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6/27/2009 @ 2:37:26 am by jasongambert.com
Trademark/Service Mark Application, Principal Register
TEAS Plus Application
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Serial Number: 77509514 |
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Filing Date: 06/27/2008 |
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Input Field |
Entered |
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TEAS Plus |
YES |
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MARK INFORMATION |
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*MARK |
Search Engine Optimization |
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*STANDARD CHARACTERS |
YES |
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USPTO-GENERATED IMAGE |
YES |
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LITERAL ELEMENT |
Search Engine Optimization |
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*MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font, style, size, or color. |
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REGISTER |
Principal |
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APPLICANT INFORMATION |
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*OWNER OF MARK |
Modern Consulting Solutions |
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*STREET |
General Delivery |
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*CITY |
Scottsdale |
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*STATE
(Required for U.S. applicants) |
Arizona |
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*COUNTRY |
United States |
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*ZIP/POSTAL CODE
(Required for U.S. applicants only) |
85251 |
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EMAIL ADDRESS |
jgambert@modernconsultingsolutions.com |
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AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
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LEGAL ENTITY INFORMATION |
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*TYPE |
SOLE PROPRIETORSHIP |
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* STATE/COUNTRY WHERE LEGALLY ORGANIZED |
Arizona |
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NAME OF INDIVIDUAL & CITIZENSHIP |
J. Gambert |
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GOODS AND/OR SERVICES AND BASIS INFORMATION |
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*INTERNATIONAL CLASS |
035 |
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FIRST USE ANYWHERE DATE |
At least as early as 07/26/1997 |
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FIRST USE IN COMMERCE DATE |
At least as early as 07/26/1997 |
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*IDENTIFICATION |
Advertising, marketing and promotion services |
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*FILING BASIS |
SECTION 1(a) |
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FIRST USE ANYWHERE DATE |
At least as early as 07/26/1997 |
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FIRST USE IN COMMERCE DATE |
At least as early as 07/26/1997 |
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SPECIMEN
FILE NAME(S) |
\\TICRS\EXPORT2\IMAGEOUT2 \775\095\77509514\xml1\FT K0003.JPG |
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SPECIMEN DESCRIPTION |
This is the spam message that is the first known use of the word "Search Engine Optimization or SEO" for short. All the addresses it has been advertising for SEO currently point to ModernConsultingSolutions.com. This specimen is showing the related predecessors in interest since 1997. Currently "Search Engine Optimization and SEO" can be seen on modernconsultingsolutions.com on the services page at the top and bottom.. |
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ADDITIONAL STATEMENTS INFORMATION |
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*TRANSLATION
(if applicable) |
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6/27/2009 @ 2:23:08 am by jasongambert.com
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: 10/20/2008
The assigned examining attorney has reviewed the referenced application and determined the following.
PRELIMINARY DRAWING AMENDMENT
The proposed amendment of the mark is unacceptable because it would materially alter the essence or character of the mark. See 37 C.F.R. §2.72; In re Who? Vision Sys., Inc., 57 USPQ2d 1211 (TTAB 2000) (holding proposed amendment of TACILESENSE to TACTILESENSE to be material alteration); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (holding proposed amendment of TURBO and design to typed word TURBO to be material alteration); In re Meditech Int’l Corp., 25 USPQ2d 1159, 1160 (TTAB 1990) (holding “[a] drawing consisting of a single blue star, as well as a drawing consisting of a number of blue stars, [to] be considered material alterations vis-à-vis a drawing consisting of the typed words ‘DESIGN OF BLUE STAR’”); In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139 (TTAB 1989) (holding proposed amendment to replace typed drawing of THE WINE SOCIETY OF AMERICA with a special form drawing including such wording with a crown design and a banner design bearing the words IN VINO VERITAS to be a material alteration); TMEP §§807.14 et seq.
A mark cannot be amended if the change would materially alter the mark. 37 C.F.R. §2.72; TMEP §807.14. The Office determines whether a proposed amendment materially alters a mark by comparing the proposed amended mark with the mark in the drawing filed with the original application. TMEP §807.14(c).
A standard character drawing cannot be amended to a special form drawing containing a design element, color, or a claim to a distinctive style or size of lettering, unless the examining attorney determines that the amendment is non-material. 37 C.F.R. §2.72. See et seq. regarding material alteration. In this instance, the special form drawing contains a design element and a color element which modifies the essence of the original mark to such a degree that it constitutes a material alteration. Therefore, the original drawing remains the drawing of record.
If republication of the amended mark would be necessary in order to provide proper notice to third parties for opposition purposes, then the mark has been materially altered and the amendment is not permitted. In re Who? Vision Sys. Inc., 57 USPQ2d 1211, 1218 (TTAB 2000). “The modified mark must contain the essence of the original mark, and the new form must create the impression of being essentially the same mark.” Visa Int’l Serv. Ass’n v. Life Code Sys., Inc., 220 USPQ 740, 743 (TTAB 1983). “That is, the new and old forms of the mark must create essentially the same commercial impression.” In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1885 (TTAB 1988); see TMEP §807.14.
DESCRIPTIVENESS REFUSAL
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the applicant's goods. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.
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).
In this case, applicant seeks registration of 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.”
The determination of whether a mark is merely descriptive is considered in relation to the identified goods and not in the abstract. In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (finding CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). “Whether consumers could guess what the product is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
As the attached printouts from various websites demonstrate, 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 goods, it is clear that applicant’s marketing services are used as 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 describes both the use and function of the applicant’s marketing services.
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 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).
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.
The applied-for mark has been refused registration on the Principal Register. Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816. Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).
Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:
- The registrant may use the registration symbol ®;
- The registration is protected against registration of a confusingly similar mark under Trademark Act Section 2(d);
- The registrant may bring suit for infringement in federal court; and
- The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.
See 15 U.S.C. §§1052(d), 1091, 1094; TMEP §815.
Applicant should note the following additional ground for refusal.
LIKELIHOOD OF CONFUSION REFUSAL
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 3518607 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
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.
SIMILARITY OF THE MARKS
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). Since the marks are virtually identical it is clear that they are 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).
SIMILARITY OF THE SERVICES
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 attached. It is apparent that the applicant’s marketing services and the registrant’s search engine software each 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).
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
INFORMALITIES
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
RECITATION OF SERVICES
The identification of services is indefinite and must be clarified because it is unclearly written. See TMEP §1402.01. 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
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
The substitute specimen is not acceptable because it is merely a picture or rendering of the applied-for mark and 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).
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).
Advisory Note: The applicant should note that the original specimen of record is also unacceptable since the proposed mark merely appears in a message response and does show the term “search engine optimization” being used in relation to marketing services.
SAMPLE DECLARATION
6/27/2009 @ 2:17:12 am by jasongambert.com
RESPONSE TO OFFICE ACTION
ISSUE/MAILING DATE
: 01/08/2009
The applicant has reviewed the referenced refusals for the initial application and determined the following arguments against refusal:
PRELIMINARY DRAWING AMENDMENT
The proposed amendment of the mark is unacceptable because it would materially alter the essence or character of the mark.
Applicant is in agreement and therefore original drawing is acceptable and remains the drawing of record.
DESCRIPTIVENESS REFUSAL
Applicant carefully examined the attorneys refusal for registration on the Principal Registration, and contends with Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq. with the following: The mark "Search Engine Optimization," as defined; "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," does not describe an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and or/ services that should prevent registration. The mark "Search Engine Optimization," as defined; "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," does not describe an intended user in particular, especially in relation to Search Engine Optimization; currently known and user defined as a process. Applicant’s definition is a service definition for the mark "Search Engine Optimization," and refutes furthermore "others," as being broad enough in Applicants definition to not inhibit registration. "Others," is broad enough as defined to not narrow down a particular demographic of a particular, "user."
Furthermore, the determination of whether a mark is merely descriptive is considered in relation to the identified goods and not in the abstract. The identified goods do not exist, the mark is service based. The difference between goods and services is material and immaterial. Therefore there is no goods to be considered to merit determination for refusal on this ground alone. As attached in the refusal were printouts from various websites demonstrating, the term "search engine optimization" and being used to describe the process. Applicant emphasizes here at the significant point of interest being the known user definition that exists for "search engine optimization," currently as a process not a service.
When the reviewing attorney is considering the proposed mark in relation to the goods, it is clear the applicant’s marketing services differ in every characteristic to the "goods," or "process," of any aspect of "search engine optimization" as currently being understood. Respectfully, the reviewing attorney incorrectly defines applicants marketing services as "a means of ensuring that a business webpage is accessible to search engines and is focused in ways that help improve the chance they will be discovered." The reviewing attorney in other words states, "The proposed mark describes both the use and function of the applicant’s marketing services." The applicant again brings to the attention the correct service definition of the mark "search engine optimization," as; "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." This definition of the mark differs drastically from the
assumed service definition of the reviewing attorney. Furthermore applicant brings to attention that even if these service definitions somehow still seem to be the same, it does not in any way merit such refusal. Search Engine Optimization as currently understood to the general public as being a process. Both definitions from applicant and the reviewing attorney are service based. The difference between a service and a process is the distinguishing factor when reviewing Applicants application. 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 is being used by the public. Applicant is fully aware of such use and brings to the attention the general use of the public being currently in reference to a "search engine optimization" process. A search engine optimization process also being user defined. The reviewing attorney must understand there is currently no credible definition with any official English linguistic value found anywhere defining search engine optimization as a service. Defining search engine optimization at all. Therefore applicant relies only on what is available currently to be user created definitions online as a source for such findings of what search engine optimization is. Furthermore every unofficial user based definition online still remains process defined. With these findings it is evident nothing should bar registration for applicants’ service mark; "search engine optimization," as defined in application 77509514. The applicants mark is registerable and the applicant brings to attention the composite creating a unitary mark with a separate nondescriptive meaning in entirety. Again the applicant brings up the merits of determination being the difference of a service compared to a process. If there were a mere combination of descriptive words that existed, it is understood this alone does not automatically create a new non descriptive word or phrase. Since applicants mark does not have any descriptive elements to the service definition for the mark "Search Engine Optimization," a new and different commercial impression is created. Furthermore the service mark does impart an incongruous meaning from the original known user defined process definitions. In this case applicant brings to the attention the difference between process and service as being the "incongruity," factor. No imagination is required to understand the differences between a service and a process. On the other hand imagination is required to understand the nature of Applicants services. Therefore applicants mark is not merely descriptive and fully capable of being registered.
The applied-for mark has been refused registration on the Principal Register. Applicant is responding to the refusal by submitting evidence and arguments in support of registration and currently does not seek registration on the Supplemental Register or feel the need to do so at this time
.
The reviewing attorney should note the following additional grounds for registration:
LIKELIHOOD OF CONFUSION REFUSAL
The examining attorney incorrectly refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), reviewing attorney states "because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 3518607 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq." Applicant brings to attention §1052(d), §1052(f), §2.38 Use by predecessor or by related companies, and §5 (15 U.S.C. § 1055). Use by related companies: §1052 (d) Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; §1052 (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. § 2.38 Use by predecessor or by related companies. (a) If the first use of the mark was by a predecessor in title or by a related company (sections 5 and 45 of the Act), and the use inures to the benefit of the applicant, the dates of first use (§§ 2.34(a)(1)(ii) and (iii)) may be asserted with a statement that first use was by the predecessor in title or by the related company, as appropriate. (b) If the mark is not in fact being used by the applicant but is being used by one or more related companies whose use inures to the benefit of the applicant under § 5 of the Act, such facts must be indicated in the application. § 5 (15 U.S.C. § 1055). Use by related companies
Where a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant or applicant for registration, and such use shall not affect the validity of such mark or of its registration, provided such mark is not used in such manner as to deceive the public. If first use of a mark by a person
is controlled by the registrant or applicant for registration of the mark with respect to the nature and quality of the goods or services, such first use shall inure to the benefit of the registrant or applicant, as the case may be. 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. 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.
DISSIMILARITY OF THE MARKS
Applicant is seeking registration of the mark SEARCH ENGINE OPTIMIZATION, and makes claims to the entire connotation as compared to the registrant’s mark which is SEARCH ENGINE OPTIMIZATION ENGINE which only makes claims to the ladder part being; "optimization engine." In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. None of these elements exist and nothing exists sufficient to find a likelihood of confusion. The marks differ completely given the following circumstances.
Meaning Search Engine Optimization Engine: Providing on-line non-downloadable computer search engine software. Search Engine Optimization: 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.
Applicant again points out the claims being made by registrant to "Optimization Engine." A meaning of optimization being defined as: the fact of optimizing; making the best of anything, and a meaning of engine as: any mechanical contrivance. Claims a registrant made in reference and in conjunction to the unclaimed key word "Search Engine." If anything, this would be descriptive of the given definition of this registrant being: Providing on-line non-downloadable computer search engine software. This definition by registrant having clearly something to do with Search Engines it is no wonder why search engine is not claimed. The differences from applicant being compared to the registrants mark is; clearly being a material product available for the public to use, to immaterial services provided for the public to utilize. Registrants’ product differs in every way comparable to the service definition of applicant. Comparable notations being; material from immaterial, using compared to utilizing, claims of Search Engine Optimization compared to Optimization Engine, process compared to service, and an end compared to no end to the user.
Connotation The connotation in the two definitions can be clearly seen as being radically different. When looking close at the differences between what is claimed in the marks and understanding how the two travel in different channels, have different meanings, suggest different trades, emit different commercial impression, attract different users, and all the other facets of distinction that make the two completely separate are weighed, it is certain there are no similarities.
Appearance What may appear at first to have similar appearance in actuality differs just as radical as every other point when reviewing for likelihood of confusion. The mere addition of a term to a registered mark does not obviate the similarity between the marks nor does it overcome a likelihood of confusion. In other words, the mere addition of the term "engine" does not obviate the similarity between the marks. What do obviate the similarity of the marks are the claims being made. When researching these differences it is clear the appearances of what is claimed obviates the two drastically. Sound Just like the appearance similarly can be said about the sound. Again when researching the differences it is clear the sound of what is claimed obviates the two drastically as well.
Commercial Impression
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. 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. The focus is on the recollection of the average purchaser who normally retains a general feel rather than a specific impression of trademarks.
Since the marks do not create the same overall impression. The average purchaser should not be underestimated. The test is what is claimed and the facts of what is currently understood. The average purchaser who normally retains a general impression already exists. This has been proven by user defined process definitions of "search engine optimization" already. Currently the user definition is known as a process. The registrant does not state a claim to "search engine," but "optimization," with the additional claim and word being "engine." The overall impression exists already, with the overwhelming evidence still being understood as process. The registrant defines their mark as: Providing on-line non-downloadable computer search engine software, which when using has a beginning and an end, clearly proving process. The overall impression can easily be seen from registrant as a process. Applicants mark is a service mark and immaterial with no end. Applicant’s definition is service based and clearly denotes services that change with the times. Services defined narrow enough to not be broad, but open enough to have no ending.
DISSIMILARITY OF THE SERVICES
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 mark which is "providing on-line non-downloadable computer search engine software." The services of the party differ dramatically. Registrant has a process with a beginning and an end to a user. The applicant has a service and has no end to the user. Since both parties are not related in any manner by this, and the conditions surrounding the parties are such that they would not be encountered by the same purchasers, especially under circumstances that differ so dramatically, they don’t give rise to the mistaken belief that the goods and/or services come from a common source.
Although the recitations of services are identified by only the applicant, a review of both parties’ websites clearly reveals that the services of applicant differ from registrant dramatically. Registrant provides software when being used that has a beginning and an end to the user clearly showing process. The reviewing attorney may be under the impression applicant is involved in search engine marketing. Nowhere on the entire website does search engine marketing come up in the content, but even if search engine marketing later is added to the website it should not bar registration because search engine marketing is a service. Registrant’s software provides a process. It is apparent that the applicant’s marketing services and the registrant’s search engine software are not related, from seeing one having an end to a user and one having no end to a user. Process compared to service. The reviewing attorney closes with a concern not only to prevent buyer confusion as to the source of the goods/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. Respectfully, the reviewing attorney errors in assuming the applicant is a newcomer. The applicant’s first use by predecessor and related companies outdates first use stated by registrant for more than five years. Even though registration should be no question, if there is any please see above referenced concurrent use §1052.
The examining attorney has refused registration, the applicant is responding to the refusal to register by submitting evidence and arguments in support of registration.
INFORMALITIES
Applicant chooses to respond to the refusal to register, the applicant also responds to the following informalities.
RECITATION OF SERVICES
The identification of services may be indefinite because they are services, but they do not need to be clarified because it is clearly written and the identification of services is specific, definite, clear, accurate, and concise. Applicant has in the past been involved in another application approved for publication for the same definition. The term "SEO" another known term for search engine optimization, and the same congruency in regards to the definition should apply here. Applicant may adopt the following identification, if the reviewing attorney decides not in the favor of the other reviewing attorney in prior case 77171330. Applicant will await reviewing attorneys’ decision and consider in the mean time the definition given for applicant being: Providing advertising, marketing and promotional services, namely, development of advertising campaigns for use on computers and related consulting.
REQUEST FOR INFORMATION The above suggested amendment is currently not acceptable although the applicant has submitted samples of advertisements or promotional materials that fit both service definitions. SPECIMEN
The previous substitute specimen may not be acceptable, but is a historical advertisement currently online and has been continuously online since the date of the specimen’s appearance. It shows the applied for mark in actual use. When reading the advertisement with the highlighted words "search engine optimization," it should be notated in having a connection to a service. The addresses advertised online are seen to be owned by Modern Consulting Solutions. They are forwarded when visiting ascella.net and tosonoe875.com to another address and this of course then leads customers to SEO and services with the mark; "search engine optimization," on modernconsultingsolutions.com This specimen clearly shows continuous use and prior use by predecessors. Applicant includes links with this historical advertisement below that should now be acceptable to USPTO with an attached website printout of the "first known use" historical advertisement.
First use was by the predecessor in title or by the related company. Therefore, applicant submits the following:
(1)
http://groups.google.com/group/alt.current-events.net-abuse.spam/browse_thread/thread/6fee2777dc17b8ab/3858bff94e56aff3?lnk=st&q=%22search+engine+optimization%22&rnum=1#3858bff94e56aff3
(2) Attached picture of specimen.
The domain name authenticated sender being Tosonoe875.com and Ascella.net are currently owned business addresses forwarded and operated now by modernconsultingsolutions.com. "
The substitute specimen was in use in commerce at least as early as the filing date of the application." Note: The reviewing attorney should note that the original specimen of record should be acceptable since the proposed mark appears in an advertisement and does show the term "search engine optimization" being used in relation to services. This is the historical first known use of search engine optimization used by predecessors now in relation to MCS being the new owner of the referenced domain titles. A service definition now can be officially made for search engine optimization and the intellectual industrial property rights reside with Applicant.
DECLARATION
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 there from, 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.
Jason Gambert, President MCS Respectfully submitted this day: Thursday, January 08, 2009
ENTITY
Name of sole proprietorship: Modern Consulting Solutions/MCS an Arizona sole proprietorship registered to do business. A business composed of Jason Gambert, a citizen of the United States of America.
6/27/2009 @ 2:10:28 am by jasongambert.com
|
Trademark Snap Shot Publication Stylesheet
(Table presents the data on Publication Approval) |
|
OVERVIEW |
|
SERIAL NUMBER |
77509514 |
FILING DATE |
06/27/2008 |
|
REG NUMBER |
0000000 |
REG DATE |
N/A |
|
REGISTER |
PRINCIPAL |
MARK TYPE |
SERVICE MARK |
|
INTL REG # |
N/A |
INTL REG DATE |
N/A |
|
TM ATTORNEY |
BUTLER, MIDGE FAE |
L.O. ASSIGNED |
107 |
|
PUB INFORMATION |
|
RUN DATE |
02/12/2009 |
|
PUB DATE |
N/A |
|
STATUS |
643-PREVIOUS ACTION/ALLOWANCE COUNT WITHDRAWN |
|
STATUS DATE |
02/11/2009 |
|
LITERAL MARK ELEMENT |
SEARCH ENGINE OPTIMIZATION |
6/27/2009 @ 1:56:41 am by jasongambert.com
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.
This Office action is in response to applicant’s communication filed on January 8, 2009. After careful review the examining attorney has determined the following.
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.
DESCRIPTIVENESS REFUSAL – FINAL
The refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below. See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.64(a).
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 the Internet is generally accepted as competent evidence in examination and ex parte proceedings. See In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB 2006) (Internet evidence accepted by the Board to show genericness); In re White, 80 USPQ2d 1654, 1662 (TTAB 2006) (Internet evidence accepted by the Board to show false connection); In re Joint-Stock Co. “Baik”, 80 USPQ2d 1305, 1308-09 (TTAB 2006) (Internet evidence accepted by the Board to show geographic significance); Fram Trak Indus. v. WireTracks LLC, 77 USPQ2d 2000, 2006 (TTAB 2006) (Internet evidence accepted by the Board to show relatedness of goods); In re Consol. Specialty Rest. Inc., 71 USPQ2d 1921, 1927-29 (TTAB 2004) (Internet evidence accepted by the Board to show that geographic location is well-known for particular goods); In re Gregory, 70 USPQ2d 1792, 1793 (TTAB 2004) (Internet evidence accepted by the Board to show surname significance); In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060 (Internet evidence accepted by the Board to show descriptiveness); TBMP §1208.03; TMEP §710.01(b).
Evidence from the online Wikipedia® encyclopedia can be considered if the non-offering party has an opportunity to rebut such evidence. In re IP Carrier Consulting Group, 84 USPQ2d 1028 (TTAB 2007); TMEP §710.01(b).
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
For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 3518607. See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).
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.
SIMILARITY OF THE MARKS
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).
SIMILARITY OF THE SERVICES
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).
The applicant should note that the cited registration was registered on the Supplemental Register, thereby, confirming the examining attorney’s position that the term SEARCH ENGINE OPTIMIZATION is descriptive.
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.
In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: TEAS Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.uspto.gov/teas/index.html: (1) written responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) amendments to allege use; (7) statements of use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis. If any of these documents are filed on paper, they must be accompanied by a $50 per class fee. 37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i). Telephone responses will not incur an additional fee. NOTE: In addition to the above, applicant must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee. 37 C.F.R. §2.23(a)(2).
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