United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88642907
Mark: CRAK
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Correspondence Address: |
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Applicant: 4355768 Canada Inc.
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Reference/Docket No. 3260004US1AT
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 10, 2020
· Refusal under Trademark Act Section 2(d) – Likelihood of Confusion
· Advisory: Prior-Filed Applications
· Requirement to Amend the Identification of Goods and Services
· Multiple-Class Application Requirements
· Requirement to Provide Certificate of Foreign Registration
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
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.
Comparing the 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 this case, the marks are confusingly similar in appearance, sound, and commercial impression because the dominant wording in both marks are phonetically identical. Applicant’s mark is “CRAK” and registrant’s mark is “DIGITAL CRACK”.
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). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the registrant has disclaimed the wording “DIGITAL” for being merely descriptive of or generic for its services. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording “CRACK” the more dominant element of the registered mark and phonetically identical to the only wording in the applied-for mark.
In light of the closely related goods and services (see attached evidence), this degree of similarity is sufficient to establish that the marks are confusingly similar. Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
Comparing the Goods/Services
In this case, applicant’s related goods/services are the following:
International Class 9: Computer software for advertising
International Class 35: Advertising the ware and services of others via internet and a cost per action software; placing advertisements for others; developing marketing strategies and marketing concepts for others; business marketing consulting services; business management consulting with relation to strategy, marketing and retail sale matters; marketing services in the field of arranging for the distribution of the products of others; marketing services in the field of arranging for the distribution of the products of others; marketing analysis; marketing research; providing advice in the field of business management and marketing; direct marketing of goods and services of others; providing marketing consulting in the field of social media; providing business marketing information for others; statistical evaluations of marketing data; conducting marketing studies; providing marketing strategies for others; developing marketing strategies and marketing concepts for others; advice in the field of business management and marketing; compilation, production and dissemination of advertising matter for others; creating and updating advertising material for others; advertising by transmission of on-line publicity of third parties through electronic communication networks; dissemination of advertising for others via the internet; distribution of advertising material for others; providing advertising space in a periodical; rental of advertising space; provision of space on websites for advertising goods and services; providing and rental of advertising space on the internet; production of advertising materials for others; on-line advertising for others on computer networks; advertising copywriting; advertising agency services; advertising test publication services for others; monetization of websites traffic; affiliate marketing programs; geolocalization of website visitors; analysis of consumer habits on the internet for third parties; development of advertising campaigns
Registrant’s services are the following:
International Class 42: Software as a service (SaaS) services featuring software for customer relationship management, advertising and marketing management, analytics, artificial intelligence features and components; platform as a service (PaaS) featuring computer software platforms for customer relationship management, advertising and marketing management, analytics, artificial intelligence features and components; cloud computing featuring software for customer relationship management, advertising and marketing management, analytics, artificial intelligence features and components; providing temporary use of a web-based software application for customer relationship management, advertising and marketing management, analytics, artificial intelligence features and components
Applicant’s and registrant’s goods and services are related because they are the type of goods and services that commonly emanate from a single source. For example, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a representative sample of 15 third-party marks registered for use in connection with the same or similar goods and services as those of both applicant and registrant in this case. This evidence shows that the goods and services listed therein, namely, advertising or marketing service and software for advertising or marketing are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii). Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes.
Conclusion
Applicant’s and registrant’s marks are confusingly similar and their goods/services are related. Accordingly, the applied-for mark, “CRAK”, is refused for likelihood of confusion under Trademark Act Section 2(d).
ADVISORY: PRIOR-FILED APPLICATIONS
The filing dates of pending U.S. Application Serial Nos. 88530072 (CRAKREVENUE) and 88605821 (CRACK ERA) precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
REQUIREMENT TO AMEND IDENTIFICATION OF GOODS & SERVICES
International Class 9
International Class 35
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted services may not later be reinserted. TMEP §1402.07(e).
The wording “affiliate marketing programs” in the identification of services is indefinite and must be amended to further specify the intended user. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “analysis of consumer habits on the internet for third parties” in the identification of services is indefinite and must be amended to further specify the type of analysis. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
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 may adopt the following identification of goods and services, if accurate:
International Class 9: Downloadable computer software for advertising, development and hosting of websites
International Class 35: Advertising the ware and services of others via internet and a cost per action software; placing advertisements for others; developing marketing strategies and marketing concepts for others; business marketing consulting services; business management consulting with relation to strategy, marketing and retail sale matters; marketing services in the field of arranging for the distribution of the products of others; marketing analysis; marketing research; providing advice in the field of business management and marketing; direct marketing of goods and services of others; providing marketing consulting in the field of social media; providing business marketing information for others; statistical evaluations of marketing data; conducting marketing studies; providing marketing strategies for others; advice in the field of business management and marketing; compilation, production and dissemination of advertising matter for others; creating and updating advertising material for others; advertising by transmission of on-line publicity of third parties through electronic communication networks; dissemination of advertising for others via the internet; distribution of advertising material for others; providing advertising space in a periodical; rental of advertising space; provision of space on websites for advertising goods and services; providing and rental of advertising space on the internet; production of advertising materials for others; on-line advertising for others on computer networks; advertising copywriting; advertising agency services; advertising text publication services for others; monetization of websites traffic in the nature of commercial evaluation of the online advertising and marketing performance of the websites of others; providing affiliate marketing programs for {applicant must specify customers of the service, e.g., mobile phone service providers}; geolocalization of website visitors, namely, {applicant must further specify the nature of these services}; marketing analysis of consumer buying habits on the internet for third parties; development of advertising campaigns
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). The application identifies goods and services that are classified in at least 3 classes; however, applicant submitted fees sufficient for only 2 classes. 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Fees For Additional Classes
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
REQUIREMENT TO PROVIDE CERTIFICATE OF FOREIGN REGISTRATION
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
RESPONSE GUIDANCE
How to respond. Click to file a response to this nonfinal Office action
QUESTIONS
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal and/or requirements in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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.
/Marco Wright/
Trademark Examining Attorney
Law Office 120
(571) 272-4918
marco.wright@uspto.gov