Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  January 31, 2020

 

On January 2, 2020, applicant filed a Request to Divide to separate out the Class 035 services “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” from the remaining services in Classes 035, 036, and 042. 

 

On January 13, 2020, the Office granted the divisional request with the Class 035 services “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” remaining in this, the “parent” application Serial No. and the remaining other services being placed into a “child” application Serial No. at SN 88976559.  This application will now proceed only as to the divided Class 035 services “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”.

 

This Office action is in response to applicant’s communication filed on January 2, 2020 (hereinafter, “Response”).

 

The previous Office Action of July 2, 2019, and all supporting evidence attached thereto, is incorporated by reference herein. 

 

After review of the Response, the following is determined:

• The requirement as to the identification of services is OBVIATED by the transfer of the services at issue to the “child” application; and
• Section 2(d) likelihood of confusion refusal is MAINTAined and made FINAL.

 

Refusal made final

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 4702677 and 5240521.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

Section 2(d) Likelihood of Confusion Refusal

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4702677 and 5240521.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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:

 

• Registration No. 4702677, SIGNAL for services including “Advertising and advertisement services; advertising management services; online advertising services; online advertising services, namely, managing and tracking advertising on digital media including internet websites, email, mobile media, social media, digital television; online advertising services, namely, providing services for managing online advertisements and digital marketing campaigns; tracking of advertising and marketing campaigns for others via the internet; advertising services, namely, providing an online website where advertisers can deploy online advertisements and digital marketing campaigns and obtain tracking information for their online advertisements”; and

 

• Registration No. 5240521, SIGNAL for services including “advertising and marketing services; marketing consultation services; business consulting services in the field of creation, delivery and measurement of effectiveness of digital advertising and marketing”.

 

The applied-for mark is SIGNAL for “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”.

 

A.  Comparison of Sound, Appearance and Meaning

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

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

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Applicant and registrants each identify advertising and marketing services. 

 

Registrant at Reg. No. 4702677 identifies services including the broadly-worded “Advertising and advertisement services; advertising management services; online advertising services”.  Applicant’s more-narrowly worded advertising, marketing and promotional services are encompassed by the services identified in Reg. No. 4702677.

 

Registrant at Reg. No. 5240521 identifies services including the broadly-worded “advertising and marketing services; marketing consultation services”.  Applicant’s more-narrowly worded advertising, marketing and promotional services are encompassed by the services identified in Reg. No. 5240521.

 

Furthermore, applicant’s promotional and e-commerce 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.

 

Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or 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).

 

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.

 

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).

 

Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.

 

The Response did not address this refusal.

 

For the above stated reasons, the Trademark Act Section 2(d) refusal is FINAL.

 

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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Kaelie E. Kung/

Examining Attorney

Law Office 103

571-272-8265

kaelie.kung@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 31, 2020 for

U.S. Trademark Application Serial No. 88035889

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Kaelie E. Kung/

Examining Attorney

Law Office 103

571-272-8265

kaelie.kung@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 31, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”