United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88773642
Mark: ASAP
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Correspondence Address:
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Applicant: Sanders, Drew W
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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: April 22, 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
Section 2(d) Refusal: Likelihood of Confusion
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.
Similarities 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Applicant seeks registration for ASAP. Registrant’s mark is ASAP. The marks are similar because they are identical.
Relatedness of the Services
Applicant seeks registration for the following:
Class 38: Audio and video broadcasting services over the Internet; Chat room services for social networking; Chatroom services for social networking; Internet radio services, namely, transmission of audio material via the internet; Peer-to-peer network computer services, namely, electronic transmission of audio, video and other data and documents among computers; Streaming of audio material on the Internet; Streaming of audio, visual and audiovisual material via a global computer network; Telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the Internet; Transmission and distribution of data or audio visual images via a global computer network or the internet
Class 45: Internet-based social networking services; On-line social networking services; Online social networking services; Providing a social networking website for entertainment purposes
Registrant’s services are the following:
Class 38: Electronic data transmission; electronic transmission and streaming of digital media content for others via global and local networks; communication services for transmitting, accessing, receiving, downloading, streaming, broadcasting, mirroring and transferring electronic data and multimedia content, namely, voice, audio, visual images, data, books, photos, videos, text, documents, audiovisual works, multimedia works, literary works, files, and other electronic works, via telecommunications networks, wireless communication networks, the Internet, information services networks, and data networks; streaming of audio, visual and audiovisual material via the Internet or other computer or communications network; transmission of electronic data and multimedia content featuring image, text, audio, video, audiovisual, music, and data files via telecommunications networks, wireless communication networks, the Internet, information services networks, and data networks
Class 42: Computer services, namely, providing temporary use of non-downloadable software tool for streaming and delivery of audio and video recordings and multimedia entertainment content featuring image, text, audio, video, audiovisual, music, and data files; computer services, namely, providing temporary use of non-downloadable software tool for storage and playback of personalized audio and video recordings and multimedia content featuring image, text, audio, video, audiovisual, music, and data files; storage of electronic data and digital multimedia content featuring image, text, audio, video, audiovisual, music, and data files
First, in Class 38, applicant’s services are related to registrant’s services because many of the entries are identical or legally equivalent. Applicant’s telecommunication services are all types of electronic data transmission, an entry in registrant’s services. Moreover, registrant transmits data in the nature of video and audio, which is legally identical to applicant’s streaming, transmission, and chat room services. As such, these services are related because they are identical or legally equivalent.
Next applicant’s services in Class 45, social networking services, are related to registrant’s computer services because they are similar in nature and travel through the same channels of trade. These services are similar in nature in that they are all online computer services.
Next, the services are related because they share the same channels of trade. The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar services as those of both applicant and registrant in this case. This evidence shows that the services listed therein, namely social networking services and providing online software and storage of electronic data, 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).
The use of identical marks used with identical and related services is likely to cause confusion. As such, registration is refused under Section 2(d).
Response Guidelines
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
The term “TMEP” refers to the USPTO’s Trademark Manual of Examining Procedure, a manual written by USPTO trademark attorneys that explains the laws and procedures applicable to the trademark application, registration, and post-registration processes. The USPTO updates the TMEP periodically to reflect changes in law, policy, and procedure.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
Please note that informal email communication with the Office is not confidential and will be made part of the public record. TMEP §709.04.
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How to respond. Click to file a response to this nonfinal Office action.
/Dannean J Hetzel/
Examining Attorney
Law Office 106
dannean.hetzel@uspto.gov
571-272-8858
RESPONSE GUIDANCE