To: | Alta Resources Corp. (dctrademarks@dlapiper.com) |
Subject: | U.S. Trademark Application Serial No. 88785848 - ALTA - N/A |
Sent: | April 27, 2020 05:42:56 PM |
Sent As: | ecom116@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88785848
Mark: ALTA
|
|
Correspondence Address:
|
|
Applicant: Alta Resources Corp.
|
|
Reference/Docket No. N/A
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: April 27, 2020
LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 705667, 5630066, 3708997, 5599770, 4089410, 2614836, 4408266, 6012877, 6012889, 6012973 and 6018064. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The applicant has applied to register ALTA with a design for “business-to-business and business-to-consumer integrated sales, customer care, e-business, and fulfillment business process outsourcing.”
Registration No. |
Mark |
Services |
Applied-For Mark |
ALTA |
Business-to-business and business-to-consumer integrated sales, customer care, e-business, and fulfillment business process outsourcing |
3705667 |
ALTA, plus design |
Wholesale stores featuring cattle embryos, and bull semen; wholesale stores featuring live cattle |
5630066 |
ALTA BOOKING |
Commercial intermediation services, namely, mediation and conclusion of commercial transactions for others; positioning, launching, and management of consumer loyalty programs for commercial, promotional, and/or advertising purposes; assistance and advice relating to all of the aforesaid services; consulting services relating to customer relationship management; collection and systematization of information in computer databases; promotion of the goods and services of others, namely, promotion for third parties on hotels, tourist accommodation, restaurants, car rentals, cruises, air-fares, leisure facilities, entertainment and sporting facilities, clubs and restaurants, travel packages, credit cards and brand name merchandise; promoting and marketing the goods and services of others via global computer networks enabling consumers to view them, compare them, and buy them conveniently; commercial advice for consumers; promotion of the goods and services of others; promotion and public relations; publicity agency services, namely, representation of sports personalities, artists and celebrities for commercial purposes; advertising agency services; import-export agency services; personnel recruitment and employment agencies; modeling services for advertising or sales promotion purposes; negotiation and conclusion of commercial transactions for others; organization of events for commercial or advertising purposes; sponsorship search; provision of business information directory services via global computer networks, namely, provision of business directories featuring hotels, cruises, entertainment, restaurants and bars |
3708997 |
ALTA CREATE VALUE BUILD TRUST DELIVER RESULTS, plus design |
Wholesale stores featuring cattle embryos, and bull semen; wholesale stores featuring live cattle |
5599770 |
ALTA EQUIPMENT COMPANY |
Dealerships in the field of construction, industrial, road building, power systems and aggregate processing equipment |
4089410 |
ALTA FLEET SERVICES |
Distributorships in the field of lift trucks and parts, and in the field of materials handling equipment |
2614836 |
ALTA LODGE |
Retail gift shops |
4408266 |
ALTA RAIL |
On-line retail store services featuring toy trains, model trains, model train sets, and train set accessories, namely, artificial turf, foliage, ballast, lichen and grass; Retail store services featuring toy trains, model trains, model train sets, and train set accessories, namely, artificial turf, foliage, ballast, lichen and grass |
6012877 |
ALTA |
Distributorship services in the field of coffee, coffee brewing equipment, bottled drinking water, first aid and emergency equipment, safety equipment, food seasonings, snack foods, soups, plates, bowls, utensils, paper towels, tissues, napkins, hand sanitizing preparations, kitchen cleaning preparations and cleaning equipment, coffee appliance cleaning preparations and equipment, food storage equipment, and emergency supply kits for pets and humans to businesses and offices |
6012889 |
ALTA and design |
Distributorship services in the field of coffee, coffee brewing equipment, bottled drinking water, first aid and emergency equipment, safety equipment, food seasonings, snack foods, soups, plates, bowls, utensils, paper towels, tissues, napkins, hand sanitizing preparations, kitchen cleaning preparations and cleaning equipment, coffee appliance cleaning preparations and equipment, food storage equipment, and emergency supply kits for pets and humans to businesses and offices |
6012973 |
ALTA FOODCRAFT COFFEE & REFRESHEMENT SERVICES |
Distributorship services in the field of coffee, coffee brewing equipment, bottled drinking water, first aid and emergency equipment, safety equipment, food seasonings, snack foods, soups, plates, bowls, utensils, paper towels, tissues, napkins, hand sanitizing preparations, kitchen cleaning preparations and cleaning equipment, coffee appliance cleaning preparations and equipment, food storage equipment, and emergency supply kits for pets and humans to businesses and offices |
6018064 |
ALTA FOODCRAFT COFFEE & REFRESEMENT SERVICES |
Distributorship services in the field of coffee, coffee brewing equipment, bottled drinking water, first aid and emergency equipment, safety equipment, food seasonings, snack foods, soups, plates, bowls, utensils, paper towels, tissues, napkins, hand sanitizing preparations, kitchen cleaning preparations and cleaning equipment, coffee appliance cleaning preparations and equipment, food storage equipment, and emergency supply kits for pets and humans to businesses and offices |
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 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).
In the present case, the marks are similar in sound, appearance, and meaning because the registered marks contain the applied-for mark in its entirety with identical spelling and pronunciation. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Further, the common term is the first term in each mark. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
Overall, the marks have the same commercial impression. The average purchaser would retain a general impression of the marks and would believe that the goods or services come from the same source.
COMPARISON OF GOODS/SERVICES
In this case, the application use(s) broad wording to describe business-to-business and business-to-consumer integrated sales, customer care, e- business, and fulfillment business process outsourcing services, which presumably encompasses all services of the type described, including registrants’ narrower services. 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)). Thus, applicant’s and registrant’s goods and/or services are related.
Since the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s services. Therefore, applicant’s mark is not entitled to registration.
RECITATION OF SERVICES
Applicant may substitute the following wording, if accurate:
Class 35: Business-to-business direct marketing services; business to consumer retail store services featuring (specify goods, e.g. clothing); customer care, namely, customer relationship management; business administration services for processing sales made on the Internet; order fulfillment services; business consulting services in the field of e-business
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.
TRANSLATION
To permit proper examination of the application, applicant must submit an English translation of all wording in the mark because it is foreign wording. 37 C.F.R. §§2.32(a)(9), 2.61(b); TMEP §809. The following English translation is suggested: The English translation of “ALTA” is “HIGH”. TMEP §809.03. See attached translation evidence. http://translate.google.com/#view=home&op=translate&sl=auto&tl=en&text=alta
How to respond. Click to file a response to this nonfinal Office action.
/Jennifer M. Martin/
Jennifer M. Martin
Examining Attorney
Law Office 116
(571) 272-9193
Jennifer.Martin@uspto.gov
RESPONSE GUIDANCE