Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  August 22, 2019

 

INTRODUCTION

 

On January 25, 2018, action on this application was suspended pending the disposition of U.S. Application Serial Nos. 86547548 & 87255628.  The referenced prior-pending applications have since registered.  Therefore, registration is refused as follows.  The examining attorney has withdrawn Application Serial No./Registration No. 86547548/5492483 as a bar to registration.

 

USPTO records indicate that Registration No. 3960897 has been cancelled and/or expired and is no longer a bar to registration of applicant’s mark.  Therefore, the Section 2(d) refusal is withdrawn with respect to this particular registration.

 

The examining attorney has withdrawn the following registrations as bars to the registration of this mark:  2290269, 4672100, 4508513, and 4292683.

 

SUMMARY OF ISSUES:

 

1. Refusal—Section 2(d), Likelihood of Confusion—Limited to Specific Services
2. Attorney Information Required

 

I.      SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION—LIMITED TO SPECIFIC SERVICES

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3848163, 2512356, 4319847, 2515631, 3078031, 4694320, 4710136, 2359452, and 5706591.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  Registration No. 5706591 is attached to this Action.  The other cited registrations were attached to the Action dated July 6, 2017.  The following services are not subject to this refusal: exhibitions for cultural purposes.

 

The applicant’s proposed mark is “NOBLE” (standard character) used in connection with:

 

            Class 41 (as amended): Production of radio and television shows and programmes; film production services; Entertainment services, namely, multimedia production services, organizing, arranging, and hosting social entertainment events, presenting live musical performances; presentation of movies; film distribution; provision of non-downloadable films and television programs via a video-on-demand service; educational services, namely arranging and conducting of workshops and seminars in the field of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest, film production, languages, law

 

The registrants’ marks are:

 

1.     U.S. Registration No. 3848163*, “BARNES & NOBLE” (standard character) used in connection with:

 

Class 41: educational services, namely, providing interactive educational classes, seminars, conferences, lectures and workshops in the fields of k-12, post-secondary, post-graduate, professional, vocational, workplace and continuing education and distributing course materials in connection therewith, via a global computer information network

 

2.     U.S. Registration No. 2512356*, “BARNES & NOBLE.COM” (standard character) used in connection with:

 

Class 41: educational services, namely, providing interactive educational classes, seminars, conferences, lectures and workshops in the fields of k-12, post-secondary, post-graduate, professional, vocational, workplace and continuing education and distributing course materials in connection therewith, via a global computer information network

 

3.     U.S. Registration No. 4319847*, “BARNES & NOBLE” (standard character) used in connection with:

 

Class 41: entertainment services, namely, an on-going multimedia series provided via a web site featuring information on books, book reviews and publishing and entertainment news, book covers, book jacket designers, authors and book collectors

 

4.     U.S. Registration No. 2515631, “NOBLE BIOCARE” (standard character) used in connection with:

 

Class 41: education and training services, namely, arranging and conducting seminars about implantation surgery and implantation techniques

 

5.     U.S. Registration No. 3078031, “NOBLE PRIZE” (standard character) used in connection with:

 

Class 41: Educational services, namely, arranging and conducting seminars, lectures, exhibitions, conferences, congresses, seminars and symposiums for cultural and educational purposes in the field of science, health, human and political relations and economics; motion picture film production; production of radio and television programs

 

6.     U.S. Registration No. 4694320, “NOBLE CENTER” (standard character) used in connection with:

 

Class 41: Educational services, namely, conducting informal on-line programs intended to allow students to develop programs in the field of advocacy, education, mentoring and tutoring through use of media and outreach in impoverished communities, and printable materials distributed therewith

 

7.     U.S. Registration No. 4710136, “NOBLE DENTON” (standard character) used in connection with:

 

Class 41: education services relating to water, in particular education services relating to water management, water pollution and water safety, namely, providing educational courses in the field of water management, providing educational and training classes in the field of water management, pollution prevention and control and water safety regulations and techniques; arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums and workshops in the fields of maritime energy production and transportation technologies, oil and gas production, storage and transport, underwater energy production technology, power generation, material science, water management, water pollution and water safety, and onshore and offshore wind energy, wave energy, tidal energy and solar energy production, storage and transport

 

8.     U.S. Registration No. 2359452, “NOBLE OF INDIANA” (standard character) used in connection with:

 

Class 41: Educational services, namely, conducting classes, workshops, seminars, and sessions regarding instruction as to independent living skills and self advocacy

 

9.     U.S. Registration No. 5706591, “NOBLE EARTH” (standard character) used in connection with:

 

Class 41: Education services, namely, providing panel discussions in the field of Ayurveda, wellness, massage, energy healing, Crystal Energy work, herbalism, tea, ferments, raw foods, fermented foods, Kombucha, wild foods

 

*These registrations are owned by the same entity.

 

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 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 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.

 

A.    Similarity 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).  Here, the proposed mark is confusingly similar to the marks in the cited registrations because they share the word “NOBLE”.  Additionally, any design element or descriptive wording does not distinguish the proposed mark from the marks in the cited registrations. 

 

The mark in Registration No. 3848163 is a composite mark.  When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  Because consumers will remember and enunciate the wording in the registration when requesting the registrant’s services, the wording creates and conveys the commercial impression of the registered mark.

 

Similarly, disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  The registrants of Registration Nos. 4694320, 3078031, and 2359452 have disclaimed “CENTER”, “PRIZE”, and “INDIANA”, respectively, because the wording merely describes a feature of the registrants’ services.  Because this wording merely describes a feature of the registrants’ services, “NOBLE” drives the commercial impression of the marks in the cited registrations.  Since “NOBLE” in the proposed mark is identical to “NOBLE” in these registrations, the compared marks are confusingly similar. 

 

Likewise, generic top-level domains (gTLDs), such as “.com” and “.net,” are generic locators for Internet website addresses and provide no meaningful source-identifying significance.  See Apple Computer v. TVNET.net, Inc., 90 USPQ2d 1393, 1397 (TTAB 2007); TMEP §§1215.01, 1215.02, 1215.09; cf. In re Hotels.com, L.P., 573 F.3d 1300, 1301, 1304, 91 USPQ2d 1532, 1533, 1535 (Fed. Cir. 2009).  Thus, a non-source-identifying gTLD is less significant in creating a commercial impression in the minds of consumers, and is generally given little weight when comparing marks.  See TMEP §1215.09. Because top-level domain names do not provide any meaningful source-identifying significance, “BARNES & NOBLE” drives the commercial impression of the mark in Registration No. 2512356.

 

Finally, although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrants’ marks.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks.

 

For these reasons, the marks are similar.

 

B.    Relatedness of the Services

 

The compared services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

i.       Non-educational Services in Registration No. 3078031, “NOBEL PRIZE”:

 

The services at issue in the application are:

           

            Class 41: Production of radio and television shows and programmes; film production services; Entertainment services, namely, multimedia production services, organizing, arranging, and hosting social entertainment events, presenting live musical performances; presentation of movies; film distribution; provision of non-downloadable films and television programs via a video-on-demand service

 

The services at issue in the registration are:

 

            Class 41: motion picture film production; production of radio and television programs

 

Here, the registrant’s production of radio and television programs is identical to the applicant’s production of radio and television programs.  Because the compared services are identical, they are closely related.  Additionally, this language, and motion picture film production, is broad enough to include the applicant’s film production and multimedia production services.  Because the registrant’s services are broad enough to include the applicant’s services, the compared services are legally identical, and thus, closely related.  See In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018).  Finally, it is common for film and television series producers to present and distribute their films or television series via on-demand services.   HBO, Showtime, and Starz all produce their own films and television series and present and distribute those films and television series via on-demand services.  Because the registrant’s and applicant’s services commonly originate from the same source, the services are related.

 

ii.     Educational Services:

 

The services at issue in the application are:

           

            Class 41: educational services, namely arranging and conducting of workshops and seminars in the field of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest, film production, languages, law

 

The services at issue in the registrations are:

 

Class 41: educational services, namely, providing interactive educational classes, seminars, conferences, lectures and workshops in the fields of k-12, post-secondary, post-graduate, professional, vocational, workplace and continuing education and distributing course materials in connection therewith, via a global computer information network

 

Class 41: educational services, namely, providing interactive educational classes, seminars, conferences, lectures and workshops in the fields of k-12, post-secondary, post-graduate, professional, vocational, workplace and continuing education and distributing course materials in connection therewith, via a global computer information network

 

Class 41: entertainment services, namely, an on-going multimedia series provided via a web site featuring information on books, book reviews and publishing and entertainment news, book covers, book jacket designers, authors and book collectors

 

Class 41: education and training services, namely, arranging and conducting seminars about implantation surgery and implantation techniques

 

Class 41: Educational services, namely, arranging and conducting seminars, lectures, exhibitions, conferences, congresses, seminars and symposiums for cultural and educational purposes in the field of science, health, human and political relations and economics; motion picture film production; production of radio and television programs

 

Class 41: Educational services, namely, conducting informal on-line programs intended to allow students to develop programs in the field of advocacy, education, mentoring and tutoring through use of media and outreach in impoverished communities, and printable materials distributed therewith

 

Class 41: education services relating to water, in particular education services relating to water management, water pollution and water safety, namely, providing educational courses in the field of water management, providing educational and training classes in the field of water management, pollution prevention and control and water safety regulations and techniques; arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums and workshops in the fields of maritime energy production and transportation technologies, oil and gas production, storage and transport, underwater energy production technology, power generation, material science, water management, water pollution and water safety, and onshore and offshore wind energy, wave energy, tidal energy and solar energy production, storage and transport

 

Class 41: Educational services, namely, conducting classes, workshops, seminars, and sessions regarding instruction as to independent living skills and self advocacy

 

Class 41: Education services, namely, providing panel discussions in the field of Ayurveda, wellness, massage, energy healing, Crystal Energy work, herbalism, tea, ferments, raw foods, fermented foods, Kombucha, wild foods

 

The registrants’ workshop, seminar, or panel discussions are identical to or legally identical to the applicant’s workshop and seminar services.  Additionally, the subject matter for the applicant’s educational services is broad enough to include all of the registrants’ educational subject matter.  For example, the applicant’s general human interest includes independent living skills, wellness, herbalism, and implantation surgery.  Because the registrants’ and applicant’s services are identical or virtually identical and the subject matter of the applicant’s educational services is broad enough to include the subject matter of the registrants’ educational services, the compared services are closely related.

 

For these reasons, the services are related.

 

C.    Doubt Resolved in Favor of the Registrant

 

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, 1026 (Fed. Cir. 1988).

 

For the foregoing reasons, the applicant’s proposed mark is refused registration on the Principal Register under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

II.             ATTORNEY INFORMATION REQUIRED

 

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

Attorney attestation required.  Applicant’s attorney must provide the following statement:  “I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Ryan Cianci/

Ryan Cianci

Trademark Examining Attorney

Law Office 116

571-270-3721

ryan.cianci@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 22, 2019 for

U.S. Trademark Application Serial No. 87406031

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Ryan Cianci/

Ryan Cianci

Trademark Examining Attorney

Law Office 116

571-270-3721

ryan.cianci@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from August 22, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”