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 01, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Registration is refused under Section 2(d) of the Trademark Act.  The refusal and any other issues raised in this Office action must be addressed within the specified time period indicated above.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Section 2(d) Refusal

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4909461.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Similarity of Marks

 

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).

 

Applicant’s proposed mark is VERSUS.  The cited mark is VERSUS.  There is no question as to the similarity of the two marks. 

 

Similarity of Services

 

The goods and/or services of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or 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)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).

 

Applicant’s proposed mark is associated with for various advertising, promotion and marketing services and incentive award programs.  The mark in the cited registration is used in connection with promotional advertising of products and services of third parties through sponsoring arrangements and license agreements relating to concerts.  Both marks are used in connection with promotional services.  It is noted that applicant’s advertising, marketing and promotional services include sporting events.  Attached to this Office action are webpages illustrating the common commercial channels shared by various sporting events and concerts.

 

Based on the highly related nature of the services set forth in the application and cited registration, and the similar trade channels and customers, the du Pont factors of the similarity of the marks and services favor a finding of likelihood of confusion.  Accordingly, the proposed mark is refused under Section 2(d) of the Trademark Act.  Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Identification of Services

 

Particular wording in the identification of services is indefinite and must be clarified as noted below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The unacceptable descriptions in the identification are identified by the use of bracketed explanations that immediately follow such descriptions.  If the examining attorney could deduce the nature of the services from the incomplete or indefinite description, comments and suggestions on how to make the description acceptable are provided. 

 

The USPTO has discretion to require the degree of particularity deemed necessary to clearly identify the goods and/or services covered by the mark.   In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007).

 

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.

 

The language identified below must be amended.

 

“Arranging and conducting incentive reward programs to promote fan activities [wording “fan activities” is indefinite and fails to identify a service] and the sale of professional and amateur sports and esports events [wording “of professional and amateur sports and esports events” is indefinite and does not identify a service—see the Office’s ID Manual entries attached to this Office action] and merchandise [must specify, “of others” for the activity to constitute a service];

 

Promoting the goods and services of others by means of the issuance of loyalty rewards points [term “points” does not identify a service—the term may identify an ancillary activity only];

 

Business administration of consumer loyalty programs;

 

Online advertising and marketing services and data collection [wording “data collection” is indefinite, nature of data must be identified for proper classification purposes, e.g., “collection of sports league player statistics” is a Class 41 service] in the field [substitute “field” with “fields”] of professional and amateur sports and esports;

 

Advertising services, namely, advertising data collection and [specify type of analysis, e.g., business] analysis in the field [substitute “field” with “fields”] of professional and amateur sports and esports;

 

Advertising, promotion, and marketing services related to providing online fan- [“online fan-” is unacceptable] and spectator-centered events [wording “spectator-centered events” is indefinite], [specify type of contests] contests, and social networking for the amateur and professional sports and esports industries [wording “related to providing online fan- and spectator-centered events, contests, and social networking for the amateur and professional sports and esports industries” is indefinite and could be perceived as identifying another service; applicant may adopt:  Advertising, promotion, and marketing services in the fields of amateur and professional sports and esports industries];

 

Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, chat [specify further, rooms], search engine marketing, email marketing, inquiry marketing, influencer marketing, internet marketing, mobile marketing, referral marketing [wording “referral marketing” is indefinite], blogging and other forms of passive, sharable or viral communications channels” – Class 35.

 

 

Applicant’s goods and/or 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 goods and/or services or add goods and/or 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 goods and/or 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 goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

The application may identify 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). 

 

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.

 

 

 

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  

 

 

/Christopher Buongiorno/

Christopher Buongiorno, Attorney

United States Patent & Trademark Office

Law Office 102

(571) 272-9251

 

 

 

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 01, 2019 for

U.S. Trademark Application Serial No. 88642756

 

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. 

 

 

/Christopher Buongiorno/

Christopher Buongiorno, Attorney

United States Patent & Trademark Office

Law Office 102

(571) 272-9251

 

 

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 01, 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.”