United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

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:  July 08, 2019

 

SUMMARY OF ISSUES

This correspondence details the following bases for refusing advancement of this application:

1.         There is a registered mark that bars registration of the subject mark of this application; and

2.         Applicant is required to amend the description of services so that all entries are definite, and to meet requirements for adding additional classes, if appropriate.

SUBSTANTIVE REFUSAL

REGISTRATION REFUSED—LIKELIHOOD OF CONFUSION

Applicant filed this application on April 10, 2019, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b) (2012), based on its allegation of a bona fide intention to use the mark “DRUM,” to identify the source of various indefinitely described services related to sales force automation and sales promotion for others.

Registration of the applied-for mark is refused, pursuant to Section 2(d), because of likely confusion with the subject mark of U.S. Registration No. 5471910, attached hereto.  Id. § 1052(d); see TMEP § 1207.01.   

The cited registered mark is “THE DRUM,” used to indicate the source of various goods and services, including “advertising and publicity services; advertising by mail order,” “marketing; advertising agencies; publicity agencies,” in International Class 35.

Section 2(d) is the statutory prohibition against registration when an applied-for mark so resembles a registered mark that it is likely, when applied to the relevant goods or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods or services.  15 U.S.C. § 1052(d); see TMEP § 1207.01.  In re E. I. du Pont de Nemours & Company sets forth the principal factors, considered on a case-by-case basis, in determining whether one mark is likely to cause confusion with another mark.  476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973).  The focus of a likelihood of confusion analysis should be the most dispositive DuPont factors, which in ex parte prosecutions are generally the similarities of the marks, the first DuPont factor, the relatedness of the goods or services, the second DuPont factor, and the similarity of the trade channels, the third DuPont factor.  In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 U.S.P.Q.2d 1257, 1259 (Fed. Cir. 2010).  In such cases, likely confusion is often determined by comparing the marks for similarities in appearance, sound, connotation and commercial impression, and by comparing the goods or services to determine whether they are similar or related, or whether the activities surrounding their marketing are such that confusion as to origin is likely.  See, e.g., In re Aquamar, Inc., 115 U.S.P.Q.2d 1122 (TTAB 2015); see TMEP § 1207.01.    

a.        Comparison of the Marks

For purposes of determining the strength of the first DuPont factor for Section 2(d) analysis, the similarity or dissimilarity of the marks is determined by focusing on the appearance, sound, connotation and commercial impression of the marks in their entirety.  Stoncor Group, Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1331, 111 U.S.P.Q.2d 1649, 1651 (Fed. Cir. 2014). 

Consideration of the marks in a likelihood of confusion determination is not based on whether the marks can be distinguished when subjected to a side-by-side comparison, but whether the marks create the same overall general impression.  In re Hitachi High-Technologies Corp., 109 U.S.P.Q.2d 1769, 1773 (TTAB 2014).  Analysis requires factoring into account the fallibility of memory over time and the fact that the average purchaser retains a general rather than a specific impression of trademarks.  See In re Mucky Duck Mustard Co., 6 U.S.P.Q.2d 1467, 1468 (TTAB 1988); Chemetron Corp. v. Morris Coupling & Clamp Co., 203 U.S.P.Q. 537 (TTAB 1979); TMEP § 1207.01(b). 

In this comparison, the marks are substantially identical.  Applicant’s proposed mark, DRUM, and the cited registered mark, THE DRUM, are comprised presented entirely in standard character form.  The rights associated with a mark in standard characters reside in the wording and not in any particular display in terms of font, style, size or color.  In re RSI Sys., LLC, 88 U.S.P.Q.2d 1445, 1448 (TTAB 2008).  Therefore, in actual use, both marks may be displayed in a same manner of font, style, color and size.  In re Viterra Inc., 671 F.3d 1358, 1363, 101 U.S.P.Q.2d 1905, 1909 (Fed. Cir. 2012); In re Strategic Partners Inc., 102 U.S.P.Q.2d 1397, 1399 (TTAB 2012).   

The marks share the same meaning, defined as “a percussion instrument consisting of a hollow cylinder or hemisphere with a membrane stretched tightly over one or both ends, played by beating with the hands or sticks.”  Am. Heritage Dictionary of the English Language (5th ed. 2019), http://www.ahdictionary.com/ (attached hereto).  The term “DRUM” would share the same meaning or connotation to the relevant consumer, and the term is inherently distinctive as applied to the respective goods and services. 

The sole difference between the respective marks is the article “THE” in the cited registered mark.  As used in the cited registered mark, “[t]he addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.”  In re Thor Tech Inc., 90 U.S.P.Q.2d 1634, 1635 (TTAB 2009); see, e.g., In re Narwood Prods., Inc., 223 U.S.P.Q. 1034, 1034 (TTAB 1984). 

Consequently, because the marks are substantially identical, the legal test for similarity of the marks, the first DuPont factor, favors a finding of likelihood of confusion. 

B.        RELATEDNESS OF SERVICES, CHANNELS OF TRADE & CLASSES OF CONSUMERS

For purposes of determining the strength of the second DuPont factor for Section 2(d) analysis, likely confusion is determined on the basis of the goods or services as they are identified in the application and the registration.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973); see, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 U.S.P.Q.2d 1047, 1052 (Fed. Cir. 2018).  “Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services.”  Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1267, 62 U.S.P.Q.2d 1001, 1004 (Fed. Cir. 2002). 

The greater the degree of similarity between the marks, the lesser the degree of similarity between the goods or services is necessary to support a finding of likelihood of confusion.  In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).  When the marks are identical, as they are here, it is only necessary that there be a viable relationship between the goods and services to support a finding of likelihood of confusion.  In re Iolo Techs. LLC, 95 USPQ2d 1498, 1499 (TTAB 2010). 

Here, the comparison is between the following:

Services as identified in the initial filing in this application:

Providing an on-demand sales force for others through provision and administration of a mobile software platform configured to promote products and services, present promotional offers, identify and track sales transactions, and allocate sales commissions; sales promotion for others; sales promotion services; promoting the sale of goods and services of others by means of downloadable software in the nature of mobile applications, namely, software for use in promotion of products and services of others, and presentment of promotional offers for products and services of others.

Relevant services in U.S. Registration No. 5471910:

Advertising and publicity services; advertising by mail order;

marketing; advertising agencies; publicity agencies.

Where the services in the application at issue or in the cited registration are broadly identified as to their nature and type, without restrictions as to the channels of trade and limitations as to the classes of purchasers, it is presumed that the scope the of the services encompasses all services of the nature and type described, and that the identified services are offered in all normal channels of trade, and to all potential purchasers.  In re Elbaum, 211 U.S.P.Q. 639, 640 (TTAB 1981); see TMEP § 1207.01(a)(iii).

Here, the identified advertising, publicity, and marketing services in the cited registration encompass the more narrowly identified promotional services in this application.  In this regard, the respective services are legally identical for relatedness purposes. 

Where the services are legally identical, it must be presumed that the channels of trade and classes of purchasers are the same.  In re Viterra Inc., 671 F.3d 1358, 101 U.S.P.Q.2d 1905, 1908 (Fed. Cir. 2012); In re Smith & Mehaffey, 31 U.S.P.Q.2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers.”); see TMEP § 1207.01(a)(iii).  

In view of the foregoing analysis, the respective services are sufficiently related to cause likely confusion as to their source in the minds of the consuming public if offered under the same or similar marks, and thus, the legal test for relatedness of the services, the second DuPont factor, and the test regarding established, likely-to-continue trade channels, the third DuPont factor, both favor a finding of likelihood of confusion.

Based on a determination that the marks are similar and the relevant services are related, and the presumption that the services move in the same channels of trade and are available to the same classes of consumers, Applicant’s mark is refused registration on the grounds of likely confusion with the above-cited registered mark.

Although the examining attorney has refused registration, Applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. 

PROCEDURAL REQUIREMENT

AMEND & POSSIBLY RECLASSIFY LISTED SERVICES

Applicant is advised that certain of the listed services are unacceptable as indefinite, unclear and overly broad.  37 C.F.R. § 2.32(a)(6); TMEP §§ 1401.03, 1402.11. 

With respect to the identified “providing an on-demand sales force for others through provision and administration of a mobile software platform configured to promote products and services, present promotional offers, identify and track sales transactions, and allocate sales commissions,” Applicant must clarify the primary nature or function of these services to ensure proper understanding and classification.  TMEP § 1402.01(a).  For example, sales promotion and management services are in International Class 35, while platform as a service featuring software platforms for sales force automation services are in International Class 42.  The current entry appears equally to combine both sales promotion and platform services, which is unacceptable as overly broad.    

Similarly, with respect to the identified “promoting the sale of goods and services of others by means of downloadable software in the nature of mobile applications, namely, software for use in promotion of products and services of others, and presentment of promotional offers for products and services of others,” Applicant must clarify the primary nature and function of these goods or services to ensure proper understanding and classification.  TMEP § 1402.01(a).  For example, sales promotion and management services are in International Class 35, while downloadable mobile applications for promoting the goods and services of others are goods in International Class 9.  The current entry appears equally to combine both sales promotion services and downloadable mobile application products, which is unacceptable as overly broad.    

As the above examples demonstrate, the listings are overly broad.  Depending on the amended listing or listings, the amended services may be in more than the listed international class.  TMEP §§ 1401.03, 1402.11.  If Applicant is seeking to use the mark in connection with more than the existing class, Applicant must amend the application by classifying the services in the proper classes and paying any outstanding fees to add any additional classes, if necessary.  37 C.F.R. § 2.85; TMEP §§ 1401.03(b), 1401.04(b).  If Applicant does not add any additional classes, then Applicant must limit services to those within the existing number.  TMEP §§ 1401.02(a), 1401.04(b).

The USPTO has the discretion to determine the degree of particularity needed to describe goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 U.S.P.Q.2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 U.S.P.Q.2d 1541, 1543-44 (Fed. Cir. 2007)).

The following suggested revisions to the initial description of services are suggestions only.  New wording is capitalized and bold.  Reclassified and relocated wording is in bold lettering. 

Applicant may adopt the following framework to amend and classify the services, if appropriate:

International Class 9 (NOT AN ACTIVE “PAID-FOR” CLASS):

downloadable mobile applications for use presentment of promotional offers for products and services of others;

International Class 35:

sales promotion for others; sales promotion services;

International Class 42 (NOT AN ACTIVE “PAID-FOR” CLASS):

PLATFORM AS A SERVICE FEATURING COMPUTER software platforms FOR sales force AUTOMATION configured to promote products and services, present promotional offers, identify and track sales transactions, and allocate sales commissions.

TMEP §§ 1402.01, 1402.03.

Please note that while the identification of the above-identified services may be amended to clarify or limit the listed services, adding goods and services or broadening the scope of the listed services is not permitted.  37 C.F.R. § 2.71(a); TMEP § 1402.06-.07.  Therefore, Applicant may not amend any identification to include goods or services that are not within the scope of the goods and services set forth in the present identifications.

For assistance with identifying and classifying the goods and services in this application, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

ADVISORY REGARDING POSSIBLe INSUFFICIENT FEE

As noted above, Applicant must clarify the number of classes for which registration is sought.  The application identifies services that may be classified in more than one international class; however Applicant paid the fee for only one class.  Proper classification determines the amount of total fees; a fee for each class is required.  37 C.F.R. § 2.86(a)(2); TMEP §§ 810.0l, 1401.04, 1401.04(b), 1403.01.

Applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for any additional classes.  

REQUIREMENTS SHOULD AN ADDITIONAL CLASS BE ADDED

For an application with more than one international class, an applicant must comply with both of the following requirements based on an intention to use the mark in commerce under Section 1(b) of the Trademark Act:

(1)        Applicant must list the services by their international class in consecutive numerical order, starting with the lowest numbered class; and

 

 (2)       Applicant must submit a filing fee for each international class of services not covered by the fee already paid (fee information can be viewed at the USPTO’s current fee schedule). 

 

37 C.F.R. § 2.86; see 37 C.F.R. §§ 2.32(a), 2.34(a)(3); TMEP §§ 810.01, 1403.01, 1403.02(c).

Please 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.

TEAS PLUS OR TEAS REDUCED FEE (RF) APPLICANT ADVISORY

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.  

Applicant must respond timely and completely to the issues raised in this Office Action.  15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62(a), 2.65(a); TMEP §§ 711, 718.03.

How to respond:  Click to file a response to this non-final Office action.

Please contact the undersigned attorney with any additional questions. 

Sincerely,

 

/Judy Helfman/

Judith M. Helfman

Attorney at Law

Law Office 111

571/272-5892

judy.helfman@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 08, 2019 for

U.S. Trademark Application Serial No. 88379385

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Judy Helfman/

Judith M. Helfman

Attorney at Law

Law Office 111

571/272-5892

judy.helfman@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 08, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”