| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
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|---|---|---|---|---|---|---|---|---|---|---|---|---|---|
| SERIAL NUMBER | 86426396 | ||||||||||||
| LAW OFFICE ASSIGNED | LAW OFFICE 103 | ||||||||||||
| MARK SECTION | |||||||||||||
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86426396/large | ||||||||||||
| LITERAL ELEMENT | PLUS | ||||||||||||
| STANDARD CHARACTERS | YES | ||||||||||||
| USPTO-GENERATED IMAGE | YES | ||||||||||||
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. | ||||||||||||
| ARGUMENT(S) | |||||||||||||
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UNITED STATES PATENT AND TRADEMARK OFFICE Mark: PLUS International Class 39 RESPONSE TO OFFICE ACTION I. AMENDMENTS Applicant amends the identification of services as follows: “
II. REMARKS In the Office Action dated February 4, 2015, the Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Lanham Act. The Examining Attorney determined that there is a likelihood of confusion between Applicant’s mark, PLUS, and the mark shown in Registration No. 2649218 (the “Cited Mark”). A copy of this registration, obtained from the online PTO records, is attached as Exhibit A. For the following reasons, Applicant respectfully requests that the Examining Attorney withdraw the citation, and permit Applicant’s mark to proceed to registration. A. Likelihood of Confusion Standard The standard for determining whether a likelihood of confusion exists is whether the purchasing public would mistakenly assume that an applicant’s goods or services originate with, are sponsored by, or are in some way associated with the goods or services sold under a cited registration. FBI v. Societe: “M. Bril & Co.”, 172 U.S.P.Q. 310 (TTAB 1971). The issue is not whether the respective marks themselves, or the goods or services offered under the marks, are likely to be confused but, rather, whether there is a likelihood of confusion as to the source or sponsorship of the goods or services because of the marks used thereon. See, e.g., Paula Payne Prods. Co. v. Johnson’s Pub’g Co., 473 F.2d 901, 902, 177 U.S.P.Q. 76, 77 (C.C.P.A. 1973) (“[T]he question is not whether people will confuse the marks, but rather whether the marks will confuse people into believing that the goods they identify emanate from the same source.”); In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 U.S.P.Q. 2d 1201, 1205 (Fed. Cir. 2003). The PTO considers a number of factors identified in Application of E. I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) when determining the existence or absence of likelihood of confusion as to the source of origin of goods and services. Numerous cases have held that not all of the DuPont factors may be relevant or of equal weight in any given case. Kellogg Co. v. Pack'em Enterprises, Inc., 951 F.2d 330, 333 (Fed. Cir. 1991). Here, the most relevant factors that should be considered in this evaluation are the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; and the similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use. DuPont at 1361.
1. The Respective Marks Look Different and Have Different Commercial Impressions Both marks differ visually, and overall each creates a unique and distinct commercial impression. The Cited Mark, PLUS & Design, consisting of the word PLUS written in highly stylized letters and underlined. It is in bold, sharp, fat, italics, with a right hand slant, and the entire term is heavily underlined as part of the design. The design and impression of the Cited Mark is quite assertive and graphic. Accordingly, the design element dominates the Cited Mark, and is equal in emphasis, if not greater than, the literal element. Indeed, the bold italic slant, coupled with the striking bold underline, combined with the word PLUS culminates in sublimation of the word alone, such that the entire mark can be viewed as a single design. The appearance and impression of Applicant’s Mark and the Cited Mark obviate the potential for confusion. 2. The Services Offered Under Each Mark Differ In this case, as amended with this Response, Applicant’s services are “transportation of passengers by vehicle through a network of third party transportation providers that are connected through a mobile application platform that connects riders with drivers.” Applicant’s services flow from Applicant’s software: in order for a consumer to call on Applicant’s PLUS transportation network service, he or she must utilize touch technology to select Applicant’s PLUS service option via a mobile application. The would be rider is then connected with a driver from a network of independent transportation providers. See screenshots from Applicant’s mobile application, and printed pages from Applicant’s website and from additional online resources available to the public, all attached as Exhibit B. In comparison, Registrant offers The Cited Mark as the source of direct shuttle transportation explicitly connected to airport parking. Copies of the Specimens of Use submitted for the Cited Mark, obtained from the online PTO records are attached as Exhibit C. Consumers, when utilizing and encountering the respective goods and services, understand that Applicant’s Mark and the Cited Mark are for different services. The courts and the T.T.A.B. routinely hold that, even in a situation where marks are identical (which is not the case here), there is no likelihood of confusion “if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source.” TMEP § 1207.01(a)(i) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related)). In the present case, the respective services differ significantly. Applicant is a cutting-edge technology company whose mobile application can be found for download on the Apple App Store and Google Play. The drivers and riders do not know each other before being matched up, and the third parties pick up passengers in their own vehicles. The PLUS mark is used in connection with a software platform, but Applicant itself is not a transportation provider. By contrast, Registrant is the transportation provider. Its services are defined as “vehicular parking adjacent to airports; and transportation of passengers and luggage by bus, van, limousine, shuttle bus, automobile, and/or other land vehicular means.” Registrant is in the business of providing parking adjacent to airports, with an ancillary shuttle transportation service to its parking customers. This is entirely different than offering to connect third party drivers who are using their own vehicles for the transportation. A search of Registrant’s website reveals the services offered by Park ‘N Fly Plus are limited to transport between the Park ‘N Fly locations and the airport. See Exhibit D which reads, “Complimentary, Continuous Shuttle Service: Whether it's at your car or the Hartsfield-Jackson International Airport terminal, a Park 'N Fly Plus shuttle will pick you up in 5 minutes or less, seven days a week” and “Drop your car off at our lot entrance, jump in the shuttle, and you're on your way. You're the first to return as well.” The services offered under each mark differ in a critical way that work to preclude any likelihood of confusion as to source of Applicant’s and Registrant’s services. III. Applicant’s Mark And The Cited Mark Already Coexist With Other Registered PLUS Marks Notably, the Cited Mark already coexists on the register and in the marketplace with other PLUS marks for services in Class 39, apparently without confusion. These other PLUS marks include:
Copies of these registrations as they appear in the online PTO records are attached as Exhibit E. Both Applicant’s Mark and the Cited Mark are at least as different from any of these prior marks, as they are from each other. It follows that consumers can therefore differentiate between various PLUS marks in the same classification based solely on slight differences in their respective appearances and commercial impressions, as well as difference in services being offered. IV. CONCLUSION For the reasons noted above, Applicant respectfully requests that the Examining Attorney enter the amended identification of services, withdraw the citation, and permit the application to proceed to registration.
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| EVIDENCE SECTION | |||||||||||||
| EVIDENCE FILE NAME(S) | |||||||||||||
| ORIGINAL PDF FILE | evi_507638253-20150804173327793619_._Exhibit_A.pdf | ||||||||||||
| CONVERTED PDF FILE(S) (1 page) |
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| ORIGINAL PDF FILE | evi_507638253-20150804173327793619_._Exhibit_B.pdf | ||||||||||||
| CONVERTED PDF FILE(S) (3 pages) |
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| ORIGINAL PDF FILE | evi_507638253-20150804173327793619_._Exhibit_C.pdf | ||||||||||||
| CONVERTED PDF FILE(S) (3 pages) |
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| \\TICRS\EXPORT16\IMAGEOUT16\864\263\86426396\xml4\ROA0008.JPG | |||||||||||||
| ORIGINAL PDF FILE | evi_507638253-20150804173327793619_._Exhibit_D.pdf | ||||||||||||
| CONVERTED PDF FILE(S) (2 pages) |
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| ORIGINAL PDF FILE | evi_507638253-20150804173327793619_._Exhibit_E.pdf | ||||||||||||
| CONVERTED PDF FILE(S) (3 pages) |
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| \\TICRS\EXPORT16\IMAGEOUT16\864\263\86426396\xml4\ROA0013.JPG | |||||||||||||
| SIGNATURE SECTION | |||||||||||||
| RESPONSE SIGNATURE | /Holly Pranger/ | ||||||||||||
| SIGNATORY'S NAME | Holly Pranger | ||||||||||||
| SIGNATORY'S POSITION | Attorney of Record, California Bar Member | ||||||||||||
| SIGNATORY'S PHONE NUMBER | 415-885-9800 | ||||||||||||
| DATE SIGNED | 08/04/2015 | ||||||||||||
| AUTHORIZED SIGNATORY | YES | ||||||||||||
| FILING INFORMATION SECTION | |||||||||||||
| SUBMIT DATE | Tue Aug 04 17:52:44 EDT 2015 | ||||||||||||
| TEAS STAMP | USPTO/ROA-XX.XX.XX.XXX-20 150804175244901197-864263 96-5404ce56d5977a6576c10e 45417aaace46919b848f50ff4 879ea77588c7554-N/A-N/A-2 0150804173327793619 |
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| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
UNITED STATES PATENT AND TRADEMARK OFFICE
EXAMINING DIVISION
Mark: PLUS
Application Serial No. 86/426396
International Class 39
Applicant: Lyft, Inc.
Examining Attorney: Seth A. Rappaport
Law Office 103
___________________________________________________________________
RESPONSE TO OFFICE ACTION
I. AMENDMENTS
Applicant amends the identification of services as follows:
“Transportation of passengers by motorized vehicle; Transportation of passengers by vehicle through a network of third party transportation
providers that are connected through a mobile application platform that connects riders with drivers; Providing a website featuring information regarding transportation
services and bookings for transportation services” in International Class 39.
II. REMARKS
In the Office Action dated February 4, 2015, the Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Lanham Act. The Examining Attorney determined that there is a likelihood of confusion between Applicant’s mark, PLUS, and the mark shown in Registration No. 2649218 (the “Cited Mark”). A copy of this registration, obtained from the online PTO records, is attached as Exhibit A. For the following reasons, Applicant respectfully requests that the Examining Attorney withdraw the citation, and permit Applicant’s mark to proceed to registration.
A. Likelihood of Confusion Standard
The standard for determining whether a likelihood of confusion exists is whether the purchasing public would mistakenly assume that an applicant’s goods or services originate with, are sponsored by, or are in some way associated with the goods or services sold under a cited registration. FBI v. Societe: “M. Bril & Co.”, 172 U.S.P.Q. 310 (TTAB 1971). The issue is not whether the respective marks themselves, or the goods or services offered under the marks, are likely to be confused but, rather, whether there is a likelihood of confusion as to the source or sponsorship of the goods or services because of the marks used thereon. See, e.g., Paula Payne Prods. Co. v. Johnson’s Pub’g Co., 473 F.2d 901, 902, 177 U.S.P.Q. 76, 77 (C.C.P.A. 1973) (“[T]he question is not whether people will confuse the marks, but rather whether the marks will confuse people into believing that the goods they identify emanate from the same source.”); In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 U.S.P.Q. 2d 1201, 1205 (Fed. Cir. 2003).
The PTO considers a number of factors identified in Application of E. I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) when determining the existence or absence of likelihood of confusion as to the source of origin of goods and services. Numerous cases have held that not all of the DuPont factors may be relevant or of equal weight in any given case. Kellogg Co. v. Pack'em Enterprises, Inc., 951 F.2d 330, 333 (Fed. Cir. 1991). Here, the most relevant factors that should be considered in this evaluation are the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; and the similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use. DuPont at 1361.
1. The Respective Marks Look Different and Have Different Commercial Impressions
Both marks differ visually, and overall each creates a unique and distinct commercial impression. The Cited Mark, PLUS & Design, consisting of the word PLUS written in highly stylized letters and underlined. It is in bold, sharp, fat, italics, with a right hand slant, and the entire term is heavily underlined as part of the design. The design and impression of the Cited Mark is quite assertive and graphic. Accordingly, the design element dominates the Cited Mark, and is equal in emphasis, if not greater than, the literal element. Indeed, the bold italic slant, coupled with the striking bold underline, combined with the word PLUS culminates in sublimation of the word alone, such that the entire mark can be viewed as a single design. The appearance and impression of Applicant’s Mark and the Cited Mark obviate the potential for confusion.
2. The Services Offered Under Each Mark Differ
In this case, as amended with this Response, Applicant’s services are “transportation of passengers by vehicle through a network of third party transportation providers that are connected through a mobile application platform that connects riders with drivers.” Applicant’s services flow from Applicant’s software: in order for a consumer to call on Applicant’s PLUS transportation network service, he or she must utilize touch technology to select Applicant’s PLUS service option via a mobile application. The would be rider is then connected with a driver from a network of independent transportation providers. See screenshots from Applicant’s mobile application, and printed pages from Applicant’s website and from additional online resources available to the public, all attached as Exhibit B.
In comparison, Registrant offers The Cited Mark as the source of direct shuttle transportation explicitly connected to airport parking. Copies of the Specimens of Use submitted for the Cited Mark, obtained from the online PTO records are attached as Exhibit C. Consumers, when utilizing and encountering the respective goods and services, understand that Applicant’s Mark and the Cited Mark are for different services.
The courts and the T.T.A.B. routinely hold that, even in a situation where marks are identical (which is not the case here), there is no likelihood of confusion “if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source.” TMEP § 1207.01(a)(i) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related)).
In the present case, the respective services differ significantly. Applicant is a cutting-edge technology company whose mobile application can be found for download on the Apple App Store and Google Play. The drivers and riders do not know each other before being matched up, and the third parties pick up passengers in their own vehicles. The PLUS mark is used in connection with a software platform, but Applicant itself is not a transportation provider.
By contrast, Registrant is the transportation provider. Its services are defined as “vehicular parking adjacent to airports; and transportation of passengers and luggage by bus, van, limousine, shuttle bus, automobile, and/or other land vehicular means.” Registrant is in the business of providing parking adjacent to airports, with an ancillary shuttle transportation service to its parking customers. This is entirely different than offering to connect third party drivers who are using their own vehicles for the transportation. A search of Registrant’s website reveals the services offered by Park ‘N Fly Plus are limited to transport between the Park ‘N Fly locations and the airport. See Exhibit D which reads, “Complimentary, Continuous Shuttle Service: Whether it's at your car or the Hartsfield-Jackson International Airport terminal, a Park 'N Fly Plus shuttle will pick you up in 5 minutes or less, seven days a week” and “Drop your car off at our lot entrance, jump in the shuttle, and you're on your way. You're the first to return as well.”
The services offered under each mark differ in a critical way that work to preclude any likelihood of confusion as to source of Applicant’s and Registrant’s services.
III. Applicant’s Mark And The Cited Mark Already Coexist With Other Registered PLUS Marks
Notably, the Cited Mark already coexists on the register and in the marketplace with other PLUS marks for services in Class 39, apparently without confusion. These other PLUS marks include:
|
Mark |
Class/Goods |
Reg. |
|
PLUS (typed drawing) |
IC 39: Disseminating travel information and making travel arrangements for others. |
1778244 |
|
PLUS (& Design) |
IC 39: Transportation and delivery services, namely, next day shipment services. |
3573328 |
|
PLUS (& Design) |
IC 39: Postal services, namely, parcel delivery, packaging articles for transportation and arranging for shipping articles, including mail and parcels of all sizes; courier and messenger services; mailbox rental services. |
2723551 |
Copies of these registrations as they appear in the online PTO records are attached as Exhibit E.
Both Applicant’s Mark and the Cited Mark are at least as different from any of these prior marks, as they are from each other. It follows that consumers can therefore differentiate between various PLUS marks in the same classification based solely on slight differences in their respective appearances and commercial impressions, as well as difference in services being offered.
IV. CONCLUSION
For the reasons noted above, Applicant respectfully requests that the Examining Attorney enter the amended identification of services, withdraw the citation, and permit the application to proceed to registration.
