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:  April 22, 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.

 

 

SEARCH OF USPTO DATABASE OF MARKS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

 

SUMMARY OF ISSUES:

·               Section 2(d) Refusal – Likelihood of Confusion – This Partial Refusal Applies Only to the Services Specified Therein

• Amendment to Identification of Services Required
• Multiple-Class Application Requirements
• Section 44(e) Requirement – Marks Do Not Match
• Amendment to Description of Mark Required

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – THIS PARTIAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

The stated refusal refers to the following services and does not bar registration for the other services:  “Market analysis; Compilation of statistics; Airport administration services; Analysis of business statistics; Business management of airports; Analysis of market research data and statistics; Analysis of market research statistics; Market analysis and research; Market analysis reports; The aforesaid services only with regard to aircraft and airport services, including freight forwarding by air and weight, but not including advertising services in other fields,” “Loading of freight; Loading of cargo; Ground support freight handling services provided at airports; Providing advice relating to freight forwarding services; Airport baggage handling; Air cargo transport; Services for freight-forwarding by air; Provision of airport information services relating to aviation; Information services relating to the movement of cargo; Loading and unloading of goods; Loading and unloading of airplanes; Advisory services relating to the storage of goods; Transport; Airport services; Loading of air freight; Unloading cargo and luggage; Air transport; Consultancy services relating to storage; Cargo handling and freight services,” and “Estimations in the field of technology provided by engineers; Technical measuring and testing; Technical supervision and inspection; Engineering project studies; engineering services; Engineering consultancy services; Engineering services for others; Technical project planning in the field of engineering; Assessment in the field of technology provided by engineers; Engineering and computer-aided engineering services; The aforesaid services solely relating to airport and aircraft services, including air and lorry cargo traffic services.”

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3038687, 3765901, 4790899, and 5168185.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.  U.S. Registration Nos. 3765901 and 5168185 are owned by the same entity.

 

Applicant’s mark is ARC with stylization and design for the relevant services “Market analysis; Compilation of statistics; Airport administration services; Analysis of business statistics; Business management of airports; Analysis of market research data and statistics; Analysis of market research statistics; Market analysis and research; Market analysis reports; The aforesaid services only with regard to aircraft and airport services, including freight forwarding by air and weight, but not including advertising services in other fields,” “Loading of freight; Loading of cargo; Ground support freight handling services provided at airports; Providing advice relating to freight forwarding services; Airport baggage handling; Air cargo transport; Services for freight-forwarding by air; Provision of airport information services relating to aviation; Information services relating to the movement of cargo; Loading and unloading of goods; Loading and unloading of airplanes; Advisory services relating to the storage of goods; Transport; Airport services; Loading of air freight; Unloading cargo and luggage; Air transport; Consultancy services relating to storage; Cargo handling and freight services,” and “Estimations in the field of technology provided by engineers; Technical measuring and testing; Technical supervision and inspection; Engineering project studies; engineering services; Engineering consultancy services; Engineering services for others; Technical project planning in the field of engineering; Assessment in the field of technology provided by engineers; Engineering and computer-aided engineering services; The aforesaid services solely relating to airport and aircraft services, including air and lorry cargo traffic services.”

 

The cited registrations are

 

ARC as a typed drawing (Reg. No. 3038687) for the relevant services “storage and freight transportation by truck of tools necessary for maintenance, repair and rebuilding of aircraft” and “providing information in the field of technical innovation regarding aircraft and their components; technical consultation in the field of aviation; technical expert opinion in the field of aviation for others; development of non-EDP dependent inspection programs for aircraft and parts thereof.”

 

ARC in standard characters (Reg. No. 3765901) for the relevant services “Providing business management services to companies in the travel industry, namely, inventory control of travel tickets, reporting on travel ticket transactions settled for others, settlement of commercial transactions in the field of travel tickets and electronic processing of travel ticket orders for others; business data compiling and business analyzing in the field of travel; data processing services in the field of travel” and “travel and tour information services; travel and tour ticket reservation service; reservation and booking of seats for transportation; providing information, news and commentary in the field of travel; and providing links to web sites of others featuring travel information.”

 

ARC LOGISTICS, INC. with stylization and design (Reg. No. 4790899) for “supply chain logistics and reverse logistics services, namely, storage, transportation and delivery of documents, packages, raw materials, and other freight for others by air, rail, ship or truck, and not by aircraft, and excluding storage, transportation and delivery of documents, packages, raw materials, and other freight for others necessary for maintenance, repair and rebuilding of aircraft.”

 

ARC with stylization (Reg. No. 5168185) for the relevant services “Providing business management services to companies in the travel industry, namely, inventory control of travel tickets, reporting on travel ticket transactions settled for others, settlement of commercial transactions in the field of travel tickets and electronic processing of travel ticket orders for others; business data compiling and business analyzing in the field of travel; data processing services in the field of travel” and “travel and tour information services; travel and tour ticket reservation service; reservation and booking of seats for transportation; providing information, news and commentary in the field of travel; and providing links to web sites of others featuring travel information.”

 

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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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 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).

 

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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).  For instance, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  Additionally, disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

Reg. No. 3038687, 3765901, and 5168185

 

In this case, the wording in applicant’s mark is ARC and the wording in each of registrants’ marks is ARC.  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 registrants’ respective services.  Id.  Because the word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression, the addition of a design element does not obviate the similarity of the marks in this case.  See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).

 

Reg. No. 4790899

 

And in this case, the wording in applicant’s mark is ARC and the wording in registrant’s mark is ARC LOGISTICS, INC.  Applicant’s mark is essentially entirely incorporated within registrant’s mark, and applicant has merely removed the highly descriptive or generic wording “LOGISTICS, INC.”  Incorporating the entirety of one mark within another 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 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.  Similarly, 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.

 

Therefore, applicant’s mark and registrants’ marks share the same commercial impression and are confusingly similar.

 

Comparison of Services

 

The compared services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Determining 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)).  

 

            Reg. No. 3038687

 

In this case, the application uses broad wording to describe “Loading of freight; Loading of cargo; Loading and unloading of goods; Transport; Unloading cargo and luggage; Cargo handling and freight services” and “Estimations in the field of technology provided by engineers; Technical measuring and testing; Technical supervision and inspection; Engineering project studies; engineering services; Engineering consultancy services; Engineering services for others; Technical project planning in the field of engineering; Assessment in the field of technology provided by engineers; Engineering and computer-aided engineering services; The aforesaid services solely relating to airport and aircraft services, including air and lorry cargo traffic services,” which presumably encompasses all services of the type described, including registrant’s more narrow “storage and freight transportation by truck of tools necessary for maintenance, repair and rebuilding of aircraft” and “providing information in the field of technical innovation regarding aircraft and their components; technical consultation in the field of aviation; technical expert opinion in the field of aviation for 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).

 

Reg. No. 3765901 and 5168185

 

And in this case, the application uses broad wording to describe “Market analysis; Compilation of statistics; Airport administration services; Analysis of business statistics; Business management of airports; Analysis of market research data and statistics; Analysis of market research statistics; Market analysis and research; Market analysis reports; The aforesaid services only with regard to aircraft and airport services, including freight forwarding by air and weight, but not including advertising services in other fields” and “Provision of airport information services relating to aviation; Transport; Airport services; Air transport,” which presumably encompasses all services of the type described, including registrant’s more narrow “providing business management services to companies in the travel industry, namely, inventory control of travel tickets, reporting on travel ticket transactions settled for others, settlement of commercial transactions in the field of travel tickets and electronic processing of travel ticket orders for others; business data compiling and business analyzing in the field of travel; data processing services in the field of travel” and “travel and tour information services; travel and tour ticket reservation service; reservation and booking of seats for transportation; providing information, news and commentary in the field of travel; and providing links to web sites of others featuring travel information.”  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).

 

Reg. No. 4790899

 

Finally, in this case, the application uses broad wording to describe “Loading of freight; Loading of cargo; Ground support freight handling services provided at airports; Airport baggage handling; Air cargo transport; Services for freight-forwarding by air; Loading and unloading of goods; Loading and unloading of airplanes; Transport; Airport services; Loading of air freight; Unloading cargo and luggage; Air transport; Cargo handling and freight services,” which presumably encompasses all services of the type described, including registrant’s more narrow “supply chain logistics and reverse logistics services, namely, storage, transportation and delivery of documents, packages, raw materials, and other freight for others by air, rail, ship or truck, and not by aircraft, and excluding storage, transportation and delivery of documents, packages, raw materials, and other freight for others necessary for maintenance, repair and rebuilding of aircraft.”  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 registrants’ 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 registrants services are related.

 

Finally, the attached Internet evidence, consisting of the websites of Delta.com, FedEx.com, FreightServices.net, and USATruckloadShipping.com, establishes that the same entity commonly provides the relevant services and markets the services under the same mark, the relevant services are provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the services are similar or complementary in terms of purpose or function.  Thus, applicant’s and registrants’ services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Because the marks are confusingly similar and the services are related, there is a likelihood of confusion between the marks.  Consequently, registration is refused pursuant to Section 2(d) of the Trademark Act for applicant’s “Market analysis; Compilation of statistics; Airport administration services; Analysis of business statistics; Business management of airports; Analysis of market research data and statistics; Analysis of market research statistics; Market analysis and research; Market analysis reports; The aforesaid services only with regard to aircraft and airport services, including freight forwarding by air and weight, but not including advertising services in other fields,” “Loading of freight; Loading of cargo; Ground support freight handling services provided at airports; Providing advice relating to freight forwarding services; Airport baggage handling; Air cargo transport; Services for freight-forwarding by air; Provision of airport information services relating to aviation; Information services relating to the movement of cargo; Loading and unloading of goods; Loading and unloading of airplanes; Advisory services relating to the storage of goods; Transport; Airport services; Loading of air freight; Unloading cargo and luggage; Air transport; Consultancy services relating to storage; Cargo handling and freight services,” and “Estimations in the field of technology provided by engineers; Technical measuring and testing; Technical supervision and inspection; Engineering project studies; engineering services; Engineering consultancy services; Engineering services for others; Technical project planning in the field of engineering; Assessment in the field of technology provided by engineers; Engineering and computer-aided engineering services; The aforesaid services solely relating to airport and aircraft services, including air and lorry cargo traffic services.”

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the services to which the refusal pertains; or

 

(2)  Filing a Request to Divide Application form (form #3) to divide out the services that have not been refused registration, so that the mark may proceed toward publication for opposition for those services to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

 

AMENDMENT TO IDENTIFICATION OF SERVICES REQUIRED

 

Select entries from applicant’s identification of services are indefinite and must be clarified.  Applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe the service, its main purpose, and its intended uses.  See id.  Furthermore, select entries from the applicant’s identification of services need clarification because they are too broad and could include services classified in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

Also, applicant has misclassified select entries in its identification of services.  Therefore, applicant may respond by (1) adding the suggested International Class to the application and reclassifying the specified services in the proper international class, (2) deleting the specified services from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The chart below identifies applicant’s indefinite and broad identification entries, the rationale explaining why the entries are indefinite or broad, and suggested definite and clear wording which applicant may adopt.  The chart also identifies applicant’s entries that are misclassified and suggested classification and wording which applicant may adopt.  Suggested changes are displayed as underlined wording and punctuation.  Applicant may substitute the wording contained within the table for each indefinite and broad entry, if accurate.

 

 

Applicant may adopt the following complete identification of services, if accurate, with changes underlined:

 

International Class 35:   Market analysis; Compilation of statistics; Airport business administration services; Analysis of business statistics; Business management of airports; Analysis of market research data and statistics; Analysis of market research statistics; Market analysis and research; Provision of market analysis reports; The aforesaid services only with regard to aircraft and airport services, including freight forwarding by air and weight, but not including advertising services in other fields; Information services relating to the movement of cargo in the nature of tracking of assets in transit for business inventory purposes; Estimations in the field of technology provided by engineers, namely, estimating contracting work in the field of technology; Project management services for others in the field of engineering; The aforesaid services solely relating to airport and aircraft services, including air and lorry cargo traffic services

 

International Class 36:   Estimations in the field of technology provided by engineers, namely, preparation of quotes for cost estimation in the field of technology; The aforesaid services solely relating to airport and aircraft services, including air and lorry cargo traffic services

 

International Class 37:   Infrastructure construction, namely, construction of roads, bridges, runways, buildings, and power supply facilities; On site project management relating to the construction of airport facilities; Consultancy and information services relating to construction; On site project management relating to the construction of aerodrome facilities; Construction of airports; Advisory services relating to the alteration of buildings in the nature of renovation and restoration of buildings; Construction of buildings and other steel and masonry structures; Building construction consultancy; Construction project management services; Construction consultancy; Consultation in building construction supervision; Construction management services; Building construction advisory services; Building construction supervision services for building projects

 

International Class 39:   Loading of freight; Loading of cargo; Ground support freight handling services provided at airports; Flight planning services; Providing advice relating to freight forwarding services; Airport baggage handling; Air cargo transport; Provision of airport facilities for aviation; Services for freight-forwarding by air; Provision of airport information services relating to aviation in the nature of flight arrival and departure information; Information services relating to the movement of cargo in the nature of cargo handling, loading, and unloading and air cargo transport; Loading and unloading of goods being cargo; Loading and unloading of airplanes; Advisory services relating to the storage of goods; Air transportation services for cargo; Airport services; Loading of air freight; Unloading cargo and luggage; Air transport; Consultancy services relating to storage of goods; Cargo handling and freighting services

 

International Class 42:   Technical measuring being calibration; technical testing of materials; Technology supervision and inspection in the field of building technology relating to structural engineering; Engineering services in the field of building technology; Technical consultancy services relating to structural engineering; Engineering project studies, namely, conducting scientific feasibility studies; Consultancy in the field of construction drafting; Architectural and engineering services; Engineering consultancy services; Engineering services for others; Technical project planning in the field of engineering, namely, technical project planning of buildings and infrastructure systems for buildings; Architectural services for the design of commercial buildings; Engineering services for the analysis of structures; Civil engineering consultancy; Engineering services for the design of structures; Architectural services for the design of office facilities; Architectural services for the design of industrial buildings; Assessment in the field of technology provided by engineers, namely, engineering services for building and property condition assessment; Engineering and computer-aided engineering services; Testing services for the goods and services of others to determine conformity with certification of quality or standards; Engineering consultancy relating to data-processing; Preparation of scientific reports for others relating to technical project studies for construction projects; Civil engineering planning services; Civil engineering drawing services; Testing, analysis and evaluation of the services of others to determine conformity with certification standards; Engineering project management services, namely, computer project management services; Conducting technical scientific feasibility project studies for construction projects; The aforesaid services solely relating to airport and aircraft services, including air and lorry cargo traffic services

 

Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying 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 identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:

 

(1)        List the services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least 5 classes; however, applicant submitted fees sufficient for only 4 classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

The USPTO changed the federal trademark rules to eliminate the TEAS RF application, which is now considered a “TEAS Standard” application.  See 37 C.F.R. §2.6(a)(iii).  The fee for adding classes to a TEAS Standard application is $275 per class.  See id.  For more information about these changes, see the Mandatory Electronic Filing webpage.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

 

SECTION 44(e) REQUIREMENT – MARKS DO NOT MATCH

 

The USPTO cannot accept applicant’s drawing of the mark in the U.S. application because it does not match the mark in the foreign registration; that is, the mark in the drawing is not a “substantially exact representation of the mark” in the foreign registration.  See 37 C.F.R. §2.51(c); TMEP §§807.12(b), 1011.01.  Only slight, inconsequential variations are permitted between the mark in the U.S. application and the mark in the foreign registration.  In re Hacot-Colombier, 105 F.3d 616, 619, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); In re Larios, S.A., 35 USPQ2d 1214, 1216-17 (TTAB 1995); TMEP §1011.01.  If the foreign registration shows the mark in certain colors and/or includes a color claim or the legal equivalent, applicant must show the same mark in the same colors with the same color claim in the U.S. application.  See TMEP §§807.07(d)(ii), 1011.01. 

 

In this case, the U.S. drawing displays the mark as appearing without a color claim.  However, the foreign registration displays the mark as showing the diagonal lines forming part of the “A” as dark blue, royal blue, and light blue and the rest of the wording appearing in dark blue.  The mark in the U.S. drawing does not match the mark on the foreign registration because the mark on the foreign registration appears in color and the mark in the U.S. drawing appears without color.

 

Applicant may respond to this issue by satisfying the following:

 

(1)        A new drawing of the mark in the colors that match the mark in the foreign registration.

 

(2)        A request to amend the color claim and description in the U.S. application to match the mark in the foreign registration.  See 37 C.F.R. §§2.51(c), 2.52(b)(1); TMEP §§807.07(d)(ii), 1011.01.  The description must describe the literal and design elements of the mark and specify where all the colors appear in those elements.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a), 1011.01.  Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant should specify that in the description.  See TMEP §807.07(d), (d)(ii). 

 

The following color claim and description are suggested, if accurate:

 

Color claim:  “The colors dark blue, royal blue, and light blue are claimed as a feature of the mark.”

 

Description:  “The mark consists of the stylized dark blue letters “ARC” with the “A” having three parallel diagonal lines forming the left leg with the leftmost line being dark blue, the middle line being royal blue, and the rightmost line being light blue.”

 

Alternatively, applicant may request to amend the filing basis to Trademark Act Section 1(a) or 1(b), if applicant can satisfy the requirements for the chosen basis.  See 15 U.S.C. §1051(a)-(b); 37 C.F.R. §2.35(b)(1); TMEP §806.03.  A Section 1 basis does not require applicant to submit a foreign registration but requires evidence of applicant’s mark in use in commerce.  See 15 U.S.C. §1051(a)-(b); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.76(b)(2), 2.88(b)(2); TMEP §904.

 

For more information about drawings and a color claim and/or description, amending the basis, and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

 

AMENDMENT TO DESCRIPTION OF MARK REQUIRED

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following description is suggested, if accurate:

 

The mark consists of the stylized letters “ARC” with the “A” having three parallel diagonal lines forming the left leg.

 

 

RESPONSE GUIDELINES

 

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 and/or requirements 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.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

/Steven W. Ferrell Jr./

Examining Attorney

Law Office 121

(571) 270-3424

steven.ferrell@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 April 22, 2020 for

U.S. Trademark Application Serial No. 88809887

 

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. 

 

 

/Steven W. Ferrell Jr./

Examining Attorney

Law Office 121

(571) 270-3424

steven.ferrell@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 April 22, 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.”