To: | Thriven Safety Products Co., Ltd (patent@wayneusa.cn) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88063692 - PILOT - WK18-082-SZ2 |
Sent: | 11/23/2018 12:37:02 PM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88063692
MARK: PILOT
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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: Thriven Safety Products Co., Ltd
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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: 11/23/2018
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.
SUMMARY OF ISSUES
SECTION 2(d) REFUSAL- LIKELIHOOD OF CONFUSION
Applicant’s mark is PILOT and design for advertising services; demonstration of goods; demonstration of products; dissemination of advertisements; product demonstration; sample distribution
Registrant’ s mark is PILOT for business marketing consulting services; branding services, namely, development, management and marketing of brands for businesses and individuals; marketing services, namely, branding and rebranding services namely, development and marketing services; and consulting services in the field of promoting and tracking the goods, services, and brands of others through all public communication means; marketing services, namely, planning product launch campaigns and development of brands and product identity; business management consulting services in the fields of sales, marketing, advertising, promotion, and brand development; social media strategy and marketing consultancy focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutions; brand imagery consulting services; promotion and marketing services and related consulting; business management consulting services relating to marketing, advertising, promotion and market research; business marketing consulting services; advertising marketing consultancy; consulting services in the field of internet marketing; market research consultation; brand concept and brand development services for corporate and individual clients; brand positioning services; advertising services, namely, creating corporate and brand identity for others; brand imagery consulting services; concept and brand development services for companies and individuals; development of marketing strategies and concepts; creative marketing design services; digital and interactive advertising and marketing services; digital marketing consultation services; creating digital advertising and digital marketing, online advertising; marketing services, namely, media planning in the nature of search engine marketing and social media marketing, branding and rebranding services; public relations, marketing, advertising and integrated marketing services through use of social media, interactive media, and other multimedia channels; providing marketing consulting in the field of social media; advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties through print, audio, video, digital and online medium
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.
Similarity of the Marks
In the present case, applicant’s word mark is PILOT and registrant’s word mark is PILOT. 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 services. Id.
Although the applicant has added a design element to its mark, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Therefore, the marks are confusingly similar.
Similarity of the Services
Applicant’s services are advertising services; demonstration of goods; demonstration of products; dissemination of advertisements; product demonstration; sample distribution. Registrant’s services are business marketing consulting services; branding services, namely, development, management and marketing of brands for businesses and individuals; marketing services, namely, branding and rebranding services namely, development and marketing services; and consulting services in the field of promoting and tracking the goods, services, and brands of others through all public communication means; marketing services, namely, planning product launch campaigns and development of brands and product identity; business management consulting services in the fields of sales, marketing, advertising, promotion, and brand development; social media strategy and marketing consultancy focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutions; brand imagery consulting services; promotion and marketing services and related consulting; business management consulting services relating to marketing, advertising, promotion and market research; business marketing consulting services; advertising marketing consultancy; consulting services in the field of internet marketing; market research consultation; brand concept and brand development services for corporate and individual clients; brand positioning services; advertising services, namely, creating corporate and brand identity for others; brand imagery consulting services; concept and brand development services for companies and individuals; development of marketing strategies and concepts; creative marketing design services; digital and interactive advertising and marketing services; digital marketing consultation services; creating digital advertising and digital marketing, online advertising; marketing services, namely, media planning in the nature of search engine marketing and social media marketing, branding and rebranding services; public relations, marketing, advertising and integrated marketing services through use of social media, interactive media, and other multimedia channels; providing marketing consulting in the field of social media; advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties through print, audio, video, digital and online medium.
In this case, the services in the application and registration are identical (as both are providing advertising services.) Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicants and registrants services are related.
In total the word marks are identical and the services are identical. Therefore consumers are likely to be confused and mistakenly believe that the services come from a common source. Accordingly, registration is refused under Section 2(d) of the Trademark Act.
//Shavell McPherson-Rayburn//
Shavell McPherson-Rayburn
Examining Attorney
Law Office 106
571-272-6121
Shavell.mcpherson-rayburn@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.