UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 6/26/2019

 

 

 

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.

 

SUMMARY OF ISSUES:

·        SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

·        IDENTIFICATION OF GOODS MISCLASSIFIED AND INDEFINITE

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5549065, 4349324, and 4328258.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the 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 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 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.

 

Applicant has applied to register the mark “TAKE FIVE” with a design in International Class 009 for “downloadable and web-based educational publications, namely, printed curriculum, instructor's manuals and profession development materials for educators, in the areas of social and emotional learning and development,” and “printed educational publications, namely, printed curriculum, instructor's manuals and profession development materials for educators, in the areas of social and emotional learning and development” in International Class 016.

 

Registration is refused due to a likelihood of confusion with the following marks:

 

1)     “TAKE 5IVE” with a design in International Class 041 for “Educational services, namely, developing curriculum for educators in the field of mindfulness in the nature of psychological and physiological systems awareness and control exercises,” among similarly related services in International Class 041; and

2)     “TAKE 5” with a design in International Class 041 for “Educational services, namely, providing a program directed to improving communication skills, and distributing instructional and course materials in connection therewith in the nature of audio and video recordings, printed, electronic and downloadable materials;” and

3)     “TAKE 5” in standard characters in International Class 041 for “Educational services, namely providing a program directed to improving communication skills, and distributing instructional and course materials in connection therewith in the nature of audio and video recordings, printed, electronic and downloadable materials.”

 

 

Comparison 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).

 

When evaluating a composite mark consisting of words and a design, 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 goods and 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)).

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

 

With regards to Registration No. 5549065, applicant has applied for the mark “TAKE FIVE” with a design and registrant has applied for the mark “TAKE 5IVE” with a design.  As described above, the word portion of a mark is typically given greater weight than the design portion of a mark.  In both applicant’s and registrant’s mark, the design portion of the mark does little, if anything, to obviate the impression left by the word portion of the mark.  Therefore, the word portion of each mark is the dominant portion.  Therefore, the dominant portion of applicant’s mark is the term “TAKE FIVE.”  Moreover, per the attached definition from Macmillan Dictionary, the term “FIVE” is interchangeable with the number “5.”  Therefore, upon seeing registrant’s mark, the average consumer would immediately identify the mark as meaning one of “TAKE FIVE,” or “TAKE 5.”  Therefore, applicant’s and registrant’s marks are confusingly similar.

 

With respect to Registration No. 4349324, as described above, the word portion of a mark is typically accorded greater weight than the design portion of the mark. As the design portion of registrant’s mark does little, if anything, to obviate the word potion of the mark, the word portion of the mark is dominant.  The analysis for Registration Nos. 4349324 and 4328258 is therefore identical.  Per the aforementioned attached definition from Macmillan Dictionary, the term “5” and “FIVE” are interchangeable in meaning.  The dominant portion of applicant’s mark (“TAKE FIVE”), therefore have the same first term, and have an identical overall meaning to both of the registrations.  Therefore the application and registrations are confusingly similar.

 

Comparison of the Goods and Services

 

The goods and 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 goods and 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 goods and/or 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 has identified “downloadable and web-based educational publications, namely, printed curriculum, instructor's manuals and profession development materials for educators, in the areas of social and emotional learning and development” as goods it provides in International Class 009, and “printed educational publications, namely, printed curriculum, instructor's manuals and profession development materials for educators, in the areas of social and emotional learning and development” in International Class 016.

 

Registration No. 5549065 has identified “educational services, namely, developing curriculum for educators in the field of mindfulness in the nature of psychological and physiological systems awareness and control exercises,” in International Class 041 as a service it provides.

 

The attached Internet evidence from Psychology Today, The American Psychological Association, and McGraw Hill, consisting of evidence that social and emotional learning is encompassing of psychological concepts and techniques, establishes that the same entity that would provide applicant’s goods would also be likely to provide services of the type provided by registrant.  Thus, applicant’s and registrant’s goods and 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).

 

With respect to Registrations No. 4349324 and 4328258, registrant has identified the following services it provides: “Educational services, namely providing a program directed to improving communication skills, and distributing instructional and course materials in connection therewith in the nature of audio and video recordings, printed, electronic and downloadable materials.” 

 

The attached Internet evidence from Kickboard, Conover Online, Casel, CloudNineWorld and Consel, consisting of companies which provide SEL Programs which focus on communication as part of the program, and also SEL Programs which feature printed publications, establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark, that the relevant goods and 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 that the goods and services are similar or complementary in terms of purpose or function.  Thus, applicant’s and registrant’s goods and 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).

 

Conclusion

 

In the present case applicant’s and registrant’s marks have a dominant portion which share an identical meaning and similar appearance, applicant’s goods are commonly sold by the same provider as registrant’s services, and the applicant’s goods and registrant’s services are provided through the same channels of trade.  Therefore applicant’s mark is refused under Section 2(d) of the Trademark Act.

 

If applicant responds to the refusal, applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS MISCLASSIFIED AND INDEFINITE

 

Applicant submitted the following identification with the application:

 

            International Class 009

 

Downloadable and web-based educational publications, namely, printed curriculum, instructor's manuals and profession development materials for educators, in the areas of social and emotional learning and development

 

International Class 016

 

Printed educational publications, namely, printed curriculum, instructor's manuals and profession development materials for educators, in the areas of social and emotional learning and development

 

The above wording in the identification of goods needs clarification because it does not identify the goods with enough specificity or is misclassified in the improper International Class. TMEP §§1402.01 and 1402.03(a).

 

The identification for “electronic publications” in International Class 009 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the publications and could identify publications in International Classes 9 and 41.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(a)(x).  Applicant must amend this identification to clarify whether the electronic publications are merely downloadable or recorded on computer media, such as CDs or DVDs, in International Class 9; or are also online non-downloadable publications in International Class 41.  In addition, applicant must specify (1) the common name of the type of publications, such as brochures, newsletters, or magazines; and (2) the subject matter of the publications.  See TMEP §1402.03(e).  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications (e.g., downloadable electronic publications in the nature of general feature magazines are acceptable in International Class 9).  Id.  

 

The following are examples of acceptable formats for identifications for electronic publications (additional information must be added in each identification below, as indicated in the curly brackets): 

 

Downloadable electronic publications in the nature of {indicate specific nature of publication, e.g., newsletters, journals, books} in the field of {indicate subject matter} in International Class 9;

 

Electronic publications, namely, {indicate specific type of publication} featuring {indicate subject matter} recorded on computer media in International Class 9; or

 

Non-downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter} in International Class 41. 

 

Applicant may substitute the following wording, in International Class 009, if accurate:  “Downloadable publications, namely, curriculum, instructor's manuals and profession development materials for educators in the nature of books, pamphlets, worksheets, and magazines, in the areas of social and emotional learning and development,” and add the following identification in International Class 041: “Non-downloadable web-based publications, namely, curriculum, instructor's manuals and profession development materials for educators in the nature of books, pamphlets, worksheets, and magazines, in the areas of social and emotional learning and development.”

 

The wording “printed educational publications, namely, printed curriculum, instructor's manuals and profession development materials for educators, in the areas of social and emotional learning and development” in the identification of goods is indefinite and must be clarified to indicate the specific physical nature of the publications; e.g., pamphlets, brochures, newsletters, journals, or magazines.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(e). 

 

Applicant may adopt the following wording, if accurate:  “printed educational publications, namely, printed curriculum, instructor's manuals and profession development materials for educators in the nature of books, pamphlets, worksheets, in the areas of social and emotional learning and development.”

 

Applicant may adopt the following identification of goods and services, if accurate:

 

International Class 009

 

Downloadable publications, namely, curriculum, instructor's manuals and profession development materials for educators in the nature of books, pamphlets, worksheets, and magazines, in the areas of social and emotional learning and development

 

International Class 016

 

Printed educational publications, namely, printed curriculum, instructor's manuals and profession development materials for educators in the nature of books, pamphlets, worksheets, in the areas of social and emotional learning and development

 

International Class 041

 

Non-downloadable web-based publications, namely, curriculum, instructor's manuals and profession development materials for educators in the nature of books, pamphlets, worksheets, and magazines, in the areas of social and emotional learning and development

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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 goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 2 class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Comments

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  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(s) and/or requirement(s) 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.  

 

 

 

Goran, Bradley

/Bradley Goran/

Examining Attorney

USPTO

Law Office 107

(571) 270-7482

bradley.goran@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/26/2019 FOR U.S. APPLICATION SERIAL NO. 88369460

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 6/26/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.