Reconsideration Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

REQUEST FOR RECONSIDERATION

AFTER FINAL ACTION

DENIED

 

 

Issue date:  December 01, 2020

 

 

Applicant’s request for reconsideration is denied.  See 37 C.F.R. §2.63(b)(3).  The trademark examining attorney has carefully reviewed applicant’s request and determined the request did not:  (1) raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or shed new light on the outstanding issue(s).  TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

The application remains refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5751529, 5784018, and 5790086.

 

Applicant contends that the services are not related because of the nature of the applied-for and registered services. Specifically, applicant relies on the registrant’s specimen of record to further narrow the registrant’s identification to conventional transport, delivery and shipping services. However, determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the registration uses broad wording to describe “transport, delivery and shipping of goods except for passenger travel purposes,” which presumably encompasses all services of the type described, including applicant’s more narrow launch services.  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).

 

“The common understanding of words or phrases used in an identification determines the scope and nature of the goods or services.   In re Fiat Grp. Mktg. & Corporate Commc'ns S.p.A., 109 USPQ2d 1593 (TTAB 2014); TMEP §1402.07(a). A basic and widely available dictionary should be consulted to determine the definition or understanding of a commonly used word.” TMEP 1402.03.  Applicant will note the attached definition of “launch” from the Longman Dictionary which defines the term as “to send a weapon or spacecraft into the sky or into space.” Additionally, the term “payload” is defined as “the amount of goods or passengers that can be carried by a vehicle, or the goods that a vehicle is carrying.” See attached. Essentially, applicant is sending spacecrafts carrying goods into space. By definition, this encompasses registrant’s delivery, transport, and shipping of goods. Thus, applicant’s and registrant’s goods 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)).

 

Applicant will also note the attached Internet evidence consisting of screenshots from the United Launch Alliance and International Launch Services websites establishing that the same entity commonly provides launch services as well as delivery, transport and shipping of goods, and markets these services under the same mark.  Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Applicant lists a number of ground transport and delivery companies that do not provide launch services as evidence that the services are not related. However, applicant is working under the incorrect assumption that goods may only be transported, delivered and shipped by land vehicles. It is commonly understood that goods are transported, delivered and shipped by land, air, sea, and space. Applicant will note the attached evidence referenced above, as well as the evidence provided in the previous Office action, of companies providing launch services referenced as “transport,” “delivery” and “shipping” related services.

 

Applicant further contends that consumer sophistication renders confusion highly unlikely. However, even if consumers of the compared services could be considered sophisticated and discriminating, it is settled that “even sophisticated purchasers are not immune from source confusion, especially in cases such as the present one involving identical marks and related goods [and/or services].”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015) (citing In re Research & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); see also In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  The identity of the marks and the relatedness of the services “outweigh any presumed sophisticated purchasing decision.”  In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014). 

 

Finally, applicant argues that the marks have different connotations in relation to the services. However, applicant makes a false conclusion that the registrant’s identified services have a “terrestrial limitation.” This limitation is not included in the identification. Thus, consumers are likely to perceive the marks as having the same connotation.

 

Accordingly, the following refusal made final in the Office action dated May 5, 2020 is maintained and continued: 

 

•         FINAL SECTION 2(d) REFUSAL

 

See TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board.  TMEP §715.03(a)(ii)(B).  Filing a request for reconsideration does not stay or extend the time for filing an appeal.  37 C.F.R. §2.63(b)(3); see TMEP §715.03(c). 

 

 

/Joanna E. H. Fiorelli/

Joanna E. H. Fiorelli

Trademark Examining Attorney

Law Office 105

571-272-4245

joanna.fiorelli@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 01, 2020 for

U.S. Trademark Application Serial No. 88201852

 

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. 

 

 

/Joanna E. H. Fiorelli/

Joanna E. H. Fiorelli

Trademark Examining Attorney

Law Office 105

571-272-4245

joanna.fiorelli@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 December 01, 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.”