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: 10/5/2018

 

 

 

 

 

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 REFUSAL UNDER SECTION 2(d)-partial refusal   

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3255068.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.   See the attached registration.

 

The stated refusal refers to the following services in class 35 and does not bar registration for the other services:  “Human capital services, namely, diversity management and governance; Human resources and Payroll services”

 

Applicant seeks to register the mark S3 (stylized) for, inter alia, the following goods and/or services: Human capital services, namely, diversity management and governance; Human resources and Payroll services

  

Registrant registered the mark S3 (stylized) for the following goods and/or services:  Human resources consultation; Human resources management.

 

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. 

 

Here the marks are highly similar as both comprise of a stylized S3.  Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

The services are also legally identical in part. Applicant’s human resources services would include human resources consultation and management. In addition human resources consultation also includes managing diversity.  The payroll services are also closely related to human resources consultation services as they are provided by the same source. See websites from http://www.thehro.com/ http://www.fhsolutionsgroup.com/   Thus, 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).

  

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).

 

In view of the foregoing, registration is refused under Section 2(d).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. If applicant chooses to respond to the refusal(s) to register, Applicant should note the following issue(s) and requirement(s) set forth below.

 

 

 

APPLICANT’S OPTIONS FOR PARTIAL REFUSAL (ADVISORY)

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the goods and/or services to which the refusal pertains;

 

(2)  Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

 

(3)  Amending the basis for the goods and/or services identified in the refusal, if appropriate.  TMEP §806.03(h).  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

In response to a refusal or requirement that pertains only to certain classes, goods, and/or services, applicant may divide the application into two or more separate applications so that any acceptable classes, goods, and/or services may proceed toward registration.  See 37 C.F.R. §2.87; TMEP §§1110 et seq. (regarding requests to divide).  Any outstanding deadline in effect at the time the application is divided will generally apply to each new divided out application.  See 37 C.F.R. §2.87(e); TMEP §1110.05 (see list of exceptions).

 

Applicant may file a request to divide online via the Trademark Electronic Application System (TEAS) for a fee of $100 for each new application created.  See 37 C.F.R. §§2.6(a)(19)(ii), 2.87(b); TMEP §1110.04.  The request to divide must specify the classes or goods and/or services that are to be divided out of the application.  If dividing out some, but not all, of the goods or services within a class, an additional application filing fee will be required for each new separate application created by the division.  37 C.F.R. §§2.6(a)(1)(i)-(iii), 2.87(b); TMEP §1110.02. 

 

 

 

 

MARK DESCRIPTION   

Applicant has submitted a color drawing and provided a color claim, but has not provided the required description specifying where color appears in the literal and design elements in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808.01, 808.02, 808.03(b).  And for marks depicted in color, this description must specify where the color(s) appear(s) on the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(ii).

 

Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark.  See TMEP §807.07(d).

 

Therefore, applicant must provide a mark description that specifies where all the colors appear in the literal and design elements in the mark.  See TMEP §807.07(a)(ii).  The following is suggested, if accurate:

 

The mark consists of a stylized "S3" in green

 

 

IDENTIFICATION AND CLASSIFICATION

Applicant has provided the following identification and classification of goods and/ or services in its application:

 

Class 35:         Vendor management services for a wide variety of public and private enterprises; Managing telephone call centers for others; Executive search and placement services; Business process outsourcing services in the field of public and private enterprise; Business process re-engineering services; Temporary employment services for long term and extended placement of jobs; Employment agency services, namely, placing individuals in temporary and long-term positions; Supply chain management services; Enterprise resource planning implementation and integration services; Business management project services; Business management consulting and advisory services; Business services, namely, infrastructure support and statement of work management; Employment agency services, namely, filling the temporary and permanent staffing needs of others; Outsourcing services in the nature of arranging service contracts for others; Service desk outsourcing; Recruitment process outsourcing; Employment hiring, recruiting, placement, staffing, and career networking services; Personnel placement and recruitment via a global computer network; Providing an on-line searchable database featuring employment opportunities and content about employment; Providing on-line employment information in the field of job resources, employment opportunities, and content about employment; Human capital services, namely, diversity management and governance; Human resources and Payroll services; Build Operate Transfer agreement services 

 

Class 41:         Certified Contingent Workforce Professional training and certification 

 

Class 42:         IT integration services; Consulting in the field of IT project management; Design, development and testing of information technology systems for others; Consulting in the field of information technology; Consulting services in the field of design, selection, implementation and use of hardware and software systems; Computer project management services; Application software maintenance and support services; IT support services, namely, quality assurance and testing; Desktop support services; Software design and development; Technology services, namely, infrastructure support and statement of work management; Service desk outsourcing; Technology services, namely, remote site management; Managed service provider (MSP), namely, providing remote management of the information technology systems of others; Build Operate Transfer agreement services 

 

The wording shown above in bolded text in the identification of services is unacceptable as indefinite because it is too broad and could include services in other international classes, specifically, "Enterprise resource planning implementation and integration services; Business management project services," "Business services, namely, infrastructure support and statement of work management," "Service desk outsourcing; Recruitment process outsourcing," "Human capital services, namely, diversity management and governance; Human resources and Payroll services; Build Operate Transfer agreement services," "Certified Contingent Workforce Professional training and certification," "Consulting services in the field of design, selection, implementation and use of hardware and software systems," "Application software maintenance and support services," "Desktop support services," "Technology services, namely, infrastructure support and statement of work management; Service desk outsourcing; Technology services, namely, remote site management," "Build Operate Transfer agreement service," must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.   For instance, “Certified Contingent Workforce Professional training and certification” could include a training service in class 41 as well as testing/evaluating the skills of others determine conformity with certification standards in class 42.    In addition in classes 35 and 42, the reference to “Build Operate Transfer agreement services” is unclear. Does it refer to a type of project financing service? If so, then these services are in class 36.  In class 35, the reference to “Enterprise resource planning implementation and integration services” appear to identify services in class 42, e.g., the selection and implementation of computer management information systems.

 

Applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant may adopt the following identification, if accurate: 

Class 35:

Vendor management services for a wide variety of public and private enterprises; Managing telephone call centers for others; Executive search and placement services; Business process outsourcing services in the field of public and private enterprise; Business process re-engineering services; Temporary employment services for long term and extended placement of jobs; Employment agency services, namely, placing individuals in temporary and long-term positions; Supply chain management services; Business resource planning services; Business management of projects; Business management consulting and advisory services; Business services, namely, providing business support staff services; Business services, namely, business project management services; Employment agency services, namely, filling the temporary and permanent staffing needs of others; Outsourcing services in the nature of arranging service contracts for others; Outsource service provider in the field of employment recruiting; Employment hiring, recruiting, placement, staffing, and career networking services; Personnel placement and recruitment via a global computer network; Providing an on-line searchable database featuring employment opportunities and content about employment; Providing on-line employment information in the field of job resources, employment opportunities, and content about employment; Consulting services in the field of human capital resources development, namely, diversity management and governance; Human resources management; Payroll administration and management services

 

Class 36:

Project financing services for Build Operate Transfer agreements 

 

Class 41:        

Educational services, namely, providing training of contingent workforce professionals for certification in the field of {indicate field of use, e.g., Information Technology}

 

Class 42:        

IT integration services; Consulting in the field of IT project management; Design, development and testing of information technology systems for others; Consulting in the field of information technology; Consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; Computer project management services; Application software maintenance services; Application software support, namely, troubleshooting of computer software problems; IT support services, namely, quality assurance and testing; Desktop support services, namely, diagnosing computer hardware and software problems; Software design and development; Technology services, namely, computer infrastructure management services for monitoring, administration and management of public and private cloud computing IT and application systems; Management of technology statement of work services, namely, computer project management services; Outsourcing of computer technology support services, namely, help desk services; Technology services, namely, remote-site infrastructure management services for monitoring, administration and management of public and private cloud computing IT and application systems; Managed service provider (MSP), namely, providing remote management of the information technology systems of others; Planning, design and management of Information Technology systems under Build Operate Transfer agreement services; Evaluation of the knowledge, skills and abilities of contingent workforce professionals in the field of {indicate the field of use, e.g., Information Technology} to determine conformity with certification standards; Enterprise resource planning implementation services, namely, the selection and implementation of computer management information systems

 

If applicant adopts the suggested amendment of the identification of goods and/or services, then applicant must amend the classification to add International Class 36.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Applicant’s goods and/or services 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 and/or services or add goods and/or services 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 and/or services 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).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS- Requirements for a Combined Application under Trademark Act Section 1(a)

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es).  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for classes 35, 41, 42 only. Applicant must submit additional specimens if other classes are added to the application. See more information about specimens.

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

 

                              

CLOSING

If applicant has questions regarding the legal issues in this Office action, please telephone or e-mail the assigned trademark examining attorney.  For all other matters, including filing questions, status inquiries and general questions, please contact the Trademark Assistance Center at (800) 786-9199.

 

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.

 

 

 

 

/Benji Paradewelai/

Trademark Attorney

Law Office 101

U.S. Patent & Trademark Office

Tel: (571) 272-1658 

Email: benji.paradewelai@uspto.gov (for informal inquiries)

http://www.uspto.gov (for filing Official responses)

---

 

 

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 10/5/2018 FOR U.S. APPLICATION SERIAL NO. 88000316

 

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 10/5/2018 (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.