| To: | Texas Capital Bank, N.A. (ipdocketing@haynesboone.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 88374263 - BASK - 20372.TBD |
| Sent: | 6/22/2019 2:44:50 PM |
| Sent As: | ECOM122@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 Attachment - 49 Attachment - 50 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88374263
MARK: BASK
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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: Texas Capital Bank, N.A.
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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: 6/22/2019
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
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 3952728, 4373220, 4970024, 4970025, 5075133, 5090621, 5161939, 5247825, & 5687201. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations. Applicant should note that both Reg. Nos. 4970024 & 4970025 are owned by the A-Team Enterprises, LLC.
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 seeks to register the mark “BASK” in standard characters for “banking services; online banking services; financial services; financing services; lending services; mortgage services; investment services; fund transfer services; debit and credit card services; real estate services; treasury services; insurance services; trust and estate management services; informational services; consulting services; analytical services; business services; website, portal, database, and platform services; provision of a website; telecommunication and transmission services; reward and award program services; research and development services; downloadable software; non-downloadable software; mobile application software” in International Class 036.
Registrant’s marks are:
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).
Applicant’s mark is “BASK” in standard characters.
Registrant’s marks are:
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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
First, with regard to the applied-for mark and the marks in U.S. Reg. Nos. 3952728, 4373220, 4970024, 5075133, 5161939, and 5687201, the marks are identical, namely, “BASK” in standard characters. 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.
Second, with regard to the stylization of the mark in U.S. Reg. No. 4970025, the applied-for mark is in standard characters. 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”). Therefore, the applied-for mark could be displayed in any style, including that of registrant, and therefore the marks are confusingly similar.
Finally, with regard to the marks in U.S. Reg. Nos. 5090621 & 5247825, namely, “BIMBASK” and “BASK IN THE SUN”, respectively, the entirety of the applied-for mark, “BASK”, is encompassed within the registered marks. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
As set forth above, Applicant’s mark “BASK” is confusingly similar with registrants’ marks in U.S. Reg. Nos. 3952728, 4373220, 4970024, 4970025, 5075133, 5090621, 5161939, 5247825, & 5687201. Next, the goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.
Similarity or Relatedness of the Goods and Services
Determining likelihood of confusion is based on the description of the goods and services stated in the application and registrations at issue, not on evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Here, the goods and services identified by Applicant are “banking services; online banking services; financial services; financing services; lending services; mortgage services; investment services; fund transfer services; debit and credit card services; real estate services; treasury services; insurance services; trust and estate management services; informational services; consulting services; analytical services; business services; website, portal, database, and platform services; provision of a website; telecommunication and transmission services; reward and award program services; research and development services; downloadable software; non-downloadable software; mobile application software” in International Class 036.
The relevant goods and services identified by registrants are:
With regard to the services in U.S. Reg. No. 5687201, “Leasing of apartments”, the application uses broad wording to describe “real estate services”, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow “Leasing of apartments”. 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)).
Similarly, with regard to the services in U.S. Reg. No. 3952728, “Providing on-line general feature magazines featuring information concerning lifestyles and culture”, the application uses broad wording to describe “informational services”, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow “Providing on-line general feature magazines featuring information concerning lifestyles and culture”. 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)).
Likewise, with regard to the goods in U.S. Reg. No. 5090621, “Computer software platforms for searching and interacting with the content received or stored in other services or applications, namely, the ability to download, store, view and search web content, data, videos, audio, text and other digital content; Downloadable mobile applications for searching and interacting with the content received or stored in other services or applications, namely, the ability to download, store, view and search web content, data, videos, audio, text and other digital content”, the application uses broad wording to describe “downloadable software; non-downloadable software; mobile application software”, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow “Computer software platforms for searching and interacting with the content received or stored in other services or applications, namely, the ability to download, store, view and search web content, data, videos, audio, text and other digital content; Downloadable mobile applications for searching and interacting with the content received or stored in other services or applications, namely, the ability to download, store, view and search web content, data, videos, audio, text and other digital content”. 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, with regard to the services identified in U.S. Reg. Nos. 4970024, 4970025, 5247825, the attached Internet evidence from Hilton, Marriott, and the Intercontinental Hotels & Resorts establishes that the same entity that commonly provides the hotel and motel services also have websites and markets the services under the same mark, through the same trade channels and to the same classes of consumers in the same fields of use, and the services are similar or complementary in terms of purpose or function. Thus, applicant’s and registrants’ 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).
Additionally, with regard to the services identified in U.S. Reg. No. 5161939 and 5090621, the attached Internet evidence from Apple, Microsoft, Bungie, Netflix, and Hulu and establishes that the same entity that commonly provides software, and specifically software for accessing content, also provides technical support services and transmission and telecommunication services and markets the services under the same mark, through the same trade channels and to the same classes of consumers in the same fields of use, and the services are similar or complementary in terms of purpose or function. Thus, applicant’s and registrants’ 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).
Additionally, with regard to the services identified in U.S. Reg. No. 4373220, the attached Internet evidence from, Arby’s, McDonalds, Subway, Yeah! Burger, Panera, and Potbelly establishes that the same entity that commonly provides restaurant services also provides consulting and business services and award/rewards services, and markets the services under the same mark, through the same trade channels and to the same classes of consumers in the same fields of use, and the services are similar or complementary in terms of purpose or function. Thus, applicant’s and registrants’ 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).
Additionally, with regard to the services identified in U.S. Reg. Nos. 5075133, the attached Internet evidence from Icona Resorts, the City of Alexandria, and the Goldfish Swim School establishes that the same entity that commonly provides beach and swimming facilities services also provide information and markets the services under the same mark, through the same trade channels and to the same classes of consumers in the same fields of use, and the services are similar or complementary in terms of purpose or function. Thus, applicant’s and registrants’ 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).
Finally, 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 registrants’ goods and/or services, respectively, are related.
Accordingly, Applicant’s goods and services are sufficiently related to the goods and services identified in U.S. Registration Nos. 3952728, 4373220, 4970024, 4970025, 5075133, 5090621, 5161939, 5247825, & 5687201.
Conclusion
Based on the foregoing, registration of the applied-for mark is refused under Trademark Act Section 2(d) due to a likelihood of confusion with U.S. Trademark Registration Nos. 3952728, 4373220, 4970024, 4970025, 5075133, 5090621, 5161939, 5247825, & 5687201.
AMENDED IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES REQUIREMENT
Applicant must clarify almost all the wording in the identification of services in International Class 036 because it is largely indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Because of all the clarifications and amendments that will be necessary, please see the following chart highlighting what needs amendment. As a general matter, this wording is indefinite because it does not make clear what the goods and services are. Further, this wording could identify goods and services in more than one international class. The following portions of the identification are acceptable without further amendment: banking services; online banking services; financing services.” Every other part of the identification of services requires some amendment.
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financial services |
This is indefinite because it could include any number of different financial services, e.g., Charitable services, namely, providing financial assistance to disadvantaged persons for assistance with rent. |
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lending services |
This is indefinite because it could include any number of different lending services, e.g., securities lending |
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mortgage services |
This is indefinite because it could include any number of different mortgage services, e.g., Real estate services to stop foreclosure, namely, mortgage debt management |
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investment services |
This is indefinite because it could include any number of different investment services, e.g., commodity investment advice |
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fund transfer services |
This is indefinite and overbroad because it could include any number of fund-transfer related services, e.g., electronic funds transfer in Class 036 or bookkeeping for electronic funds transfer in Class 035 |
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debit and credit card services |
This is indefinite because it could include any number of debit and credit card related services, e.g., On-line banking services featuring electronic alerts that alert credit and debit card users when a single transaction exceeds a certain amount |
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real estate services |
This is indefinite and overbroad because it could include Negotiation and renegotiation for others of leases and subleases and real estate purchase agreements in class 035 or Real estate title insurance underwriting services in Class 036, or real estate development in Class 037, or real estate closing services in Class 045. |
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treasury services |
It is not clear what these services are, and further information is necessary before an amendment can be suggested. See TMEP §1402.01(e). |
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insurance services |
This is indefinite and overbroad because it could include any number of insurance-related services, e.g., Providing sales leads for the automotive finance and insurance industries in Class 035, and Assessing insurance claims in Class 036, and Investigation services related to insurance claims in Class 045 |
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informational services |
This is indefinite and overbroad because the provision of information is classified by subject matter and therefore, depending on the subject matter, this could be classified in all 10 service classes. |
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consulting services |
This is indefinite and overbroad because the provision of consulting services is classified by subject matter and therefore, depending on the subject matter, this could be classified in all 10 service classes. |
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analytical services |
This is indefinite and overbroad because, e.g., cost analysis services are in Class 035, computer analyses of stock exchange information is in Class 036,analyzing of educational test scores and data for others is in Class 041, performance of chemical analyses is in Class 042, and analyzing data in computer databases for criminal activity is in Class 045. |
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business services |
This is indefinite and overbroad because, e.g., business administration services are in Class 035, and business training consultancy services are in Class 041 |
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website, portal, database, and platform services |
This is indefinite and overbroad because the provision of a website, a portal, and a database are each classified by subject matter and therefore, depending on the subject matter, each of these could be classified in all 10 service classes; further, platform services is misclassified because platform as a service is properly in class 042. |
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provision of a website |
This is indefinite and overbroad because providing a website featuring information in the field of… is classified by subject matter and therefore this could be classified in all 10 service classes |
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telecommunication and transmission services |
This is indefinite because it is not clear what is the subject of the telecommunication and transmission services, e.g., Telecommunication services, namely, transmission of webcasts or Telecommunication services, namely, transmission of voice, data, graphics, sound and video by means of broadband power line or wireless networks |
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reward and award program services |
This is indefinite and overbroad because, e.g., Providing incentive award programs for customers and employees through the distribution of prepaid stored value cards for the purpose of promoting and rewarding loyalty is in Class 035, and Entertainment services, namely, contest and incentive award programs designed to reward program participants who exercise, make healthy eating choices, and engage in other health-promoting activities is in Class 041 |
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research and development services |
This is indefinite because it is not clear what subject or field is being researched and developed, e.g., product research and development, or research and development of advanced learning technologies and teaching methods |
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downloadable software |
This is indefinite because the purpose or function of software must be specified and a field or subject can be provided as well |
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non- downloadable software |
This is indefinite and overbroad because the purpose or function of software must be specified and a field or subject can be provided as well, and non-downloadable game software is in Class 041 and other non-downloadable software is in Class 042. |
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mobile application software |
This is indefinite and overbroad because the purpose or function of software must be specified and a field or subject can be provided as well, and because downloadable mobile application software is in Class 009, but non-downloadable mobile game application software is in class 041 and other non-downloadable mobile applications are in class 042. |
Applicant may substitute the following wording, if accurate (suggestions in BOLD, fields that need completing in
{BOLD ITALICS}, deletions in BOLD STRIKETHROUGH):
CLASS 009: downloadable software for {specify purpose or function of software, and, if software is content- or field- specific, the content or field of use}; downloadable mobile application software for {specify purpose or function of software, and, if software is content- or field- specific, the content or field of use }
CLASS 035: informational services, namely, provision of business information; fund transfer services, namely, bookkeeping for electronic funds transfer; real estate services, namely, negotiation and renegotiation for others of leases and subleases and real estate purchase agreements; consulting in the field of business administration; analytical services, namely, cost analysis services; business services, namely, business administration services; website, portal, and database services, namely, providing an internet website portal featuring access to a database in the field of {indicate Class 035 subject matter of portal/website/database}; reward and award program services in the nature of providing incentive award programs for customers and employees through the distribution of prepaid stored value cards for the purpose of promoting and rewarding loyalty
CLASS 036: banking services; online banking services; financial services in the nature of charitable
services, namely, providing financial assistance to disadvantaged persons for assistance with rent; financing services; lending services, namely, securities lending; mortgage
services in the nature of real estate services to stop foreclosure, namely, mortgage debt management; investment services, namely, commodity investment
advice; fund transfer services, namely, electronic funds transfer; debit and credit card services, namely, on-line banking services featuring electronic
alerts that alert credit and debit card users when a single transaction exceeds a certain amount; real estate services, namely, real estate title insurance underwriting
services; treasury services, namely, {please specify exact treasury services}; insurance services, namely, assessing insurance
claims; trust and estate management services; informational services, namely, provision of real estate information; consulting services, namely, consulting
in the field of real estate; analytical services, namely, computer analyses of stock exchange information; business services; website, portal,
and database, and platform services, namely, providing an internet website portal featuring access to a database in the field of
{indicate Class 036 subject matter of portal/website/database}; provision of a website; telecommunication and transmission services; reward and award program services; research and development services; downloadable software; non-downloadable software; mobile
application software
CLASS 037: informational services, namely, provision of technical information in the field of building construction; real estate services, namely, real estate development; consulting services, namely, consulting in the field of building construction; website, portal, and database services, namely, providing an internet website portal featuring access to a database in the field of {indicate Class 037 subject matter of portal/website/database}
CLASS 038: informational services, namely, provision of information about telecommunications; consulting services, namely, consulting in the field of telecommunications; website, portal, and database services, namely, providing an internet website portal featuring access to a database in the field of {indicate Class 038 subject matter of portal/website/database}; telecommunication and transmission services, namely, transmission of webcasts
CLASS 039: informational services, namely, provision of travel information; consulting services, namely, consulting in the field of travel; website, portal, and database services, namely, providing an internet website portal featuring access to a database in the field of {indicate Class 039 subject matter of portal/website/database}
CLASS 040: informational services, namely, provision of information in the field of food manufacturing; consulting services, namely, consulting in the field of food manufacturing; website, portal, and database services, namely, providing an internet website portal featuring access to a database in the field of {indicate Class 040 subject matter of portal/website/database}
CLASS 041: informational services, namely, provision of information in the field of art; consulting services, namely, consulting in the field of art; analytical services, namely, analyzing of educational test scores and data for others; business services, namely, business training consultancy services; website, portal, and database services, namely, providing an internet website portal featuring access to a database in the field of {indicate Class 041 subject matter of portal/website/database}; reward and award program services in the nature of entertainment services, namely, contest and incentive award programs designed to reward program participants who exercise, make healthy eating choices, and engage in other health-promoting activities; providing temporary use of on-line non-downloadable game software; providing temporary use of on-line non-downloadable mobile game application software
CLASS 042: informational services, namely, provision of weather information; consulting services, namely, consulting in the field of weather; analytical services, namely, performance of chemical analyses; website, portal, and database services, namely, providing an internet website portal featuring access to a database in the field of {indicate Class 042 subject matter of portal/website/database}; research and development services, namely, product research and development; providing temporary use of on-line non-downloadable software for {specify purpose or function of software, and, if software is content- or field- specific, the content or field of use}; providing temporary use of on-line non-downloadable mobile application software for {specify purpose or function of software, and, if software is content- or field- specific, the content or field of use}
CLASS 043: informational services, namely, provision of information in the field of temporary lodging and accommodations; consulting services, namely, consulting in the field of temporary lodging and accommodations; website, portal, and database services, namely, providing an internet website portal featuring access to a database in the field of {indicate Class 043 subject matter of portal/website/database}
CLASS 044: informational services, namely, provision of information about beauty; consulting services, namely, consulting in the field of beauty; website, portal, and database services, namely, providing an internet website portal featuring access to a database in the field of {indicate Class 044 subject matter of portal/website/database}
CLASS 045: mortgage services, namely, closing services for mortgage loans; real estate services, namely, real estate closing services; informational services, namely, provision of information about religion; consulting services, namely, consulting in the field of religion; analytical services, namely, analyzing data in computer databases for criminal activity; website, portal, and database services, namely, providing an internet website portal featuring access to a database in the field of {indicate Class 045 subject matter of portal/website/database}
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.
Applicant should note the following additional requirements.
MULTIPLE CLASS APPLICATION REQUIREMENTS
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.
(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 already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 11 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).
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.
Applicant should note the following additional requirement.
SIGNATURE AND DECLARATION REQUIREMENTS
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
Applicant should also note the following advisory:
Advisory: Additional Registered Marks and Prior Pending Applications May Pose a Bar to Registration
Because of the extreme broadness of a large portion of the identification of goods and services in this application, it is possible that, upon proper amendment of the identification of goods and services, additional registered marks and prior pending applications may pose a bar to registration, pursuant to Section 2(d) of the Trademark Act.
RESPONSE GUIDELINES
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
Respond online to this letter. Use the TEAS “Response to Office Action” online form to file a response
If Applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
For attorney referral information, Applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
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.
/Benjamin Roth/
Examining Attorney
Law Office 122
(571) 272-5266
Benjamin.roth@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.
