Offc Action Outgoing

WAM

First Capitol Consulting, Inc.

U.S. Trademark Application Serial No. 88438656 - WAM - WAM

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

 

 

 

 

Correspondence Address: 

Joanna Kim

FIRST CAPITOL CONSULTING, INC.

3530 WILSHIRE BLVD., SUITE 1460

LOS ANGELES CA 90010

 

 

 

Applicant:  First Capitol Consulting, Inc.

 

 

 

Reference/Docket No. WAM

 

Correspondence Email Address: 

 jkim-brunetti@trusaic.com

 

 

 

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.

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 4903432.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

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.”

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.

COMPARSION 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 this case, applicant’s mark and the registered mark are identical, namely, WAM.

COMPARISON OF THE SERVICES

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

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

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

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

  • Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

 

 

U.S. Trademark Application Serial No. 88438656 - WAM - WAM

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)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 08, 2020 for

U.S. Trademark Application Serial No. 88438656

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

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

 

 

Ervin, Inga

/Inga Ervin/

Trademark Examining Attorney

Law Office 111

United States Patent & Trademark Office

571-272-9379

571-273-937

 

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).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 08, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

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.”

 

 

 


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