To: | DCARD TAIWAN LTD. (uspto@brucestone.us) |
Subject: | U.S. Trademark Application Serial No. 90381940 - DCARD - API-TA238 |
Sent: | June 08, 2021 04:41:34 PM |
Sent As: | ecom116@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90381940
Mark: DCARD
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Correspondence Address: 8888 KEYSTONE CROSSING, SUITE 1300
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Applicant: DCARD TAIWAN LTD.
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Reference/Docket No. API-TA238
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: June 08, 2021
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.
LIKELIHOOD OF CONFUSION REFUSAL
THIS PARTIAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN
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
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)).
The applicant has applied for the mark “DCARD” with a stylized design of an eye, hair and mouth inside of the letter “D.” The registrant’s mark is “D CARD” in standard characters. The literal portion of applicant’s mark is practically identical to the registered mark.
Relatedness of Services
The applicant’s services are “Advertising; Publication of publicity texts; Presentation of goods on communication media, for retail purposes; Development of internet advertising concepts; Pay per click advertising; On-line advertising on a computer network; Rental of advertising space; Electronic billboard advertising; Rental of advertising space on web sites; Operating an on-line shopping site in the field of cosmetics, clothes, accessories; Providing commercial information and advice for consumers in the choice of products and services,” in relevant part.
The services listed in the registration include “Sales promotion for others; Promoting the goods and services of others by distributing electronic coupons; Administration of a consumer loyalty program to promote restaurant services and retail services of others; Advertising agencies; On-line advertising on a computer network.”
Where the services in the application at issue or in the cited registration are broadly identified as to their nature and type, without restrictions as to the channels of trade and limitations as to the classes of purchasers, it is presumed that the scope the of the services encompasses all services of the nature and type described, and that the identified services are offered in all normal channels of trade, and to all potential purchasers. In re Elbaum, 211 U.S.P.Q. 639, 640 (TTAB 1981); see TMEP § 1207.01(a)(iii). In the present case, the identification in the registration includes broad language that is presumed to encompass all services of the type described, including the narrower services listed in the application.
Because the marks are highly similar and the services are closely related, confusion is likely in accordance with Section 2(d) of the Act. Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
DESCRIPTION OF MARK REQUIREMENT
The following description is suggested, if accurate: The mark consists of the word “DCARD” in stylized letters with a stylized design of an eye, hair and mouth inside of the letter “D.”
IDENTIFICATION OF SERVICES REQUIREMENTS
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN
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.
/Khanh M. Le/
Trademark Examining Attorney
Law Office 116
U.S. Patent & Trademark Office
Khanh.Le@USPTO.gov
(571) 272-9435
RESPONSE GUIDANCE