To: | Upgrade Technologies, Inc. (trademarks@fenwick.com) |
Subject: | U.S. Trademark Application Serial No. 88533217 - SESH - 35634-00070 |
Sent: | October 16, 2019 11:48:26 AM |
Sent As: | ecom104@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 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88533217
Mark: SESH
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Correspondence Address: |
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Applicant: Upgrade Technologies, Inc.
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Reference/Docket No. 35634-00070
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: October 16, 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.
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4824061. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
The applicant’s mark is SESH in standard characters for:
CLASS 09: Downloadable software in the nature of a mobile application for accessing classes, seminars, conferences, webinars, tutorials, and workshops in the fields of professional training, education, and skill development; downloadable electronic books in the fields of professional training, education, and skill development
CLASS 16: Educational publications, namely, books, handouts, and workbooks in the fields of professional training, education, and skill development
CLASS 41: Educational services, namely, developing, arranging and conducting classes, seminars, conferences, webinars, tutorials, and workshops in the fields of professional training, education and skill development and distribution of course and educational materials in connection therewith; providing information and training materials in the fields of professional training, education and skill development; providing a website featuring educational information in the fields of professional training, education and skill development; providing online non-downloadable electronic books in the fields of professional training, education, and skill development
CLASS 42: Providing a website featuring non-downloadable software for accessing classes, seminars, conferences, webinars, tutorials, and workshops in the fields of professional training, education, and skill development
The registrant’s mark is SESH in standard characters for “Teaching, training, tutoring and courses of instruction at the undergraduate, graduate and post-graduate level.”
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.
Similarity of the Marks
In the present case, applicant’s mark is SESH in standard characters and registrant’s mark is SESH 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.
Relatedness of the Goods and/or Services
The applicant’s and registrant’s goods and services are related because the services of both parties include educational services. Further, the applicant's broadly identified subject matter of “professional training, education, and skill development” encompass the registrant’s more narrowly identified education services “at the undergraduate, graduate and post-graduate level.” Further, the applicant’s educational materials are the type that are commonly provided in connection with educational services.
Applicant should note the following additional ground for refusal.
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant has applied to register the mark SESH in standard characters for use in connection with:
CLASS 09: Downloadable software in the nature of a mobile application for accessing classes, seminars, conferences, webinars, tutorials, and workshops in the fields of professional training, education, and skill development; electronic apparatus, namely, electronic display screens; downloadable software for wirelessly connecting electronic display screens to computers, and for managing on-device memory, connection ports, SIM card connectivity, cloud storage access, and connectivity from third party software and applications; downloadable electronic books in the fields of professional training, education, and skill development; downloadable software for artificial intelligence video analysis
CLASS 16: Dry erase, magnetic writing surfaces; illuminated, dry erase, magnetic writing surfaces; dry erase markers; educational publications, namely, books, handouts, and workbooks in the fields of professional training, education, and skill development
CLASS 28: Games and playthings; board games
CLASS 41: Educational services, namely, developing, arranging and conducting classes, seminars, conferences, webinars, tutorials, and workshops in the fields of professional training, education and skill development and distribution of course and educational materials in connection therewith; providing information and training materials in the fields of professional training, education and skill development; providing a website featuring educational information in the fields of professional training, education and skill development; providing online non-downloadable electronic books in the fields of professional training, education, and skill development
CLASS 42: Providing a website featuring non-downloadable software for accessing classes, seminars, conferences, webinars, tutorials, and workshops in the fields of professional training, education, and skill development; providing online non-downloadable software for artificial intelligence video analysis
The wording SESH is slang for “session” or “the time in which classes are held.” Since applicant’s goods and services related to educational classes, the wording SESH is merely descriptive of a feature of applicant’s goods and services.
Accordingly, the proposed mark is refused under Trademark Act Section 2(e)(1). Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
The following is an amended version of applicant’s identification of goods and/or services that complies with the above-mentioned clarification requirements, with additions and
alterations in bold type. The italicized wording includes additional guidance and suggestions and the wording appearing with a strikethrough should be deleted.
Applicant may adopt the following identification of goods and/or services, if accurate:
CLASS 09 is definite
CLASS 16: Dry erase, magnetic writing surfaces; illuminated, dry erase, magnetic writing surfaces; dry erase markers; educational publications, namely, books, handouts, and workbooks in the fields of professional {specify subject matter, e.g., computer} training, education, and skill development
CLASS 28: Games and playthings, namely, {indicate specific items, e.g., card games}; board games
CLASS 41: Educational services, namely, developing, arranging and conducting classes, seminars, conferences, webinars, tutorials, and workshops in the fields of professional {specify subject matter, e.g., computer} training, education and skill development and distribution of course and educational materials in connection therewith; providing information and training materials in the fields of professional {specify subject matter, e.g., computer} training, education and skill development; providing a website featuring educational information in the fields of professional {specify subject matter, e.g., computer} training, education and skill development; providing online non-downloadable electronic books in the fields of professional {specify subject matter, e.g., computer} training, education, and skill development
CLASS 42 is definite
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.
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.
CONTACT INFORMATION
How to respond. Click to file a response to this nonfinal Office action
/Christine Martin/
Examining Attorney
Law Office 104
571-272-1630
christine.martin@uspto.gov
RESPONSE GUIDANCE