To: | Tagler Harbor (uspto@trademarks411.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88287637 - TH - N/A |
Sent: | 4/8/2019 3:50:32 PM |
Sent As: | ECOM127@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88287637
MARK: TH
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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: Tagler Harbor
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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: 4/8/2019
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Here, applicant’s mark is TH for “On-line technology platforms; on-line learning platforms; educational services; skills development” in International Class 42.
The registrants’ marks are TH2 TECHNOLOGIES for “Information technology (IT) consulting services; information technology (IT) services for others, namely, consulting in the field of IT project management, computer security consultancy; computer services, namely, remote management of the information technology (IT) systems of others and systems integration; back office computer operations services, namely, computer system administration for others, technical support services in the nature of troubleshooting of computer software problems, and help desk services; managed network services in the nature of accessing computers at remote locations, for use in enforcement of IT security policies, and for computer consulting service in connection therewith; Website design and development for others; Computer services, namely, providing virtual and non-virtual application servers, web servers, file servers, and database servers of variable capacity to third party computing and data storage facilities; Rental of space in a computer co-location facility for containerized data centers of others; Application service provider (ASP), namely, hosting computer software applications of others; Hosting the web sites of others; Maintenance of websites and hosting on-line web facilities for others; Web site hosting services; Offsite backup services, namely, monitoring the computer systems of others for technical purposes and providing back-up computer programs and facilities for software and data” in International Class 42, TH for “Providing computerized access to data bases for hotel guests to access information about airlines, news, sports, stock reports, restaurants, entertainment, job opportunities and other information of interest to travelers” in International Class 42, and T H for “Providing temporary use of, non-downloadable computer application software for mobile and non-mobile devices, namely, cellular telephones, personal digital assistants, cameras, computers, portable media players and tablet computing devices that enables users to insert words or phrases using shortcut keys on a keyboard or keyboard device; providing temporary use of, non-downloadable computer software that enables users to insert words or phrases using shortcut keys on a keyboard or keyboard device for textual communications” in International Class 42.
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.
1. Similarity 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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
In this case, the registrant, TH2 TECHNOLOGIES, disclaimed the term TECHNOLOGIES. Thus, the dominant feature of the mark is TH2. That portion of the registrant’s mark incorporates the entirety of applicant’s mark, TH. In fact, it merely adds an additional number, 2. Accordingly, those two marks are confusingly similar.
Additionally, in the present case, applicant’s mark is TH is identical to the marks in registrations 1454681 and 4420823. The word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
Therefore, applicant’s mark and the registrants’ marks are confusingly similar.
2. Relatedness of the Services
In this case, the application use(s) broad wording to describe “on-line technology platforms,” which presumably encompasses all services of the type described, including the registrants’ more narrow “providing virtual and non-virtual application servers, web servers, file servers, and database servers of variable capacity to third party computing and data storage facilities,” “Providing computerized access to data bases for hotel guests to access information about airlines, news, sports, stock reports, restaurants, entertainment, job opportunities and other information of interest to travelers,” and “Providing temporary use of, non-downloadable computer application software for mobile and non-mobile devices, namely, cellular telephones, personal digital assistants, cameras, computers, portable media players and tablet computing devices that enables users to insert words or phrases using shortcut keys on a keyboard or keyboard device; providing temporary use of, non-downloadable computer software that enables users to insert words or phrases using shortcut keys on a keyboard or keyboard device for textual communications.” 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.
Based on the analysis above, the applicant’s and registrant’s services are related.
3. Conclusion
Because applicant’s and registrant’s marks are similar and the services are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Lanham Act.
IDENTIFICATION AND CLASSIFICATION REQUIREMENTS
Applicant has identified the following services:
International Class 42: “On-line technology platforms; on-line learning platforms; educational services; skills development”
The wording “On-line technology platforms; on-line learning platforms; educational services; skills development” in the identification of services is indefinite and must be clarified because applicant must specify the purpose or intended user of the online platform. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Similarly, applicant must specify the nature of the online learning platform, as well as the field of subject matter of the educational activity. Additionally, applicant must specify the type of educational services provided and the field of those services, and must specify the nature of the skills development. Further, this wording could identifies services in more than one international class.
International Class 41: On-line educational and learning platform, namely, online classes, workshops, and non-downloadable articles in the field of {indicate subject matter or field of educational activity}; Educational services, namely, providing on-line {indicate form of educational activity, e.g., classes, seminars, workshops} in the field of {indicate subject matter or field of educational activity}”
International Class 42: “Providing a web hosting platform for {indicate purpose or intended user}; Testing, analysis, and evaluation of the knowledge, skills, and abilities of others to the order and specification of {indicate accrediting bodies or certification boards}”
If applicant adopts the suggested amendment of the services, then applicant must amend the classification to include associated International Classes. Applicant may also choose to add some but not all Classifications, or limit the goods as specified to include only the services in the current Classifications. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.
For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant should note the additional requirements pertaining to multiple-class applicants, as set forth below.
MULTI-CLASS APPLICATION REQUIREMENTS
The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
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.
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.
Mischler, Megan
/Megan Mischler/
Trademark Examining Attorney
Law Office 127
(571) 272-9997
megan.mischler@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.