United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88208818
Mark: AMAZON
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Correspondence Address: |
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Applicant: Alexandria Investment Group Inc.
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Reference/Docket No. AAS/03
Correspondence Email Address: |
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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: February 03, 2021
This Office action is in response to applicant’s communication filed on November 30, 2020.
The following requirement has been satisfied: Identification of Services
The refusal under Section 2(d) based on Registration Nos. 2832943, 2837138, 5508999, and 5906636 is continued and maintained. In response to the requirement for additional information, applicant submitted new specimens. As noted below, the substitute specimens were not properly verified and do not support the amended identification of services. These matters present new issues necessitating a new non-final Office action. The requirement for additional information related to the specimen submitted with the application is continued and maintained.
SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS
TMEP §§713.02, 714.04.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Comparison of the Marks
Applicant’s mark is AMAZON.
Registrant’s marks are as follows:
Reg. No. 2832943 – AMAZON
Reg. No. 2837138 – AMAZON.COM
Reg. No. 5508999 – AMAZON and design
Reg. No. 5906636 – AMAZON
Regarding the mark in the ‘138 registration, namely, AMAZON.COM, applicant’s mark merely deleted the top-level domain identifier “.COM.” This deletion does not obviate the likelihood of confusion. Applicant’s mark is identical to the dominant and source-identifying portion of registrant’s mark.
Regarding the ‘999 registration, the design element in registrant’s mark does not obviate the likelihood of confusion. 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)).
Therefore, the marks are confusingly similar.
Comparison of the Services
Applicant’s services, as amended: “Retail outlet featuring parts for motor vehicles.”
Registrant’s services are as follows:
Reg. No. 2832943 – AMAZON – Electronic retailing services featuring, among other things, motor vehicles and parts and accessories thereof
Reg. No. 2837138 – AMAZON.COM – Online retail store services featuring, among other things, motor vehicles and parts and accessories thereof
Reg. No. 5508999 – AMAZON and design – Retail store services featuring, among other things, automotive and industrial supplies
Reg. No. 5906636 – AMAZON – “Providing an online marketplace for local professional service providers offering a wide range of home, business, and vehicle services; providing consumer information regarding local professional service providers offering a wide range of home, business, and vehicles services; providing a website where users of an online marketplace provide ratings, recommendations, and feedback on local professional service providers offering a wide range of home, business, and vehicle services
Applicant’s services and the services in the ‘943, ’138, and ’999 registrations appear to be virtually identical, with both applicant and registrant offering services featuring motor vehicle parts.
Regarding the ’636 registration, applicant’s services are closely related to registrant’s services in that professional service providers offering vehicle services regularly all offer services featuring vehicle parts.
In further support of the relatedness of the parties’ service, the examining attorney attaches hereto additional third-party webpages showing retail services featuring motor vehicle parts and motor vehicle services, e.g., repair and maintenance services, under a common mark via identical channels of trade.
Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or 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).
Applicant’s Arguments and Examining Attorney’s Rebuttal
In the response filed November 30, 2020, with respect to the refusal under Section 2(d), applicant asserts that it “very respectfully disagrees with the Examiner that the Refusal is proper and has no further arguments to offer except as previously provided.
Applicant’s “previously provided” arguments were fully addressed in the Office action issued May 29, 2020.
In view of the amended identification of services submitted by applicant on November 30, 2020, the examining attorney has attached to this Office action new evidence in the form of third party registrations and third party websites to support the Section 2(d) refusal, as discussed above.
In view of the above, registration is refused under Section 2(d) of the Trademark Act. If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
ADDITIONAL INFORMATION REQUIRED
Applicant failed to address the information requirement in the Office action issued May 29, 2020. Rather, it appears that applicant has submitted substitute specimens. As discussed below, the substitute specimens do not support the identified services, and the substitute specimens were not properly verified.
As the initial specimen remains operative, the requirement for information is repeated here.
To permit proper examination of the application, applicant must submit additional information about how applicant uses its mark in commerce in connection with the identified services. See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
In the instant case, the specimen of record consists of a storefront with each letter of the proposed mark printed on paper and affixed to the storefront window over additional printed papers bearing the words “AUTO” and “SALES.” The specimen indicates that the photograph was taken in 2005, but the printed pages affixed to the storefront window appear to be temporary in nature.
Additional information/documentation about specimen required. To permit proper examination of the application record for compliance with use in commerce requirements, applicant must respond to the following request for information and documentation about the specimen(s). See 37 C.F.R. §2.61(b); TMEP §814. For the identified services, applicant asserts that the specimen of record shows use of the mark in connection with the identified services in 2005. However, given the temporary nature of the specimen, it is unclear how applicant continued to use the mark in the years since 2005. Accordingly, applicant is asked to provide information as to how the applicant continued to use the mark in commerce from 2005 to the present. Specifically, did applicant convert its temporary signage to permanent signage or can applicant show another type of use of the mark in commerce since 2005? If so, can applicant provide a substitute specimen showing how the mark is currently used in commerce? As noted above, the substitute specimens submitted with applicant’s response filed November 30, 2020 are unacceptable, as set forth below.
SUBSTITUTE SPECIMENS UNACCEPTABLE – TWO SEPARATE REASONS
Specimens Not Properly Verified
Substitute Specimens Do Not Support Identified Services
The identification of services have been amended to: “Retail outlet featuring parts for motor vehicles.” In response to the requirement for information, applicant submitted two substitute specimens, which were not properly verified. In addition to the verification issue, the substitute specimens are not acceptable because they do not support the identified services.
When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user. In re JobDiva, Inc., 843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)). A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. See 37 C.F.R. §2.56(b)(2); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ2d 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii).
To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re The Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (TTAB 2019) (quoting In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)); TMEP §1301.04(f)(ii). Although the exact nature of the services does not need to be specified in the specimen, there must be something that creates in the mind of the purchaser an association between the mark and the services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
In the present case, the specimen does not show a direct association between the mark and services. Specifically, applicant submitted two substitute specimens. The first specimen consists of signage that reads “AMAZON CASH FOR YOUR CAR HABLAMOS ESPANOL.” This signage does not support the identified services. Rather, it appears to support a car buying service. The second specimen also consists of signage that reads “AMAZON AUTOS.” The signage appears to show retail store services featuring automobiles and does not support the identified services.
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 must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).
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 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.
How to respond. Click to file a response to this nonfinal Office action.
/Karen Severson/
Staff Attorney
Law Office 100
571-272-8285
karen.severson@uspto.gov
RESPONSE GUIDANCE
