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. 88374520
Mark: C
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Correspondence Address: 2440 Junction Place, Suite 300
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Applicant: Deal.com, Inc.
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Reference/Docket No. 616455
Correspondence Email Address: |
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NON-FINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: February 05, 2020
This Office action is in response to applicant’s communication filed on December 20, 2019.
Registration was previously refused based on the following refusal(s) and/or requirement(s):
1. Refusal under Section 2(d) based on a likelihood of confusion with a registered mark.
2. Requirement for clarification of the identification of goods/services.
3. Specimen refusal.
Applicant argued against the refusal and amended the identification of goods and services. The application now covers only certain Class 35 services.
Applicant’s arguments against the refusal was carefully considered, but ultimately found unpersuasive. Moreover, the amended identification is appreciated, but it requires further clarification.
Applicant argued in favor of the original specimen, but also amended the basis to Section 1(b). Upon further review, the specimen seems acceptable. However, clarification of the basis is now required as it is unclear which basis applicant prefers.
Here is a SUMMARY OF ISSUES that applicant must address:
1. Refusal under Section 2(d) based on a likelihood of confusion with a registered mark.
2. Requirement for clarification of the identification of goods/services.
3. Requirement for clarification of the basis.
1) Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 5598023. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. Please see the attached registration information.
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.
Similarity of the Marks
Applicant’s mark is “C” in a box/square design. Registrant’s mark is “C” in a box/square design with an extra small circle. The marks are essentially identical, except for the small circle.
Significantly, because each mark is primarily comprised of a letter “C” and box/square, the marks sound identical and appear extremely similar. They also create nearly identical overall commercial impressions.
In light of the foregoing, it is likely that consumers would be confused as to the origin of applicant’s goods and/or services.
The Goods and/or Services are Related
In this case, registrant’s services include “operating online marketplaces for buyers and sellers of goods and services.”
Applicant’s services are as follows: providing an online marketplace connecting experts, consumers, and sellers in the fields of specialty goods and services, customized experiences, sporting excursions, customized travel and accessories therefor; provision of an online marketplace for buyers of goods and services in the fields of specialty goods and services, customized experiences, sporting excursions, customized travel and accessories therefor.
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)). When an application or registration broadly identifies goods or services, the goods or services are presumed to encompass all goods or services of the type described. 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).
In this case, registrant’s services are very broad. Thus, it is presumed that registrant’s service encompass, at least in part, each of applicant’s marketplace services. Thus, applicant’s and registrant’s services are legally identical, at least in part. 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)).
The attached Internet evidence also establishes that many entities provide/operate online marketplaces featuring many different types of items. In fact, the website also show that various customer/consumer services also are provided by such websites/marketplaces. Therefore, applicant’s and registrant’s 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). See, for example, the information from the www.amazon.com, www.etsy.com, www.ebay.com, www.walmart.com, and www.bonanza.com websites.
Additionally, registrant’s services 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” as are applicant’s services. 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)).
Applicant’s Argument and Response Thereto
A. The Services are Identical or Highly Related
Applicant argues that there is no likelihood of confusion because applicant’s services differ from registrant’s services. Applicant feels the amendment to its identification of services clarifies that its services are unique and have a specific nature. In particular, applicant feels its “marketplace fosters an environment where consumers can engage lifestyle experts and knowledgeable sellers to provide perfectly-tailored, professional recommendations.” In support of the argument, applicant provides screens shots from its website. Applicant also feels that registrant’s services should be interpreted as being directed to consumers for business purposes. In support, applicant submits screen shots of registrant’s website.
The examining attorney appreciates the argument but disagrees. As noted above, 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. In re Detroit Athletic Co., 903 F.3d at 1307, 128 USPQ2d at 1052. When an application or registration broadly identifies goods or services, the goods or services are presumed to encompass all goods or services of the type described. In re Solid State Design Inc., 125 USPQ2d at 1412-15.
In this case, “operating online marketplaces for buyers and sellers of goods and services" appears by itself in the identification of goods in the registration. There are no limitations as the types of goods or services sold nor to those who may be sellers nor as to what persons comprise the purchasers. Moreover, there certainly is no wording limiting the services to only those for business purposes. Applicant cannot limit the scope of the wording in the registration by argument or by providing extrinsic website evidence of one or more ways a registrant is using its mark. Thus, it must be presumed that at least some of registrant’s services are identical to some of applicant’s services. The fact that applicant has attempted to narrow the scope of its services is appreciated, but that does not change the fact that registrant has a broad identification that encompasses the same services.
In fact, if applicant is intending to imply that registrant has partially abandoned its mark because it is not using the mark with all services encompassed by the wording in the registration, then please keep in mind that a trademark or service mark registration on the Principal Register is prima facie evidence of the validity of the registration and the registrant’s exclusive right to use the mark in commerce in connection with the specified goods and/or services. See 15 U.S.C. §1057(b); TMEP §1207.01(d)(iv). Thus, evidence and arguments that constitute a collateral attack on a cited registration, such as information or statements regarding a registrant’s nonuse/partial nonuse of its mark, are not relevant during ex parte prosecution. See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); TMEP §1207.01(d)(iv). Such evidence and arguments may, however, be pertinent to a formal proceeding before the Trademark Trial and Appeal Board to cancel/partially cancel the cited registration.
B. Even Weak or Diluted Marks Are Entitled to Protection When the Marks are Nearly Identical and the Services are Identical, At Least In Part
Applicant argues that there is no likelihood of confusion because “C” marks for are diluted in connection with various business or retail services. Thus, its mark should be allowed to register.
Moreover, many of the other registered “C” marks referred to by applicant are not stylized in the same way as is applicant’s “C” nor do they contain the same additional design element(s). Additionally, many of the services covered by those registrations did not include the operating or providing of an online marketplace. Instead, they covered other business services. Thus, the mark in the cited registration and the services in the cited registration are much more similar to applicant’s mark and services than are those in the other registrations identified by applicant.
C. Sophisticated Purchasers
Applicant also argues that there is no likelihood of confusion because the relevant consumers are sophisticated. The examining attorney respectfully disagrees.
Even assuming arguendo that the purchasers are sophisticated or knowledgeable in a particular field, it does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163).
Doubt is Resolved in Favor of Registrant
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
In light of the foregoing, registration is refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d).
2) Identification of Services
Some of the wording in the identification of services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
“Providing an online marketplace connecting experts, consumers, and sellers in the fields of specialty goods and services, customized experiences, sporting excursions, customized travel and accessories therefor” must be clarified. “Connecting experts” is indefinite. Online marketplaces are generally websites where third-parties provide a place where sellers offer items for sale and users/consumers have the opportunity to purchase them or they exchange items. Here, it is not clear from the identification what the services involving “connecting experts” refers to (applicant discussed the meaning in its response, but the identification itself must be clarified so that the meaning of the term is obvious). Thus, clarification is required.
Please also keep in mind that the identification may not be amended to be beyond the scope of the original identification. See 37 C.F.R. §2.71(a); TMEP §1402.06. Much of the information in the response about what the expert did seemed to be more in the nature of providing advice, reviews, or curating items. None of those services are encompassed by the original identification, which merely provided for a way to “connect” experts. If the online marketplace provides referrals to experts, then applicant may clarify that. In that case, applicant must further clarify the field(s) of expertise.
Applicant also must clarify the nature of “customized experiences.”
In addition, “provision of an online marketplace for buyers of goods and services in the fields of specialty goods and services, customized experiences, sporting excursions, customized travel and accessories therefor” must be clarified by clarifying “provision of an online marketplace for buyers of goods and services.” An online marketplace generally refers to a website that enables third party sellers and buyers to exchange items. Because the identification mentions only “buyers” (and based on a review of the specimen), it appears that the services may be more in the nature of an online retail store service or similar type of online retail services.
Applicant may substitute the following wording, if accurate.
Class 35:
Providing an online marketplace for consumers and sellers in the fields of specialty goods and services, customized experiences in the nature of travel excursions, sporting excursions, customized travel and accessories therefor, and providing via the marketplace referrals to shopping experts to assist the consumers with purchases; Provision of an online marketplace for buyers of goods and services so that they may purchase the goods of sellers, all in the fields of specialty goods and services, customized experiences in the nature of travel excursions, sporting excursions, customized travel and accessories therefor
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.
3) Basis
The filing basis of the application is unclear. An application must specify and meet the requirements of at least one filing basis. 37 C.F.R. §§2.32(a)(5), 2.34(a); TMEP §806.
More specifically, in applicant’s response, applicant 1) replaced the 1(a) basis with a 1(b) basis in the basis section of the response form. However, in applicant’s argument, applicant argued the specimen was acceptable and that it wished to amend the basis to 1(b) only if the specimen was again rejected. Thus, clarification is required.
The specimen has been deemed acceptable. Applicant must now confirm which basis it wishes to proceed with. Please also keep in mind that an applicant may not assert both use and intent to use for identical goods or services in the same application. 37 C.F.R. §2.34(b).
Response Advisory
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.
How to respond. Click to file a response to this nonfinal Office action.
Please do not hesitate to contact the undersigned with any questions.
/MaureenDallLott/
Maureen Dall Lott
Trademark Examining Attorney, Law Office 105
United States Patent and Trademark Office
571-272-9714
maureen.lott@uspto.gov
RESPONSE GUIDANCE
