To: | THE STANDARD BANK OF SOUTH AFRICA LIMITE ETC. (nyustmp@ladas.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87554490 - STANDARD - 1T17695625 |
Sent: | 10/25/2017 10:46:36 AM |
Sent As: | ECOM111@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 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87554490
MARK: STANDARD
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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: THE STANDARD BANK OF SOUTH AFRICA LIMITE ETC.
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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. 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.
Likelihood of Confusion
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 (1st registrant-Registration No. 0660451) for, “portable radio receivers;”
STANDARD and design (2nd registrant-Registration No. 0692750) for, “electrically operated hospital audible visible communication, signaling and paging systems;”
STANDARD (3rd registrant- Registration No. 1628035) for, “radio transmitters and receivers and accessories therefor, namely, mounting brackets, headphones, belt clips and microphones;”
THE STANDARD (4th 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
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
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
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
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.
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
/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.