UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 12/23/2011

 

THIS IS A FINAL ACTION.

 

This letter is in response to Applicant’s communication filed on November 30, 2011.

 

The Applicant has (1) argued against the Section 2(d) refusal, and (2) amended the identification of services.  The examining attorney has considered the Applicant’s arguments against the Section 2(d) refusal as well amendment of the identification of services, but has found both to be unacceptable and unpersuasive.  For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 3526812 and 3854790 .  See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).  In addition, the following requirement is now made FINAL:  The applicant’s identification of services.  See37 C.F.R. §2.64(a).

 

 

THIS PARTIAL FINAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark was refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3526812 and 3854790.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

As stated in the initial Office Action, Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 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 of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.

 

Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361-62, 177 USPQ 563, 567 (C.C.P.A. 1973); In re 1st USA Realty Prof’ls Inc., 84 USPQ2d 1581, 1584 (TTAB 2007); see also In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).  The marks are compared for similarities in their appearance, sound, connotation and commercial impression.  TMEP §§1207.01, 1207.01(b).  The goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).

 

As stated in the initial Office Action, the overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).

 

 

COMPARISON OF MARKS 

 

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation, and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).  Similarity in any one of these elements may be sufficient to find the marks confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).

 

The applicant’s mark is HEALTH PLANET with a circle design element and the registered marks are (1) HAPPY PEOPLE, HEALTHY PLANET  (Reg. No. 3526812) and (2) HEALTHY PLANET FUNDRAISING • MOTHER NATURE'S PARTNER, with a design element that consists of a circle containing a globe with Asia centered shown between two hands, as well as a disclaimer of the term “FUNDRAISING” (Reg. No. 3854790).  The marks are compared in their entireties under a Trademark Act Section 2(d) analysis.  See TMEP §1207.01(b).  Nevertheless, 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 the marks are confusingly similar.  See In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); TMEP §1207.01(b)(viii), (c)(ii). As stated in the initial Office Action, in this particular case, the wording “HEALTHY PLANET” is the dominant portion of all three marks, and also conveys the commercial impression of all three marks. 

 

As stated in the initial Office Action, although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression.  Disclaimed matter 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 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Thus, the addition of the term “FUNDRAISING” does not obviate the likelihood of confusion analysis in this particular case.  Furthermore, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services; therefore, the word portion is normally accorded greater weight in determining whether marks are confusingly similar.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); TMEP §1207.01(c)(ii); see CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011).

 

The applicant makes no arguments regarding the similarity of the marks. 

 

 

COMPARISON OF GOODS/SERVICES 

 

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient to show that because of the conditions surrounding their marketing, or because they are otherwise related in some manner, the goods and/or services would be encountered by the same consumers under circumstances such that offering the goods and/or services under confusingly similar marks would lead to the mistaken belief that they come from, or are in some way associated with, the same source.  In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); TMEP §1207.01(a)(i).

 

The applicant’s services are “charitable services, namely organizing and conducting volunteer programs and community service projects”; “financial sponsorship of events which encourage greener, healthier, or more sustainable activities”, and “providing environmental resources, educational tools and fundraising materials to schools” and the registered services are (1) “Business consultation services for others in the fields of sustainability, human resources, community, sustainability process training, supply chain development, procurement, operations, manufacturing, transportation, distribution, product development, packaging development, technical innovations, the environment, environmental compliance, environmental mitigation, waste disposal, environmental engineering, energy conservation, implementing operational business changes; consulting services in the area of sustainable business solutions; human resources consultation; business consulting services in the field of marketing; consultancy services regarding business strategy development; advertising consultation; advertising and promotion services and related consultation; creative marketing design services; advertising and marketing; advice in the field of business management and marketing; business management consulting with relation to strategy, marketing, production, personnel and retail sale matters; business marketing consulting services; development of marketing strategies and concepts; marketing consulting; development of marketing campaigns for others, namely, development of promotional campaigns for businesses; advertising services, namely, the promotion of the goods of others through the development of product promotion kits; designing of advertising and marketing publications for others” and “Educational services, namely, conducting classes, seminars, conferences, workshops, meetings and retreats in the fields of sustainability, human resources, community and the environment and the distribution of printed material associated with the same; educational services, namely, conducting classes, seminars, conferences, workshops, meetings and retreats to promote the benefits of sustainability, human resources, community and the environment and the distribution of printed material associated with the same; training services in the fields of sustainability, human resources, community and the environment and the distribution of printed material associated with the same; training services regarding the benefits of sustainability, human resources, community and the environment and the distribution of printed material associated with the same; production of video recordings for others” (Reg. No. 3526812) and (2) “Fund raising services, namely, sharing profits from the sale of socially responsible products with not-for-profit organizations, schools, and civic groups” (Reg. No. 3854790).   As stated in the initial Office Action, the services are related because the applicant’s recitation encompasses services of the same sort as those offered by the registrants. All of the cited services in the applicant’s mark pertain to charitable service in the manner of financial sponsorship or the providing of resources with respect to community service or environmental awareness, as does the cited language in the registrant’s identification.  Further, the conditions surrounding the marketing of the services may be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the services come from a common source.

 

 

The applicant makes no arguments regarding the similarity of services, save for the amendments to the recitation of services.  However, the amendments made by the applicant do not obviate the likelihood of confusion with respect to the similarity of the services. 

 

 

This refusal is now made FINAL.

 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Applicant must respond to the final requirement(s) set forth below.

 

 

IDENTIFICATION OF SERVICES

 

 

The identification of services in Classes 35, 41, and 42 is unacceptable because much of the wording n the recitations must be further clarified because it is too broad.  See TMEP §§1402.01, 1402.03.  The applicant must specify the incentives for the administration of a customer loyalty program, and in addition, the business management of a carbon offset program would be classified in Class 35.  The service of “organizing exhibitions for entertainment, cultural, and sporting purposes” is classified in Class 41, as is the service of “arranging and conducting social entertainment events”.   The service of “home energy assessment services for the purpose of determining energy efficiency or usage management” is classified in Class 35, and the commercial service of “Consulting services in the field of energy efficiency for commercial and institutional facilities” is also classified in Class 35.   Suggestions in bold are incorporated into the identification proposed below.  The Applicant may substitute the following wording, if accurate:

 

 

Administration of a customer loyalty program which provides ____________(specify methods or incentives) to promote environmental conservation, environmental protection, environmental education, reduction in levels of carbon dioxide and/or other greenhouse gases in the atmosphere and related issues; collection and compilation of information into computer databases in the field of environmental matters; brokerage of carbon dioxide and other greenhouse gas emission credits, allowances or offsets on behalf of offset producers; compilation of information into computer databases; charitable services, namely organizing and conducting volunteer programs and community service projects; Home energy assessment services for the purpose of determining energy efficiency or usage management; Consulting services in the field of energy efficiency for commercial and institutional facilities; business management of carbon offset programs.   IC 35 

 

 

Online journals, namely, blogs on environmental matters; providing environmental resources, educational tools and fundraising materials to schools; organizing exhibitions for entertainment, cultural, and sporting purposes; arranging and conducting social entertainment events.  IC 41

 

 

Measurement and verification of carbon dioxide and other greenhouse gas emission offsets; providing scientific information, advice and consultancy in relation to carbon offsetting, water offset, and land offset; surveying services.  IC 42 

 

 

See TMEP §§1402.01, 1402.03.

 

 

If applicant adopts the suggested amendment of the goods, then applicant must amend the classification to the appropriate International Classes, and/or amend to add additional classes.  37 C.F.R. Sections 2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.

 

 

 

Although identifications of goods may be amended to clarify or limit the goods/services, adding to or broadening the scope of the goods/services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods/services set forth in the present identification. 

 

In the identification, the applicant must use the common commercial names for the goods and/or services, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).  Moreover, the identification of goods must also be specific and all-inclusive; therefore, applicant should refrain from using such terms such as “including” or “and the like” and replace this wording with "namely" followed by the good and/or services listed by their common commercial names. 

 

Periodically the Office revises its international classification system and the policy regarding acceptable identifications of goods and services.  Identifications are examined in accordance with Rules of Practice and Office policies and procedures in effect on the application filing date.  TMEP §1402.14.  However, an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed. 

 

Descriptions of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined.  See TMEP §§702.03(a)(iv), 1402.14.

 

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.  See TMEP §1402.04.

 

This requirement is now made FINAL.

 

 

PROPER RESPONSE TO FINAL OFFICE ACTION

 

 

If applicant does not respond within six months of the date of issuance of this final Office action, the following services to which the final refusal and requirement apply will be deleted from the application by Examiner’s Amendment:  “charitable services, namely organizing and conducting volunteer programs and community service projects”; “financial sponsorship of events which encourage greener, healthier, or more sustainable activities”, and “providing environmental resources, educational tools and fundraising materials to schools”, “administration of a customer loyalty program to promote environmental conservation, environmental protection, environmental education, reduction in levels of carbon dioxide and/or other greenhouse gases in the atmosphere and related issues”, “providing a website for users to search databases to find specific geographical locations within certain areas”, “organizing entertainment, cultural, sporting, social or recreational events”, “management of carbon offset programs; inspection of buildings for energy efficiency; surveying services; inspection of buildings”. 

 

The application will then proceed for the remaining services.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final Office action by:

 

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)  Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

 

/Sanjeev K. Vohra/

Trademark Examining Attorney

Law Office 110

571.272.5885 -  Work

571.273.5885 - Fax

sanjeev.vohra@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 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 12/23/2011 FOR

SERIAL NO. 85264707

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 12/23/2011 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.