To: | GREAT HEALTHWORKS, INC. (trademarks@GREATHEALTHWORKS.COM) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88227876 - XL - N/A |
Sent: | 3/14/2019 11:33:55 AM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88227876
MARK: XL
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: GREAT HEALTHWORKS, INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 3/14/2019
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.
Specifically, applicant must address the following issues:
Refusal – Likelihood of Confusion
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.
NOTE: The following cited registrations are only cited against applicant’s services in International Class 041: 5650598, 5650895, and 2984177.
The following cited registration is only cited against applicant’s services in International Class 038: 4847012.
U.S. Registration No. 3976569 is cited against applicant’s services in both classes.
Comparing 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).
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).
Here, applicant’s mark is “XL” in standard characters; registrants’ marks are:
· 3976569 – “XL RECORDINGS” and a square carrier with a disclaimer of “RECORDINGS”;
· 5650598 – “NYXL” in standard characters;
· 5650895 – “NYXL” in stylized characters;
· 2984177 – “XXL” in standard characters; and
· 4847012 – “XLTE” in stylized characters.
The marks are similar because they all share the “XL” portion of the marks, which comprises the entirety of applicant’s mark. Where the other marks have additional matter, the other matter is of lesser importance as far as conveying source significance. For instance, in the “NYXL” marks, the “NY” portion is likely to be perceived as indicating New York, so consumers may assume that the “XL” mark is the parent company of the New York version. Applicant’s mark adds nothing to the “XL” portion of the marks to differentiate it from the other “XL”-formative marks, which are each differentiated from each other by the additional matter.
Thus, when comparing the marks as a whole, the overall impression is that of highly similar marks.
Comparing the Services
Here, applicant’s services are listed as:
International Class 038: Broadcasting of video and audio programming over the Internet; Internet broadcasting services; Simulcasting broadcast television over global communication networks, the Internet and wireless networks; Video broadcasting services via the Internet.
International Class 041: Entertainment, namely, a continuing variety, news, comedy, and other programing show broadcast over wireless communication networks, the internet, over the top media.
The registrants’ services are listed as:
· 3976569 – (“XL RECORDINGS”) various recordings and blank recording media in International Class 009; “Delivery of digital music and sound recordings by electronic transmission by means of remote computers and on-line from databases and from facilities provided on the Internet, wireless networks, and websites; Providing access to digital music websites on the Internet; Providing access to MP3 music websites on the Internet; Delivery of digital music by electronic transmission” in International Class 038; and “Entertainment services, namely, live musical performances, live music concerts, and concert booking; providing a website over a global computer network featuring entertainment information on musical recordings and on musical artists and their recordings and providing links to the websites of others featuring prerecorded music, musical based entertainment, musical artists and their recordings; Entertainment services, namely, providing information, news and commentary in the field of entertainment; Organizing of concerts, namely, arranging and conducting of concerts and live musical performances; Distribution of audio and visual entertainment, namely, of motion pictures, television shows, movies, and films featuring audio recordings, music, concerts, live musical performances, band interviews, music documentaries, musician interviews; musician interviews, all by means of multimedia, remote computers or on-line from databases, or from facilities provided on the Internet and websites; Providing non-downloadable pre-recorded music, providing non-downloadable pre-recorded music videos, providing information in the field of music, and commentary and articles about music, all online via a global computer network, Providing an Internet website portal in the field of music; Entertainment information services; Providing information in the field of entertainment, namely, music, music concerts, musical performances, live concerts, Music services, namely, providing online entertainment, namely, providing non-downloadable prerecorded sound and audio-visual recordings in the field of music and musical based entertainment; Providing an Internet website portal in the field of music featuring non-downloadable music, musical sound recordings, musical video recordings, concerts, live musical performances, concerts, and musician interviews, and motion picture films about bands and musicians; Providing non-downloadable digital music via MP3 and digital music websites on the Internet and wireless networks; Providing non-downloadable digital music via the Internet and wireless networks” in International Class 041.
· 5650895 – (“NYXL”) “Entertainment services, namely, arranging and conducting of entertainment shows, competitions, exhibitions and performances in the field of video and computer games; Entertainment services, namely, multimedia programming in the field of video gaming provided through television and the Internet” in International Class 041.
· 2984177 – (“XXL”) “Arranging and conducting athletic events relating to surfing, namely, surfing contests related to big wave riding; entertainment in the nature of surfing competitions and surfing awards; organizing and conducting surf contests; production of surfing television programs and surfing programs that may be viewed on the internet; entertainment in the nature of a continuing television program concerning the sport of surfing; providing information on surfing and surfing-relating subjects via a global computer network” in International Class 041.
· 4847012 – (“XLTE”) “Wireless broadband communications services; telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of wireless communications networks; wireless communications services, namely, wireless telephone services, wireless broadband communication services, and transmission of voice, audio, visual images and data by wireless communication networks; transmission of voice, data, graphics, sound and video by means of wireless broadband communication services” in International Class 038.
In this case, the applicant’s broadcasting services involve broadcasting over the internet or wireless communications networks. The registrations in U.S. Registration Nos. 3976569 and 4847012 involve transmitting over the internet. All parties are therefore using the internet as a means to provide telecommunications services. As such, the services are overlapping with regard to International Class 038.
In International Class 041, the application uses the broad wording “other programming” to describe its services, which presumably encompasses all types of shows, including the registrants’ more narrowly listed services. 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 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)).
Each of the registrations involves programs or shows on particular topics. Applicant’s overly broad topic would include the topics listed by the registrants.
Thus, applicant’s services are highly related to registrants’ services for the classes indicated above.
Conclusion
In sum, for the reasons stated above, registration is refused because of a likelihood of confusion with the registered marks.
Requirement – Identification
All identifications must be precise and identify the services with particularity using common or commercial names for the services. TMEP §1402.01.
Current Identification
Applicant’s current identification reads (applicant should note that the wording requiring amendment, as discussed further below, has been highlighted in bold font):
International Class 038: Broadcasting of video and audio programming over the Internet; Internet broadcasting services; Simulcasting broadcast television over global communication networks, the Internet and wireless networks; Video broadcasting services via the Internet.
International Class 041: Entertainment, namely, a continuing variety, news, comedy, and other programing show broadcast over wireless communication networks, the internet, over the top media.
The identification is unacceptable as presently worded because certain services are worded indefinitely, need clarification and/or have been misclassified. In the identification, applicant must use the common commercial or generic names for the services, be all-inclusive, as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant chooses to use indefinite terms, then such terms must be followed by the word "namely" and a list of the specific services identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a).
Specifically, the applicant’s listing of the type of shows being “other programming” is overly broad and does not possess the particularity required by the Office. Applicant must indicate the general type of show provided with greater specificity.
Additionally, the wording “over the top media,” as shown by the attached evidence, may indicate a type of internet broadcasting. This wording is not found in the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual, and is not considered to indicate a specific service. See TMEP §1402.04.
Suggested Amendment
Applicant may adopt the following identification, if accurate (applicant should note that the suggested amended language appears in bold font, and that the applicant must supply the requisite information detailed within the brackets {} and then delete the brackets and the informational matter within):
International Class 038: Broadcasting of video and audio programming over the Internet; Internet broadcasting services; Simulcasting broadcast television over global communication networks, the Internet and wireless networks; Video broadcasting services via the Internet.
International Class 041: Entertainment, namely, a continuing variety, news, comedy, and ______ {specify any other type of show intended by common or commercial name or by describing it in greater detail, e.g., reality} show broadcast over wireless communication networks, and the internet.
Limitation on Amendments
While an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.71(a); TMEP §1402.06. Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.” This rule applies to all applications.
Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.
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.
Response Guidelines
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant has questions about the application or this Office action, please contact the assigned trademark examining attorney at the telephone number or email address below. Applicant is encouraged to contact the examining attorney via email or telephone to make required changes to the application through an examiner’s amendment.
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
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.
/Andrea Hack/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 108
571-272-5413 (ph.)
andrea.hack@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.