To: | Dream Crew Management (robert@commonsensecounsel.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88291974 - IN ASSOCIATION WITH THE BOY - N/A |
Sent: | 4/23/2019 2:26:58 PM |
Sent As: | ECOM113@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88291974
MARK: IN ASSOCIATION WITH THE BOY
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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: Dream Crew Management
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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: 4/23/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) – LIKELIHOOD OF CONFUSION REFUSAL-IN-PART AS TO CLASS 43
In this case, applicant has applied to register the mark “IN ASSOCIATION WITH THE BOY” for use in connection with “Bar services; Coffee and tea bars; Hotels; Restaurant and café services.”
The mark in Registration No. 2929162 is “THE BOYS” used in connection with, in pertinent part, “restaurants; and restaurant services, namely, a server of food and beverages,” among other services.
Introduction to Section 2(d) 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 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 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 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)); TMEP §1207.01(b).
Here, applicant’s mark, “IN ASSOCIATION WITH THE BOY”, is confusingly similar to the registered mark “THE BOYS”, in sound, appearance, and overall commercial impression. Specifically, the marks sound and appear similar in that they share similar phrases “THE BOY” and “THE BOYS”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
In this case, the similar phrases share similar meanings which leave consumers with the same overall commercial impression. Specifically, both “THE BOY” and “THE BOYS” leave similar commercial impressions of particular male adolescent(s). 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). Thus, the fact that one of the phrases appears in pluralized form does not obviate the similarities of the marks.
Additionally, though the applied-for mark contains the added phrase “IN ASSOCIATION WITH”, this added phrase does not obviate the similarities of the marks because it merely indicates who the applied-for goods and services are connected with. See http://www.ahdictionary.com/word/search.html?q=association. Thus, the addition of the phrase “IN ASSOCIATION WITH” to “THE BOY” as in “IN ASSOCIATION WITH THE BOY” does not obviate the similarities of the marks because it merely indicates the goods and services are offered or made in connection with “THE BOY”.
Ultimately, when purchasers call for the services of applicant and registrant using “IN ASSOCIATION WITH BOY” and “THE BOYS”, they are likely to be confused as to the sources of those services by the similarities between the marks. Thus, the marks are confusingly similar.
Relatedness of the Services
Determining 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)).
In this case, the application and registration both identify the following services which is identical: “restaurant services.” Next, registrant’s identification uses broad wording to “restaurants; and restaurant services, namely, a server of food and beverages”, which presumably encompasses all services of the type described, including registrant’s more narrow “Bar services; Coffee and tea bars” as services that involve services beverages. 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). Conversely, applicant’s hotel services are broad and encompass registrant’s more narrow restaurant services in that hotels commonly offer the services of food and drink in the hotel premises. See Id; See also http://www.merriam-webster.com/dictionary/restaurant (showing restaurant services are defined as “business establishment where meals or refreshments may be purchased”) and http://www.trumphotels.com/washington-dc/dining/dc-dining, http://ilovethejw.com/dining/in-room-dining, http://www.hiltonbonnetcreek.com/dining/in-room-dining (showing Trump Hotel, JW Marriott, and Hilton are hotel business establishments that offer in-room dining services under the same mark). 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)).
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.
Ultimately, because the marks are confusingly similar and the services are closely related, it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the services of the applicant and registrant. Therefore, registration must be refused under Section 2(d).
Response to Section 2(d) – Likelihood of Confusion Refusal-In-Part
(1) Deleting the classes to which the refusal pertains, keeping in mind the advisory regarding the potential Section 2(d) Refusal-in-Part as to Classes 16 and 25 in the application; or
(2) Filing a request to divide out the goods and or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
ADVISORY: POTENTIAL SECTION 2(d) REFUSAL-IN-PART AS TO CLASSES 16 AND 25 – TWO PRIOR PENDING APPLICATIONS
The filing date of pending U.S. Application Serial Nos. 88143186 and 88143156 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
While applicant is not required to respond to the issue of the pending application, applicant must respond to this Office Action within six months of the mailing date to avoid abandonment.
Applicant should note the following additional ground for refusal.
SECTION 2(c) REFUSAL- MARK IDENTIFIES A PARTICULAR LIVING INDIVIDUAL
Registration is refused because the applied-for mark consists of or comprises the name of a particular living individual whose written consent to register the mark is not of record. Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §1206; see In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1649-50 (TTAB 2015); In re Hoefflin, 97 USPQ2d 1174, 1175-76 (TTAB 2010). Specifically, the attached evidence indicates the phrase “THE BOY” identifies Aubrey Drake Graham, the musical artist known as Drake. See http://medium.com/@ralphyc/drake-formerly-known-as-the-boy-transforms-into-hip-hops-number-one-man-with-newest-two-sided-d24d96baaa26, http://www.reddit.com/r/donaldglover/comments/36fj2r/drake_is_the_boy/, http://www.vogue.com/vogueworld/article/drake-new-look-brioni-tom-ford-mellany-sanchez, http://pitchfork.com/levels/the-year-in-drake-did-he-win-or-lose-2018/ and http://en.wikipedia.org/wiki/Drake_(musician). Thus, because written consent to register the name shown in the applied-for mark is not of record, registration is refused under Section 2(c) of the Trademark Act.
The refusal under Section 2(c) will be withdrawn if applicant provides both of the following:
(1) A statement that: “THE BOY” shown in the mark identifies the nickname of Aubrey Drake Graham, a living individual whose consent is of record;
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(2) A written consent, personally signed by the individual whose name, signature, or portrait appears in the mark, authorizing applicant to register the identifying matter as a trademark and/or service mark with the USPTO; for example, an applicant may use, if applicable, the following: I, Aubrey Drake Graham, consent to the use and registration of my nickname “THE BOY” as a trademark and/or service mark with the USPTO.”
See TMEP §§813, 813.01(a), 1206.04(a).
Applicant is advised that the written consent must include a statement of the party’s consent to applicant’s registration, and not just the use, of the identifying matter as a trademark. See Krause v. Krause Publ’ns, Inc., 76 USPQ2d 1904, 1912-13 (TTAB 2005); In re New John Nissen Mannequins, 227 USPQ 569, 571 (TTAB 1985); TMEP §1206.04(a).
REQUIREMENTS
IDENTIFICATION OF GOODS INDEFINITE IN CLASS 9 ONLY- CLARIFICATION AND AMENDMENT REQUIRED
The identification “Downloadable software in the nature of a mobile application for entertainment purposes” is because the function of the software is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d). Additionally, if the software is content- or field-specific, applicant must also specify its content or field of use. See TMEP §1402.03(d). The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Applicant may substitute the following wording, if accurate:
Class 9 –
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“Audio and video recordings featuring music and artistic performances; Digital sound processors; Downloadable musical sound recordings; Downloadable software in the nature of a mobile application for entertainment purposes, namely, software that enables users to _______________[applicant to clarify the function of the software, e.g., edit, upload, and download music]; Downloadable software in the nature of a mobile application for music and video production; Media players.” |
Additions to the Identification Not Permitted
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant must also respond to the following requirement.
ADDITIONAL FEES REQUIRED- TEAS PLUS APPLICATION REQUIREMENTS NOT MET
The additional fee is required even if applicant later corrects these application requirements.
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.
/Tiffany Y. Chiang/
Trademark Examining Attorney
Law Office 113
(571) 272-7681
tiffany.chiang@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.