United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 88398607
Mark: FROG
|
|
|
Correspondence Address: |
|
|
Applicant: Frog Scooters, Inc.
|
|
|
Reference/Docket No. 526387.2
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.
Issue date: July 03, 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.
Summary of Issues:
Search Deferred:
Trademark Act Section 2(d) Refusal: Likelihood of Confusion
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.
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).
As to U.S. Registration Nos. 1312760, 2481506, 2554673, 2596739, 2781008, 3120953, 4464598, 4969834 and 4969835:
The registrant applies the following marks to the following services:
FROG for “Computer software design for others, namely, design of computer software stored on digital media; design services, namely, industrial design services; digital media design, namely, website design and analysis for others; graphic art design; and design for others in the field of engineering.”
FROG for “Business and marketing consulting services”
FROG for “MARKETING AND ADVERTISING SERVICES FOR OTHERS, NAMELY, BUSINESS MARKETING CONSULTING SERVICES REGARDING MARKETS TO BE TARGETED AND PRODUCTS TO BE DEVELOPED, PRODUCT AND PROJECT MANAGEMENT SERVICES”
FROG for “BUSINESS CONSULTATION, NAMELY, CORPORATE IDENTITY AND BRANDING STRATEGIES CONSULTATION; ONLINE DIRECTORY SERVICES, NAMELY, PROVIDING INDEXES AND WEBSITE LINKS TO OTHER CONTENT PROVIDERS FEATURING EDITORIALS AND ARTICLES IN THE FIELDS OF MARKETING AND ELECTRONIC COMMERCE” and “COMPUTER SOFTWARE DESIGN FOR OTHERS, NAMELY, DESIGN OF COMPUTER SOFTWARE STORED ON DIGITAL MEDIA; INDUSTRIAL DESIGN; GRAPHIC ART DESIGN; AND DESIGN FOR OTHERS IN THE FIELD OF ENGINEERING; COMPUTER SERVICES, NAMELY, DESIGNING AND IMPLEMENTING WEB SITES FOR OTHERS; COMPUTER SOFTWARE DESIGN FOR OTHERS FOR USE IN E-COMMERCE BUSINESS APPLICATIONS; COMPUTER SERVICES, NAMELY, PROVIDING CUSTOMIZED ONLINE WEB PAGES FEATURING USER-DEFINED INFORMATION, WHICH INCLUDE SEARCH ENGINES AND ONLINE WEB LINKS TO NEWS, WEATHER, SPORTS, CURRENT EVENTS AND REFERENCE MATERIALS, ALL IN A WIDE RANGE OF USER DEFINED FIELDS.”
FROG DESIGN for “Advertising and marketing services” and “Industrial design, engineering; graphic art design; computer design services, namely individual user interface design, design of computer software, web site design.”
FROG DESIGN for “advertising, business and marketing consulting services; business consultation, namely, corporate identity and branding strategies consultation; online directory services, namely, providing indexes and website links to other content providers featuring editorials and articles in the fields of marketing and electronic commerce; assistance, advisory services and consultancy with regard to business planning, business analysis, business management, business organization, marketing and customer analysis; marketing services, namely, conducting consumer tracking behavior research and consumer trend analysis; marketing services, namely, consumer marketing research; business consultation and management regarding marketing activities and launching of new products” and “computer software and hardware design and engineering services; design and engineering consulting services in the fields of telecommunications and electronic products; computer software design services for others; computer software research and development services; industrial design services; new product research and design services; design and testing for new product development; design and testing of new products for others; engineering services; graphic design services; packaging design; interior design services; retail signage design; planning and layout design for the interior space of retail business establishments; website design services; digital media design services, namely, designing visual elements for online media and electronic devices.”
FROGLABS for “Business management consultation services; consultation services in the field of business organization and operation; business consultation regarding launching of new products and services; marketing advisory services; marketing services” and “Industrial design services; new product research and design services; design and testing for new product development; design and testing of new products for others; engineering services; engineering and engineering design services; website design services; design and development of computer hardware and software; visual design services in the nature of designing visual elements for on-line and other communication media.”
FROGVENTURES for “Business management consultation services; consultation services in the field of business organization and operation; business consultation regarding launching of new products and services; marketing advisory services; marketing services” and “Industrial design services; new product research and design services; design and testing for new product development; design and testing of new products for others; engineering services; engineering and engineering design services; website design services; design and development of computer hardware and software; visual design services in the nature of designing visual elements for on-line and other communication media.”
FROGDESIGN for “Engineering and Design Services.”
Applicant seeks to register the wording FROG plus design for, in pertinent part, “Advertising; Business management; Business administration; Clerical services” and “Developing of driver and operating system software; Software design and development; Design and development of software in the field of mobile applications; Providing online, non-downloadable software; Software as a Service (SaaS) services, namely, providing non-downloadable software in the field of vehicle sharing and use of vehicles.”
In this case, the marks are highly similar because they all contain the wording “frog.” Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Indeed, the wording in the applied-for mark is identical to the wording in registrant’s “frog” marks. Moreover, the applied-for mark is highly similar to registrant’s “frog design,” “froglabs,” “frogventures,” and “frogdesign” marks because the applied-for wording is encompassed by these 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.
The services are closely related as both parties offer advertising and business consultancy services as well as software design and software development services.
On balance, because the marks are highly similar and the services are closely related, consumer confusion is likely.
As to U.S. Registration Nos. 4713059 and 5706088:
Registrant applies the marks “FROG” and “FROG BIKES” plus design to “Bicycles; tricycles not being toys; bicycle accessories, namely, bicycle stands, pannier racks adapted for bicycles, bicycle training handles, bicycle water bottle cages, bicycle stabilizers, bicycle horns, rubber bicycle cable covers, and bicycle bells; bicycle components, namely, axle bolts, disc brake piston stoppers, bicycle seat post clamps, rear derailleur protectors, handle bar stem riser adapters, brake levers and caliper, wheel nuts, handlebar grips, pedals, brake cable noodles, handle bars, saddles, tyres, wheels; bicycle bells; bicycle brakes; bicycle carriers for vehicles; bicycle chains; bicycle frames; bicycle handlebars; bicycle pumps; bicycle saddles, seats and mudguards; bicycle carrier racks; bicycle wheel rims; bicycle saddles; bicycle wheel spokes; bicycle stabilisers; bicycle stands; bicycle wheels; bicycle tyres and inner tubes for bicycle tyres; parts and fittings specially adapted for bicycles; handlebar grips for bicycles; bicycle water bottle holders; child carrying trailers for use in transporting children while bicycling and jogging; pannier bags for bicycles and seat bags specially adapted for bicycles” and “Bicycles, bicycle frames, bicycle components, namely, bicycle handlebars, bicycle saddles, bicycle cranks, bicycle stems, parts and fittings for bicycles, namely, handlebar grips, bicycle bottle holders.”
Applicant seeks to register “FROG” plus design for, in pertinent part, “Electrically powered land vehicles; Push scooters.”
Here, applicant’s mark is confusingly similar to registrant’s “FROG” mark because the wording is identical.
The applied-for mark is highly similar to registrant’s “FROG BIKES” mark because registrant has disclaimed the word “bikes,” rendering “frog” the dominant wording in the mark. 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). As the wording in the applied-for mark is identical to the dominant wording in the registered mark, the marks are confusingly similar.
On balance, because the marks are highly similar and the goods are closely related, consumer confusion is likely.
As to U.S. Registration Number 1807973:
Registrant applies the mark BULLFROG to, in pertinent part, “arranging and conducting travel tours; houseboat, powerboat and R.V. rental services; boat rental services; transportation services; namely, ferry services, marina services.”
Applicant seeks to register the wording FROG plus design for, in pertinent part, “Vehicle rental; Electrical vehicle rental; Transportation information; Provision of transportation tariff information, Information services relating to transport timetables.”
Here, the marks are confusingly similar because the wording in the applied-for mark is wholly encompassed by the registered mark. 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.
Moreover, the services are closely related because applicant’s vehicle rental would include registrant’s rental of houseboats, powerboats, R.V.s, and boats. Also, applicant’s transportation information services would include information about registrant’s transportation services.
On balance, because the marks are highly similar and the services are closely related, consumer confusion is likely.
Accordingly, registration is refused under Trademark Act Section 2(d).
Requirement: Clarification of Goods and Services
As to International Class 009:
The following are examples of acceptable identifications for software in International Class 9: “downloadable mobile applications for managing bank accounts,” “downloadable desktop publishing software,” “downloadable tax preparation software.”
Computer software is a product classified in International Class 9 if it is (1) recorded on media (such as CDs) or (2) downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis. TMEP §1402.03(d). However, on-line non-downloadable software is considered a computer service in International Class 42, unless it is non-downloadable game software provided online or for temporary use, which is classified in International Class 41. See TMEP §§1402.03(d), 1402.11(a)(xii).
For example, the following are acceptable identifications for software in International Class 9: “desktop publishing software,” “downloadable software for word processing,” and “downloadable mobile applications for managing bank accounts.” Additionally, the following are acceptable identifications for software in International Class 42: “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.” Finally, the following are acceptable identifications for non-downloadable game software in International Class 41: “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.” For assistance with software classification and identifications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.
Applicant may adopt the following wording, if accurate:
Downloadable software applications for {indicate the function and, if applicable, the field}; Downloadable software for {indicate the function and, if applicable, the field}; Downloadable computer software for controlling and managing access server applications; Downloadable computer software to control self-service terminals
As to International Class 012:
Acceptable
As to International Class 035:
Acceptable
As to International Class 039:
Acceptable
As to International Class 042:
The wording “Providing online, non-downloadable software” in the identification of services is indefinite and must be clarified because applicant must specify the function and, if applicable, the field of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: Developing of driver and operating system software; Software design and development; Design and development of software in the field of mobile applications; Providing online, non-downloadable software for {indicate the function and, if applicable, the field}; Software as a Service (SaaS) services, namely, providing non-downloadable software in the field of vehicle sharing and use of vehicles
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.
TEAS Guidelines:
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
/Justine D. Parker/
Justine D. Parker
Trademark Examining Attorney
Law Office 101
(571) 272-2488
justine.parker@uspto.gov
RESPONSE GUIDANCE
