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: 2/12/2014

 

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.

 

This application was filed with the USPTO on November 8, 2013.

 

SUMMARY OF ISSUES that applicant must address:

 

• Likelihood of confusion refusal made under Trademark Act Section 2(d)
• Potential likelihood of confusion refusal advisory made under Trademark Act Section 2(d)
• Descriptiveness refusal made under Trademark Act Section 2(e)(1) as to “pens”

• Identification of goods and services

 

Section 2(d) Refusal – Likelihood of Confusion

 

THIS PARTIAL REFUSAL APPLIES TO CLASSES 009, 016, 038 and 042 ONLY

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3443802, 3753775, 4087634, 4087635, 4101037, and 4101038.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Applicant’s mark is TRACER in standard characters for, in relevant part, “Computer software in the field of text and image transmission and display; computer software for transmitting, sharing, receiving, downloading, displaying and transferring content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works via computers and handheld mobile digital electronic devices, namely, tablet computers; computer software for formatting and converting content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works into a format compatible with computers and handheld mobile digital electronic devices, namely, tablet computers; computer software enabling content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works to be downloaded to and accessed on computers and handheld mobile digital electronic devices, namely, tablet computers; electronic pens; Downloadable films, television programs and television shows featuring children's entertainment provided via a video-on-demand service; Digital media, namely, downloadable audio and video recordings featuring children's entertainment; Computer application software for personal and handheld computers, namely, software for data communication and translating and transmitting data sold therewith; Computer software programs enabling receipt, download, playing, viewing and purchasing of audio and video programming in the nature of children's entertainment via a global computer network; Computer software, namely, software for streaming audio-visual media content in the nature of children's entertainment via the internet” in Class 009, “Printed matter for use in connection with handheld mobile digital electronic devices, namely, paper, notebooks, and notepads, all for use with computers and handheld mobile digital electronic devices, namely, tablet computers, and all of the aforementioned in the field of a wide variety of topics and subjects; Pens; Figures made of paper; Writing Paper; Printing Paper; Paper stock; Paper stationary; Craft paper; Children's arts and crafts paper kits” in Class 016, “Telecommunication services, namely, connectivity services for electronic transmission and reception of audio, video, multimedia, text and data via the Internet, computers and other communications networks; delivery of messages by electronic transmission” in Class 038, and “Providing temporary use of online non-downloadable software to enable users to create, share, access and use software, audio, video, text multimedia and data; Document data transfer from one computer format to another; hosting of digital content on global computer networks, wireless networks, and electronic communications networks; providing an online network that enables users to access and share content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works; providing a web site that gives computer users the ability to transmit, cache, receive, download, stream, broadcast, display, format, transfer and share content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works” in Class 042.

 

Registrant’s mark for Registration No. 3443802 is ALERT TRACER in standard characters with the wording ALERT disclaimed for “A feature of message delivery notification services, namely, real-time reporting of detailed alert delivery status information and statistics, including details as to when a message was delivered and to whom, all done via text and voice messaging.”

 

Registrant’s mark for Registration No. 3753775 is TRACER PRO with a design portion and the wording TRACER PRO disclaimed for “Computer software for remote data capture.”

 

Registrant’s mark for Registration No. 4087634 is INFOTRACER in standard characters for “Computer services, namely, providing search engines for obtaining data for business and consumer purposes on a global computer network; Computer services, namely, providing online nondownloadable software for search and retrieval of information; Computer services, namely, providing online nondownloadable software for search and retrieval of information relating to people, properties, businesses, events, identity verification, telephone numbers, addresses, email addresses, and criminal, court and other public records; Computer services, namely, providing online nondownloadable software for reverse telephone number and email address searches.”

 

Registrant’s mark for Registration No. 4087635 is INFOTRACER with a design portion for “Computer services, namely, providing search engines for obtaining data for business and consumer purposes on a global computer network; Computer services, namely, providing online nondownloadable software for search and retrieval of information; Computer services, namely, providing online nondownloadable software for search and retrieval of information relating to people, properties, businesses, events, identity verification, telephone numbers, addresses, email addresses, and criminal, court and other public records; Computer services, namely, providing online nondownloadable software for reverse telephone number and email address searches.”

 

Registrant’s mark for Registration No. 4101037 is TRACER in standard characters for, in relevant part, “Printed materials, namely, posters, paper signs, window displays in the nature of printed signs, gift cards, greeting cards, business cards, post cards, event tickets, printed visuals in the nature of promotional material, all featuring lenticular images” in Class 016.

 

Registrant’s mark for Registration No. 4101038 is TRACER with a design portion for, in relevant part, “Printed materials, namely, posters, paper signs, window displays in the nature of printed signs, gift cards, greeting cards, business cards, post cards, event tickets, printed visuals in the nature of promotional material, all featuring lenticular images” in Class 016.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely 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).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, 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 at 1355, 98 USPQ2d at 1260; 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 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).

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751.

 

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).

 

Applicant’s mark is TRACER in standard characters.

 

Registrant’s mark for Registration No. 3443802 is ALERT TRACER in standard characters with the wording ALERT disclaimed.  Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for an applicant’s goods and/or services is typically less significant or less dominant when comparing marks.  See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752 ; TMEP §1207.01(b)(viii), (c)(ii).  Thus, the wording TRACER is the dominant portion of the mark.  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.  The deletion of the descriptive wording from the registered mark does not obviate the similarities between the marks.

 

Registrant’s mark for Registration No. 3753775 is TRACER PRO with a design portion and the wording TRACER PRO disclaimed.  For a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and/or services.  Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)).  Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  Further, consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).  The first wording in registrant’s mark is identical to applicant’s mark, thus, the marks create a similar commercial impression.

 

Registrant’s marks for Registration Nos. 4087634 and 4087635 are INFOTRACER in standard characters and with a design portion, respectively.  Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Matter that is descriptive of or generic for an applicant’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark.  See In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009).  In the present case, the attached evidence shows that the wording INFO in the registered marks is merely descriptive of or generic for applicant’s goods and/or services.  Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording TRACER the more dominant element of the mark.  Finally, for a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and/or services.  Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)).  Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  Therefore, the marks create a similar commercial impression.

 

Registrant’s marks for Registration Nos. 4101037 and 4101038 are TRACER in standard characters and with a design portion, respectively.  Similarly, for a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and/or services.  Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)).  Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  Therefore, the marks create a similar commercial impression.

 

Comparison of Goods/Services

 

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 and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).

 

The fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.

 

With respect to applicant’s and registrant’s goods and/or services, the question of likelihood of confusion is determined based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). 

 

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.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described.  See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). 

 

Applicant’s goods and services are, in relevant part, “Computer software in the field of text and image transmission and display; computer software for transmitting, sharing, receiving, downloading, displaying and transferring content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works via computers and handheld mobile digital electronic devices, namely, tablet computers; computer software for formatting and converting content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works into a format compatible with computers and handheld mobile digital electronic devices, namely, tablet computers; computer software enabling content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works to be downloaded to and accessed on computers and handheld mobile digital electronic devices, namely, tablet computers; electronic pens; Downloadable films, television programs and television shows featuring children's entertainment provided via a video-on-demand service; Digital media, namely, downloadable audio and video recordings featuring children's entertainment; Computer application software for personal and handheld computers, namely, software for data communication and translating and transmitting data sold therewith; Computer software programs enabling receipt, download, playing, viewing and purchasing of audio and video programming in the nature of children's entertainment via a global computer network; Computer software, namely, software for streaming audio-visual media content in the nature of children's entertainment via the internet” in Class 009, “Printed matter for use in connection with handheld mobile digital electronic devices, namely, paper, notebooks, and notepads, all for use with computers and handheld mobile digital electronic devices, namely, tablet computers, and all of the aforementioned in the field of a wide variety of topics and subjects; Pens; Figures made of paper; Writing Paper; Printing Paper; Paper stock; Paper stationary; Craft paper; Children's arts and crafts paper kits” in Class 016, “Telecommunication services, namely, connectivity services for electronic transmission and reception of audio, video, multimedia, text and data via the Internet, computers and other communications networks; delivery of messages by electronic transmission” in Class 038, and “Providing temporary use of online non-downloadable software to enable users to create, share, access and use software, audio, video, text multimedia and data; Document data transfer from one computer format to another; hosting of digital content on global computer networks, wireless networks, and electronic communications networks; providing an online network that enables users to access and share content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works; providing a web site that gives computer users the ability to transmit, cache, receive, download, stream, broadcast, display, format, transfer and share content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works” in Class 042.

 

Registrant’s goods for Registration No. 3443802 are “A feature of message delivery notification services, namely, real-time reporting of detailed alert delivery status information and statistics, including details as to when a message was delivered and to whom, all done via text and voice messaging.”  Applicant’s identification of services include “delivery of messages by electronic transmission.”  In this case, the identification set forth in the application and registration 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 uses broad wording to describe the services and this wording is presumed to encompass all goods and/or services of the type described, including those in registrant’s more narrow identification.

 

Registrant’s goods for Registration No. 3753775 are “Computer software for remote data capture.”  Applicant’s identification of goods include “Computer software in the field of text and image transmission and display; computer software for transmitting, sharing, receiving, downloading, displaying and transferring content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works via computers and handheld mobile digital electronic devices, namely, tablet computers; computer software enabling content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works to be downloaded to and accessed on computers and handheld mobile digital electronic devices, namely, tablet computers; electronic pens; Computer application software for personal and handheld computers, namely, software for data communication and translating and transmitting data sold therewith; Computer software programs enabling receipt, download, playing, viewing and purchasing of audio and video programming in the nature of children's entertainment via a global computer network.”  In this case, the identification set forth in the application and registration has no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, it is presumed that these goods travel in all normal channels of trade, and are available to the same class of purchasers.  Further, the application uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in registrant’s more narrow identification.

 

Registrant’s services for Registration Nos. 4087634 and 4087635 are “Computer services, namely, providing search engines for obtaining data for business and consumer purposes on a global computer network; Computer services, namely, providing online nondownloadable software for search and retrieval of information; Computer services, namely, providing online nondownloadable software for search and retrieval of information relating to people, properties, businesses, events, identity verification, telephone numbers, addresses, email addresses, and criminal, court and other public records; Computer services, namely, providing online nondownloadable software for reverse telephone number and email address searches.”  Applicant’s services include “Providing temporary use of online non-downloadable software to enable users to create, share, access and use software, audio, video, text multimedia and data; Document data transfer from one computer format to another; providing a web site that gives computer users the ability to transmit, cache, receive, download, stream, broadcast, display, format, transfer and share content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works.”  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 services travel in all normal channels of trade, and are available to the same class of purchasers.  Further, the registrations uses broad wording to describe the services and this wording is presumed to encompass all services of the type described, including those in applicant’s more narrow identification.

 

Registrant’s goods for Registration Nos. 4101037 and 4101038 are “Printed materials, namely, posters, paper signs, window displays in the nature of printed signs, gift cards, greeting cards, business cards, post cards, event tickets, printed visuals in the nature of promotional material, all featuring lenticular images” in Class 016.  Applicant’s goods include “Printed matter for use in connection with handheld mobile digital electronic devices, namely, paper, notebooks, and notepads, all for use with computers and handheld mobile digital electronic devices, namely, tablet computers, and all of the aforementioned in the field of a wide variety of topics and subjects; Paper stationary”  Because of the indefiniteness and vagueness of applicant’s identification of goods, “Printed matter for use in connection with handheld mobile digital electronic devices, namely, paper, notebooks, and notepads, all for use with computers and handheld mobile digital electronic devices, namely, tablet computers, and all of the aforementioned in the field of a wide variety of topics and subjects,” all types of printed matter would be considered as overlapping with these goods.  Further “paper stationary” appears to encompass “greeting cards, postcards” in registrant’s identification of goods.

 

Therefore, the goods and services are closely related and consumers will be confused as to the source of the goods and services.

 

Potential 2(d) Refusal – Likelihood of Confusion Advisory

 

The filing date of pending U.S. Application Serial No. 85538178 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Applicant should note the following additional ground for refusal.

 

Section 2(e)(1) Refusal – Merely Descriptive

 

THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

Registration is refused because the applied-for mark merely describes the function or type of applicant’s goods, “pens” in Class 016.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

 

“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

Applicant’s mark is TRACER for “pens,” among other goods and services.  The wording TRACER means “a device (as a stylus) used in tracing.”  Please see attached dictionary definition from Merriam-Webster’s Online Dictionary.  In addition, please see attached three websites that show the applied-for mark being used to indicate a certain type of pens.

 

Therefore, the applied-for mark is merely descriptive of applicant’s goods, “pens.”

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.

 

Identification of Goods and Services

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

The wording used to describe the goods is indefinite and must be clarified because the item “Printed matter for use in connection with handheld mobile digital electronic devices, namely, paper, notebooks, and notepads, all for use with computers and handheld mobile digital electronic devices, namely, tablet computers, and all of the aforementioned in the field of a wide variety of topics and subjects” is unclear as to the nature of the goods.  It is unclear whether the goods are printed matter with content in the field of a wide variety of topics and subjects or paper, notebooks and notepads as stationery goods.  Further, it is unclear how the printed matter is for use in connection with electronic devices.  The wording “paper stationary” appears to contain a typographical error.  See TMEP §1402.01.

 

The identification of services is indefinite and must be clarified because the wording “Entertainment services, namely, an ongoing series in the nature of children's entertainment, provided via a global computer network” is unclear as to the specific nature of the services.  See TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

Class 009:  Computer software in the field of text and image transmission and display; computer software for transmitting, sharing, receiving, downloading, displaying and transferring content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works via computers and handheld mobile digital electronic devices, namely, tablet computers; computer software for formatting and converting content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works into a format compatible with computers and handheld mobile digital electronic devices, namely, tablet computers; computer software enabling content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works to be downloaded to and accessed on computers and handheld mobile digital electronic devices, namely, tablet computers; electronic pens; Downloadable films, television programs and television shows featuring children's entertainment provided via a video-on-demand service; Digital media, namely, downloadable audio and video recordings featuring children's entertainment; Computer application software for personal and handheld computers, namely, software for data communication and translating and transmitting data sold therewith; Computer software programs enabling receipt, download, playing, viewing and purchasing of audio and video programming in the nature of children's entertainment via a global computer network; Computer software, namely, software for streaming audio-visual media content in the nature of children's entertainment via the internet

 

Class 016:  [Clarify “Printed matter for use in connection with handheld mobile digital electronic devices, namely, paper, notebooks, and notepads, all for use with computers and handheld mobile digital electronic devices, namely, tablet computers, and all of the aforementioned in the field of a wide variety of topics and subjects;”] Pens; Figures made of paper; Writing Paper; Printing Paper; Paper stock; Paper stationery; Craft paper; Children's arts and crafts paper kits

 

Class 028:  Remote control toys, namely, cars, and race cars; Toy cars; Electronic action toys; Printing toys; Toy vehicles

 

Class 038:  Telecommunication services, namely, connectivity services for electronic transmission and reception of audio, video, multimedia, text and data via the Internet, computers and other communications networks; delivery of messages by electronic transmission

 

Class 041:  Entertainment services, namely, an ongoing series in the nature of {specify nature of series, e.g., television programs, non-downloadable electronic books, computer games, webcast programs} featuring children's entertainment, provided via a global computer network; Entertainment services in the nature of ongoing television programs in the field of children's entertainment; Entertainment services in the nature of creation, development, and production of television programs in the field of children's entertainment; Entertainment services in the nature of an on-going television series featuring animation, live action, music, comedy and drama; Entertainment services, namely, production, distribution and rental of motion picture films featuring animation, live action, music, comedy and drama

 

Class 042:  Providing temporary use of online non-downloadable software to enable users to create, share, access and use software, audio, video, text multimedia and data; Document data transfer from one computer format to another; hosting of digital content on global computer networks, wireless networks, and electronic communications networks; providing an online network that enables users to access and share content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works; providing a web site that gives computer users the ability to transmit, cache, receive, download, stream, broadcast, display, format, transfer and share content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works   

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or 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 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.

 

Failure to Respond – Abandonment of Classes Advisory

 

If applicant does not respond to this Office action within the six-month period for response, International Classes 009, 016, 038, 041 and 042 will be deleted from the application.  The application will then proceed with International Class 028 only.  See 37 C.F.R. §2.65(a); TMEP §718.02(a).

 

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.

 

 

/Janet Lee/

Examining Attorney

Law Office 102

Phone: (571) 272-1053

janet.lee@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/12/2014 FOR U.S. APPLICATION SERIAL NO. 86114180

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 2/12/2014 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.