UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88177938
MARK: GOOGLE
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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: ZOUBIER HARBAOUI
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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: 2/11/2019
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SECTION 2(a) REFUSAL – FALSE SUGGESTION OF A CONNECTION REFUSAL
(1) The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution.
(2) The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution.
(3) The person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark.
(4) The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods and/or services.
In re Pedersen, 109 USPQ2d at 1188-89; In re Jackson Int’l Trading Co., 103 USPQ2d 1417, 1419 (TTAB 2012); TMEP §1203.03(c)(i); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983) (providing foundational principles for the current four-part test used to determine the existence of a false connection).
Here, the applied-for mark, GOOGLE, is identical to a name already being used by the institution Google LLC. Accordingly, the first prong of this test is satisfied.
Here, the applied-for mark will be recognized as belonging to Google LLC. According to the attached evidence from Reference.com, Google was one of the top five most recognized brand names in 2015. http://www.reference.com/business-finance/recognized-brand-names-626c84e082384142 Furthermore, according to Forbes, Google is one of the most valuable brands of 2018, and dominates the search sector of the technology field as a result of having a strong brand name. In fact, Forbes states that “Google ranks second overall among the top brands for the third straight year, with a value of $132.1 billion.” http://www.forbes.com/sites/kurtbadenhausen/2018/05/23/the-worlds-most-valuable-brands-2018/#b98703a610c1 Finally, according to Impact, Google is at the top of the world’s twenty-one most recognized brand logos of all time. http://www.impactbnd.com/blog/most-recognized-brand-logos-identities
Accordingly, the mark will be recognized as belonging to Google LLC, as it points uniquely and unmistakably to that institution.
According to applicant’s application, applicant is an individual and citizen of France. Therefore, Google LLC is not connected with the goods sold by applicant under the mark.
Here, Google LLC began a self-driving car project in 2009, currently known as Waymo. http://waymo.com/ According to Wired, In December of 2018, Waymo, the company that emerged from Google’s self-driving-car project, officially started its commercial self-driving-car service in Phoenix. http://www.wired.com/story/guide-self-driving-cars/ Accordingly, because Google is in the car industry, and is sufficiently famous, it can be inferred that purchasers of applicant’s goods would be misled into making a false connection between applicant and Google LLC.
Based on the foregoing evidence and analysis, there is a False Connection under Section 2(a) of the Trademark Act, and thus registration of the applied-for mark must be refused.
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.
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.
Mischler, Megan
/Megan Mischler/
Trademark Examining Attorney
Law Office 127
(571) 272-9997
megan.mischler@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.