To: | Sheriff Nicholas Jim (domaininfo@gmail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88253098 - GMAIL - N/A |
Sent: | 3/20/2019 11:20:36 AM |
Sent As: | ECOM102@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88253098
MARK: GMAIL
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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: Sheriff Nicholas Jim
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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: 3/20/2019
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3150462 and 3353237. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. Please see the enclosed registrations.
Applicant has applied to register the mark GMAIL for “Downloadable computer application software for mobile phones, namely, software for providing enhanced electronic mail and scheduling capabilities, for use by individual computer users, namely, computer programs for managing, viewing, and editing files, documents, electronic mail messages and private network and global computer network communications; computer programs for meeting and event scheduling, managing group calendars, task delegation and reporting, recording notes, transferring data to and from data bases and to and from computer programs and computer files; address book programs, telephone dialing programs, programs for correcting typographical and capitalization errors, programs for tallying voting responses; and instruction manuals therefor sold as a unit.” The registered marks are GMAIL for “Communications services -- namely, transferring of electronic messages for groups of two or more people by means of a global computer network;” and GMAIL for “electronic mail services.”
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Comparison of the Marks
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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).
In this case, applicant has applied to register the mark GMAIL. Registrant’s marks are both GMAIL. All three marks are identical and convey the identical commercial impression.
The examining attorney notes that applicant disclaimed GMAIL in its application. As noted below, applicants may not disclaim their entire mark. In addition, a refusal of registration under §2(d) may not be avoided by disclaiming the mark of another. Cf. In re Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662 (C.C.P.A. 1979).
Comparison of the Goods and Services
In this case, applicant has identified its goods as “downloadable computer application software for mobile phones, namely, software for providing enhanced electronic mail and scheduling capabilities, for use by individual computer users, namely, computer programs for managing, viewing, and editing files, documents, electronic mail messages and private network and global computer network communications; computer programs for meeting and event scheduling, managing group calendars, task delegation and reporting, recording notes, transferring data to and from data bases and to and from computer programs and computer files; address book programs, telephone dialing programs, programs for correcting typographical and capitalization errors, programs for tallying voting responses; and instruction manuals therefor sold as a unit.” Registrant’s services are “communications services -- namely, transferring of electronic messages for groups of two or more people by means of a global computer network;” and “electronic mail services.” Both marks identify either email services or software for use with email.
Since the marks are identical and the goods and services related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark is not entitled to registration.
RESPONSE GUIDELINES
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. If applicant responds to the refusal, applicant must also respond to the requirements set forth below.
“Downloadable computer application software for mobile phones for use in providing enhanced electronic mail and scheduling capabilities, for use by individual computer users, namely, software for managing, viewing, and editing files, documents, electronic mail messages and private network and global computer network communications, software for meeting and event scheduling, managing group calendars, task delegation and reporting, recording notes, transferring data to and from data bases and to and from computer programs and computer files, software for maintaining an address book, software for use in dialing telephones, software for correcting typographical and capitalization errors and software for tallying voting responses, and instruction manuals therefor sold as a unit,” in International Class 9.
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.
ADVISORY NOTE: ENTIRE MARK MAY NOT BE DISCLAIMED
ADVISORY NOTE: TRANSLATION STATEMENT WILL NOT BE PRINTED
Applicant’s translation statement is unnecessary and will not be printed on any registration that may issue from this application.
GENERAL RESPONSE GUIDELINES
For this application to proceed toward registration, applicant must explicitly address each refusal and requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options specified in this Office action for responding to a refusal, and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6(15), 2.66(b)(1).
QUESTIONS
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusals or requirements in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
/John M. Gartner/
Trademark Examining Attorney
Law Office 102
(571) 272-9255
john.gartner@uspto.gov (informal correspondence)
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.