To: | PHABS, LLC (rebecca@brandaulaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88172084 - POWER UP - PHA-002 |
Sent: | 2/10/2019 9:02:44 AM |
Sent As: | ECOM127@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88172084
MARK: POWER UP
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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: PHABS, LLC
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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: 2/10/2019
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES TO CLASS 41 ONLY
Applicant’s mark is POWER UP for, in relevant part, and as amended, “Athletic and sports event services, namely, arranging, organizing, operating and conducting instructional bicycle and triathlon clinics and camps; Education services, namely, providing mentoring, coaching, classes, seminars and workshops in the fields of cycling and triathlons; one-on-one coaching in the fields of bicycle riding, bicycle racing, running, swimming and triathlons; Personal fitness training services and consultancy; Personal training services, namely, strength and conditioning training, cycling training, and triathlon training; Physical testing in the nature of physical fitness assessment services, namely, determining lactate levels, heart rate, maximal oxygen consumption, cycling strength and power of individual athletes; Physical fitness consultation; physical fitness instruction; Physical fitness studio services, namely, providing group exercise instruction, providing equipment, providing facilities and providing group fitness classes; Physical fitness training of individuals and groups; Providing information on physical exercise, namely exercises specifically tailored toward enhancing cycling skills and performance, enhancing running skills and performance, and enhancing swimming skills and performance” in Class 41.
The registered marks are:
1) The mark in U.S. Registration No. 4547751, POWER UP, for “Providing an incentive award program for participants in indoor cycling classes that enables cyclists to earn rewards based on their performance and achievements in cycling classes” in Class 41.
2) The mark in U.S. Registration No. 5583166, POWER DOWN. POWER UP. POWER FORWARD., for, in relevant part, “Teaching and conducting in-studio and off-site classes, seminars, workshops, events and retreats in the fields of health, physical fitness and meditation; Life coaching relating to physical fitness, health and wellness; Meditation training” in Class 41.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
SIMILARITY OF THE MARKS
In the present case, applicant’s mark is POWER UP and the mark in U.S. Registration No. 4547751 is POWER UP. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective services. Id. Therefore, the marks are confusingly similar.
In this case, applicant’s mark and the mark in U.S. Registration No. 5583166 share the common POWER UP / POWER UP. wording. Because this shared wording gives rise to a similar commercial impression when considered in connection with applicant’s and registrant’s services, the marks are considered similar for purposes of the likelihood of confusion analysis.
Because applicant’s mark and registrants’ mark share identical wording and create a similar commercial impression, the marks are confusingly similar.
RELATEDNESS OF THE SERVICES
Based on the analysis above, applicant’s and registrants’ services are related.
Therefore, because the marks are confusingly similar and the services are closely related, purchasers encountering these services are likely to believe that they emanate from a common source. Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of the Trademark Act.
Although applicant’s mark has been partially refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.
ADVISORY: PRIOR-FILED APPLICATIONS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
RESPONSE GUIDELINES
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.
/Evelyn Kelley/
Evelyn Kelley
Law Office 127
(571)270-7321
evelyn.kelley@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.