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 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: October 02, 2019
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.
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.
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark
in U.S. Registration No. 3062349. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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 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).
Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is
likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d
1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a
registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re
Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the
registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark. In particular, applicant, in forming its mark
SERVE, has simply deleted the modifier FAST from registrant’s mark FAST SERVE.
COMPARISON OF GOODS/SERVICES
The goods and/or 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).
In the present case, applicant’s downloadable software for allowing users to interact, perform and process payment and ecommerce transactions in
International Class 9 and registrant’s computer programs for ordering retail goods are related in that applicant’s goods are described broadly enough to encompass registrant’s more narrowly defined
goods. In addition, applicant’s computerized ordering services in International Class 35 and registrant’s goods are related in that they are complementary in nature and because they otherwise
comprise the types of goods and services which frequently emanate from a common source. In the latter regard, see the enclosed representative sample of third-party registrations whose identifications
include both applicant’s services and registrant’s goods, as described above.
Based on the similarity between applicant’s and registrant’s marks and the relatedness of their goods/services, as described above, a likelihood of confusion
as to the source of these goods/services must be deemed to exist.
If applicant responds to the refusal, applicant must also respond to the
requirements set forth below.
IDENTIFICATION OF GOODS
The identification of goods is indefinite and must be clarified because it does
not sufficiently identify certain of applicant’s computer software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may
adopt the following identification, if accurate: Downloadable computer software and downloadable mobile application software for coordinating transportation and
delivery services, for the arrangement and booking of transportation and delivery services, for allowing users to interact, perform and process payment and ecommerce transactions; downloadable computer software for coordinating transportation, freight and delivery services by autonomous delivery robots; downloadable computer software for
electronic message alerts and notifications for transportation and delivery services by autonomous delivery robots.
IDENTIFICATION OF SERVICES
The identification of services in International Class 35 is indefinite and must
be clarified because it does not sufficiently identify the nature of applicant’s monitoring, managing and tracking services, transportation management services, ordering services and information
services, and includes services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant
may adopt the following identification, if accurate: monitoring, managing, and tracking of transportation of persons and delivery of goods and packages in transit,
for non-regulatory business purposes; transportation logistics management services for others, namely, planning, coordinating, and tracking the
transportation and delivery of goods and packages; on-line computerized consumer goods, food and grocery ordering and delivery services; on-line
ordering and delivery service featuring consumer goods, food, and groceries; providing a website featuring information about transportation and delivery logistics management services, namely, planning, coordinating, and tracking the transportation and delivery of goods and packages; providing a website featuring information in the fields
of consumer-to-business commerce and business-to-business commerce via a web-based portal; business consulting services in the field of transportation and delivery logistics of
goods and packages, in International Class 35; delivery of goods, food and groceries, in International Class 39.
The identification of services in International Class 39 is indefinite and must
be clarified because it does not sufficiently identify the nature of applicant’s information, monitoring, managing and tracking services, and includes services in more than one international class.
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following identification, if accurate: transport and delivery of goods; shipping and delivery services, namely, pickup, transportation, and delivery of goods by autonomous delivery robots; transportation and delivery services, namely, monitoring, managing, and tracking of transportation and delivery of goods and packages; monitoring, managing,
and tracking of conveyances in transit; providing a website featuring information regarding transportation and delivery services and bookings for transportation and delivery services;
providing information concerning collection, tracking and delivery of goods in transit; providing a website featuring information regarding transportation services and
bookings for transportation services; Providing a website with information about transportation, logistics and delivery services, bookings for transportation, logistics and delivery services, and International Class 39; transportation and delivery services, namely, monitoring, managing, and tracking of transportation and delivery of
goods and packages for non-regulatory business purposes; monitoring, managing, and tracking of conveyances in transit for non-regulatory business purposes;
providing information concerning tracking the delivery of goods in transit; Providing a website with information about logistics services, in International Class
35.
The identification of services in International Class 42 is indefinite and must
be clarified because it does not sufficiently identify the functionality of certain of applicant’s non-downloadable software. See 37 C.F.R. §2.32(a)(6); TMEP
§1402.01. Applicant may adopt the following identification, if accurate: Providing temporary use of online non-downloadable
software for providing transportation services {indicate functionality of software in connection with providing transportation services}, bookings for transportation and
delivery services and dispatching deliveries to customers; Providing a website featuring non-downloadable software for coordinating, obtaining and booking transportation, freight, logistics and
delivery services; software as a service (SAAS) services featuring software for coordinating, booking and obtaining transportation, freight, logistics and delivery services; providing temporary use
of non-downloadable software for arranging, procuring, scheduling, engaging, coordinating, managing, and booking transportation and deliveries; providing temporary use of online non-downloadable
software for receiving and responding to requests for transportation and delivery; providing temporary use of online non-downloadable software for coordinating transportation and delivery services,
bookings for transportation services and for dispatching autonomous delivery robots to customers; providing temporary use of online non-downloadable software for providing transportation and delivery
services {indicate functionality of software in connection with providing transportation and delivery services}, bookings for transportation services and for dispatching
autonomous delivery robots to customers; providing temporary use of online non-downloadable real-time map software for tracking deliveries.
Applicant’s goods and/or services may be clarified or limited, but may not be
expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not
substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is
generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any
acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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.
RESPONSE TO OFFICE ACTION
If applicant does not respond to this Office action
within the six-month period for response, the following goods and services in International Classes 9, 35, 39 and 42 will be deleted from the application: Downloadable computer software and downloadable mobile application software for allowing users to interact,
perform and process payment and ecommerce transactions; computer software for coordinating transportation, freight and delivery services by autonomous delivery robots; computer software for
electronic message alerts and notifications for transportation and delivery services by autonomous delivery robots, in International Class 9; monitoring, managing, and tracking of transportation of
persons and delivery of goods and packages in transit, for business purposes; transportation management services for others, namely, planning, coordinating, and tracking the transportation and
delivery of goods and packages; computerized consumer goods, food and grocery ordering services; on-line ordering service featuring consumer goods, food, and groceries; providing a website featuring
information about transportation and delivery management services, namely, planning, coordinating, and tracking the transportation and delivery of goods and packages; business consulting services in
the field of transportation and delivery of goods and packages, in International Class 35; transportation and delivery services, namely, monitoring, managing, and tracking of transportation and
delivery of goods and packages; monitoring, managing, and tracking of conveyances in transit, in International Class 39; Providing temporary use of online non-downloadable software for providing
transportation services; providing temporary use of online non-downloadable software for providing transportation and delivery services, in International Class 42. The application will then proceed with the remaining goods and services only. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
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.
How to respond. Click to file a response to this nonfinal Office action
/Barney L. Charlon/
Trademark Examining Attorney
Law Office 104
(571) 272-9141
(571) 272-9104 (fax)
barney.charlon@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.
