United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88227050
Mark: MYYOGATEACHER
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Correspondence Address:
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Applicant: MyYogaTeacher, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 10, 2019
This Office action is in response to applicant’s communication filed on September 16, 2019.
In a previous Office action dated March 15, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with registered marks. In addition, applicant was required to satisfy the following requirement: amend the identification of goods and services.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: definite amended identification provided. See TMEP §§713.02, 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 Nos. 3898912, 4493348, 4493349, and 4414713. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3898912, 4493348, 4493349, and 4414713. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registrations.
Applicant’s proposed mark is MYYOGATEACHER for use in connection with “Audio and video broadcasting services over the internet for one-on-one or group yoga instruction; streaming of video material on the internet related to one-on-one or group yoga; video-on-demand transmission services via the internet related to one-on-one or group yoga; teleconferencing and video conferencing services for one-on-one or group yoga instruction” in International Class 38 and “One-on-one or group yoga instruction; educational services, namely, conducting one-on-one or group classes in the field of yoga; providing a website that features information about one-on-one or group instruction on yoga; providing online training classes in the field of yoga, namely, one-on-one or group yoga classes; providing fitness instruction services in the field of yoga, namely, coordinating yoga instruction based on individual student needs; providing fitness instruction services in the field of yoga, namely, scheduling one-on-one or group yoga instruction with specialized instructors” in International Class 41.
The registered marks are:
U.S. Registration No. 3898912 – MY YOGA for use with “Downloadable video recordings featuring yoga, pilates, meditation, wellness and green-living” in International Class 9.
U.S. Registration No. 4493348 –
MY YOGA ONLINE (with a design) for use with “
Digital materials, namely, DVDs, CDs, Downloadable audio files and downloadable multimedia files featuring yoga, pilates, meditation, wellness and green-living; Digital media, namely, digital video
and audio recordings, pre-recorded video cassettes, digital video discs, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring yoga,
pilates, meditation, wellness and green-living; Downloadable video recordings featuring yoga, Pilates, meditation, and wellness instruction with audio instruction and with or without music via the
internet, wireless devices, mobile and TV applications” in International Class
9.
U.S. Registration No. 4493349 – MY YOGA ONLINE (with a design) for use with “Digital materials, namely, DVDs, CDs, Downloadable audio files and downloadable multimedia files featuring yoga, Pilates, meditation, wellness and green-living; Digital media, namely, pre-recorded video cassettes, digital video discs, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring yoga, Pilates, meditation, wellness and green-living; Downloadable video recordings featuring yoga, Pilates, meditation, and wellness instruction with audio instruction and with or without music via the internet, wireless devices, mobile and TV applications” in International Class 9.
U.S. Registration No. 4414713 – MY YOGAWORKS for use with “Providing on-line training and exercise routines in the field of yoga; Yoga instruction” in International Class 41.
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 this case, applicant’s mark is the standard character mark MYYOGATEACHER. The registered marks are the standard character mark MY YOGA, the composite marks MY YOGA ONLINE, and the composite mark MY YOGAWORKS. Applicant’s mark is highly similar to the registered marks in appearance, sound, and commercial impression.
Regarding U.S. Registration No. 3898912 (MY YOGA)
Applicant’s mark, MYYOGATEACHER, encompasses the entirety of registrant’s mark, MY YOGA. 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.
The compared marks begin with the identical wording “MY YOGA” save that applicant’s mark appears with no spacing between the words. 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”). Thus, consumers are more likely to focus on the wording “MY YOGA” when calling for both applicant’s and registrant’s goods and services.
Regarding U.S. Registration Nos. 4493348 and 4493349 (MY YOGA ONLINE)
The compared marks contain the identical wording “MY YOGA” save that applicant’s mark appears with no spacing between the words. Here, the difference in spacing in the compared does not obviate a likelihood because consumers with a general recollection of the marks are unlikely to recall or rely on this difference to distinguish between the goods and services. When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Additionally, the identical wording, “MY YOGA”, is the first element in the compared marks. Thus, consumers are more likely to focus their attention on the wording “MY YOGA” when calling for the goods and services.
Moreover, the design element in registrant’s marks does not obviate a likelihood of confusion. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Lastly, even if potential consumers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in appearance and commercial impression in the respective marks, that applicant’s services provided under the MYYOGATEACHER mark constitute a new or additional line from the same source as the goods provided under the registered marks MY YOGA ONLINE, and that applicant’s mark is merely a variation of the registered mark. See, e.g., SMS, Inc. v. Byn-Mar Inc. 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer's preexisting mark [ANDREA SIMONE] for its established line of clothing.”). Here, when taking into consideration the marks are similar in appearance and overall commercial impression, potential consumers could reasonably assume that applicant’s mark is a new product line provided under the registered marks.
Regarding U.S. Registration No. 4414713 (MY YOGAWORKS)
The compared marks contain the identical wording “MY YOGA” as such the marks are likely to engender a similar overall commercial impression of personalized yoga for the consumers. Additionally, the identical wording is also the first terms in the compared marks. Thus, consumers are more likely to focus their attention on the wording “MY YOGA” when calling for the goods and services.
Applicant’s mark appears in standard character font therefore it may appear in any stylized font, including one identical to registrant’s mark. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Furthermore, even if potential consumers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in appearance and commercial impression in the respective marks, that applicant’s services provided under the MYYOGATEACHER mark constitute a new or additional line from the same source as the services provided under the registered mark MY YOGAWORKS, and that applicant’s mark is merely a variation of the registered mark.
For the reasons mentioned above, when consumers encounter the parties’ goods and services using marks with these similarities, they are likely to be confused as to the source of the goods and services. Therefore, the marks are confusingly similar.
Comparison of the Goods and Services
The goods and 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).
In this case, applicant’s applied-for services are closely related to the registered goods and services because the same entity commonly provides various types of yoga instruction as well as provides related goods and services such as downloadable videos in the field of yoga instruction, broadcasting services in the field of yoga, and online yoga instruction under the same mark, and thus purchasers are likely to believe that the goods and services emanate from the same source.
Regarding U.S. Registration No. 4414713(MY YOGAWORKS)
Determining likelihood of confusion is based on the description of the goods and/or 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)).
In this case, the registration uses broad wording to describe “yoga instruction,” which presumably encompasses all services of the type described, including applicant’s more narrow “one-on-one or group yoga instruction; educational services, namely, conducting one-on-one or group classes in the field of yoga; providing online training classes in the field of yoga, namely, one-on-one or group yoga classes; providing fitness instruction services in the field of yoga, namely, coordinating yoga instruction based on individual student needs; providing fitness instruction services in the field of yoga, namely, scheduling one-on-one or group yoga instruction with specialized instructors.” 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). Thus, applicant’s and registrant’s identified services are 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)).
Additionally, the services of the parties have 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)). Thus, applicant’s and registrant’s services are related.
Regarding U.S. Registration Nos. 3898912, 4493348, 4493349, and 4414713
The attached Internet evidence, consisting of screenshots of websites, establishes that the same entity commonly provides the relevant goods and services, markets the goods and services under the same mark, and the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. For example, the evidence demonstrates that yoga studios commonly provide yoga instruction both in person and online as well as commonly provide downloadable yoga videos and live streaming yoga instruction videos under the same mark. Furthermore, the evidence demonstrates that the identified goods and services travel in the same channels of trade. Thus, applicant’s and registrants’ goods and 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).
See:
· http://www.yogadownload.com/
· http://join.yogadownload.com/retreat/
· http://yogainternational.com/classes
· http://yogawithadriene.com/30-days-yoga-download/
· http://www.doyogawithme.com/content/prana-4
· http://audibleyoga.com/free-yoga-classes-practice-anytime-any-place
· http://yourbuddhi.com/yoga-types/audio-downloads/
· http://www.breathandbodyyoga.com/audio-video-classes-free-meditations
· http://www.breathandbodyyoga.com/audio-video-classes-free-meditations-1
· http://mindbodyflowyoga.com/store/power-yoga-ignite/power-yoga-master-class-hd-download/
· http://mindbodyflowyoga.com/
· http://www.yogaanytime.com/mx/about-us
· http://www.yogaanytime.com/Yoga-Help/163/How-do-I-download-a-video-to-watch-it-offline
· http://www.hilltopyoga.com/classes/on-demand/
· http://www.hilltopyoga.com/classes/lansing/lansing-class-schedule/
· http://www.marycatherinestarr.com/audio-yoga-classes.html http://denisehopkinsyoga.com/category/audio-classes/
· http://denisehopkinsyoga.com/private-yoga/
· http://www.jamesfoulkes.com/node/49
· http://www.jamesfoulkes.com/node/12
The above mentioned evidence shows that purchasers are accustomed to encountering the goods and services of the applicant and the registrants offered under the same mark. Therefore, purchasers are likely to believe the goods and services emanate from the same source. Accordingly, the goods and services of applicant and registrants are considered related for purposes of the likelihood of confusion analysis.
Other Considerations
Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.
Applicant argues that the terms “YOGA” and “MY” are weak and thus any differences between the marks is enough to distinguish them. Additionally, applicant argues that the trademark marketplace is crowded in regards to “YOGA” marks on the register and thus source confusion is not likely when there are differences present in the marks. Specifically, applicant references numerous registrations that contain the term “YOGA”. These arguments are unpersuasive because although the term “YOGA” may be weak for use with yoga related goods and services, the identical wording in this case is not “YOGA” alone but the full wording “MY YOGA”. Here, the four cited registrations, U.S. Registration Nos. 3898912, 4493348, 4493349, and 4414713, are the only four registered marks for closely related goods and services on the register that contain the wording “MY YOGA”. Thus, applicant has failed to show that the wording “MY YOGA” is weak in regards to yoga related goods and services.
Applicant argues that the addition of the term “TEACHER” differentiates the marks in sight, sound and meaning. The additional term “TEACHER” in applicant’s mark does not obviate a likelihood confusion when all of the compared marks contain the identical wording “MY YOGA” for related goods and services. Specifically, adding a term to a registered mark generally 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 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 and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). Thus, the marks are identical in part. Here, the compared marks are still likely to evoke a similar commercial impression of personalized yoga whether performed “online” or from a “teacher.”
Additionally, applicant argues that the spacing difference between the marks helps to differentiate the marks such that confusion is not likely to occur. This argument is unpersuasive. Here, the compared marks still contain the identical wording “MY YOGA” and the difference in spacing does not obviate a likelihood because consumers with a general recollection of the marks are unlikely to recall or rely on this difference to distinguish between the goods and services. When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Applicant argues that its deletion of its Class 9 goods obviates the relatedness of the Class 9 goods for U.S. Registration Nos. 3898912, 4493348, and 4493349. This argument is unpersuasive because as the above evidence demonstrates applicant’s Class 38 streaming services and Class 41 yoga instruction services are commonly provided in relation to registrant’s Class 9 downloadable yoga videos and recordings goods. Furthermore, the compared goods and 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).
Lastly, applicant argues that consumers would be able to distinguish applicant’s services from that of registrant’s services for U.S. Registration No. 4414713 (MY YOGAWORKS) because the market for “yoga” instruction marks is saturated. This argument is unpersuasive because applicant fails to address that the shared wording is “MY YOGA” and not “YOGA” alone and thus has not shown the shared wording is weak for yoga instruction services. As the above mentioned evidence demonstrates the services of applicant and registrant are legally identical in part and closely related.
Conclusion
The overriding concern is not only to prevent buyer confusion as to the source of the goods and services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Because the marks are highly similar and the goods and services are closely related, there is a likelihood of purchaser confusion as to the source of the goods and services. Therefore, registration is refused under Section 2(d) of the Trademark Act. 15 U.S.C. §1052(d).
This refusal is hereby 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)
/Geraldine Ingold/
Trademark Examining Attorney
Law Office 121
(571) 272 - 5076
Geraldine.Ingold@uspto.gov
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