United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88207186
Mark: FIRST THING
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Correspondence Address: 8280 GREENSBORO DRIVE, SUITE 140
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Applicant: American Bible Society
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: October 14, 2020
All previous arguments and evidence are incorporated by reference herein.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark, (“FIRST THING”), is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 6125273 (“FIRST THINGS”) and 2665807 (“FIRST THINGS FIRST”), and 5296291 (“FIRST THINGS FIRST”). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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 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 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
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).
In this case, the applied-for mark is “FIRST THING” (standard characters) and the registered marks are “FIRST THINGS” (plus design), “FIRST THINGS FIRST” (typed drawing), and “FIRST THINGS FIRST” (plus design).
The applied-for mark, “FIRST THING” (standard characters), is similar to the registered mark, “FIRST THINGS” (plus design), because the applied-for mark is merely the singular form of the wording in the registered mark. An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar. Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark). Based on the foregoing, the marks are similar.
The applied-for mark, “FIRST THING” (standard characters), is also similar to the registered marks “FIRST THINGS FIRST” (typed drawing) and “FIRST THINGS FIRST” (plus design) because it is entirely incorporated within the registered marks. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part. Based on the foregoing, the marks are similar.
Relatedness of the Services
In this case, the applicant identifies its services as follows:
- Promoting public awareness of the importance of daily Bible engagement; Promoting public awareness of the importance of daily Bible engagement through mobile, television, and online advertising; Promoting public awareness of the importance of daily Bible engagement through social media; Promoting public awareness of the importance of daily Bible engagement to military members and their families, multi-lingual communities, immigrants, prisoners, members of Christian denominations, and the general public
Registrants identify their services as follows:
- Reg. No. 2665807 - development and dissemination of educational materials of others in the field of strengthening and promoting family values, fathering skills, marriage and premarital sexual abstinence; educational services, namely conducting seminars, conferences and workshops in the field of strengthening and promoting family values, fathering skills, marriage and premarital sexual abstinence, and distributing course materials in connection therewith
- Reg. No. 5296291- development and dissemination of educational materials of others in the field of strengthening and promoting family values, fathering skills, healthy marriage and benefits of premarital education; educational services, namely, conducting seminars, conferences and workshops in the field of strengthening and promoting family values, fathering skills, marriage education and premarital education, teen healthy dating relationship skills and parenting education and distributing course materials in connection therewith
- Reg. No. 6125273 - Education services, namely, providing mentoring, tutoring, classes, seminars and workshops in the field of the origins of the universe, the world, and life; Providing a website featuring academic information in the field of biblical worldview education for the purpose of academic study
The attached Internet evidence from FocusOnTheFamily.com, FamilyLife.com, and LoveAndRespect.com establishes that the same entity commonly provides the relevant or similar services and markets the services under the same mark and/or that the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrants’ 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).
Conclusion
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
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 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.
/Jacquelyn A. Jones/
Jacquelyn A. Jones
Examining Attorney
Law Office 120
571-272-4432
jacquelyn.jones@uspto.gov
RESPONSE GUIDANCE