To: | Franklin Covey Co. (adrienne.triplett-wall@franklincovey.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88062381 - RETHINKING LEADERSHIP - N/A |
Sent: | 11/27/2018 2:23:07 PM |
Sent As: | ECOM107@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88062381
MARK: RETHINKING LEADERSHIP
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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: Franklin Covey Co.
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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: 11/27/2018
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.
Applicant should note the following refusal.
Registration Refused – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark RETHINK LEADERSHIP in U.S. Registration No. 5242112. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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.
Comparison of 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).
Registrant’s mark is RETHINK LEADERSHIP. Applicant’s mark is RETHINKING LEADERSHIP. The wording “RETHINK” and “RETHINKING” are highly similar in that the wording “RETHINKING” is a verb tense of the root verb “RETHINK” in the cited mark. The wording “LEADERSHIP” is identical both marks. The marks convey highly similar commercial impressions due to the nearly identical wording.
Comparison of Goods/Services
Registrant’s services are “Electronic downloadable religious instructional and teaching materials, all in the fields of church and ministry leadership”. Applicant’s goods and services are “Educational services, namely, providing teaching, training, conducting seminars, workshops, lectures and classes, providing on-line courses of instruction at the primary and secondary education level and distribution of course materials in connection therewith; providing on-line non-downloadable educational articles, on-line publications, on-line videos and on-line video journals and vlogs featuring non-downloadable videos and on-line newsletters in the field of education; providing interactive websites and on-line databases, featuring information in the fields of education and entertainment for children, parents, teachers, schools and community leaders; providing on-line interactive computer games featuring educational themes and entertainment directed to children, parents, teachers and schools, all in the field of education, time management, personal effectiveness, character development, leadership, communication, and personal and professional development; Printed instructional and educational, teaching materials and publications, namely, participant kits, manuals, brochures, booklets, reference guides, participant guides, notebooks, pamphlets, and posters, in the fields of education, time management, personal effectiveness, character development, leadership, communication, and personal and professional development”.
Both parties identify instructional and teaching materials in the field of leadership. While the scope of leadership in the registrant’s services is limited to church and ministry leadership, the applicant’s scope of services is broadly worded to include leadership without restriction, as well as related characteristics like “education, time management, personal effectiveness, character development, leadership, communication, and personal and professional development” that is also unrestricted. Thus, both parties provide related goods/services.
Applicant’s mark is virtually identical to the cited mark and its goods/services are closely related to the registrant’s services, thereby making confusion as to the source of the goods/services likely. Accordingly, registration is refused under Trademark Act Section 2(d).
Identification of Goods and Services Must be Amended
The identification must be amended because it features goods and services in multiple international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, printed materials belong in Class 16, while educational and entertainment services and services featuring non-downloadable educational and entertainment materials belong in Class 41.
In addition, the nature of the “participant kits” must be amended to specify the components of the kits. See TMEP §1402.01.
Moreover, the identification of services shown in Class 41 in the suggestion below are indefinite because it is awkwardly worded and the nature of the “teaching” and subject matter of the services is unclear. See TMEP §1402.01.
In addition, applicant must clarify the non-downloadable nature of the services and the nature of the publications where required below. See TMEP §1402.01.
For the applicant’s convenience, the trademark examining attorney suggests an amendment of applicant’s identification of goods and/or services that complies with the above-mentioned clarification requirements, with any material additions and deletions highlighted.Applicant may adopt the following identification, if accurate:
International Class 16: “Printed instructional and educational, teaching materials and publications, namely, participant kits comprising {specify components of kits, e.g., worksheets}, manuals, brochures, booklets, reference guides, participant guides, notebooks, pamphlets, and posters, in the fields of education, time management, personal effectiveness, character development, leadership, communication, and personal and professional development”
International Class 41: “Educational services, namely, providing {clarify format of “teaching”, e.g., instruction}, training, seminars, workshops, lectures and classes in the field of {specify subject matter}; providing on-line courses of instruction at the primary and secondary education level and distribution of course materials in connection therewith; providing on-line, non-downloadable educational articles, publications in the nature of {specify type, e.g., newsletters}, videos, video journals, vlogs, and videos in the field of education; providing on-line, non-downloadable newsletters in the field of education; providing interactive websites and on-line databases featuring information in the fields of education and entertainment for children, parents, teachers, schools and community leaders; providing on-line, non-downloadable interactive computer games featuring educational themes and entertainment directed to children, parents, teachers and schools, all in the field of education, time management, personal effectiveness, character development, leadership, communication, and personal and professional development”
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.
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).
Proper Classification of Goods and Services Required
If applicant adopts the suggested amendment of the goods and services, then applicant must amend the classification to International Classes 16 and 41. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.Applicant must adopt the appropriate international classification number for the goods and/or services identified in the application. The USPTO follows the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), established by the World Intellectual Property Organization, to classify goods and services. See 37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a).
Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO. See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).
Multiple Class Application Requirements Advisory
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
/Julie Thomas Veppumthara/
Trademark Examining Attorney
Law Office 107
Phone: 571-272-1582
Email: julie.veppumthara@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.