UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 3/1/2019

 

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.

 

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion
• Identification of Services Requirement
• Partial Abandonment Advisory

 

Section 2(d) Refusal – Likelihood of Confusion

 

This refusal applies only to the following services in International Class 41:  Business education and training services, namely, developing customized in-company leadership and executive development programs, providing executive coaching services, and providing public and in-company keynote presentations to business leaders; Business training; Business training consultancy services; Consulting services in the field of leadership and professional development training; Educational and entertainment services, namely, providing motivational and educational speakers in the field of self- and personal improvement; Educational and entertainment services, namely, providing motivational speaking services in the field of leadership and professional development; Educational and entertainment services, namely, providing motivational speaking services in the field of faith and spirituality; Educational services, namely, conducting live and on-line classes, seminars, workshops, conferences, retreats, non-downloadable webinars, webcasts, video presentations, podcasts and panel discussions in the fields of business, leadership development, professional and personal development, public speaking, self-help, inspiration, faith and spirituality and distribution of training materials in connection therewith 

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5140841.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Applicant’s mark is “JULIET” for the previously referenced services in Class 41.  The registered mark is “JULIET SOCIETY” for Education and entertainment services, namely, arranging, organizing, conducting, and hosting social entertainment and educational events featuring luncheons with speakers in the fields of financial planning, investment strategies, portfolio management, retirement planning, healthcare planning, estate planning, business, and social and cultural issues of national, international and local significance; Education and entertainment services, namely, providing motivational and educational speakers; Arranging, organizing, conducting, and hosting social entertainment and educational events.

 

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 the 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).

 

In the present case, both marks contain the term “JULIET”.  The registered mark also contains the term “SOCIETY”.  However that term has been disclaimed.  Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  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 addition, consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

Comparison of the Services

 

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).

 

In the present case, applicant’s services are overlapping and related to the services identified by the registrant.  Applicant’s business education and training, business training, business training consultancy, consulting in the field of leadership and professional development training, motivational and educational speakers, and education services overlap with the education events in the field of business and the motivational and educational speakers.  The registrant has also identified arranging, organizing, conducting and hosting educational events, which could include the educational services identified by applicant.  Thus, applicant’s services would be encountered circumstances that would lead to the mistaken belief that the services originate from the same source. 

 

Since applicant’s mark is similar to the registered mark and the identified services are overlapping and related, there is a likelihood of confusion with regard to the source of applicant’s services.  Therefore, registration is refused under Section 2(d) of the Trademark Act for the Business education and training services, namely, developing customized in-company leadership and executive development programs, providing executive coaching services, and providing public and in-company keynote presentations to business leaders; Business training; Business training consultancy services; Consulting services in the field of leadership and professional development training; Educational and entertainment services, namely, providing motivational and educational speakers in the field of self- and personal improvement; Educational and entertainment services, namely, providing motivational speaking services in the field of leadership and professional development; Educational and entertainment services, namely, providing motivational speaking services in the field of faith and spirituality; Educational services, namely, conducting live and on-line classes, seminars, workshops, conferences, retreats, non-downloadable webinars, webcasts, video presentations, podcasts and panel discussions in the fields of business, leadership development, professional and personal development, public speaking, self-help, inspiration, faith and spirituality and distribution of training materials in connection therewith.

 

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 Services

 

The wording in the identification of services is indefinite and must be clarified by specifying that the webinars are non-downloadable and that the discussions are panel discussions.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  

 

Class 35:  Business consultation in the field of education leadership development; Business consulting services in business leadership development and business management; Management consulting and advisory services in the areas of corporate growth strategy, innovation and growth processes, organizational transformation, and talent management and development strategies; Preparing advertisements for others, namely, preparing video advertising and promotional videos for commercial use via the internet and television, digital cable and video-on-demand or download; Producing promotional videotapes, video discs, and audio visual recordings; Providing voice overs for commercials

 

Class 41:  Business education and training services, namely, developing customized in-company leadership and executive development programs, providing executive coaching services, and providing public and in-company keynote presentations to business leaders; Business training; Business training consultancy services; Consulting services in the field of leadership and professional development training; Educational and entertainment services, namely, providing motivational and educational speakers in the field of self- and personal improvement; Educational and entertainment services, namely, providing motivational speaking services in the field of leadership and professional development; Educational and entertainment services, namely, providing motivational speaking services in the field of faith and spirituality; Educational services, namely, conducting live and on-line classes, seminars, workshops, conferences, retreats, non-downloadable webinars, webcasts, video presentations, podcasts and panel discussions in the fields of business, leadership development, professional and personal development, public speaking, self-help, inspiration, faith and spirituality and distribution of training materials in connection therewith; Life coaching services in the field of self-help and personal development; Life coaching services in the field of faith and spirituality; Production and distribution of videos in the field of leadership and professional development; Production and distribution of videos in the field of self-help and personal development; Production and distribution of videos in the field of faith and spirituality; Providing a website featuring non-downloadable videos in the field of leadership and professional development; Providing a website featuring non-downloadable videos in the field of self-help and personal development; Providing a website featuring non-downloadable videos in the field of faith and spirituality; Providing group coaching in the field of leadership and professional development; Providing group coaching in the field of self-help and personal development; Providing voice overs for tapes, records and other recorded media for entertainment and education purposes; Writing of articles for professional journals other than for advertising or publicity

 

Class 45:  Providing faith-based devotionals via social networks; Providing on-line information in the field of spirituality, self-help, and personal empowerment subject matters; Providing spiritual and philosophical guidance in the field of self-help and personal development; Providing spiritual and philosophical guidance in the field of faith and spirituality; Religious and spiritual services, namely, providing gatherings and retreats to develop and enhance the spiritual lives of individuals; Spiritual consultation

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

Partial Abandonment Advisory

 

If applicant does not respond to this Office action within the six-month period for response, the following services in International Class 41 will be deleted from the application:  Business education and training services, namely, developing customized in-company leadership and executive development programs, providing executive coaching services, and providing public and in-company keynote presentations to business leaders; Business training; Business training consultancy services; Consulting services in the field of leadership and professional development training; Educational and entertainment services, namely, providing motivational and educational speakers in the field of self- and personal improvement; Educational and entertainment services, namely, providing motivational speaking services in the field of leadership and professional development; Educational and entertainment services, namely, providing motivational speaking services in the field of faith and spirituality; Educational services, namely, conducting live and on-line classes, seminars, workshops, conferences, retreats, non-downloadable webinars, webcasts, video presentations, podcasts and panel discussions in the fields of business, leadership development, professional and personal development, public speaking, self-help, inspiration, faith and spirituality and distribution of training materials in connection therewith.  The application will then proceed with the remaining services in International Class 41, and the services in International Classes 35 and 45.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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.  

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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. 

 

/Tara J Pate/

Office of the Deputy Commissioner for Trademark Examination Policy

(571)272-4714

tara.pate@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/1/2019 FOR U.S. APPLICATION SERIAL NO. 88199814

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification. 

 

(2)  Respond within 6 months (or sooner if specified in the Office action), calculated from 3/1/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Tara J Pate/

Office of the Deputy Commissioner for Trademark Examination Policy

(571)272-4714

tara.pate@uspto.gov

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp. 

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.