To: | Common Networks, Inc. (jgard@btlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88532456 - COMMON - 77434-PEND1 |
Sent: | November 13, 2019 04:34:59 PM |
Sent As: | ecom122@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88532456
Mark: COMMON
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Correspondence Address:
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Applicant: Common Networks, Inc.
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Reference/Docket No. 77434-PEND1
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: November 13, 2019
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising these issues.
Applicant must address all issues raised in this Office action.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Section 2(d) Refusal – Likelihood of Confusion
• NEW ISSUE: Prior Pending Application
Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
The applied-for mark is COMMON in standard characters, for “internet service provider (ISP)” in International Class 38.
The mark in Reg. No. 2816089 is CL COMMON-LINK in a stylized format, for “providing multiple user dial-up and dedicated access to the Internet” in International Class 38.
The mark in Reg. No. 3875052 is COMMONPLACE in standard characters, for “transmission of multimedia data among users of computers and mobile devices, over fixed lines such as cable, or wirelessly” in International Class 38.
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).
Reg. No. 2816089 (CL COMMON-LINK)
The applied-for mark is COMMON in standard characters.
The registered mark is CL COMMON-LINK in a stylized format.
In the present case, the marks are identical in part because the entirety of the applicant’s mark, COMMON, is encompassed in the registrant’s mark, CL COMMON-LINK. Despite the CL in the registrant’s mark, it merely reiterates the wording “COMMON-LINK”. Further, the Merriam-Webster Dictionary defines LINK as “a unit in a communication system” (see http://www.merriam-webster.com/dictionary/link). Registrant’s services consist of providing communication via an Internet system, suggesting that LINK is suggestive of the services. The dominant element is thus COMMON, which is essentially identical to the applicant’s mark.
This similarity in appearance between the marks creates the same overall commercial impression in the mind of the average purchaser. The marks are thus considered similar for the purposes of likelihood of confusion.
Reg. No. 3875052 (COMMONPLACE)
The applied-for mark is COMMON in standard characters.
The registrant’s mark is COMMONPLACE in standard characters.
Here, the overall meaning of both COMMON and COMMONPLACE is essentially the same. Specifically, COMMON is defined by the Merriam-Webster Dictionary as “occurring or appearing frequently; familiar” (see http://www.merriam-webster.com/dictionary/common) and COMMONPLACE is defined as “commonly found or seen; ordinary” (see http://www.merriam-webster.com/dictionary/commonplace). The meanings of the applicant and registrant’s marks are nearly the same, which creates the same overall commercial impression in the average purchaser’s mind. The marks are thus confusingly similar.
Similarity of the Services
The applied-for services are “internet service provider (ISP)” in International Class 38.
The services for the mark in Reg. No. 2816089 are “providing multiple user dial-up and dedicated access to the Internet” in International Class 38.
The services for the mark in Reg. No. 3875052 are “transmission of multimedia data among users of computers and mobile devices, over fixed lines such as cable, or wirelessly” in International Class 38.
Based on the foregoing, registration for the applied-for mark is refused under Section 2(d) of the Trademark Act.
PRIOR PENDING APPLICATION
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 mark in the referenced application. 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.
RESPONSE GUIDELINES
Response guidelines. For this application to proceed, applicant must explicitly address each refusal 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. 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
/Harini Ganesh/
Harini Ganesh
Trademark Examining Attorney
Law Office 122
571-272-5128
harini.ganesh@uspto.gov
RESPONSE GUIDANCE