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.

 

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.  

 

ISSUE/MAILING DATE: 3/12/2018

 

The examining attorney has reviewed the referenced application and determined the following.

 

LIKELIHOOD OF CONFUSION

 

            These Refusals Apply Only to International Classes 41 and 42

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4490614 and 5247008.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See attached registrations.  Applicant has applied to register the mark SOGO for “Arranging and conducting business seminars in the field of banking, finance, investment, stock/securities market, insurance, real estate; Arranging and conducting conferences in the field of banking, finance, investment, stock market, securities market, insurance, real estate and sports; Arranging, organizing, conducting, and hosting social entertainment events; Bookmobile services; Arranging and conducting business training in the field of banking, finance, investment, stock market, securities market, insurance, real estate and sports; Education services, namely, providing on-line classes, seminars, workshops in the fields of sports, general interest; Health club services, namely, providing instruction and equipment in the field of physical exercise; Layout services other than for advertising purposes; Production of radio and television programs; Providing on-line publications in the nature of books, magazines, brochures, journals, periodicals in the field of banking, finance, investment, stock market, securities market, insurance and real estate; Providing on-line music and entertainment information” in International Class 41, and “Technical research; Research, development, design and upgrading of computer software; Computer services, namely, providing search engines for obtaining data on a global computer network; Computer programming; Computer software design for others; Maintenance of computer software; Computer systems analysis; Design and development of on-line computer software systems; Duplication of computer programs; Conversion of data or documents from physical to electronic media; Creating or maintaining web sites for others; Web site hosting services” in International Class 42, and the registered marks are SOGO for “Education services, namely, providing annual medical conferences, lectures, poster sessions, interactive panel discussions, hands-on workshops and broadcast symposia for oncologists and surgeons in the field of oncology; educational services, namely, providing on-line activities in the nature of courses, lectures, workshops and interactive discussions in the field of oncology” in International Class 41, and SOGOSURVEY for “Educational services, namely, providing non-downloadable webinars in the field of use and implementation of on-line proprietary, non-downloadable software for creation, customization, modification, updating, collection, maintenance, analysis, and reporting of on-line single- or multi-page surveys, questionnaires and other data collection formats; educational services, namely, providing, non-downloadable webinars in the field of use and implementation of on-line proprietary, non-downloadable software for publishing, exporting, emailing, printing and transferring surveys and survey results, reports and analysis” in International Class 41, and “Design and development of online computer software for others for use in administering surveys over a computer network; design and development of online computer software for others for use in collecting survey data; design and development of online computer software for others for use in enterprise feedback management and community response management for others; Providing use of on-line proprietary, non-downloadable software for customer creation, customization, modification, updating, collection, maintenance, analysis and reporting of on-line single- or multi-page surveys, questionnaires and other data collection formats, and for publishing, exporting, emailing, printing and transferring surveys and survey results, reports and analysis; technical support services in the nature of troubleshooting of computer software problems and website application usage problems to users in connection with the creation, modification, updating, collection, maintenance, analysis, reporting and transfer of online single- and multi-page surveys, questionnaires and other data collection formats utilizing a website and proprietary non-downloadable on-line software; technical support services, namely, administration and troubleshooting of web based applications and on-line software” in International Class 42.

 

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. 

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

            Registration No. 5247008

 

It is well settled that when the marks of the respective parties are identical, as in this case, the degree of similarity or relatedness between the services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

Even so, there can be little doubt that applicant’s educational services in the field of “general interest” are related to registrant’s educational services in the field of oncology.  The wording “general interest” in applicant’s identification presumably encompasses a variety of fields, including registrant’s more specific field of oncology.  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).  Additionally, determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Registration No. 4490614

 

It is also well settled that one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).

 

In this case, the word “SURVEY” in registrant’s mark is clearly descriptive of registrant’s educational services and software in the field of surveys.  Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording “SOGO” the more dominant element of the mark.

 

Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

Moreover, with respect to the educational services and software design and development services of the respective parties, the broader wording in applicant’s identification encompasses the narrower wording in registrant’s identification.  The services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)). 

 

In short, the similarities between the SOGO marks and the educational and software services of the respective parties are so great as to create a likelihood of confusion.  Accordingly, the examining attorney is compelled to refuse registration under §2(d) of the Trademark Act.

 

Although applicant’s mark has been refused on the Principal Register, applicant may present arguments and evidence in support of registration.  

 

PRIOR PENDING APPLICATION

 

            This Potential Refusal Applies Only to International Class 9

 

In addition, the filing date of pending U.S. Application Serial No. 87/780790 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.

 

If applicant chooses to respond to the substantive refusals set forth above, applicant must also respond to the following informalities.

 

FEES PAID PER CLASS

The application identifies goods and services that are classified in at least six classes; however, applicant submitted fees sufficient for only five classes.  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 TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

IDENTIFICATION OF GOODS AND SERVICES

The following wording in the identification of goods and services must be clarified because it is indefinite and/or identifies goods that may be classified in more than one international class:  “Wearable action trackers,” “Magnetic coded identification bracelet,” “Intelligent watches (data processing),” “Network communication equipment,” “Monitor,” “Electronic monitoring device,” “camera (photography),” “On-line bracelet (measuring instrument),” “Electronic recorder,” “E-book reader,” “Telecontroller equipment,” “Computer software (recorded),” “Downloadable software,” “Electronic publications (downloadable),” “Computer application software for handheld computers, software for voice, speech and command recognition, conversion,” “Global positioning system (GPS) and equipment,” “Alarm,” “Battery,” “Shell for mobile phone,” “Search engine optimization,” “Electronic mail services,” “Arranging and conducting conferences in the field of banking, finance, investment, stock market, securities market, insurance, real estate and sports,” “Education services, namely, providing on-line classes, seminars, workshops in the fields of sports, general interest,” “Layout services other than for advertising purposes,” and “Technical research.”  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The identification of goods and/or services also contains parentheses.  Generally, applicants should not use parentheses in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.  Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

Applicant may, for example, substitute the following identification, if accurate: 

 

In International Class 9;  Computer hardware and computer peripherals; Wearable activity trackers; Magnetic encoded identification bracelet; Smart watches; Network communication equipment, namely, devices for transporting and aggregating voice, data, and video communications across multiple network infrastructures and communications protocols; Computer, touchscreen, television and video monitors; Electronic monitoring device, namely, energy meters for monitoring energy usage; Photographic cameras; Apparatus for speech recording and replaying; mobile phones; portable media players; On-line length measuring instrument for use with bracelets; Electronic data recorder; Electronic book reader; Telecontroller equipment, namely, remote controls for ____(specify the types of devices, e.g., televisions, radios, stereos, etc.); Computer software for use in _____(specify the function of the software, e.g., database management, spreadsheet applications, etc.) recorded on data media; Downloadable software for use in _____(specify the function of the software, e.g., database management, spreadsheet applications, etc.); Downloadable electronic publications, namely, ____(specify the type of publication, books, magazines, etc.) in the field of ____(indicate the field or subject matter, e.g., sports, current events, etc.); Computer application software for handheld computers, namely, software for use in voice, speech and command recognition and conversion; Computer game software for use on computer, mobile and cellular phones; Computer search engine software; Computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; Data processing apparatus; Downloadable software for accessing, browsing and searching online databases; Global positioning system (GPS) and parts therefor; Sound alarms; Batteries; Portective cases, namely, shells for mobile phones; Robots for personal, educational and hobby use and structural parts therefor.

 

In International Class 12;  Anti-theft alarms for vehicles.

 

In International Class 35;  Advertising services; Advisory services relating to business management and business operations; Business appraisals; Business investigations; Compiling and analyzing statistics, data and other sources of information for business purposes; Demonstration of goods and services by electronic means, also for the benefit of the so-called teleshopping and home shopping services; Search engine optimization for sales promotion; On-line advertising on a computer network; Personnel recruitment; Professional business consultancy; Providing business information via a web site; Sales promotion for others; Sponsorship search; Systemization of information into computer databases; Layout services other than for advertising purposes.

 

In International Class 38;  Broadcast of cable television programs; Electronic message sending; Communications by computer terminals; Electronic, electric, and digital transmission of voice, data, images, signals, and messages; Electronic transmission of e-mail; Providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; Providing telecommunications connections to a global computer network; Providing multiple-user access to a global computer information network; Providing internet chat rooms; Voice mail services.

 

In International Class 41;  Arranging and conducting business seminars in the field of banking, finance, investment, stock/securities market, insurance, real estate; Arranging and conducting educational conferences in the field of banking, finance, investment, stock market, securities market, insurance, real estate and sports; Arranging, organizing, conducting, and hosting social entertainment events; Bookmobile services; Arranging and conducting business training in the field of banking, finance, investment, stock market, securities market, insurance, real estate and sports; Education services, namely, providing on-line classes, seminars, workshops in the fields of sports and current events; Health club services, namely, providing instruction and equipment in the field of physical exercise; Production of radio and television programs; Providing on-line publications in the nature of books, magazines, brochures, journals, periodicals in the field of banking, finance, investment, stock market, securities market, insurance and real estate; Providing on-line music and entertainment information.

 

In International Class 42;  Technical research in the field of _____(indicate the field of use, e.g., software development, etc.); Research, development, design and upgrading of computer software; Computer services, namely, providing search engines for obtaining data on a global computer network; Computer programming; Computer software design for others; Maintenance of computer software; Computer systems analysis; Design and development of on-line computer software systems; Duplication of computer programs; Conversion of data or documents from physical to electronic media; Creating or maintaining web sites for others; Web site hosting services.  

 

Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods or add goods not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b). 

 

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.

 

If applicant has any questions or needs assistance responding to this Office action, please do not hesitate to contact the examining attorney.

 

 

 

 

/Nicholas Altree/

Trademark Examining Attorney

U.S. Patent & Trademark Office

Law Office 107

571-272-9336

nick.altree@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 3/12/2018 FOR U.S. APPLICATION SERIAL NO. 87679726

 

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 3/12/2018 (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.