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: 7/8/2011

 

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

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

THIS PARTIAL REFUSAL APPLIES TO CLASS 41 ONLY.

 

Registration of the applied-for mark is refused in International Class 41 because of a likelihood of confusion with the marks in U.S. Registration Nos. 3758660 and 3778982.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

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 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., ___ F.3d ___, 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 and similarity of the services.  See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.

 

For the reasons set forth below, the examining attorney submits that there is a likelihood of confusion between applicant’s mark REACT for “Physical fitness instruction; providing a web site featuring information on exercise and fitness” in International Class 41, and registrant’s marks:

 

• REACT (U.S. Reg. No. 3758660) for “Providing information in the field of surgical weight loss; Providing information on maintaining a healthy lifestyle and losing weight; Providing weight loss program services; Weight reduction diet planning and supervision” in International Class 44;
• REACT [& design] (U.S. Reg. No. 3778982) for “Providing information in the field of surgical weight loss; Providing information on maintaining a healthy lifestyle and losing weight; Providing weight loss program services; Weight reduction diet planning and supervision” in International Class 44.

 

COMPARISON OF THE 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). 

 

In the present case, applicant’s applied-for mark is identical to the mark in U.S. Registration No. 3758660.  Thus, the marks are identical in terms of appearance and sound.  In addition, the meaning, connotation, and commercial impression of the marks do not differ when used in connection with the parties’ respective services.

 

Thus, these marks are confusingly similar. 

 

Moreover, the fact that registrant uses design elements in connection with U.S. Registration No. 3778982 will not prevent a finding of confusion because 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 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 word portion of the mark is “REACT,” which is identical to the applied-for mark.

 

COMPARISON OF THE SERVICES

 

Because the applied-for mark and the registered mark are identical, the relationship between applicant’s and registrant’s services need not be as close to support a finding of likelihood of confusion as might apply if differences existed between the marks.  In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).  When the marks are identical, it is only necessary that there be a viable relationship between the services to support a finding of likelihood of confusion.  In re Concordia Int’l Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). 

 

In this case, the applicant’s and registrant’s services are closely related in that both provide information on complementary health matters.  Registrant provides information on maintaining a healthy lifestyle and losing weight, and applicant provides information on exercise and fitness.  Since a healthy lifestyle and weight loss can be achieved through exercise and fitness, the information provided by applicant and registrant would be of interest to the same people.

 

Similarly, applicant provides physical fitness instruction, and registrant provides weight loss programs.  Since those who take physical fitness classes are often also concerned about weight loss, these services are also complementary and would be of interest to the same people.

 

Moreover, the services of applicant and registrant are likely to emanate from a single source: The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar services as those of both applicant and registrant in this case.  This evidence shows that the services listed therein, namely, physical fitness and weight loss services, are of a kind that may emanate from a single source.  See In re Davey Prods. Pty Ltd.,92 USPQ2d 1198, 1203 (TTAB 2009); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).  As such, consumer confusion as to the source of the services being provided is likely since it is common for a single entity to offer both applicant’s and registrant’s services under the same mark.

 

Ultimately, the fact that the services of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular services, but likelihood of confusion as to the source of those services.  In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993); TMEP §1207.01; see Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975).

 

CONCLUSION

 

The overriding concern is not only to prevent buyer confusion as to the source of the 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).  As such, because applicant’s applied-for mark and registrant’s mark are identical in sound, appearance, and commercial impression, and because applicant’s and registrant’s services are closely related, the applied-for mark must be refused registration in International Class 41 based on a likelihood of confusion.

 

Applicant must respond to the requirement set forth below.

 

IDENTIFICATION OF GOODS TOO BROAD

 

THIS PARTIAL REQUIREMENT APPLIES TO CLASS 28 ONLY.

 

The identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  If applicant’s goods are for physical therapy and/or rehabilitation purposes, then they would be classified in International Class 10; however, if the goods are solely for exercise purposes, then they would be classified in International Class 28.

 

Applicant may adopt either of the following identifications of goods, if accurate: 

 

Class 10: Physical exercise apparatus for medical purposes, namely, no-impact rapid eccentric anaerobic core training machines

 

Class 28: No-impact rapid eccentric anaerobic core training exercise machines

 

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. 

 

Please note that an identification has been limited, it cannot be expanded later.  See TMEP §§1402.06(a), 1402.07(e); see also In re Swen Sonic Corp., 21 USPQ2d 1794 (TTAB 1991); In re M.V Et Associes, 21 USPQ2d 1628 (Comm’r Pats. 1991).

 

For assistance with identifying and classifying goods 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.

 

ADVISORY: MULTIPLE CLASS REQUIREMENTS

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)        LIST GOODS BY INTERNATIONAL CLASS:  Applicant must list the goods by international class; and

 

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

RESPONSE REQUIRED

 

For this application to proceed toward registration, applicant must explicitly address each refusal and 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.  To respond to requirements, applicant should set forth in writing the required changes or statements. 

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 112

(571) 272-1911

andrew.leaser@uspto.gov

 

 

TO RESPOND TO THIS LETTER: E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.

 

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 7/8/2011 FOR

SERIAL NO. 85287996

 

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 7/8/2011 (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.