To: | Chamberlain Advisors (charris@chamberlainadvisors.co) |
Subject: | U.S. Trademark Application Serial No. 88381980 - GRP - 05262007 |
Sent: | July 11, 2019 12:49:08 PM |
Sent As: | ecom128@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88381980
MARK: GRP
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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: Chamberlain Advisors
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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: July 11, 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 marks in U.S. Registration Nos. 5289028 and 2426036. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s mark is GRP for “Employment staffing consultation services; Employment staffing in the field of sales ; Employment staffing in the field of project management ; Employment staffing in the field of information technology ; Employment staffing in the field of finance ; Employment agency services, namely, filling the temporary and permanent staffing needs of businesses; Employment hiring, recruiting, placement, staffing and career networking services; Employment recruiting and staffing services provided via text messaging; Professional staffing and recruiting services” in class 35.
Registrants’ marks are:
1) GRPMAX (Registration No. 5289028) for “Providing consulting in the field of business management, leadership development, and business process improvement” in class 35;
2) GRP (Registration No. 2426036) for “Certification of individuals as having at least a specific level of knowledge relating to employee compensation and benefits management services after having successfully completed a series of written examinations.”
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.
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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).
1) Comparison with Registration No. 5289028:
In addition, 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 because they include the wording GRP. Therefore, the marks are confusingly similar.
2) Comparison with Registration No. 2426036
Comparison of the Services
1) Comparison with Registration No. 5289028:
Applicant’s services are “Employment staffing consultation services; Employment staffing in the field of sales; Employment staffing in the field of project management; Employment staffing in the field of information technology; Employment staffing in the field of finance; Employment agency services, namely, filling the temporary and permanent staffing needs of businesses; Employment hiring, recruiting, placement, staffing and career networking services; Employment recruiting and staffing services provided via text messaging; Professional staffing and recruiting services” in class 35.
Registrant’s services are “Providing consulting in the field of business management, leadership development, and business process improvement” in class 35.
2) Comparison with Registration No. 2426036
Applicant’s services are “Employment staffing consultation services; Employment staffing in the field of sales; Employment staffing in the field of project management; Employment staffing in the field of information technology; Employment staffing in the field of finance; Employment agency services, namely, filling the temporary and permanent staffing needs of businesses; Employment hiring, recruiting, placement, staffing and career networking services; Employment recruiting and staffing services provided via text messaging; Professional staffing and recruiting services” in class 35.
Registrant’s mark is a certification mark for “Certification of individuals as having at least a specific level of knowledge relating to employee compensation and benefits management services after having successfully completed a series of written examinations.”
Conclusion
Because the marks are similar and the services are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark is refused registration for Class 35 under Trademark Act Section 2(d).
FAILURE TO FUNCTION REFUSAL – PROCESS OR SYSTEM
A process or system is only a way of doing something, and is not generally a service. TMEP §1301.02(e). An applied-for mark that identifies only a process, style, method, or system is therefore not registrable as a service mark. In re HSB Solomon Assocs., LLC, 102 USPQ2d at 1270; In re Hughes Aircraft Co., 222 USPQ 263, 264 (TTAB 1984).
Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would likely regard it as a source-indicator for the services. See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1202. The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a service mark. In re Bose Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1459 (TTAB 1998). A specimen showing the applied-for mark referring solely to a process or system, and not to applicant’s services, is evidence that the relevant public would not regard the designation as a service mark. See In re Universal Oil Prods. Co., 476 F.2d at 655-56, 177 USPQ at 457.
In this case, the specimen shows the applied-for mark used solely to identify a process or system because applicant uses the mark as a “framework” that applicant uses to perform its services. The specimen reads, “We create opportunities for veterans and employers by . . . Utilizing our unique candidate assessment framework (the GRP) to properly match veterans and job requisitions through gauging aptitude, personality, and motivation.” Because applicant’s mark describes a process or system, the mark is not registerable.
Applicant may respond to this refusal by submitting a substitute specimen or amending applicant’s basis to intent to use under Section 1(b) for each applicable international class.
Submitting a substitute specimen: Applicant may submit a substitute specimen that shows the applied-for mark used in commerce as a service mark for the services in the application, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
To submit a verified substitute specimen online using the Trademark Electronic Application System (TEAS) response form, applicant should (1) answer “Yes” to form wizard question #2; and then, continuing on to the next portion of the form, do the following for each relevant class for which a substitute specimen is being submitted: (2) under “Classification and Listing of Goods/Services/Collective Membership Organization,” select the following statement, “Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate. If not checked, the changes will be ignored.”; (3) under “Specimen File,” attach a specimen (attachment may not exceed 5 megabytes); (4) describe what the specimen consists of; and (5) select the following statement: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application” [for an application based on Section 1(a), Use in Commerce] OR “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use” [for an application based on Section 1(b) Intent-to-Use]. Note: When submitting a verified substitute specimen, the TEAS online response form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
Amending to Section 1(b): If applicant cannot provide an acceptable substitute specimen, applicant may amend the application basis to intent to use under Section 1(b), for which no specimen is required, and the refusal will be withdrawn. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. If the same specimen is submitted with an allegation of use, the same refusal will likely issue.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “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.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
To amend to Section 1(b) online using the TEAS response form, applicant should (1) answer “Yes” to form wizard question #2, and then, after proceeding to the next page in the form, do the following for each relevant class for which the basis is being amended: (2) under “Classification and Listing of Goods/Services/Collective Membership Organization,” select the following statement: “Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate. If not checked, the changes will be ignored.”; (3) under “Filing Basis Section 1(a),” uncheck the box for “Filing Basis Section 1(a)”and delete the information appearing in the Date of First Use of Mark Anywhere and Date of First Use of Mark in Commerce textboxes; and (4) check the box for “Filing Basis Section 1(b).” Note: When amending to Section 1(b), the TEAS online response form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
TRADEMARK COUNSEL ADVISED
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.
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.
/Edward Payabyab/
Trademark Examining Attorney
Law Office 128
(571) 272-0021
edward.payabyab@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.