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:

• SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
• IDENTIFICATION OF SERVICES
• ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

THIS PARTIAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2040110 (STC).  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.

 

Comparison of the Marks

 

The applied-for mark is: STC with design

 

The registered mark is: STC

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is STC with design and registrant’s mark is STC.  These marks are identical in wording, 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 services.  Id.

 

Additionally, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  In the present case, with respect to the design elements of the applied-for mark they do not change the commercial impression of the mark because the design elements do not change the meaning or the way the mark is interpreted thus the STC wording remains the dominant element in the marks.

 

In sum, for the foregoing reasons, the marks are confusingly similar.

 

Comparison of the Services

 

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 applicant’s identified services are: “advisory, consultancy and certification services relating to all the aforesaid services; testing services; industrial analysis services; industrial and scientific research services; preparing engineering analysis and reports; advisory and consultancy services relating to all the aforesaid services; scientific and technological services, namely, research and design services; industrial analysis and research services; consulting in the field of data analytics; consulting in the field of telemetry and computer networking;”

 

The registrant’s identified services are: “providing scientific and engineering research services, and technical and logistics consultation services in the fields of projects and facilities management, database library design and management, organization of technical symposia and conferences, and production and editing of technical publications, for the United States government and others”

 

Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application and registration use broad wording to describe research and technical consulting services, which presumably encompasses many of the services of the type described, including the more narrow research and technical consulting services.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s services are related.

 

The foregoing demonstrates that a consumer familiar with registrant’s mark used on registrant’s services, upon encountering applicant’s mark used on applicant’s services would likely be confused and mistakenly believe that the services emanate from a common source.  Therefore, registration is refused under Section 2(d) of the Lanham Act.

 

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

 

If applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

IDENTIFICATION OF SERVICES

 

Particular wording in the identification of services is indefinite/too broad or misclassified and must be clarified for reasons explained below.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Please see specific requirements explained below in italicized lettering and suggested wording below in bold lettering.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The following substitute wording is suggested, if accurate:

 

Class 035:       Business management; business administration; sales promotion; {This entry is indefinite, applicant must specify the nature of the services, e.g.} business office functions services; business planning services; business planning services relating to designing derivative systems; providing business intelligence; market research and business intelligence services; business management consultation; {Part of this entry is indefinite, applicant must specify the nature of the services, e.g.} distribution of samples, business research, business investigations for other businesses;  Procurement, namely, purchasing {specify goods or services, e.g., weapons, office furniture} for others; {This entry is indefinite, applicant must specify the nature of the retail and wholesale services, e.g.} retail store and wholesale store services featuring laboratory equipment; market research and intelligence services; business management consultation; {This entry was classified in class 042 and is over broad, applicant must specify the nature of the consultation, e.g.} consultation in environment protection, namely, Business consulting in the field of environmental management, namely, advising businesses and individuals on issues of environmental impact, conservation, preservation and protection, and economic analysis for business purposes; {This entry was classified in class 042 and is over broad, applicant must specify the nature of the consultation, e.g.} business consulting in the field of data analytics;

 

{Use of ID manual is recommended to properly classify and identify the services being provided, they are not clear and some so broad that not every example can be provided.}

 

Class 042: {This entry is indefinite and over broad, it is not clear what the nature of the “inspection, testing and survey services” are for, what does this refer to?}  Laboratory inspection for quality control purposes; laboratory survey services in the nature of conducting worksite surveys to determine if worksites meet employee health condition requirements and standards; {This entry is indefinite and over broad, it is not clear what the nature of the “quality and safety control and assurance services” are for, what does this refer to?}  product quality and safety control testing and quality assurance services in the field of {indicate field}; {This entry is indefinite and over broad, the term “certification” is not a service, e.g.,} advisory, and consultancy services relating to all the aforesaid services; Testing, analysis and evaluation of the goods and services of others to determine conformity with certification standards; {The following entries should be separated by semi-colons as they are separate services, e.g.} material testing; textile testing; bacteriological research; cosmetic research; chemical analysis; {This entry is indefinite, applicant must specify the nature of the services and certification is not a service, e.g.} product quality control services, namely, product quality testing, product quality evaluation, quality control for others; certification of quality system, namely, testing, analysis and evaluation of the goods of others to determine conformity with certification standards; {This entry is over broad and indefinite, applicant must specify the nature of the services, e.g.} technical consultation in environment protection science and engineering; {This entry is over broad and indefinite, applicant must specify the nature of the services, e.g.} Product quality, product safety and environmental testing services; {This entry is over broad and indefinite, applicant must specify the nature of the services, e.g.}  Environmental inspection services; {This entry is over broad and indefinite, applicant must specify the nature of the services, e.g.}  testing, inspection and evaluation of goods for quality control purposes; materials testing, inspection and evaluation; testing, inspection and evaluation of consumer products for quality control purposes; testing, inspection and evaluation of vehicles for quality control purposes; testing, inspection and evaluation of commodities for quality control purposes; testing, inspection and evaluation of minerals;{This entry is over broad and indefinite, applicant must specify the nature of the services, e.g.}  Testing of apparatus in the field of electrical engineering; Testing on electricity; Inspection services, namely, detection of electrical conditions in the inaccessible areas of an existing structure or home and/or wall(s) and void(s) by means of infrared imaging units; testing, inspection and evaluation of chemicals; metallurgical testing, inspection and evaluation; mechanical testing, inspection and evaluation of materials; weld testing; visual examination of products; visual weld inspection; pre-shipment and post-shipment inspection services; {This entry is over broad and indefinite, applicant must specify the nature of the services, e.g.} compliance testing of goods or services of others against regulatory, quality, quantity, performance and safety standards; quality and safety control and assessment services; calibration services; laboratory services, namely, medical laboratory services; {This entry is over broad and indefinite, applicant must specify the nature of the services, e.g.} industrial analysis services, namely, testing, analysis, and evaluation of {indicate goods or services of others} to assure compliance with industry standards; {This entry is over broad and indefinite, applicant must specify the nature of the services, e.g.} industrial and scientific research services in the field of {indicate field or goods that are subject of research}; {Certification services is not a service, applicant must specify the nature of the services, e.g.} certification services, namely, testing, analysis and evaluation of the services of others to determine conformity with certification standards; {This entry is indefinite, applicant must specify the nature of the services, e.g.}  product safety design services; {This entry is indefinite, applicant must specify the nature of the services, e.g.} engineering services for others; preparing engineering analysis and reports; analysis of product safety statistics; {This entry is indefinite, applicant must specify the nature of the services, e.g.}  analysis of safety information by using statistical models of the goods of others to assure compliance with industry standards; {This entry is indefinite, applicant must specify the nature of the services, e.g.}  analysis of safety information by using algorithms of the goods of others to assure compliance with industry standards; advisory and consultancy services relating to all the aforesaid services; scientific laboratory services, namely, chemical and material analysis, quality assurance, quality control, industrial design, packaging design, analysis and research services; {This entry is indefinite and over broad, certification is not a service and applicant must specify the nature of the services, e.g.} Certification services, namely, testing, analysis and evaluation of the goods and services of others to determine conformity with certification standards provided to the catering, food and drink related industries; scientific consulting services relating to foods provided to the catering, food and drink related industries; Scientific research information in the field of foods and drinks provided to the catering, food and drink related industries; Technology advisory services related to {indicate specific field or subject matter, e.g., computers, engineering, etc.} provided to the catering, food and drink related industries; scientific and technological services, namely, research and design services; {This entry is over broad and indefinite, applicant must specify the nature of the services, e.g.} industrial analysis services, namely, testing, analysis, and evaluation of {indicate goods or services of others} to assure compliance with industry standards; Industrial research in the field of {indicate field or goods that are subject of research}; software as a service (SAAS) services, namely, software for data centers for use in collecting, analyzing and reporting of computer network and telecommunications data; {This entry is over broad and indefinite, applicant must specify the nature of the services, e.g.} technology consulting in the field of data analytics; consulting in the field of telemetry and computer networking; design and development of computer hardware and software

 

Class 045: {This entry was misclassified in class 042 and it is indefinite, applicant must provide more information about the type of information, e.g.} provision of safety information in the field of consumer product safety;

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See 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.

 

ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 2 classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

RESPONSE GUIDELINES

 

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. 

 

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 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  

 

 

/John Salcido/

John Salcido

Examining Attorney

Law Office 122

571-272-7549

John.Salcido@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.  

 

• 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. 88585669

 

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. 

 

 

/John Salcido/

John Salcido

Examining Attorney

Law Office 122

571-272-7549

John.Salcido@uspto.gov

 

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.”