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. 87533795
MARK: BLUESTAR
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Blue Star Productions, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 6/19/2019
THIS IS A FINAL ACTION.
Introduction
This Office action is in response to applicant’s communication filed on May 28, 2019.
In a previous Office action dated November 28, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) refusal for a likelihood of confusion with U.S. Registration Nos. 4816744 (BLUE STAR CAREERS), 5503715 (BLUE STARS), 5503716 (BLUE STARS ADMISSIONS CONSULTING), 5365648 (BLUE STAR SPORTS), and 5381336 (BLUE STAR SPORTS), and specimen refusal for failing to show the mark in conjunction with the services in Classes 35 and 41. In addition, applicant was required to satisfy the following requirements: amend the identification of services and clarify the mark description.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: amend the identification of services and clarify the mark description. See TMEP §§713.02, 714.04.
In addition, the following refusal been withdrawn (as applicant submitted a consent agreement): Trademark Act Section 2(d) refusal for a likelihood of confusion with U.S. Registration Nos. 5503715 (BLUE STARS) and 5503716 (BLUE STARS ADMISSIONS CONSULTING) only. See TMEP §§713.02, 714.04. Please note that, as described below, the Trademark Act Section 2(d) refusal for a likelihood of confusion with U.S. Registration Nos. 4816744 (BLUE STAR CAREERS), 5365648 (BLUE STAR SPORTS), and 5381336 (BLUE STAR SPORTS) is maintained and made final. In addition, the following refusal been withdrawn: specimen refusal for failing to show the mark in conjunction with the services in Classes 35 and 41.
Applicant presented arguments regarding the Section 2(d) refusal in regards to U.S. Registration Nos. 4816744 (BLUE STAR CAREERS), 5365648 (BLUE STAR SPORTS), and 5381336 (BLUE STAR SPORTS), but these arguments were found unpersuasive for the reasons described below. Therefore, the Section 2(d) refusal in regards to U.S. Registration Nos. 4816744 (BLUE STAR CAREERS), 5365648 (BLUE STAR SPORTS), and 5381336 (BLUE STAR SPORTS) is maintained and made final. Please see the note below regarding Registration Nos. 5365648 (BLUE STAR SPORTS) and 5381336 (BLUE STAR SPORTS) and the potential cancellation of these marks.
Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
All previous arguments and evidence, where applicable, are incorporated by reference herein.
Summary of Issues Made Final That Applicant Must Address:
· FINAL Section 2(d) Refusal – Likelihood of Confusion – Maintained and Made Final
FINAL 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.
Applicant has applied for the mark BLUESTAR in special form for:
Registration No. 4816744 is BLUE STAR CAREERS in standard characters for “Career planning services; Organizing business networking events in the field of all career fields for military spouses; Providing employment counseling information on how to successfully transition jobs for military spouses” in International Class 35.
Registration No. 5365648 is BLUE STAR SPORTS in standard characters for:
Registration No. 5381336 is BLUE STAR SPORTS in special form for:
Please note that in regards to U.S. Registration Nos. 5365648 (BLUE STAR SPORTS) and 5381336 (BLUE STAR SPORTS), applicant argues that “Pursuant to a settlement agreement between Applicant and Jones Team Sports…Jones Team Sports agreed to cease all use of the BLUE STAR SPORTS trademark. Due to confidentiality provisions, applicant cannot attach a copy of that agreement to this office action response…As those marks are no longer in use and as their registrations will be cancelled shortly, Applicant requests that the Examining Attorney withdraw the citation…”. However, as a valid consent agreement has not been provided in the record, and as these registrations have not yet been actually cancelled, the Section 2(d) refusal in regards to these registrations must be maintained and made final. If and when these registrations are finally cancelled, the Section 2(d) refusal in regards to these registrations will be withdrawn.
Comparison of the Marks
Applicant’s mark and the cited U.S. Registration Nos. 4816744 (BLUE STAR CAREERS), 5365648 (BLUE STAR SPORTS), and 5381336 (BLUE STAR SPORTS) are likely to be confused due to their similarity.
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 is in special form while Registration Nos. 4816744 and 5365648 in standard characters, but this does not prevent a 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”). The standard character registered marks could be displayed with stylization and design elements similar to those in the special form applied-for mark, creating a likelihood of confusion.
Also, 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 goods and/or 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)). Here, the dominant word portion of Registration No. 5381336 is BLUE STAR SPORTS, and the dominant word portion of the special form applied-for mark is BLUESTAR.
In the present case, there is a likelihood of confusion because of the similar wording in the marks. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Here, the marks all contain the wording BLUE and STAR, which creates a highly similar look, sound, and commercial impression.
The registered marks contain the additional wording SPORTS or CAREERS, but this does not prevent a likelihood of confusion. Disclaimed matter that is descriptive of or generic for a party’s goods and/or 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). Here, the marks BLUE STAR CAREERS, BLUE STAR SPORTS, and BLUE STAR SPORTS disclaim the wording CAREERS, SPORTS, and SPORTS, respectively. This renders the wording BLUE STAR the dominant parts of these registered marks, which is likely to cause confusion with applicant’s mark, BLUESTAR.
Applicant has previously argued that “Applicant is the owner of prior registration 1,677,944…for ‘Operating basketball camps’ in class 41, with a date of first use dating back to 1981…Applicant has already acquired secondary meaning in the term BLUE STAR in connection with sports-related services”. Applicant further argues that this means that consumers would not confuse the marks because the purchasing public’s familiarity with this mark obviates any likelihood of confusion. However, the Trademark Trial and Appeal Board has found that a family of marks argument is “not available to an applicant seeking to overcome a [likelihood of confusion] refusal.” In re Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009). Specifically, an applicant’s ownership of other similar marks has little relevance in this context because the focus of a likelihood of confusion analysis in an ex parte case is on the mark applicant seeks to register, rather than other marks applicant has used or registered. In re Cynosure, Inc., 90 USPQ2d at 1645-46; In re Ald, Inc., 148 USPQ 520, 521 (TTAB 1965); TMEP §1207.01(d)(xi).
Therefore, as the marks look and sound similar and create a similar commercial impression, they are confusingly similar.
Comparison of the Goods and Services
The compared goods and/or 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).
U.S. Registration No. 4816744 (BLUE STAR CAREERS)
As shown from the attached websites from agencyathlete.com, athletesusa.org, collegerecruitingspecialists.com, csaprepstar.com, eths.k12.il.us, evanston.8to18.com, gozags.com, heinrich-sports.com, and peninsulacatholic.org, (as well as previously attached evidence from ntxsoccer.org, optionssolutionsed.com, simssports.com, collegeprep.com, collegesportsconsulting.com, heartofla.org, and nacacnet.org), it is quite common for the same parties to career planning and development services (including those related to athletics), college consultation services, sports recruiting services, public relations services, sports competitions and events, athlete development services, and sports camps/training services under the same mark. This evidence establishes that the same entity commonly provides the relevant services and markets the services under the same mark, and that the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Also, the trademark examining attorney has attached evidence (and has previously 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 goods and/or services listed therein, namely career planning services, college consultation services, talent recruiting services, public relations services, and sports training services, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); 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).
Applicant has previously argued that applicant’s services are completely different than those in the registered marks, and that “Registrant’s services [in Registration No. 4816744] are directed entirely to military spouses”. Further, in the most recent response, applicant argues that “Both Applicant and the owner of the cited registration have provided very specific information revealing their intended customers – student athletes versus military spouses. The typical trade channels the parties would use to reach their distinct audiences would have little to no overlap”. However, 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)). The services in Registration No. 4816744 include “Career planning services”, which are not limited to career planning services in any particular field. Therefore, with respect to the identification entry “Career planning services”, registrant has not limited these services to being related to military spouses. As such, these services could include those provided to middle school, high school and college athletes, as in the application, creating a likelihood of confusion.
Applicant also argues that applicant’s consumers, student athletes, are sophisticated and careful purchasers. However, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163). Here, even if the consumers are careful purchasers there is a likelihood of confusion because of the highly similar marks (see above) being used in conjunction with related services.
U.S. Registration Nos. 5365648 (BLUE STAR SPORTS) and 5381336 (BLUE STAR SPORTS)
As shown from the attached websites from leverade.com, membersolutions.com, and sportsclubhq.com (as well as previously attached websites from sportsengine.com, go.teamsideline.com, myteamgenius.com, playyon.com, sportspak.net, and wooterapp.com), it is quite common for the same parties to use software for organizing and managing sports events and competitions, sports camps, and athlete training under the same mark. This evidence establishes that the goods and/or services are similar or complementary in terms of purpose or function. Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Therefore, the goods and services are considered related in this analysis.
Because the marks are similar and the goods and services are related, there is a likelihood of confusion and applicant’s mark is not entitled to registration.
Advisory – Response to Final Action
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
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.
/Jessica Hilliard/
Jessica Hilliard
Examining Attorney, Law Office 120
Ph: 571-272-4031
Jessica.Hilliard@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.
