To: | Canfly Trading (endorphinservices@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88449226 - AMAZOOM - N/A |
Sent: | August 23, 2019 12:42:44 PM |
Sent As: | ecom106@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88449226
Mark: AMAZOOM
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Correspondence Address: |
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Applicant: Canfly Trading
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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: August 23, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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
Applicant has applied to register the mark AMAZOOM (in standard characters) for “Provide a list of services to support sellers on public market places; Analyzing and compiling sales data from public market places for market research purposes, determining demand and profitability; Provide advertising consultancy and recommendations and show selling products profitability and pricing information” in International Class 35.
The mark in U.S. Registration No. 4479852 is AMAZON STUDIOS (in standard characters) for, in relevant part, “advertising services, namely, promoting the goods and services of others; providing a searchable on-line business database featuring on-line non-downloadable multimedia presentations in the field of business and advertising and audio files featuring business information, advertising information, and market research information; market research and market research information services; compiling of information into computer databases; market research and business marketing information services, namely, facilitating the exchange of needed information for financial compensation in the field of entertainment and the entertainment industry via the Internet; providing a website featuring reviews of products in the nature of audio, video and audiovisual content for commercial purposes posted by users” in International Class 35. The mark in U.S. Registration No. 4907371 is AMAZON (in standard characters) for, in relevant part, “Marketing consulting services in the field of promotions, promotional sweepstakes and promotional contests; business consulting in the field of promotions, sweepstakes and contests offered for commercial purposes; hosting online promotions, sweepstakes and contests for others, namely, promoting the sale of goods and services of others by means of online contests” in International Class 35. The mark in U.S. Registration No. 5320135 is AMAZON DASH (in standard characters) for, in relevant part, “advertising, marketing, and promotion services; advertising and marketing services, namely, promoting the goods and services of others; providing consumer product information for the purpose of selecting general consumer merchandise to meet the consumer's specifications” in International Class 35. The mark in U.S. Registration No. 5508999 is AMAZON and design for, in relevant part, “compilation of business information into searchable computer databases available via a global computer network; providing an on-line commercial information directory on the Internet; Business intermediary services for the sale and purchase of goods and services, namely, facilitating transactions between buyers and sellers through providing buyers with information about sellers, goods, and/or services; Business information services; Providing a searchable database in the field of business information available via a global computer network; Database management services; Computer services, namely, providing online directories for contact information for people, places, and organizations; online searchable database services to enable others to conveniently view local home services providers from a website; Information services, namely, providing information about retail products to customers; Online business and commercial information services; online business information services, namely, analyzing an individual's preferences and providing product reviews and recommendations; compiling of information into computer databases; business information management, namely, electronic reporting of business information; business data analytics services regarding the sale of products and services of others, and regarding the authenticating, processing and management of mobile payments; preparation of business reports; preparing business and financial reports for others regarding the sale of products and services of others; business information management, namely, electronic reporting of business analytics relating to payment processing, authentication and tracking; electronic processing of orders for others” in International Class 35. The mark in U.S. Registration No. 5829969 is AMAZON and design for, in relevant part, “Data processing; data management; collection of data; computerized database and file management; compilation and systemization of data into computer databases; compilation and systemization of information into computer databases; data searches in computerized files for others” in International Class 35.
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 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 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.
Similarity 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).
Applicant has applied to register the mark AMAZOOM in standard characters.
The mark in U.S. Registration No. 4479852 is AMAZON STUDIOS in standard characters. The mark in U.S. Registration No. 4907371 is AMAZON, also in standard characters. The mark in U.S. Registration No. 5320135 is AMAZON DASH in standard characters. The mark in U.S. Registration No. 5508999 is AMAZON and arrow design. The mark in U.S. Registration No. 5829969 is AMAZON and webcam design.
It should first be noted that when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Here, it is the wording in U.S. Registration Nos. 5508999 & 5829969 that is dominant over the design elements. Not only is wording in general dominant over designs, but certain wording can be considered more dominant than others. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). The first term in U.S. Registration Nos. 4479852 & 5320135 is “AMAZON”; thus, this word is more dominant than the others for purposes of analysis.
With regard to the wording, 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). In the present case, the marks are all identical in part, in that they all share the first five letters, and are very similar in that “AMAZOOM” and “AMAZON” are essentially only two letters different, and creates a similar commercial impression.
Thus, the marks are identical in part, and highly similar in terms of connotation and overall commercial impression.
Similarity of the Services
Applicant has identified “Provide a list of services to support sellers on public market places; Analyzing and compiling sales data from public market places for market research purposes, determining demand and profitability; Provide advertising consultancy and recommendations and show selling products profitability and pricing information” in International Class 35.
The mark in U.S. Registration No. 4479852 is for “advertising services, namely, promoting the goods and services of others; providing a searchable on-line business database featuring on-line non-downloadable multimedia presentations in the field of business and advertising and audio files featuring business information, advertising information, and market research information; market research and market research information services; compiling of information into computer databases; market research and business marketing information services, namely, facilitating the exchange of needed information for financial compensation in the field of entertainment and the entertainment industry via the Internet; providing a website featuring reviews of products in the nature of audio, video and audiovisual content for commercial purposes posted by users” in International Class 35. The mark in U.S. Registration No. 4907371 is for “Marketing consulting services in the field of promotions, promotional sweepstakes and promotional contests; business consulting in the field of promotions, sweepstakes and contests offered for commercial purposes; hosting online promotions, sweepstakes and contests for others, namely, promoting the sale of goods and services of others by means of online contests” in International Class 35. The mark in U.S. Registration No. 5320135 is for “advertising, marketing, and promotion services; advertising and marketing services, namely, promoting the goods and services of others; providing consumer product information for the purpose of selecting general consumer merchandise to meet the consumer's specifications” in International Class 35. The mark in U.S. Registration No. 5508999 is for “compilation of business information into searchable computer databases available via a global computer network; providing an on-line commercial information directory on the Internet; Business intermediary services for the sale and purchase of goods and services, namely, facilitating transactions between buyers and sellers through providing buyers with information about sellers, goods, and/or services; Business information services; Providing a searchable database in the field of business information available via a global computer network; Database management services; Computer services, namely, providing online directories for contact information for people, places, and organizations; online searchable database services to enable others to conveniently view local home services providers from a website; Information services, namely, providing information about retail products to customers; Online business and commercial information services; online business information services, namely, analyzing an individual's preferences and providing product reviews and recommendations; compiling of information into computer databases; business information management, namely, electronic reporting of business information; business data analytics services regarding the sale of products and services of others, and regarding the authenticating, processing and management of mobile payments; preparation of business reports; preparing business and financial reports for others regarding the sale of products and services of others; business information management, namely, electronic reporting of business analytics relating to payment processing, authentication and tracking; electronic processing of orders for others” in International Class 35. The mark in U.S. Registration No. 5829969 is for “Data processing; data management; collection of data; computerized database and file management; compilation and systemization of data into computer databases; compilation and systemization of information into computer databases; data searches in computerized files for others” in International Class 35.
In this case, the identifications use broad wording to describe marketing, data analysis and compilation, and providing information, which presumably encompasses all services of the type described, including applicant’s more narrow services. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s services are related.
Summary
In sum, applicant’s mark is identical in part and highly similar in connotation and overall commercial impression to each of the registered marks. In addition, applicant’s services are similar to the services identified in the registrations. Thus, it is likely consumers will mistakenly believe the services emanate from the same source. The overriding concern is not only to prevent buyer confusion as to the source of the services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.
IDENTIFICATION & CLASSIFICATION OF SERVICES
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers
guidance and/or shows the changes being proposed for the identification of services. If there is wording in the applicant’s version of the identification of services
which should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in
standard font, not in bold, in italics, underlined and/or in ALL CAPS.
Applicant may adopt the following identification, if accurate:
International Class 35: Provide a WEBSITE FEATURING A list of ____________ {specify type of services provided, e.g., retail store} services to support sellers on public market places; Analyzing and compiling BUSINESS sales
data from public market places for market research purposes, determining demand and profitability; Provide advertising consultancy and recommendations OF _______________ {specify
what is being recommended, e.g., products and services to consumers for commercial purposes} and show selling PROVIDING CONSUMER INFORMATION
RELATING TO ____________ {specify type of products, e.g., pet} products profitability and pricing information
International Class 42: PROVIDING A WEBSITE FEATURING A LIST OF ____________ {specify type of services provided, e.g., IT} SERVICES TO SUPPORT SELLERS ON PUBLIC MARKET PLACES
For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
U.S. ATTORNEY REQUIRED
Applicant must be represented by a U.S.-licensed attorney. The application record indicates that applicant’s domicile is outside of the United States in Canada, but no attorney who is an active member in good standing of the bar of the highest court of a U.S. State or territory has been appointed to represent the applicant in this matter. All applicants whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO. 37 C.F.R. §§2.2(o), 2.11(a). Thus, applicant is required to be represented by a U.S.-licensed attorney and must appoint one. 37 C.F.R. §2.11(a). This application will not proceed to registration without such appointment and representation. See id. See Hiring a U.S.-licensed trademark attorney for more information.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted. Alternatively, if applicant has already retained an attorney, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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
Cameron McBride
/Cameron McBride/
Examining Attorney - Trademarks
Law Office 106
(571) 272-0542
Cameron.McBride@uspto.gov/Cameron McBride/
Examining Attorney - Trademarks
Law Office 106
(571) 272-0542
Cameron.McBride@uspto.gov
RESPONSE GUIDANCE