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:  March 24, 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:

• Potential Citation of Prior-Filed Applications
• Partial Refusal – Likelihood of Confusion
• Identification of Goods and Services Requires Clarification

 

PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 88975117, 88975097, 88975094 and 90230100 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) REFUSAL – LIKELIHOOD OF CONFUSION – Partial Refusal

 

Registration of the applied-for mark is refused in part because of a likelihood of confusion with the mark in U.S. Registration No. 5016314.  This refusal applies solely with regard to the applicant’s Class 35 and 42 services identified as “Providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet;...; Marketing and branding services, namely, providing customized communication programs to obtain consumer insights and develop branding strategies,” and “Developing customized web pages featuring user-defined information; Developing customized web pages and other data feed formats featuring user-defined information; Computer services, namely, providing customized web pages featuring user-defined information; Providing a website that gives users the ability to create customized web pages featuring user-defined information; Computer services in the nature of customized web pages and other data feed formats featuring user-defined information;...; Developing customized web pages featuring user-defined information. in the field of user preferences; Developing customized web pages and other data feed formats featuring user-defined information in the field of user preferences.”  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

--General Principles in Determining Likelihood of Confusion

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01. 

 

--Similarities Between 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).

 

The applicant applied to register the mark AVATAR.  The registered mark is AVATARDESK.

 

The marks share the common feature AVATAR and create similar overall commercial impressions.

 

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).

 

--Similarities Between the Services

 

The goods and/or 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 goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

In this case, the registrant’s services identified as “Advertising and marketing” and “Graphic design; web site design; web site development for others” encompass the applicant’s services identified as “Providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet;...; Marketing and branding services, namely, providing customized communication programs to obtain consumer insights and develop branding strategies,” and “Developing customized web pages featuring user-defined information; Developing customized web pages and other data feed formats featuring user-defined information; Computer services, namely, providing customized web pages featuring user-defined information; Providing a website that gives users the ability to create customized web pages featuring user-defined information; Computer services in the nature of customized web pages and other data feed formats featuring user-defined information;...; Developing customized web pages featuring user-defined information. in the field of user preferences; Developing customized web pages and other data feed formats featuring user-defined information in the field of user preferences.”

 

--Conclusion

 

Where the marks share terms and create similar overall commercial impressions, and the services of one encompass the services of the other, confusion as to the source of the services is likely.  For the foregoing reasons, the mark is refused registration under Section 2(d) of the Trademark Act with regard to the services identified as “Providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet;...; Marketing and branding services, namely, providing customized communication programs to obtain consumer insights and develop branding strategies,” in Class 35, and “Developing customized web pages featuring user-defined information; Developing customized web pages and other data feed formats featuring user-defined information; Computer services, namely, providing customized web pages featuring user-defined information; Providing a website that gives users the ability to create customized web pages featuring user-defined information; Computer services in the nature of customized web pages and other data feed formats featuring user-defined information;...; Developing customized web pages featuring user-defined information. in the field of user preferences; Developing customized web pages and other data feed formats featuring user-defined information in the field of user preferences,” in Class 42.

 

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

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS AND SERVICES

 

The wording “Downloadable software for use in mobile devices for in providing anonymized electronic user profiles to online commercial vendors and businesses,” in Class 9, “Online service for sharing preferences of anonymised users over the internet to commercial vendors and businesses,” in Class 35, and “Developing customized web pages featuring user-defined information. in the field of user preferences,” in Class 42 in the identification of goods and services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate: 

 

International Class 9

Downloadable software for use in mobile devices for providing anonymized electronic user profiles to online commercial vendors and businesses; Downloadable computer application software for mobile phones, namely, software for providing anonymized electronic user profiles to online commercial vendors and businesses; Downloadable mobile applications for providing anonymized electronic user profiles to online commercial vendors and businesses.

 

International Class 35

Providing a website for anonymised users with specific informed recommendations of specific consumer products and services validated by the users' inputted preferences; Online service for connecting anonymised users with retailers for the purpose of facilitating discounted purchases; Providing recommendations of service providers to consumers for commercial purposes; Providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; Providing a website for connecting sellers with buyers; Providing a website featuring the ratings, reviews and recommendations on products and services for commercial purposes posted by users; Collection and systematisation of information into computer databases; Collection and compilation of information into computer databases in the field of user preferences; Preparation of customized promotional and merchandising materials for others; Marketing and branding services, namely, providing customized communication programs to obtain consumer insights and develop branding strategies; Online service for sharing preferences of anonymised users over the internet to commercial vendors and businesses, namely, providing consumer product recommendations.

 

International Class 42

Developing customized web pages featuring user-defined information; Developing customized web pages and other data feed formats featuring user-defined information; Computer services, namely, providing customized web pages featuring user-defined information; Providing a website that gives users the ability to create customized web pages featuring user-defined information; Computer services in the nature of customized web pages and other data feed formats featuring user-defined information; Providing customized computer searching services, namely, searching and retrieving information at the customer's specific request via the Internet; Developing customized web pages featuring user-defined information in the field of user preferences; Developing customized web pages and other data feed formats featuring user-defined information in the field of user preferences

 

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.

 

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

 

 

/John Dwyer/

Examining Attorney

Law Office 116

571-272-9155

John.Dwyer1@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 24, 2021 for

U.S. Trademark Application Serial No. 90259961

 

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. 

 

 

/John Dwyer/

Examining Attorney

Law Office 116

571-272-9155

John.Dwyer1@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from March 24, 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.”