UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88338257
MARK: IMT
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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: Integrated Treatment LLC
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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: 5/17/2019
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) PARTIAL REFUSAL – LIKELIHOOD OF CONFUSION:
THE REFUSAL BASED ON U.S. REGISTRATION NO. 3916515 IS LIMITED TO –
IF THE APPLICANT DELETES THE ABOVE, THEN THE REFUSAL WILL BE WITHDRAWN.
Registration of the applied-for mark is partially refused because of a likelihood of confusion with the mark in U.S. Registration No. 3916515. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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 consists of a circle design with “IMT” in lowercase stylized letters in the inner circle being displayed on top of a fork that is centered behind the letters.
For purposes of this partial refusal, the goods and services at issue are:
The cited mark is:
imt industry market trends (stylized) for “Online journal, namely, blogs featuring information on the latest industrial developments, best practices, market trends and opinions of its editors and readers regarding such trends; newsletters regarding the latest industrial developments, best practices, market trends and opinions of its editors and readers regarding such trends, delivered via e-mail”. (Reg. No. 3916515).
Applicant’s and registrant’s marks are highly similar. Both feature the acronym IMT.
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). Registrant has disclaimed “INDUSTRY MARKET TRENDS”.
The goods and services of the respective parties are closely related. Applicant’s publications and websites are not restricted by subject matter. As such, it could encompass registrant’s subject matter regarding “latest industrial developments, best practices, market trends and opinions of its editors and readers regarding such trends”.
Registrant’s ID includes “blogs”. A “blog” is “A website that displays postings by one or more individuals in chronological order and usually has links to comments on specific postings.” See attachments from <http://www.ahdictionary.com/word/search.html?q=blog>. Applicant’s Class 41 includes “a website featuring non-downloadable electronic publications”.
For the reasons stated above, registration is refused pursuant to Section 2(d) of the Trademark Act.
RESPONSE:
IDENTIFICATION OF GOODS & SERVICES – PARTIAL REQUIREMENT:
Class 16 -
In Class 16, applicant’s identification is: “Publications, namely, books, magazines, workbooks, worksheets and handouts.”
Taking the above together, applicant may adopt the following:
Class 16: Publications, namely, books, magazines, workbooks, worksheets, and handouts in the field of behavioral disorders, mental illness and treatment
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Class 41 -
In Class 41, applicant’s identification is: “Educational services, namely, conducting workshops, lectures and seminars in the field of behavioral disorders, mental illness and treatment; Providing a website featuring non-downloadable electronic publications.”
The following wording is unacceptable:
“Providing a website featuring non-downloadable electronic publications” is indefinite. The nature of the publications and subject matter of the publications must be stated. See below for suggestions.
Taking the above together, applicant may adopt the following:
Class 41: Educational services, namely, conducting workshops, lectures and seminars in the field of behavioral disorders, mental illness and treatment; Providing a website featuring non-downloadable electronic publications in the nature of books, magazines, workbooks, worksheets, and handouts in the field of behavioral disorders, mental illness and treatment
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.
ABANDONMENT ADVISORY:
The application will then proceed with the following only:
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
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.