United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 90027916
Mark: CSL
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Correspondence Address: SMITH, GAMBRELL & RUSSELL, LLP |
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Applicant: CSL Limited
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Reference/Docket No. 034845.247
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
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.
The filing dates of pending U.S. Application Serial Nos. 87465341, 87575405, 87722137, 88234862, 88234923, 88311836, 88363047, 88369707, 88370906, 88372927, 88675262 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). 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 applications.
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 marks in the referenced applications. 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.
However, applicant must respond to the refusal set forth below.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO INTERNATIONAL CLASSES 041 AND 042
Registration of the applied-for mark is refused as to the services in International Classes 041 and 042 because of a likelihood of confusion with the marks in U.S. Registration Nos. 4853472, 5003934, 5262036, 5552422, 5892659 and 6147754. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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.
Applicant’s mark is CSL in standard characters for, in relevant part, “Educational services” in International Class 041 and “Medical Research, Scientific Research, Research and Development services” in International Class 042.
Registrant’s mark in U.S. Registration No. 4853472 is CSL CONVERGENCE SYSTEMS LIMITED & Design for, in relevant part, “consultancy services in relation to the operation and development of RTLS software for the monitoring of animals, people, stationary objects, or mobile objects on a real time basis, RTLS tags, RTLS readers, RTLS antennas, RFID antennas, RFID tag, RFID reader, RFID system, RFID software and RFID devices” in International Class 042.
Registrant’s mark in U.S. Registration No. 5003934 is CSL in standard characters for “Educational training services, namely, providing instructional classes, seminars, presentations, workshops in computer software and database systems development, computer programming, and maintenance of computer software and database systems” in International Class 041.
Registrant’s mark in U.S. Registration No. 5262036 is CSL in standard characters for “Education services, namely, providing educational courses in the field of soft skills language; educational services, namely, providing exchange programs in the field of culture; educational services, namely, providing courses in the field of culture; educational services, namely, providing classes for curriculum building in the field of cultural understanding and appreciation” in International Class 041.
Registrant’s mark in U.S. Registration No. 5552422 is CSLP in standard characters for “education services, namely, providing training courses in the fields of wealth management, banking and finance and distribution of educational materials in connection therewith” in International Class 041.
Registrant’s mark in U.S. Registration No. 5892659 is CSL CERTIFIED SALES LEADER & Design for “Educational services, namely, training, courses, and workshops in field of sales and sales leadership and distributing course materials in connection with the same” in International Class 041.
Registrant’s mark in U.S. Registration No. 6147754 is SONY CSL in standard characters for, in relevant part, “Research and development of technology for scientific, technical and technological solutions that benefit society in the fields of alternative energy systems, smart energy systems, augmented reality systems, virtual reality systems, artificial intelligence systems, artificial body, robotic limbs, human immersive experience transmission systems, quadcopter video camera systems, learning systems, audio and video apparatus and systems, telecommunication apparatus and systems, interactive events, urban development and agriculture” in International Class 042.
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 comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
U.S. Registration No. 4853472 (CSL CONVERGENCE SYSTEMS LIMITED & Design)
In the present case, applicant’s mark is CSL in standard characters and registrant’s mark is CSL CONVERGENCE SYSTEMS LIMITED & Design.
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).
The marks share the identical wording, “CSL,” and applicant merely omits the additional wording and design from registrant’s mark. 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).
The additional wording in registrant’s mark does not obviate confusion because registrant has disclaimed the wording “SYSTEMS LIMITED” in its mark. 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).
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. Indeed, “CSL” appears to be an initialism for the remaining wording “CONVERGENCE SYSTEMS LIMITED” in registrant’s mark; as such, consumers encountering applicant’s mark “CSL” are likely to mistakenly believe that applicant’s mark refers to “CONVERGENCE SYSTEMS LIMITED”.
Further, the addition of a design element in registrant’s mark does not obviate confusion because the wording is the dominant feature of registrant’s mark. 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)). Because applicant’s and registrant’s marks share the identical wording “CSL” and this wording is applicant’s entire mark, consumers are likely to focus on this wording in the mark and believe that applicant’s and registrant’s services emanate from the same source.
Therefore, the marks are considered similar for likelihood of confusion purposes.
U.S. Registration Nos. 5003934 (CSL) and 5262036 (CSL)
In the present case, applicant’s mark is CSL in standard characters and registrants’ marks are CSL in standard characters. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective services. Id.
Therefore, the marks are confusingly similar.
U.S. Registration No. 5552422 (CSLP)
In the present case, applicant’s mark is CSL in standard characters and registrant’s mark is CSLP in standard characters.
The marks share the nearly identical wording, “CSL” / “CSLP” and applicant merely omits the letter “P” from its mark. Marks may be confusingly similar in appearance despite the addition, deletion, or substitution of letters or words. See, e.g., Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (finding TMM confusingly similar to TMS); In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987) (finding TRUCOOL and TURCOOL confusingly similar in appearance); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (finding MILTRON and MILLTRONICS (stylized) to be highly similar in appearance); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (finding difference between marks LUTEX and LUTEXAL insufficient to avoid source confusion).
Further, as discussed in more detail below, the services of applicant and registrant are legally identical in part, and otherwise closely related. Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
Therefore, the marks are considered similar for likelihood of confusion purposes.
U.S. Registration No. 5892659 (CSL CERTIFIED SALES LEADER & Design)
In the present case, applicant’s mark is CSL in standard characters and registrant’s mark is CSL CERTIFIED SALES LEADER & Design.
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).
The marks share the identical wording, “CSL,” and applicant merely omits the additional wording from registrant’s mark. 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).
The additional wording in registrant’s mark does not obviate confusion because registrant has disclaimed the wording “CERTIFIED SALES LEADER” in its mark. 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).
Further, the addition of a design element in registrant’s mark does not obviate confusion because the wording is the dominant feature of registrant’s mark. 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 additional wording “CERTIFIED SALES LEADER” and the design element in registrant’s mark are less significant in terms of affecting the mark’s overall commercial impression and renders the wording “CSL” the more dominant element of registrant’s mark. Because applicant’s and registrant’s marks share the identical wording “CSL” and this wording is the dominant feature of registrant’s mark and the entirety of applicant’s mark, consumers are likely to focus on this wording in the mark and believe that applicant’s and registrant’s services emanate from the same source.
Moreover, as discussed in further detail below, the services of applicant and registrant are legally identical in part and otherwise closely related. Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
Therefore, the marks are considered similar for likelihood of confusion purposes.
U.S. Registration No. 6147754 (SONY CSL)
In the present case, applicant’s mark is CSL in standard characters and registrant’s mark is SONY CSL in standard characters.
The marks share the identical wording, “CSL,” and applicant merely omits the additional wording from registrant’s mark. 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).
The additional wording in registrant’s mark does not obviate confusion because the use of the identical wording “CSL” creates a highly similar overall commercial impression. 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. Specifically, the use of the identical wording “CSL” creates a highly similar overall commercial impression such that potential consumers are likely to believe that applicant’s mark merely indicates a new line of services offered by registrant.
Therefore, the marks are considered similar for likelihood of confusion purposes.
Relatedness of the 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] 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).
U.S. Registration Nos. 5003934 (CSL), 5262036 (CSL), 5552422 (CSLP) and 5892659 (CSL CERTIFIED SALES LEADER & Design)
Applicant’s services are, in relevant part, “Educational services” in International Class 041.
Registrant’s services in U.S. Registration No. 5003934 are “Educational training services, namely, providing instructional classes, seminars, presentations, workshops in computer software and database systems development, computer programming, and maintenance of computer software and database systems” in International Class 041.
Registrant’s services in U.S. Registration No. 5262036 are “Education services, namely, providing educational courses in the field of soft skills language; educational services, namely, providing exchange programs in the field of culture; educational services, namely, providing courses in the field of culture; educational services, namely, providing classes for curriculum building in the field of cultural understanding and appreciation” in International Class 041.
Registrant’s services in U.S. Registration No. 5552422 are “education services, namely, providing training courses in the fields of wealth management, banking and finance and distribution of educational materials in connection therewith” in International Class 041.
Registrant’s services in U.S. Registration No. 5892659 are “Educational services, namely, training, courses, and workshops in field of sales and sales leadership and distributing course materials in connection with the same” in International Class 041.
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 uses broad wording to describe “Educational services,” which presumably encompasses all services of the type described, including registrant’s more narrow identifications of “Educational training services, namely, providing instructional classes, seminars, presentations, workshops in computer software and database systems development, computer programming, and maintenance of computer software and database systems” in U.S Registration No. 5003934, “Education services, namely, providing educational courses in the field of soft skills language; educational services, namely, providing exchange programs in the field of culture; educational services, namely, providing courses in the field of culture; educational services, namely, providing classes for curriculum building in the field of cultural understanding and appreciation” in U.S. Registration No. 5262036, “education services, namely, providing training courses in the fields of wealth management, banking and finance and distribution of educational materials in connection therewith” in U.S. Registration No. 5552422 and “Educational services, namely, training, courses, and workshops in field of sales and sales leadership and distributing course materials in connection with the same” in U.S. Registration No. 5892659. 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.
U.S. Registration No. 6147754 (SONY CSL)
Applicant’s services are, in relevant part, “Medical Research, Scientific Research, Research and Development services” in International Class 042.
Registrant’s services are, in relevant part, “Research and development of technology for scientific, technical and technological solutions that benefit society in the fields of alternative energy systems, smart energy systems, augmented reality systems, virtual reality systems, artificial intelligence systems, artificial body, robotic limbs, human immersive experience transmission systems, quadcopter video camera systems, learning systems, audio and video apparatus and systems, telecommunication apparatus and systems, interactive events, urban development and agriculture” in International Class 042.
In this case, the application uses broad wording to describe “Medical Research, Scientific Research, Research and Development services,” which presumably encompasses all services of the type described, including registrant’s more narrow identification of “Research and development of technology for scientific, technical and technological solutions that benefit society in the fields of alternative energy systems, smart energy systems, augmented reality systems, virtual reality systems, artificial intelligence systems, artificial body, robotic limbs, human immersive experience transmission systems, quadcopter video camera systems, learning systems, audio and video apparatus and systems, telecommunication apparatus and systems, interactive events, urban development and agriculture”, as the identification indicates that the services are research and development services and the services are in broad fields that could include research relating to artificial intelligence systems, artificial body, robotic limbs, etc. in the medical field and in the scientific field. 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.
U.S. Registration No. 4853472 (CSL CONVERGENCE SYSTEMS LIMITED & Design)
Applicant’s services are, in relevant part, “Research and Development services” in International Class 042.
Registrant’s services are, in relevant part, “consultancy services in relation to the operation and development of RTLS software for the monitoring of animals, people, stationary objects, or mobile objects on a real time basis, RTLS tags, RTLS readers, RTLS antennas, RFID antennas, RFID tag, RFID reader, RFID system, RFID software and RFID devices” in International Class 042.
Conclusion
The principles and evidence set forth above establish that applicant’s and registrants’ marks are highly similar and the services are commercially related such that consumers would likely encounter applicant’s and registrants’ services together in the marketplace. Consumers are likely to be confused as to the source of the services and mistakenly believe that the services originate from a single source. Therefore, applicant’s mark is refused registration under Section 2(d) of the Lanham Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
In addition, applicant may respond by doing one of the following:
(1) Deleting the classes to which the refusal pertains; or
(2) Filing a Request to Divide Application form (form #3) to divide out the goods and/or services that have not been refused registration. 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).
However, if applicant responds to the refusal, applicant must also respond to the requirement(s) set forth below.
IDENTIFICATION OF OR SERVICES REQUIRES AMENDMENT
The wording listed below from the identification of services is indefinite and must be clarified for the reasons stated. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The identification for “educational services” in International Class 041 is indefinite because it does not indicate the type of educational service provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, applicant could be providing seminars on a particular topic, analyzing educational test scores and data for others, or providing educational testing.
Applicant must specify the nature of the educational service being provided. If applicant is providing classes or similar group learning activities, the identification must specify (1) the form of the activity (e.g., classes, seminars, workshops) and (2) the subject matter or field (e.g., retirement benefits, nutrition, business management).
Similarly, the wording “Research and Development services” in the identification of services in International Class 042 is indefinite and must be clarified to further specify the nature or field of applicant’s research and development services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. This wording is also overbroad as it may include services in more than one international class. For example, “development of insurance policies” is in International Class 36. However, “scientific research and development” and “research and development of computer software” are in International Class 42. See suggested amendment set forth below.
Summary of Suggested Amendments
To address the above issues, applicant may adopt any or all of the following identifications, if accurate (proposed changes shown in bold typeface,
proposed deletions shown in strikethrough; instructions and comments to applicant are set forth between curly brackets {}):
International Class 035 – Acceptable as written
International Class 041
Educational services, namely, conducting {indicate specific modes of instruction, e.g., classes, seminars, conferences, workshops, etc.} in the field of {indicate subject matter or fields of educational activity, e.g., biotechnology, immunology, etc.}
International Class 042
Medical Research, Scientific Research, Research and Development services in the field of {indicate subject matter or field, e.g., gene and cell therapy, vaccines, etc.}
International Class 044 – Acceptable as written
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.
Scope Advisory
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).
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or 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 fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 4 class(es). 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.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
How to respond. Click to file a response to this nonfinal Office action.
/Christina L. Martin/
Trademark Examining Attorney
Law Office 103
(571) 270-0281
christina.martin@uspto.gov
RESPONSE GUIDANCE
