To: | Advertising Analytics, LLC (IPDocketing@foley.com) |
Subject: | U.S. Trademark Application Serial No. 88676972 - DELTA - 089937-0118 |
Sent: | February 11, 2020 09:25:30 AM |
Sent As: | ecom126@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88676972
Mark: DELTA
|
|
Correspondence Address: |
|
Applicant: Advertising Analytics, LLC
|
|
Reference/Docket No. 089937-0118
Correspondence Email Address: |
|
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: February 11, 2020
· Section 2(d) Refusal – Likelihood of Confusion
· Amend Identification of Services
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. 5577882 and 5516396. 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 DELTA for “Media monitoring services, namely, monitoring and verification of television, radio, and other media for advertising and customer-specified topics, for gathering relevant content on those ads and topics, and for providing documentation and analysis of advertising and media content to others for business purposes, including automated real time alerts of the foregoing to subscribers; Providing a database featuring marketing and advertising spending data from targeted entities and organizations, and tracking and reporting on issue advocacy ad spending” in class 35. The registered marks, owned by a single entity, are DELTA MEDIA GROUP in standard characters (Reg. No. 5577882) and with a design (Reg. No. 5516396), both for “Digital marketing services for businesses” in class 35.
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 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 services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the [services] and differences in the marks.”); TMEP §1207.01.
Comparison of 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 similar because the applied-for mark, DELTA, is entirely incorporated within the registered marks. Incorporating the entirety of one mark within another, as in the present case, does not obviate the similarity between the compared marks, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); 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 LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Comparison of the Services
The determination of the likelihood of confusion is based on the description of the 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 “Digital marketing services for businesses,” which presumably encompasses all services of the type described, including applicant’s more specific “Media monitoring services, namely, monitoring and verification of television, radio, and other media for advertising and customer-specified topics, for gathering relevant content on those ads and topics, and for providing documentation and analysis of advertising and media content to others for business purposes, including automated real time alerts of the foregoing to subscribers; Providing a database featuring marketing and advertising spending data from targeted entities and organizations, and tracking and reporting on issue advocacy ad spending.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Therefore, the applicant’s and registrant’s overlapping services are related.
Therefore, upon encountering DELTA used on “Media monitoring services, namely, monitoring and verification of television, radio, and other media for advertising and customer-specified topics, for gathering relevant content on those ads and topics, and for providing documentation and analysis of advertising and media content to others for business purposes, including automated real time alerts of the foregoing to subscribers; Providing a database featuring marketing and advertising spending data from targeted entities and organizations, and tracking and reporting on issue advocacy ad spending” and DELTA MEDIA GROUP used on “Digital marketing services for businesses,” consumers are likely to be confused and mistakenly believe that the respective services emanate from a common source. Consequently, registration is refused under Section 2(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.
Identification of Services
The identification of services currently reads: “Media monitoring services, namely, monitoring and verification of television, radio, and other media for advertising and customer-specified topics, for gathering relevant content on those ads and topics, and for providing documentation and analysis of advertising and media content to others for business purposes, including automated real time alerts of the foregoing to subscribers; Providing a database featuring marketing and advertising spending data from targeted entities and organizations, and tracking and reporting on issue advocacy ad spending” in class 35.
Applicant may adopt the following identification, if accurate (changes in bold): “Media monitoring services, namely, monitoring and verification of television, radio, and other media for advertising and customer-specified topics, for gathering relevant content on those ads and topics, and for providing documentation and analysis of advertising and media content to others for business purposes, including automated real time alerts of the foregoing to subscribers; Providing a database featuring marketing and advertising spending data from targeted entities and organizations; Tracking and reporting on issue advocacy advertising spending” in class 35
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.
Advisory – Responding to a Non-Final Office Action
Click to file a response to this nonfinal Office action
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Sara Anne Helmers/
Sara Helmers (she/her)
Trademark Examining Attorney
Law Office 126
571-270-3639
Sara.Helmers@uspto.gov
RESPONSE GUIDANCE