From: Desjardins, Rachel
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`Sent: 6/30/2020 6:01:47 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. Trademark Application Serial No. 88352905 - ARC - 10647510US02 - Request for
`Reconsideration Denied - Return to TTAB
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`*************************************************
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`Attachment Information:
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`Count: 1
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`Files: 88352905.doc
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`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
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`U.S. Application Serial No. 88352905
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`Mark: ARC
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`Correspondence Address:
` LISEL M. FERGUSON
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` PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
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` 525 B STREET, SUITE 2200
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` SAN DIEGO, CA 92101
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`Applicant: Panasonic Avionics Corporation
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`Reference/Docket No. 10647510US02
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`Correspondence Email Address:
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` docketing@procopio.com
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`REQUEST FOR RECONSIDERATION
`AFTER FINAL ACTION
`DENIED
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`Issue date: June 30, 2020
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`Applicant’s request for reconsideration is denied. See 37 C.F.R. §2.63(b)(3). The trademark
`examining attorney has carefully reviewed applicant’s request and determined the request did not:
`(1) raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling
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`evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were
`persuasive or shed new light on the outstanding issue(s). TMEP §§715.03(a)(ii)(B), 715.04(a).
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`In particular, in the request for reconsideration of June 1, 2020, applicant has submitted an amendment
`purporting to narrow the identification of services such that there is no longer likelihood of confusion
`between the instant applicant and the services specified in U.S. Registration Nos. 3125659, 3765901,
`5168185, 3352915, and 3245853. The examining attorney disagrees.
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`U.S. Registration No. 3125659
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`At the outset the examining attorney notes that the marks at issue are comprised of the identical literal
`element ARC, where the applied-for mark is in standard character form and the registered mark is in
`stylized form with a geometric design. Where the marks of the respective parties are identical or
`virtually identical, as in this case, the degree of similarity or relatedness between the services needed to
`support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406,
`1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)),
`aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
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`As set forth in the final Office action issued on November 30, 2019, U.S. Registration No. 3125659 uses
`broad wording the describe registrant’s “Advertising agency services in all media,” which presumably
`encompasses all services of the type described, including applicant’s more narrow identification (as
`amended) for various dissemination of advertising services offered inflight. As argued in the response to
`Office action of October 29, 2019, and again in the request for reconsideration of June 1, 2020, applicant
`improperly imputes limitations regarding the nature of these services that are not set forth in the
`registration. Determining likelihood of confusion is based on the description of the services stated in
`the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit
`Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc,
`866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
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`Further, the evidence accompanying the final Office action of November 30, 2019, shows that
`advertising agencies provide a very broad range of services that may include far more than designing
`marketing campaigns, such as creating websites, engaging in social media and public relations
`communications, procuring and managing online advertising, and search engine optimization, among
`others. See previously attached screenshots from BalcomAgency.com, AdHouseAdvertising.com, and
`Forbes.com. Additional evidence shows that companies that provide inflight advertising on screens also
`provide other types of advertising services. See previously attached screenshots from TheAirport.org
`and PXCom.Media. As the evidence shows, modern advertising agency services are broadly offered and
`such services include not just the creation of advertisements, but also include advertising, display, and
`dissemination of advertising content across all potential forms of media.
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`Finally, it is noted that registrant’s services have no restrictions as to nature, type, channels of trade, or
`classes of purchasers and are “presumed to travel in the same channels of trade to the same class of
`purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting
`Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
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`U.S. Registration Nos. 3765901, 5168185, 3352915, and 3245853
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`U.S. Registration Nos. 3765901 and 5168185 are comprised of the mark ARC in stylized and standard
`character form. As such the marks at issue are identical or near-identical. As stated above, where the
`marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity
`or relatedness between the services needed to support a finding of likelihood of confusion declines. See
`In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204,
`1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017);
`TMEP §1207.01(a).
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`U.S. Registration Nos. 3352915 and 3245853 are for the standard character marks MY ARC and ARC
`MARKETPLACE. The marks share the identical element ARC with the registered marks encompassing the
`entirety of the applied-for mark. The additional wording appearing in these marks is insufficient to
`differentiate the marks. Adding a term to a registered mark generally does not obviate the similarity
`between the compared marks, as in the present case, nor does it overcome a likelihood of confusion
`under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188
`USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In
`re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN
`confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and
`MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are
`identical in part.
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`With respect to the referenced registrations, the services at issue are “electronic commerce services,
`namely, providing information on travel-related goods and services via telecommunications networks
`for advertising and sales purposes for use by authorized persons/entities in the travel industry.”
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`Applicant again argues the narrowing amendments made in the request for reconsideration are
`sufficient to avoid likelihood of confusion here. The examining attorney disagrees because applicant’s
`limitations regarding the services provided in flight do not sufficiently avoid the services as set forth in
`the registration, which may also be provided in flight because registrant’s services are provided “via
`telecommunications networks,” which may encompass inflight telecommunications networks, and “for
`use by authorized persons/entities in the travel industry” could include airlines or airline passengers.
`Applicant primarily argues against likelihood of confusion by improperly imputing limitations about the
`users of registrant’s services that are not set forth in the registration. Applicant argues that the term
`“for use by authorized persons/entities in the travel industry” appearing in the registrations means that
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`registrant’s services are accessible only to “travel agents and others engaged in the travel industry”
`however, the registration does not indicate who the “authorized users” of registrant’s services and this
`language certainly is not conclusive evidence that the consumers of registrant’s and applicant’s services
`do not overlap.
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`Determining likelihood of confusion is based on the description of the services stated in the application
`and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d
`1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325,
`123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). The primary substance of applicant’s arguments are based on
`improperly reading limitations into the recitation of services in the registrations and these arguments
`are found unpersuasive.
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`Finally, to the extent that that the request for reconsideration argues that the consumers of the services
`are sophisticated, such arguments are rejected for the reasons previously stated in the final Office
`action of November 30, 2019. Even if consumers of the compared services could be considered
`sophisticated and discriminating, it is settled that “even sophisticated purchasers are not immune from
`source confusion, especially in cases such as the present one involving identical marks and related goods
`[and/or services].” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015) (citing In re Research &
`Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)), aff’d, 866 F.3d 1315, 123 USPQ2d
`1744 (Fed. Cir. 2017); see also In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir.
`1993). The identity of the marks and the relatedness of the goods and/or services “outweigh any
`presumed sophisticated purchasing decision.” In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL
`Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d
`1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325,
`110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014).
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`Accordingly, the following refusal made final in the Office action dated November 30, 2019, is
`maintained and continued:
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`• Registration is Refused: Likelihood of Confusion
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`See TMEP §§715.03(a)(ii)(B), 715.04(a).
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`If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be
`notified to resume the appeal. See TMEP §715.04(a).
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`If applicant has not filed an appeal and time remains in the six-month response period, applicant has
`the remainder of that time to (1) file another request for reconsideration that complies with and/or
`overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to
`the Board. TMEP §715.03(a)(ii)(B). Filing a request for reconsideration does not stay or extend the time
`for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §715.03(c).
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`/Rachel E. Desjardins/
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`Examining Attorney
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`Trademark Law Office 123
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`Phone: (571) 270-0104
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`Email: Rachel.Desjardins@USPTO.gov
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`(Informal communications only – Do not
`respond to Office action via email.)
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