To: | Cloudone LLC (KLR.docket@chernofflaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87147523 - PERSONA - 9686.0008 |
Sent: | 12/11/2016 2:35:33 PM |
Sent As: | ECOM122@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87147523
MARK: PERSONA
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Cloudone LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 12/11/2016The 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.
SUMMARY OF ISSUES:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant is seeking registration for the mark PERSONA (in standard character form) for “marketing services, namely, providing personalized traditional and electronic media services to develop and manage individualized professional services offered in the context of one's employment; providing traditional and electronic media services to permit individuals to develop personal and business opportunities; building, promoting and managing individualized marketing profiles by means of traditional and electronic media” in International Class 35.
The marks and relevant services in the cited registrations are as follows:
REG. NO. |
MARK |
SERVICES |
4414474 |
DIRECT TO PERSONA (standard characters) |
“Advertising, marketing, and promotion services based on distinct character profiles of marketing targets” in International Class 35 |
4588772 |
PERSONA QUEST (standard characters) |
“Business marketing services, marketing plan development; market segmentation consultation; market research consultation, namely, consumer marketing consultancy services, particularly, specializing in the recognition of which types of customers a firm should be identifying for acquisition for the understanding of customer profitability, to aid in maximizing the development of marketing plans for new products and services” in International Class 35 |
4673287 |
PUBLIC PERSONA (standard characters) |
“Brand concept and brand development services for corporate and individual clients; brand imagery consulting services; branding services, namely, consulting, development, management and marketing of brands for businesses and/or individuals” in International Class 35 |
4988169 |
PERSONA (standard characters) |
“Providing personalized marketing services for optimizing the revenue opportunities of an organization, namely, increasing attendance, membership, and sponsorship, through the use of algorithms which analyze the organization's data” in International Class 35 |
In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the services. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); see TMEP §1207.01. That is, the 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). Additionally, the services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).
Comparison of the Marks
Turning to the first prong of the test, comparison must be made between the applicant’s mark PERSONA in standard character form and the registered marks DIRECT TO PERSONA, PERSON QUEST, PUBLIC PERSONA, and PERSONA, all in standard character form.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. 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)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In the present case, the applicant’s mark is identical in whole or in part to each of the registered marks in sound, appearance, and overall commercial impression. Specifically, the applicant’s mark is wholly encompassed within each of the registered marks, merely deleting wording from the registered marks.
This is particularly true when, as is the case here, the applicant’s mark merely removes wording from the registered marks and is otherwise wholly encapsulated within the cited registered marks.
Therefore, the applicant’s mark is identical in whole or in part to each of the registered marks in sound and appearance. Additionally, because they are largely identical in part, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective services. In re i.am.symbolic, Llc, 116 USPQ2d at 1411.
Accordingly, the marks are considered to be confusingly similar.
Comparison of the Services
The respective 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 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)); TMEP §1207.01(a)(i).
In the present case, the applicant’s services, “marketing services, namely, providing personalized traditional and electronic media services to develop and manage individualized professional services offered in the context of one's employment; providing traditional and electronic media services to permit individuals to develop personal and business opportunities; building, promoting and managing individualized marketing profiles by means of traditional and electronic media” in International Class 35, must be compared against the various services of the registrants, which consist of a range of advertising and marketing services in International Class 35.
Absent restrictions in an application and/or registration, the identified 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 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).
In this case, the identification set forth in the application 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 as those of the registrants. Further, the application uses broad wording to describe the services and this wording is presumed to encompass all services of the type described, including those in registrants’ more narrow identification.
Additionally, the examining attorney has attached Internet evidence from Creative Marketing Services, Altitude Marketing, ME Marketing Services, Tungsten Branding, Sutter Group, and BluFish Consulting showing that personalized marketing strategies, advertising and promotional services, and branding and brand imaging consultancy and services are often offered by the same firms and business for the common end purpose of increasing client revenue and business. This evidence establishes that the same entity commonly provides the relevant services and markets the services under the same mark, that the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and that the services are similar or complementary in terms of purpose or function. Therefore, applicant’s and registrants’ services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Accordingly, registration is refused pursuant to Trademark Act Section 2(d).
Applicant should note the additional ground for refusal below.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
In the present case, the applied-for mark PERSONA merely describes a characteristic or purpose of the applicant’s services. Specifically, applicant’s mark immediately conveys to potential consumers that applicant’s services include creating and optimizing marketing and business strategies based upon targeted customer profiles, or “personas.”
The examining attorney has attached evidence from Buffer, PR Newswire, and bPlans showing that the word “persona” is commonly used to refer to a targeted customer profile created through market research and developed for the purpose of building and maintaining marketing and branding profiles so as to maximize customer exposure and company revenue. Accordingly, when considered in the context of applicant’s identified services, the applied for mark merely describes a characteristic or purpose of applicant’s services, namely, to create and manage personalized marketing personas so as to maximize the revenue and public exposure of the client.
Therefore, the applicant’s proposed mark is merely descriptive of applicant’s identified services. Accordingly, registration is refused pursuant to Trademark Act Section 2(e)(1).
ADVISORY: SECTION 1(b) APPLICATION INELIGIBLE FOR AMENDMENT TO SUPPLEMENTAL REGISTER
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(c) for the amendment to allege use. 37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03. In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
The following must be submitted in an amendment to allege use in order to amend an application to use in commerce under Section 1(a):
(1) The following statements: “Applicant believes applicant is the owner of the mark” and “the mark is in use in commerce.”
(2) The date of first use of the mark anywhere on or in connection with the services.
(3) The date of first use of the mark in commerce as a trademark or service mark.
(4) The services specified in the application.
(5) A specimen showing how applicant uses the mark in commerce for each class of services for which use is being asserted. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.
(6) A filing fee of $100 per class for each international class of services for which use is being asserted (current fee information should be confirmed at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).
(7) Verification of the above (1) through (4) requirements in an affidavit or signed declaration under 37 C.F.R. §2.20.
See 37 C.F.R. §§2.6(a)(2), 2.56, 2.76(b); TMEP §§1104.08, 1104.10(b)(v).
An amendment to allege use may be filed online at http://www.gov.uspto.report/trademarks/teas/index.jsp. An amendment to allege use is not considered a response to an Office action. 37 C.F.R. §2.76(h); TMEP §1104. Applicant must file a separate response to any outstanding Office action. TMEP §1104; see 37 C.F.R. §2.76(h).
Applicant should note that amendment to the Supplemental Register is NOT an available option to overcome a likelihood of confusion refusal pursuant to Trademark Act Section 2(d).
AMENDMENT OF IDENTIFICATION OF SERVICES REQUIRED
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, hand soap, shampoo). TMEP §1402.01(a). Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).
In the present case, it appears that applicant intends the wording “marketing services” to encompass all of the remaining wording in the identification. Accordingly, applicant should amend the identification of services to remove the semicolons separating the wording “providing personalized traditional and electronic media services to develop and manage individualized professional services offered in the context of one's employment; providing traditional and electronic media services to permit individuals to develop personal and business opportunities; building, promoting and managing individualized marketing profiles by means of traditional and electronic media” and replace them with commas.
Applicant may adopt the following amended identification of services, if accurate:
International Class 35: marketing services, namely, providing personalized traditional and electronic media services to develop and manage individualized professional services offered in the context of one's employment, providing traditional and electronic media services to permit individuals to develop personal and business opportunities, and building, promoting and managing individualized marketing profiles by means of traditional and electronic media
RESPONSE GUIDELINES
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
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 $50 per international class of 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.
/Kyle D. Simcox/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 122
(571) 272-7851
Kyle.Simcox@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.