| To: | INTERNATIONAL DATA GROUP, INC. (trademark_docket@idg.com) |
| Subject: | U.S. Trademark Application Serial No. 88230315 - SPAN - IDG 18-015 |
| Sent: | October 10, 2019 10:10:44 PM |
| Sent As: | ecom122@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 |
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. 88230315
Mark: SPAN
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Correspondence Address: |
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Applicant: INTERNATIONAL DATA GROUP, INC.
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Reference/Docket No. IDG 18-015
Correspondence Email Address: |
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PRIORITY ACTION
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 10, 2019
Applicant must address issues shown below. On September 24, 2019, the examining attorney and Kevin C. Krull, Vice President and Assistant Secretary of Applicant, discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
PARTIAL REFUSAL AS TO THE SERVICES SPECIFIED HEREIN
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5597084. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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 goods and/or 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 seeks to register the mark “SPAN” in standard characters for, in relevant part, “business research and surveys; conducting business surveys; conducting business research and surveys; online professional networking services, namely, community of business people sharing ideas; promoting the exchange of information and resources within a business community for the benefit of business professionals association services, namely promoting the exchanges of information and resources for market research; a membership community of business professionals sharing information membership services, namely providing information to members in the fields of market and business research” in International Class 035.
Registrant’s mark is “SPAN” in standard characters for “Business data analysis; business research; business management consulting; business research in the field of behavioral science” in International Class 035.
Similarity of the Marks
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
In the present case, applicant’s mark is “SPAN” in standard characters and registrant’s mark is “SPAN” in standard characters. 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.
Therefore, the marks are confusingly similar.
As set forth above, Applicant’s mark “SPAN” is confusingly similar with registrant’s mark in U.S. Reg. No. 5597084. Next, the services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.
Similarity or Relatedness of the Services
Determining likelihood of confusion is based on the description of the goods and services stated in the application and registrations at issue, not on evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Here, the relevant services identified by Applicant are “business research and surveys; conducting business surveys; conducting business research and surveys; online professional networking services, namely, community of business people sharing ideas; promoting the exchange of information and resources within a business community for the benefit of business professionals association services, namely promoting the exchanges of information and resources for market research; a membership community of business professionals sharing information membership services, namely providing information to members in the fields of market and business research” in International Class 035.
The services identified by registrant are “Business data analysis; business research; business management consulting; business research in the field of behavioral science” in International Class 035.
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 “business research,” which presumably encompasses all services of the type described, including applicant’s more narrow ““business research and surveys; conducting business surveys; conducting business research and surveys; online professional networking services, namely, community of business people sharing ideas; promoting the exchange of information and resources within a business community for the benefit of business professionals association services, namely promoting the exchanges of information and resources for market research; a membership community of business professionals sharing information membership services, namely providing information to members in the fields of market and business research.” 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)).
Further, the attached Internet evidence from WiN, Iris, GlobalNR establishes that the same entity that provides networks for market and business research do so for the purpose of conducting market and business research, and markets the services under the same mark, through the same trade channels and to the same classes of consumers in the same fields of use, and the services are similar or complementary in terms of purpose or function. 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).
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.
Accordingly, Applicant’s services are sufficiently related to the services identified in U.S. Registration No. 5597084.
Conclusion
Based on the foregoing, registration of the applied-for mark is refused under Trademark Act Section 2(d) due to a likelihood of confusion with U.S. Trademark Registration No. 5597084.
Applicant should also note the following advisory.
Advisory: Prior Pending Applications May Pose a Bar to Registration – Partial Advisory
CLASS 009: downloadable newsletters in the fields of . . . finance; downloadable electronic publications in the nature of research reports in the field of . . . finance; downloadable webinars in the fields of . . . finance
CLASS 041: non downloadable newsletters in the fields of . . . finance; nondownloadable electronic publications in the nature of research reports in the field of . . . finance; non downloadable webinars in the fields . . . finance
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
RESPONSE GUIDELINES
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
If applicant does not timely respond to this Office action, the following goods and services will be deleted from the application:
CLASS 009: downloadable newsletters in the fields of . . . finance; downloadable electronic publications in the nature of research reports in the field of . . . finance; downloadable webinars in the fields of . . . finance
CLASS 035: business research and surveys; conducting business surveys; conducting business research and surveys; online professional networking services, namely, community of business people sharing ideas; promoting the exchange of information and resources within a business community for the benefit of business professionals association services, namely promoting the exchanges of information and resources for market research; a membership community of business professionals sharing information membership services, namely providing information to members in the fields of market and business research
CLASS 041: non downloadable newsletters in the fields of . . . finance; nondownloadable electronic publications in the nature of research reports in the field of . . . finance; non downloadable webinars in the fields . . . finance
See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with the following goods and services only (deletions in BOLD
STRIKETHROUGH):
CLASS 009: downloadable newsletters in the fields of computers, computing, computer software, computer
hardware, computer security, data storage, cloud computing, data security, servers, online services, high technology, communications, information technology, information services, mobile devices,
telecommunications, consumer electronics, consumer technology, mobile applications, portable electronic devices, social media, energy, finance, government, health,
manufacturing, retail services and emerging technology markets; downloadable electronic publications in the nature of research reports in the field of computers, computing, computer software,
computer hardware, computer security, data storage, cloud computing, data security, servers, online services, high technology, communications, information technology, information services, mobile
devices, telecommunications, consumer electronics, consumer technology, mobile applications, portable electronic devices, social media, energy, finance, government,
health, manufacturing, retail services and emerging technology markets; downloadable webinars in the fields of computers, computing, computer software, computer hardware, computer security, data
storage, cloud computing, data security, servers, online services, high technology, communications, information technology, information services, mobile devices, telecommunications, consumer
electronics, consumer technology, mobile applications, portable electronic devices, social media, energy, finance, government, health, manufacturing, retail services and
emerging technology markets
CLASS 035: business research and surveys; conducting business surveys; conducting
business research and surveys; online professional networking services; online professional networking services, namely, community of business people sharing ideas;
promoting the exchange of information and resources within a business community for the benefit of business professionals association services, namely promoting the exchanges of information and
resources for market research; a membership community of business professionals sharing information membership services, namely providing information to members in the fields of market and business
research
CLASS 041: non downloadable newsletters in the fields of computers, computing, computer software,
computer hardware, computer security, data storage, cloud computing, data security, servers, online services, high technology, communications, information technology, information services, mobile
devices, telecommunications, consumer electronics, consumer technology, mobile applications, portable electronic devices, social media, energy, finance, government,
health, manufacturing, retail services and emerging technology markets; nondownloadable electronic publications in the nature of research reports in the field of computers, computing, computer
software, computer hardware, computer security, data storage, cloud computing, data security, servers, online services, high technology, communications, information technology, information services,
mobile devices, telecommunications, consumer electronics, consumer technology, mobile applications, portable electronic devices, social media, energy, finance,
government, health, manufacturing, retail services and emerging technology markets; non downloadable webinars in the fields of computers, computing, computer software, computer hardware, computer
security, data storage, cloud computing, data security, servers, online services, high technology, communications, information technology, information services, mobile devices, telecommunications,
consumer electronics, consumer technology, mobile applications, portable electronic devices, social media, energy, finance, government, health, manufacturing, retail
services and emerging technology markets
CLASS 042: hosting an online community website featuring shared communications between community members interested in personal and business computer information security; hosting an online community website featuring shared communications between community members interested in personal and business computer information
See TMEP §718.02(a).
How to respond. Click to file a response to this nonfinal Office action.
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.
Roth, Benjamin
/Benjamin H. Roth/
Examining Attorney
Law Office 122
(571) 272 -5266
benjamin.roth@uspto.gov
RESPONSE GUIDANCE
