To: | Equiniti (US) Holdings, Inc. (kaufman@kaufmankahn.com) |
Subject: | U.S. Trademark Application Serial No. 88403604 - AXIOM - N/A |
Sent: | July 08, 2019 12:21:09 PM |
Sent As: | ecom117@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88403604
Mark: AXIOM
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Correspondence Address: |
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Applicant: Equiniti (US) Holdings, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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
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 mark in U.S. Registration No. 5712064. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
The applicant has applied to register the mark AXIOM in standard characters for “Business management and business consultancy services in the form of proxy solicitation services, namely, management and processing of shareholder voting; business management and business consultancy services in the form of proxy solicitation services, namely, management and processing of proxy votes and disclosure of proxy votes; business management and business consultancy services in the form of proxy solicitation services, namely commercial lobbying services in the interests of promoting the interests of companies, their boards of directors and shareholders; business management and business consultancy services in the form of proxy solicitation services, namely, providing strategic analysis, advice and information relating to shareholder voting patterns and habits; business management and business consultancy services in the form of proxy solicitation services, namely, provision of strategic analysis and advice relating to shareholder participation in meetings and conferences; provision of market and shareholder intelligence services, namely, analysing and interpreting information relating to shareholder activity; market and shareholder intelligence services, namely, analysing, identifying, monitoring and verifying activity amongst company shareholder bases; providing business analysis and information relating to shareholder base activity by peer group comparison and benchmarking; provision of business information in relation to proxy voting; consultancy and advisory services relating to all the aforesaid services; AND Provision of financial information in the form of company debt reports; financial information in the form of identifying ownership and distribution of company financial equity represented by shareholdings, securities and debt.”
The registered mark is the identical wording AXIOM with design for “Business consultation services, namely, business process improvement and enterprise architecture design; Providing business management information in connection with consulting and advisory services in the field of strategic planning; Professional staffing and recruiting services.”
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or servi ces, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Comparison of the Marks
Here, the wording AXIOM appears in both of the marks and is the only wording in the marks. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Comparison of the Goods/Services
When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or 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 identifications set forth in the application and registration(s) both include business consulting services and information. The parties have no restrictions as to nature, type, channels of trade, or classes of purchasers it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or 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 goods/services are related for purposes of the likelihood of confusion analysis.
Since the marks are identical in part and the goods/services are closely related, there is a likelihood of confusion and registration must be refused.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
QUESTIONS
If applicant has particular questions regarding any of the issues set forth in this Office action, applicant may telephone or email the assigned trademark examining attorney. For technical assistance responding to this Office Action, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.
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
/Morgan L. Meyers/
Trademark Attorney
U.S. Patent and Trademark Office
Law Office 117
Direct: 571-272-8290
morgan.meyers@uspto.gov
RESPONSE GUIDANCE