To: | NFX Capital Management, LLC (pctrademarks@perkinscoie.com) |
Subject: | U.S. Trademark Application Serial No. 88035889 - SIGNAL - 117145-4005 |
Sent: | July 02, 2019 11:23:01 AM |
Sent As: | ecom103@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88035889
Mark: SIGNAL
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Correspondence Address:
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Applicant: NFX Capital Management, LLC
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Reference/Docket No. 117145-4005
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 02, 2019
This Office action is in response to applicant’s communication filed on May 6, 2019. Applicant’s communication is referenced hereinafter as “Response”.
The previous Office Action of November 5, 2018, and all supporting evidence attached thereto, is incorporated by reference herein.
After review of the Response, the following is determined:
Additionally, upon further review of the present application, the examining attorney has determined that the following new refusal must issue:
New Refusal: Section 2(d) Likelihood of Confusion Refusal
I. 2(d) Standard of Review
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined 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) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See 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)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
II. Application of the 2(d) Standard of Review
The cited registrations are marks for the following goods and/or services:
The applied-for mark is SIGNAL for services including: “Promoting the goods and services of others via a global computer network in the field of start-up financing and venture capital; Advertising, marketing and promotional services related to start-up financing and venture capital for the purpose of facilitating networking, socializing, sharing of information and funding opportunities for business purposes; Electronic commerce services, namely, providing consumer information about products and services via telecommunication networks for advertising and sales purposes” and “Advertising and marketing services, namely, providing information in the field of start-up financing and venture capital”.
A. Comparison of Sound, Appearance and Meaning
In the present case, applicant’s mark is SIGNAL and registrants’ marks are SIGNAL. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
B. Comparison of Services
Applicant and registrants each identify advertising and marketing services. Furthermore, applicant’s promotional services function in the same manner as advertising and marketing services; that is, the services encourage consumers to utilize another’s goods and services.
Consumers are likely to confuse the source of applicant’s and registrants’ advertising, marketing, and promotional services, especially as these services are all offered under identical marks.
Furthermore, as the services of the applied for mark and the cited registrations are related and possibly overlapping, they may travel within the same channels of trade.
C. Summary of 2(d) review
The applied for mark is confusingly similar to the cited registered marks because the marks are identical. Because the marks are confusingly similar and because the advertising, marketing, and promotional services are related and/or travel within the same channels of trade, the applicant’s mark is refused on grounds of likelihood of confusion.
Maintained and Continued Requirement
In addition to the above stated refusal, the following requirement is MAINTAINED and CONTINUED for the reasons set forth in the previous Office Action of November 5, 2018, and as restated below, in accordance with 37 C.F.R. §2.64(a):
requirement for clarification of Identification and CLASSIFICATION of Services
The original identification of services in Class 035 included “Advertising and marketing services, namely, providing information in the field of start-up financing and venture capital”. The previous examining attorney suggested applicant reclassify these services in International Class 036, which applicant did. However, the introductory phrase “advertising and marketing services” is confusing in International Class 036 because that language identifies definite services in Class 035; thus the introductory clause of this identification in Class 036 should be deleted.
Applicant may substitute the following wording, if accurate, for the entire identification of services (notes to applicant are contained within brackets, but the amended identification should not include this bracketed text):
“On-line business networking services; Business networking; Providing networking opportunities for start-ups and venture capitalists; providing online searchable databases featuring business information in the field of start-up financing and venture capital; Business research and survey services in the field of start-up financing and venture capital; Promoting the goods and services of others via a global computer network in the field of start-up financing and venture capital; Advertising, marketing and promotional services related to start-up financing and venture capital for the purpose of facilitating networking, socializing, sharing of information and funding opportunities for business purposes; Providing online business networking services and business information in the fields of start-up financing and venture capital; Electronic commerce services, namely, providing consumer information about products and services via telecommunication networks for advertising and sales purposes; Providing business networking opportunities for individuals seeking to fund start-ups; online professional networking services in the field of start-up financing and venture capital,” in International Class 035 [no change];
“providing an online, searchable databases featuring business information in the field of start-up financing and venture capital; providing information in the field of start-up financing and venture capital,” in International Class 036;
“Computer services, namely, creating an on-line community for users for business and professional networking; Providing a website featuring temporary use of non-downloadable software enabling users to search, locate and communicate with others via electronic communications networks to network in the field of start-up financing and venture capital,” in International Class 042 [no change].
The identification of goods or services must be specific, definite, clear, accurate and concise. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds , 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion , 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America , Inc ., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co ., 99 USPQ 344 (Comm'r Pats. 1953).
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.
ADVISORY: APPLICATION REASSIGNED
The Office has reassigned this application to the undersigned trademark examining attorney.
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.
How to respond. Click to file a response to this nonfinal Office action
/Kaelie E. Kung/
Examining Attorney
Law Office 103
571-272-8265
kaelie.kung@uspto.gov
RESPONSE GUIDANCE