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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

ISSUE/MAILING DATE: 4/6/2018

THIS IS A FINAL ACTION.

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.

On October 11, 2017, action on this application was suspended pending disposition of cited U.S. Registration No. 4012889, for which maintenance documents were due to be filed. See 37 C.F.R. §2.67; TMEP §716.02(e). USPTO records indicate that the cited registration has been cancelled and is no longer a bar to registration of applicant’s mark. Therefore, the Section 2(d) refusal is withdrawn with respect to this particular registration.

In the suspension notice, the Section 2(d) refusal was also withdrawn as to Registration No. 2022991, which had also been cancelled.

The Section 2(d) refusal is maintained and made final as to the remaining registrations. The Section 2(e)(1) refusal and information requirement maintained and continued in the suspension notice are now also maintained and made final.

Summary of Issues Applicant Must Address

Section 2(d) Refusal – Likelihood of Confusion
Section 2(e)(1) Refusal – Merely Descriptive
Requirement for Additional Information

FINAL Section 2(d) Refusal - Likelihood of Confusion

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration Nos. 2034080, 2679448, 2780537, 2785401, 3149501, 3308888, 3612852, 3628160, 3781493, 3828917, 4111688, 4191210, 4200868, 4229859, 5036884, and 5156433. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

The applicant has applied to register ACCESS in standard-character form for:

Computer software and firmware for attendee management, attendee behavior data collection, access control, authenticating user identification, in-event digital voting, sponsor asset generation, social media integration, text message notifications, sms message notification, gamification, conducting sales transactions, cashless payment, mobile application integration at live events, communicating with others, and verifying and monitoring credentials and tech-enabled credentials; Electronic and electrical apparatus, namely, ticket issuing, reading and recording machines; Electronic and electrical apparatus, namely, voucher issuing, reading and recording machines; Electronic readers and controllers for controlling access to a premises; Near field communication (NFC) technology-enabled devices, namely, mobile phones and tablet computers for attendee and staff access control and monitoring; Radio frequency identification (RFID) credentials, namely, cards and tags, and readers for radio frequency identification credentials; Radio frequency identification (RFID) tags, in Class 9.

Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; Arranging and conducting special events for commercial, promotional or advertising purposes; Business consulting services in the field of live event technology, event management, event administration, event management, and attendee credentialing; Management of event ticketing for others; Providing business information in the field of technology and social media; Providing on-line registration services for services for business events, educational events, social events and live entertainment and performance events, in Class 35.

Financial transaction services, namely, providing secure commercial transactions and payment options using a mobile device at a point of sale, in Class 36.

Computer transmission of online based services accessed via a network reference, namely, a URI, visual code, namely, barcodes, tag, namely, RFID, terminal, namely pc or mobile device, or any combination thereof, in Class 38.

Consulting services in the field of hosting computer software applications; Graphic design services for use with live-event credentials, backstage passes, sports team season credentials, and VIP passes; Graphic illustration and drawing services, namely, custom design of graphics for use with live-event credentials, backstage passes, sports team season credentials, and VIP passes; Providing graphic and multimedia design services for the purpose of promoting the goods and services of others; Technological planning and consulting services in the field of live event planning and management, in Class 42.

This refusal is limited to the goods and services highlighted above in bold. The applicant’s services in Class 40 are not included in this refusal.

The registered marks are the following:

Registration No. 2034080 is ACCESSMASTER in typed-drawing form for “radio receiver units, radio transmitter units, keypads card readers, control panels, and for controlling electronic door and gate openers, and parts therefor,” in Class 9.

Registration No. 2679448 is ACCESS in typed-drawing form for “Banking, Trust, and Financial Information Services Provided by Electronic Means,” in Class 36.

Registration No. 2780537 is ACCESS in typed-drawing form for “COMPUTERIZED PAYMENT MACHINE FOR AUTHORIZING PAYMENT AND SELECTING A WASH PROCEDURE FOR USE WITH A COMMERCIAL CAR WASH MACHINE,” in Class 7.

Registration No. 2785401 is ACCESSMATRIX in typed-drawing form for “computer software for managing access and security for e-commerce and computer networks,” in Class 9.

Registration No. 3149501 is ACCESS 800 in standard-character form for “programmable electronic locks and exit devices for opening and closing doors,” in Class 9.

Registration No. 3308888 is ACCESS SMART in standard-character form for “Integrated systems comprising an encoded smart card, card reader and software that allows a user secure, authorized access into networks to access and manage approved data,” in Class 9.

Registration No. 3612852 is ACCESS combined with a design for goods and services in Classes 9 and 42, including “Computer software for wireless and wired communication devices, browser, network control data compression, encryption, component ware and authentication, namely, computer operating system software for wireless and wired communication device operation, namely, for use in network browsers and network controllers, computer software for use in data compression, data encryption, and data authentication for use in mobile telephones, computers; computer operating system software for use in modems, mobile computers, handheld computers, tablet computers, mobile telephones, pagers and personal communications devices, namely, personal digital assistants, handheld gaming consoles, and global positioning satellite navigation devices; computer software for wireless telecommunications services, namely, computer software for transmitting, receiving, displaying, and sending paging messages or electronic messages, electronic mail software, computer software for use in electronically organizing, recording, transmitting, and receiving electronic data, electronic mail, and digital and electronic communication messages, computer software for synchronizing the transmission of data and voice communications signals; personal information management software, namely, computer software for updating, editing, organizing, storing, sending, receiving and transmitting personal information and data for use in mobile telephones, computers; data synchronization software; electronic mail and messaging software; handheld computers, mobile computers, handheld computers with wireless email and access to electronic communications networks; mobile telephones, pagers, personal digital assistants, electronic organizers; modems; apparatus for recording, transmission and reproduction of sound and images; apparatus for recordation, transmission and reproduction of text, data, and graphics, namely, computers, DVD recording apparatus, Digital audio tape recorders; portable media players. Electronic publications, namely, books featuring fiction and non-fiction topics and reference works recorded on computer media; E-book displays, namely, LED and LCD flat panel displays; global positioning system receivers; portable or fixed radio frequency transmitters and receivers; printers; digital audio players and recorders; digital video disk players and recorders; digital multimedia players, namely, Digital audio players, MP3 players, digital tape and videotape players; cameras,” in Class 9.

Registration No. 3628160 is ACCESS 700 in standard-character form for “Programmable electronic locks and exit devices for opening and closing doors,” in Class 9.

Registration No. 3781493 is ACCESS 600 in standard-character form for “Electronically controlled locks with proximity readers,” in Class 9.

Registration No. 3828917 is ACCESSO in standard-character form for “TICKETING SERVICES FOR ENTERTAINMENT VENUES, ATTRACTIONS, SPORTING VENUES, FAIRS, FESTIVALS, MUSEUMS, THEATRICAL VENUES, CULTURAL EVENTS AND THEME PARKS RENDERED ONLINE, IN-PERSON, VIA PHONE OR VIA PERSONAL DIGITAL ASSISTANT,” in Class 41, and “PROVIDING USER AUTHENTICATION OF ELECTRONIC CREDIT AND DEBIT CARD AND ELECTRONIC CHECK TRANSACTIONS VIA A GLOBAL COMPUTER NETWORK,” in Class 45.

Registration No. 4111688 is ACCESS in standard-character form for “Advertising, promotion, and marketing services in the field of restaurant services; advertising and facilitating customer incentive award program, namely, a customer loyalty program for providing meal discounts, retail store discounts, and related restaurant benefits to reward repeat customers,” in Class 35.

Registration No. 4191210 is ACCESS MOBILE in standard-character form for “banking services, namely, electronic banking services conducted by means of a mobile application enabling customers to perform banking functions from their cell phone or wireless device,” in Class 36.

Registration No. 4200868 is ACCESSO in standard-character form for “SOFTWARE AS A SERVICE (SAAS) SERVICES FEATURING SOFTWARE FOR FACILITATING THE SALE, CREATION, VALIDATION, RECORDING AND REPORTING OF ADMISSION TO ENTERTAINMENT VENUES, ATTRACTIONS, SPORTING VENUES, FAIRS, FESTIVALS, MUSEUMS, THEATRICAL VENUES, CULTURAL EVENTS AND OTHER LOCATIONS; SOFTWARE AS A SERVICE (SAAS) SERVICES FEATURING SOFTWARE FOR FACILITATING THE SALE OF TICKETS, MERCHANDISE AND RESERVATIONS FOR ENTERTAINMENT VENUES, ATTRACTIONS, SPORTING VENUES, FAIRS, FESTIVALS, MUSEUMS, THEATRICAL VENUES, CULTURAL EVENTS AND OTHER LOCATIONS; SOFTWARE AS A SERVICE (SAAS) SERVICES FEATURING SOFTWARE FOR USER AUTHENTICATION OF ELECTRONIC PAYMENT TRANSACTIONS VIA THE INTERNET OR AS PART OF A CLOSED NETWORK,” in Class 42.

Registration No. 4229859 is ACCESS in standard-character form for services in Classes 35, 39, 41, and 45, including “Business meeting planning services for corporate, association and convention groups; entertainment procurement, namely, purchasing tickets for amusement park attractions, entertainment and sporting events for others, namely, corporate, association and convention groups; destination management company services, namely, organization of business conventions,” in Class 35, and “Entertainment procurements, namely, reserving tickets for amusement park attractions, entertainment and sporting events for corporate, association and convention groups; special event planning consultation regarding venue evaluation and procurement and entertainment itinerary development; special event planning services; coordination of entertainment, namely, providing professional motivational and educational speakers, live performances by a musical band, disc jockeys for parties and special events, and entertainment in the nature of live stage performances in the nature of comedians, magicians, and celebrity impersonators,” in Class 41.

Registration No. 5036884 is ACCESSO in standard-character form for “Rental of portable electronic devices and wristbands containing radio frequency identification credentials used for the transmission of venue information via portable electronic devices and wristbands containing radio frequency identification credentials regarding amusement parks and theme parks, and other entertainment, sporting, theatrical, business, festival, museum, cultural and educational event venues,” in Class 38, and “Entertainment services, namely, providing virtual queuing services, namely, making reservations for others for amusement park and theme park attractions, and other entertainment, sporting, theatrical, festival, museum, cultural and educational event venues to manage and reduce times,” in Class 41.

Registration No. 5156433 is ACCESSO in standard-character form for “DESIGN, DEVELOPMENT, IMPLEMENTATION AND MAINTENANCE OF SOFTWARE AND TECHNOLOGY SOLUTIONS FOR LINE RESERVATION AND WAIT TIME MANAGEMENT SERVICES FOR AMUSEMENT PARK AND THEME PARK ATTRACTIONS, AND OTHER ENTERTAINMENT, SPORTING, THEATRICAL, BUSINESS, FESTIVAL, MUSEUM, CULTURAL AND EDUCATIONAL EVENT VENUES, TO MANAGE AND REDUCE WAIT TIMES; DEDICATED SERVER HOSTING SERVICE, NAMELY, HOSTING WEBSITES OF OTHERS TO PROVIDE LINE RESERVATION AND WAIT TIME MANAGEMENT SERVICES FOR ATTRACTIONS AT AMUSEMENT PARKS AND THEME PARKS, AND OTHER ENTERTAINMENT, SPORTING, THEATRICAL, BUSINESS, FESTIVAL, MUSEUM, CULTURAL AND EDUCATIONAL EVENT VENUES TO MANAGE AND REDUCE WAIT TIMES,” in Class 42.

Registrations Nos. 3149501, 3628160, and 3781493 have the same owner. Registration Nos. 3828917, 4200868, 5036884, and 5156433 have the same owner.

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s). See 15 U.S.C. §1052(d). Determining likelihood of confusion is made on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].” In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see TMEP §1207.01.

Registration was initially refused because the marks are similar in commercial impression and the goods and services are related.

The applicant has not provided any argument regarding the refusal. Therefore, it is maintained and made final for the reasons stated in the previous Office actions.

Comparison of the Marks

In this case, the registered marks fall into four groups: (1) marks composed solely of the term ACCESS, (2) marks that combine ACCESS with a design, (3) marks that combine ACCESS with an additional term, and (4) marks composed solely of the term ACCESSO.

Marks Composed Solely of the Term ACCESS

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); 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).

In the present case, applicant’s mark is ACCESS and the registered marks in this group are also ACCESS. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrants’ respective goods and services. Id.

Therefore, the marks are confusingly similar.

Marks Composed of ACCESS and Design

Registration No. 3612852 combines the term ACCESS with a design composed of circles. Since the applicant’s mark and this registered mark include the identical term, ACCESS, they are similar in commercial impression for the same reasons discussed above. The additional design element does not change the connotation or commercial impression of the registered mark.

Marks Composed of Access Plus Additional Term

The applicant’s mark differs from these marks by the deletion of the additional term.

Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

Additionally, in each of these marks, the term ACCESS is listed first and the additional term does not change the connotation of the term ACCESS.

ACCESSO Marks

The term ACCESSO in the remaining registrations translates to ACCESS. See the translation statement in Registration No. 4200868.

Under the doctrine of foreign equivalents, a mark in a foreign language and a mark that is its English equivalent may be held to be confusingly similar. TMEP §1207.01(b)(vi); see, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1127-28 (TTAB 2015); In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006). Therefore, marks comprised of foreign words are translated into English to determine similarity in meaning and connotation with English word marks. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Equivalence in meaning and connotation can be sufficient to find such marks confusingly similar. See In re Aquamar, Inc., 115 USPQ2d at 1127-28; In re Thomas, 79 USPQ2d at 1025.

The doctrine is applicable when it is likely that an ordinary American purchaser would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696; TMEP §1207.01(b)(vi)(A). The ordinary American purchaser refers to “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.” In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024 (citing J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §23:26 (4th ed. 2006), which states “[t]he test is whether, to those American buyers familiar with the foreign language, the word would denote its English equivalent.”).

Generally, the doctrine is applied when the English translation is a literal and direct translation of the foreign wording. TMEP §1207.01(b)(vi); see In re Aquamar, Inc., 115 USPQ2d at 1127-28 (holding MARAZUL for imitation crab meat and frozen and fresh processed fish and seafood likely to be confused with BLUE SEA for non-live and frozen fish, where “mar azul” is the Spanish equivalent of the English word “blue sea”); In re Thomas, 79 USPQ2d at 1021 (holding MARCHE NOIR for jewelry likely to be confused with the cited mark BLACK MARKET MINERALS for retail jewelry and mineral store services where evidence showed that MARCHE NOIR is the exact French equivalent of the English idiom “Black Market,” and the addition of MINERALS did not serve to distinguish the marks); In re Ithaca Indus., Inc., 230 USPQ 702, 704-05 (TTAB 1986) (holding LUPO for men’s and boys’ underwear likely to be confused with the cited registration for WOLF and design for various clothing items, where LUPO is the Italian equivalent of the English word “wolf”).

Because ACCESS is the literal and exact translation of ACCESSO, consumers familiar with Spanish would be likely to stop and translate the registered mark as ACCESS. Thus, the marks are similar in connotation and commercial impression.

Comparison of the Goods and Services

Each of the registrations contains goods or services that are related to only some of the applicant’s goods and services.

Class 9

All of the applicant’s goods in Class 9 have been refused.

The applicant’s “Computer software and firmware for conducting sales transactions, cashless payment” is closely related to the payment machine in Registration No. 2780537 because both parties’ goods are used for payment processing and the applicant’s goods are not limited to any particular industry.

The applicant’s “Computer software and firmware for attendee management, attendee behavior data collection, access control, authenticating user identification, in-event digital voting, sponsor asset generation, social media integration, text message notifications, sms message notification, gamification, conducting sales transactions, cashless payment, mobile application integration at live events, communicating with others, and verifying and monitoring credentials and tech-enabled credentials; Electronic readers and controllers for controlling access to a premises; Near field communication (NFC) technology-enabled devices, namely, mobile phones and tablet computers for attendee and staff access control and monitoring; Radio frequency identification (RFID) credentials, namely, cards and tags, and readers for radio frequency identification credentials; Radio frequency identification (RFID) tags,” are closely related to the goods in Registration No. 3612852 because the identification in the registration includes a variety of software for communication and authentication, mobile phones and handheld (tablet) computers, and transmitters and receivers.

The applicant’s “Electronic readers and controllers for controlling access to a premises,” are broad enough to include the devices in Registration No. 2034080, 3781493, 3628160, and 3149501.

The applicant’s “Computer software and firmware for access control, authenticating user identification, and verifying and monitoring credentials and tech-enabled credentials” is related to the software in Registrations No. 3308888 and 2785401, the authentication software in Registration No. 4200868, and the authentication services in Registration No. 3828917 because it has the same purposes.

The applicant’s “Electronic and electrical apparatus, namely, ticket issuing, reading and recording machines; Electronic and electrical apparatus, namely, voucher issuing, reading and recording machines” are related to the ticketing services in Registration No. 3828917 because ticketing services would be provided using these types of apparatus. These devices are also related to the ticketing software in Registration No. 4200868, which is used for the same purpose.

All of the applicant’s Class 9 goods are related to the Class 38 services in Registration No. 5036884 because the registrant’s services consist of the rental of goods like the applicant’s for use with goods like the applicant’s.

Class 35

The applicant’s “Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; Arranging and conducting special events for commercial, promotional or advertising purposes” are closely related to the services in Registration No. 4111688, which are also advertising, promotion, and marketing services directed to a particular industry.

The applicant’s “Arranging and conducting special events for commercial, promotional or advertising purposes; Business consulting services in the field of live event technology, event management, event administration, event management, and attendee credentialing; Management of event ticketing for others; Providing on-line registration services for services for business events, educational events, social events and live entertainment and performance events,” are closely related to the services in Registration No. 4229859, which include specific types of business events, and reservation/ticketing services.

The applicant’s “Providing on-line registration services for services for educational events, social events and live entertainment and performance events” are closely related to and encompassed by the “Entertainment services, namely, providing virtual queuing services, namely, making reservations for others for amusement park and theme park attractions, and other entertainment, sporting, theatrical, festival, museum, cultural and educational event venues to manage and reduce times” in Registration No. 5036884.

The applicant’s “Management of event ticketing for others; Providing on-line registration services for services for business events, educational events, social events and live entertainment and performance events” is also related to the ticketing services in Registration No. 3828917 and the ticketing software in 4200868 because the applicant’s registration services are broad enough to include ticketing for such events.

Class 36

The applicant’s services in Class 36 are closely related to the services in Registration Nos. 2679448, and 4191210, which all may include the specified transaction services.

Class 38

The applicant’s Class 38 services are related to the Class 38 services in Registration No. 5036884 because the applicant’s services are transmitted based on reading RFID codes on the items rented by the registrant.

Class 42

The applicant’s Class 42 services included in this refusal are closely related to the services in Registration No. 5156433, which include similar hosting and design/development services encompassed by the applicant’s technological planning services.

Since the marks are similar and in some cases identical and the goods and services are closely related and in part identical, there is a likelihood of confusion as to the source of applicant’s goods and services specified above. Therefore, applicant’s mark is not entitled to registration as to the goods and services highlighted above in bold.

Conclusion

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

In view of the foregoing, the refusal to register the mark under Section 2(d) of the Trademark Act is maintained and made final.

ADVISORY - Maintenance Documents Due

Before filing a response, the applicant is encouraged to check the status of Registration Nos. 4191210 and 4200868. Maintenance documents are due for these registrations by August 14, 2018, and September 4, 2018, respectively, and have not yet been filed. These registrations will then enter the additional 6-month grace period in which the registrant may still file its affidavit with an additional filing fee. The Office normally waits an additional 30 days after the grace period before cancelling registrations. If the applicant files a response during the grace periods of either of these registrations (and the Section 8 affidavit has still not been filed), action on this application may be suspended.

FINAL Section 2(e)(1) Refusal – Merely Descriptive – As to Specified Goods and Services in Classes 9, 35, 38, and 42

The refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below. See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).

The applicant has applied for registration of the mark ACCESS in standard character form for:

Computer software and firmware for attendee management, attendee behavior data collection, access control, authenticating user identification, in-event digital voting, sponsor asset generation, social media integration, text message notifications, sms message notification, gamification, conducting sales transactions, cashless payment, mobile application integration at live events, communicating with others, and verifying and monitoring credentials and tech-enabled credentials; Electronic and electrical apparatus, namely, ticket issuing, reading and recording machines; Electronic and electrical apparatus, namely, voucher issuing, reading and recording machines; Electronic readers and controllers for controlling access to a premises; Near field communication (NFC) technology-enabled devices, namely, mobile phones and tablet computers for attendee and staff access control and monitoring; Radio frequency identification (RFID) credentials, namely, cards and tags, and readers for radio frequency identification credentials; Radio frequency identification (RFID) tags, in Class 9.

This refusal is limited to the goods and services highlighted above in bold. The applicant’s services in Class 36 and 40 are not included in this refusal.

Registration was previously refused because the applied-for mark merely describes characteristics of applicant’s goods and services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).

“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). The question is not whether someone presented only with the mark could guess what the goods and/or services are, but “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012).

The term “access” is defined as “permission, liberty, or ability to enter, approach, or pass to and from a place or to approach or communicate with a person or thing.” Merriam-Webster's Online Dictionary (11th ed. 2014), http://www.merriam-webster.com/dictionary/access, Office action, 7/24/2014, TSDR, at 42.

With the exception of the services in Class 38, the goods and services subject to this refusal involve permissions to enter particular events and venues, such as by means of access controllers or credentials. The applicant even uses the term “access” to identify some goods and services. The applicant’s planning and consulting services are also broad enough to include planning and consulting relating to access control technology and consulting relating to hosting of access control software. Thus, the term ACCESS in the mark merely describes this characteristic of these goods and services.

The applicant was referred to printouts from third-party websites attached to the initial Office action showing the term ACCESS used to describe similar goods and services to those in the applicant’s identification. Office action, 7/24/2014, TSDR, at 45-58.

Material obtained from the Internet is generally accepted as competent evidence in trademark examination. See In re Jonathan Drew Inc., 97 USPQ2d 1640, 1641-42 (TTAB 2011); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-03 (TTAB 2009); In re Leonhardt, 109 USPQ2d 2091, 2098 (TTAB 2008); TBMP §1208.03; TMEP §710.01(b).

The applicant’s services in Class 38 consist of providing access by electronic/network communications means to on-line services. The term “access” even appears in the identification for these services. Thus, the term ACCESS in the mark also merely describes this characteristic of those services.

The applicant’s responses do not address this refusal.

Therefore, for the foregoing reasons, the proposed mark is merely descriptive, and the refusal to register the mark on the Principal Register under Section 2(e)(1) as to the goods and services highlighted above in bold is maintained and made final.

FINAL Information Requirement – As to All Services in Class 38 and Specified Goods and Services in Classes 9 and 42

The requirement for additional information is now made FINAL for the reasons set forth below. 37 C.F.R. §2.63(b); TMEP §814.

The initial Office action included the following requirement, limited to the following goods and services:

Electronic and electrical apparatus, namely, voucher issuing, reading and recording machines; Radio frequency identification (RFID) credentials, namely, cards and tags, and readers for radio frequency identification credentials; Radio frequency identification (RFID) tags, in Class 9.

Consulting services in the field of hosting computer software applications; Technological planning and consulting services in the field of live event planning and management, in Class 42.

The applicant must respond to the following questions regarding the goods and services:

(1) What types of services will the applicant’s Class 38 services transmit?

(2) Will the applicant’s “Consulting services in the field of hosting computer software applications” include consulting relating to hosting access control software applications?

(3) Will the applicant’s “Technological planning and consulting services in the field of live event planning and management” include planning and consulting in the use of access control technologies for these purposes?

(4) Will the vouchers issued by the applicant’s “Electronic and electrical apparatus, namely, voucher issuing, reading and recording machines” be used in the nature of tickets or credentials to control access of the user to particular venues or locations?

(5) Will the applicant’s “Radio frequency identification (RFID) credentials, namely, cards and tags, and readers for radio frequency identification credentials” and “Radio frequency identification (RFID) tags” be used to control access of users of the cards and tags to particular venues or locations?

See 37 C.F.R. §2.61(b); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.

The applicant’s responses did not address this requirement. Therefore, it is maintained and made final.

Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods or services is available on applicant’s website or any other website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

ADVISORY – Partial Abandonment

Applicant must respond within six months of the date of issuance of this final Office action or Classes 9, 36, and 38 and the following services to which the final refusals and requirement apply will be deleted from the application by Examiner’s Amendment:

Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; Arranging and conducting special events for commercial, promotional or advertising purposes; Business consulting services in the field of live event technology, event management, event administration, event management, and attendee credentialing; Management of event ticketing for others; Providing on-line registration services for services for business events, educational events, social events and live entertainment and performance events, in Class 35.

Consulting services in the field of hosting computer software applications; Technological planning and consulting services in the field of live event planning and management, in Class 42.

37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

The application will then proceed with Class 40 and the following services in Classes 35 and 42 only:

Providing business information in the field of technology and social media, in Class 35.

Graphic design services for use with live-event credentials, backstage passes, sports team season credentials, and VIP passes; Graphic illustration and drawing services, namely, custom design of graphics for use with live-event credentials, backstage passes, sports team season credentials, and VIP passes; Providing graphic and multimedia design services for the purpose of promoting the goods and services of others, in Class 42.

Response Options

Applicant may respond by providing one or both of the following:

(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).

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. §§2.62(c), 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.

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone: 571-272-4738

Fax: 571-273-9113

Email: kim.moninghoff@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/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.uspto.gov/. 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.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.

To:	Access Pass & Design (docket@hollandhart.com)
Subject:	U.S. TRADEMARK APPLICATION NO. 86250184 - ACCESS - 70952.0009
Sent:	4/6/2018 7:20:36 AM
Sent As:	ECOM113@USPTO.GOV
Attachments: