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. 

 

 

ISSUE DATE:  October 11, 2019

 

PREVIOUS OFFICE ACTION / RESPONSE:  This Office action is in response to applicant’s communication filed on August 22, 2019.

 

In a previous Office action February 22, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  (1) Prior-Filed Application, and (2) Section 2(d) Refusal – Likelihood of Confusion.  Applicant was also required to satisfy the following requirements: (1) Information Required – Significance of the Mark, and (2) Amendment Required – Identification of Services in International Class 41.

 

The trademark examining attorney notes that, based on applicant’s response, the following requirement has been satisfied: (1) Information Required – Significance of the Mark, and (2) Amendment Required – Identification of Services in International Class 41.  See TMEP §§713.02, 714.04. 

 

The following refusal has also been withdrawn:  Prior-Filed Application.  See TMEP §§713.02, 714.04. 

 

SUMMARY OF ISSUES MADE FINAL:  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.

 

• Section 2(d) Refusal – Likelihood of Confusion – Services in International Class 41 Only

 

 

I.                SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – SERVICES IN INTERNATIONAL CLASS 41 ONLY

 

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. 5204737.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

The Marks

 

The applied-for mark is BLAZE, in standard characters, for in relevant part “Day camp services for children to assess and promote development of children’s resilience, grit, emotional intelligence, and ability to succeed; Holiday camp services for children to assess and promote development of children’s resilience, grit, emotional intelligence, and ability to succeed; Educational services, namely, conducting classes, seminars, conferences, workshops, retreats, camps, and field trips in the fields of art music, science, technology, mathematics, literature, social studies, dance, history, foreign languages, culture, and children’s education” in International Class 41.

 

The registered mark is BLAZE, in standard characters, for “Fitness boot camps; Business training; Consulting services in the fields of fitness and exercise; Personal fitness training services; Personal fitness training services and consultancy; Personal fitness training services featuring aerobic and anaerobic activities combined with resistance and flexibility training; Personal training services, namely, strength and conditioning training and speed training; Personal trainer services; Physical fitness consultation; Physical fitness training of individuals and groups; Physical fitness training services; Providing a website featuring information on exercise and fitness; Providing information in the field of exercise training; Providing personal fitness training for firefighters; Providing personal training and physical fitness consultation to corporate clients to help their employees make physical fitness, strength, conditioning, and exercise alterations in their daily living; Providing personal training and physical fitness consultation to individuals to help them make physical fitness, strength, conditioning, and exercise improvement in their daily living; Sports training services” in International Class 41.

 

Likelihood of Confusion Analysis

 

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 parties’ services.  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 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.  Each of these factors is addressed in the sections below.

 

Similarity of the Marks

 

The applied-for mark BLAZE is identical to the registered mark BLAZE, which weighs in favor of a likelihood of confusion.

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

The applied-for mark and the registered mark in this case are both BLAZE.  The 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.  The marks are thus confusingly similar. 

 

Additional, where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

Relatedness of the Services

 

Applicant’s services are related to registrant’s services, which weighs in favor of a likelihood of confusion.

 

The 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).  Likelihood of confusion is based on the description of the 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 registration in this case use broad wording to describe “fitness boot camps”, which presumably encompasses all services of that type, including applicant’s narrower “day camp services for children to assess and promote development of children’s resilience, grit, emotional intelligence, and ability to succeed” and “holiday camp services for children to assess and promote development of children’s resilience, grit, emotional intelligence, and ability to succeed.”  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).  The attached evidence from WarriorFitnessBootCamp.com and FreakinCrossfit.com shows that “fitness boot camps” include “day camps for children” and “holiday camps for children”, even those intended to “assess and promote development of children’s resilience, grit, emotional intelligence, and ability to succeed.”  Warrior fitness boot camp, for example, markets its day-long fitness boot camps for children as promoting “[s]trong emotional well-being, positive outlook on life, possible link to better academics (increased concentration and focus), making friends, and learning about teamwork.”  Applicant’s and registrant’s overlapping services are thus legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

The registrant’s services have, moreover, 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)).  Applicant’s and registrant’s overlapping services are therefore related.

 

Applicant’s services are also related to registrant’s services because of the way that these services are marketed and sold.  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 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 previously attached evidence from ToadalFitness.com, TNTKidsFitness.org, CooperAerobics.com, SpaDreams.com, HealthAndFitnessTravel.com, CabareteFitnessCamp.com, and FaySummer.org, as well as the newly attached evidence from WarriorFitnessBootCamp.com, FreakinCrossFit.com, FrostValley.org, FrenchWoods.com, and HiddenValleyCamp.com, shows that “day camp services for children” and “holiday camp services for children”, including such services intended to “assess and promote development of children’s resilience, grit, emotional intelligence, and ability to succeed”, are commonly marketed and sold from the same sources, under the same brands or marks, as the services identified in the registration, e.g. “fitness boot camps”, “physical fitness training services”, and “sports training services.” Warrior Fitness Boot Camp, for example, offers both fitness day camps for children, as well as other kinds of “fitness boot camps” and “physical fitness training services”, all under the Warrior Fitness Boot Camp brand name.  The Frost Valley YMCA similarly offers “day camp services for children”, “holiday camp services for children”, and “physical fitness training services”, all under the Frost Valley YMCA brand name.  The same evidence shows, further, that “educational services, namely, conducting classes, seminars, conferences, workshops, retreats, camps, and field trips in the fields of art music, science, technology, mathematics, literature, social studies, dance, history, foreign languages, culture, and children’s education”, are also commonly marketed and sold from the same sources, under the same brands or marks as the services identified in the registration, e.g. “physical fitness training services”, and “sports training services.”  French Woods, for example, offers educational services such as class in variety of fields, e.g. computers, technology, science, and dance, as well as “physical fitness training services” and “sports training services”, all under the French Woods brand name.

 

Applicant argues in its response that its camp services and educational services are unrelated to registrant’s services, e.g. “physical fitness training services” and “sports training services”, because “[r]egistrant’s services relate to fitness training only, with the goal of producing ‘excellent athletes’.”  Applicant’s argument is not persuasive, however, as it artificially narrows the scope of registrant’s services based upon extrinsic evidence.  Likelihood of confusion, as previously explained, is based on the description of the 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)).  Registrant’s services, e.g. “physical fitness training services” and “sports training services”, are therefore presumed to encompass all services of those types, and to be provided to all classes of consumers, irrespective of registrant’s alleged “goal.”  The previously cited evidence shows, moreover, that applicant’s camp services and educational services both overlap with, and are commercially related to, the services identified in the registration.

 

Applicant’s services are, in light of the foregoing, related to registrant’s services for likelihood of confusion purposes.

 

Conclusion

 

The marks BLAZE and BLAZE are identical and thus confusingly similar, when those marks are considered in their entireties.  Applicant’s services are also related to the services identified in the registration.  Registration for the applied-for mark is therefore refused under Section 2(d) of the Trademark Act because of a likelihood of confusion with the mark in U.S. Registration No. 5204737.

 

 

RESPONSE GUIDELINES

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following services to which the final refusal applies will be deleted from the application by Examiner’s Amendment:

 

“Day camp services for children to assess and promote development of children's resilience, grit, emotional intelligence, and ability to succeed; Holiday camp services for children to assess and promote development of children's resilience, grit, emotional intelligence, and ability to succeed; Educational services, namely, conducting classes, seminars, conferences, workshops, retreats, camps, and field trips in the fields of art music, science, technology, mathematics, literature, social studies, dance, history, foreign languages, culture, and children's education” in International Class 41.

 

  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following services only:

 

“Charitable fundraising” in International Class 36.

 

“Boarding house services” in International Class 43. 

 

See id.

 

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

 

• Missing the response deadline to this letter will cause the application to partially 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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.  

 

/Carl A. Konschak/

Carl A. Konschak, Esq.

Examining Attorney

Law Office 126

(571) 270-3878

carl.konschak@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 11, 2019 for

U.S. Trademark Application Serial No. 88197714

 

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. 

 

 

/Carl A. Konschak/

Carl A. Konschak, Esq.

Examining Attorney

Law Office 126

(571) 270-3878

carl.konschak@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 October 11, 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.”