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:  April 03, 2020

 

On July 15, 2019, action on this application was suspended pending the disposition of U.S. Application Serial Nos. 87941599 and 87826623.  The following prior-pending application has abandoned and are no longer a potential bar to the registration of applicant’s mark:  Application Serial No. 87941599.  However, the following prior-pending application has since registered:  Application Serial Nos. 87826623. 

 

Further, the assigned trademark examining attorney is issuing a new requirement for providing the attorney of record’s bar information based on a USPTO rule change that became effective on August 3, 2019.

 

On this date, the USPTO revised the federal trademark rules to require foreign-domiciled applicants to be represented by an attorney who is an active member in good standing of the bar of the highest court of any U.S. state (including the District of Columbia or any U.S. commonwealth or territory).  Further, the USPTO required an applicant to provide the address of applicant’s domicile in order to determine if a U.S.-licensed attorney was required.  See the U.S. Counsel Rule change webpage for more information.  Thus, applicant must respond to this new requirement, in addition to the outstanding issues maintained in the Suspension Letter dated July 15, 2019.

 

The issue(s) maintained in the Suspension Letter dated July 15, 2019 is/are as follow and is/are maintained:  Section 2(d) likelihood of confusion refusal, in part, as to Reg. No. 4596260, the requirement for amending an indefinite identification of goods and services and for providing a filing basis. 

 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

• NEW ISSUE:  Section 2(d) Refusal – Likelihood of Confusion as to Ser. No. 87826623 (now registration 5683717 – limited to International Classes 9, 16, 41 and portions of Class 42); 
• NEW ISSUE:  Attorney Bar Information – Required;
• Section 2(d) Refusal – Likelihood of Confusion as to Reg. No. 4596260 (limited to certain goods and services)(maintained);
• Identification of Goods & Services – Indefinite (maintained); and
• Filing Basis – Required (maintained).

 

 

Applicant must respond to all issues raised in this Office action and any outstanding issues from the previous December 18, 2018 Office action and July 15, 2019 Suspension Letter, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

-          Partial Refusal

Registration of the applied-for mark is refused as to certain goods and services because of a likelihood of confusion with the mark in U.S. Registration No. 5683717.  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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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 is seeking registration for the following relevant goods and services:  “downloadable publications and instructional materials,” in International Class 9, “printed publications and instructional materials,” in International Class 16, “training; education services; mentoring services; information, consultancy and advisory services relating to all the foregoing services; providing on-line non-downloadable publications and instructional materials,” in International Class 41 and “research services,” in International Class 42 in connection with the mark “DANDELION”.  The cited registration identifies the following services:  “providing information in the fields of art, art history, black studies, culture, cultural movements and history and the interconnections among the aforementioned fields; providing a website featuring non-downloadable videos, art work, photographs and writings in the nature of articles, written online reviews of movies, books, exhibitions, fashion shows, theater and multi-media performances, concerts and music and written online interviews featuring designers, authors, scholars, filmmakers and artists in the fields of arts, art history, black studies, culture, cultural movements, fashion, history and politics and the interconnections among the aforementioned fields; providing a website featuring educational information in the fields of arts, art history, black studies, culture, cultural movements and history and the interconnections among the aforementioned fields; curator services for museums and galleries; organization of exhibitions for cultural or educational purposes; on-line journals, namely, blogs featuring entertainment and educational information and commentary in the fields of arts, art history, black studies, culture, cultural movements, fashion, history and politics and the interconnections among the aforementioned fields; educational services, namely, arranging and conducting conferences, educational symposia, workshops, lectures and panel discussions in the fields of arts, art history, black studies, culture, cultural movements, fashion, history and politics and the interconnections among the aforementioned fields; creating and developing concepts for television programs; television show production,” in International Class 41 in connection with the mark “THE DANDY LION PROJECT”. 

 

Marks are Similar

 

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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). 

 

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”).

 

Here, applicant is seeking registration for the mark “DANDELION”, displayed in standard characters.  The cited registration is for the mark “THE DANDY LION PROJECT”, also displayed in standard characters.  The visual, phonetic and overall commercial impressions derived from the respective marks are substantially similar.  The trademark examining attorney submits that it is well-established through case law there is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark.  See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv).  However, the source identifying portions of the marks, i.e. “DANDELION” vs. “DANDY LION” could be pronounced the same; such similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

With respect to the “PROJECT” portion of the registered mark, the trademark examining attorney submits that 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).  In the present case, registrant has disclaimed the “PROJECT” portion of its mark thereby acknowledging that such wording is less significant in terms of making likelihood of confusion determinations and rendering “DANDY LION” the dominant and source-identifying element of the mark. 

 

Finally, since a standard character claim allows an applicant or registrant to display a mark in any font or stylization, applicant could display its mark in a manner identical to that of registrant and vice-versa. 

 

Based on the foregoing, the visual, phonetic and subsequently, overall commercial impressions derived from the respective marks are substantially similar as to create a likelihood of confusion.

 

 

Goods and/or Services are Related

 

Applicant is seeking registration for the following relevant goods and services:  “downloadable publications and instructional materials,” in International Class 9, “printed publications and instructional materials,” in International Class 16, “training; education services; mentoring services; information, consultancy and advisory services relating to all the foregoing services; providing on-line non-downloadable publications and instructional materials,” in International Class 41 and “research services,” in International Class 42.  The cited registration identifies the following services:  “providing information in the fields of art, art history, black studies, culture, cultural movements and history and the interconnections among the aforementioned fields; providing a website featuring non-downloadable videos, art work, photographs and writings in the nature of articles, written online reviews of movies, books, exhibitions, fashion shows, theater and multi-media performances, concerts and music and written online interviews featuring designers, authors, scholars, filmmakers and artists in the fields of arts, art history, black studies, culture, cultural movements, fashion, history and politics and the interconnections among the aforementioned fields; providing a website featuring educational information in the fields of arts, art history, black studies, culture, cultural movements and history and the interconnections among the aforementioned fields; curator services for museums and galleries; organization of exhibitions for cultural or educational purposes; on-line journals, namely, blogs featuring entertainment and educational information and commentary in the fields of arts, art history, black studies, culture, cultural movements, fashion, history and politics and the interconnections among the aforementioned fields; educational services, namely, arranging and conducting conferences, educational symposia, workshops, lectures and panel discussions in the fields of arts, art history, black studies, culture, cultural movements, fashion, history and politics and the interconnections among the aforementioned fields; creating and developing concepts for television programs; television show production,” in International Class 41.

 

The goods and/or services are compared to determine whether they are similar, 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, 1207.01(a)(vi).  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).

 

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)).  

 

In this case, the application use(s) broad wording to describe its goods and services in that no specific field or subject matter is indicated with respect to its various publication, educational, training, research or related services, which presumably encompasses all goods and/or services of the type described, including the registrant(s)’s more narrow fields that pertain to its information, non-downloadable videos, educational information services and the like.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). 

 

Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods and/or services are related.

 

The trademark examining attorney submits that it is well-established that the same entity commonly manufactures, produces, or provides the relevant goods and/or services, i.e., “downloadable, printed, on-line non-downloadable and related information and education” goods and services, and markets the goods and/or services under the same mark/similar mark.  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).

 

Please evidence representative examples of such companies and U.S. registrations regarding same (please also see attached evidence):

 

1. Evidence from National Geographic, http://www.nationalgeographic.com/magazine/ and http://w1.buysub.com/pubs/NG/NGM/ngm_direct_COM_232353.jsp?cds_page_id=232353&cds_mag_code=NGM&id=1585941871208&lsid=30941424312079868&vid=1&cds_response-key=I8LCRNFTR&cmpid=int_org%3Dngp%3A%3Aint_mc%3Dwebsite%3A%3Aint_src%3Dngp%3A%3Aint_cmp%3Dsubs-dig-hp%3A%3Aint_add%3Dngmftr%3A%3Aint_urid%3D;
2. Evidence from Time, http://time.com/ and http://time.com/subscribe/primary-offer/;
3. Evidence from Washington Post, http://www.washingtonpost.com/; and
4. Reg. Nos. 6014418, 6001606, 5994308, 5980900 and 5979912.

 

Therefore, applicant's and registrant's goods and/or services are considered related for likelihood of confusion purposes.

 

Based on the foregoing, a likelihood of confusion exists between applicant's mark and the cited registration(s) and registration is refused as to the relevant goods and services 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.

 

Applicant should note the following maintained ground for refusal.

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION (maintained)

The trademark examining attorney maintains the refusal of register of the applied-for mark in connection with certain goods and services because of a likelihood of confusion with the mark in U.S. Registration No. 4596260.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  Please reference the registration made of record in the Office Action dated December 18, 2018. 

 

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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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 is seeking registration for the following relevant goods and services:  "downloadable publications and instructional materials," in International Class 9, "printed publications and instructional materials," in International Class 16, "training; education services; mentoring services; information, consultancy and advisory services relating to all the foregoing services; providing on-line non-downloadable publications and instructional materials," in International Class 41 and "research services," in International Class 42 in connection with the mark "DANDELION".  The cited registration is for the following services:  "scientific research in the field of genetics and genetic engineering," in International Class 42 in connection with the mark "DANDELION RIFT DNA" & design.

 

 

Marks are Similar

 

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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). 

 

The trademark examining attorney incorporates by reference all of the relevant arguments and evidence made of record in the Office Action December 18, 2018.  Please reference the Office Action.  The trademark examining attorney reserves her right to more fully address all of applicant’s prior or future arguments and evidence if and when a final Office Action issues. 

 

Based on the foregoing, the trademark examining attorney maintains that the visual, phonetic and subsequently, overall commercial impressions derived from the respective marks are substantially similar as to create a likelihood of confusion.

 

 

Goods and/or Services are Related

 

The goods and/or services are compared to determine whether they are similar, 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, 1207.01(a)(vi).

 

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).

 

The trademark examining attorney incorporates by reference all of the relevant arguments and evidence made of record in the Office Action December 18, 2018.  Please reference the Office Action.  The trademark examining attorney reserves her right to more fully address all of applicant’s prior or future arguments and evidence if and when a final Office Action issues. 

 

Therefore, the trademark examining attorney maintains that applicant's and registrant's goods and/or services are considered related for likelihood of confusion purposes.

 

Based on the foregoing, the trademark examining attorney maintains that a likelihood of confusion exists between applicant's mark and the cited registration(s) and registration is refused as to certain goods and services 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.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

 

 

IDENTIFICATION OF GOODS & SERVICES (maintained)

 

The trademark examining attorney maintains that portions of the goods and services remain indefinite and/or misclassified.  Please reference the Office Action dated December 18, 2018 for specific details. 

 

Applicant may substitute the following wording, if accurate: 

 

"Downloadable electronic publications in the nature of {indicate specific publication, e.g., magazines, etc.} in the field of {specify subject matter or field, e.g., autism, etc.} and downloadable electronic instructional teaching materials in the field of {specify subject matter or field, e.g., autism, etc.}," in International Class 9;

 

"Printed publications, namely, {indicate specific publications, e.g., magazines, etc.} in the field of {specify subject matter or field, e.g., autism, etc.} and printed teaching instructional materials in the field of {specify subject matter or field, e.g., autism, etc.}," in International Class 16;

 

"Promoting public awareness of autism spectrum and other neurodevelopmental disorders; Personnel placement and recruiting; Testing to determine employment skills; Providing employment information; Providing networking opportunities for individuals seeking employment; Internship placement services; Information, consultancy and advisory services relating to all the foregoing services; Employment staffing consultation services; consulting and advisory services in the field of marketing of educational training; consulting services in the field of higher education administration; marketing research services," in International Class 35;

 

"Financial research services," in International Class 36; - ADDED CLASS

 

"Medical training and teaching; Education services, namely, conducting programs in the field of {indicate subject matter}; Mentoring services in the field of {indicate subject matter}; medical training information, providing information about education and {indicate field or subject matter} mentoring, business training consultancy services, consultancy and advisory services in the field of K-12 educational systems relating to all the foregoing services; Providing on-line non-downloadable publications in the nature of {indicate specific publication, e.g., magazines, etc.} in the field of {specify subject matter or field, e.g., autism, etc.} and on-line non-downloadable instructional teaching materials in the field of {specify subject matter or field, e.g., autism, etc.}," in International Class 41; 

 

"Pharmaceutical research services; Development of computer software; Computer code conversion for others; IT consulting services; Testing of computer software; Computer security consultancy and assessments; Computer security threat analysis for protecting data; Computer and technical support services, namely, troubleshooting of computer software problems; Data migration services," in International Class 42; and

 

"Background research services," in International Class 45. – ADDED CLASS

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 9, 16, 35, 36, 41, 42 and/or 45.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

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).

 

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.

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS - Advisory

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b), Trademark Act Section 44 and/or Trademark Act Section 1(a):

 

(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 7 classes; however, applicant submitted a fee(s) sufficient for only 5 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

FILING BASIS – Required (maintained)

 

The trademark examining attorney maintains that applicant has not specified a filing basis in the application.  An application must specify and meet the requirements of at least one filing basis.  37 C.F.R. §§2.32(a)(5), 2.34(a); TMEP §806.  Accordingly, applicant must (1) amend the application to specify clearly at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted. 

 

An applicant may add one or more of the following four bases to an application after filing:

 

(1)        Use of the mark in commerce under Trademark Act Section 1(a);

 

(2)        A bona fide intention to use the mark in commerce under Section 1(b);

 

(3)        A foreign registration of the same mark for the same goods and/or services in an applicant’s country of origin, under Section 44(e); and/or

 

(4)        A claim of priority based on an earlier-filed foreign application of the same mark for the same goods and/or services, which is filed within six months after the filing date of the foreign application, under Section 44(d).

 

Although an applicant may assert more than one basis, an applicant may not assert both Section 1(a) for use and Section 1(b) for intent to use for identical goods and/or services.  37 C.F.R. §2.34(b); TMEP §806.02(b).

 

For more information about the different legal requirements for each basis, for submitting more than one basis, and for instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.

 

 

ATTORNEY BAR 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.

 

To provide bar information.  Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section.  See 37 C.F.R. §2.17(b)(1)(ii).  Bar information provided in any other area of the form will be viewable by the public in USPTO records.

 

Attorney email address required.  Applicant’s attorney must provide his or her email address for the record.  37 C.F.R. §2.32(a)(4).

 

 

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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

 

 

/Erin Z. Dyer/

Erin Zaskoda Dyer

Trademark Examining Attorney

Law Office 130/TM Innovation Lab

(571) 272-9740

erin.dyer@uspto.gov (preferred)

 

 

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 April 03, 2020 for

U.S. Trademark Application Serial No. 88098313

 

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. 

 

 

/Erin Z. Dyer/

Erin Zaskoda Dyer

Trademark Examining Attorney

Law Office 130/TM Innovation Lab

(571) 272-9740

erin.dyer@uspto.gov (prefer

 

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 April 03, 2020, 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.”