To: | FlightAware LLC (cjmeyer@uspatent.com) |
Subject: | U.S. Trademark Application Serial No. 88640984 - FORESIGHT - 6296-102 |
Sent: | January 14, 2020 06:20:38 PM |
Sent As: | ecom113@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88640984
Mark: FORESIGHT
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Correspondence Address: WOODARD, EMHARDT, HENRY, REEVES & WAGNER 111 MONUMENT CIRCLE, SUITE 3700
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Applicant: FlightAware LLC
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Reference/Docket No. 6296-102
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 14, 2020
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.
In response to this Office action, the applicant must address the following issues:
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. 4785289, 4753282, and 4721665. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
In this case, applicant has applied to register the mark FORESIGHT for use in connection with “Flight and aircraft tracking services; flight tracking and flight status reporting services; services predicting flight and aircraft landing and arrival times” and “Application service provider featuring application programming interface (API) software for providing data in the field of flight tracking and air transportation; software as a service (SAAS) featuring software for data analysis and data reporting in the field of flight tracking and air transportation; data as a service (DAAS), namely, collecting, aggregating, analyzing, reporting and providing access to data in the field of flight tracking and air transportation.”
Registration No. 4785289 is for the mark FORESIGHT used in connection with “Application service provider featuring application programming interface (API) software for predictive analytics in the field of travel.” Registration No. 4753282 is for the mark FORESIGHT stylized used in connection with “Application service provider (ASP) featuring software for use in management, tracking, monitoring, analysis, and reporting of aircraft and aircraft fleet management, operations, finances, budgets, schedules, maintenance, warranty, depreciation value, inventory, resource allocation, travel, insurance, bookings, fuel consumption, market, usage, and productivity data, and other aircraft operational data.” Registration No. 4721665 is for the mark FORESIGHT used in connection with “Application service provider (ASP) featuring software for use in management, tracking, monitoring, analysis, and reporting of aircraft and aircraft fleet management, operations, finances, budgets, schedules, maintenance, warranty, depreciation value, inventory, resource allocation, travel, insurance, bookings, fuel consumption, market, usage, and productivity data, and other aircraft operational data.”
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 [services] and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
In the present case, applicant’s mark is FORESIGHT and registrant’s marks in Registration Nos. 4785289 and 4721665 are FORESIGHT. 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 services. Id. Therefore, the marks are confusingly similar.
Also in the present case, applicant’s mark is FORESIGHT and registrant’s mark in Registration No. 4753282 is FORESIGHT stylized. Thus, the word portion of the marks is identical in terms of 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 the word portions 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. Therefore, the marks are confusingly similar.
Further, the stylization of the Registration No. 4753282 does not obviate the similarities between the marks as the applied-for mark is in standard characters. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). Therefore, the applied-for mark could be presented in the same or similar style as the registered mark. Accordingly, the stylization of the registered mark does not obviate the similarities between the marks.
Ultimately, when purchasers call for the services of the applicant and registrant using FORESIGHT and FORESIGHT, they are likely to be confused as to the sources of those services by the similarities between the marks. Thus, the marks are confusingly similar.
Relatedness of the Services
In this case, applicant's “Application service provider featuring application programming interface (API) software for providing data in the field of
flight tracking and air transportation”
are related to registrant’s “Application service provider featuring application programming interface (API) software for predictive analytics in the field of travel”
and “Application service provider (ASP) featuring software for use in management, tracking, monitoring, analysis, and reporting of aircraft and aircraft fleet management, operations, finances,
budgets, schedules, maintenance, warranty, depreciation value, inventory, resource allocation, travel, insurance, bookings, fuel consumption, market, usage, and productivity data, and other aircraft
operational data.” Specifically, both the application and registration identify application service provider featuring application programming interface (API) software for travel
information.
In this case, the registrations use broad wording to describe Application service provider services which presumably encompasses all services of the type described, including applicant’s more narrow services for providing data in the field of flight tracking and air transportation. 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.
Further in this case, applicant's “Flight and aircraft tracking services; flight tracking and flight status reporting services; services predicting flight and aircraft landing and arrival times” and software as a service (SAAS) featuring software for data analysis and data reporting in the field of flight tracking and air transportation; data as a service (DAAS), namely, collecting, aggregating, analyzing, reporting and providing access to data in the field of flight tracking and air transportation” are related to registrant’s “Application service provider featuring application programming interface (API) software for predictive analytics in the field of travel” and “Application service provider (ASP) featuring software for use in management, tracking, monitoring, analysis, and reporting of aircraft and aircraft fleet management, operations, finances, budgets, schedules, maintenance, warranty, depreciation value, inventory, resource allocation, travel, insurance, bookings, fuel consumption, market, usage, and productivity data, and other aircraft operational data.” Specifically, both the application and registration identify travel information services and related software.
The attached Internet evidence, consisting of the websites of third party companies that information and data services as well as online software in the field of travel information, establishes that the same entity commonly provides the relevant services and markets the services under the same mark. See attached websites for FLIGHTRADAR24, http://www.flightradar24.com/51,-2/8; FLIGHTVIEW, http://www.flightview.com/; and AVIATION EDGE, http://aviation-edge.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).
When purchasers encounter the services of the applicant and registrant, they are likely to be confused as to the source of the services by the relationship between them. Thus, the services are closely related.
Therefore, because the marks are confusingly similar and the services are closely related, purchasers encountering these services are likely to believe, mistakenly, that they emanate from a common source. Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of the Trademark Act.
INDEFINITE AND OVERLY BROAD IDENTIFICATION OF SERVICES – AMENDMENT REQUIRED
The wording “Flight and aircraft tracking services” and “flight tracking and flight status reporting services” in the identification of services in the identification of services for International Class 39 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. In particular, this wording could encompass tracking services for commercial purposes in Class 35, providing travel information in Class 39 and tracking services for recovering lost goods in Class 45. Therefore, applicant must specify the services for classification purposes.
Further, “services predicting flight and aircraft landing and arrival times” is indefinite and must be clarified because the wording does not clearly identify a known service. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id. Therefore, applicant must clarify the nature of the services for classification purposes.
Class 42
The wording “data as a service (DAAS), namely, collecting, aggregating, analyzing, reporting and providing access to data in the field of flight tracking and air transportation” in the identification of goods for International Class 42 must be clarified because it is too broad and could include goods in other international classes. In particular, this wording could encompass data collection, analysis and reporting for business purposes in Class 35 as well as provision of access to electronically stored data in Class 38. Therefore, applicant must specify the services for classification purposes.
Applicant may adopt the following identification, if accurate:
Class 35 – “Flight and aircraft tracking services, namely, [applicant to specify, e.g. tracking of aircraft services for commercial purposes; providing tracking services and information concerning tracking of assets in transit, namely, aircrafts for business inventory purposes]; flight tracking and flight status reporting services, namely, [applicant to specify, e.g. tracking, locating and monitoring of aircraft services for commercial purposes, providing tracking services and information concerning tracking of assets in transit, namely, aircrafts for business inventory purposes]; data as a service (DAAS), namely, collecting, aggregating, analyzing, and reporting to data in the field of flight tracking and air transportation [applicant to specify, e.g. for business purposes]. ”
Class 38 – “data as a service (DAAS), namely, providing [applicant to specify, e.g. access to data or documents stored electronically in central files for remote consultation, multiple-user access to data on the Internet] in the field of flight tracking and air transportation.”
Class 39 – “Flight and aircraft tracking services, namely, [applicant to specify, e.g. providing arrival, departure, and real-time position information for commercial and non-commercial flight]; flight tracking and flight status reporting services, namely, [applicant to specify, e.g. providing arrival, departure, and real-time position information for commercial and non-commercial flight, providing a real-time display of aircraft positions based on automatic dependent surveillance-broadcast (ADS-B) signals received, Providing flight arrival and departure information]; services predicting flight and aircraft landing and arrival times, namely, , namely, [applicant to specify, e.g. providing estimated arrival information for commercial and non-commercial flight, Providing estimated flight information].”
Class 42 – “Application service provider featuring application programming interface (API) software for providing data in the field of flight tracking and air transportation; software as a service (SAAS) featuring software for data analysis and data reporting in the field of flight tracking and air transportation.”
Class 45 – “Flight and aircraft tracking services, namely, [applicant to specify, e.g. tracking services for retrieval of encoded aircraft that have been lost or stolen]; flight tracking and flight status reporting services, namely, [applicant to specify, e.g. tracking services for retrieval of encoded aircraft that have been lost or stolen].”
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.
CLARIFICATION OF THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT REQUIRED
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
ADVISORY- MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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 fees already paid (view the USPTO’s current fee schedule).
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 TO THIS OFFICE ACTION
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.
/Emma Sirignano/
Examining Attorney, Law Office 113
United States Patent and Trademark Office
(571) 272-7031
emma.sirignano@uspto.gov
RESPONSE GUIDANCE