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:  January 17, 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.

 

SUMMARY OF ISSUES:

 

• SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION;
• SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE;
• SUPPLEMENTAL REGISTER;
• REQUIREMENT -- IDENTIFICATION OF SERVICES;
• MULTIPLE-CLASS APPLICATION REQUIREMENTS; and
• SPECIMEN.

 

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. 4549191 and 4621620, both owned by Beijing Qunar Information Technology Co., Ltd.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant’s mark is WHERE2RIDE for “Marketing services, namely, promoting or advertising the goods and services of others; promoting, advertising and marketing of the brands, products, services and online websites of individuals, businesses and nonprofit organizations; promoting, advertising and marketing on-line web sites of others; advertising agency specializing in the design and execution of word of mouth, viral, buzz and experiential marketing programs; advertising and marketing; advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; advertising and marketing services, namely, promoting the goods and services of others; advertising, marketing and promotion services; event planning and management for marketing, branding, promoting or advertising the goods and services of others; on-line customer-based social media brand marketing services; providing marketing consulting in the field of social media; social media strategy and marketing consultancy focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutions; email marketing services for the self-promotion of others and the promotion of others; operating contests, drawings, and sweepstakes for the self-promotion of others and the promotion of others; social media app-based advertising for the self-promotion of others and the promotion of others; curation of online storage and presentation of event information for the self-promotion of others and the promotion of others; curation of online storage and presentation of travel information, including destinations, lodging, food, tourism for the self-promotion of others and the promotion of others; marketing of events for others; curation of online storage and presentation of sponsorship and advertising for others in association with event listings in mobile, web and print media; promotional services delivered via online live and recorded webinars for the self-promotion of others and the promotion of others; advertising services provided by authoring and marketing written articles for the self-promotion of others and the promotion of others; advertising services provided by filming, producing, and marketing of promotional video and online content for the self-promotion of others and the promotion of others; curation of online storage and presentation, display, and delivery of coupon and discount promotions for the self-promotion of others and the promotion of others; marketing and product consulting services for the aviation industry; curation of online storage and presentation of employment opportunity information for the self-promotion of others and the promotion of others; curation of online storage, presentation, and marketing of the goods and services of others in an online sales marketplace; curation of online storage, presentation, and marketing of aviation-related images for the self-promotion of others and the promotion of others; interactive computing services, namely, providing online social media chat forums and user networking tools for the self-promotion of others and the promotion of others,” in Class 035.

 

Registrant’s marks are QUNAR for, inter alia, “advertising services, namely, promoting and marketing the goods and services of others via electronic communication networks,” in Class 035, and QUNAR for, inter alia, “customer loyalty services and customer club services for commercial, promotional and/or advertising purposes; conducting customer loyalty, reward, affinity and incentive programs for commercial promotion and for advertising purposes,” in Class 035.

 

Standard of Law

 

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.

 

Comparison of the Marks

 

Applicant’s mark is WHERE2RIDE.  Registrant’s mark is QUNAR.

 

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).

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). 

 

Under the doctrine of foreign equivalents, a mark in a common, modern foreign language and a mark that is its English equivalent may be held confusingly similar.  TMEP §1207.01(b)(vi); see, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1127-28 (TTAB 2015); In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).  Consequently, marks comprised of foreign wording are translated into English to determine similarity in meaning and connotation with English word marks.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005).  Equivalence in meaning and connotation may be sufficient to find such marks confusingly similar.  See In re Aquamar, Inc., 115 USPQ2d at 1127-28; In re Thomas, 79 USPQ2d at 1025.

 

The registrant’s mark is in Chinese, which is a common, modern language in the United States.  See In re Oriental Daily News, Ltd., 230 USPQ 637 (TTAB 1986) (Chinese).

 

The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent.  Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A).  The ordinary American purchaser includes those proficient in the foreign language.  In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.

 

In this case, the ordinary American purchaser would likely stop and translate the mark because the Chinese language is a common, modern language spoken by an appreciable number of consumers in the United States.

 

Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). 

 

This is particularly true when the additional term is descriptive or generic for the applied-for services.  In re Computer Sys. Ctr. Inc., 5 USPQ2d 1378, 1381 (TTAB 1987) (holding CSC ADVANCED BUSINESS SYSTEMS for retail computer store services and computer maintenance and repair services in connection therwith, and CSC for various computer-related services, likely to cause confusion, noting that "the inclusion of ‘ADVANCED BUSINESS SYSTEMS’ as a feature of applicant’s mark is not likely to help customers . . . distinguish the source of each party’s service"); In re Equitable Bancorporation, 229 USPQ 709, 711 (TTAB 1986) (holding RESPONSE and RESPONSE CARD (with "CARD" disclaimed), both for banking services, likely to cause confusion, noting that "the addition of descriptive matter to one of two otherwise similar, nondescriptive marks will not serve to avoid a likelihood of confusion");  In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (holding CONFIRM for a buffered solution equilibrated to yield predetermined dissolved gas values in a blood-gas analyzer, and CONFIRMCELLS for diagnostic blood reagents for laboratory use, likely to cause confusion, noting that the relevant consumers would view the "CELLS" portion of CONFIRMCELLS as merely descriptive);  In re Energy Images, Inc., 227 USPQ 572, 573 (TTAB 1985) (holding SMART-SCAN (stylized) for optical line recognition and digitizing processors, and SMART for telemetry systems and remote-data gathering and control systems, likely to cause confusion, noting that, because of the descriptive significance of the term "SCAN," it would be the portion of applicant’s mark that consumers would least likely rely upon to distinguish applicant’s goods); In re Denisi, 225 USPQ 624, 624 (TTAB 1985) (holding PERRY’S PIZZA and PERRY’S, both for restaurant services, likely to cause confusion, noting that "where a newcomer has appropriated the entire mark of a registrant, and has added to it a non-distinctive term, the marks are generally considered to be confusingly similar.”). Applicant’s services are related to motorcycle riding, so the term RIDE is merely descriptive in conjunction with the services. See http://www.lexico.com/en/definition/ride#ride.

 

Comparison of the Goods and Services and Trade Channels

 

Applicant’s services are “Marketing services, namely, promoting or advertising the goods and services of others; promoting, advertising and marketing of the brands, products, services and online websites of individuals, businesses and nonprofit organizations; promoting, advertising and marketing on-line web sites of others; advertising agency specializing in the design and execution of word of mouth, viral, buzz and experiential marketing programs; advertising and marketing; advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; advertising and marketing services, namely, promoting the goods and services of others; advertising, marketing and promotion services; event planning and management for marketing, branding, promoting or advertising the goods and services of others; on-line customer-based social media brand marketing services; providing marketing consulting in the field of social media; social media strategy and marketing consultancy focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutions; email marketing services for the self-promotion of others and the promotion of others; operating contests, drawings, and sweepstakes for the self-promotion of others and the promotion of others; social media app-based advertising for the self-promotion of others and the promotion of others; curation of online storage and presentation of event information for the self-promotion of others and the promotion of others; curation of online storage and presentation of travel information, including destinations, lodging, food, tourism for the self-promotion of others and the promotion of others; marketing of events for others; curation of online storage and presentation of sponsorship and advertising for others in association with event listings in mobile, web and print media; promotional services delivered via online live and recorded webinars for the self-promotion of others and the promotion of others; advertising services provided by authoring and marketing written articles for the self-promotion of others and the promotion of others; advertising services provided by filming, producing, and marketing of promotional video and online content for the self-promotion of others and the promotion of others; curation of online storage and presentation, display, and delivery of coupon and discount promotions for the self-promotion of others and the promotion of others; marketing and product consulting services for the aviation industry; curation of online storage and presentation of employment opportunity information for the self-promotion of others and the promotion of others; curation of online storage, presentation, and marketing of the goods and services of others in an online sales marketplace; curation of online storage, presentation, and marketing of aviation-related images for the self-promotion of others and the promotion of others; interactive computing services, namely, providing online social media chat forums and user networking tools for the self-promotion of others and the promotion of others,” in Class 035.

 

Registrant’s services include “advertising services, namely, promoting and marketing the goods and services of others via electronic communication networks; customer loyalty services and customer club services for commercial, promotional and/or advertising purposes; conducting customer loyalty, reward, affinity and incentive programs for commercial promotion and for advertising purposes,” in Class 035.

 

1.      Applicant’s and Registrant’s Goods and/or Services Are Identical in Part

 

When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

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.  

 

2.      Applicant’s and Registrant’s Goods and/or Services Overlap

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the registrations use broad wording to describe “advertising services, namely, promoting and marketing the goods and services of others via electronic communication networks; customer loyalty services and customer club services for commercial, promotional and/or advertising purposes; conducting customer loyalty, reward, affinity and incentive programs for commercial promotion and for advertising purposes,” which presumably encompasses all services of the type described, including applicant’s “Marketing services, namely, promoting or advertising the goods and services of others; promoting, advertising and marketing of the brands, products, services and online websites of individuals, businesses and nonprofit organizations; promoting, advertising and marketing on-line web sites of others; advertising agency specializing in the design and execution of word of mouth, viral, buzz and experiential marketing programs; advertising and marketing; advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; advertising and marketing services, namely, promoting the goods and services of others; advertising, marketing and promotion services; event planning and management for marketing, branding, promoting or advertising the goods and services of others; on-line customer-based social media brand marketing services; providing marketing consulting in the field of social media; social media strategy and marketing consultancy focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutions; email marketing services for the self-promotion of others and the promotion of others; operating contests, drawings, and sweepstakes for the self-promotion of others and the promotion of others; social media app-based advertising for the self-promotion of others and the promotion of others; curation of online storage and presentation of event information for the self-promotion of others and the promotion of others; curation of online storage and presentation of travel information, including destinations, lodging, food, tourism for the self-promotion of others and the promotion of others; marketing of events for others; curation of online storage and presentation of sponsorship and advertising for others in association with event listings in mobile, web and print media; promotional services delivered via online live and recorded webinars for the self-promotion of others and the promotion of others; advertising services provided by authoring and marketing written articles for the self-promotion of others and the promotion of others; advertising services provided by filming, producing, and marketing of promotional video and online content for the self-promotion of others and the promotion of others; curation of online storage and presentation, display, and delivery of coupon and discount promotions for the self-promotion of others and the promotion of others; marketing and product consulting services for the aviation industry; curation of online storage and presentation of employment opportunity information for the self-promotion of others and the promotion of others; curation of online storage, presentation, and marketing of the goods and services of others in an online sales marketplace; curation of online storage, presentation, and marketing of aviation-related images for the self-promotion of others and the promotion of others; interactive computing services, namely, providing online social media chat forums and user networking tools for the self-promotion of others and the promotion of others.”  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 goods and/or 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 goods and/or services are related.

 

Therefore, applicant’s goods and/or services are related to registrant’s goods and/or services which weighs in favor of a likelihood of confusion.

 

Conclusion

 

In sum, the similarities between the marks’ appearances, sounds, meanings, and overall commercial impressions combined with the close relationship between the services results in a likelihood of confusion and registration is refused under Section 2(d) of the Trademark Act.

 

Applicant should note the following additional ground for refusal.

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a feature/purpose/function of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

 

The applicant seeks registration for WHERE2RIDE for “Marketing services, namely, promoting or advertising the goods and services of others; promoting, advertising and marketing of the brands, products, services and online websites of individuals, businesses and nonprofit organizations; promoting, advertising and marketing on-line web sites of others; advertising agency specializing in the design and execution of word of mouth, viral, buzz and experiential marketing programs; advertising and marketing; advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; advertising and marketing services, namely, promoting the goods and services of others; advertising, marketing and promotion services; event planning and management for marketing, branding, promoting or advertising the goods and services of others; on-line customer-based social media brand marketing services; providing marketing consulting in the field of social media; social media strategy and marketing consultancy focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutions; email marketing services for the self-promotion of others and the promotion of others; operating contests, drawings, and sweepstakes for the self-promotion of others and the promotion of others; social media app-based advertising for the self-promotion of others and the promotion of others; curation of online storage and presentation of event information for the self-promotion of others and the promotion of others; curation of online storage and presentation of travel information, including destinations, lodging, food, tourism for the self-promotion of others and the promotion of others; marketing of events for others; curation of online storage and presentation of sponsorship and advertising for others in association with event listings in mobile, web and print media; promotional services delivered via online live and recorded webinars for the self-promotion of others and the promotion of others; advertising services provided by authoring and marketing written articles for the self-promotion of others and the promotion of others; advertising services provided by filming, producing, and marketing of promotional video and online content for the self-promotion of others and the promotion of others; curation of online storage and presentation, display, and delivery of coupon and discount promotions for the self-promotion of others and the promotion of others; marketing and product consulting services for the aviation industry; curation of online storage and presentation of employment opportunity information for the self-promotion of others and the promotion of others; curation of online storage, presentation, and marketing of the goods and services of others in an online sales marketplace; curation of online storage, presentation, and marketing of aviation-related images for the self-promotion of others and the promotion of others; interactive computing services, namely, providing online social media chat forums and user networking tools for the self-promotion of others and the promotion of others,” in International Class 035.

 

The term WHERE is defined in part as “at, in, or to what place.”  This is evidenced by the attached dictionary definition from http://www.merriam-webster.com/dictionary/where. The term TO is defined in part as “used as a function word to indicate movement or an action or condition suggestive of movement toward a place, person, or thing reached.”  This is evidenced by the attached dictionary definition from http://www.merriam-webster.com/dictionary/to.  The term RIDE is defined in part as “Sit on and control (a bicycle or motorcycle) for recreation or as a means of transport.”  This is evidenced by the attached dictionary definition from http://www.lexico.com/en/definition/ride#ride.  These terms are merely descriptive in this context as applicant offers advertising services keys to the locations where consumers can or would ride motorcycles.

 

Thus, by evaluating the meaning of the mark using the ordinary meaning, and viewing that meaning in connection with the services herein, the commercial impression of the mark is that the services are offered in conjunction with recommendations of where to ride (motorcycle).  Thus, the term merely identifies a feature of the services, and no multi-stage reasoning process is required to arrive at this conclusion.

 

The attached evidence from http://eurocyclerentals.com/where-to-ride/, http://vickerymotorsports.com/Extras/Where-to-Ride, and http://www.tulsaharley.com/where-to-ride-your-harley-davidson-motorcycle-in-oklahoma-9625/ further demonstrates that the term/mark is merely descriptive of the goods/services. This evidence shows use of the proposed mark in a descriptive manner by numerous other entities.

 

For these reasons, registration is refused under §2(e)(1) of the Trademark Act.

 

SUPPLEMENTAL REGISTER

 

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).  TMEP §816.04.

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(1)        Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.

 

(2)        Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.

 

(3)        Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.

 

(4)        Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.

 

(5)        Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.

 

See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).

 

Amendment to the Supplemental Register will not overcome the likelihood of confusion refusal.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

REQUIREMENT -- IDENTIFICATION OF SERVICES

 

Applicant must clarify some of the wording in the identification of services in International Class(es) 035 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the services are>.  Further, this wording could identify goods and/or services in more than one international class.  For example, Marketing services  are in International Class 035 and Electronic data storage is in International Class 042. 

 

Applicant may substitute the following wording, if accurate:

 

International Class 035

 

Marketing services, namely, promoting or advertising the goods and services of others; promoting, advertising and marketing of the brands, products, services and online websites of individuals, businesses and nonprofit organizations; promoting, advertising and marketing on-line web sites of others; advertising agency services specializing in the design and execution of word of mouth, viral, buzz and experiential marketing programs; advertising and marketing; advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; advertising and marketing services, namely, promoting the goods and services of others; advertising, marketing and promotion services; event planning and management for marketing, branding, promoting or advertising the goods and services of others; on-line customer-based social media brand marketing services; providing marketing consulting in the field of social media; social media strategy and marketing consultancy focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutions; advertising, promotion and marketing services in the nature of e-mail blast campaigns for others email marketing services for the self-promotion of others and the promotion of others advertising, promotion and marketing services in the nature of e-mail blast campaigns for others; operating contests, drawings, and sweepstakes for the self-promotion of others and the promotion of others Promoting the sale of goods and services of others by means of contests, drawings, and sweepstakes; social media app-based advertising for the self-promotion of others and the promotion of others Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media; curation of online storage [these services have been moved to Class 042] and presentation of event information for the self-promotion of others and the promotion of others Promoting the goods and services of others by providing information about upcoming events; curation of online storage and [these services have been moved to Class 042] presentation of travel information, including destinations, lodging, food, tourism for the self-promotion of others and the promotion of others [these services have been reclassified in Class .39]; marketing of events for others; curation of online storage and [these services have been moved to Class 042] presentation of sponsorship and advertising for others Promotional sponsorship of ____ {indicate specific event or activity}in association with event listings in mobile, web and print media; promotional services delivered via Promoting the goods and services of others through online live and non-downloadable pre-recorded webinars in the field of _____ {indicate field}for the self-promotion of others and the promotion of others; advertising services provided by authoring and marketing providing written articles in the field of _____ {indicate field} promoting _____ {indicate what is being promoted}for the self-promotion of others and the promotion of others; advertising services provided by filming, producing, and marketing of promotional video and online content for the self-promotion of others and the promotion of others Preparing advertisements for others, namely, preparing video advertising and promotional videos for commercial use via the internet; curation of online storage and [these services have been moved to Class 042] presentation, display, and delivery of coupon and discount promotions for the self-promotion of others and the promotion of others Promoting the goods and services of others by providing a website featuring coupons and discount information; marketing and product consulting services for the aviation industry; curation of online storage and [these services have been moved to Class 042] presentation of employment opportunity information for the self-promotion of others and the promotion of others [applicant must provide further information about the services in order to properly identify and classify them]; curation of online storage and [these services have been moved to Class 042], presentation, and marketing of the goods and services of others in an online sales marketplace On-line retail store services featuring _____ {indicate field or type of goods}; curation of online storage and [these services have been moved to Class 042], presentation, and marketing of Marketing the aviation-related images of othersfor the self-promotion of others and the promotion of others; interactive computing services, namely, providing online social media chat forums and user networking tools for the self-promotion of others and the promotion of others Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media chat rooms.

 

International Class 039

 

Provision of travel information

 

International Class 042

 

Electronic data storage

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).  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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only one class(es).  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is not acceptable for any international class.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

SPECIMEN

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods and/or services specified in International Class(es) 035 in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  Specifically, the specimen of use fails to mention any of the listed services.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i).  Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)        Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)        Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

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.    

 

 

/Jeff Molinoff/

Jeffrey S Molinoff

US Patent & Trademark Office

Examining Attorney

Law Office 122

571.272.7290

jeffrey.molinoff@uspto.gov

 

 

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 January 17, 2020 for

U.S. Trademark Application Serial No. 88645995

 

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. 

 

 

/Jeff Molinoff/

Jeffrey S Molinoff

US Patent & Trademark Office

Examining Attorney

Law Office 122

571.272.7290

jeffrey.molinoff@uspto.gov

 

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 January 17, 2020, 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.”