To: | First Capitol Consulting, Inc. (jkim-brunetti@trusaic.com) |
Subject: | U.S. Trademark Application Serial No. 88438656 - WAM - WAM |
Sent: | January 08, 2020 10:46:37 AM |
Sent As: | ecom111@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88438656
Mark: WAM
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Correspondence Address: FIRST CAPITOL CONSULTING, INC. 3530 WILSHIRE BLVD., SUITE 1460
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Applicant: First Capitol Consulting, Inc.
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Reference/Docket No. WAM
Correspondence Email Address: |
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FINAL OFFICE ACTION
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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: January 08, 2020
This Office action is in response to applicant’s communication filed on December 3, 2019.
Applicant applied to register the mark WAM for, “Business consulting, management, and planning services in the field of TAX, HUMAN RESOURCES, BUSINESS INTELLIGENCE AND DATA ANALYTICS.”
The registered mark is also WAM for, among other things, “Advertising services; business management; business administration; providing office functions; retail store services and online retail store services and import and export agency services, all in the fields of watches, stop watches, watchstraps, jewelry, precious metals and their alloys, cufflinks, tie pins, rings, bracelets, earrings, necklaces, ornamental pins, key rings, watch boxes of precious metals and jewelry boxes, straps for bags, bags, handbags, wallets and purses, all of leather or imitation leather, animal skins, trunks and traveling bags, umbrellas, parasols and walking sticks, garment bags for travel, briefcases, toiletry bags sold empty, clothing, footwear, headgear and belts; the bringing together, for the benefit of others, of a variety of goods excluding the transport thereof, enabling customers to conveniently view and purchase those goods in the field of watches, stop watches, watchstraps, jewelry, precious metals and their alloys, cufflinks, tie pins, rings, bracelets, earrings, necklaces, ornamental pins, key rings, watch boxes of precious metals, jewelry boxes, leather or imitation leather straps for bags, bags, handbags, wallets and purses, animal skins, trunks and traveling bags, umbrellas, parasols, walking sticks, garment bags for travel, briefcases, toiletry bags sold empty, clothing, footwear, headgear and belts; the bringing together of consumers and manufacturers of clothing, footwear, headgear and bags made of leather and imitations of leather for commercial purposes via the Internet; systematization of data into computer databases for business purposes; organization of trade fairs for commercial or advertising purposes; franchising services, namely, offering business management assistance in the establishment and/or operation of retail stores in the field of watches, stop watches, watchstraps, jewelry, precious metals and their alloys, cufflinks, tie pins, rings, bracelets, earrings, necklaces, ornamental pins, key rings, watch boxes of precious metals and jewelry boxes, and in the field of straps for bags, bags, handbags, wallets and purses, all of leather or imitation leather, animal skins, trunks and traveling bags, umbrellas, parasols and walking sticks, garment bags for travel, briefcases, toiletry bags sold empty, clothing, footwear, headgear and belts; information and consultancy relating to the aforesaid services; all the aforesaid services provided via computer and communication networks.”
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.
COMPARSION OF THE MARKS
In this case, applicant’s mark and the registered mark are identical, namely, WAM.
COMPARISON OF THE SERVICES
In this case, applicant’s services and the registrant’s services are identical, namely, “business management.” Accordingly, consumers encountering the services of the parties would mistakenly believe the services originate from a common source.
Applicant has argued that the registrant’s services are not identical to its services. In support of this argument, applicant states that the registrant’s “description of goods and services does not cover ‘business management’ in toto. Rather, the Prior Registration narrows coverage of ‘business management’ to that ‘in the field of’ various retail merchandise, e.g. watches, jewelry, bags, wallets, clothing, umbrellas, footwear, headgear, and the like.”
This argument is not persuasive. A look at the Prior Registration shows the wording “business management” is enclosed by itself within semi colons (;).
As such, it means that the general services of “business management” are being offered by the registrant. Accordingly, the registrant could provide business management in the field of tax (like
applicant), or in the field of music, or in the field of retail services. Therefore, a likelihood of confusion does in fact exist in this case, because the registrant has not limited its “business
management” services to something other than applicant’s business management in the field of tax, human resources, business intelligence and data analytics. Consequently, consumers encountering the
services of the parties would mistakenly believe the services originate from a common source.
Registration is therefore refused and made FINAL under Section 2d.
Telephone for Clarification Recommended
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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Inga Ervin/
Trademark Examining Attorney
Law Office 111
United States Patent & Trademark Office
571-272-9379
571-273-9379(fax)
Inga.Ervin@uspto.gov
RESPONSE GUIDANCE