Suspension Letter

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  January 28, 2020

 

 

The application is suspended for the reason specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The pending application below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark. 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application below was sent previously.

 

            - U.S. Application Serial No. 79270361

 

Refusals and requirements resolved and maintained and continued. 

 

The following refusal is obviated: 

 

• Partial Refusal under Section 2(d) – Likelihood of Confusion – Class 35 with respect to U.S. Registration No. 5712293

 

See TMEP §713.02.

 

The following refusal and requirement are maintained and continued: 

 

• Partial Refusal under Section 2(d) – Likelihood of Confusion – Class 45
• Partial Classification and Identification of Services Requirement – Classes 35, 39, 41, 42, 45

 

See id.  The refusal and requirement will be made final once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01

 

CONTINUED AND MAINTAINED: PARTIAL REFUSAL UNDER SECTION 2(d) – LIKELIHOOD OF CONFUSION – CLASS 45

 

The applied-for mark is “MCS” in stylized form for “front desk reception” in International Class 45, in relevant part.

 

The cited mark in U.S. Registration No. 4811622 is “MCS MEDICAL CONCIERGE SERVICE” in standard character form with “MEDICAL CONCIERGE SERVICE” disclaimed.  The identified services in U.S. Registration No. 4811622 are “concierge services for others comprising of scheduling appointments, organizing documents and files for appointments, arranging transportation to appointments” in International Class 45.

 

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 uses broad wording to describe front desk reception services, which presumably encompasses all services of the type described, including U.S. Registration No. 4811622’s more narrowly worded concierge 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 each 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 each registrant’s services are related.

 

The substance will be discussed in greater detail in the Office action that issues later, should an Office action be necessary.

 

CONTINUED AND MAINTAINED: PARTIAL CLASSIFICATION AND IDENTIFICATION OF SERVICES REQUIREMENT – CLASSES 35, 39, 41, 42, 45

 

The proposed amendment to the identification is not acceptable because some of the wording exceeds the scope of the identification in the application, as amended on January 27, 2020.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§1012, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application, as amended, identifies the services as follows: The wording “scanning” appears in Class 35, as amended, but this wording does not appear in the original application.  In Class 41, the wording “videography services for deposition proceedings” more clearly identifies wording within the scope of the application, because reference to videography of “proceedings” broadens the scope beyond just deposition proceedings.  In Class 41, the wording “to delivery the transcript in electronic format” is suggested to be removed after the wording “digital imaging services” because this appears to describe a service that is not within the scope of “digital imaging services,” and should therefore be removed. 

 

The wording of several items in the identification of services are indefinite and must be clarified because the nature of the services are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For grammatical clarity, various minor grammatical changes are suggested below.  For clarity, in Class 41, it is suggested to separately list the translation and interpreter services.  In Class 41, the wording “copy services to deliver the transcript in paper format” is misclassified, and is already encompassed by the Class 35 services of “business management services being managing office functions in the nature of printing and copying services for others” and thus no replacement is suggested.

 

In Class 41, the first item of court reporting should be reclassified in Class 45.  The wording “typing and recording the spoken word” appears to be encompassed by the wording “court reporting” and thus is not suggested in Class 45, because “court reporting” is already suggested in Class 45.  The services are classified incorrectly.  Applicant must amend the application to classify the services in International Class 45 as suggested.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

In class 45, the “front desk reception” services is broad enough to encompass business services in Class 35 and concierge services in Class 45.  This must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of services, (2) before and after “namely,” and (3) between each item in a list of services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

Applicant may substitute the following wording, if accurate (the examining attorney’s suggested changes and additions are in bold font, items for applicant to clarify are in bold italics, and suggested items to remove have a line through them):

 

Class 35: Business of records management services, namely;, the retrieval, organization, summarization and delivery of medical, insurance, scholastic, employment and government records; provide providing business records management; providing mail services, namely, such as the receiving and processing of domestic mail for infusion into established postal services, and providing specialized mail management services; business management services being by managing office functions in the nature of printing, and copying and scanning services for others; inventory management in the field of law firms, insurance companies and other corporate entities; business services, namely, preparation of printed material for mailing for others; management of office equipment, namely, leasing and rental of office equipment; vendor management services for the purpose of providing business processing outsourcing solutions to law firms, insurance companies and other corporate entities; vendor negotiation services in the nature of negotiation of commercial transactions with vendors for third parties for the purpose of providing business processing outsourcing solutions to law firms, insurance companies and other corporate entities; providing summarization of deposition transcripts, namely, abstracting services in the nature of summarizing information from deposition transcript records; providing specialized mail management services in the nature of parcel receiving services; paper supply services in the nature of procurement, namely, purchasing paper for others; business management services, namely, managing office functions of front desk reception in the nature of {indicate office functions, e.g., copying and printing} for others

 

Class 38 is acceptable.

 

Class 39: Courier services in the nature of parcel shipping services; namely supply chain logistics and reverse logistics services, namely, packaging, collection, and transportation of hazardous material for others by air, rail, ship, or truck; providing laboratory support services namely, warehousing of laboratory equipment; providing warehouse storage services and support; providing courier powered industrial vehicles ( PIV ) vehicle (PIV) services in the nature of rental of forklifts; providing courier delivery services

 

Class 40 is acceptable.

 

Class 41: Providing deposition services namely court reporting/ typing and recording the spoken word,; videography services for deposition to video the proceedings,; providing translation services to translate and interpret the use of different languages in the deposition proceedings; providing language interpreter services to interpret the use of different languages in deposition proceedings; digital imaging services to delivery the transcript in electronic format; copy services to deliver the transcript in paper format

 

Class 42: Providing technology services namely, providing temporary use of on-line non-downloadable software for managing e-discovery; providing technology services in the nature of hosting documents for review, namely, hosting an online website for document review and management; trial technology services, namely, help desk services for computer trial technology,; electronic project management services, namely, computer project management services; management of multi-function printers, namely, remote monitoring of multi-function printers for others; laboratory support services, namely, rental of laboratory apparatus and instruments

 

Class 43 is acceptable.

 

Class 45: Public document filing services, namely providing court document filing services; litigation support services; and front desk reception in the nature of {please specify a the nature of the services in Class 45, e.g., hotel concierge services}; providing court reporter services for depositions  

 

The substance will be discussed in greater detail in the Office action that issues later, should an Office action be necessary.

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

/D. Zarick/

D. Zarick

Trademark Examining Attorney

Law Office 126

(571) 270-5013

diana.zarick@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 28, 2020 for

U.S. Trademark Application Serial No. 88614666

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/D. Zarick/

D. Zarick

Trademark Examining Attorney

Law Office 126

(571) 270-5013

diana.zarick@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).

 

 

 

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.”