To: | GO2 TOURISM HR SOCIETY (steve@fourreasonslegal.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88184837 - SUPERHOST - N/A |
Sent: | 2/13/2019 1:15:20 PM |
Sent As: | ECOM117@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. 88184837
MARK: SUPERHOST
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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: GO2 TOURISM HR SOCIETY
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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: 2/13/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
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(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN
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 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.
Applicant has applied to register the mark SUPERHOST for use in connection with the following relevant services:
International Class 35
Providing information and resources in the nature of audio, video and data files via the Internet, through online social networks and through email marketing in the field of customer service; Business services, namely, research and analysis of customer experiences for the purpose of identifying and developing best practices, standards and guidelines in the field of customer service
International Class 41
Providing a website featuring information in the fields of customer service, client service, guest service, and visitor service
International Class 43
Providing information and resources in the nature of audio, video and data files via the Internet, through online social networks and through email marketing in the fields of client service, guest service, and visitor service standards, practices and guidelines
International Class 45
Research and analysis, namely, analysis of customer, client, guest and visitor experiences for the purpose of identifying and developing best practices, standards and guidelines in the fields of customer service, client service, guest service, and visitor service
The registered mark is SUPERHOST and design for use in connection with the following relevant services:
providing evaluative feedback and ratings of sellers' goods and services, the value and prices of sellers' goods and services, buyers' and sellers' performance, delivery, and overall trading experience in connection therewith.
Similarity of the Marks
In the present case, applicant’s mark is SUPERHOST and registrant’s mark is SUPERHOST. 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.
Applicant’s mark appears in standard characters while the registered mark appears in a stylized font with a design element. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Therefore, the marks are confusingly similar.
Relatedness of the Services
In this case, the application uses broad wording to describe its information and research and analysis services in the field of customer service, client service, guest service, and visitor service which presumably encompasses all services of the type described, including registrant’s more narrow “providing evaluative feedback and ratings of sellers’ goods and services, the value and prices of sellers’ goods and services, buyers’ and sellers’ performance, delivery, and overall trading experience in connection therewith.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s services are related. This is especially so in light of the fact that the respective marks are identical.
Because the marks of applicant and registrant are identical and the respective services are closely related, a likelihood of confusion exists in the present case. Registration therefore is refused under Section 2(d) of the Trademark Act. The overriding concern is not only to prevent buyer confusion as to the source of the 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).
IDENTIFICATION OF GOODS AND SERVICES
The identification of goods and services includes numerous indefinite entries that require amendment. Amendment guidelines and suggested amended wording appear below.
The wording “course materials” and “presentation materials, namely, printed visual content for presenting information” within the identification of goods for International Class 16 is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Suggested amended wording appears below.
The wording “Accreditation services, namely, testing and evaluation of skills and practices of service providers to determine conformity with established accreditation standards for purposes of issuing qualifications and certifications in the fields of customer service, client service, guest service, and visitor service” is indefinite and requires clarification because it is unclear whether the activities constitute services under the Trademark Act. See TMEP § 1301.01 et seq. A trademark or service mark is used by the mark’s owner to indicate the source of his or her goods and/or services. See 15 U.S.C. §1127. A certification mark, however, is used by parties other than the owner and indicates that goods, services, or the providers of those goods and/or services meet certain standards. See TMEP §1306.01(a). Suggested Class 42 wording appears below.
Applicant is advised that trademarks or service marks and certification marks are essentially mutually exclusive. That is, a party may not own a registration for a certification mark and for a trademark or service mark for the goods and/or services to which the certification mark applies. See 15 U.S.C. §§1054, 1064(5)(B); 37 C.F.R. §2.45(f). Moreover, a certification mark registration may be cancelled if the registrant “engages in the production or marketing of any goods or services to which the certification mark is applied.” 15 U.S.C. §1064(5)(B).
The wording “Developing, organizing and conducting qualifying training and examinations of service providers to promote and determine conformity with established performance standards in the fields of customer service, client service, guest service, and visitor service” in the identification of services for International Class 42 is indefinite and requires clarification because it could identify services classified in more than one international class. Design, development and analysis of tests for testing professional competency is classified in International Class 35. Training services are classified in International Class 41. Testing, analysis and evaluation of service providers to determine conformity with established accreditation standards is classified in International Class 42. Applicant must amend this wording to clarify the nature of the services and reclassify them, if appropriate.
The identification of services for International Class 43 is indefinite and requires clarification. Applicant must amend the identification to clarify the Class 43 information services. Suggested amended wording appears below.
The identification of services for International Class 45 is indefinite and requires clarification. Applicant must amend the identification to clarify the Class 45 research and analysis services. Suggested amended wording appears below.
Applicant may adopt the following identification of goods and services, if accurate (suggested changes in bold):
International Class 9
Electronic instructional, educational and teaching materials recorded on computer media, namely, books, booklets, handbooks, workbooks, course materials, presentation materials in the nature of visual and audio recordings for presenting information, brochures, pamphlets, manuals, guides and charts for training in the fields of customer service, client service, guest service, and visitor service
International Class 16
Printed instructional, educational and teaching materials, namely, books, booklets, handbooks, workbooks, correspondence course materials, presentation materials in the nature of {specify common commercial name of Class 16 goods, e.g., hand-outs} for presenting information, brochures, pamphlets, manuals, guides and charts for training in the fields of customer service, client service, guest service, and visitor service
International Class 35
Providing information and resources in the nature of audio, video and data files via the Internet, through online social networks and through
email marketing in the field of customer service; Business services, namely, business research and business data analysis of customer experiences for the
purpose of identifying and developing best practices, standards and guidelines in the field of customer service; Providing a website featuring information in the field of customer
service management; Business services, namely, design, development and analysis of tests for testing
professional competency in the fields of customer service, guest service, and visitor service
International Class 41
Educational and vocational training programs, namely, conducting courses, seminars, visual and audio presentations and workshops in the fields of customer service, client
service, guest service, and visitor service; Operation of a computer database, namely, providing an on-line computer database featuring training and educational information in the fields of customer
service, client service, guest service, and visitor service; Providing a website featuring information in the fields of customer service, client service, guest service, and
visitor service; Providing a website featuring educational and vocational training, namely, providing online instruction in the fields of customer service, client service, guest service, and
visitor service; Publication of educational and training materials, namely, periodicals, magazines, books, leaflets, journals, electronic magazines, manuals, printed matter, texts in the fields of
customer service, client service, guest service, and visitor service; Production of audio and visual image recordings and videos in the fields of customer service, client service, guest service, and
visitor service; providing online non-downloadable video and audio recordings in the field of customer service; Training services in the fields of customer service, client service,
guest service, and visitor service
International Class 42
Accreditation services, namely, testing and evaluation of skills and practices of service providers to determine conformity with established accreditation standards
for purposes of issuing qualifications and certifications in the fields of customer service, client service, guest service, and visitor service; Testing,
analysis and evaluation of service providers to determine conformity with established accreditation standards in the fields of customer service, client service, guest service, and visitor
service; Operation of a website, namely, providing a website that gives users the ability to access instructional, educational, teaching, training and examination materials; Operation of a website,
namely, providing a website that gives users the ability to access accreditation tests and examinations; Operation of a website, namely, providing a website that gives users the ability to test and
evaluate their skills and practices to determine conformity with established accreditation standards for purposes of issuing qualifications and certifications in the
fields of customer service, client service, guest service, and visitor service, all concerning customer service, client service, guest service, and visitor service
International Class 43
Providing {specify type of Class 43 information, e.g., restaurant, temporary lodging} information and resources in the nature of
audio, video and data files via the Internet, through online social networks and through email marketing in the fields of client service, guest service, and visitor service standards, practices and guidelines
International Class 45
Research and analysis, namely, analysis of customer, client, guest and visitor experiences with regard to {specify Class 45 subject matter, e.g., hotel concierge services, public safety} for the purpose of identifying and developing best practices, standards and guidelines in the fields of customer service, client service, guest service, and visitor service; Providing a website featuring information in the field of guest and visitor services in the nature of personal concierge services
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.
FOREIGN REGISTRATION REQUIRED
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
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.
/William D Jackson/
Attorney Advisor - Trademarks
U.S. Patent and Trademark Office
Law Office 117
(571) 272-3064
William.Jackson@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.