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. 79187268
MARK: BRIGHT SIDE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: AdMe Trademarks Ltd
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1298661
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.gov.uspto.report/. 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.
· Prior Pending Application
· Refusal under Section 2(d) – Likelihood of Confusion (Partial)
· Identification of Goods and Services – Partially Indefinite
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 1484703, 3911000, 4121486, 4651879, and 4341055. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or 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.
Facts
Applicant
Applicant’s mark is BRIGHT SIDE for, in relevant part, “Entertainment; organization of exhibitions for cultural or educational purposes; arranging and conducting of seminars; arranging and conducting of conferences; practical training demonstration,” and “retail and wholesale services.”
U.S. Registration No. 1484703
Registrant’s mark is BRIGHT SIDE for “presentation, namely live talks, lectures, workshops and session series concerning lifestyle enrichment for the positive self” in International Class 41.
U.S. Registration No. 3911000
Registrant’s mark is BRIGHTSIDE BOUTIQUE for “Retail store services featuring women's clothing, fashion accessories, and cosmetics” in International Class 35.
U.S. Registration Nos. 4121486, 4651879
Registrant’s marks are BRIGHT SIDE MARKET for “Gift and sundries retail store services located in hotels” and “Gift and sundries retail store services located in hotels; Retail store services located in hotels featuring snacks, beverages, quick meals, frozen foods, sundries, personal care and electronic items” in International Class 35.
U.S. Registration No. 4341055
Registrant’s mark is BRIGHTSIDE ACADEMY EARLY EDUCATION AND CHILD CARE for, in relevant part, “Education services in the nature of early childhood instruction.”
Similarity of the Marks
When considering the similarity of the marks for purposes of a likelihood of confusion determination, 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 the present case, applicant’s mark BRIGHT SIDE is similar to the registered marks in sound, appearance, and meaning. Each mark contains the wording BRIGHT SIDE. Although applicant’s mark is presented as two words, and the marks BRIGHTSIDE BOUTIQUE and BRIGHTSIDE ACADEMY EARLY EDUCATION AND CHILD CARE show the wording BRIGHTSIDE as a compound word, the wording (BRIGHTSIDE or BRIGHT SIDE) are identical in sound and virtually identical in appearance, and are thus confusingly similar for the purposes of determining likelihood of confusion. See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal citation omitted].”); In re Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”); Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar. The word marks are phonetically identical and visually almost identical.”).
Further, 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). Disclaimed matter that is descriptive of or generic for a party’s goods and/or 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). Here, the wording BOUTIQUE, MARKET, and ACADEMY EARLY EDUCATION AND CHILD CARE has been disclaimed apart from the respective marks, rendering the wording BRIGHTSIDE or BRIGHT SIDE the more dominant, source-indicating element of the mark.
Therefore, when considering the overall commercial impression created by the marks, the marks are confusingly similar for likelihood of confusion purposes.
Relatedness of Services
Absent restrictions in an application and/or registration, the identified goods and/or 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 goods and/or 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).
U.S. Registration Nos. 1484703 and 4341055
In this case, the identification set forth in the application and registrations 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 uses broad wording to describe the services, namely, “Entertainment; organization of exhibitions for cultural or educational purposes; arranging and conducting of seminars; arranging and conducting of conferences; practical training demonstration,” and this wording is presumed to encompass all services of the type described, including those in registrants’s more narrow identifications, namely, “presentation, namely live talks, lectures, workshops and session series concerning lifestyle enrichment for the positive self” and “Education services in the nature of early childhood instruction”. Thus, these services are legally identical for likelihood of confusion purposes.
U.S. Registration Nos. 3911000, 4121486, and 4651879
In this case, the identification set forth in the application and registrations 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 uses broad wording to describe the services, namely, “retail and wholesale services,” and this wording is presumed to encompass all services of the type described, including those in registrants’s more narrow identifications, namely, “Retail store services featuring women's clothing, fashion accessories, and cosmetics,” “Gift and sundries retail store services located in hotels” and “Retail store services located in hotels featuring snacks, beverages, quick meals, frozen foods, sundries, personal care and electronic items.” Thus, these services are legally identical for likelihood of confusion purposes.
Accordingly, the relevant services are related for likelihood of confusion purposes.
Conclusion
In conclusion, the marks are similar and the services are legally identical in relevant part. Therefore, a likelihood of confusion as to the source of the goods and/or services exists, and registration must be refused under Section 2(d) of the Lanham Act.
Applicant must respond to the requirements set forth below.
IDENTIFICATION OF GOODS AND SERVICES
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
Further, applicant must specify the purpose or function of the software, and if content- or field-specific, the content or field of use of the software. TMEP §1402.03(d). The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau of the World Intellectual Property Organization (International Bureau) in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, any modification to this wording must identify goods and/or services in the classification assigned by the International Bureau for these goods and services.
Applicant may adopt the following identification, if accurate (please note that suggested amendments are in bold italics and suggested deletions are in strikethrough):
International Class 9
“Electronic notice boards; recorded computer programmes featuring software for __{indicate function of program, e.g., database management, etc.} [programs], recorded; computer game software; computer programs
featuring software for __{indicate function of program, e.g., database management, etc.} [downloadable software]; electronic publications, downloadable, in the nature of __{indicate nature of
publication, e.g., books, magazines, etc.}; computer software applications, downloadable, for __{indicate function of program, e.g.,
database management, etc.}; downloadable image files containing __{indicate content or subject
matter}; downloadable music files; compact discs featuring __{indicate content or subject matter} [audio-video].”
International Class 35
“Advertising; on-line advertising on a computer network; rental of advertising space; computerized file management;
demonstration of goods; opinion polling; marketing studies; business information; commercial information and advice for consumers [consumer advice shop]; marketing research; layout services
for advertising purposes; marketing; business management of performing artists; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or
advertising purposes; design of advertising materials; data search in computer files for others for business purposes; provision of an on-line marketplace
for buyers and sellers of goods and services; presentation of goods on communication media, for retail purposes; sales promotion for others; production of advertising films; dissemination of
advertising matter; compilation of information into computer databases; public relations; administrative processing of purchase orders; price comparison services; procurement services for others
in the nature of purchasing goods and services for other businesses; retail and wholesale services featuring __{indicate type of goods, e.g., consumer electronics, furniture, etc.}.”
International Class 41
“Entertainment, namely, __{indicate Class 41 nature, e.g., live
musical performances, etc.}; entertainment information; recreation information; organizing and conducting of sporting and cultural events; layout services, other than for advertising purposes;
videotape editing; organization of exhibitions for cultural or educational purposes; photographic reporting; providing recreation facilities; arranging and conducting of seminars in the field of __{indicate field or subject matter}; game services provided on-line from a computer network; providing on-line electronic
publications, not downloadable, namely, __{indicate nature of publication, e.g., books, etc.} in the field of
__{indicate field or subject matter}; arranging and conducting of conferences in the field of __{indicate field or subject
matter}; arranging and conducting of concerts; organization of competitions in the field of __{indicate field, e.g., poker,
basketball, etc.} [education or entertainment]; practical training in the field of __{indicate field or subject matter}
[demonstration]; publication of texts, other than publicity texts; electronic desktop publishing; publication of electronic books and journals on-line; party planning [entertainment];
providing on-line videos, not downloadable in the field of __{indicate field or subject matter}; providing online music, not
downloadable; news reporters services.”
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. See TMEP §1402.04.
Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d).
Therefore, applicant must provide a mark description that specifies where all the colors appear in the literal and design elements in the mark. See TMEP §807.07(a)(ii). The following is suggested, if accurate:
“The colors black and yellow are claimed as a feature of the mark.”
“The mark consists of the stylized wording “BRIGHT SIDE” in black on two lines placed in a yellow square. “
RESPONSE GUIDELINES
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, 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 specified in this Office action for responding to a refusal, and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
If applicant does not respond to this Office action within six months of the date on which the USPTO sends this Office action to the International Bureau, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§711, 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(15), 2.66(b)(1).
ASSISTANCE
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help, 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.
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 U.S. commonwealths or U.S. territories. 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.gov.uspto.report/trademarks/teas/correspondence.jsp.
/Kim L. Parks/
Examining Attorney
Law Office 112
571-272-6129
kimberly.parks@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/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.gov.uspto.report/. 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.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.