United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88390071
Mark: SPOT
|
|
Correspondence Address:
|
|
Applicant: PubWise, LLLP
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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.
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
The applicant’s mark is SPOT (in standard characters) for “Ad serving, namely, placing advertisements on websites for others using specialized computer software; Analysis of advertising response; Providing advertising and advertisement services.” in International Class 35.
The registered marks are the following:
§ U.S. Reg. No. 4978825- THE SPOT (in standard characters) for “Providing a searchable online advertising website and informational guide featuring the goods and services of vendors via the internet in the field of weddings, corporate events, fundraisers, charities, and other social events; promoting the goods and services of others in the fields of weddings, corporate events, fundraisers, charities, and other social events by providing a web site featuring coupons, rebates, price-comparison information, product reviews, links to the retail web sites of others, and discount information; providing price comparison services in the field of venues and vendors for weddings, corporate events, fundraisers, charities, and other social events via the Internet; Appointment scheduling and availability management services; business consultancy.” in International Class 35.
§ U.S. Reg. No. 5079694- SPOT+ (in standard characters) for “Advertising services; radio advertising services; advertising services using Radio Data System (RDS) technology to convey promotional information for others.” in International Class 35
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
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
In the case of U.S Reg. No. 5079694 “SPOT+; applicant and registrant’s marks share the term “SPOT”. In the case of the registrant this is the first word of the mark. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). The prominent feature of registrant’s mark is the shared term with applicant’s mark.
Thus, the marks are confusingly similar.
Relatedness of the Services
Registrant’s goods for U.S. Reg. No. 4978825 are “Providing a searchable online advertising website and informational guide featuring the goods and services of vendors via the internet in the field of weddings, corporate events, fundraisers, charities, and other social events; promoting the goods and services of others in the fields of weddings, corporate events, fundraisers, charities, and other social events by providing a web site featuring coupons, rebates, price-comparison information, product reviews, links to the retail web sites of others, and discount information; providing price comparison services in the field of venues and vendors for weddings, corporate events, fundraisers, charities, and other social events via the Internet; Appointment scheduling and availability management services; business consultancy”. Applicant’s services are described in the identification as “Ad serving”. Ad serving is defined by Your Dictionary as “The hardware, software and personnel required to deliver advertisements to websites and ad-supported software.” (See attached) By definition applicant’s and registrant’s services are related. As ADPUSHUP indicates, “running ads is one of the main ways websites monetize their content. And advertisements need to be managed, replaced and tested constantly for improvement. This where an ad server comes in. It helps webmasters manage all of their ad space on one or more sites from one central console.”
In the case of U.S. Reg. No. 5079694 both applicant and registrant provide “advertising services”. This broad terminology encompasses all of applicant’s services. When analyzing an applicant’s and registrant’s services for similarity and relatedness, that determination is based on the description of the services in the application and registration at issue, not on extrinsic 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)).
In this case, the services in the application and registration are identical. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s services are related.
Applicant should note the following additional ground for refusal.
SECTION 2(e)1 REFUSAL-MERELY DESCRIPTIVE
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
In this case, the applied-for mark is SPOT used in connection with “advertising services”. The attached evidence from Bizfluent shows that “spot” is “Spot TV advertising refers to the common advertising approach of buying 30 or 60 second ad placements on a particular station. Before an advertiser buys spots, it must produce one or more commercials. Then, the company or its ad agency buys a package of spots through a network or station.” The attached evidence from the Merriam Webster dictionary shows also that “spot” is defined as “a brief announcement or advertisement broadcast between scheduled radio or television programs”. Therefore, the term “spot” immediately conveys to consumers that applicant’s services involve advertising.
§ http://www.nationalmediaspots.com/production-rate-card.php (Provider of Local Broadcast marketing services that include spot production);
§ http://www.roiadvertising.com/ (Provider of advertising services that uses the term spot descriptively); &
§ http://fitsmallbusiness.com/tv-advertising/ (Article that describes the cost ranges of televised advertising spots per city).
As demonstrated above, “spot” is understood to convey a very specific type of advertising; therefore, the applied-for mark SPOT will immediately convey to consumers that applicant’s services involve advertising. Considering the above, the applied-for mark is refused registration under Trademark Act Section 2(e)(1).
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.
How to respond. Click to file a response to this nonfinal Office action
/Lorena, Soler-Centeno/
Lorena Soler-Centeno
Trademark Attorney
Law Office 128
571-272-2640
RESPONSE GUIDANCE