Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  March 04, 2021

 

 

This Office Action is in response to applicant’s correspondence dated 3/1/21.

 

The following refusal and/or requirements are now made FINAL: 1) Section 2(d) Refusal, and 2) Identification.

37 C.F.R. §2.64(a).

 

Section 2(d) Refusal

 

The Section 2(d) refusal is continued and made final for Class 35, specifically limited to applicant’s “retail and online store services.”

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 6087170.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously attached registration.

 

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. 

 

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).

 

Applicant’s mark is the stylized wording MC.  The registrant’s mark is MC in standard characters. 

 

Applicant’s mark is similar to registrant’s mark because the marks consist of the same two letters, MC.  The marks are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).  Additionally, as registrant’s mark is in standard characters, it could appear in exactly the same stylization as the applicant’s mark. 

 

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 in Class 35 are currently listed as “Promoting the goods and services of others; promoting the goods and services of others by providing hypertext links to the web sites of others; marketing services, namely, promoting and advertising the goods and services of others; real estate marketing services in the field of residential homes and office buildings provided via the internet; providing consumer product information via the internet; providing business information, namely, commercial corporate and statistical information provided on-line; retail store services featuring a wide variety of consumer goods of others; arranging and conducting of exhibitions for business purposes; business consultation and development services relating to business management and business operations; retail and online store services for the goods of others in the fields of developing, designing, and testing transportation mobility and connectivity products and services and related businesses; promotional services, namely, promoting the goods of others by providing online gift cards, gift certificates, coupons, restaurant menus; business incubation services, namely, providing work space containing business equipment to emerging, start-up and existing companies; business development services, namely, providing start-up support for businesses of others.”  The registrant is providing “Wholesale distributorships and retail store services featuring granite, marble, quartz, quartzite, sinks and faucets” in Class 35.

 

Determining likelihood of confusion is based on the description of the goods and/or 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)).  

 

In this case, the application use(s) broad wording to describe the services, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow services.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Applicant amended its original “retail and online store services” to the overly broad and unclear “retail and online store services for the goods of others in the fields of developing, designing, and testing transportation mobility and connectivity products and services and related businesses.”  This amended identification is unclear, and the “related businesses” is so broad that it could encompass any field, including registrant’s sinks or faucets.  Furthermore, as this clause in applicant’s identification is not acceptable, applicant could correct this deficiency with the identification by amending its overly broad “retail and online store services” to encompass any subject matter.  Thus, as applicant’s store services are not limited to any discernable field or subject matter, it could include registrant’s retail store services featuring granite, marble, quartz, quartzite, sinks and faucets.  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)).  Applicant noted that third-party registrations coexist featuring “MC” wording and store services.  However, unlike in the present case, those registrations actually included a definite subject matter, and that subject matter was unrelated to the subject matter featured in the registrant’s identification.  Applicant should note that if it provided a clear and definite subject matter or deleted the store services, this refusal may be withdrawn.

 

Applicant’s argument regarding the sophistication of the purchasers is unpersuasive.  The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).  Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser.  In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).

 

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

For the reasons set forth above, registration is refused based on the Trademark Act Section 2(d) for Class 35.

 

 

Identification

 

The requirement for an acceptable identification is continued. 

 

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally included the following services in Class 41: providing career mentoring and coaching services. However, the proposed amendment amended these services to: providing mentoring for businesspeople and entrepreneurs in the field of business development.

 

This portion of the proposed amendment is beyond the scope of the original identification because applicant has changed its mentoring services from “career mentoring” to mentoring without a “career” limitation, and the field has been changed to “business development.”  Thus, the amendment is not acceptable. 

 

The wording “retail and online store services for the goods of others in the fields of developing, designing, and testing transportation mobility and connectivity products and services and related businesses;” “providing mentoring for businesspeople and entrepreneurs in the field of business development;” and “Providing scientific and technological services and research in the fields of transportation and mobility solutions, connectivity, emerging technologies, community development, sustainable communities, ecological resilience business innovation studios, and environmentally-conscious and green innovations; design services for scientific and technological research; industrial analysis and research services for transportation and mobility solutions, connectivity, emerging technologies, community development, sustainable communities, ecological resilience business innovation studios, and environmentally-conscious and green innovations” in the identification of services is unacceptable.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The subject matter of the store services is overly broad and indefinite.  As noted above, the mentoring is unacceptable.  The scientific and technological services and research services, and industrial analysis and research services are unacceptable as the subject matter is overly broad and indefinite.  The design services must be further clarified, and the specific product being designed should be indicated.  Applicant may substitute the following wording, if accurate: 

 

35

Promoting the goods and services of others; promoting the goods and services of others by providing hypertext links to the web sites of others; marketing services, namely, promoting and advertising the goods and services of others; real estate marketing services in the field of residential homes and office buildings provided via the internet; providing consumer product information via the internet; providing business information, namely, commercial corporate and statistical information provided on-line; retail store services featuring a wide variety of consumer goods of others; arranging and conducting of exhibitions for business purposes; business consultation and development services relating to business management and business operations; retail store services and online retail store services in the field of wheelchairs; promotional services, namely, promoting the goods of others by providing online gift cards, gift certificates, coupons, restaurant menus; business incubation services, namely, providing work space containing business equipment to emerging, start-up and existing companies; business development services, namely, providing start-up support for businesses of others

 

36 – Acceptable

 

37 – Acceptable

 

41

Conducting cultural or educational exhibitions and interactive exhibits and displays in the fields of history, architecture and neighborhood growth and development; providing career coaching services

 

42

Providing technological and scientific information about environmentally-conscious and green innovations

 

43 – Acceptable

 

45 – Acceptable

 

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.

 

Partial Abandonment

 

If applicant does not respond to this Office action within the six-month period for response, the goods and/or services subject to the above refusal and requirement will be deleted from the application.  The application will then proceed with the remaining services.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Tejbir Singh/

Trademark Attorney

Law Office 106

571-272-5878

571-273-9106 (fax)

Tejbir.Singh@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 March 04, 2021 for

U.S. Trademark Application Serial No. 90014301

 

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. 

 

 

/Tejbir Singh/

Trademark Attorney

Law Office 106

571-272-5878

571-273-9106 (fax)

Tejbir.Singh@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 March 04, 2021, 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.”