To: | Aeon Interactive, LLC (usptomail@whitelawfirm.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86072709 - AEON - N/A |
Sent: | 1/15/2014 3:52:17 PM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86072709
MARK: AEON
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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: Aeon Interactive, LLC
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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: 1/15/2014
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.
TRADEMARK ACT SECTION 2(d) REFUSAL
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3420282. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
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
In this case, applicant’s mark, AEON, is similar in sound, appearance and meaning to the registered mark(s), AEON EDUCATION. Both marks begin with or wholly consist of the term “aeon.” Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).
The only notable difference between the marks is registrant’s additional wording “education.” The mere deletion of wording from a registered mark 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). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.
Given the shared wording and similar structure of the marks, they convey a similar commercial impression.
COMPARISON OF THE GOODS AND/OR SERVICES
Adding to the confusion as to source is the relatedness of applicant’s goods and services to the services recited by the registrant. The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods and/or services need only be related in some manner or the conditions surrounding their marketing be such that they will be encountered by the same consumers under circumstances that would lead to the mistaken belief that the goods and/or services originate from the same source. Gen. Mills Inc. v. Fage Dairy Processing Indus., 100 USPQ2d 1584, 1597 (TTAB 2012); TMEP §1207.01(a)(i); see On-line Careline Inc. v. Am. Online Inc., 229 F.3d at 1086, 56 USPQ2d at 1475; In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Here, applicant’s goods and/or services are identified as: Web based Interactive environments that deliver information, education and social networking; Web based Interactive environments that deliver information, education and social networking in the field of tennis and tennis related topics; Web based Interactive environments that deliver information, education and social networking in the field of sports, medicine and corporate training; Mobile device software and applications (for phones and tablets) on a variety of platforms; Mobile device software and applications (for phones and tablets) on a variety of platforms in the field of tennis and tennis related topics; Mobile device software and applications (for phones and tablets) on a variety of platforms in the field of sports, medicine and corporate training
Similarly, registrant’s services are identified as: Computer services, namely, a web-based suite of applications devoted to educational services and the development of online learning communities through the use of integrated web-based applications, shared resource computers, digital media, and database development
As the attached website evidence shows, creators of the web-based environments and software applications such as those described by applicant also provide applications devoted to educational services and the development of online learning. For example, TrainingPeaks offers a suite of web and computer based products that allow users to create athletic training plans, track their performance and receive coaching and educational information through an online environment and computer application software. See the attached. USTA also offered web-based and software goods and services in the field of tennis, including educational information and online learning opportunities related to tennis and fitness in general. See the attached. Thus, applicant’s goods relate to registrant’s in that they emanate from the same sources and both serve an educational purpose.
Given the similarity of the marks and the relatedness of applicant’s goods and/or services to the services identified by the registrant, confusion as to source is likely and registration is refused under Trademark Act section 2(d).
Please note: A revision of the identification of goods and/or services that is sufficiently narrow in scope to rule out and dissimilarity and/or overlap with the registrant’s services may obviate the instant refusal.
Applicant must respond to the requirement(s) set forth below.
IDENTIFICATION OF SERVICES
The wording “Web based Interactive environments that deliver information, education and social networking; Web based Interactive environments that deliver information, education and social networking in the field of tennis and tennis related topics; Web based Interactive environments that deliver information, education and social networking in the field of sports, medicine and corporate training” in the identification of goods and/or services needs clarification because it is too broad and could include services classified in other international classes. Applicant must make clear the mechanism for the “delivery” of this information. If applicant is providing software, applicant may so indicate. If it provides an interactive website featuring information, applicant may so indicate. See TMEP §§1402.01, 1402.03.
Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description.
Applicant may substitute the following wording, if accurate:
CLASS 9: Mobile device software and computer application software for phones and tablets for {specify the function of the software, e.g. accessing news in the fields of tennis, medicine and corporate training}; Mobile device software and computer application software for phones and tablets for {specify the function of the software, e.g. accessing information relating to tennis and tennis-related topics}; Mobile device and computer application software for phones and tablets for {specify the function of the software, e.g. accessing information relating to sports, medicine and corporate training}
CLASS 42: {Specify delivery mechanism, e.g. providing online non-downloadable software for accessing information about tennis, tennis related topics, sports, medicine, corporate training and social networking related thereto}
SCOPE ADVISORY
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
COMBINED APPLICATION ADVISORY
(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.gov.uspto.report/trademarks/tm_fee_info.jsp).
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
Applicant has paid the fee for one class; however, the present identification is broad enough to include 2 or more classes.
RESPONSE GUIDELINES
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.
/Emily K. Carlsen/
Trademark Attorney
Law Office 103
571.272.2235
emily.carlsen@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.