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: 12/16/2016

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.

PRIOR-FILED APPLICATION(S)

The effective filing date of pending U.S. Application Serial No. 86977685 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.

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3396505 and 4925206.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

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, 1361, 177 USPQ 563, 567 (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 THE MARKS

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).

When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result.  Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Coach Servs., Inc. v. Truimph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Bay State Brewing Co., 117 USPQ2d at 1960 ( (citing Spoons Rests., Inc., v. Morrison, Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013));TMEP §1207.01(b).

Applicant’s mark SNAP is for the goods, “Computer software; computer hardware; computers; tablet computers; laptop computers; computer programs (downloadable software); computer software, namely, operating system programs, word processing programs, browser programs, programs to download and play audio and visual applications; publications downloadable from the Internet, relating to computers, computer software, computer programs, telecommunications, telephones and mobile telephones; electronic mail programs; digital music downloadable from the Internet or other computer networks; digital media downloadable from the Internet or other computer networks; computer software to enable searching of visual images, audio information, graphics, data and other information via the Internet and via other computer networks; computer software to enable connection to databases via the Internet and via other computer networks; computer software for searching, arranging, organising and compiling information on the Internet or other computer networks; computer servers; network servers; network controlling apparatus; network managing apparatus; telephones; mobile telephones; hardware to enable communication by telephone and/or mobile telephone; hardware to enable communication between computers; software to enable communication by telephone and/or mobile telephone; cellular telephones; mobile telecommunications apparatus; telecommunications apparatus,” and “Telecommunication services; telecommunication, communication and broadcasting services provided online, via the Internet or via other communications networks; providing user access online, via the Internet or via other communications networks; providing access to on-line information services online, via the Internet or via other communications networks; providing a forum online, via the Internet or via other communications networks to share data, text, images, graphics, sound and/or audio-visual material; leasing of access time to a computer databases; transmission of information, data, text, images, graphics, sound and/or audio-visual material online, via the Internet or via other communications networks; online transmission of electronic publications; electronic mail, message sending and receiving services; data communication services; providing access to software to enable users to participate in, develop, edit and design content; distribution of data, text, images, graphics, sound and/or audio-visual material online, via the Internet or via other communications networks; delivery of digital music by telecommunications; delivery of films and/or television programmes by telecommunications; delivery of visual and/or audio-visual material by telecommunications; telephone services; mobile telephone services; services to enable communication by telephone and/or mobile telephone; cellular telephone communication services; mobile telecommunications services; mobile telecommunications network services; information, advisory and consultancy services relating to the aforesaid services,” among other services.

Registrant’s marks SNAP “thumbs up” design, and SNAP and ghost design, are for the services, “Intrastate and interstate telephone services; cable television transmission; electronic, electric, and digital transmission of voice, data, images, signals, and messages; providing a high speed access to area networks and a global computer information network; and providing access to telecommunication networks,” and goods “Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; computer software for streaming audio-visual media content via a global computer network and to mobile and digital electronic devices,” respectively.

Applicant’s and registrant’s marks contain the identical word SNAP.  Although registrant’s marks contain an additional design element, for a composite mark containing both words and a design, the word portion may be more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services.  Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  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 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

COMPARISON OF THE GOODS/SERVICES

The goods and 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)); TMEP §1207.01(a)(i).

Applicant’s and registrant’s computer software goods are related in that applicant’s “computer software,” could likely incorporate the same “Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; computer software for streaming audio-visual media content via a global computer network and to mobile and digital electronic devices,” that are the registrant’s goods.  In addition, it is also likely that applicant’s “transmission of information, data, text, images, graphics, sound and/or audio-visual material online, via the Internet or via other communications networks,” services are related to registrant’s “electronic, electric, and digital transmission of voice, data, images, signals, and messages,” in that these services are virtually identical.

The attached Internet evidence consists of web pages.  This evidence establishes that the relevant goods and 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 the goods and services are similar or complementary in terms of purpose or function.  Therefore, applicant’s and registrant’s goods and/or 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).

Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods and/or services are related.  See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).  The Internet has become integral to daily life in the United States, with Census Bureau data showing approximately three-quarters of American households used the Internet in 2013 to engage in personal communications, to obtain news, information, and entertainment, and to do banking and shopping.  See In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) (taking judicial notice of the following two official government publications:  (1) Thom File & Camille Ryan, U.S. Census Bureau, Am. Cmty. Survey Reports ACS-28, Computer & Internet Use in the United States:  2013 (2014), available at http://www.census.gov/content/dam/Census/library/publications/2014/acs/acs-28.pdf, and (2) The Nat’l Telecomms. & Info. Admin. & Econ. & Statistics Admin., Exploring the Digital Nation:  America’s Emerging Online Experience (2013), available at http://www.ntia.doc.gov/files/ntia/publications/exploring_the_digital_nation_-_americas_emerging_online_experience.pdf).  Thus, the widespread use of the Internet in the United States suggests that Internet evidence may be probative of public perception in trademark examination.

Therefore, the mark is refused under Section 2(d) of the Trademark Act.

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

If applicant responds to the refusal, applicant must also respond to the requirement set forth below.

IDENTIFICATION OF GOODS AND SERVICES

The wording in the identification of goods and services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate: 

Class 009

Computer software ___________[indicate specific use, e.g., for operating e-mail, web browser, word processing, spread sheets, presentation support, computer graphics and for enabling and controlling access to the internet, firewalls and spam filters, etc.], in the field of ____________[indicate field of use]; computer hardware; computers; tablet computers; laptop computers; downloadable computer programs in the nature of downloadable software for ____________[indicate specific use, e.g., operating email, web browser, word processing, spread sheets, presentation support, computer graphics and for enabling and controlling access to the internet, firewalls and spam filters, etc.]; computer software, namely operating system programs, word processing programs, browser programs, programs to download and play audio and visual applications; publications downloadable from the Internet, namely, __________(specify, e.g., books, magazines), relating to computers, computer software, computer programs, telecommunications, telephones and mobile telephones; electronic mail operating programs; digital music downloadable from the Internet or other computer networks; digital media downloadable from the Internet or other computer networks, namely, ___________(specify type of media and subject matter); computer software to enable searching of visual images, audio information, graphics, data and other information via the Internet and via other computer networks; computer software to enable connection to databases via the Internet and via other computer networks; computer software for searching, arranging, organizing and compiling information on the Internet or other computer networks; computer servers; network servers; network controlling apparatus, namely, ____________(specify); network managing apparatus, namely, ____________(specify); telephones; mobile telephones; computer hardware to enable communication by telephone and/or mobile telephone; computer hardware to enable communication between computers; software to enable communication by telephone and/or mobile telephone; cellular telephones; mobile telecommunications apparatus, namely, _________(specify); telecommunications apparatus, namely, _________(specify).

Class 038

TELECOMMUNICATION access services; TELECOMMUNICATION access and COMMUNICATION services, namely, transmission of voice, audio, visual images and data by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks AND Broadcast of cable television programmes  PROVIDED ONLINE, VIA THE INTERNET OR VIA OTHER COMMUNICATIONS NETWORKS; PROVIDING USER ACCESS ONLINE, VIA THE INTERNET OR VIA OTHER COMMUNICATIONS NETWORKS; PROVIDING ACCESS TO ON-LINE INFORMATION SERVICES ONLINE, VIA THE INTERNET OR VIA OTHER COMMUNICATIONS NETWORKS; PROVIDING A FORUM ONLINE, VIA THE INTERNET OR VIA OTHER COMMUNICATIONS NETWORKS TO SHARE DATA, TEXT, IMAGES, GRAPHICS, SOUND AND/OR AUDIO-VISUAL MATERIAL in the fields of [indicate subject matter]; RENTAL OF ACCESS TIME TO COMPUTER DATABASES; TRANSMISSION OF INFORMATION, DATA, TEXT, IMAGES, GRAPHICS, SOUND AND/OR AUDIO-VISUAL MATERIAL ONLINE, VIA THE INTERNET OR VIA OTHER COMMUNICATIONS NETWORKS; ONLINE TRANSMISSION OF ELECTRONIC PUBLICATIONS, namely, [more specifically identify the nature and type of transmission service]; ELECTRONIC MAIL, MESSAGE SENDING AND RECEIVING SERVICES; Communication services, namely, electronic transmission of data and documents among users of computers; PROVIDING ONLINE ELECTRONIC ACCESS TO SOFTWARE TO ENABLE USERS TO PARTICIPATE IN, DEVELOP, EDIT AND DESIGN CONTENT; TRANSMISSION AND DISTRIBUTION OF DATA, TEXT, IMAGES, GRAPHICS, SOUND AND/OR AUDIO-VISUAL MATERIAL ONLINE, VIA THE INTERNET OR VIA OTHER COMMUNICATIONS NETWORKS; DELIVERY OF DIGITAL MUSIC BY TELECOMMUNICATIONS; DELIVERY OF FILMS AND/OR TELEVISION PROGRAMMES BY TELECOMMUNICATIONS; DELIVERY OF VISUAL AND/OR AUDIO-VISUAL MATERIAL BY TELECOMMUNICATIONS; TELEPHONE COMMUNICATION SERVICES; MOBILE TELEPHONE SERVICES; SERVICES TO ENABLE COMMUNICATION BY TELEPHONE AND/OR MOBILE TELEPHONE; CELLULAR TELEPHONE COMMUNICATION SERVICES; MOBILE TELECOMMUNICATIONS SERVICES, namely, [indicate type]; MOBILE TELECOMMUNICATIONS NETWORK SERVICES, namely, [indicate type]; INFORMATION, ADVISORY AND CONSULTANCY SERVICES RELATING TO THE AFORESAID SERVICES

Class 042

Consultancy services relating to computer hardware __________ [specify type of computer hardware consultancy (e.g. design, development)] and computer software; writing, design, installation and maintenance and updating of computer software and computer programs; software engineering; computer programming for telecommunication services; design of telecommunication apparatus and equipment; development, maintenance and updating of telecommunication computer networks; providing information on computers, on computer software, on computer programs, on computer networks, and on telecommunication computer networks; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware, computer software, computer programs, computer networks, and telecommunication computer network problems; providing on-line computer software and computer program updating services; providing search engines for the Internet and for other communication and telecommunication networks.

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and services may not later be reinserted.  See TMEP §1402.07(e).

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.  See TMEP §1402.04.

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 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.  

/Anne C. Gustason/

Trademark Examining Attorney

Law Office 117

(571) 272-9722

anne.gustason@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 12/16/2016 FOR U.S. APPLICATION SERIAL NO. 87189463

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 12/16/2016 (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.