OFFICE ACTION
TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 3/4/2009
THIS IS A FINAL ACTION.
RECITATION OF SERVICES - FINAL
As previously indicated, the recitation of services “marketing services in the field of computers in the nature of providing marketing services for the benefit of others by compiling advertising campaigns, promotional services, and consulting for customers” must be clarified because it is confusingly written, thereby marking the services indefinite. See TMEP §1402.01. The applicant references co-pending Application No. 77-171330 to demonstrate that the Office has previously accepted the recitation of service as currently listed. However, it should be noted that prior decisions and actions of other trademark examining attorneys in registering different marks have little evidentiary value and are not binding upon the Office. TMEP §1207.01(d)(vi). Each case is decided on its own facts, and each mark stands on its own merits. See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Int’l Taste, Inc., 53 USPQ2d 1604, 1606 (TTAB 2000); In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994).
As suggested in the Office Action dated October 20, 2006, applicant may adopt the following identification, if accurate: Providing advertising, marketing and promotional services, namely, development of advertising campaigns for use on computers and related consulting.
Identifications of services can be amended only to clarify or limit the services; adding to or broadening the scope of the 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 services that are not within the scope of the services set forth in the present identification.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html. See TMEP §1402.04.
REQUEST FOR INFORMATION - FINAL
As previously mentioned, if the above suggested amendment is not accurate the applicant must submit samples of advertisements or promotional materials. If such materials are not available, the applicant must submit a photograph of the goods and describe their nature, purpose and channels of trade. 37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).
Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application". The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule. In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration).
SPECIMEN – FINAL
The substitute specimen is not acceptable because the proposed mark is buried in the text of the scam message to such a degree that it would not be perceived as a services mark and thereby, does not show the applied-for mark in actual use in commerce in the sale or advertising of the services. Section 45 of the Trademark Act requires use “in the sale or advertising of services.” 15 U.S.C. §1127; see 37 C.F.R. §2.56(b)(2);TMEP §904.04(a).
It is the examining attorney position that the phrase "SEARCH ENGINE OPTIMIZATION" is buried in the text of the advertising for such services to such a degree that the impression made by the phrase on the purchasing public is simply that of an informational or descriptive statement about a characteristic or feature of applicant's services and, thus, it would not be perceived as an indicator of source. Moreover, there is no distinguishing feature between this designation and the other facts outlined in the message. In other words, there is nothing that sets this particular entry apart as a source identifier for the particular services offered by applicant.
An application based on Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).
Therefore, applicant must submit the following:
(1) A substitute specimen showing the mark in use in commerce for the services specified in the application; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).
Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq
If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required. However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. 15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.
In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the services listed in the application as of the filing date of the application.” 15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2), 2.35(b)(1); TMEP §806.03(c).
Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a service mark. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56;TMEP §§904, 904.07(a).
SAMPLE DECLARATION
The following is a properly worded declaration under 37 C.F.R. §2.20. Applicant should add this declaration to the end of its response, properly signed and dated by a person authorized under 37 C.F.R. §2.33(a). TMEP §804.01(b).
The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
ENTITY – FINAL
As previously indicated, the applicant is a sole proprietorship, and therefore, the following format should be used: “name of sole proprietorship, a <identify U.S. state where sole proprietorship is registered to do business> sole proprietorship, composed of <name of individual>, a citizen of <country of citizenship>.” TMEP §803.03(a). When using the above format, the name of the sole proprietorship and the name of the individual can be the same.
As previously stated, the applicant is seeking registration of the mark SEARCH ENGINE OPTIMIZATION for “marketing services in the field of computers in the nature of providing marketing services for the benefit of others by compiling advertising campaigns, promotional services and consulting for customers.” A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b). A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1). Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).
The term “Search Engine Optimization” (SEO) is a specialized process that involves analyzing a website's underlying code, architecture, visible content, and link popularity and making enhancements so that the site returns more prominently in the search results of relevancy-based, algorithm-driven search engines (such as Google, Yahoo! and MSN). The best way to develop a sound search engine optimization strategy is to work with an experience search engine optimization (SEO) firm. See newly attached printout defining search engine optimization.
The applicant argues that the term is not descriptive of its services mainly because the applicant is offering a service, while the term SEARCH ENGINE OPTIMIZATION refers to a process. This distinction, however, has little bearing on whether the proposed mark is descriptive of the applicant’s services. To be held descriptive, the examining attorney need only show that the term immediately and directly conveys some information about the services. In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005); TMEP §1209.01(a); see In re Shutts, 217 USPQ 363, 364 (TTAB 1983). In this instance, that “some information” refers to the purpose of applicant’s marketing and advertising services. Clearly, the substitute specimen discusses that the purpose of applicant’s marketing service is to provide search engine optimization. Again, the term “search engine optimization” is used to describe the process of improving the volume and quality of traffic to a web site. When considering the proposed mark in relation to the applicant’s services, it is clear that a feature and characteristic of the applicant’s marketing services involve providing search engine optimization for its customers and to ensure its customers a means of ensuring that a business’ webpage is accessible to search engines and are focused in ways that help improve the chance they will be discovered. In other words, the proposed mark immediately conveys a feature and characteristic of the identified services.
To further support the conclusion that the term “search engine optimization” is descriptive, the examining attorney directs the applicant’s attention to the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html , which lists both “Computer services, namely, search engine optimization” and “Consultation services in the field of search engine optimization.” These entries clearly demonstrate that the term is nothing more than a descriptive reference for a service involving webpage accessibility and is void of any trademark significance.
The applicant further argues that the combination of the words creates a unitary mark with a separate non-descriptive meaning. Based on the evidence of record and the meaning of the words taken as a whole, the examining attorney respectfully disagrees. A mark that combines descriptive words may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning. In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968) (holding SUGAR & SPICE not merely descriptive of bakery products because of the mark’s immediate association with the nursery rhyme “sugar and spice and everything nice”). However, the mere combination of descriptive words does not automatically create a new nondescriptive word or phrase. See, e.g., In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) (holding GROUP SALES BOX OFFICE merely descriptive for theater ticket sales services).
The registrability of a mark created by combining only descriptive words depends on whether a new and different commercial impression is created, and/or the mark created imparts an incongruous meaning as used in connection with the goods and/or services. TMEP §1209.03(d); e.g., In re Copytele, Inc., 31 USPQ2d 1540, 1542 (TTAB 1994); In re Associated Theatre Clubs, 9 USPQ2d at 1662. Where, as in this case, the combination of the descriptive words creates no incongruity, and no imagination is required to understand the nature of the services, the mark is merely descriptive.
Printouts of articles downloaded from the Internet are admissible as evidence of information available to the general public. In other words, these printouts demonstrate the way in which a term SEARCH ENGINE OPTIMIZATION is being used by the public. TMEP §710.01(b). In re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76 (TTAB 1999); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370-1 (TTAB 1998).
Material obtained from applicant’s website is acceptable as competent evidence in examination and ex parte proceedings. See In re N.V. Organon, 79 USPQ2d 1639, 1642-43 (TTAB 2006); In re Promo Ink, 78 USPQ2d 1301, 1302-03 (TTAB 2006); In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1898 (TTAB 2001); TBMP §1208.03; TMEP §710.01(b).
Applicant should note the following additional ground for refusal is also made FINAL.
LIKELIHOOD OF CONFUSION REFUSAL - FINAL
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978). TMEP §§1207.01 et seq.
Applicant is seeking registration of the mark SEARCH ENGINE OPTIMIZATION, as compared to the registrant’s mark which is SEARCH ENGINE OPTIMIZATION ENGINE. In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. 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). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
The applicant goes to great length to argue that the respective marks are different in connotation, appearance, sound and commercial impression. However, since the marks are virtually identical, this argument is illogical. It is impossible for the examining attorney to give any weight to the applicant’s argument that SEARCH ENGINE OPTIMIZATION and SEARCH ENGINE OPTIMIZATION ENGINE are not similar in their meaning, connotation, appearance, and sound.
The mere addition of a term to a registered mark generally does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Trademark Act Section 2(d). See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (THE LILLY and LILLI ANN); In re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO and MACHO COMBOS); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE and CREST CAREER IMAGES); In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and RICHARD PETTY’S ACCU TUNE); In re Cosvetic Labs., Inc., 202 USPQ 842 (TTAB 1979) (HEAD START and HEAD START COSVETIC); TMEP §1207.01(b)(iii). In other words, the mere addition of the term “engine” does not obviate the similarity between the marks.
Furthermore, marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).
The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b). For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The question is whether the marks create the same overall impression. See Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).
If the marks of the respective parties are virtually identical, the relationship between the services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).
Applicant uses the proposed mark on “marketing services in the field of computers in the nature of providing marketing services for the benefit of others by compiling advertising campaigns, promotional services, and consulting for customers," as compared to the registrant’s services which are “providing on-line non-downloadable computer search engine software.” The services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Although the recitation of services are identified differently by the respective parties, a review of both parties websites clearly reveals that the services of each involve search engine marketing which involves a form of internet marketing that seeks to promote websites by increasing their visibility. See previously attached printouts. The applicant argues that the examining attorney is wrong to conclude that its services and the registrant’s services are related since they provide a marketing service, while the registrant provides on-line non downloadable computer search engine software. However, after careful review of the applicant’s specimen, it is clear that both parties’ services involve search engine marketing making them related.
In closing, the overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).
RESPONSE TO FINAL ACTION
If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or
(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.
37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.
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