To: | THE STANDARD BANK OF SOUTH AFRICA LIMITE ETC. (trademarks@witnerfeldt.law) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87554490 - STANDARD - 20000160 |
Sent: | 5/24/2018 9:53:51 AM |
Sent As: | ECOM111@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
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: 5/24/2018
THIS IS A FINAL ACTION.
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.
This Office action is in response to applicant’s communication filed on April 25, 2018.
Note: The Section 2d refusal regarding Registration Nos. 0660451; 0692750; 1628035 is WITHDRAWN.
Note: Applicant’s amended identification of goods and services has been accepted and entered.
Applicant applied to register the mark STANDARD and design for the amended identification, “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 newsletters, magazines, reports, guides, charts, worksheets, forms, instructional materials, educational materials, bulletins, pamphlets, and booklets in the field of banking, financing, financial services, insurance, securities and investment; apparatus and equipment for the electronic transfer of and/or financial data, namely, computer terminals, computer peripheral devices, computer software, computer programs and mobile applications; 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 excluding radio transmitters, radio receivers or paging systems; 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 time-tracking and recording cards, access control cards, debit cards, credit cards, charge cards, stored value cards, gift cards and loyalty cards; blank smart cards; 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; Telecommunication services for providing multiple-user access to a global computer network; telecommunications services, namely, personal communications services; providing user access to computer networks via the Internet for purposes of facilitating commercial, banking or financial transactions and electronic payments; providing telecommunications connections via the Internet to data bases for purposes of facilitating commercial, banking or financial transactions and electronic payments services ancillary and related to all of the foregoing.”
The registered mark is:
THE STANDARD 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 mark, THE STANDARD and design because of the common use of STANDARD in both of the marks. As such, the marks look alike and sound alike when spoken.
COMPARISON OF THE GOODS AND SERVICES
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 registrant’s “providing Internet access” because as the definition attached to the April 25, 2018 office action 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 registrant’s “providing user access to computer networks.”
Additionally, applicant’s “telecommunication services for providing multiple-user access to a global computer network” are also related to the registrant’s “providing Internet access” because as the attached Internet stories (especially the Internet story entitled “Internet-a global computer network”) shows, “the Internet is a computer-based global information system.” As such, the Internet and a global computer network are one and the same.
Accordingly, consumers encountering the services of the parties would mistakenly believe the services originate from a common source.
Registration is therefore refused and made FINAL under Section 2d.
Response to a Final Office Action
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
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
Trademark Examining Attorney
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.