UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 5/30/2019

 

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.

 

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion
• Advisory: Prior Pending Application
• Required Amendment to Identification of Services
• Significance Inquiry Regarding “VOLTAGE”

 

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. 5562381( limited to Class 41), 5579959 (limited to Class 42), 2113527 (limited to Class 42), and 4501068 (limited to Class 41), and 4888809 (limited to 41).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant seeks registration of “VOLTAGE” for electronic game services and arranging award ceremonies and gala evenings in Class 41 and production and design services in Class 42.  The cited registrations are “VOLTAGE” for computer software for cloud computing in Class 42, “NINJA VOLTAGE” for Entertainment services, namely, providing a computer game that may be accessed network-wide by network users via mobile phones and computers in Class 41, “VOLTAGE VISUALS” for arranging and conducting social events also in Class 41, “VOLTAGE PICTURES” for film and entertainment production services in Class 41, and “HIGH VOLTAGE” for computer programming in 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.

 

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 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).

 

Applicant’s mark is “VOLTAGE.” Registrants’ marks are “VOLTAGE”, “NINJA VOLTAGE”, “VOLTAGE VISUALS”, “VOLTAGE PICTURES”, and “HIGH VOLTAGE.”

 

Reg. No. 5579959       “VOLTAGE”

 

Applicant and registrant’s marks are identical and thus create the same commercial impression. 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 “VOLTAGE” and registrant’s mark is “VOLTAGE.”  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. 

 

Reg. No. 5562381 and 2113527         “NINJA VOLTAGE” and “HIGH VOLTAGE”

 

Applicant’s deletion of the terms “NINJA” and “HIGH” from the registrants’ marks respectively does not obviate a likelihood of confusion with the cited mark. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

Thus, since the term “VOLTAGE” is identical in applicant and registrant’s marks the marks are confusingly similar.

 

Reg. No. 4888809       “VOLTAGE VISUALS” and “VOLTAGE PICTURES”

 

“VOLTAGE” in registrants’ marks is the dominant term in creating a commercial impression because it is the first term in the mark and the additional matter is disclaimed rendering it less significant. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

Additionally, the additional words “VISUALS” and “PICTURES” in each registrant’s marks is disclaimed in each registrant’s mark respectively making it less significant to the commercial impression of the mark. 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).

 

Thus, applicant and registrant’s marks are confusingly similar

 

COMPARISON OF THE GOODS

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

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).

 

Reg. No. 5579959       “VOLTAGE”

 

Applicant’s and registrant’s Class 42 services are sufficiently related to support a likelihood of confusion. Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

Applicant’s downloadable application software is sufficiently related to registrant’s application development hosting services. The attached Internet evidence, consisting of application development and software hosting platforms, establishes that the services are similar or complementary in terms of purpose or function. See attached evidence from apprenda.com noting that many software applications are developed and hosted in the cloud; see also attached evidence from capterra.com showing that software application development employs cloud based hosting sites.  Thus, applicant’s and registrant’s goods and/or 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).

 

Reg. No. 5562381       “NINJA VOLTAGE”

 

Applicant’s electronic game services encompass registrant’s providing an online computer game. 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 application uses broad wording to describe electronic game services, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow “providing online computer games.”  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 goods and/or 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 goods and/or services are related.

 

Reg. No. 4888809 and 4501068         “VOLTAGE VISUALS” and “VOLTAGE PICTURES”

 

Applicant’s education and entertainment services encompass registrant’ services. Additionally registrant’s broad identification of media production services encompasses applicant’s narrow identification involving design, film, and production relating to events, websites, television, and film. 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 application uses broad wording to describe education and entertainment services and the registrations use the broad wording to describe entertainment media production services for motion pictures, television, and internet and post production services as well as conducting social events which presumably encompasses services of the type described, including registrants’ more narrow film studios and arranging and conducting social entertainment events and applicant’s film creation, website creation, photo-shoots, interactive environment creation production of radio and television programs and all other services related to multimedia production and events.  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 of this type 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 goods and/or 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 goods and/or services are related.

 

Likewise, applicant’s identification of services “conducting and arranging of award ceremonies and galas is encompassed in registrant’s broader identification “arranging organizing, conducting, and hosting social entertainment events.” Further, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely events for social purposes and events for galas and award ceremonies, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

Thus, applicant and registrant’s services are related.

 

Reg. Nos. 2113527     “HIGH VOLTAGE”

 

Applicant’s development of application software, website development and design and other computer based services are sufficiently related to registrant’s computer programming services to support a likelihood of confusion. Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion.  In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). 

 

Additionally, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the services listed therein, namely application and website development and computer programming are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

Further, the stylization of applicant’s mark likewise will not obviate a likelihood of confusion because registrants’ marks are in standard character form. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

Accordingly, applicant’s mark is refused registration under Section 2(d) of the Lanham Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

 

ADVISORY: PRIOR PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 87636547 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

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.

 

 

REQUIRED AMENDMENT TO IDENTIFICATION OF SERVICES

 

Where noted below, applicant’s services do not dictate that the services being rendered are for the benefit of others and not the applicant.  Additionally, the wording “marketing studies” or “studies” does not make clear the services applicant is rending and needs further clarification. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Moreover the wording “campaigns” and “publications” and “Software” in applicant’s identification also needs further specification because the nature of the campaigns, publications, or software are unclear from the identification.

 

Likewise, the wording “communication services” in the identification of services for International Class 35 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “broadcast services in Class 38 and business or advertising communications in Class 35.

 

Where designated below, the wording “relating to” or “related to” is indefinite because it does not specify the manner in which the field might be related and could cover services in other classes.  Applicant can amend to “in the field of”, as appropriate and accurate.

 

The redundant use of the wording “professional staffing and employment staffing consultation services” in Class 35 is confusing and must be amended. 

 

The identification for educational services is indefinite because it does not indicate the type of educational service provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, applicant could be providing seminars on a particular topic, analyzing educational test scores and data for others, or providing educational testing. 

 

Applicant must specify the nature of the educational service being provided.  If applicant is providing classes or similar group learning activities, the identification must specify (1) the form of the activity (e.g., classes, seminars, workshops) and (2) the subject matter or field (e.g., retirement benefits, nutrition, business management). 

 

Further, the wording “educational information” in the identification of services is indefinite and too broad and must be clarified because the wording does not specify the subject matter of the services and could identify services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(b).  Classification of educational information services is based on the subject matter of the information provided rather than the intention that the information provided be educational.  See TMEP §1402.11(b).  For example, “providing educational information in the field of finance” is classified in International Class 36, “providing educational information in the field of travel” is classified in International Class 39, “providing information relating to education services” is classified in International Class 41, and “providing a website featuring educational information in the field of medicine” is classified in International Class 44. 

 

As it relates to the Class 41 service of “information relating to entertainment or education including relating to design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation provided on-line from a computer database or the Internet;”  These services could be in various classes, including Class 35 (branding), Class 41 (photography, film production) and Class 42 (graphic design, website development, etc.).]

 

The wording “presentation of data messages and documents for educational and entertainment purposes including in relation to design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation” is indefinite because the nature of the services is unclear.  Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of goods and/or services.  In this case, however, because the nature of the goods and/or services is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording.  See TMEP §1402.01(e).

 

The wording “design of point of sale material being advertising material” and “design of customer information leaflets” in Class 42 is indefinite and likely misclassified.  The design of advertising materials is in Class 35.

 

The wording “design consultancy, design and design advice and information services relating to brands” in Class 42 is indefinite because the precise nature of the services is unclear and it could identify services in multiple classes (e.g., designing advertising materials is in Class 35).

 

The identification for software as a service in International Class 42 is indefinite and must be clarified to specify the purpose or function of the software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  If the software is content- or field-specific, applicant must also specify its content or field of use.  See TMEP §1402.03(d).  The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

The identification of “coding of messages” is indefinite because the nature of the service is unclear.   Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of goods and/or services.  In this case, however, because the nature of the goods and/or services is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording.  See TMEP §1402.01(e).

 

Applicant may substitute the following wording, if accurate:

 

 

Class 35:         Advertising, marketing, promotional and public relations services;

corporate communications services being public relations services; advertising agency, and marketing agency, namely,  promoting the goods and services of others promotional agency and; public relations agency services; project management services for others for business purposes relating to advertising, marketing, promotional and public relations; conducting marketing studies; online and internet advertising, promotion and marketing services; internet keyword marketing services; experiential marketing, promotion and advertising services and, namely, the development of {specify type of campaigns, e.g. blast campaigns, advertising campaigns, etc.} campaigns; immersive and virtual marketing, promotion and advertising services and, namely, the development of {specify type of campaigns, e.g. blast campaigns, advertising campaigns, etc.} campaigns; viral marketing, promotion and advertising services and, namely, the development of {specify type of campaigns, e.g. blast campaigns, advertising campaigns, etc.}  campaigns; video marketing, promotion and advertising services and, namely, the development of {specify type of campaigns, e.g. blast campaigns containing video clips,  etc.} campaigns; creation of developing advertising campaigns for {indicate communication medium, e.g., television, print media, web pages, etc.}; creation of developing advertisements; public relations services; field marketing services in the nature of ______________ {specify nature of marketing services, e.g., “marketing activities that involve face-to-face contact with the consumer”, etc.}; business consulting and advisory services; business networking; organisation and of exhibitions and trade fairs for commercial and advertising purposes; marketing, advertising and consultancy services in the field of relation to brand strategies, brand relationships, customer relationship marketing, loyalty marketing and consumer targeting; {specify service activity, i.e. market research analysis} for the purpose of segmentation and profiling of market data; database marketing services in the nature of ______________ {specify nature of Class 35 service, e.g., “marketing the databases of others”, “marketing services which utilize marketing databases”, etc.}; analysis of consumer responses to advertising; creation and development of retail____________________ {specify the nature of the Class 35 service, e.g., “marketing”, “advertising”, etc.} strategies; consumer strategy business consulting in the field of optimising the utilisation of retail floor space; {specify service, e.g. “Conducting” or “performing”} {specify field of activities, e.g. “marketing”}studies, analysis, statistical evaluation, and {specify service, e.g. “creating” or “compiling”} databases relating to business, marketing and marketing information; advertising, marketing and advertising and marketing consultancy services in relation to for businesses that provide data mining, data manipulation, data cleansing, data transformation, data operations and transmission of data services; providing on-line information in the field of relating to advertising and business consultancy services; talent management and talent agency services for entertainers, musicians, artists; marketing research services; retail marketing research services, namely, research relating to competition and branding in the retail sector; marketing services being the in the nature of business data analysis of market, business and industry trends; reprographic services, namely, copying of documents for others; advertising services relating to packaging; public relations services, namely, management of news and press coverage and stories; communications services in the nature of ______________ {specify communications, e.g., “custom writing services”, etc.} for public relations purposes; public relations services provided through all public communications means; writing of publicity texts, namely, creating press releases; production of video recordings, audiovisual recordings, and digital video and audiovisual recordings for advertising purposes, marketing purposes, publicity purposes, promotional purposes, and public relations purposes; employment staffing consultancy services,; professional staffing and recruiting services, namely,  staff utilisation planning, namely, professional staffing and recruiting services, staff management and management advice relating to staff, namely, professional staffing and employment staffing consultation services; promoting good employment practices through the use of {specify type of service, “awareness of benefits marketing campagins”; promoting the goods and services of others through targeted advertising; conducting, organising, holding, arranging business conferences; conducting, organising, holding, arranging trade conferences, shows and exhibitions in the field of advertising, marketing, and music used for commercial purposes; advertising services, namely, creating corporate and brand identity for others; corporate identity and brand development services for corporate clients; consultancy and advice services in the field of related to brand creation and development; corporate image development consultancy and advice services; branding services, namely, consultancy, and advice and information services in the field of relating to management and marketing of brands, creating brand identity and brand development for businesses and individuals; Providing educational information in the field of branding; design of point of sale material being advertising material; design of customer information leaflets being advertising material;  design consultancy, design and design advice and information services, namely, __________________ {specify type of Class 35 “design” service, e.g., “Design of advertising materials”, etc.} relating to brands; consultancy services in the field of data manipulation and data cleansing, both in the nature of data processing;   provision of information, advisory and consultancy services in relation to the aforementioned services

 

Class 41:         Education and entertainment services; in the nature of _______________ {specify activity, e.g. “organizing, conducting, hosting seminars in the field of marketing”, etc.} ; organizing community sporting and cultural activities; {specify type of materials, e.g. “book, magazine, music, etc.”}publishing and editing services; publication of printed matter;  , including  and publication of electronic matter, namely {specify nature of published materials “magazine, books, reviews, etc.}  publications in electronic format and on the Internet; non downloadable electronic publications in the nature of {indicate specific nature of the publication, e.g. “magazine, journal, etc.”} in the field of {specify subject matter or field}  provided via a computer database or from the Internet; publications in the nature of {indicate specific nature of the publication, e.g. “magazine, journal, etc.”} in the field of {specify subject matter or field}  being not downloadable from databases or the Internet; electronic games services provided by means of the Internet; arranging of educational conferences, colloquiums, competitions, seminars, symposiums, and workshops;  arranging and art shows in the nature of art exhibitions; Educational services, namely, offering training and educational seminars in the field of relation to design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation; providing educational information in the field ofentertainment or education including relating to, namely,  design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photography in the nature of photo-shoots, and film production creation, interactive environment creation provided on-line from a computer database or the Internet; {specify service or activity, i.e. “providing”} online non-downloadable instructional videos in the field of information in digital format relating to {specify nature, e.g., “rental”, “design of”, etc.}buildings, shops and commercial/industrial premises; {specify services, i.e. “entertainment services”}, namely,  non-downloadable ring tones not downloadable accessible provided from the Internet;   provision of online electronic publications in the nature of {indicate specific nature of the publication, e.g. “magazine”, “journal”, etc.}  in relation in the field of design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation; editing, posting, displaying, tagging, sharing or otherwise providing data including images, graphics, sound, text or audio-visual information via the Internet or other communications network; news reporting in the field of {“current events”}; news reporter services; presentation of data messages and documents for educational and entertainment purposes including in relation to design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation;   {specify service activity, i.e. “providing”} information about {specify Class 41 subject matter or field of the events i.e. “sporting”} events; production of radio and television programs; videotape film production; production of {specify type of shows, i.e. “television” }shows; ticket reservation services relating to entertainment events; {specify type of services, i.e. “entertainment services”}, namely, organising, conducting, staging of, judging of and providing facilities for games, competitions and awards therefor; arranging award ceremonies to demonstrate excellence in the field of {indicate field or activity, e.g., “marketing”, “advertising”};  Hosting social entertainment events, namely, gala evenings; arranging and conducting award programs and ceremonies to recognize excellence in the field of brand placement; production, presentation and distribution of arranging competitions, contests, games and quizzes in the field of including in relation to design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation; electronic games services provided by means of the Internet or other communications networks, namely, {specify type of communications networks, i.e. global communications networks}; provision of information, advisory and consultancy services for all the aforesaid

 

Class 42:                     Design services in the field of {specify field of design, i.e. graphic design}; implementation of design, namely, {specify common commercial name of the design service, e.g., “graphic design services”, etc.} ; design and development of downloadable application software design and development of computer hardware and software; design, development, implementation, updating of software and {specify type of programming, i.e. “computer” }programming; {specify type of Class 42 design, i.e. “interior”, “graphic”, etc.} design services for business; planning and design services for retail premises{specify type of premises, i.e. “retail premises”}exterior design services; interior design services; New product design and packaging design services; graphic design; website design and development; Providing technology consulting in the field of social media design and development; animation design for others; special-effects design for others; audio design services for others; website design services; Hosting of online websites featuring ___________ {specify each field or subject matter}  relating to any of the aforesaid services; prototypes and roll-out design services for others in the nature of ____________ {specify nature and purpose of each service}; design of point of sale material; design of customer information leaflets; design, drawing and develop webpages, including creation of commissioned writing and text on webpages, all for the compilation of webpages; creating, testing and maintaining websites  for others; hosting the websites of others; installing, namely, ________ {specify nature of service, e.g., “implementing”, etc.} websites  for others; design consultancy, design and design advice and information services, namely, __________________ {specify type of Class 42 “design” service, e.g., “designing websites for advertising purposes”, etc.} relating to brands; software-as-service services featuring software for advertising, marketing, promotional, public relations purposes in the nature of __________________ {specify function of software, e.g., for use in database management, for service desk management, for accounting, etc.}; Providing  Internet search engine services;  digital computer coding services for others in the nature of ; coding of messages in the nature of _________________{specify nature and purpose of Class 42 service}; consultancy services in the field of data mining;  Providing educational information in the field of graphic design, interior design, planning and layout design services for interior space of retail business establishments, sustainable community planning and infrastructure development, and website development; Providing a web site featuring temporary use of non-downloadable software allowing web site users to edit, post, display, tag, share images, graphics, sound, text or audio-visual information;   information, research, evaluation and consultancy services relating to any of the aforesaid

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

 

SIGNIFICANCE INQUIRY

 

To permit proper examination of the application, applicant must provide all the following information:

 

(1)  Explain whether the wording in the mark “VOLTAGE” has any meaning or significance in the trade or industry in which applicant’s goods and/or services are manufactured or provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry. 

 

See 37 C.F.R. §2.61(b); TMEP §814. 

 

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.

 

 

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.  

/Melanie A. Singer/

Melanie Singer

Trademark Examiner

Law Office 112

(571) 272-5479

Melanie.Singer@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/30/2019 FOR U.S. APPLICATION SERIAL NO. 88299873

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 5/30/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.