To: | Pencil Learning Technologies, Inc. (jake@pacificcrestlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88827152 - PENCIL - N/A |
Sent: | June 02, 2020 03:03:28 PM |
Sent As: | ecom128@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 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88827152
Mark: PENCIL
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Correspondence Address: PACIFIC CREST LAW PARTNERS, LLP |
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Applicant: Pencil Learning Technologies, Inc.
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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: June 02, 2020
INTRODUCTION
REFUSAL – SECTION 2(d) – 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. 4458725 and 4700443. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The applied-for mark is:
· U.S. Application Serial No. 88827152 – “PENCIL” in standard characters for:
o Class 035: Operating on-line marketplaces featuring educational courses and educational course materials
o Class 042: Providing temporary use of non-downloadable cloud-based software for the viewing, uploading, sharing and presenting of educational courses and educational course materials
The registered marks are:
· U.S. Registration No. 4458725 – “PENCIL” in standard characters for:
o Class 042: Providing an interactive website featuring technology that allows users to access and connect with an online social network, that enables users to view and post classified advertisings and event listings, and that enables users to buy, sell and exchange goods and services
· U.S. Registration No. 4700443 – “PENCIL” in standard characters for:
o Class 009: Downloadable computer software for a mobile application for users to access and connect with an online social network for school communities, for users to view and post classified advertisings and event listings, and to enable users to buy, sell and exchange goods and services
* “Pencil Networks, Inc.” owns the registered marks
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.
Similarity of the Marks
The applied-for mark is:
· U.S. Application Serial No. 88827152 – “PENCIL” in standard characters
The registered marks are:
· U.S. Registration No. 4458725 – “PENCIL” in standard characters
· U.S. Registration No. 4700443 – “PENCIL” in standard characters
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).
All the marks are “PENCIL” in standard characters. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Similarity of the Goods and Services
The applied-for mark is:
· U.S. Application Serial No. 88827152 – “PENCIL” for:
o Class 035: Operating on-line marketplaces featuring educational courses and educational course materials
o Class 042: Providing temporary use of non-downloadable cloud-based software for the viewing, uploading, sharing and presenting of educational courses and educational course materials
The registered marks are:
· U.S. Registration No. 4458725 – “PENCIL” for:
o Class 042: Providing an interactive website featuring technology that allows users to access and connect with an online social network, that enables users to view and post classified advertisings and event listings, and that enables users to buy, sell and exchange goods and services
· U.S. Registration No. 4700443 – “PENCIL” for:
o Class 009: Downloadable computer software for a mobile application for users to access and connect with an online social network for school communities, for users to view and post classified advertisings and event listings, and to enable users to buy, sell and exchange goods and services
Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods. TMEP §1207.01(a)(ii); see In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (finding retail shops featuring sports team related clothing and apparel related to various clothing items, including athletic uniforms); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (finding retail grocery and general merchandise store services related to furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (finding distributorship services in the field of health and beauty aids related to skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (finding various items of men’s, boys’, girls’ and women’s clothing related to restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (finding refinishing of furniture, office furniture, and machinery related to office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (finding trucking services related to motor trucks and buses).
When the cited registrant’s software is identified broadly without restriction or limitation as to the purpose or function, the software is presumed to encompass all goods of that type, including the same type of software as applicant. See In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1207.01(a)(iii).
The attached evidence to this Office action shows entities that provide both the applicant’s services and registrant’s goods and services, but all under the same mark:
1) Operating on-line marketplaces featuring educational courses and educational course materials;
2) Providing temporary use of non-downloadable cloud-based software for the viewing, uploading, sharing and presenting of educational courses and educational course materials;
3) Downloadable computer software for a mobile application for users to access and connect with an online social network for school communities, for users to view and post classified advertisings and event listings, and to enable users to buy, sell and exchange goods and services; and
4) Providing an interactive website featuring technology that allows users to access and connect with an online social network, that enables users to view and post classified advertisings and event listings, and that enables users to buy, sell and exchange goods and services.
These entities show that it is common in the applicant’s industry for entities to provide all of the compared goods and services from a single source:
1. Udemy
2. Simplilearn
3. OpenSesame
4. Skillshare
See the attached evidence.
As such, the applied-for mark and registered mark have similar goods and services.
Conclusion
In conclusion, the applied-for mark “PENCIL” is confusingly similar to the registered marks “PENCIL” because the marks are identical and share similar goods and services. Therefore, the Office refuses registration of the applied-for mark “PENCIL” under Trademark Act Section 2(d).
RESPONSE GUIDELINES
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. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) 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.
How to respond. Click to file a response to this nonfinal Office action.
Jalandoni, Chad
/Chad C. Jalandoni, Esq./
Trademark Examining Attorney
USPTO, Law Office 128
(571) 272-3329
chad.jalandoni@uspto.gov
RESPONSE GUIDANCE