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:  February 01, 2021

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

• Section 2(d) Refusal – Likelihood of Confusion
• Refusal – Specimen Fails to Show Mark in Use in Commerce in Class 035
• Definite Identification and Classification of Services Required

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3858335, 6007458 and 6007459.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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. 

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the services, and similarity of the trade channels of the services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Applicant has applied to register:

 

• EMBARK (Standard Character) for “Arranging for pickup, transportation, delivery and storage of freight by truck; tracking and tracing of freight by land; land freight logistics management; land freight management services using automated vehicles," in International Class 035, and “Pick-up, transportation, storage and delivery of freight by truck; warehousing services, namely, land freight transfer services; land transportation services for freight using automated vehicles; supply chain logistics, namely, storage, transportation, and delivery of goods for others by land via land vehicles,” in International Class 039. 

 

The registered marks are:

 

• EMBARQUE (Standard Character) for, in relevant part, "Transportation reservation services; online transportation reservation services," in International Class 039 (U.S. Reg. No. 3858335);

 

• EMBARK (Standard Character) for, in most relevant part, “Business consulting, management and planning services in the fields of air transport and air travel; Business development services in the fields of air transport and air travel; business data analysis services in the fields of air transport and air travel; competitive intelligence services in the fields of air transport and air travel,” in International Class 035 (U.S. Reg. No. 6007458); and,

 

• EMBARK (Design Plus Words) for, in most relevant part, “Business consulting, management and planning services in the fields of air transport and air travel; Business development services in the fields of air transport and air travel; business data analysis services in the fields of air transport and air travel; competitive intelligence services in the fields of air transport and air travel,” in International Class 035 (U.S. Reg. No. 6007459).

 

U.S. Reg. Nos. 6007458 and 6007459 are both owned by Embark Aviation Corp., a Delaware Corporation.

 

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).

 

1. Wording in applied-for mark is identical to wording in U.S. Reg. Nos. 6007458 and 6007459

 

In the present case, applicant’s mark is EMBARK in standard character and registrant’s marks are EMBARK in standard characters and the wording EMBARK appearing with a design element.  The terms in the 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).  Additionally, because the terms 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.

 

2. Wording EMBARK sounds identical to registered mark EMBARQUE and conveys an identical commercial impression.

 

The applied-for mark EMBARK and the registered mark EMBARQUE are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the compared marks are confusingly similar.  In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007) (citing Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732, 156 USPQ 523, 526 (C.C.P.A. 1968)); TMEP §1207.01(b)(iv). 

 

In this case, however, the registered mark appears to not only sound identical to the applied-for mark, but has an identical meaning as indicated by the translation in the registration.

 

Under the doctrine of foreign equivalents, a mark in a common, modern foreign language and a mark that is its English equivalent may be held confusingly similar.  TMEP §1207.01(b)(vi); see, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1127-28 (TTAB 2015); In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).  Consequently, marks comprised of foreign wording are translated into English to determine similarity in meaning and connotation with English word marks.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005).  Equivalence in meaning and connotation may be sufficient to find such marks confusingly similar.  See In re Aquamar, Inc., 115 USPQ2d at 1127-28; In re Thomas, 79 USPQ2d at 1025.

 

The registrant’s mark appears to be Portuguese, which is a common, modern language in the United States.  Specifically, the evidence from Wikipedia establishes a large number of U.S. consumers speak this language.

 

The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent.  Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A).  The ordinary American purchaser includes those proficient in the foreign language.  In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.

 

In this case, the ordinary American purchaser would likely stop and translate the mark because the Portuguese language is a common, modern language spoken by an appreciable number of consumers in the United States. 

 

In this case, the applied-for wording is confusingly similar to those consumers who are not fluent in Portuguese due to phonetic equivalence of the wording, as well as to those consumers who would stop and translate the term, which immediately conveys the exact same meaning as the applied-for mark, as the wording translates to “embark”.

 

Accordingly, the marks are confusingly similar.

 

RELATEDNESS OF THE SERVICES

 

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 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).

 

Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).

 

a.       Broadly identified transportation reservation services in ‘335 registration are highly related to more specific logistics and transportation services identified in application

 

In this case, the services are identified in the registration as “Transportation reservation services; online transportation reservation services."  The identification does not specify or restrict the nature, field, or type of “transportation” or the nature of the “reservation services.”  Accordingly, the identification is presumed to encompass all services of the type described.

 

As the attached evidence from third party providers of services of the type identified in the application and registration establishes, providers of logistics management and transportation logistics services of the type identified in the application also very commonly provide transportation reservation services under the same marks.  Specifically, the evidence from DHL, SHIPA FREIGHT, JOC, UPS, Lynden and Freight Center shows these services provided together under the same marks.  Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

b.      Broadly identified air transport consulting, management, planning, development, data analysis and competitive intelligence services highly related to land freight management and transportation services

 

U.S. Reg. No. 6007458 and 6007459 includes “Business consulting, management and planning services in the fields of air transport and air travel; Business development services in the fields of air transport and air travel; business data analysis services in the fields of air transport and air travel; competitive intelligence services in the fields of air transport and air travel.”  The identification does not restrict the nature or purpose of the business consulting, management or planning services, but merely specifies the services are in the field of “air transport and air travel.”  Accordingly, the specified services encompass all services of the type identified, including such services as they pertain to logistics in the identified field of air transport.

 

The attached evidence from third party providers of business management of logistics and transportation services shows that these services are commonly offered in conjunction with both land transport and air transport, for both logistics management and transportation services, and marketed under the same marks.  As shown by the attached evidence from UPS, SOS, Lynden, Midas, and USPTI, providers of logistics management and arrangement services for air transport also commonly provide such services for land vehicle transport and logistics under the same marks.  Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

CONCLUSION

 

In this case, the applied-for mark is highly similar in sound, appearance and commercial impression to the registered marks, appearing identical to the wording in two marks and conveying an identical commercial impression to the other.  The use of the confusingly similar marks in conjunction with highly related transportation and logistics management services combines to create a substantial likelihood that consumers will be confused as to the source of the services.  Therefore, registration is refused under Section 2(d) of the Trademark Act. 

 

Applicant should also note the following additional basis for refusal:

 

REFUSAL – SPECIMEN FAILS TO SHOW MARK IN USE IN COMMERCE IN CLASS 035

 

Specimen does not show direct association between mark and services.  Registration is refused because the specimen does not show a direct association between the mark and the services and fails to show the applied-for mark as actually used in commerce with the identified services in International Class 035.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (b)(2); TMEP §§904, 904.07(a), 1301.04(f)(ii), (g)(i).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of services identified in the application.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user.  In re JobDiva, Inc., 843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)).  A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered.  See 37 C.F.R. §2.56(b)(2); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ2d 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii). 

 

To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source.  In re The Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (TTAB 2019) (quoting In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)); TMEP §1301.04(f)(ii).  Although the exact nature of the services does not need to be specified in the specimen, there must be something that creates in the mind of the purchaser an association between the mark and the services.  In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).

 

In the present case, the specimen does not show a direct association between the mark and services in that the provided marketing presentation advertises the provision of its transportation services, particularly by means of self-driving haul-trucks, and does not associate the mark with any of the logistics management services to be provided to others.

 

Examples of specimens.  Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).  Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response.  See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).

 

Response options.  Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)        Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)        Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

 

For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

Because the specimen-based refusal only applies to one of the classes in the application, applicant may also respond to the stated deleting the class to which the refusal pertains. 

 

While applicant may file a Request to Divide Application form (form #3) to divide out the services that are not subject to the specimen-based refusal, doing so will not obviate the other Section 2(d) refusal for likelihood of confusion and therefore will not enable the applicant to move immediately to publication.

 

REQUIREMENTS

 

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

 

DEFINITE IDENTIFICATION AND CLASSIFICATION OF SERVICES REQUIRED

 

The wording “tracking and tracing of freight by land” and “land freight management services using automated vehicles,” in the identification of services must be clarified because it is indefinite and too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

With respect to “tracking and tracing of freight by land,” the purpose or use of the freight tracking or tracing information determines classification, and therefore must be specified.  If the information is being provided as an Office function of tracking and tracing goods in transit, including for purpose of freight logistics management, or for business purposes such as ensuring on-time delivery, the services are Class 035 services.  If the tracking and tracing services are for transport purposes such as providing driving directions or information concerning collection and delivery of assets in transit, the services are in Class 039.  Applicant must clarify the services and classify accordingly.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

For “land freight management services using automated vehicles,” applicant must clarify the nature of the “freight management services” being provided, and how automated vehicles are involved in the provision of the specified services. 

 

Applicant may substitute the following wording, if accurate: 

 

International Class 035:          Arranging for pickup, transportation, delivery and storage of freight by truck; office functions in the nature of tracking and tracing of freight by land in transit; land freight logistics management; land freight management services using automated vehicles, namely, {clarify nature of services and associated use of automated vehicles, e.g., shipment processing and preparing shipping documents and invoices related to land freight services delivered via automated vehicles, for business purposes}

 

See TMEP §1402.01, 1402.03.

Applicant should note that the bolded language above is to indicate the examining attorney's suggestions, and the braces indicate where applicant must insert specific types of services.  The braces should not appear in the amended identification; only the specific services indicated, as inserted by applicant.  Applicant need not amend its identification other than where specified.

Applicant’s identification of services in Class 039 is acceptably definite as filed.

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

 

RESPONSE GUIDELINES

 

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

 

 

/Christina M. Riepel/

Trademark Examining Attorney

Law Office 124

(571) 272-6358

christina.riepel@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 February 01, 2021 for

U.S. Trademark Application Serial No. 90172585

 

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. 

 

 

/Christina M. Riepel/

Trademark Examining Attorney

Law Office 124

(571) 272-6358

christina.riepel@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 February 01, 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.”