Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

This is a corrective office action.  The previous final action did not feature the examining attorney’s signature and contact information.  This information is included below.  This subsequent final action incorporates all evidence and attachments featured in the previous final action.

 

Issue date:  August 26, 2019

 

This Office action is in response to applicant’s correspondence filed on 07/23/2019.  The following refusal has been obviated: Specimen of Use.  TMEP §714.04.

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 3603660.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

FINAL REFUSAL - LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark was refused because of a likelihood of confusion with the mark in U.S. Registration No. 3603660.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

 

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.

 

In this case, the applied-for mark is LIVEWELL for “Downloadable digital magazine in the field of health, lifestyle, travel, art, trends, culture, food, news and current events, and other areas of general interest.”  The registered mark is LIVE WELL for “PUBLICATIONS AND PRINTED MATERIALS, NAMELY, PAMPHLETS, BROCHURES, AND POSTERS, FEATURING HEALTH INFORMATION RELATING TO PROMOTING POSITIVE LIFETIME HEALTH CHANGES.”

 

Comparison of Marks

 

The marks convey similar commercial impressions in that they share the nearly identical wording LIVEWELL and LIVE WELL, with such wording differing only in that the registered mark features a space between LIVE and WELL.  This slight difference is insufficient to distinguish to marks, as they feature two identical words – LIVE and WELL.

 

Comparison of Goods

 

The goods are similar in that they are types of publications.  In addition, applicant’s publications are in the field of, inter alia, “health.”  This subject matter encompasses the more specific types of health-related subject matter featured in the cited registration – i.e., health information relating to promoting positive lifetime health changes.  As such, the publications include legally identical subject matter.

 

Applicant contends that confusion is unlikely because it has deleted the Class 16 goods from its recitation.  However, as the attached Internet evidence featured in the previous final action shows, printed and electronic and/or downloadable publications are often provided by the same entities.  For example, Amazon features both electronic and print magazines.  As another example, magazines.com features subscriptions for downloadable magazines, as evidenced by the wording “After you subscribe to a digital magazine, you will receive email instructions on how to download the magazine’s app on your electronic device. From within the app you will set up or log into your account and your current issue should be waiting for you to read. As new issues are released, they will arrive on your device through your magazine app.”  Magazines.com also features print magazines.  In addition, FLIPHTML5 features examples of downloadable magazines, such as GQ.  GQ is also offered as a print publication, as evidenced by its website.

 

In the previous final action, the trademark examining attorney has also 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 goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely printed and downloadable publications, including magazines, pamphlets and brochures in various fields, including health, lifestyle and travels, 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).

 

Because the goods are often provided by the same entities, they are likely to be encountered by the same class of potential consumers.  Consumers who encounter nearly identical marks for similar or related goods are likely to be confused as to their source. 

 

For the foregoing reasons, the refusal to register the applied-for mark, pursuant to Section 2(d) of the Trademark Act, is continued and now made FINAL.

 

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.  

 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Melissa Vallillo/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 105

(571) 272-5891

melissa.vallillo@uspto.gov

 

 

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 August 26, 2019 for

U.S. Trademark Application Serial No. 88175246

 

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. 

 

 

/Melissa Vallillo/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 105

(571) 272-5891

melissa.vallillo@uspto.gov

 

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 August 26, 2019, 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.”