STRICT DEADLINE TO RESPOND TO THIS LETTER

INTERNATIONAL REGISTRATION NO. 1257819

STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.

In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SUMMARY OF ISSUES

Partial 2(d) Refusal to Register – Likelihood of Confusion as to Classes 38 and 41
Amendments to Identification of Goods and Services Required
Explanation of Mark’s Significance Required
Disclaimer Required

PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

THIS PARTIAL REFUSAL APPLIES TO CLASSES 38 AND 41 ONLY

Registration of the applied-for mark, “MARSHALL GATEWAY”, is refused as to the services listed in International Classes 38 and 41 because of a likelihood of confusion with the marks in U.S. Registration Nos. 2677571, “MARSHALL UNIVERSITY”, 3819021, “THE MARSHALL PLANET”, and 4022570, “MARSHALLS”. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations attached as Exhibits 1-3.

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the services, and similarity of the trade channels of the services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

COMPARISON OF THE MARKS

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

In this case, the applied-for mark is “MARSHALL GATEWAY” in standard character form, and the registered marks are “MARSHALL UNIVERSITY” in a typed drawing (RN. 2677571), “THE MARSHALL PLANET” (RN. 3819021) in standard character form, and “MARSHALLS” in standard character form (RN. 4022570). The applied-for mark is confusingly similar to the registered marks in that it also contains the word “MARSHALL”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

Moreover, “MARSHALL” is the dominant feature of each of the marks. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). On the other hand, disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii).

“MARSHALL” is the dominant feature in the applied-for mark because it is the first word and “GATEWAY” is descriptive of applicant’s services. See infra. Matter that is descriptive of or generic for a party’s services is typically less significant or less dominant in relation to other wording in a mark. See In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009). Thus, the word “GATEWAY” is less significant in terms of affecting the applied-for mark’s commercial impression, and renders the wording “MARSHALL” the more dominant element of the mark. The commercial impression created by the applied-for mark and each of the cited registered marks is that of a surname and/or “a military officer of highest rank.” See Exhibits 4-5.

“MARSHALL” is also the dominant feature of “MARSHALL UNIVERSITY” (RN. 2677571) because it is the first word in the mark and the word “UNIVERSITY was disclaimed due to its highly descriptive or generic nature, thereby rendering that word less significant.

With respect to “THE MARSHALL PLANET” (RN. 3819021), “MARSHALL” is the dominant feature because it is the first source-indicating word. When comparing similar marks, the Trademark Trial and Appeal Board has found that inclusion of the term “the” at the beginning of one of the marks will generally not affect or otherwise diminish the overall similarity between the marks. See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE “virtually identical” marks; “[t]he addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.”); In re Narwood Prods. Inc., 223 USPQ 1034, 1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC-MAKERS “virtually identical” marks; the inclusion of the definite article “the” is “insignificant in determining likelihood of confusion”).

The applied-for mark is also similar to the registered mark “MARSHALLS” (RN. 4022570) because neither the addition of “GATEWAY” to the applied-for mark nor its spelling or singular form diminishes the similarity of the marks in terms of commercial impression. 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 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. An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar. Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark); In re Pix of Am., Inc., 225 USPQ 691, 692 (TTAB 1985) (noting that the pluralization of NEWPORT is “almost totally insignificant” in terms of likelihood of confusion among purchasers); In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962) (finding no material difference between the singular and plural forms of RED DEVIL)).

In sum, the applied-for mark is confusingly similar to the registered marks because “MARSHALL” is the first word / dominant feature of each mark. When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the services offered under the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049, (TTAB 2014); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); TMEP §1207.01(b).

COMPARISON OF THE SERVICES

The services of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). The respective services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

Moreover, with respect to applicant’s and registrants’ services, the question of likelihood of confusion is determined based on the description of the services stated in the application and registrations at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). Absent restrictions in an application and/or registrations, the identified services 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)). Additionally, unrestricted and broad identifications are presumed to encompass all services of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).

Applicant’s services and the services in U.S. Registration No. 3819021

Applicant’s services in Class 38 are related to the Class 38 services identified in U.S. Registration No. 3819021 (“THE MARSHALL PLANET”). Applicant identifies its services as “[d]ata transmission and data broadcasting; access to content, websites and portals; audio broadcasting; broadcasting of video and audio programming over the internet; broadcasting services; communication services for the electronic transmission of data; data streaming; data transmission services; delivery of digital music by telecommunications; digital transmission services; electronic transmission of data; transfer of data by telecommunications; transmission of data by audio-visual apparatus”. (Emphasis added). The identification of services in U.S. Registration No. 3819021, is “[p]roviding online chat rooms and electronic bulletin boards for registered users for transmission of messages concerning authoring, editing, writing, publishing, production, distribution, critiquing literature selling original works of authorship, virtual community, social networking, file sharing, and transmission of text files, advertising and information distribution services, virtual community, social networking, file sharing and transmission of text files, advertising and distribution services; providing email and instant messaging services”. (Emphasis added).

The identification set forth in the application with respect to “data transmission services” has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these services travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application use broad wording to describe the services and this wording is presumed to encompass all services of the type described, including those in registrant’s more narrow identification. Specifically, applicant’s “data transmission services” is broad enough to include the registrant’s “transmission of text files” and “providing email and instant messaging services.” Therefore, the services of the applicant and registrant are related.

Applicant’s services and the services in U.S. Registration Nos. 2677571 and 4022570

Applicant’s services in Class 41 are related to the Class 41 services identified in U.S. Registration No. 2677571 (“MARSHALL UNIVERSITY”) and in U.S. Registration No. 4022570 (“MARSHALLS”). Applicant’s services are identified as “[p]roviding of tutorial sessions in relation to reproducing sound; arranging of music demonstrations for entertainment purposes; arranging of musical entertainment; audio entertainment services; musical entertainment provided via the internet; musical entertainment services; providing on-line music, not downloadable; provision of entertainment information relating to electrical and electronic audio apparatus and instruments; provision of musical entertainment; arranging of demonstrations for sound and amplifying information purposes” in Class 41. (Emphasis added). The services in U.S. Registration No. 2677571 (“MARSHALL UNIVERSITY”) are identified as “education and entertainment services, namely, providing courses of instruction at the university level; educational research; arranging and conducting athletic events and tournaments, educational and entertainment exhibitions, educational conferences, live performances and festivals”. (Emphasis added). The services in U.S. Registration No. 4022570 (“MARSHALLS”) are identified as “Entertainment services, namely, conducting contests”. The application use broad wording to describe the services and this wording is presumed to encompass all services of the type described, including those in registrants’ more narrow identifications. Specifically, the applicant’s “arranging of musical entertainment” is broad enough to include the “arranging and conducting . . . live performances and festivals” and “entertainment services, namely, conducting contests.” Moreover, the identification set forth in the application and registrations have no restrictions as to nature, channels of trade, or classes of purchasers. Therefore, it is presumed that these services travel in all normal channels of trade, and are available to the same class of purchasers. In sum, the services of the applicant and registration are related.

Based on the foregoing, the proposed mark is refused registration as to International Classes 38 and 41 pursuant to Trademark Act Section 2(d) because potential consumers would likely be confused as to the source of the applicant’s services.

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

IDENTIFICATION OF GOODS AND SERVICES

The identifications of goods and services are indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods and specify the nature of the services as well as their main purpose and their field of use or channels of trade. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses and/or describe the nature of the services as well as their main purpose, channels of trade, and the intended consumers.

Applicant may adopt the following identifications, if accurate. Suggested changes are underlined and in bold while items the applicant must specify are simply bolded.

Class 9: Electrical and electronic apparatus and instruments, namely {specify the common commercial names of the goods in Class 9, e.g., audio recorders, audio mixers}, all for audio amplification, for the graphic equalisation of sound signal frequencies, for mixing sound tones, altering sound tones, or effecting echo, delay and other effects; sound amplifiers; amplifiers for sound reproducing equipment and for use with musical instruments; amplifiers sold together as a unit with loudspeakers and cabinets; valve sound amplifiers and digital guitar amplifiers; electronic sound reverberation units; electronic sound mixing, processing and synthesizing apparatus; sound mixers; sound-mixer units; microphones, headphones; loudspeakers; horn-type audio speakers, loudspeaker cabinets; cases for loudspeakers; foot pedals and foot switches specially designed for use with sound amplifiers for processing, amplifying or distorting sound; electronic docking stations; stereo amplifier and stand adapted for stereo audio speakers; computer software for recording sound; computer software for editing sound; computer software for playing sound; computer software for {specify the function of the software} electronic musical instruments; computer software for {specify the function of the software} audio amplification; computer programs for designing musical notation; computer software for creating musical notation; electronic stereo tuners; amplifier tuners; computer software for tuning instruments; remote control apparatus for {specify the particular devices being controlled e.g., radios, televisions, stereos}, all for audio amplification, for the graphic equalisation of sound signal frequencies, for mixing sound tones, altering sound tones, or effecting echo, delay and other effects; electrical and electronic apparatus for controlling amplifiers; computer software for controlling amplifiers; computer application software for sound recording, manipulating, amplifying, reproducing and transmitting apparatus; computer software for sound recording, manipulating, amplifying, reproducing and transmitting apparatus; audio processing apparatus, namely, {specify the common commercial names of the goods in Class 9, e.g., limiters and compressors}; audio speakers; speakers in the nature of audio equipment; computer software to control and improve audio equipment and sound quality; audio playback software; apparatus for the processing of sound, namely, {specify the common commercial names of the goods in Class 9, e.g., limiters and compressors}; downloadable fittings for the aforesaid goods, namely, {specify particular fittings in Class 9 by their common commercial names}

Class 15: Foot switches and effects pedals for use with electrical musical instruments; sustain pedals, expression pedals, delay pedals, all being electronic effects pedals for use with musical instruments

Class 38: Data transmission and data broadcasting; providing access to online content, websites and portals; audio broadcasting; broadcasting of video and audio programming over the internet; internet broadcasting services; communication services, namely, the electronic transmission of data among users of computers; data streaming; data transmission services via telecommunication means; delivery of digital music by electronic transmission; digital transmission services, namely, {insert specific service, e.g., information transmission services via digital networks}; electronic transmission of data; transfer of data by telecommunications; transmission of data by audio-visual apparatus, namely, {specify the common commercial names of the goods}

Class 41: Educational services, namely, providing of tutorial sessions in the field of reproducing sound; arranging social entertainment events, namely, music demonstrations for entertainment purposes; arranging of musical entertainment, namely, {insert specific type of musical entertainment, e.g., exhibitions for musical entertainment}; audio entertainment services in the nature of {specify the type of audio entertainment services, e.g., live audio performances by an actor}; musical entertainment, namely, providing an Internet portal in the field of music; musical entertainment services in the nature of {specify the type of musical entertainment services, e.g., presenting live musical performances}; providing on-line music, not downloadable; provision of entertainment information relating to electrical and electronic audio apparatus and instruments; provision of musical entertainment information; providing educational demonstrations in the field of sound and amplification

An applicant may only amend an identification to clarify or limit the goods and services, but not to add to or broaden the scope of the goods and services. 37 C.F.R. §2.71(a); see TMEP §1904.02(c)(iv). In an application filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends an identification to a class other than that assigned by the International Bureau, the amendment will not be accepted because it will exceed the scope and those goods and services will no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).

In addition, in a Section 66(a) application, an applicant may not change the classification of goods and services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and services from one existing international class to another. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.uspto.gov/netahtml/tidm.html. See TMEP §1402.04.

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

Applicant must specify whether the wording “MARSHALL” and “GATEWAY” have any significance in the relevant trade or industry or as applied to the goods and services described in the application, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814.

Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

DISCLAIMER REQUIRED FOR SPECIFIED SERVICES IN INTERNATIONAL CLASS 38

Applicant must disclaim the wording “GATEWAY” because it merely describes a purpose and function of applicant’s services in International Class 38, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).

Applicant’s services in Class 38 include “access to content, websites and portals.” The attached evidence from the American Heritage Dictionary shows that the word “gateway” is defined as “something that serves as an entrance or means of access.” See Exhibit 6. Therefore, the wording “GATEWAY” in the mark merely describes a purpose of applicant’s services.

An applicant may not claim exclusive rights to terms that others may need to use to describe their services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

Applicant should submit a disclaimer in the following standardized format:

No claim is made to the exclusive right to use “GATEWAY” apart from the mark as shown.

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.uspto.gov/trademarks/law/disclaimer.jsp.

RESPONSE GUIDELINES

For this application to proceed toward registration, applicant must explicitly address the refusal and requirements raised in this Office action. Applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice. For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm, an attorney referral service of a state or local bar association, or a local telephone directory. The USPTO may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal and requirements in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).

In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.

DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.uspto.gov/trademarks/teas/correspondence.jsp.

/Jacquelyn A. Jones/

Jacquelyn A. Jones

Law Office 120

(571) 272-4432

jacquelyn.jones@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.