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:  September 04, 2019

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue 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 – Partial to Goods Services Listed
• Identification of Goods and Services Requirement
• Intent to Perfect Advisory

 

SECTION 2(d) 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 outlined below.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

The registered marks are identified below:

 

Mark Info	Relevant Services in Registration	Relevant Services in Application
AFFINITY Reg. Nos. 2729756 and 2705052 AFFINITY GLOBAL, INC.	Class 42: Computer services, namely, application service provider services in the nature of hosting the software applications of others over the internet; web hosting services; domain name registration services	Class 42: consulting in the field of website hosting and support; hosting the websites of others; design, development, maintenance, updating and modification of web sites for others; monitoring the web sites of others to improve scalability and performance of web sites of others; hosting of digital content, namely, personal profiles and social networking information; hosting a website enabling the posting of information by members in online web logs in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing an on-line computer database featuring information regarding the design and development of computer software, hardware and peripherals
AFFINITY Reg. No. 4954045 Gabriels Technology Solutions	Class 42: Designing, creating, hosting, and maintaining websites for use by real estate brokers and agents for advertising their services and listing real estate for sale	Class 42: creating web pages for others used in the provision of online services; design and development of websites for others used to conduct on-line forums; consulting in the field of website design, development, maintenance, updating, modification, installation and monitoring the performance, availability and errors of the websites of others; consulting in the field of website hosting and support; hosting the websites of others; design, development, maintenance, updating and modification of web sites for others; monitoring the web sites of others to improve scalability and performance of web sites of others; installation of software used to create websites; hosting of digital content, namely, personal profiles and social networking information; providing temporary use of on-line non-downloadable software for desktop publishing, website design
AFINITI Reg. Nos. 4908889 and 4964594 AFINITI, INC.	Class 42: providing temporary use of on-line non-downloadable computer telephony software	Class 38: online and transmission services, namely, providing e-mail services, transmission of voice, audio, visual images and data by telecommunications networks, wireless communications networks, the Internet, information services networks and data networks
AFFINITY Reg. No. 5764031 RotoLab	Class 41: Educational services, namely, developing curriculum for others in the field of design, construction, manufacturing, operation and use of buildings and products relating to collaboration, innovation and informal learning; educational services, namely, conducting classes, seminars, educational conferences and workshops in the field of collaboration, innovation and informal learning systems	Class 41: arranging and conducting online meetings and interactive seminars in the field of graphic design, multimedia manipulation and sharing
AFFINITY4 Reg. Nos. 3855528 and 3862608 Amerivision Communications, Inc.	Class 38: Internet telephony provided to retail customers; telecommunications services, namely, providing long distance, local, and wireless telecommunications and Internet access and cable television services to retail customers	Class 38: online and transmission services, namely, providing e-mail services, transmission of voice, audio, visual images and data by telecommunications networks, wireless communications networks, the Internet, information services networks and data networks
AFFINITY X Reg. No. 5295919 Affinity Express, Inc.	Class 42: Graphic design services for website pages and logos; Providing a website featuring on-line non-downloadable software that enables users to perform workflow management for advertising and marketing campaigns	Class 41: on-line journals, namely, blogs featuring computer software, hardware and peripherals, graphic design; providing on-line magazines, books, manuals, scrapbooks and catalogues in the fields of graphic design   Class 42: computer graphics design services; graphic art design; design and graphic arts design for the creation of websites and web pages on the Internet; rendering of computer graphics (digital imaging services)
AFFINITY X Reg.  No. 4814664 Affinity Express, Inc.	Class 42: Providing a website featuring on-line non-downloadable software that enables users to perform workflow management for advertising and marketing campaigns; graphic design services for website pages and logos	Class 41: on-line journals, namely, blogs featuring computer software, hardware and peripherals, graphic design; providing on-line magazines, books, manuals, scrapbooks and catalogues in the fields of graphic design   Class 42: computer graphics design services; graphic art design; design and graphic arts design for the creation of websites and web pages on the Internet; rendering of computer graphics (digital imaging services)
AFFINITY EXPRESS Reg. No. 4759468 Affinity Express, Inc.	Class 42: Providing a website featuring on-line non-downloadable software that enables users to perform workflow management for advertising and marketing campaigns; graphic design services for website pages and logos	Class 41: on-line journals, namely, blogs featuring computer software, hardware and peripherals, graphic design; providing on-line magazines, books, manuals, scrapbooks and catalogues in the fields of graphic design   Class 42: computer graphics design services; graphic art design; design and graphic arts design for the creation of websites and web pages on the Internet; rendering of computer graphics (digital imaging services)
AVFINITY Reg. Nos. 3574696 and 3585391	Class 38: Electronic data communications and transmissions services for the aviation industry, namely, the transmission of mission critical messages for others; Providing operational electronic store and forward messaging services for others, namely, transmission of flight data communications between air transportation companies and services and destinations including government agencies; Electronic transmission of data featuring encryption and decryption	Class 38: online and transmission services, namely, providing e-mail services, transmission of voice, audio, visual images and data by telecommunications networks, wireless communications networks, the Internet, information services networks and data 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 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).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

Although some of the registered marks appears in stylized form and with a design element, applicant’s mark appears in standard characters and therefore could appear in a similar manner. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

Applicant’s mark is AFFINITY and a number of the registered marks are for AFFINITY.  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.

 

The applicant’s mark, AFFINITY, creates a similar overall commercial impression to the cited registered marks, AFFINITI, because the marks appear similar and are phonetically equivalent. The marks are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

The applicant’s mark, AFFINITY, creates a similar overall commercial impression to the cited registered marks, AFFINITY4, AFFINITY X, AFFINITY EXPRESS, and AVFINITY, because the entirety of the applicant’s mark appears in the registered mark and therefore the applicant’s mark could appear to be a shortened version of these registered marks.

 

Therefore, the marks are confusingly similar. 

 

Relatedness of 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).

 

Determining likelihood of confusion is based on the description of the goods and/or 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 the case of registered marks AFFINITY with Registration Nos. 2729756 and 2705052, the registration uses broad wording to describe “web hosting services”, which presumably encompasses all services of the type described, including applicant’s more narrow “hosting the websites of others; hosting of digital content, namely, personal profiles and social networking information; hosting a website enabling the posting of information by members in online web logs in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking”.  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)).

 

In the case of registered mark AFFINITY with Registration No. 4954045, the application uses broad wording to describe “creating web pages for others used in the provision of online services; design and development of websites for others used to conduct on-line forums; hosting the websites of others; design, development, maintenance, updating and modification of web sites for others”, which presumably encompasses all services of the type described, including registrant’s more narrow “hosting the websites of others; design, development, maintenance, updating and modification of web sites for others”.  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)).

 

In the case of registered mark AFFINITY with Registration No. 5764031, the registration uses broad wording to describe “Educational services, namely, developing curriculum for others in the field of design”, which presumably encompasses all services of the type described, including applicant’s more narrow “arranging and conducting online meetings and interactive seminars in the field of graphic design, multimedia manipulation and sharing”.  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)).

 

In the case of registered marks AFFINITY4 with Reg. Nos. 3855528 and 3862608, the registration uses broad wording to describe “telecommunications services, namely, providing long distance, local, and wireless telecommunications and Internet access and cable television services to retail customers”, which presumably encompasses all services of the type described, including applicant’s more narrow “online and transmission services, namely, transmission of voice, audio, visual images and data by telecommunications networks, wireless communications networks, the Internet, information services networks and data networks”.  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)).

 

In the case of registered marks AFFINITY X with Reg. Nos. 5295919 and 4814664 and AFFINITY EXPRESS with Reg. No. 4759468, the registration uses broad wording to describe “Graphic design services for website pages and logos”, which presumably encompasses all services of the type described, including applicant’s more narrow “computer graphics design services; computer aided graphic design; graphic art design; design and graphic arts design for the creation of websites and web pages on the Internet; rendering of computer graphics (digital imaging 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)).

 

In the case of registered marks AVFINITY with Reg. Nos. 3574696 and 3585391, the application uses broad wording to describe “online and transmission services, namely, transmission of voice, audio, visual images and data by telecommunications networks, wireless communications networks, the Internet, information services networks and data networks”, which presumably encompasses all services of the type described, including registrant’s more narrow “Electronic data communications and transmissions services for the aviation industry, namely, the transmission of mission critical messages for others; Providing operational electronic store and forward messaging services for others, namely, transmission of flight data communications between air transportation companies and services and destinations including government agencies; Electronic transmission of data featuring encryption and decryption”.  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.

 

Further, 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 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 the case of registered marks AFFINITY X with Reg. Nos. 5295919 and 4814664 and AFFINITY EXPRESS with Reg. No. 4759468, the attached Internet evidence, consisting of third party sites—Main Street Host, 99 designs, and Design Pickle— establishes that the same entity commonly provides graphic design services and blogs featuring graphic design information, and markets the services under the same mark.  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).

 

For these reasons, consumers are likely to encounter the parties’ services in the same market channels.  Given the strong similarities between the key elements of the parties’ marks, consumers encountering the marks in the same commercial contexts are likely to confuse the marks and mistake the underlying sources of related services provided under the marks.  Accordingly, registration is refused under Trademark Act Section 2(d).

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the goods and/or services to which the refusal pertains;

 

(2)  Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

 

(3)  Amending the basis for the goods and/or services identified in the refusal, if appropriate.  TMEP §806.03(h).  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

If applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

IDENTIFICATION AND CLASSIFICAITON OF GOODS AND SERVICES REQUIREMENT

 

Applicant must clarify the some of the wording in the identification of goods and services in International Classes 16, 35, 41, 42, and 45 because it is either indefinite or overbroad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

Further, some of the services are classified incorrectly.  Applicant must amend the application to classify the services as discussed below.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Lastly, applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

The applicant insufficiently describes the following goods in Class 16:

• The wording “graphic reproductions” is indefinite because it does not specify the nature of the reproductions, such as, graphic art reproductions.

 

The applicant insufficiently describes the following services in Class 35:

• The wording “Providing an on-line directory information service featuring information regarding social networking, classified ads, general interest, scrapbooking, graphic design and multimedia manipulation and sharing” is indefinite because it does not solely specify subject matter in Class 35.

 

The applicant insufficiently describes the following services in Class 38:

• The wording “online and transmission services, namely, providing e-mail services” is indefinite because it does not solely specify the nature of the email services, such as, electronic transmission of secure e-mail.

 

The applicant insufficiently describes the following services in Class 41:

• The wording “Teaching, training, education and instructional services, namely, on-line courses in the fields of computer software and hardware” is indefinite because it does not specify the nature of the services as being provided.
• The wording “providing an on-line computer database featuring information regarding how to use computer software, hardware and peripherals; providing an on-line computer database featuring educational information regarding how to scrapbook; providing an on-line computer database featuring educational information regarding graphic design, multimedia manipulation and sharing” is misclassified as these are informational services that should be classified according to subject matter in Class 42.
• The wording “providing on-line magazines, books, manuals, scrapbooks and catalogues in the fields of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing online scrapbooks featuring user-defined text and images” is indefinite because it does not specify the nature of the publications as non-downloadable.

 

The applicant insufficiently describes the following services in Class 42:

• The wording “hosting of digital content, namely, personal profiles and social networking information” is indefinite because it does not specify the nature of the services as being provided on the Internet.
• The wording “providing an interactive website enabling users to create, manipulate and share multimedia scrapbooks, information, comments and user-generated multimedia content” is indefinite because it does not specify that it is a website featuring technology allowing users to perform these function as required in Class 42.
• The wording “rendering of computer graphics (digital imaging services)” improperly uses parentheticals when this wording should be included in the body of the text.
• The wording “software as a service featuring software platforms for graphic design” is indefinite because it does not specify the nature of the services as such.

 

Applicant may substitute the following wording, if accurate: 

 

Class 16: Printed publications, namely, magazines and newsletters featuring articles and news in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; manuals, catalogues, books, teaching and instructional materials in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; graphic art reproductions; stationery, photo albums, scrapbooks, greeting cards, note cards, and calendars

 

Class 35: Providing an on-line directory information service featuring information regarding social networking, classified ads, general interest, scrapbooking, graphic design and multimedia manipulation and sharing; providing an on-line computer database featuring classified advertisements; advertising by transmission of on-line publicity for third parties through electronic communications networks; graphic advertising; promoting the goods and services of others over the Internet; electronic retail store services featuring computer software, images, multimedia files, digital accessories and scrapbooking materials

 

Class 38: Providing online communications links which transfer the web site user to other local and global web pages; internet access provider services; online and transmission services, namely, providing e-mail services being electronic transmission of secure e-mail, transmission of voice, audio, visual images and data by telecommunications networks, wireless communications networks, the Internet, information services networks and data networks; on-line document delivery via a global computer network; providing access to databases featuring information regarding computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking, magazines, books, manuals and catalogues; providing online chat rooms and electronic bulletin boards for transmission of messages among users in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing on-line forums for transmission of messages among computer users in the fields of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; electronic transmission of images, photographs, graphic images and illustrations over a global computer network

 

Class 41: Teaching, training, education and instructional services, namely, providing on-line courses in the fields of computer software and hardware; arranging and conducting courses, conferences, seminars and educational presentations relating to computer software and hardware; electronic publishing of works of others incorporating user-created text, audio or images on-line featuring computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; on-line journals, namely, blogs featuring computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing non-downloadable, on-line newsletters in the fields of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing an on-line computer database featuring information regarding how to use computer software, hardware and peripherals; providing an on-line computer database featuring information regarding how to set up and use and online scrapbook; providing an on-line computer database featuring educational information regarding how to scrapbook; providing an on-line computer database featuring educational information regarding graphic design, multimedia manipulation and sharing; providing on-line information in the field of current event news and entertainment via the Internet; providing on-line non-downloadable magazines, books, manuals, scrapbooks and catalogues in the fields of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing online scrapbooks featuring user-defined text and images; arranging and conducting online meetings and interactive seminars in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking

 

Class 42: Advisory services and consultancy relating to computer software; computer software design, development, configuration, maintenance, installation and updating; computer graphics design services; design of graphics software systems; technical support services, namely, troubleshooting of computer software problems; creating web pages for others used in the provision of online services; design and development of websites for others used to conduct on-line forums; providing temporary use of online, non-downloadable software for use for graphic design, image manipulation, desktop publishing and printing; design and development of computer hardware; consulting in the field of website design, development, maintenance, updating, modification, installation and monitoring the performance, availability and errors of the websites of others; consulting in the field of website hosting and support; hosting the websites of others; design, development, maintenance, updating and modification of web sites for others; monitoring the web sites of others to improve scalability and performance of web sites of others; installation of software used to create websites; computer aided graphic design; graphic art design; hosting of digital content on the internet, namely, personal profiles and social networking information; providing an interactive website featuring technology that allows users to create, manipulate and share multimedia scrapbooks, information, comments and user-generated multimedia content; providing temporary use of online, non-downloadable software for use for graphic design, multi-media manipulation, scrapbook applications, social networking, uploading, storing, posting, blogging and sharing of communication or information; providing temporary use of online, non-downloadable software that enables users to share multimedia scrapbooks and other user-generated multimedia content with third parties via a global computer network; providing temporary use of on-line non-downloadable software for desktop publishing, word processing, printing, graphics, images, fonts and font management, typesetting, document management and manipulation, presentation delivery, image editing, media and photo management, drawing, animation, graphics, website design, digital video and audio editing; hosting a website enabling the posting of information by members in online web logs in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing an on-line computer database featuring information regarding the design and development of computer software, hardware and peripherals; design and graphic arts design for the creation of websites and web pages on the Internet; rendering of computer graphics being electronic imaging services; software as a service services featuring software platforms for graphic design; providing an on-line computer database featuring information regarding how to use computer software, hardware and peripherals; providing an on-line computer database featuring educational information regarding graphic design, multimedia manipulation and sharing

 

Applicant may amend the identification to clarify or limit the goods and 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.

 

INTENT TO PERFECT ADVISORY

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided.  See 15 U.S.C. §1126(d), (e). 

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(a).

 

If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).  

 

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 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  

 

 

/Alexandra El-Bayeh/

Trademark Examining Attorney

Law Office 124

(571) 270-5911

alexandra.el-bayeh@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 September 04, 2019 for

U.S. Trademark Application Serial No. 88470053

 

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. 

 

 

/Alexandra El-Bayeh/

Trademark Examining Attorney

Law Office 124

(571) 270-5911

alexandra.el-bayeh@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 September 04, 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.”