Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  October 08, 2020

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on March 2, 2020 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement: applicant has unacceptably amended the identification of services to include services beyond the scope of the original application, as such applicant must further amend the identification of services to those services within the scope of the original application.  See TMEP §§706, 711.02. 

 

In a previous Office action dated March 2, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark, and failure to show the applied-for mark in use in commerce with any of the specified services.  In addition, applicant was required to satisfy the following requirements:  amend the identification of services. Additionally, applicant was previously advised that applicant’s amendment to the Identification of Services in the May 31, 2019 response included unacceptable amendments to the identification of services which were beyond the scope of the initial application and was not an acceptable amendment.  

 

Based on applicant’s September 2, 2020 response, the trademark examining attorney maintains and continues these previous refusals and requirements, as applicant’s arguments are neither persuasive nor acceptable.

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

•         NEW ISSUE:  Amendment to the Identification of Services Required

•         Section 2(d) Refusal- Likelihood of Confusion

•         Specimen Refusal- Mark Not Shown in Connection with the Applied-for Services

 

Applicant must respond to all issues raised in this Office action and the previous March 2, 2020 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

NEW ISSUE: AMENDMENT TO THE IDENTIFICATION OF SERVICES REQUIRED

 

As previously discussed in the March 2, 2020 Office action, the previously proposed and newly proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s 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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the services, as acceptably restricted by applicant’s May 31, 2019 response, as follows:

 

Class 35 -

Customs clearance services, freight logistics management; negotiation and conclusion of commercial transactions for third parties; providing tracking services and information concerning tracking of assets in transit, namely, vehicles, trailers, drivers, cargo and delivery containers for business inventory purposes; transportation logistics services, namely, arranging the transportation of goods for others; transportation logistics services, namely, planning and scheduling shipments for users of transportation services; business management in the field of transport and delivery; tracking and monitoring freight invoices for others for account auditing purposes

Class 39 -

Supply chain logistics and reverse logistics services, namely, storage, transportation and delivery of goods for others by air, rail, ship or truck

 

However, the newly proposed amendment identifies the following services:  “Providing a website featuring non-downloadable software for use in supply chain management, product distribution, operations management services, logistics, reverse logistics, supply chain, and production systems and distribution solutions, cost analyses; customs clearance services, freight logistics management; Providing a website featuring non-downloadable software for use in vendor management, negotiation and conclusion of commercial transactions for third parties” in International Class 42. 

 

This proposed amendment is beyond the scope of the original identification because the amended identification for “providing a website featuring non-downloadable software for use in supply chain management, product distribution, operations management services, logistics, reverse logistics, supply chain, and production systems and distribution solutions, cost analyses; customs clearance services, freight logistics management; providing a website featuring non-downloadable software for use in vendor management, negotiation and conclusion of commercial transactions for third parties” is for a technology service in Class 42 rather than a transportation or business services in Class 39 or 35 respectively as indicated in the acceptably amended identification. 

 

Applicant may NOT amend the identification of services to those services beyond those properly identified in the application or properly amended thereafter. As such, applicant’s amendment to the Identification of Services in the September 2, 2020 Office action is not acceptable and the identification as previously acceptably amended, as follows, will remain operative for this application.

 

Class 35 -

Customs clearance services, freight logistics management; negotiation and conclusion of commercial transactions for third parties; providing tracking services and information concerning tracking of assets in transit, namely, vehicles, trailers, drivers, cargo and delivery containers for business inventory purposes; transportation logistics services, namely, arranging the transportation of goods for others; transportation logistics services, namely, planning and scheduling shipments for users of transportation services; business management in the field of transport and delivery; tracking and monitoring freight invoices for others for account auditing purposes

Class 39 -

Supply chain logistics and reverse logistics services, namely, storage, transportation and delivery of goods for others by air, rail, ship or truck

 

ADVISORY: SCOPE OF ORIGINAL IDENTIFICATION

 

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.

 

Applicant should also note the following refusals which have been maintained and continued.

 

For a NNF where I am continuing refusals do you rewrite the whole refusal or just do like a paragraph saying the refusal is maintained and this is why your arguments fails?

SECTION 2(d) REFUSAL- LIKELIHOOD OF CONFUSION

 

As stated in the prior March 2, 2020 Office action, registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5674920 and 5911807. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registrations. The trademark examining attorney notes that the two registered marks are held by the same registrant.

 

Applicant’s September 2, 2020 response argues against these refusals based on the differences in the marks and differences in the services; however, the trademark examining attorney finds these arguments unpersuasive. Specifically, applicant argues that due to the additional wording FRIEGHT in the registered marks and the design elements of the marks the marks are not confusingly similar. However, as previously stated, 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). In this case, the shared wording PEAK in the marks creates a highly similar appearance, sound, and overall commercial impression in the marks.

 

Moreover, the differences discussed by applicant fail to mitigate the similarity of the marks created by the shared wording PEAK. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34). In this case, the dominant element of each mark is the shared wording PEAK. 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 the present case, the wording “FREIGHT” in the registered marks is merely descriptive of or generic for the registrant’s services. Specifically, this wording merely refers to the specific type of services and industry in which the party’s services are offered, namely, the freight shipping industry, as evidenced by applicant’s and registrant’s specimens of use.  Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording PEAK the more dominant element of the registered marks.

 

Likewise, 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, even where the word portion has been disclaimed.  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)). As such, the design elements of the applied-for and registered marks fails to diminish the overall similarity of the marks. Thus, applicant’s arguments regarding the similarity of the marks are unpersuasive.

 

Additionally, applicant’s September 2, 2020 response argues against the similarity of the services based on applicant’s unacceptable amendment to the identification of services.  Specifically, applicant argues they offered technology services in the field of shipping and transportation than those services themselves. However, as discussed above, the requested amendment to the Identification of Services is unacceptable and as such the last acceptable identification of services is still operative, which as shown by the prior March 2, 2020 Office action is highly related to the services of registrant. Thus, applicant’s arguments regarding the similarity of the services is also unpersuasive.

 

Because applicant has provided no acceptable arguments against the Section 2(d) refusals for a likelihood of confusion with the registered mark, the refusal is maintained and continued.

 

Applicant should note the following additional refusal which has been maintained and continued.

 

SPECIMEN REFUSAL- MARK NOT SHOWN IN CONNECTION WITH SERVICES

 

As stated in the February 12, 2019 Office action, and maintained and continued in the July 10, 2019 suspension letter, applicant’s specimen of record and substitute specimen fail to show the applied-for mark used in connection with any of the services identified in the application and May 31, 2019 response. As such, registration is refused because the specimen does not show the applied-for mark as actually used in commerce in connection with any of the goods and/or services specified in International Classes 35 or 39. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013). Specifically, in this case, he specimen shows the applied-for services offered as “intuitive technology” which could refer to software.

 

Based on the specimen it is unclear whether applicant provides the applied-for services in Class 35 and 39 or merely provides software which allows users to perform the Class 35 and 39 services. Thus, the specimen fails to show the mark used in direct association with the applied-for services because it fails clearly demonstrate the listed services in either Class 35 or 39. In situation where it is unclear, based on the submitted specimen, whether the applicant is providing non-software services in a given field or subject matter (e.g., "financial consulting in the field of retirement planning" in Class 36), or offering computer software or application services involving that same field or subject matter (e.g., "providing temporary use of non-downloadable software for retirement planning" in Class 42), or both, a primary consideration is whether the specimen indicates that the applicant is actually performing the relevant service activities for others, or, for instance, merely providing software that allows users of the software to perform those activities themselves, or only offering an online game that is accessed via a social networking website in determining whether the mark is used in commerce. See TMEP §1301.04(h)(iii). Therefore, because applicant’s specimen only indicates that any freight management or transportation functions are performed by consumers through software (a class 9 good or Class 42 computer services), rather than by provided by the applicant themselves, applicant’s specimen fails to show applicant offers the applied-for services in Classes 35 and 39 under the mark.

 

Examples of specimens. Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).

 

Response Options 

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)        Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)        Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

 

For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

/Dominic R. Pino III/

Mr. Dominic R. Pino III

Trademark Examining Attorney

Law Office 127

(571) 272-1611

dominic.pino@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 October 08, 2020 for

U.S. Trademark Application Serial No. 88160204

 

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. 

 

 

/Dominic R. Pino III/

Mr. Dominic R. Pino III

Trademark Examining Attorney

Law Office 127

(571) 272-1611

dominic.pino@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 October 08, 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.”