United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88637174
Mark: SIGNATURE AVIATION
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Correspondence Address:
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Applicant: BBA Aviation plc
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: January 07, 2020
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.
Section 2(d) Refusal – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1998482, 2051052, 3936448, 3936449, 3936450, 3949828, 4089922, 4101166, 4101168, 4126498, 4265381, 4278859, 4278860, 4278862, 4280625, 4369177, 4369178, 4370829, 4396036, 4440689, 4491529, 4511187, 4581679, 4878631, 5307225, 5307226 and 5317692. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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.
Here, the applicant applied to register the mark SIGNATURE AVIATION for aircraft crew scheduling services; distributorships in the field of aviation parts and aviation ground support equipment; business management services, namely, aircraft management for others in International Class 35, aircraft fueling services; aircraft maintenance and repair services; automotive maintenance services; avionics installation and repair; janitorial services in International Class 37, air transport services; air charter transportation services; aircraft parking; airport baggage check-in services; airport passenger check-in services; airport passenger shuttle services between the airport parking facilities and the airport; airport ramp services, namely, fastening and anchoring aircraft to airport tarmacs; airport services; airport services featuring transit lounge facilities for passenger relaxation; arranging, coordinating and controlling stopovers, transfer and transit of passengers, aircraft crew and their luggage; cargo handling; delivery of mislanded baggage; flight planning services; providing flight crew services for operating aircraft; rental of cars; transport brokerage; transportation reservation services; transportation services, namely, checking of baggage; leasing of aircraft hangar space; rental of aircraft hangar space in International Class 39, quality management services, namely, quality evaluation and analysis, quality assurance, and quality control, in the field of aircraft, airports, fuel facilities in International Class 42 and security control of persons and luggage in airports in International Class 45.
The twenty-seven (27) registered marks, all owned by the same entity, are SIGNATURE, SIGNATURE FLIGHT SUPPORT, SIGNATURE STATUS, SIGNATURE QUICKTURN, THE SIGNATURE SERVICE PROMISE, SIGNATURE STATUS and design, S SIGNATURE SELECT and designs, SIGNATURE SIGNET, SIGNATURE (stylized), SIGNATURE TECHNICAIR AIRCRAFT MAINTENANCE and design, SIGNATURE TAILWINS, SIGNATURE SIGNET, SIGNATURE FLIGHT SUPPORT (stylized), SIGNATURE SELECT, SIGNATURE IFBO, SIGNATURE LOYALTY, and IT’S YOUR SIGNATURE all for aviation industry services or complementary to the aviation industry.
Similarity of the Marks
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
In the instant case, the dominant portion of the marks is SIGNATURE. The addition/substitution of the term AVIATION to the registered marks does not distinguish it from the registered marks.
Accordingly, since the marks are so similar in sound, appearance and overall commercial impression, confusion as to source is likely.
Relationship Between the Services
Here, the applicant’s services and the registrant’s services are highly related and identical in part. Both the applicant and the registrant are providing a variety of identical services including distributorship services in the field of aviation parts and aviation ground support equipment, aircraft fueling, aircraft maintenance and repair services, automotive maintenance, airport services, transportation reservation services, and rental of aircraft hangar space. The services would be found in the same channels of trade and would be available to the same potential consumers.
In this case, the goods and/or services in the application and registration(s) are identical in part. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods and/or services are related.
Accordingly, since there is no overriding factor to distinguish applicant’s mark from the marks already registered, registration must be refused because the average purchaser would be likely to conclude that the applicant’s services and those cited in U.S. Registration Nos. 1998482, 2051052, 3936448, 3936449, 3936450, 3949828, 4089922, 4101166, 4101168, 4126498, 4265381, 4278859, 4278860, 4278862, 4280625, 4369177, 4369178, 4370829, 4396036, 4440689, 4491529, 4511187, 4581679, 4878631, 5307225, 5307226 and 5317692 emanate from a common source of origin.
Advisory – Ownership of Cited Registrations
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.
(2) Submit copies of documents evidencing the chain of title.
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration Nos. 1998482, 2051052, 5317692 and others.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
Disclaimer
In this case, applicant must disclaim the wording “AVIATION” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
This term appears in the identifications of services. Thus, the wording merely describes applicant’s services because it identifies the subject/field of services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “AVIATION” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
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.
/Andrea Koyner Nadelman/
Trademark Examining Attorney
U.S. Patent and Trademark Office, Law Office 110
(571) 272-9370
andrea.nadelman@uspto.gov
RESPONSE GUIDANCE