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:  November 22, 2019

 

 The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Likelihood of confusion refusal
• Requirement for clarification of the identification of services

 

 

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. 5250138.  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 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.

 

Registrant owns the mark ACOUSTICSELLING. Applicant has proposed the mark ACOUSTIC.

 

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.

 

The marks create a highly similar commercial impression.

 

Registrant uses the mark for “Consulting in the field of sales methods, sales management, and sales improvement” and “Business training in the field of leadership development; business training in the field of successful sales, telephone marketing and business promotion through telephone marketing techniques; business training in the field of executive coaching.”

 

Applicant intends to use the mark for “Marketing and business data analytics services for businesses, namely campaign management, analytics, digital advertising, email marketing, mobile marketing, content management, personalization, pricing, and payments; Marketing and business data analysis solutions in the fields of market trends and actions; collection, reporting, and integration of data related to the use of digital marketing channels and the effectiveness of marketing campaigns; online tracking of customer digital footprint for marketing purposes; business monitoring and consulting services, namely, tracking digital marketing channels and websites of others to provide strategy and insight into future marketing campaigns; advertising, promotion and marketing services in the nature of e-mail and social media campaigns;” “Broadcast communication services, namely, transmitting e-mails and short message services (SMS), including text messages and telephone voice messages, to designated recipients for others; Electronic transmission of messages for marketing and personalized campaign content for others; Telecommunication services, namely, providing email and SMS notification alerts via the internet and analyzing responses in the field of business and marketing;” and “Software as a Service (SaaS) services featuring software for campaign automation, namely, campaign development, customer segmentation and testing, campaign deployment, and results reporting and analysis; Software as a Service (SaaS) services featuring analytics software used to track websites and mobile sites and provide related metrics, analytics, feedback, recommendations, strategy, insight, and predictions; Software as a Service (SaaS) services featuring software used to manage promotions and product markdowns, determine pricing strategies, and provide statistical reporting and analysis; Software as a Service (SaaS) services featuring software used to manage content assets, namely, images and video, and provide statistical reporting and analysis; Software as a Service (SaaS) services featuring software used to personalize marketing campaigns and websites, and provide statistical reporting and analysis.”

 

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).

 

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 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).

 

The attached Internet evidence, consisting of excerpts from third party websites showing that the same sources offer analytics and sales consulting services, establishes that the same entity commonly provides the relevant services and markets the services under the same mark, that the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and that the services are similar or complementary in terms of purpose or function. See attached evidence from www.trianz.com, www.bain.com, and www.mckinsey.com. 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).

 

The services are closely related.

 

When confronted with closely related services bearing highly similar marks, a consumer is likely to have the mistaken belief that the services originate from the same source. Because this likelihood of confusion exists, registration must be refused.

 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

 

PRIOR PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 87903678 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.

 

 

However, applicant must address the following issues.

 

 

IDENTIFICATION OF SERVICES

 

The wording in the identification of services needs clarification because it is too broad and could include services classified in other international classes.  See TMEP §§1402.01, 1402.03.

 

In Class 35, applicant must clarify the wording “Marketing and business data analytics services for businesses, namely campaign management, analytics, digital advertising, email marketing, mobile marketing, content management, personalization, pricing, and payments” because the wording “campaign management, digital advertising, email marketing, mobile marketing, content management, personalization, pricing, and payments” appears to identify the field of the services rather than types of analysis services. Applicant must clarify the nature of its marketing and business data analysis solutions because the wording “solution” is too broad and encompasses technology services in Class 42. Applicant must further specify the type of data related to the use of digital marketing channels and the effectiveness of marketing campaigns applicant collects, reports, and integrates. Applicant must also clarify the nature of its online tracking of customer digital footprint for marketing purposes.

 

In Class 38, applicant must clarify the wording “Broadcast communication services, namely, transmitting e-mails and short message services (SMS), including text messages and telephone voice messages, to designated recipients for others” because it appears that applicant’s services are for transmitting short messages rather than transmitting short message services. Applicant must clarify the wording “telecommunication services, namely, providing email and SMS notification alerts via the internet and analyzing responses in the field of business and marketing” because the wording “analyzing responses in the field of business and marketing” is too broad and does not appear to identify services in Class 38.

 

Applicant may adopt the following wording, if accurate:

 

“Marketing and business data analytics services for businesses in the field of campaign management, digital advertising, email marketing, mobile marketing, content management, personalization, pricing, and payments; Marketing and business data analysis services in the fields of market trends and actions; collection, reporting, and integration of business data related to the use of digital marketing channels and the effectiveness of marketing campaigns; marketing services, namely, conducting consumer tracking behavior research and consumer trend analysis via online tracking of customer digital footprint for marketing purposes; business monitoring and consulting services, namely, tracking digital marketing channels and websites of others to provide strategy and insight into future marketing campaigns; advertising, promotion and marketing services in the nature of e-mail and social media campaigns; marketing and business data analysis services, namely, analysis of customer responses to email and SMS notification alerts for business and marketing purposes” in International Class 35

 

“Broadcast communication services, namely, transmitting e-mails and short messages via SMS, including text messages and telephone voice messages, to designated recipients for others; Electronic transmission of messages for marketing and personalized campaign content for others; Telecommunication services, namely, providing email and SMS notification alerts via the internet in the field of business and marketing” in International Class 38

 

Applicant’s 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 services or add 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 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 services will further limit scope, and once 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.

 

Please note that the identification of services in Class 42 is acceptable as written.

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Kristina Morris/

Kristina Morris

Examining Attorney

Law Office 116

571-272-5895

kristina.morris@uspto.gov (informal queries only)

 

 

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 November 22, 2019 for

U.S. Trademark Application Serial No. 88579600

 

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. 

 

 

/Kristina Morris/

Kristina Morris

Examining Attorney

Law Office 116

571-272-5895

kristina.morris@uspto.gov (informal queries only)

 

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 November 22, 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.”