

Inga.Ervin@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 8/23/2012 FOR

SERIAL NO. 85612440

 

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 8/23/2012 (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.