Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  August 26, 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.

 

Summary of Issues:

• Section 2(d) Refusal – Likelihood of Confusion – Limited
• Identification of Services Requirement
• Multiple-Class Application Requirements
• Attorney Bar Information and Attestation Requirement
• Response Guidelines

 

Section 2(d) Refusal – Likelihood of Confusion – Limited

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4947648.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Applicant’s mark is SIMPLEX, in standard characters, for relevant use on:

 

Class 45: Consulting services in the commercial motor vehicle and transportation industry for obtaining permits and licensing for commercial motor vehicle drivers and/or motor carriers and tax services, including transportation fuel tax and other local, state and federal taxes, concerning the transportation industry

 

The registered mark in U.S. Registration No. 4947648 is SIMPLEX, in standard characters, for use on:

 

Class 42: Providing temporary use of on-line non-downloadable cloud computing software for managing tax, legal and accounting information for audit and regulatory compliance purposes

 

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 services and differences in the marks.”); TMEP §1207.01.

 

Comparing 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 a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is SIMPLEX and registrant’s mark is SIMPLEX.  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective services.  Id.

 

Therefore, the marks are confusingly similar. 

 

Comparing the Services

 

The services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared 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 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 is broadly worded and includes “tax services, including transportation fuel tax and other local, state and federal taxes, concerning the transportation industry.”  Registrant’s services include the provision of online software for “managing tax, legal and accounting information for audit and regulatory compliance purposes.”  The attached Internet evidence, consisting of screenshots from the Chortek, Weber Clark, and Smith Schafer websites, establishes that the same entity commonly provides the relevant services and markets the services under the same mark, and that the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

Therefore, because the marks are similar and the services are closely related, applicant’s mark is not entitled to registration.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Identification of Services Requirement

 

The identification for business educational services is indefinite because it does not indicate the type of educational service provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, applicant could be providing seminars on a particular topic, analyzing educational test scores and data for others, or providing educational testing. 

 

Applicant must specify the nature of the educational service being provided.  If applicant is providing classes or similar group learning activities, the identification must specify (1) the form of the activity (e.g., classes, seminars, workshops) and (2) the subject matter or field (e.g., retirement benefits, nutrition, business management). 

 

Applicant must clarify the wording “Consulting in the field of commercial trucking and transportation with respect to safety and loss control for the purpose of compliance with federal, state and local government agency or entity rules regulations, ordinances and other laws applicable to the commercial motor vehicle and transportation industry, including U.S. Department of Transportation (DOT) and Federal Motor Carrier Safety Administration (FMCSA) rules and regulations; Safety inspection audits related to truck driver and motor carrier safety, review and update of commercial motor vehicle driver safety programs, and illness and injury prevention planning for the purpose of compliance with federal, state and local government agency or entity rules regulations, ordinances and other laws applicable to the commercial motor vehicle and transportation industry, including U.S. Department of Transportation (DOT) and Federal Motor Carrier Safety Administration (FMCSA) rules and regulations; Consulting services in the commercial motor vehicle and transportation industry for obtaining permits and licensing for commercial motor vehicle drivers and/or motor carriers and tax services, including transportation fuel tax and other local, state and federal taxes, concerning the transportation industry” in the identification of services in International Class 45 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the specific consultation, safety, and tax services are.  For example, as worded, it is unclear whether applicant is providing consultation services for obtaining tax services, or if applicant is providing a separate tax service concerning the tax industry.  Further, this wording could identify services in more than one international class.  For example, safety audit services are in Class 42 because they involve technical analysis and evaluation of potential risks and safeguards implemented to mitigate those risks, whereas safety consultation and inspection services of a specific location or for equipment are in Class 45 as they identify potential hazards in a specific location or item and minimize risk to the physical safety of persons on that location or using that item.

 

Consulting services are classified according to the subject matter of the consulting service; for example, “business management consultancy” is classified in International Class 35 and “computer technology consultancy” is classified in International Class 42.  TMEP §1402.11(e).  Accordingly, applicant’s consultation with respect to loss control is classified in Class 36 because it is an insurance consulting service, even if it is provided to the transportation industry.    

 

Applicant may adopt the following identification, if accurate: 

 

Class 35: Tax consultation services in the field of transportation fuel tax and other local, state and federal taxes, concerning the transportation industry 

 

Class 36: Insurance consulting about loss control in the field of commercial trucking and transportation for the purpose of compliance with federal, state and local government agency or entity rules regulations, ordinances and other laws applicable to the commercial motor vehicle and transportation industry, including U.S. Department of Transportation (DOT) and Federal Motor Carrier Safety Administration (FMCSA) rules and regulations

 

Class 39: Commercial transportation consulting services 

 

Class 41:  Business educational and training services, namely, conducting courses in the field of commercial transportation for the purpose of compliance with federal, state and local government agency or entity rules, regulations, ordinances and other laws applicable to the commercial motor vehicle and transportation industry, including U.S. Department of Transportation (DOT) and Federal Motor Carrier Safety Administration (FMCSA) rules and regulations, pertaining to topics of supervisor, employee and driver training, onsite group and individual training, online safety training, drug testing and driver awareness training 

 

Class 42: Safety auditing to improve safety of truck drivers and motor carriers on trucking routes

 

Class 45:  Consulting in the field of commercial trucking and transportation with respect to safety and loss control for the purpose of compliance with federal, state and local government agency or entity rules regulations, ordinances and other laws applicable to the commercial motor vehicle and transportation industry, including U.S. Department of Transportation (DOT) and Federal Motor Carrier Safety Administration (FMCSA) rules and regulations; Safety inspection services for truck driver and motor carrier equipment, safety consultation services in the nature of review and update of commercial motor vehicle driver safety programs, and safety consultation services in the nature of illness and injury prevention planning for the purpose of compliance with federal, state and local government agency or entity rules regulations, ordinances and other laws applicable to the commercial motor vehicle and transportation industry, including U.S. Department of Transportation (DOT) and Federal Motor Carrier Safety Administration (FMCSA) rules and regulations; Consulting services in the commercial motor vehicle and transportation industry for obtaining permits and licensing for commercial motor vehicle drivers and motor carriers

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and 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

 

The application references services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies services based on use in commerce that are classified in at least 6 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es).  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for Classes 39, 41, and 45.  See more information about specimens.

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Attorney Bar Information and Attestation Requirement

 

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

Attorney attestation required.  Applicant’s attorney must provide the following statement:  “I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

 

Response Guidelines

 

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 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  

 

 

/Elizabeth Shen/

Trademark Examining Attorney

Pronouns: she, her, hers

Law Office 121

571-270-7111

elizabeth.shen@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.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 26, 2019 for

U.S. Trademark Application Serial No. 88458742

 

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. 

 

 

/Elizabeth Shen/

Trademark Examining Attorney

Pronouns: she, her, hers

Law Office 121

571-270-7111

elizabeth.shen@uspto.gov

 

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 August 26, 2019, 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.”