United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88363751
Mark: AMAZE
|
|
Correspondence Address: PORZIO, BROMBERG & NEWMAN, P.C.
|
|
Applicant: AMAZE (I) LLC
|
|
Reference/Docket No. 6375-102 US
Correspondence Email Address: |
|
NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: January 30, 2020
On this date, the USPTO revised the federal trademark rules to require foreign-domiciled applicants to be represented by an attorney who is an active member in good standing of the bar of the highest court of any U.S. state (including the District of Columbia or any U.S. commonwealth or territory). Further, the USPTO required an applicant to provide the address of applicant’s domicile in order to determine if a U.S.-licensed attorney was required. See the U.S. Counsel Rule change webpage for more information. Thus, applicant must respond to this new requirement for the application to proceed to registration, in addition to the issues raised in the Office action dated June 22, 2019.
The issue(s) raised in the previous June 22, 2019 Office action is/are as follow and is/are maintained: Section 2(d) Likelihood of Confusion Refusal, Identification of Services Amendment Requirement and Multiple-Class Application Requirement Advisory. See TMEP §713.02.
The following is a SUMMARY OF ISSUES that applicant must address:
Applicant must respond to all issues raised in this Office action and the previous June 22, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
Section 2(d) Likelihood of Confusion – Refusal
In this case, the following factors are the most relevant: similarity of marks, similarity of the services, and similarity of trade channels of the services. See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP § 1207.01 et seq.
Comparison of Marks
In the present case, applicant’s mark is “AMAZE” and registrant’s mark is “AMAZE.” These marks 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 they 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, the marks are confusingly similar.
Relatedness of Services
In this case, the registrant uses broad wording to describe “Providing information about education,” “Providing information in the field of children's education,” and “Providing information relating to education services for children,” which presumably encompasses services of the type described, including applicant’s more narrow “Providing online information and videos in the field of sex education, puberty, personal safety, healthy relationships.” 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)).
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.
The attached Internet evidence (provided in the June 22, 2019 Office action and this Office action) demonstrates that it is common in the applicant’s industry to provide courses and videos on anti-bullying, personal safety and healthy relationships under the same name. For example, Kidpower provides information on bullying solutions, child abuse prevention, safety in public, as well as information on education such as curriculum development. Furthermore, the attached evidence provided in the June 22, 2019 Office action includes a screenshot from applicant’s website showing the applicant providing videos about bullying.
Additionally, this evidence establishes that the same entity commonly provides the relevant services and markets the services under the same mark, the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the services are similar or complementary in terms of purpose or function. Therefore, applicant’s and registrant’s 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).
Because the marks are confusingly similar and because the marks refer to closely related, if not the same, educational information services, consumers would be likely to mistakenly believe that the services emanate from a single source. Accordingly, registration is refused under Trademark Section 2(d).
Identification of SERVICES – Amendment Required
In applicant’s December 23, 2019 response, applicant amended the identification of services as follows:
Class 41: Providing online information and non-downloadable videos in the field of sex education, puberty, sexual orientation, gender identity, personal safety, healthy relationships, pregnancy, reproduction, sexually transmitted diseases (STD's), Human Papillomavirus (HIV); Downloadable materials, namely, downloadable videos and other materials in the field of sex education, puberty, sexual orientation, gender identity, personal safety, healthy relationships, pregnancy, reproduction, sexually transmitted diseases (STD's), Human Papillomavirus (HIV)
If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Applicant may adopt the following as its identification of goods and services, if accurate, providing additional specificity where indicated:
Class 9: Downloadable materials, namely, downloadable videos and other materials {applicant must indicate
specific downloadable materials in Class 9, e.g., downloadable audio files, otherwise delete} in the field of sex education, puberty, sexual orientation, gender identity, personal safety, healthy
relationships, pregnancy, reproduction, sexually transmitted diseases (STD's), Human Papillomavirus (HIV)
Class 41: Providing online information and non-downloadable videos in the field of sex education, puberty, sexual orientation, gender identity, personal safety, healthy relationships, pregnancy, reproduction, sexually transmitted diseases (STD's), Human Papillomavirus (HIV);
See TMEP §§1402.01, 1402.03.
An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. If applicant adds a class to the current application, applicant must comply with the multi-class application requirements below.
For assistance with identifying and classifying goods and/or services, please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Multiple-Class Application – Advisory
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for Class 41; and applicant needs a specimen for Class 9. See more information about specimens.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Applicant’s domicile address – Required
All applications must include the applicant’s domicile address, and domicile dictates whether an applicant is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent the applicant at the USPTO. See 37 C.F.R. §§2.2(o)-(p), 2.11(a), 2.189; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019).
An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business, i.e. headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14. 37 C.F.R. §2.11(a).
The application record lists applicant as a juristic entity and specifies applicant’s domicile as “c/o” or in “care of” another party’s address. In most cases, an address that is listed as “c/o” or in “care of” another party’s address is not acceptable as a domicile address because it does not identify the location of applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3. Thus, applicant must provide its domicile street address. See 37 C.F.R. §2.189. Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile. Examination Guide 4-19, at I.A.3.
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.
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 nonfinal Office action.
/Olivia S. Lee/
Olivia S. Lee
Trademark Examining Attorney
Law Office 128
olivia.lee@uspto.gov
(571) 272-6848
RESPONSE GUIDANCE