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:  September 17, 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:

 

• Prior Pending Application
• Section 2(d) Refusal – Likelihood of Confusion
• Identification of Services

 

Prior Pending Application

 

The filing date of pending U.S. Application Serial No. 88832648 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

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. 5263054, 3906591, and 5230243.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant has applied to register the mark ORCA in standard characters for use with “Chartering of flights.; Booking of tickets for air travel” in Class 39 and “Software as a service (SAAS) services, namely, hosting software for use by others for use consisting of marketing, scheduling, and brokering air charter flights” in Class 42.

 

The mark in Reg. No. 5230243 is ORCA in standard characters for use with “Hosting domain names; hosting of digital content on the Internet; hosting websites on the Internet” in Class 42.

 

The mark in Reg. No. 3906591 consist of a design and the literal element ORCA for use with, inter alia, “Mass transit for the general public” in Class 39.

 

The mark in Reg. No. 5263054 is ORCA in stylized form for use with, inter alia, “Transport of fruit, vegetables and liquids in bulk; packaging and storage of fruit, vegetables and liquids in bulk; travel arrangement, namely, travel booking agencies of fruit, vegetables and liquids in bulk; advisory services relating to transport of fruit, vegetables and liquids in bulk, namely, transportation consulting; air and sea transportation of fruit, vegetables and liquids in bulk; air transportation of fruit, vegetables and liquids in bulk; arranging for the storage of fruit, vegetables and liquids in bulk; arranging of transportation of fruit, vegetables and liquids in bulk, namely, making reservations and bookings for transportation; boat transportation of fruit, vegetables and liquids in bulk; booking of transportation of fruit, vegetables and liquids in bulk via a web site; booking of transportation of fruit, vegetables and liquids in bulk via global computer networks; booking of transportation of fruit, vegetables and liquids in bulk; warehouse storage services of fruit, vegetables and liquids in bulk; cargo ship transport of fruit, vegetables and liquids in bulk; cargo transportation of fruit, vegetables and liquids in bulk; computerized transportation information services relating to fruit, vegetables and liquids in bulk; ferryboat transport of fruit, vegetables and liquids in bulk; freight transportation of fruit, vegetables and liquids in bulk; hazardous waste transportation services; leasing of pallets for the transport or storage of fruit, vegetables and liquids in bulk; leasing of storage containers for fruit, vegetables and liquids in bulk; leasing of cargo containers for fruit, vegetables and liquids in bulk; loading, packing, storage or transportation of fruit, vegetables and liquids in bulk; lorry transport, namely, truck transport, of fruit, vegetables and liquids in bulk; marine transport of fruit, vegetables and liquids in bulk; oil transport services; on-line tracking of transport or cargo relating to fruit, vegetables and liquids in bulk, namely, transportation consultation; packaging articles for transportation of fruit, vegetables and liquids in bulk; providing information about storage of fruit, vegetables and liquids in bulk; providing information about transport services of fruit, vegetables and liquids in bulk; railway transport of fruit, vegetables and liquids in bulk; refrigerated warehouse storage services for fruit, vegetables and liquids in bulk; refrigerated transport of chilled of fruit, vegetables and liquids in bulk; rental of storage containers for fruit, vegetables and liquids in bulk; rental of storage facilities, namely, providing self-storage facilities for others; rental of storage space, namely, providing self-storage facilities for others; transport of fruit, vegetables and liquids in bulk by boat; road transportation of fruit, vegetables and liquids in bulk; cargo ship transportation of fruit, vegetables and liquids in bulk; warehouse storage of fruit, vegetables and liquids in bulk consultancy services; warehouse storage of fruit, vegetables and liquids in bulk information services; warehouse storage of fruit, vegetables and liquids in bulk after transportation; warehouse storage of fruit, vegetables and liquids in bulk before transportation; warehouse storage services relating to fruit, vegetables and liquids in bulk; supply chain logistics or reverse logistics services consisting of the storage, transportation or delivery of fruit, vegetables and liquids in bulk; supply chain logistics or reverse logistics services consisting of the storage, transportation or delivery of fruit, vegetables and liquids in bulk for others by air, rail, ship or truck; tanker transport of fruit, vegetables and liquids in bulk; tracking of transport vehicles by computer, namely, transportation consultation; transport of fruit, vegetables and liquids in bulk advisory services, namely, transportation consultation; transport brokerage of fruit, vegetables and liquids in bulk; transportation of fruit, vegetables and liquids in bulk by land, truck, rail, air, sea, river, or water; transportation consultancy relating to fruit, vegetables and liquids in bulk; transportation information relating to fruit, vegetables and liquids in bulk; transportation logistics relating to fruit, vegetables and liquids in bulk in the nature of supply chain logistics and reverse logistics services, namely, storage, transportation and delivery of fruit vegetables and liquids in bulk for others by air, rail, ship and truck; transportation services of fruit, vegetables and liquids in bulk; warehouse storage of fruit, vegetables and liquids in bulk” in Class 39.

 

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 goods and/or 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 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

 

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).

 

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 goods and/or 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, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  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)).  Thus, the literal element, ORCA, of the registered mark with a design and the stylized mark dominate the overall impression of the marks.

 

A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

In the present case, applicant’s mark is ORCA and registrants’ marks are ORCA or the sole literal element of each mark is ORCA.  These marks (or the sole literal and dominant elements) 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 (or essentially 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 services.  Id.

 

Therefore, the marks are confusingly similar. 

 

Relatedness of the Services

 

The services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

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)).  

 

Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the services of the parties is required to support a finding of likelihood of confusion.  In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). 

 

Reg. No. 5263054

 

In this case, the application and registration use broad wording to describe booking of transportation and tickets, which are so broadly worded as to encompass each other.  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)).

 

Reg. No. 5230243

 

In this case, the registration uses broad wording to describe “Hosting domain names; hosting of digital content on the Internet; hosting websites on the Internet”, which is so broadly worded as to encompass applicant’s “hosting software for use by others for use consisting of marketing, scheduling, and brokering air charter flights”.  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)).

 

Reg. No. 3906591

 

The attached Internet evidence, consisting of third party webpages, establishes that the same entity commonly provides the relevant services and markets the services under the same mark.  Thus, applicant’s and registrant’s 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 legally identical, there is a likelihood of confusion.  Therefore, the applied-for mark must be refused registration under Section 2(d).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Identification of Services

 

The wording “chartering of flights” in the identification of services is indefinite and must be clarified because the nature of the service is not clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  

 

The wording “Software as a service (SAAS) services, namely, hosting software for use by others for use consisting of marketing, scheduling, and brokering air charter flights” in the identification of services is indefinite and must be clarified because the function of the software is not clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate:

 

Class 39: Chartering of flights, namely, chartering of planes; Booking of tickets for air travel

 

Class 42: Software as a service (SAAS) services, namely, hosting software for use by others for use in marketing, scheduling, and brokering air charter flights

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

Response Options

 

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.

 

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. 

 

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

 

 

Carr, Patrick

/Patrick Carr/

Trademark Examining Attorney

Law Office 125

(571) 272-9634

patrick.carr@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 September 17, 2020 for

U.S. Trademark Application Serial No. 90000767

 

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. 

 

 

Carr, Patrick

/Patrick Carr/

Trademark Examining Attorney

Law Office 125

(571) 272-9634

patrick.carr@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 September 17, 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.”