United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88482187
Mark: IRIS
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Correspondence Address: DAVIS, MALM & D'AGOSTINE, P.C.
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Applicant: The Trustee of Eaton Vance Management
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Reference/Docket No. 1216116
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 11, 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.
Summary of Refusals and/or Requirements
The following is a summary of the requirements and/or refusals outlined below to which the applicant must respond.
n Likelihood of confusion refusal
n Explain any industry meaning
n Advisory concerning earlier filed, potentially conflicting applications
LIKELIHOOD OF CONFUSION REFUSAL
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.
The Marks at Issue
The applicant seeks to register IRIS for: Online media monitoring services using computer software to automatically monitor internet websites and online publications for customer-specified topics and to capture relevant content on those topics, and providing documentation and analysis of that online content to others for business purposes.
The registered mark is IRIS for the following services, in pertinent part: Advertising and promotion services; marketing services; market research services; Advertising and promotion services and information services relating thereto; business information services namely, providing information on business opportunities, advertising and marketing opportunities, analysis of markets, business research, market research, reports and studies; all provided on-line from a computer database or the Internet; Consultation services in the field of advertising and marketing materials, promotional and public relation material; Business support services relating to … advertising and marketing materials, promotional and public relation materials, namely, arranging and conducting marketing promotional events for others, advertising and promotion services and related consulting, business consultation and management regarding marketing activities and launching of new products, business marketing consulting services, creating and updating advertising material
The Marks are Identical
The Services are Closely Related
The applicant’s services involve the use of software to monitor websites and online publications for “customer-specified topics” and to capture relevant content, document and analysis it, for business purposes. The registrant’s advertising and marketing-related services, market research and business information services are broad enough to encompass information, analysis and content obtained via monitoring. Therefore, the services are closely related, and complementary, under Section 2(d).
The examining attorney has attached sample websites that promote and discuss media monitoring tools and services used for marketing and market research purposes. See http://www.brandwatch.com/blog/top-social-media-monitoring-tools/, http://mention.com/en/ and http://econsultancy.com/using-social-media-monitoring-for-market-research/.
Therefore, registration is refused under Section 2(d) of the Trademark Act.
Advisory Concerning Earlier Filed, Potentially Conflicting 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.
MEANING
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
/Elissa Garber Kon/
Examining Attorney, Law Office 106
phone: 571-272-9181
email: elissagarber.kon@uspto.gov
RESPONSE GUIDANCE