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:  July 29, 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.

 

This application was filed with the USPTO on June 19, 2020.

 

SUMMARY OF ISSUES:

 

• Likelihood of confusion refusal made under Trademark Act Section 2(d)
• Descriptiveness refusal made under Trademark Act Section 2(e)(1)
• Identification and classification of services

 

Section 2(d) Refusal – Likelihood of Confusion

 

THIS PARTIAL REFUSAL APPLIES TO CLASS 035 ONLY

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5130594 and 5608844.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant’s mark is DEMAND in standard characters for, in relevant part, “Advertising and promotional services; promotional services in the form of sharing of multimedia content via the Internet and other communications networks; providing marketing research, consulting, programs, analysis, reporting services and business information for advertisers, marketers, partners and content providers in the field of live entertainment events, artist trends, ticketing pricing, venues and announcement effectiveness; outsource service provider in the field of business analytics; providing use of on-line non-downloadable software for analyzing data about live entertainment events, artist trends, ticketing pricing, venues and announcement effectiveness” in class 035.

 

Registrant’s mark for Registration No. 5130594 is DEMAND RATING in standard characters with the wording RATING disclaimed for, in relevant part, “Market research and analysis services; collection of market research information by tracking of consumer behavior on the internet through detection of streaming, downloading and uploading of music, video, literary works and other content, as well as other data associated with that content; provision of reports and other analytics in relation to all of the aforesaid market research information; consulting services in relation to all of the aforesaid market research information” in class 035.

 

Registrant’s mark is for Registration No. 5608844 is DEMAND ML in standard characters for “Business consulting services, namely, providing information and advisory on marking analysis, pricing analysis, and demand generation processes for others; business management consulting and advisory services; Supply chain management consulting services”.

 

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. 

 

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).

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Applicant’s mark is DEMAND in standard characters.

 

Registrant’s mark for Registration No. 5130594 is DEMAND RATING in standard characters with the wording RATING disclaimed.  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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or 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).  Thus, the wording DEMAND is the dominant portion of the mark.

 

Registrant’s mark for Registration No. 5608844 is DEMAND ML in standard characters.  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”).  The mark begins with the wording DEMAND, which leaves the stronger impression in consumers’ minds.

 

The dominant portions of all the marks consist of the wording DEMAND, thus, the marks create similar commercial impressions.

 

Comparison of Goods/Services

 

The compared goods and/or 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 goods and/or 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).

 

Applicant’s services are, in relevant part, “Advertising and promotional services; promotional services in the form of sharing of multimedia content via the Internet and other communications networks; providing marketing research, consulting, programs, analysis, reporting services and business information for advertisers, marketers, partners and content providers in the field of live entertainment events, artist trends, ticketing pricing, venues and announcement effectiveness; outsource service provider in the field of business analytics; providing use of on-line non-downloadable software for analyzing data about live entertainment events, artist trends, ticketing pricing, venues and announcement effectiveness” in class 035.

 

Registrant’s services for Registration No. 5130594 are, in relevant part, “Market research and analysis services; collection of market research information by tracking of consumer behavior on the internet through detection of streaming, downloading and uploading of music, video, literary works and other content, as well as other data associated with that content; provision of reports and other analytics in relation to all of the aforesaid market research information; consulting services in relation to all of the aforesaid market research information” in class 035.

 

Registrant’s services is for Registration No. 5608844 are for “Business consulting services, namely, providing information and advisory on marking analysis, pricing analysis, and demand generation processes for others; business management consulting and advisory services; Supply chain management consulting services”.

 

All of the services involve various types of marketing research and analysis for business purposes.

 

Therefore, the services are closely related and consumers will be confused as to the source of the services.

 

Applicant should note the following additional ground for refusal.

 

Section 2(e)(1) Refusal – Merely Descriptive

 

Registration is refused because the applied-for mark merely describes the feature and subject matter of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b).  “Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

Applicant’s mark is DEMAND for “Advertising and promotional services; promotional services in the form of sharing of multimedia content via the Internet and other communications networks; providing marketing research, consulting, programs, analysis, reporting services and business information for advertisers, marketers, partners and content providers in the field of live entertainment events, artist trends, ticketing pricing, venues and announcement effectiveness; outsource service provider in the field of business analytics; providing use of on-line non-downloadable software for analyzing data about live entertainment events, artist trends, ticketing pricing, venues and announcement effectiveness” in Class 035 and “Providing temporary use of non-downloadable analytics software, namely, software that provides statistics about live entertainment events, artist trends, ticketing pricing, venues and announcement effectiveness” in Class 042.

 

The word DEMAND means “the desire for goods or services in an economy, measured as the amount people are used to buy at a given price”.  Please see attached dictionary definition from the American Heritage Dictionary of the English Language.  Applicant’s services involve providing information and data in the field of market demands in the field of tickets.  Please see attached excerpts from the Google blog, Forbes and Ticket News.

 

Therefore, the applied-for mark is merely descriptive of applicant’s services.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.

 

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

 

Identification and Classification of Services

 

The identification of services is indefinite and must be clarified because the wording “promotional services in the form of sharing of multimedia content via the Internet and other communications networks” must be specified as to the method of the services.  Further, the services of “providing use of on-line non-downloadable software for analyzing data about live entertainment events, artist trends, ticketing pricing, venues and announcement effectiveness” is misclassified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate:

 

Class 035:  Advertising and promotional services; promotional services, namely, promoting the goods and services of others through distribution of advertising multimedia content via the Internet and other communications networks; providing marketing research, consulting, programs, analysis, reporting services and business information for advertisers, marketers, partners and content providers in the field of live entertainment events, artist trends, ticketing pricing, venues and announcement effectiveness; outsource service provider in the field of business analytics

 

Class 042:  Providing temporary use of non-downloadable analytics software, namely, software that provides statistics about live entertainment events, artist trends, ticketing pricing, venues and announcement effectiveness; providing use of on-line non-downloadable software for analyzing data about live entertainment events, artist trends, ticketing pricing, venues and announcement effectiveness.

 

Applicant’s goods and/or 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 goods and/or services or add goods and/or 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 goods and/or 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 goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

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.    

 

 

Janet Lee

/Janet H. Lee/

Trademark Examining Attorney

Law Office 124

Phone:  (571) 272-1053

Email:  janet.lee6@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 July 29, 2020 for

U.S. Trademark Application Serial No. 90011513

 

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. 

 

 

Janet Lee

/Janet H. Lee/

Trademark Examining Attorney

Law Office 124

Phone:  (571) 272-1053

Email:  janet.lee6@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 July 29, 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.”