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: November 04, 2020
The
referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Summary of Issues
- Potential Section 2(d) Likelihood of Confusion—Prior Pending Applications
- Section 2(d) Likelihood of Confusion
- Particular Wording in the Identification of Services is Indefinite and Misclassified
- Multiple Class Advisory
Potential Section 2(d) Likelihood of Confusion—Prior Pending Applications
The filing dates of pending U.S. Application Serial Nos. 88746150, 88811398, 88742599
and 88809887 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.
Section 2(d) Likelihood of Confusion Refusal
This refusal applies to the following services only:
- Class 35: Computerized database and file management; data processing services; creating indexes of information, sites and other resources available
on global computer networks and other electronic and communications networks for others;
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos.
5168185, 5178620, 4411274, 3765901. 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:
- ARC for:
-
- Class 35: Computerized database and file management; data processing services; creating indexes of information, sites and other resources available on global computer
networks and other electronic and communications networks for others
Registrants’ Marks are:
- ARC (5168185) for, in pertinent part:
-
- Class 35: Providing business management services to companies in the travel industry, namely, inventory control of travel tickets, reporting on travel ticket transactions
settled for others, settlement of commercial transactions in the field of travel tickets and electronic processing of travel ticket orders for others; distributorship services in the field of blank
paper travel tickets, provided as a component of business management services to companies in the travel industry; settlement of commercial transactions for third parties; business data compiling and
business analyzing in the field of travel; data processing services in the field of travel; providing an online computer website that provides commercial financial transaction data, account
management, financial reporting, accounting features and related reference information; providing an online database featuring trade information in the field of data regarding travel-related
transactions for use by authorized persons/entities in the travel industry; and electronic commerce services, namely, providing information on travel-related goods and services via telecommunications
networks for advertising and sales purposes for use by authorized persons/entities in the travel industry
- ARC 4.0 (5178620) for, in pertinent part:
-
- Class 35: Data management services, namely, electronic data collection for business purposes; computerized data processing services; compilation and systemization of
information into computer databases; data processing services
- ARCTERN (4411274) for, in pertinent part:
-
- Class 35: Assistance to industrial or commercial enterprises in the running of their business; assistance, advisory services and consultancy with regard to business
planning, business analysis, business management, and business organization; business assistance services in business administration and office work, namely, procuring personnel to companies to
assist in clerical services, archiving, claims processing, competitive price shopping, processing customer response, data entry and data processing, preparing e-mail responses, executive assistance,
fact checking, form filing, mailing list development, and perform all other functions relating to general and administrative work, namely, providing office work and office functions; business
assistance services, namely, providing personnel to companies to perform functions relating to sales and marketing, namely, preparing mailing and e-mailing lists, e-mail campaign management, namely,
managing e-mail campaigns for others; online marketing, telemarketing and telesales; general business administration services, namely, online ordering, order entry and processing, and customer
service, namely, e-mail and telephone support; business consulting services relating to product distribution, operations management services, logistics, reverse logistics, supply chain, and
production systems and distribution solutions; business management assistance to industrial or commercial companies; business management and advisory services in the field of staffing and business
process outsourcing; providing business operation, business administration and office functions; business organization, operation and management consultancy. business process outsourcing and business
assistance services in the fields of accounting and accountancy, namely, providing personnel to companies to conduct account/business audits, accounts receivables services, accounts payables
services, bank reconciliation, bookkeeping services, budgeting and forecasting, business payroll administration, business invoicing, commissions reports, cost analysis and reduction, due diligence
support, financial records management, financial statement preparation and analysis, risk analysis, tax planning and structuring and perform all other functions relating to accounting and
accountancy; business process outsourcing and business assistance services in the fields of advertising, marketing, promotion and business management consultancy, namely, providing personnel to
companies to promote and market the goods and services of others through all media and public communications means and perform all functions relating to advertising, marketing, promotion and business
management; business process outsourcing and business assistance services in the fields of business development, namely, providing personnel to companies to perform all functions relating to business
development; business process outsourcing services in the field of staffing; business process re-engineering services; business records management for others; business research for others, namely,
providing analysis of data on various business matters; business services, namely, procuring qualified professionals and personnel, and documentation and information all on behalf of others; business
services, namely, registering, screening, credentialing, and organizing third-party vendors, suppliers, and contractors, and documentation and information related thereto, on behalf of others.
business services, namely, tracking, comparing and monitoring employee cost items for others; candidate scheduling services, namely, setting up interviewing logistics for clients and their potential
hires, namely, arranging meeting time, location and related details; career placement; conducting employee incentive award programs to promote on the job safety, quality, productivity and attendance;
consultancy of personnel recruitment; consulting services in the area of sustainable business solutions; consulting services in the field of human resources development for the promotion of employee
retention, career growth, and increased productivity for employees and employers; creative marketing design services and design of advertising materials for others; data management services for
others, namely, electronic data collection and online claims management; data processing services and database management for others; employment counseling, hiring, recruiting, placement, staffing
and permanent placement services, namely, employment recruiting consultation, employment verification, executive search and placement services, human capital management outsourcing services; human
resources administration, management and consultation; human resources services, namely, personnel selection for others. information, advisory and consultancy services relating to business and
management or business administration, namely, providing such services online or via the internet; job and personnel placement; management of telephone call centers for others; verbally extending the
offer to the candidate, negotiating with the hiring manager, and managing the entire process through to the end of setting the start date for the candidate; on-line services for ordering and
inventory management for others in the field of general merchandise and general consumer goods; operation of a telephone switchboard for others; operation of telephone call centers for others;
operation of telephone communication centers for others; order fulfillment services for others; outsourcing in the field of staffing; outsourcing services; business consultation services in the field
of tracking performance management; personnel management consultation; personnel placement and recruitment; personnel relocation; project management services for others in the fields of language
translation, custom writing, text adaptation, sourcing, namely, finding talent by using a company's internal and/or external database and tools; staffing requisition processing and management,
namely, qualification of the requisition with the client's hiring manager, posting the requisition internally and externally, managing the requisition through the hiring lifecycle, down selecting the
applicant pool, dispositioning the applicants not selected, namely, advising applicants of their status; forwarding qualified applicants to the hiring manager for review; telephone operator services
for others; telephone order-taking services for others; temporary employment agencies; temporary help and employment services, namely, providing employees to companies on an hourly, per diem or
contract basis; testing to determine employment skills, job and professional competency; staffing services for offshore businesses; outsourcing services, namely, providing professional and clerical
services for others; staffing services; consulting services in the fields of outsourcing and staffing; accounting and finance support services, namely, business audit preparation, bank
reconciliation, bookkeeping; economic budgeting, forecasting, and analysis; negotiation services, namely, negotiation and settlement of business transactions for third parties; preparation of
business reports, namely, commission reports, cost analysis and reduction reports; credit card registration; monitoring consumer credit reports. customer collections services, accounting and finance
due diligence support services, administration of employee reimbursement programs and services; financial statement preparation for businesses; fixed assets services, namely, connecting buyers and
sellers of fixed assets; invoicing services; billing; payroll processing services; business structuring, namely, advisory services and consulting with regard to business organization; vendor
quotations, namely, obtaining and disseminating price quotations on goods/services; human resources management and administration services; price comparison services, namely, competitive price
shopping; customer response, namely, responding to customer service inquires for others; data processing services, namely, data entry, data processing; providing business management information in
connection with consulting and advisory services in the field of strategic planning; telephone operator/attendant services; web research in the fields of market research and consumer research; word
processing; sales promotion and business marketing services; advertising; creating brand identity for others; business development services, namely, providing start-up support for businesses of
others; business planning; operation of call center operations for others; accounting services, namely, calculation of sales commissions and analysis of commission reports; business consultancy and
analysis services, namely, analysis of business competitors; providing on-line customer service, namely, call centers and technical support; customer service for others, namely, develop structured
query language for support technicians to use when helping customers identify their information technology problems
- ARC (3765901) for, in pertinent part:
-
- Class 35: Providing business management services to companies in the travel industry, namely, inventory control of travel tickets, reporting on travel ticket transactions
settled for others, settlement of commercial transactions in the field of travel tickets and electronic processing of travel ticket orders for others; distributorship services in the field of blank
paper travel tickets, provided as a component of business management services to companies in the travel industry; settlement of commercial transactions for third parties; business data compiling and business analyzing in the field of travel; data processing services in the field of travel; providing an online computer website that
provides commercial financial transaction data, account management, financial reporting, accounting features and related reference information; providing an online
database featuring trade information in the field of data regarding travel-related transactions for use by authorized persons/entities in the
travel industry; and electronic commerce services, namely, providing information on travel-related goods and services via telecommunications networks for advertising and sales purposes for use by
authorized persons/entities in the travel industry
Trademark Act Section 2(d) bars registration of an applied-for mark that is so
similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the services of the parties.
See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Any evidence of record related to those factors need be
considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg.
Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir.
1997)).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of
confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65,
64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental
inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial
impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP
§1207.01(b)-(b)(v).
In the present case, applicant’s mark is “ARC” and registrants’ marks are “ARC”. These marks are identical in appearance,
sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB
2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the
same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
- Regarding the remaining 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).
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).
Here, the marks at issue share the wording “ARC”. Sharing this wording contributes to a strong likelihood of consumer confusion.
Marks must be compared in their entireties and should not be dissected;
however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit
Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating
that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).
Regarding Registration Nos. 5178620 and 4411274: 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”). “ARC” is the first word in Registration No. 5178620 and the first syllable in Registration No. 4411274. Thus, this wording is the dominant portion of each mark.
Sharing this wording with applicant’s mark contributes to likelihood of confusion.
Regarding Registration No. 5168185: 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 addition of minor design elements or stylization to the
registered marks does not detract from the likelihood of consumer confusion. Consumers will request the services by referring to the wording in the marks, not by referencing minor design
elements.
Regarding Registration Nos. 5178620 and 4411274: Incorporating the entirety
of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer
design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER
and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In
re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case,
applicant’s mark is entirely incorporated within the registered marks. This does not detract from likelihood of confusion as the marks are identical in part, and there is no other wording in
applicant’s mark to distinguish it from registrants’ marks.
In light of the foregoing, it is evident that the marks are similar in sound, appearance, meaning and commercial impression and are
thus, likely to be confused.
Comparison 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).
The compared services need not be identical or even competitive to find a likelihood of
confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v.
Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner
and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the 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).
Regarding Registration No. 5168185: Here, applicant’s services are broadly identified. Specifically: “Computerized database and file management; data
processing services; creating indexes of information, sites and other resources available on global computer networks and other electronic and communications networks for others” do not specify a
field. Thus, registrant’s business data compiling and analyzing falls under database and file management, as business data may be found in a database or file, and management includes compilation and
may include analysis. Further, applicant’s “data processing” services encompass registrant’s “data processing services in the field of travel” as registrant’s services are field specific. Further,
applicants services for creating indexes of information sites and other resources is incredibly vague, and may encompass “providing an online computer website that provides commercial financial
transaction data, account management, financial reporting, accounting features and related reference information” or any information that is provided online, for that matter.
Regarding Registration No. 5178620: Here, again, applicant’s services are broadly identified. Specifically: “Computerized database and file management; data
processing services; creating indexes of information, sites and other resources available on global computer networks and other electronic and communications networks for others” do not specify a
field. Thus, registrant’s “Data management services, namely, electronic data collection for business purposes” is encompassed by applicant’s data management services. Further, each party provides
data processing services. Additionally “compilation and systemization of information into computer databases” in registrant’s identification, may include computerized file management or database
management. Lastly, applicant’s services for creating indexes of information sites and other resources is incredibly vague, and may encompass “compilation and systemization of information into
computer databases”, as a database is an index of sorts.
Regarding Registration No. 4411274: Here, each party provides database management and data processing services. Applicant’s “creating indexes of
information, sites and other resources available on global computer networks and other electronic and communications networks for others;” may encompass registrant’s provision of information
regarding business management and administration via the internet, as the information could be found in an index or within a different type of resource, and may very well appear on a global computer
network or anywhere the internet may be accessed.
Regarding Registration No. 3765901: Here, registrant compiles and analyzes business data. This is encompassed by applicant’s computerized database and file
management, as data may be found in databases or files and compilation and analysis may be forms of management. Further, each party provides data processing, and registrant’s data processing services
are field specific. Thus, registrant’s data processing services in the field of travel are encompassed by applicant’s data processing services. Applicant’s broad “creating indexes of information,
sites and other resources available on global computer networks and other electronic and communications networks for others” is quite broad, and may encompass “providing an online computer website
that provides commercial financial transaction data, account management, financial reporting, accounting features and related reference information; providing an online database featuring trade
information in the field of data regarding travel-related transactions for use by authorized persons/entities in the travel industry; and electronic commerce services, namely, providing information
on travel-related goods and services via telecommunications networks for advertising and sales purposes for use by authorized persons/entities in the travel industry” as registrant is providing
information that is available online.
In light of the foregoing, it is presumed that the channels of trade and class(es) of purchasers are the same for these
services. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus,
applicant’s and registrant’s services are related.
In light of the foregoing, it is evident that the marks at issue are likely to be confused. Applicant may provide arguments in support of registration. Applicant must still
address the issues below.
Particular Wording in the Identification of Services is Indefinite and Misclassified
Particular wording in the identification of services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the
services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must
describe or explain the nature of the services using clear and succinct language. See id.
Additionally, the information services are classified
incorrectly. Applicant must amend the application to classify the services in International Class 45. See 37 C.F.R.
§§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). Classification of information services is based on the subject matter of the information provided. TMEP §1402.11(b).
Specifically:
- “creating indexes of information, sites and other resources available on global computer networks and other electronic and communications networks for others” is
indefinite. Applicant should clarify the broader category of services this falls under, e.g. computer services.
- “providing information via voice-controlled automated inquiries, namely, providing an online automated resources for searching, locating, and providing information in the
field of public safety” is indefinite. Information services are classified according to subject matter. Information in the field of public safety is a Class 45 service, regardless of how the
information is disseminated. Applicant should amend the wording to clarify that the provision of information is the services here, e.g. “providing information in the field of public safety, said
information being provided via voice-controlled automated inquiries, namely, automated resources for searching, locating, and providing said information”
Applicant may adopt the following identification, if accurate:
Class 35: Computerized database and file management; data processing services; computer services, namely,
creating indexes of information, sites and other resources available on global computer networks and other electronic and communications networks for others
Class 45: providing information in the field of public safety, said information being provided via voice-controlled automated inquiries, namely, automated resources for
searching, locating, and providing said information
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.
Multiple Class Advisory
The application identifies goods and/or services in more than one international class; therefore,
applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(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 2 classes; however, applicant submitted a fee(s) sufficient for only 1 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.
Response to Office Action
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.
Rosen, Amanda
/Amanda Rosen/
Examining Attorney
Law Office 121
(571) 270-5984
Amanda.Rosen@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.
