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. 79276500
Mark: ONLYFANS
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Correspondence Address:
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Applicant: Fenix International Limited
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1509110
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying 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) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Applicant’s mark ONLYFANS is confusingly similar to the cited registrations, FANS ONLY, ONLYFANS and ONLYFANS.COM.
FANS ONLY (U.S. Registration No. 2320066)
Applicant’s mark ONLYFANS is highly similar to the cited registration FANS ONLY.
Because the marks share the same terms ONLY and FANS respectively, the overall commercial impression created by the marks is highly similar such that consumer confusion is likely.
ONLYFANS (U.S. Registration No. 5769267) & ONLYFANS.COM (U.S. Registration No. 5769268)
Applicant’s mark ONLYFANS is virtually identical to one of the cited registrations and highly similar to the other registration. All three marks share the same terms ONLYFANS. This is the sole wording in applicant’s mark and one of the cited registrations.
The remainder wording in one of the cited registrations is the term “.COM”. The non-source-identifying generic top-level domain (gTLD) “.com” merely indicates an Internet address for use by commercial, for-profit organizations. See, e.g., In re 1800Mattress.com IP LLC, 586 F.3d 1359, 1364, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009); In re Hotels.com, L.P., 573 F.3d 1300, 1301, 1304, 91 USPQ2d 1532, 1533, 1535 (Fed. Cir. 2009); In re Oppedahl & Larsen LLP, 373 F.3d 1171, 1175-77, 71 USPQ2d 1370, 1373-74 (Fed. Cir. 2004); see also TMEP §§1209.03(m), 1215.01. Because this portion is non-source identifying, it is less significant in creating a commercial impression.
Because the marks are near identical in appearance, create an identical or highly similar sound when spoken aloud and connote the same commercial impression, consumer confusion is likely.
In addition, both of the cited registrations are in standard character form and therefore can be displayed in any stylization or design features. As such, applicant’s stylization and design features do not obviate the likelihood of confusion. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Thus, applicant’s mark and the marks in the cited registrations are confusingly similar.
Comparison of the Goods and/or Services
Applicant’s goods and/or services are as follows:
International Class 9: Downloadable computer software for enabling transmission of photographs; computer software for the collection, organizing, transmission, storage and sharing of data and information; computer software which facilitates online services for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management; computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; computer software platforms
International Class 35: Online subscription services for the purpose of allowing individuals to subscribe and access content uploaded by members of the service for sporting, fitness and entertainment purposes
International Class 38: Telecommunications; providing access to interactive communication services (blogs); providing Internet chatrooms; telecommunications services, namely, electronic transmission of data, messages, graphics, images and information; peer-to-peer photo sharing services, namely, electronic transmission of digital photo files among internet users; providing access to computer, electronic and online databases; providing online forums for communication on topics of user interest; providing online chat rooms and electronic bulletin boards; broadcasting services over computer or other communication networks namely, uploading, posting, displaying, tagging, and electronically transmitting data, information, messages, graphics, and images; photo sharing and data sharing services, namely, electronic transmission of digital photo files, videos, audio visual content and data among internet and mobile device users; electronic exchange of messages via chat lines, chatrooms and Internet forums; video-on-demand transmission services; video broadcasting; providing access to a web site that gives users the ability to upload photographs
International Class 41: Providing entertainment services, namely, providing entertainment services featuring non-downloadable video, photographs, images, audio, and text through a website and via a global computer network; providing entertainment services in the fields of social and community interest groups, specifically sporting, fitness and entertainment community interest groups through computers or electronic and online databases; publication of electronic journals and web logs featuring user generated or specified content in relation to sporting, fitness and entertainment purposes; electronic publishing services for others
International Class 42: Technical support services, namely, providing help desk services in the field of computer software, namely, providing users with instructions and advice on the use of downloadable computer software, provided online and via e-mail; computer services, namely, providing an interactive website featuring technology that allows users to manage their online photograph and social networking accounts; online providing of non-downloadable software for displaying and sharing user location data, photographs and images, and for searching for and locating other users and places and interacting therewith; providing online non-downloadable software for displaying and sharing user location data, photographs and images, and for searching for and locating other users and places and interacting therewith; updating of Internet pages; software design services; design of computer systems; installation and maintenance of software for Internet access; rental and maintenance of memory space for websites, for others (hosting); providing or rental of electronic memory space on the Internet (web space)
The services in the cited registrations are as follows:
FANS ONLY (U.S. Registration No. 2320066)
In addition, “Providing entertainment services, namely, providing entertainment services featuring non-downloadable video, photographs, images, audio, and text through a website and via a global computer network” and “providing entertainment services in the fields of social and community interest groups, specifically sporting, fitness and entertainment community interest groups through computers or electronic and online databases” is broadly worded and presumably encompasses all services of the type described, including registrant’s more narrow “providing athletic information by computer by means of a global computer network”. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Thus, applicant’s and registrant’s goods and/or services are related.
ONLYFANS (U.S. Registration No. 5769267) & ONLYFANS.COM (U.S. Registration No. 5769268)
Determining likelihood of confusion is based on the description of the goods and/or 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)).
Applicant’s services “Online subscription services for the purpose of allowing individuals to subscribe and access content uploaded by members of the service for sporting, fitness and entertainment purposes” is highly similar to the cited registrations services “Arranging subscriptions of the online publications of others”.
In this case, the application use(s) broad wording to describe “online subscription services”, which presumably encompasses all services of the type described, including registrant’s more narrow “Arranging subscriptions of the online publications of others”. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the services of the parties 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)). Thus, applicant’s and registrant’s services are related.
In total, the marks create the same commercial impression and the evidence shows that the goods and/or services are commercially related and likely to be encountered together in the marketplace by consumers. Upon encountering applicant’s mark and the registered marks, consumers are likely to be confused and mistakenly believe that the respective goods and/or services emanate from a common source. Therefore, registration must be refused based upon Trademark Act Section 2(d).
IDENTIFICATION OF GOODS AND/OR SERVICES REQUIRES AMENDMENT
The wording indicated below in the identification of goods and/or services are indefinite and too broad. This wording must be clarified because it is not clear what the goods and/or services are and could identify goods and/or services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). Specifically, applicant must specify the type of software as downloadable or recorded and indicate the function of the software in International Class 9, and applicant must specify the services being provided by common commercial name in the services being provided as suggested below.
Therefore, applicant must remove the parentheses 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 in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, although the goods and/or services may be classified in several international classes, any modification to this wording must identify goods and/or services in the class(es) specified in the application for these goods and/or services. See TMEP §1904.02(c), (c)(ii).
Applicant may adopt the following wording, if accurate (suggestions in bold):
International Class 9: Downloadable computer software for enabling transmission of photographs; {specify, e.g., downloadable} computer software for the collection, organizing, transmission, storage and sharing of data and information; {specify, e.g., downloadable} computer software which facilitates online {specify type of services, e.g., access} services for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management; {specify, e.g., downloadable} computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; {specify, e.g., downloadable} computer software platforms for {indicate function, e.g., application development and database management}
International Class 35: Online subscription services, namely, {specify services e.g., arranging subscriptions of the online publications of others} for the purpose of allowing individuals to subscribe and access content uploaded by members of the service for sporting, fitness and entertainment purposes
International Class 38: Telecommunication {specify services, e.g., telecommunication consultation}; providing access to
interactive communication blog websites on the Internet services, (blogs); providing Internet chatrooms; telecommunications services, namely, electronic transmission of
data, messages, graphics, images and information by electronic networks; peer-to-peer photo sharing services, namely, electronic transmission of digital photo files among
internet users; providing access to computer, electronic and online databases; providing online forums for communication on topics of user interest; providing online chat rooms and electronic
bulletin boards for transmission of messages among users in the field of {specify field e.g., general interest}; {specify type e.g., internet} broadcasting
services over computer or other communication networks namely, uploading, posting, displaying, tagging, and electronically transmitting data, information, messages, graphics, and images; photo
sharing and data sharing services, namely, electronic transmission of digital photo files, videos, audio visual content and data among internet and mobile device users; electronic exchange of
messages being electronic message transmission via chat lines, chatrooms and Internet forums; video-on-demand transmission services; video broadcasting; providing telecommunication internet access to a web site that gives users the ability to upload photographs
International Class 41: Providing entertainment services, namely, providing entertainment services in the nature of a website featuring non-downloadable video, photographs, images, audio, and text through a website and via a global computer network in the field of {specify field e.g., music}; providing entertainment services in the fields of social and community interest groups, specifically sporting, fitness and entertainment community interest groups through computers or electronic and online databases, namely, {specify services e.g., providing an online computer database featuring information regarding eservice and fitness}; publication of electronic journals and web logs featuring user generated or specified content in relation to sporting, fitness and entertainment purposes; electronic publishing services for others, namely, {specify e.g., publication of text and graphic works on CD, DVD, on-line} featuring {indicate specific subject matter, e.g., music}
International Class 42: Technical support services, namely, providing help desk services in the field of computer software, namely, providing users
with instructions and advice on the use of downloadable computer software, provided online and via e-mail; computer services, namely, providing an interactive website featuring technology that allows
users to manage their online photograph and social networking accounts; online providing of non-downloadable software for displaying and sharing user location data, photographs and images, and for
searching for and locating other users and places and interacting therewith; providing online non-downloadable software for displaying and sharing user location data, photographs and images, and for
searching for and locating other users and places and interacting therewith; updating of Internet webpages for others; software design services; design of
computer systems; installation and maintenance of computer software for Internet access; rental and maintenance of server memory space and
server hosting for websites, for others(hosting); providing or rental of electronic server memory space on the Internet (web
space)
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.
COLOR DRAWING – NO COLOR CLAIM OR MARK DESCRIPTION
To clarify whether color is claimed as a feature of the mark, applicant must satisfy one of the following:
(1) If color is not a feature of the mark, applicant must submit (a) a new black-and-white drawing of the mark to replace the color drawing in the record, (b) a statement that no claim of color is made in the international registration, and (c) a description of the literal and design elements in the mark omitting any reference to color. 37 C.F.R. §2.37; TMEP §§807.07(b), 807.12(c); see TMEP §§808 et seq.
The following description is suggested, if accurate:
The mark consists of the stylized wording “ONLYFANS” with a lock design within the letter “O”.
(2) If color is a feature of the mark, applicant must submit a statement (a) listing all the colors claimed as a feature of the mark and (b) describing where the colors appear in the literal and design elements in the mark. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(b), 807.12(c). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must include a statement indicating that in the description. See TMEP §807.07(d), (d)(iii).
The following color claim and description are suggested, if accurate:
Color claim: “The colors black and blue are claimed as a feature of the mark.”
Description: “The mark consists of the wording “ONLYFANS” with the word portion “ONLY” in black and the word portion “FANS” in blue. Within the letter “O” is a blue lock design. The color white in the mark is background only and is not being claimed as a feature of the mark.
ENTITY CLARIFICATION REQUIREMENT
Acceptable legal entities include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent. See TMEP §§803.03 et seq. If applicant’s legal entity is an individual, applicant must so specify and provide his or her national citizenship. TMEP §803.03(a). If applicant is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must so specify and provide the foreign country under whose laws applicant is organized or incorporated. TMEP §803.03(b)-(c). For an association, applicant must also specify whether the association is incorporated or unincorporated, unless the foreign country and the designation or description “association/associazione” appear in Appendix D of the Trademark Manual of Examining Procedure (TMEP). TMEP §803.03(c). If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located. See TMEP §803.04.
To provide this entity information using the Trademark Electronic Application System (TEAS) Response to Office Action form, applicant must open the response form, answer “Yes” to wizard question number 5, find the “Owner Information” page, and do the following: (1) locate the “Entity Type” heading on that page and select “Other;” (2) locate the “Specify Entity Type” heading and select “Other” under the Foreign Entity option, and enter in the free-text field below both applicant’s entity type and the foreign province or geographical region of its organization (e.g., partnership of Victoria); and (3) locate the “State or Country Where Legally Organized” heading and select the appropriate foreign country (e.g., Australia) under the Non-U.S. Entity option.
U.S. COUNSEL REQUIREMENT
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
How to respond. Click to file a response to this nonfinal Office action.
/Krystina Osgood/
Examining Attorney
Law Office 121
U.S. Patent and Trademark Office
(571) 272-8403
Krystina.Osgood@uspto.gov
RESPONSE GUIDANCE