To: | LEGAL NAVIGATOR LIMITED (shannon@montgomerypllc.com) |
Subject: | U.S. Trademark Application Serial No. 88642767 - LEGAL NAVIGATOR - N/A |
Sent: | January 09, 2020 02:47:49 PM |
Sent As: | ecom121@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 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88642767
Mark: LEGAL NAVIGATOR
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Correspondence Address: |
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Applicant: LEGAL NAVIGATOR LIMITED
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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 09, 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.
SUMMARY OF ISSUES PRESENTED IN THIS OFFICE ACTION:
· Section 2(d) Refusal—Likelihood of Confusion
· Disclaimer Required
· Classification and Identification Amendment Required
· Multi-class Application Requirements
· Insufficient Fees—Submit Additional Fees or Restrict Classes Sought
SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5833827. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant’s mark is “LEGAL NAVIGATOR”, for use with:
Class 35: Providing a website and mobile application featuring consumer information for consumers of legal services and consumer ratings information about professionals rendering such services; providing a website and mobile application featuring business information in the nature of a directory of legal professionals for consumers of legal services and the professionals rendering such services, all for social networking and other purposes; matching consumers with professionals in the field of legal services; providing sales leads for professionals in the field of legal services; providing demand creation and lead generation activities and services in the field of legal services
Class 45: Providing a website and mobile application featuring content for consumers of legal services namely; providing services related to the exchange of information through a website and mobile application between professional legal service providers and consumers of legal services, including consultation and information services in the form of responses to questions submitted by consumers relating to professional legal services and the professionals rendering such services; the foregoing all of social networking and other purposes
The registered mark is “LEGAL NAVIGATOR” for use with:
Class 41: Providing on-line digital publications in the nature of magazines, articles and interviews in the field of legal careers and the legal market via the Internet
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 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 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.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and services, and similarity of the trade channels of the goods and services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Comparison 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).
In the present case, applicant’s mark is “LEGAL NAVIGATOR” and registrant’s mark is “LEGAL NAVIGATOR”. 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 goods and services. Id.
Therefore, the marks are confusingly similar.
Comparison of Goods and Services
The compared goods and 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 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)); TMEP §1207.01(a)(i).
Applicant's goods and services include providing a website featuring consumer information for consumers of legal services and consumer ratings information about legal professionals, business information in the nature of a directory of legal professionals for consumers of legal services and the professionals rendering such services, providing sales leads for professionals in the field of legal services, and providing a website and mobile applications enabling consumers to obtain legal consultation and information, and the registrant's services are providing on-line digital publications in the nature of magazines, articles and interviews in the field of legal careers and the legal market via the Internet. Applicant's and the registrant's goods and services are related because the goods and services of the respective parties are of a type that are commonly provided by a single source under the same mark. See attached evidence from Martindale, FindLaw, and Super Lawyers showing goods and services such as providing a website featuring consumer information for consumers of legal services and consumer ratings information about legal professionals, business information in the nature of a directory of legal professionals for consumers of legal services and the professionals rendering such services, providing sales leads for professionals in the field of legal services, providing a website and mobile applications enabling consumers to obtain legal consultation and information, and providing on-line digital publications in the nature of magazines, articles and interviews in the field of legal careers and the legal market via the Internet provided by a single source under the same mark. Therefore, consumers familiar with the registrant's services will also expect applicant's goods and services to be provided by the registrant.
Conclusion
The relatedness of the goods and services here, coupled with the identical marks at issue, requires registration of the applied-for mark to be refused under Section 2(d) of the Trademark Act.
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “LEGAL” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of a characteristic or subject matter of applicant’s goods and 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).
The attached evidence from Lexico shows this wording means “Of, based on, or concerned with the law.” Thus, the wording merely describes applicant’s goods and services as being provided/rendered in the field of law.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “LEGAL” 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.
Applicant must additionally respond to the requirement below.
CLASSIFICATION AND IDENTIFICATION AMENDMENT REQUIRED
Classification Amendment
Identification Amendment
Select entries in applicant's identification are indefinite because the wording is overly vague and the nature, use, or purpose of applicant's goods and services is unclear. See TMEP §§1402.01, 1402.03. Other entries are indefinite because the wording describes goods and services in multiple International Classes. See TMEP §§1402.01, 1402.03. Other goods and services are classified incorrectly and must be properly classified. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
If accurate, applicant may adopt the following wording and classes:
Class 9: downloadable mobile application for {indicate specific function, e.g., enabling consumers to access} consumer information about of legal services and consumer ratings information about professionals rendering such services; downloadable mobile application for enabling consumers to access business information in the nature of a directory of legal professionals for consumers of legal services and the professionals rendering such services; downloadable mobile application that enables consumers to access content regarding legal services and virtually engage with professional legal service providers for the purposes of obtaining legal consultation and information by enabling consumers to submit questions to be answered by legal service professionals
Class 35: Providing a website featuring consumer information for consumers in the field of legal services and providing consumer ratings about professionals rendering such services for commercial purposes; providing a website featuring business information in the nature of an online business directory of legal professionals for consumers of legal services and the professionals rendering such services; matching consumers with professionals in the field of legal services; providing sales leads for professionals in the field of legal services; providing demand creation and lead generation activities and services in the field of legal services
Class 45: Providing a website featuring content for consumers in the nature of legal information and information about legal services; providing services related to the exchange of information through a website and mobile application between professional legal service providers and consumers of legal services, namely, providing legal consultation and information by providing responses to questions submitted by consumers relating to professional legal services and the professionals rendering such services
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.
Applicant must additionally respond to the requirement below.
MULTI-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 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 class(es). 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.
Applicant must additionally respond to the requirement below.
INSUFFICIENT FEES—SUBMIT ADDITIONAL FEES OR RESTRICT CLASSES SOUGHT
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.
RESPONSE GUIDELINES
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.
/Justine N. Burke/
Justine N. Burke
Trademark Examining Attorney
Law Office 121
571-270-1631
Justine.Burke@uspto.gov
RESPONSE GUIDANCE