Suspension Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  January 08, 2020

 

 

The application is suspended for the reason(s) specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The pending application(s) below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application(s) below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark(s). 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application(s) below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application(s) below was sent previously.

 

            - U.S. Application Serial No(s). 79259817

 

Requirement resolved: 

 

•           Requirement for an Acceptable Identification of Goods/Services

 

Refusal(s) and/or requirement(s) maintained and continued: 

 

•           Refusal under Trademark Act Section 2(d) –Likelihood of Confusion

 

•           Potential Refusal under Trademark Act Section 2(d)

 

See TMEP §713.02.

 

These refusal(s) and/or requirement(s) will be made final once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark was refused because of a likelihood of confusion with the marks in:

 

 

 

1. U.S. Registration No. 5093295: A.I.D.A. for “Electronic transmission of invoices; telecommunications and electronic data transmission, in particular the transmission of data, images and documents between and via computer terminals and computer networks, as well as via the Internet; providing access to data in computer databases and computer networks and on the Internet; delivery of messages by electronic transmission”
2. U.S. Registration No. 5404874: AIDA for “educational services, namely, providing courses of instruction in the field of insurance and data analytics and providing on-line courses of instruction containing content in the field of insurance and data analytics”
3. U.S. Registration No. 3140905: AIDA CRUISES (disclaimer of CRUISES) for “education, namely, providing training services in the fields of tourism, geography, travel, nautical practice, tennis, golf, biking, diving, dancing and cooking”

 

 

Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.

 

A consumer encountering the mark AIDA in connection with applicant’s educational goods/services and telecommunication services will incorrectly believe that the goods/services originate from the same source as each registrant’s A.I.D.A., AIDA, and AIDA CRUISES educational and telecommunication services.  As a result, because of the confusingly similar marks and closely related and potentially identical goods/services, registration is refused under Trademark Act Section 2(d). 

 

Applicant’s arguments have been considered but found unpersuasive. Clearly applicant’s “telecommunications, namely, sending messages” is identical to registrant’s “delivery of messages by electronic transmission.” Applicant’s amended identification for the subject matter of “the primary, secondary, undergraduate, graduate, vocational and professional development levels” is still broad enough to encompass the identical subject matters of the registered marks’ educational services. For example, “courses of instruction in the field of insurance and data analytics” is within the scope of educational services at the “graduate, vocational and professional development levels” and “dancing” and “geography” and “cooking” could be taught at “the primary, secondary, undergraduate, graduate, vocational” levels. Applicant has not limited its subject matters to a narrower field such as “medicine” or “law.” As such, applicant’s goods/services encompass or are closely related to each registrant’s services.

 

Applicant has submitted printed or electronic copies of third-party registrations and applications for marks containing the wording AIDASS and AYDE and AIDO and A.I.D.E. and AIDE UNIVERSITY to support the argument that the wording AIDA is weak, diluted, or so widely used that it should not be afforded a broad scope of protection.  These registrations do not feature the same wording and thus do not support applicant’s arguments against the refusal.

 

The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar services.  See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  Evidence of widespread third-party use of similar marks with similar services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field.  Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003). 

 

However, evidence comprising only a small number of third-party registrations for similar marks with similar services, or as in the present case only slightly similar in that the first three letters AID are featured in the marks, is generally entitled to little weight in determining the strength of a mark.  See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973).  These few registrations are “not evidence of what happens in the market place or that customers are familiar with them.”  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018).  Thus, the few similar third-party registrations submitted by applicant are insufficient to establish that the wording AIDA is weak or diluted. 

 

Further, evidence comprising third-party registrations for similar marks with different or unrelated services, as in the present case, has “no bearing on the strength of the term in the context relevant to this case.”  See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751).  Thus, these third-party registrations submitted by applicant are insufficient to establish that the wording AIDA is weak or diluted. 

 

Third-party applications are evidence only that the applications were filed; they are not evidence of use of the mark.  In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); see In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009); TBMP §1208.02; TMEP §710.03.

 

Even if applicant’s argument that the wording AIDA is weak in the general marketplace, the Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that marks deemed “weak” or merely descriptive are still entitled to protection under Section 2(d) against the registration by a subsequent user of a similar mark for closely related services.  TMEP §1207.01(b)(ix); see King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010).  Thus, this protection under Section 2(d) extends to marks registered on the Supplemental Register.  TMEP §1207.01(b)(ix); see, e.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1743 (TTAB 2016) (citing Towers v. Advent Software, Inc., 913 F.2d 942, 946, 16 USPQ2d 1039, 1042 (Fed. Cir. 1990); In re Research & Trademark Corp., 793 F.2d 1276, 1278, 230 USPQ 49, 49 (Fed. Cir. 1986); In re Clorox Co., 578 F.2d 305, 307-08, 198 USPQ 337, 340 (C.C.P.A. 1978)).

 

Applicant argues that the parties’ consumers are sophisticated but does not provide any evidence to support this contention. In any event, the fact that purchasers are sophisticated or knowledgeable in a particular field 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).

 

Even if consumers of the compared services could be considered sophisticated and discriminating, it is settled that “even sophisticated purchasers are not immune from source confusion, especially in cases such as the present one involving identical marks and related goods [and/or services].”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015) (citing In re Research & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); see also In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  The identity of the marks and the relatedness of the goods and/or services “outweigh any presumed sophisticated purchasing decision.”  In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014). 

 

Applicant has not provided any convincing arguments or competent evidence to support its arguments against the refusal and thus the refusal is maintained and continued.

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

/Ms. Tasneem Hussain/

Trademark Examining Attorney

Law Office 130

tasneem.hussain@uspto.gov (preferred)

571.272.8273

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 08, 2020 for

U.S. Trademark Application Serial No. 88400918

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

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

 

/Ms. Tasneem Hussain/

Trademark Examining Attorney

Law Office 130

tasneem.hussain@uspto.gov (preferred)

571.272.8273

 

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).

 

 

 

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.”