To: | Kriegner, Herta (herta@uber-inc.com) |
Subject: | U.S. Trademark Application Serial No. 88465110 - UBER - N/A |
Sent: | September 12, 2019 07:55:42 PM |
Sent As: | ecom125@uspto.gov |
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United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88465110
Mark: UBER
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Correspondence Address: 231 WEST 29TH STREET, SUITE 906
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Applicant: Kriegner, Herta
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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: September 12, 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.
Advisory: Potential Section 2(d) Refusal – Pending Applications
The filing dates of pending U.S. Application Serial Nos. 88192913, 88169887, 88298815, 88018308, 88243029, 88083093, 88328871, 88083500, 87256010, 87430754, 87445745 and 87195689 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant should note the following ground(s) for refusal.
Section 2(d) Partial Refusal – Likelihood of Confusion
THIS PARTIAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN.
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4627257 and 4635354. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s applied-for mark is UBER in standard characters for, in relevant part, “Industrial and graphic art design; Multidisciplinary graphic design services; Providing graphic design services to create specialty interior environment settings.”
Registrant’s marks are:
· Reg. No. 4627257: UBER in standard characters for services including “industrial design”; and
· Reg. No. 4635354: UBER and design for services including “industrial design.”
The same entity owns both cited registrations.
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.
Comparison 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).
As it pertains to Reg. No. 4627257, applicant’s mark is UBER in standard characters and registrant’s mark is UBER in standard characters. 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 goods and/or services. Id. Therefore, the marks are confusingly similar.
Further, 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).
As it pertains to Reg. No. 4635354, the only wording in applicant’s applied-for mark and registrant’s mark is the shared wording UBER. This shared wording creates a substantially similar overall commercial impression in the compared marks.
For the following reason, the design element of registrant’s mark is insufficient to overcome a likelihood of confusion. 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 goods and/or 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)).
Based on the foregoing, the applicant’s applied-for mark and registrant’s marks are sufficiently similar to find a likelihood of confusion.
Comparison of the Services
Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the application uses broad wording to describe “Industrial and graphic art design; Multidisciplinary graphic design services,” which presumably encompasses all services of the type described, including registrant’s more narrow “industrial design.” Additionally, the registration uses broad wording to describe “industrial design,” which presumably encompasses all services of the type described, including applicant’s more narrow “Providing graphic design services to create specialty interior environment settings.” 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.
Because applicant’s and registrant’s marks are similar and the services are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Trademark Act.
Classification and Identification of Services
Applicant has classified “Design and development of promotional and PR material” and “Design, development, and consulting services related thereto in the field of advertising, marketing” in International Class 42; however, the proper classification is International Class 35. Therefore, applicant may respond by (1) reclassifying these services in the proper international class, or (2) deleting “Design and development of promotional and PR material” and “Design, development, and consulting services related thereto in the field of advertising, marketing” from the application. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.
Further, applicant must clarify the meaning of the acronym “PR” appearing in the identification of services for International Class 42.
The wording “Designing material for online and social media campaigns” in the identification of services for International Class 42 is indefinite and must be clarified because it does not make clear the nature or type of materials being designed, or the nature of the design services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. This wording is also too broad and could include services in other international classes. For instance, the design of advertising materials is classified in Class 35, and graphic design of promotional materials is classified in class 42.
The wording “Graphic illustration and drawing services, namely, logos, infographics and charts” in the identification of services for International Class 42 is indefinite and must be clarified because it does not make clear what the services are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Consulting in the field of designing a brand” and “Consulting in the field of corporate identity and branding design” in the identification of services for International Class 42 is indefinite and must be clarified because it does not make clear what the services are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Additionally, it appears the services may be misclassified. Corporate identity services, for instance, are classified in Class 35.
The wording “Consulting services in the field of the design of events, promotions, PR campaigns, displays, packaging and printed materials” and “Custom design and development of printed material, packaging, electronic marketing materials, online advertising and websites” in the identification of services for International Class 42 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. For instance, this wording could encompass consulting services in the field of designing printed materials in the nature of advertising and marketing materials, and custom design and development of printed material in the nature of advertising and marketing materials in Class 35, as well as consulting services in the field of the design of packaging, and custom design and development of packaging in Class 42. This wording must also be clarified to make clear what the services are.
Applicant may substitute the following wording, if accurate:
Class 035: Brand concept and brand development services for corporate and individual clients; Brand concept and brand development services for corporate clients; Brand evaluation services; Brand imagery consulting services; Brand positioning services; Branding services, namely, consulting, development, management and marketing of brands for businesses and/or individuals; Consultation services, namely, creative and strategic consultation regarding development and production of marketing campaigns for others; Business consulting services, namely, providing assistance in development of business strategies and creative ideation; Concept and brand development services for corporate clients; Development of marketing strategies and concepts; Event planning and management for marketing, branding, promoting or advertising the goods and services of others; Marketing and branding services, namely, providing customized communication programs to obtain consumer insights and develop branding strategies; Preparation and realization of media and advertising plans and concepts; Social media strategy and marketing consultancy focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutions; Design and development of promotional and public relations material; Design, development, and consulting services related thereto in the field of advertising and marketing; Designing material for online and social media campaigns, namely, {clarify the nature of the services in Class 35, e.g. designing advertising materials}; Consulting in the field of designing a brand, namely, brand concept and brand development services for corporate clients; Consulting in the field of creating corporate identity and brand identity for others; Consulting services in the field of special event planning for commercial and promotional purposes; Consulting services in the field of organizing public relations campaigns; Consulting services in the field of designing printed materials, namely, advertising and marketing materials; Custom design and development of printed material in the nature of advertising and marketing materials, electronic marketing materials and online advertising materials
Class 042: Design of information graphics and data visualization materials; Design services for packaging; Designing of packaging and wrapping materials; Designing theme graphics and multimedia shows for conventions, product launches, trade shows, key note addresses and award ceremonies for others; Designing material for online and social media campaigns, namely, {clarify the nature of the services in Class 42, e.g. graphic design of promotional materials}; Graphic design; Graphic design services; Graphic design services for business to business advertising, marketing and promotional material; Graphic arts design; Graphic arts designing; Graphic illustration and drawing services, namely, custom design of logos, infographics and charts for others; Packaging design; Packaging design for others; Computer graphics design services; Computer graphics design services, namely, creating of print production files and electronic files; Computer aided graphic design; Consulting services in the field of the design of display showcases and packaging; Custom design and development of packaging and websites; Industrial and graphic art design; Multidisciplinary graphic design services; Providing graphic design services to create specialty interior environment settings; Providing graphic and multimedia design services for the purpose of promoting the goods and services of others
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.
Request for Information and U.S. Licensed Attorney
Applicant must either provide documentation to support applicant’s domicile address or appoint a U.S. licensed attorney. All applications must include the applicant’s domicile address, and domicile dictates whether an applicant is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent the applicant at the USPTO. 37 C.F.R. §§2.2(o)-(p), 2.11(a), 2.189, 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019).
An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(p); Examination Guide 4-19, at I.A. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14. 37 C.F.R. §2.11(a).
The application record lists applicant as an individual of Austria and specifies a U.S. street address as applicant’s domicile. It is unclear from the record whether the U.S. street address provided is the place applicant resides and intends to be applicant’s principal home. If the U.S. street address of record is not applicant’s correct domicile address, applicant must provide the applicant’s correct domicile street address. See 37 C.F.R. §§2.11(b), 2.61(b), 2.189.
If applicant amends the application to list a domicile address outside of the United States or its territories, or if applicant elects not to provide documentation to support its U.S. street address as explained below, applicant must appoint a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. See Hiring a U.S.-licensed trademark attorney for more information. If applicant provides documentation to support its U.S. street address, the requirement to appoint a U.S.-licensed attorney will be withdrawn. Alternatively, if applicant appoints a U.S.-licensed attorney, the requirement for documentation will be withdrawn.
If the street address of record is applicant’s correct domicile address or if applicant provides a different U.S. street address as the applicant’s domicile address, and applicant elects not to appoint a U.S.-licensed attorney as its representative, then applicant must provide the following documentation to support its U.S. street address. See 37 C.F.R. §§2.11(b), 2.61(b), 2.189; Examination Guide 4-19 (Rev.) at I.A.2. Specifically, applicant must provide documentation showing the name and listed domicile address of the individual, for example one of the following:
(1) a current, valid signed rental, lease, or mortgage agreement; or (2) a current valid homeowner’s, renter’s, or motor vehicle insurance policy; or (3) a computer-generated bill issued by a utility company dated within 60 days of the application filing date.
Examination Guide 4-19, at I.A.2; see 37 C.F.R. §§2.11(b), 2.61(b), 2.189.
Submitted documentation must show the name, listed address, and the date of the document but should redact other personal and financial information.
To appoint a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, 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).
To provide documentation supporting applicant’s domicile. Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the U.S. street address.
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
/Leslie Ann Thomas-Riggs/
Leslie Ann Thomas-Riggs
Trademark Examining Attorney
USPTO, Law Office 125
(571) 272-5469
leslie.thomas-riggs@uspto.gov
RESPONSE GUIDANCE