Suspension Letter

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  November 06, 2019

 

STATUS OF APPLICATION

Applicant is advised of the following status of the application.  Prior to issuance of this Letter of Suspension, the following issues were outstanding with this application: 

1. Advisory:  Potential Section 2(d) Refusal as to Classes 16 and 25 – Two  Prior Pending Applications;
2. Section 2(d) Refusal- Likelihood of Confusion Refusal-In-Part as to Class 43;
3. Section 2(c) Refusal- Mark Identifies a Particular Living Individual;
4. Identification Requirement in Class 9; and
5. Additionally Fees Requirement.

In light of applicant’s 10/14/2019 response to Office action, the examining attorney has determined the following: 

1. The Identification Requirement in Class 9 is satisfied. See TMEP §713.02;
2. The Additionally Fees Requirement is maintained and continued; 
3.  
4. Section 2(d) Refusal- Likelihood of Confusion Refusal-In-Part as to Class 43 is maintained and continued; 
5. Section 2(c) Refusal- Mark Identifies a Particular Living Individual is maintained and continued; and
6. The referenced pending application, U.S. Application Serial No. 88143156 has abandoned and is no longer a potential bar to the registration of applicant’s mark in Class 25.  The Advisory:  Potential Section 2(d) Refusal-In-Part as to Class 16 based on one prior pending application, however, is continued and maintained.  Therefore, the application is suspended as follows.

APPLICATION IS SUSPENDED

 

The application is suspended for the reason specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The pending application below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application below registers, the USPTO may refuse registration of applicant’s mark as to Class 16 under Section 2(d) because of a likelihood of confusion with the registered mark. 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application below was sent previously.

 

            - U.S. Application Serial No. 88143186

 

Refusals and Requirement maintained and continued

 

The following refusals and requirement will be made final once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01.

1. Section 2(d) Refusal- Likelihood of Confusion Refusal-in-Part as to Class 43

Applicant’s arguments that confusion as to the source of the parties’ services is unlikely because the marks differ in sight, sound, and commercial impression is unpersuasive.  To begin, applicant argument that the marks are dissimilar because the phrase “IN ASSOCIATION WITH” is the dominant feature in the applied-for mark as the first words of the mark is unpersuasive because although first terms are generally dominant, marks must be considered in their entireties.  Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010). As articulated in the initial Office action, the marks, “IN ASSOCIATION WITH THE BOY” and “THE BOYS”, in their entireties, convey confusingly similar overall commercial impressions of something originating from a male adolescent or male adolescents.  Moreover, the phrase “IN ASSOCIATION WITH” in applicant’s mark is not dominant, nor does it convey a separate and distinct commercial impression apart from “THE BOY” because the applied-for mark is a unitary phrase, and the phrase “IN ASSOCIATION WITH” is merely informational in that it signals to consumers that applicant’s goods and services are being provided in connection with “THE BOY”.  Thus, applicant’s argument that the marks are dissimilar because the phrase, “IN ASSOCIATION WITH”, is the dominant feature in the applied-for mark is unpersuasive.

Next, applicant’s argument that confusion between the marks is unlikely because the marks differ in sight and sound is also unconvincing. 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, the marks convey similar commercial impressions despite the differences in sound and sight in the marks for the reasons articulated in the initial Office action.

Similarly, applicant’s argument that the commercial impressions of the marks differ because “IN ASSOCIATION WITH THE BOY” conveys the commercial impression that the applied-for goods and services are provided by a specific person, namely, Aubrey Graham (the musical artist known as “Drake”), whereas “THE BOYS” conveys the commercial impression of a specific group of boys, based on how registrant currently uses the mark, is also unconvincing.  Applicant’s assertion presumes consumers possess specific knowledge about the particular individuals the phrases “THE BOY” and “THE BOYS” are meant to identify based on applicant’s intended use and registrant’s actual use. Under a likelihood of confusion analysis, however, the marks are compared as they appear in the drawing of the application and in the registration; the USPTO does not consider how an applicant and registrant actually use their marks in the marketplace.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1324, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  Moreover, consumers that aren’t aware that, “THE BOY”, is a pseudonym for the musical artist, Drake, are likely to perceive the phrase “IN ASSOCIATION WITH THE BOY”, as indicating goods and services are provided by some anonymous male individual, rather a specific one.  It is also worth noting that Drake is known for his musical talents rather than culinary pursuits, rendering it even more likely that consumers will perceive the mark as referencing an anonymous boy when used in connection with restaurant services.  Similarly, the phrase, “THE BOYS”, is likely to be perceived as identifying more than one anonymous adolescent boys rather than an identifiable group of boys by consumers that are unfamiliar registrant’s services.  For these reasons, applicant’s argument that the marks convey different commercial impressions is unpersuasive. 

Applicant’s argument that the term “BOY” is weak and diluted such that applicant’s mark should be allowed to register in spite of the registered mark is also unpersuasive.  Although there are multiple third-party registrations containing the term “BOY” in relation to Class 43 services, the marks in these registrations contains other terms which modify the term “BOY”, and distinguish the commercial impression of these marks from the registrant.  In contrast, applicant’s mark and registrant’s mark both contain the similar phrases, “THE BOY” and “THE BOYS”, and are the only marks which combine “THE” with “BOY” or “BOYS”.  Thus, assuming arguendo the individual term “BOY” is weak in Class 43, the phrase “THE BOY” is not.  Moreover, the phrase “IN ASSOCIATION WITH” does not alter the commercial impression of applicant’s mark to sufficiently distinguish it from registrant’s mark because it merely informs consumers that applicant’s goods and services are provided in connection with “THE BOY”.  Therefore, applicant’s argument that registrant’s mark is weak and diluted and thus entitled to a narrow scope of protection is unpersuasive.

Of final note, applicant argues there have been instances where the Board has found marks are not confusingly similar even when an applicant has incorporated the entirety or a portion of the cited mark; however, the facts in this case differ from those in the case law upon which applicant’s assertions rely.  Specifically, in In re Covalinski, 113 USPQ2d (BNA) 1166 (TTAB 2014), the Board found applicant’s mark “REDNECK RACEGIRL” was not confusingly similar to the registered “RACEGIRL” because the visual design of “REDNECK RACEGIRL” drew attention to the letters “RR”, and the term “RACEGIRL” was displayed in relatively tiny typeface which was difficult to notice. Id at 1168.  In contrast, both marks at issue here are in standard characters such that the shared elements in the respective marks are equally emphasized.  Similarly, in In re WHITE Rock Distillers, Inc., 92 USPQ2d 1282 (TTAB 2009), the Board found the term “TERZA” in applicant’s mark, “TERZA VOLTA”, to be dominant as an arbitrary stand-alone term that appeared in large plain block font above a much smaller “VOLTA”, and also noted the evidence of record did not support a finding that the parties’ goods were closely related under the likelihood of confusion test, when it reversed the finding that applicant’s mark was confusingly similar to the registered “VOLTA”.  Id at 1283. In contrast, the services at issue are identical, such that the degree of similarity between the marks required to support a finding that confusion declines.  See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).  Additionally, unlike the term, “TERZA”, the added phrase “IN ASSOCIATION WITH” in the applied-for mark is non-distinctive for the reasons already discussed in the initial action and above. 

For the aforementioned reasons, applicant’s arguments against the Section 2(d) refusal are unpersuasive, and the refusal as to Class 43 is maintained and continued.  Additionally, because the goods in the prior pending application overlap with goods in Class 16 of the application, and the mark is identical to the cited registration, “THE BOYS”, the prior pending mark is confusingly to the applied-for mark for the reasons already articulated.  Thus, the Section 2(d) refusal advisory as to the prior pending application is also maintained and continued.

2. Section 2(c) Refusal- Mark Identifies a Particular Living Individual

Although applicant submitted a consent to registration statement, the consent statement was not signed by the living individual who is identified by the name, “THE BOY”.  As explained in the initial Office action, the phrase “THE BOY” appears to identify Aubrey Drake Graham, the musical artist known as Drake.  To register a mark that consists of or comprises the name, portrait, and/or signature of a particular living individual, an applicant must provide a written consent personally signed by the named or shown individual.  15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).  Therefore, because the submitted consent statement fails to evidence written consent of the living individual who is identified by the name, “THE BOY”, the refusal to register the mark under Section 2(c) of the Trademark Act is maintained and continued.

3. Additional Fees Requirement

Applicant did not submit the additional processing fee of $125 per class because the application as filed did not meet the TEAS Plus application filing requirements, as articulate din the initial Office action.  See 37 C.F.R. §§2.6(a)(1)(v), 2.22(a), (c); TMEP §§819.01 et seq., 819.04.  Therefore, the requirement to submit additional fees is maintained and continued.

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

/Tiffany Y. Chiang/

Examining Attorney

Law Office 113

(571) 272-7681

tiffany.chiang@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 06, 2019 for

U.S. Trademark Application Serial No. 88291974

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/Tiffany Y. Chiang/

Examining Attorney

Law Office 113

(571) 272-7681

tiffany.chiang@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”