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.  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: 10/25/2017

 

 

 

 

 

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.  

 

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.

 

Likelihood of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 0660451; 0692750; 1628035 and 3830438.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant applied to register the mark STANDARD and design for, “Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; electric and electronic apparatus and hardware, equipment for the storage and transmission of data and information for use in relation to banking, financial, insurance and general commercial transactions, including those conducted online via the Internet or a computer network, or by telephone or cellular telephone; software, systems, devices and platforms used to enable and facilitate electronic banking, financial, insurance or other commercial transactions, including those via the Internet or a computer network, or by telephone or cellular telephone; including data processing equipment and software for use in relation to banking and financial services including data processing equipment and software; downloadable electronic publications; apparatus and equipment for the electronic transfer of and/or financial data; telecommunication equipment; automated teller machines; money dispensing machines, electronic fund transfer, payment or point of sale apparatus, machines and terminals; card and bar code scanners; magnetic and magnetically encoded cards; programmable cards; smart cards; cards bearing coded data in magnetic form; cards bearing data for use in computers; cards bearing coded data in punched-out form; cards bearing data for use in data processing apparatus; cards bearing data for use in data storage apparatus; cards bearing electronically recorded data; cards bearing integrated circuits; cards bearing magnetic or encoded data for input; cards bearing micro-chips and computer cards containing chips; credit, charge, debit and/or cash cards; prepayment cards; loyalty or gift cards, readers, scanners, parts and fittings for the aforementioned goods; Telecommunications and communications services; providing user access to computer networks or the Internet for purposes of facilitating commercial, banking or financial transactions and electronic payments; providing telecommunications connections to the Internet or data bases for purposes of facilitating commercial, banking or financial transactions and electronic payments services ancillary and related to all of the aforegoing.”

 

The registered marks are:

 

STANDARD (1^st registrant-Registration No. 0660451) for, “portable radio receivers;”

 

STANDARD and design (2^nd registrant-Registration No. 0692750) for, “electrically operated hospital audible visible communication, signaling and paging systems;”

 

STANDARD (3^rd registrant- Registration No. 1628035) for, “radio transmitters and receivers and accessories therefor, namely, mounting brackets, headphones, belt clips and microphones;”

THE STANDARD (4^th registrant- Registration No. 3830438) for, “providing Internet access; computer services, namely, providing on-line facilities for real-time interaction with other computer users concerning topics of general interest;

 

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. 

 

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).

 

In this case, applicant’s mark STANDARD and design is related to the registered marks STANDARD; STANDARD and design; STANDARD; THE STANDARD and design because of the common use of STANDARD in all of the marks. As such, the marks look alike and sound alike when spoken.

 

COMPARISON OF THE GOODS AND SERVICES

The compared goods and/or services 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); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are 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 “telecommunication equipment” is similar to the first and third registrant’s “portable radio receivers”  and “radio transmitters and receivers” because as the attached Internet stories show, “telecommunication equipment” is a broad category that includes “radio receivers.” Accordingly, consumers encountering the goods of the parties would mistakenly believe the goods originate from a common source.

 

Applicant’s “telecommunication equipment” is related to the second registrant’s “electrically operated hospital audible visible communication, signaling and paging systems” because as the attached Internet stories show, “telecommunication equipment” includes “paging systems.” Accordingly, consumers encountering the goods of the parties would mistakenly believe the goods originate from a common source.

 

Applicant’s “providing user access to computer networks or the Internet for purposes of facilitating commercial, banking or financial transactions and electronic payments” is related to the fourth registrant’s “providing Internet access” because as the attached definition states, “internet access is ability of individuals and organizations to connect to the Internet using computer terminals, computers, mobile devices; and to access services such as email and the World Wide Web.” As such, as the definition shows, “providing Internet access” would include the fourth registrant’s “providing user access to computer networks.” Accordingly, consumers encountering the services of the parties would mistakenly believe the services originate from a common source.

 

Registration is therefore refused under Section 2d.

 

Identification of Goods

The identification of goods is indefinite and must be clarified because some of the wording is too broad and must be clarified. For example, the wording, “downloadable electronic publications” is indefinite. Applicant must state the nature of the publications (for example, magazines, newsletters), and the field (ex. music, medicine). Further, the wording, “electronic funds transfer” is properly classified in class 36. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; electric and electronic apparatus and hardware, equipment for the storage and transmission of data and information for use in relation to banking, financial, insurance and general commercial transactions, including those conducted online via the Internet or a computer network, or by telephone or cellular telephone; computer software, computer operating systems, computer peripheral devices and computer software platforms used to enable and facilitate electronic banking, financial, insurance or other commercial transactions, including those via the Internet or a computer network, or by telephone or cellular telephone, including data processing equipment and software for use in relation to banking and financial services including data processing equipment and software; downloadable electronic publications, in the nature of [ex. magazines, newsletters, etc.] in the field of [specify the field, ex. music, medicine, etc.]; apparatus and equipment for the electronic transfer of and/or financial data, namely, [specify the apparatus and equipment]; electronic equipment, namely, transformers, baluns and cables, all used in connection with computers, computer peripheral devices, televisions, audio-video equipment, closed-circuit TV equipment and telecommunication equipment; automated teller machines; money counting and sorting machines, point-of-sale terminals for making contactless payments; card and bar code scanners; magnetic and magnetically encoded key, debit and charge cards; magnetically and non-magnetically encoded and programmable cards for use as [specify, ex. electronic travel tickets, identity cards, security clearance cards, etc.]; blank smart cards; magnetic identity; computer equipment, namely, wireless cards; interface cards for data processing equipment in the form of printed circuits; cards bearing data for use in data processing apparatus; cards bearing data for use in data storage apparatus; cards bearing electronically recorded data; cards bearing integrated circuits; cards bearing magnetic or encoded data for input; cards bearing micro-chips and computer cards containing chips; magnetically-encoded credit, charge, debit and/or cash cards; electronic and magnetic ID cards for use in connection with payment for services; electronic loyalty or gift cards, readers, scanners, parts and fittings for the aforementioned goods, in class 9.

 

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.

 

IMPLEMENTATION OF THE ELEVENTH EDITION, VERSION 2017 OF THE NICE AGREEMENT:  Effective January 1, 2017, the Eleventh Edition, version 2017 of the Nice Agreement changed the classification of certain goods and services used in identifications.  See Nice Classification, 11th ed., version 2017 (“Nice 11-2017”); TMEP §1401.02(a).  Applications filed on or after January 1, 2017 must comply with the new edition.  See 37 C.F.R. §2.85(e)(1); TMEP §1401.09.  Applications filed prior to January 1, 2017 must comply with the edition of the Nice Agreement in effect as of the application filing date; however, applicants of such applications may voluntarily choose to comply with the new edition.  See 37 C.F.R. §2.85(e)(1)-(2); TMEP §1401.09.  If applicant chooses to comply with the new edition, the entire identification must comply with this edition.  See 37 C.F.R. §2.85(e)(2); TMEP §1401.09.  The USPTO’s online U.S. Acceptable Identification of Goods and Services Manual provides classification information for the new edition as well as information for previous editions in notes to specific entries.  See TMEP §1402.04.

 

Identification of Services

The identification of services is indefinite and must be clarified because the wording “electronic funds transfer” is properly classified in class 36.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

Electronic funds transfer, in class 36;

 

Telecommunication services for providing multiple-user access to a global computer network; telecommunications services, namely, personal communications services; providing user access to computer networks or the Internet for purposes of facilitating commercial, banking or financial transactions and electronic payments; providing telecommunications connections to the Internet or data bases for purposes of facilitating commercial, banking or financial transactions and electronic payments services ancillary and related to all of the aforegoing, in class 38.

 

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.

 

Insufficient Fee

The application identifies goods and/or services that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only two class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The fee for adding classes to a regular TEAS application is $400 per class when the fee is paid using the Trademark Electronic Application System (TEAS).  See 37 C.F.R. §2.6(a)(1)(ii); TMEP §§810, 1403.02(c).

 

TRADEMARK FEES:  Effective January 14, 2017, the USPTO increased fees for all trademark applications and related documents filed on paper.  See 81 Fed. Reg. 72694 (Oct. 21, 2016) (codified at 37 C.F.R. parts 2 and 7).  Additionally, the USPTO increased the filing fee for each class of goods or services in a regular Trademark Electronic Application System (TEAS) application and the per class processing fee for a TEAS Plus or TEAS RF application that does not meet the relevant filing requirements.  Id.  Trademark applications and related documents filed on or after January 14, 2017 must comply with the new fees.  See more information for an overview of the changes.  See the fee chart that lists all trademark fee changes.

 

Telephone for Clarification Recommended

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.

 

 

/Inga Ervin/

Inga Ervin

Law Office 111

571-272-9379

571-273-9379 (fax)

Inga.Ervin@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 10/25/2017 FOR U.S. APPLICATION SERIAL NO. 87554490

 

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 10/25/2017 (or sooner if specified in the Office action).  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.  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 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.