To: | McClure, Gerry (gp@equitygp.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88299867 - ANGEL - N/A |
Sent: | 5/2/2019 11:00:19 AM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88299867
MARK: ANGEL
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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: McClure, Gerry
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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: 5/2/2019
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:
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’s mark is ANGEL for “Charitable fundraising services by means of a website where donors search for and make monetary donations to specific charities or projects aimed at Online charitable fundraising services; Providing a website featuring crowd funding services for accepting and administering monetary contributions from a group of individuals; Providing a website featuring charitable fundraising services, providing individuals with information and opportunity to make monetary donations to charity; Charitable fundraising services and charitable crowd funding services, providing a website featuring crowd funding services; Charitable services, namely, promoting public awareness of charities; Promoting the charitable giving of others, namely, tracking and publicizing charitable donations and random acts of kindness; Charitable services, by means of organizing special events; Philanthropic services concerning monetary donations”.
The cited mark is:
ANGEL for “Charitable fundraising” and “Charitable services in the nature of an athletic program that enables people with disabilities to have a ride-along experience in an athletic race, namely, coordinating volunteer race participants to accompany people with disabilities in races as well as arranging athletic equipment to enable the people with disabilities to ride alongside the volunteers.” (Reg. No. 5234926).
Applicant’s and registrant’s marks are identical.
The services of the respective parties are closely related. Both parties provide charitable fundraising related services.
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).
For the reasons stated above, registration is refused pursuant to Section 2(d) of the Trademark Act.
RESPONSE:
IDENTIFICATION OF SERVICES:
Class 36 -
In Class 36, applicant’s identification is: “Charitable fundraising services by means of a website where donors search for and make monetary donations to specific charities or projects aimed at Online charitable fundraising services; Providing a website featuring crowd funding services for accepting and administering monetary contributions from a group of individuals; Providing a website featuring charitable fundraising services, providing individuals with information and opportunity to make monetary donations to charity; Charitable fundraising services and charitable crowd funding services, providing a website featuring crowd funding services; Charitable services, namely, promoting public awareness of charities; Promoting the charitable giving of others, namely, tracking and publicizing charitable donations and random acts of kindness; Charitable services, by means of organizing special events; Philanthropic services concerning monetary donations.”
The following wording is unacceptable:
“Charitable fundraising services by means of a website where donors search for and make monetary donations to specific charities or projects aimed at Online charitable fundraising services” is indefinite. The field of “online charitable fundraising” is indefinite. Applicant must indicate the purpose of the activities and/or recipients of funding in greater detail. See below for suggestion.
“Crowd funding” is misspelled and should be spelled “crowdfunding”. See below for suggestion.
“Providing a website featuring charitable fundraising services, providing individuals with information and opportunity to make monetary donations to charity” is indefinite. It is unclear whether these two clauses are connected or not. Clarification is required. See below for suggestion.
“Charitable crowd funding services, providing a website featuring crowd funding services” is indefinite. More specificity is required. It is unclear where these two clauses are connected. Clarification is required. See below for suggestion.
“Charitable services, namely, promoting public awareness of charities” is misclassified and belongs in Class 35. See below for suggestion.
“Promoting the charitable giving of others, namely, tracking and publicizing charitable donations and random acts of kindness” is misclassified and belongs in Class 35. See below for suggestion.
“Charitable services, by means of organizing special events” is indefinite. More specificity is required. The nature of the charitable services must be stated. See below for suggestion.
Taking the above together, applicant may adopt the following:
Class 35: Charitable services, namely, promoting public awareness of charities; promoting the charitable giving of others, namely, tracking and publicizing charitable donations and random acts of kindness
Class 36: Charitable fundraising services by means of a website where donors search for and make monetary donations to specific online charities or projects aimed at helping individuals with mental illness; Providing a website featuring crowdfunding services in the nature of accepting and administering monetary contributions from a group of individuals; Providing a website featuring charitable fundraising services by means of providing individuals with information and opportunity to make monetary donations to charity; Charitable fundraising services; charitable crowdfunding services in the nature of accepting and administering monetary contributions from a group of individuals via a website; charitable fundraising services by means of organizing and conducting special events; Philanthropic services concerning monetary donations
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
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.
MULTI-CLASS REQUIREMENTS:
The application identifies 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 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 already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies services that are classified in at least 2 classes; however, applicant submitted a fee 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).
For 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, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
FEES FOR ADDITIONAL CLASSES:
The fee for adding classes to a TEAS Plus application through TEAS is $225 per class. See 37 C.F.R. §2.6(a)(1)(iv); TMEP §§819.03, 819.04. See more information regarding the requirements for maintaining the lower TEAS Plus fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Simon Teng/
Simon Teng
Trademark Examining Attorney
Law Office 105
(571) 272-4930
simon.teng@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.