| To: | Digital Arc, LLC (trademark@gg-law.com) |
| Subject: | U.S. Trademark Application Serial No. 90327018 - ARC - 4158-009 |
| Sent: | May 04, 2021 08:59:34 AM |
| Sent As: | ecom108@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 90327018
Mark: ARC
|
|
|
Correspondence Address:
|
|
|
Applicant: Digital Arc, LLC
|
|
|
Reference/Docket No. 4158-009
Correspondence Email Address: |
|
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: May 04, 2021
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 mark in the referenced application. 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.
Likelihood of Confusion – Section 2(d) Refusal – Applies to Specified Services ONLY
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.
Similarity of 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).
Applicant’s mark is “ARC” in standard characters.
Registrants’ marks are the wording (1) “ARC” in standard characters for Registration Nos. 3765901 and 5326987 and (2) “ARC” in stylized form for Registration No. 5168185.
As such, applicant’s mark and the mark in Registration Nos. 3765901 and 5326987 are identical and the mark in Registration No. 5168185 is highly similar to applicant’s in that the wording is identical. Please note that a mark in typed or standard characters, such as applicant’s, may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element, such as the mark in Registration No. 5168185, generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Accordingly, the relevant marks are sufficiently similar to support a finding of likelihood of confusion.
Similarity of Goods/Services
Applicant’s services to which this refusal applies are as follows: “online distribution of materials in connection therewith”
Registrant’s most relevant goods/services, for purposes of this refusal, are as follows:
These goods/services are (1) overlapping and/or (2) highly related in that they are likely to emanate from the same source and/or be provided, marketed and/or used in connection with one another. For example, applicant’s online distribution of materials encompass the provision of online handbooks, manuals, newsletters and bulletins in the field of travel services transactions in connection with the broadcasting and streaming of audio and video recordings of live events and meeting to remote attendees.
The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a representative sample of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case. This evidence shows that the goods and/or services listed therein, namely, (1) online distribution of materials and/or provision of online publications and (2) classes, seminars, workshops, conferences, downloadable publications and/or printed publications, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
Accordingly, based on the similarity of the marks and the relatedness of the goods/services, registration of the applicant’s mark is refused under Section 2(d) of the Trademark Act.
Although the examining attorney has refused registration, the applicant has the option to respond to the refusal to register by submitting evidence and legal arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following requirement(s).
Identification of Services Must Be Clarified
Wording in the identification of services is (1) indefinite and must be clarified, (2) overbroad in that it encompasses services in more than one international classification and/or (3) misclassified. See TMEP §1402.01. Please see suggested identification below for specific wording that requires clarification and/or reclassification. For example, the online distribution of materials in Class 38 is indefinite and misclassified; applicant will need to clarify the type/nature of the services as well as the type of materials that are being distributed via those services.
Applicant may adopt the following identification, if accurate. Please note that bolded wording/punctuation indicates a suggested addition(s)/amendment(s) to applicant’s current identification and wording/punctuation with a line through it indicates language of which the examining attorney is suggesting deletion. In addition, please note that the bracketed entries below require applicant to insert information. Finally, please note that the suggested identification includes an additional international classification and, if applicant adopts this suggested identification, applicant will need to comply with the requirements set forth in the multiple class requirements section below.
Class 38:
“Video teleconferencing; Web-based multimedia teleconferencing services; Network conference conferencing services; Telecommunication services,
namely, providing web-based multimedia teleconferencing and videoconferencing that allow simultaneous and asynchronous viewing, sharing, editing, and discussion of documents, data, and images by
participants via a web browser; Voice over Internet Protocol (VoIP) communication services; Internet broadcasting services, namely, broadcasting and streaming of audio and video recordings of live
events and meetings to remote attendees, and online distribution of materials in connection therewith.”
Class 41:
“Providing online, non-downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication} for use in connection with the internet broadcasting and streaming of audio and video recordings of live events.”
Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification. In addition, please note that, 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 Requirements - Advisory
(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 two classes; however, applicant submitted a fee(s) sufficient for only one 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.
Responding to this Office Action
How to respond. Click to file a response to this nonfinal Office action
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
Telephone/Email Suggested for Questions
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.
/Meghan Reinhart/
Meghan M. Reinhart
Trademark Examining Attorney
Law Office 108
(571) 272-2943
meghan.reinhart@uspto.gov
RESPONSE GUIDANCE
