UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/110962
MARK: THE FOUNDATION
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: OneCoach, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 6/20/2007
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
SECTION 2(d) – LIKELIHOOD OF CONFUSION REFUSAL
Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2828615, 2776773, 1979604, 2671169, 2671170, 2665916 and 3250491. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registrations.
The applicant’s mark is “THE FOUNDATION” in standard character for “digital materials, namely, DVDs, CDs and downloadable digital content including MP3 files featuring business advice that help entrepreneurs, businesses, self-employed individuals, professionals, home-based businesses and direct sale businesses increase revenues and profits,” “printed instructional, educational, and teaching materials in the field of helping entrepreneurs, businesses, self-employed individuals, professionals, home-based businesses and direct sale businesses increase revenues and profits;; Publications, namely, brochures, booklets, and teaching materials in the field of helping entrepreneurs, businesses, self-employed individuals, professionals, home-based businesses and direct sale businesses increase revenues and profits;; Wire-bound notebooks” and “Educational services, namely, conducting workshops, lectures, personal and group coaching, mentoring, seminars, classes, conferences, keynote lectures, internet-based learning, masterminding, trainings, courses of instructions, speeches, conferences, workshops, meetings; internet radio programs, business mastery programs, conference calls, teleseminars, networking events and groups, self-study programs, at-home learning, one on one and group consultations; a Goal Setting program, a Program on business fundamentals, live and in-person, and recorded teleconferences , Expert Interviews, Classroom Training, E-learning programs, eLearning modules downloadable to phone, PDA, MP3 players and available on DVD and in binder for playbook, live and recorded webinars, Weekly update and support calls, Help desk available to answer questions, Additional eLearning Modules, Business Conferences, correspondence courses; e-learning, mentoring; train-the-trainer programs, learning and training centers featuring instruction in the field of business advisory services that help entrepreneurs, franchisees, businesses, self-employed individuals, professionals, home-based businesses and direct sale businesses increase revenues and profits and distribution of course material in connection therewith.”
The registered marks are:
FOUNDATION with design for “raising and distributing funds for educational purposes.”
FOUNDATION in typed form for “computer education software, namely educational simulation software for use by business students that teaches business management techniques in the fields of finance, marketing, production, human resources, and research and development.”
FOUNDATION in typed form for “educational services, namely, providing on-line business simulation classes, seminars, conferences, and workshops in the field of business management techniques specifically in finance, marketing, production, human resources, and research and development, and distributing course materials in connection therewith” and “providing temporary use of on-line non-downloadable software for educational purposes that enables business students to perform simulations of business management techniques specifically in finance, marketing, production, human resources, and research and development; computer consultation in the use of computer software.”
FOUNDATION with design for “providing an on-line computer game for educational purposes” and “providing temporary use of on-line non-downloadable software that enables users to perform business management techniques in the context of imaginary fact patterns in the field of business management education.”
THE FOUNDATION with design for “compact discs featuring video and musical compositions.”
THE FOUNDATION 2 in typed form for “compact discs featuring video and musical compositions.”
THE FOUNDATION 2 with design for “compact discs featuring video and musical compositions.”
THE FOUNDATION INCUBATOR with design for “business management consultation services for philanthropic foundations; business development services, namely providing start-up support for philanthropic foundations and organizations.”
Taking into account the relevant Du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis. First, the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely. In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.
Similarity of the Marks
The marks are compared for similarities in sound, appearance, meaning or connotation. In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b).
Here, the applicant’s mark, THE FOUNDATION, is confusingly similar to the registered marks, FOUNDATION, THE FOUNDATION, FOUNDATION 2 and THE FOUNDATION INCUBATOR. Specifically, each of the marks share the common dominant feature, “FOUNDATION.” Although the marks are compared in their entireties under a Section 2(d) analysis, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); TMEP §1207.01(b)(viii). Such is the case here. Although two of the registered marks contain the additional elements, “2” and “Incubator” this does not obviate the likelihood of confusion determination. The most significant and source-identifying portion of the marks is the term, FOUNDATION because this portion is likely to be impressed upon the mind of a purchaser and used when calling for the goods or services of the applicant and registrant. According, based on the foregoing, the marks are confusingly similar under Section 2(d) of the Trademark Act.
Relatedness of the Goods and Services
Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely. In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.
If the marks of the respective parties are identical, the relationship between the goods or 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. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).
Likelihood of confusion is determined on the basis of the goods or services as they are identified in the application and the registration. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). In this case, applicant’s goods and services are highly related to and could encompass the goods and services provided by the registrant. Specifically, applicant’s “downloadable digital content….featuring business advice that help entrepreneurs, businesses, self-employed individuals, professionals, home-based businesses and direct sale businesses increase revenues and profits,” is highly related to and could encompass the registrant’s “simulation software for use by business students that teaches business management techniques in the fields of finance, marketing, production, human resources, and research and development.” Additionally, applicant’s “digital materials, namely, DVDs, CDs…featuring business advice that help entrepreneurs, businesses, self-employed individuals, professionals, home-based businesses and direct sale businesses increase revenues and profits,” could encompass the registrants’ “compact discs featuring video and musical compositions” and provision of “an on-line computer game for educational purposes.” Here the registrants’ have not provided any restrictions or limitations on the subject matter or field of the “video and musical compositions” or the “on-line computer game for educational purposes,” and thus these items could feature the applicant’s business advice. Since the identification of the registrant’s goods is very broad, it is presumed that the registration encompasses all goods of the type described, including those in the applicant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers. TMEP §1207.01(a)(iii).
Moreover, applicant’s “educational services, namely, conducting workshops, lectures, personal and group coaching, mentoring, seminars, classes, conferences, keynote lectures, internet-based learning, masterminding, trainings, courses of instructions, speeches, conferences, workshops, meetings; internet radio programs, business mastery programs, conference calls, teleseminars, networking events and groups, self-study programs, at-home learning, one on one and group consultations; a Goal Setting program, a Program on business fundamentals, live and in-person, and recorded teleconferences , Expert Interviews, Classroom Training, E-learning programs, eLearning modules downloadable to phone, PDA, MP3 players and available on DVD and in binder for playbook, live and recorded webinars, Weekly update and support calls, Help desk available to answer questions, Additional eLearning Modules, Business Conferences, correspondence courses; e-learning, mentoring; train-the-trainer programs, learning and training centers featuring instruction in the field of business advisory services that help entrepreneurs, franchisees, businesses, self-employed individuals, professionals” are identical to and could encompass the registrant’s “educational services, namely, providing on-line business simulation classes, seminars, conferences, and workshops in the field of business management techniques specifically in finance, marketing, production, human resources, and research and development, and distributing course materials in connection therewith.” Specifically, both the applicant and registrant are providing educational services offering business advice using confusingly similar marks. When purchasers encountering applicant’s service mark, THE FOUNDATION, and the registrant’s service mark, FOUNDATION, they are likely to be confused as to the source of the services by the use of confusingly similar marks.
Although applicant is not providing the registrants’ “temporary use of on-line non-downloadable software that enables users to perform business management techniques in the context of imaginary fact patterns in the field of business management education,” “temporary use of on-line non-downloadable software for educational purposes that enables business students to perform simulations of business management techniques specifically in finance, marketing, production, human resources, and research and development” and “business management consultation services for philanthropic foundations,” these services are highly related to the goods and services provided by the applicant because consumers are accustomed to encountering these goods in services in the same channels of trade marketed under similar trademarks. To demonstrate the highly related nature of these goods and services, attached are fifteen (15) copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar services as those of applicant and registrant in this case. These printouts have probative value to the extent that they serve to suggest that the goods and services provided by both the applicant and the registrants’ in this case are of a kind that may emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988). Specifically, these third-party registrations illustrate registrations with 1) the identical goods and services provided by both the applicant and registrants’ in this case and 2) also highlight the fact that businesses provide both digital materials, printed materials and educational services similar to those provided by applicant and the registrants’ temporary use of non-downloadable software and business management consultation all in the same fields, e.g., real estate, business, education, insurance, etc.
Therefore, with the contemporaneous use of confusingly similar marks, consumers are likely to reach the mistaken conclusion that the goods and services are related and originate from a common source. Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i). As such, registration must be refused under Trademark Act Section 2(d).
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirements.
The wording, “digital content” “internet radio programs,” business mastery programs,” “conference calls, teleseminars, networking events and groups, self-study programs, at-home learning, one on one and group consultations;” “a Goal Setting program, a Program on business fundamentals, live and in-person, and recorded teleconferences,” “Expert Interviews, Classroom Training, E-learning programs, eLearning modules downloadable to phone, PDA, MP3 players and available on DVD and in binder for playbook, live and recorded webinars,” “Weekly update and support calls,” “Help desk available to answer questions, Additional eLearning Modules, Business Conferences, correspondence courses; e-learning, mentoring; train-the-trainer programs,” “learning and training centers,” used to describe the applicant’s goods and services is indefinite and requires clarification. Applicant must clarify the identification of goods and services to specify the common commercial or generic name for the goods and/or services. If there is no common commercial or generic name, then applicant must describe the nature of the goods and services as well as their main purpose, channels of trade, and the intended consumer(s). TMEP §1402.01.
Recommended changes have been highlighted in bold and suggestions for amending applicant’s identification of goods and services are in brackets. Applicant may adopt the following identification of goods and services, if accurate:
International Class 009: Digital materials, namely, DVDs, CDs and downloadable digital audio files including MP3 files featuring business advice that help entrepreneurs, businesses, self-employed individuals, professionals, home-based businesses and direct sale businesses increase revenues and profits.
International Class 016: Printed instructional, educational, and teaching materials in the field of helping entrepreneurs, businesses, self-employed individuals, professionals, home-based businesses and direct sale businesses increase revenues and profits; publications, namely, brochures, booklets, and teaching materials in the field of helping entrepreneurs, businesses, self-employed individuals, professionals, home-based businesses and direct sale businesses increase revenues and profits; Wire-bound notebooks.
International Class 041: Educational services, namely, conducting workshops, lectures, personal and group coaching, mentoring, seminars, classes, conferences, keynote lectures, internet-based learning, masterminding, trainings, courses of instructions, speeches, conferences, workshops, meetings in the fields of ________ [applicant to specify the field for the education services, e.g., business advisory services that help entrepreneurs, franchisees, businesses, self-employed individuals, professionals, home-based businesses and direct sale businesses increase revenues and profits, etc.]; entertainment services, namely, providing a radio program in the field of ________ [applicant tto indicate subject matter or field] via a global computer network; educational services, namely, conducting programs in the fields of business mastery, conference calls, teleseminars, networking events and groups, self-study, at-home learning, one on one and group consultations, goal setting, business fundamentals and recorded teleconferences; educational services, namely, conducting expert Interviews, classroom training, e-learning programs, eLearning modules downloadable to phone, PDA, MP3 players and available on DVD and in binder for playbook, live and recorded web seminars in the fields of weekly update and support calls and help desk services to answer questions; educational services, namely, conducting eLearning Modules, business conferences, correspondence courses, e-learning and mentoring seminars, train-the-trainer programs in the field of business advisory services that help entrepreneurs, franchisees, businesses, self-employed individuals, professionals, home-based businesses and direct sale businesses increase revenues and profits; learning and training courses featuring instruction in the field of business advisory services that help entrepreneurs, franchisees, businesses, self-employed individuals, professionals, home-based businesses and direct sale businesses increase revenues and profits and distribution of course material in connection therewith.
TMEP §1402.01.
Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or 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.gov.uspto.report/netahtml/tidm.html.
DISCLAIMER NOT REQUIRED – APPLICANT MAY WITHDRAW DISCLAIMER OF REGISTRABLE MATTER
The application includes a disclaimer of “The.” An applicant can disclaim matter voluntarily, regardless of whether the matter is registrable. TMEP §1213.01(c). However, a disclaimer of this matter is not required. Therefore, applicant may submit a written request to withdraw this disclaimer from the application. If applicant does not expressly request withdrawal of the disclaimer, it will remain in the application.
RESPONSE GUIDELINES
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.gov.uspto.report/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).
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Charisma Hampton/
Charisma Hampton
Trademark Examining Attorney
Law Office 112
Phone: 571-270-1522
Fax: 571-270-2522
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.
