Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) 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:  December 07, 2019

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on November 07, 2019.

 

In a previous Office action dated May 07, 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 a registered mark.  In addition, applicant was required to satisfy the following requirement:  amend the identification of services.

 

Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the refusal and/or requirements in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Section 2(d) Refusal – Likelihood of Confusion
• Amended Identification of Services Requirement

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

The refusal to register the applied-for mark is made Final because of a likelihood of confusion with the marks in co-owned U.S. Registration Nos. 2577973, 2963000, and 2963775.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously 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 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.

 

The applied-for mark is “NAF” for

 

“On-line computer services, namely, providing education services in the nature of informal on-line programs to consumers, providers, administrators and other participants in the healthcare industry in the field of healthcare via an on-line computer network” in International Class 041,

 

“Database development services in the field of health care” in International Class 042, and

 

“Consulting services in the field of health and nutrition, namely, preventative health care, health promotion via providing information on maintaining a health lifestyle, and behavior modification to achieve improved health outcomes; providing a website featuring information on health and wellness including triggers for health issues; providing healthcare information via a global computer network” in International Class 044.

 

The mark in Registration No. 2577973 (“the ‘973 mark”) is “NAF NATIONAL ABORTION FEDERATION” for

 

“Educational services, namely, providing course concerning pregnancy counseling and abortion services and course material distributed in connection therewith” in International Class 041, and

 

“Association services, namely, promoting the interests of those committed to making abortion services accessible and safe” in International Class 042.

 

The mark in Registration No. 2963000 (“the ‘000 mark”) is “NAF” in stylized format for

 

“Educational services, namely, providing courses concerning pregnancy counseling and abortion services and course materials distributed in connection therewith” in International Class 041, and

 

“Telephone hotline counseling, namely, offering advice regarding pregnancy and abortion services” in International Class 044.

 

The mark in Registration No. 2963775 (“the ‘775 mark”) is “NAF NATIONAL ABORTION FEDERATION” in stylized format for

 

“Educational services, namely, providing courses concerning pregnancy counseling and abortion services and course materials distributed in connection therewith” in International Class 041, and

 

“Telephone hotline counseling, regarding pregnancy and abortion namely, offering advice services” in International Class 044.

 

Similarities of the Marks

 

Applicant’s mark is confusingly similar to registrant’s 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).

 

When evaluating a composite mark consisting of words and a design, such as the ‘000 and ‘775 marks, 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 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)).

 

Here, applicant’s wording and the ‘000 mark’s wording are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because their wording portions are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective services.  Id.  Therefore, these marks are confusingly similar.

 

Regarding the ‘973 and ‘775 marks, these marks comprise applicant’s wording “NAF” with the additional descriptive wording “NATIONAL ABORTION FEDERATION”.  Matter that is descriptive of or generic for a party’s services is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)). 

 

In the present case, the previously attached evidence from Merriam-Webster’s Dictionary demonstrates that registrant’s wording “NATIONAL ABORTION FEDERATION” is merely descriptive of or generic for registrant’s services.  Specifically, the definitions of these combined wording portions merely describes a feature or characteristic of registrant’s services whereby registrant is a national union of organizations that focuses on educational services relating to abortions.  Thus, this wording is less significant in terms of affecting the marks’ commercial impression, and renders the wording “NAF” the more dominant element of the marks, which is identical to applicant’s mark.  Therefore, the marks are confusingly similar.

 

Therefore, the marks are confusingly similar.

 

Relatedness of the Services

 

Applicant’s services are related to registrant’s services.  The 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).

 

The compared 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 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).

 

Applicant argues that the parties’ services are not related, claiming that registrant’s abortion services differ from applicant’s services specifically pertaining to chronic health issues, such as migraines.  However, applicant’s services – as identified in the application – pertain to the broad field of healthcare and are not limited to chronic health issues, and registrant’s identified services pertain to the healthcare areas of pregnancy and abortion counseling and promoting abortion accessibility.  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)).  

 

Here, applicant’s broad health care services relate to registrant’s more specific services dealing with pregnancy and abortion.  For example, the application uses broad wording to describe “providing education services… in the field of healthcare,” which presumably encompasses all services of the type described, including applicant’s more narrow “Educational services… concerning pregnancy counseling and abortion 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).  Similarly, applicant’s broad identification of “Consulting services in the field of health and nutrition, namely, preventative health care, health promotion via providing information on maintaining a health lifestyle, and behavior modification to achieve improved health outcomes” encompasses registrant’s more narrow “Telephone hotline counseling, namely, offering advice regarding pregnancy and abortion services.”

 

Applicant argues that its relevant consumers seeking services pertaining to chronic health issues would not be confused as to the source of the services in light of registrant’s use of its marks in connection with services pertaining to abortion and pregnancy.  However, as provided above, applicant’s identified services cover the entire broad field of healthcare, which includes abortion and pregnancy as identified by registrant.  Further, even if consumers of the compared services could be considered discriminating, it is settled that “even sophisticated purchasers are not immune from source confusion, especially in cases such as the present one involving identical marks and related goods [and/or services].”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015) (citing In re Research & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); see also In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  The identity of the marks and the relatedness of the services “outweigh any presumed sophisticated purchasing decision.”  In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014). 

 

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)). 

 

Lastly, the greater degree of similarity between the applied-for mark and the registered marks, the lesser the degree of similarity between the services of the parties is required to support a finding of likelihood of confusion.  In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).  Thus, where the marks of the respective parties are identical or virtually identical, as in the present case with applicant’s mark and the ‘000 mark, the degree of similarity or relatedness between the services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

Thus, applicant’s and registrant’s services are related.

 

In conclusion, the marks are confusingly similar due to the similarity of the marks and the similarity of the services.  Accordingly, the refusal to register the applied-for mark is made Final under Section 2(d).

 

AMENDED IDENTIFICATION OF SERVICES REQUIRED

 

Particular wording in the identification of services is indefinite and must be clarified because the nature of the services is unclear, as indicated by suggested amended language shown in bold.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording with amended language shown in bold, if accurate:

 

 

International Class 041:

 

            “On-line computer services, namely, providing education services in the nature of informal on-line instructional programs to consumers, providers, administrators, and other participants in the healthcare industry in the field of healthcare via an on-line computer network”

 

 

International Class 042:

 

            “Database development services in the field of health care”

 

 

International Class 044:

 

            “Consulting services in the field of health and nutrition, namely, preventative health care, health promotion via providing information on maintaining a healthy lifestyle, and behavior modification to achieve improved health outcomes; Providing a website featuring information on health and wellness including triggers for health issues; Providing healthcare information via a global computer network”

 

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

ASSISTANCE

 

If applicant has any questions regarding this Office action, please call or email the assigned trademark examining attorney.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal and/or requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/J. Ian Dible/

J. Ian Dible

Examining Attorney

Law Office 111

(571) 272-0209

ian.dible@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 07, 2019 for

U.S. Trademark Application Serial No. 88308280

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

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

 

 

/J. Ian Dible/

J. Ian Dible

Examining Attorney

Law Office 111

(571) 272-0209

ian.dible@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).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 07, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

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.”