To: | CASHFLOW (rigistrar@gmail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88353212 - HALAL - N/A |
Sent: | 6/11/2019 12:15:28 PM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88353212
MARK: HALAL
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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: CASHFLOW
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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: 6/11/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
TEAS PLUS STATUS LOST
Applicant must submit an additional processing fee of $125 per class because the application as filed did not meet the TEAS Plus application filing requirements. See 37 C.F.R. §§2.6(a)(1)(v), 2.22(a), (c); TMEP §§819.01 et seq., 819.04.
Applicant filed a TEAS Plus application that identified one or more services from the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual) that used a fill-in-the-blank format. However, applicant inserted wording in the identification that is clearly inappropriate or unrelated to the preceding services. At the time of filing, a TEAS Plus application must include an identification of services from the ID Manual. TMEP §819.01(g); see 37 C.F.R §2.22(a)(8). By inserting inappropriate wording, applicant has, in effect, failed to submit an identification from the ID Manual. See TMEP §819.01(g).
Because applicant has not satisfied all the TEAS Plus application filing requirements, applicant must submit an additional processing fee of $125 per class. See 37 C.F.R §§2.6(a)(1)(v), 2.22(c); TMEP §819.04. The additional fee is required even if applicant later satisfies this requirement by properly filling in the blank/deleting the unacceptable wording in the identification. TMEP §819.01(g).
PRIOR PENDING CONFLICTING APPLICATION ADVISORY
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.
However, applicant should note and respond to the ground for refusal and requirement that follow.
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 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 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).
In this case, applicant’s mark is the singular term “HALAL” in standard characters. Registrant’s mark is the composite mark featuring the stylized wording “HALAL THERAPEUTICS BRIDGING THE GAP” with design elements. Applicant’s mark is highly similar to registrant’s mark in appearance, sound, and connotation.
Both applicant’s and registrant’s marks feature the wording “HALAL.” This wording comprises the entirety of applicant’s mark, whereas this wording is the first element in registrant’s composite mark. Registrant’s mark features additional wording, however, this does not obviate the likelihood of confusion. 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.
The only remaining differences between the marks are with regard to their varied stylizations and use of design elements, or lack thereof. Applicant’s mark appears in standard characters, whereas registrant’s mark features stylized wording and design elements. However, the differences in stylization and use of design elements do not obviate the likelihood of confusion.
Because the marks are highly similar, purchasers are likely to believe that the services emanate from the same source. Therefore, the marks are confusingly similar, and the first prong of the likelihood of confusion test is met.
Comparison of the Services
The second prong of the likelihood of confusion test is a comparison of applicant’s and registrant’s services.
Applicant’s services constitute various business, advertising, marketing, and consulting services.
Registrant’s services are marketing services.
In this case, applicant’s various business, advertising, marketing, and consulting services are closely related to registrant’s marketing services.
See:
- AdEasel: http://adeasel.com/about_adeasel/
- Aronfield: http://aronfield.com/what-we-do/
- Half a Bubble Out: http://www.halfabubbleout.com/our-services
The evidence shows that purchasers are accustomed to encountering the services of the applicant and registrant offered under the same mark. Therefore, purchasers are likely to believe the services emanate from the same source. Accordingly, the services of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis, and the second prong of the test is met.
Conclusion
Because the marks are highly similar and the services are closely related, there is a likelihood of purchaser confusion as to the source of the services. Therefore, registration is refused under Section 2(d) of the Trademark Act. 15 U.S.C. §1052(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
However, applicant should note and respond to the requirement that follows.
IDENTIFICATION OF SERVICES REQUIRES AMENDMENT
The wording used to describe portions of the applicant’s services needs clarification because it is indefinite and the nature of the services are unclear. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. As previously noted, applicant filed a TEAS Plus application that identified one or more services from the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual) that used a fill-in-the-blank format. However, applicant inserted wording in the identification that is clearly inappropriate or unrelated to the preceding services.
The following are examples of indefinite wording and improper entries in applicant’s identification of services:
The aforementioned entries are just a few examples of indefinite entries in applicant’s identification of services. Applicant must amend these entries and others to provide clarification as to the field, subject matter, and/or nature of its services, using relevant and appropriate wording for each fill-in-the-blank entry. In reviewing indefinite entries, applicant should note its entries that contain the following phrases:
· “Goods, Services, Blockchain and other Technologies” – applicant must provide specific and definite wording as to the types of goods and services, and also ensure that these identifications are relevant and appropriate for fill-in-the-blank entries.
· “a wide variety of consumers and enterprises” – applicant must provide specific and definite wording as to the purpose or type of consumers and enterprises.
· “physical and virtual properties” – applicant must provide specific and definite wording as to the nature of the “physical and virtual properties.”
The applicant should note the following when amending the identifications.
· For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies. See TMEP §1402.04.
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.
/Matthew D. McClellan/
Trademark Examining Attorney, Law Office 121
Phone: (571) 272-5148
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.