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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 4/29/2017

 

 

 

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.

 

 

LIKELIHOOD OF CONFUSION – Limited to Class 42 Only

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3368913.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.  Please note this refusal is limited to the services in Class 42 only.

 

For the reasons discussed below, the examining attorney concludes that confusion as to the source of goods and services is likely between the applicant’s mark THE SWEET LIFE for “Providing a web site featuring temporary use of non-downloadable software and technology allowing web site users to create, manage and share content via an online network; providing online design and creation tools” and the registrant’s mark SWEETLIFE for “Consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; Design of homepages and websites; Repair of computer software; Repair of damaged computer programs.”

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, 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).  A determination of likelihood of confusion under Section 2(d) is made on a case-by-case basis and 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) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 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 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.

 

In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); see TMEP §1207.01.  That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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).  Additionally, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).

 

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).

 

The marks are essentially identical, namely, THE SWIFT LIFE and SWIFTLIFE.  The term “THE” in the applicant’s mark has no trademark significance.  Accordingly, the dominant wording in each of the marks is SWIFT LIFE.  The addition of a space between the terms in the applicant’s mark will not avoid a likelihood of confusion.

 

In this case, the marks look alike, sound alike and create the same commercial impression.

 

The goods and/or services of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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).

 

The services of the parties are highly related computer and technology services including design services. The services of the parties are related and are likely to be marketed within the same trade channels.  The services of both parties are likely to be displayed in close proximity in various stores and retail establishments.  Applicant’s design services in Class 42 are described very broadly and could encompass the more specific services listed by the registrant as “design of home pages and websites.”

 

The marks are virtually identical.  The services are very highly related.  The similarities among the marks and the services are so great as to create a likelihood of confusion among consumers. 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, 1026 (Fed. Cir. 1988).

 

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

 

 

INFORMALITIES

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

 

IDENTIFICATION OF GOODS AND SERVICES – Classes 14, 20 and 42 only

 

The identification of goods is indefinite and must be clarified because “providing online design and creation tools” is ambiguous and needs further clarification.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.  Applicant must also specify the common commercial or generic name for the services.  If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).

 

Applicant may adopt the following identification, if accurate: 

 

            Class 14

Jewelry; Lapel pins; Ornamental lapel pins; Plastic key chains; non-metal and non-leather key chains, in International Class 14.

 

Class 15

Musical instruments; Guitars; Guitar picks; Guitar straps; Drumsticks, in International Class 15.

 

Class 16

Notebooks; Notepads; Note paper; Writing paper; Writing paper pads; Blank journals; Blank writing journals; Stickers; Stationery; Greeting cards; Gift bags; Writing instruments; Pens; Pencils; Prints; Art prints; Lithographs; Photographs; Posters; Calendars, in International Class 16.

 

Class 18

All-purpose carrying bags; Handbags; Tote bags; Drawstring bags; Backpacks; Drawstring backpacks; Messenger bags; Textile shopping bags; Reusable shopping bags; Cosmetic bags sold empty; Purses, in International Class 18.

 

Class 20

Pillows; [plastic key chains and non-metal and non-leather key chains are found in Class 14, not Class 20.  Accordingly, the key chains must be deleted from Class 20 and transferred to International Class 14]; in International Class 20.

 

Class 24

Towels; beach towels; blanket throws; bed blankets; bed sheets; bed linen; kitchen linens; table linen; household linen; pillow covers, in International Class 24.

 

Class 25

Tops; Tops for men and women; Athletic tops for men and women; Tank tops; Shirts; T-shirts; Short-sleeve shirts; Jerseys; Sweaters; Sweatshirts; Pullovers; Hooded Pullovers; Bottoms; Bottoms for men and women; Athletic bottoms for men and women; Pants; Jeans; Sweatpants; Shorts; Skirts; Dresses; Coats; Jackets; Ponchos; Vests; Loungewear; Sleepwear; Pajamas; Bathrobes; Cover-ups; Belts; Gloves; Scarves; Hosiery; Bandanas; Headwear, in International Class 25.

 

Class 28

Plush toys; stuffed toys; stuffed toy bears; stuffed toy animals; puzzles; Christmas tree ornaments and decorations; Christmas stockings, in International Class 28.

 

Class 35

Retail store services featuring a wide variety of consumer goods; On-line retail store services featuring downloadable sound, music, image, video and game files; On-line retail store services, namely, retail store services provided through electronic and digital means, featuring a wide variety of consumer goods; Computerized on-line ordering services featuring a wide variety of consumer goods; Retail store services featuring consumer products in the fields of music and musical entertainment; On-line retail store services featuring consumer products in the fields of music and musical entertainment; Computerized on-line ordering services featuring consumer products in the fields of music and musical entertainment; Retail store services featuring a wide variety of products relating to a musical artist and an entertainer; On-line retail store services featuring a wide variety of products relating to a musical artist and an entertainer; Computerized on-line ordering services featuring a wide variety of products relating to a musical artist and an entertainer; Providing consumer information regarding the selection of products and services to be purchased; Providing consumer information regarding membership club services; Facilitating the exchange of information to assist in the selection of products and services to be purchased, in International Class 35.

 

Class 41

Entertainment services in the nature of live musical performances; Entertainment, namely, live music concerts; Entertainment, namely, live stage performances in the nature of interviews with a musical artist and entertainer, for entertainment purposes; Entertainment, namely, live stage performances in the nature of musical and theatrical productions; Entertainment services, namely, public appearances by a musical artist and entertainer; Entertainment services, namely, providing a website featuring non-downloadable multi-media content, audio recordings, video recordings and audio-visual content, in the fields of entertainment, music and musical entertainment; Entertainment services, namely, providing a website featuring non-downloadable multi-media content, audio recordings, video recordings, and audio-visual content, relating to a musical artist and entertainer; Entertainment services, namely, providing information relating to entertainment, music and musical entertainment; Entertainment services, namely, providing information relating to a musical artist and entertainer; Entertainment services, namely, providing information relating to entertainment, music and musical entertainment via global communications networks; Entertainment services, namely, providing information relating to a musical artist and entertainer via global communications networks; Entertainment services, namely, providing a website featuring news and non-downloadable articles relating to entertainment, music and musical entertainment; Entertainment services, namely, providing a website featuring news and non-downloadable articles relating to a musical artist and entertainer; Providing non-downloadable electronic publications in the nature of articles in the fields entertainment, music and musical entertainment; Providing non-downloadable electronic publications in the nature of articles relating to a musical artist and entertainer. Educational services, namely, live and online programs in the fields of entertainment, music, musical entertainment and topics of general interest, accessible via audio, video, radio, television, satellite, electronic communications, telephone communications and digital transmission networks; Educational services, namely, continuing programs, classes, conferences, coaching, lectures, educational meetings, camps, retreats, seminars, educational summits, educational symposiums, training programs, workshops, self-guided classes and self-guided online courses of instruction, in the fields of entertainment, music and musical entertainment, and distribution of materials in connection therewith; Providing non-downloadable electronic educational publications, namely, articles, books, booklets, book excerpts, brochures, guides, magazines and newsletters, multi-media content, and audio and video recordings in the fields of entertainment, music and musical entertainment; Providing instruction in the fields of entertainment, music and musical entertainment via global communication networks; Providing non-downloadable music via global communications networks; Providing non-downloadable electronic multi-media content featuring pre-recorded musical performances, stage performances, public appearances, news, photographs, and other information and multi-media materials relating to music and musical entertainment; Providing non-downloadable electronic multi-media content featuring pre-recorded musical performances, stage performances, public appearances, news, photographs, and other information and multi-media materials relating to a musical artist; On-line journals in the nature of blogs in the fields of music and entertainment; On-line journals in the nature of blogs relating to a musical artist and entertainer; On-line journals in the nature of blogs on the topics of general human interest; Entertainment in the nature of computer games, namely, providing temporary use of non-downloadable computer games; Providing temporary use of non-downloadable electronic games. Non-downloadable electronic newsletters in the fields of music and entertainment; Non-downloadable electronic newsletters relating to a musical artist and entertainer; Non-downloadable electronic newsletters on the topics of general human interest; Arranging and conducting contests and sweepstakes; Arranging and conducting contests and sweepstakes services provided via global communications networks; Fan club services, in International Class 41.

 

Class 42

Providing a web site featuring temporary use of non-downloadable software and technology allowing web site users to create, manage and share content via an online network; ___________ [applicant must specify the services intended by the wording “providing online design and creation tools” using common commercial terms, e.g., providing temporary use of non-downloadable software development tools; providing temporary use of on-line non-downloadable software, namely, software development tools for the creation of mobile internet applications and client interfaces], in International Class 42.

 

Class 45

Social networking services provided online and via mobile and handheld electronic devices, in International Class 45.

 

 

TMEP section 1402.011.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

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.

 

 

UNSIGNED APPLICATION – SIGNED VERIFICATION REQUIRED

 

The application was unsigned, resulting in the application not being properly verified.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii), 2.193(e)(1).  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii), 2.193(e)(1); TMEP §804.02.

 

To respond to this requirement online using the Trademark Electronic Application System (TEAS) response Office action form, answer “yes” to the TEAS response form wizard question #10, and follow the instructions within the form for signing.  The TEAS online form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section.  For more information about a signed declaration and required verified statement and how to provide them using TEAS, please go to http://www.gov.uspto.report/trademark/laws-regulations/verified-statement.

 

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

 

Meier, Sharon

/Sharon A. Meier/

Trademark Attorney, LO 112

571-272-9195 - phone

571-273-9112 - fax

sharon.meier1@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/29/2017 FOR U.S. APPLICATION SERIAL NO. 87406726

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 4/29/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.