UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88371565
MARK: RADIANCE SPIRITUAL
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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: MATA AMRITANANDAMAYI MATH
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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: 6/21/2019
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.
Please also note that a prior-filed, pending application has been cited as a potential bar to registration.
1) Likelihood of Confusion as to “meditation training” and “holistic health and wellness services”
Registration of the applied-for mark is refused as to applicant’s “meditation training” and “holistic health and wellness services” because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 4687868, 1459623, and 1522128. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. Please see the attached registration information comprising the final attachments hereto.
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.
Similarity of the Marks
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/or 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)).
Applicant’s mark is “RADIANCE SPIRITUAL.”
The registered marks are” RADIANCE SUTRAS,” “THE RADIANCE TECHNIQUE,” and “RADIANCE” listed four times in a sun design,
In this case, consumers would use the wording in the marks to call for the relevant goods and/or services. “RADIANCE” is the first term in each mark and the entirety of or a large portion of the wording in each mark. Thus, it is the term that consumers would most focus on when viewing each mark. Significantly, as a result of the shared/similar wording, the marks, as a whole, appear and sound similar. They also create similar overall commercial impression with each calling to mind radiant energy.
In light of the foregoing, it is likely that consumers would be confused as to the origin of applicant’s goods and/or services.
The Goods and/or Services are Related
The services in Registration Nos. 1459623 and 1522128 are conducting seminars to foster wholistic health.
The goods and services in Registration No. 4687868 are educational services, namely, conducting on-line course instruction, in-person instruction, training, classes, seminars, conferences, and workshops in the field of yoga and meditation and distribution of course material in connection therewith; digital media, namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring and promoting yoga and meditation instruction.
Determining likelihood of confusion is based on the description of the goods and/or 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)). When an application or registration broadly identifies goods or services, the goods or services are presumed to encompass all goods or services of the type described. 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).
In this case, applicant’s “meditation training” and “holistic health and wellness services” are broadly identified. The services in Registration Nos. 1459623 and 1522128 for conducting seminars to foster wholistic health and the instruction, training, classes, seminars, conferences, and workshops in the field of yoga and meditation and distribution of course material in connection therewith in Registration No. 4687868 also are broad.
It is, therefore, presumed that applicant’s holistic wellness services include educational services that are identical to those in the registrations. It also is presumed that applicant’s meditation training is identical to the meditation training in Registration No. 4687868. Moreover, it is presumed that the seminars to foster wholistic health in Registration Nos. 1459623 and 1522128 cover all areas of wholistic health including wellness and meditation. Thus, applicant’s and each registrant’s goods/services are legally identical, at least in part. 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 goods and/or 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 goods and/or services are related.
Doubt is Resolved in Favor of Registrant
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
In light of the foregoing, registration is refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Prior-filed, Pending 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.
2) Mark is Merely Descriptive
Registration is refused because the applied-for mark merely describes a/an feature, ingredient, characteristic, purpose, function, user, use or provider of applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq. A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant’s mark is “RADIANCE SPIRITUAL.” “RADIANCE” refers to a type of light and energy. “SPIRITUAL” refers to the nature of spirit, affecting the soul, and to a religion or spiritual practices (see attached definitions).
Applicant’s services are identified as follows: providing divine light to the body, mind, soul or a combination thereof; providing divine light to the body, mind, soul or a combination thereof to adjust the balance of prana (life energy) therein, promote and/or assist in purifying accumulated negative energy therein, enhancing inner peace, improving concentration, awakening one's natural healing ability, improving spiritual, mental, emotional and/or physical well being, or a combination thereof; providing in-person energy focus services; providing in-person energy focus services to the body, mind, soul or a combination thereof to adjust the balance of prana (life energy) therein, promote and/or assist in purifying accumulated negative energy therein, enhancing inner peace, improving concentration, awakening one's natural healing ability, improving spiritual, mental, emotional and/or physical well being, or a combination thereof; providing long distance energy focus services; providing long distance energy focus services to the body, mind, soul or a combination thereof to adjust the balance of prana (life energy) therein, promote and/or assist in purifying accumulated negative energy therein, enhancing inner peace, improving concentration, awakening one's natural healing ability, improving spiritual, mental, emotional and/or physical well being, or a combination thereof; meditation training; holistic health and wellness services.
Applicant’s services either specifically indicate they feature light or energy, i.e., “radiance,” or they are broadly identified and, therefore, presumed to include those featuring radiance. Thus, “RADIANCE” merely describes a feature of the services.
Similarly, applicant’s services either specifically indicate they are “SPIRITUAL” in nature or they are broadly identified and, therefore, presumed to include those affecting the spirt or being for spiritual purposes. Thus, “SPIRITUAL” merely describes a feature or purpose of the services.
The foregoing, therefore, establishes that each term in the mark merely describes a feature of the services. Moreover, each term retains its descriptive significance in the composite mark, and the composite mark does not appear to have any non-descriptive meaning as applied to the services in the application.
In light of the foregoing, registration is refused under Section 2(e)(1) on the basis the mark is merely descriptive.
3) Entity/Owner Information
Thus, applicant may amend the application to identify itself using the following format:
The trustees of Mata Amritanandamayi Math, a trust of India, comprising ______________ (list name of each trustee, their legal entity type, and national citizenship (for individuals) or foreign country of organization/incorporation (for businesses), as appropriate).
4) Identification of Services
Some of the wording in the identification of services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant also must adopt the appropriate international classification number for the services identified in the application. The USPTO follows the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), established by the World Intellectual Property Organization, to classify goods and services. See 37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a).
Applicant must specify the common commercial name or nature of each of the following: providing divine light to the body, mind, soul or a combination thereof; providing divine light to the body, mind, soul or a combination thereof to adjust the balance of prana (life energy) therein, promote and/or assist in purifying accumulated negative energy therein, enhancing inner peace, improving concentration, awakening one's natural healing ability, improving spiritual, mental, emotional and/or physical well being, or a combination thereof; providing in-person energy focus services; providing long distance energy focus services; providing long distance energy focus services; providing long distance energy focus services to the body, mind, soul or a combination thereof to adjust the balance of prana (life energy) therein, promote and/or assist in purifying accumulated negative energy therein, enhancing inner peace, improving concentration, awakening one's natural healing ability, improving spiritual, mental, emotional and/or physical well being, or a combination thereof; holistic wellness services.
With respect to classification, “meditation training” must be properly classified in Class 41. Medical and healthcare services are properly classified in Class 44. On the other hand, religious services such as conducting religious prayer services are classified in Class 45.
Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1).
Applicant may substitute the following wording, if accurate.
Meditation training, in Class 41.
Providing divine light to the body, mind, soul or a combination thereof, all in the nature of reiki healing services; providing in person energy healing services, namely, providing divine light to the body, mind, soul or a combination thereof to adjust the balance of prana (life energy) therein, promote and/or assist in purifying accumulated negative energy therein, enhancing inner peace, improving concentration, awakening one's natural healing ability, improving spiritual, mental, emotional and/or physical well-being, or a combination thereof; providing in-person energy focus services in the nature of providing in person energy healing services; providing in person energy healing services, namely, providing in-person energy focus services to the body, mind, soul or a combination thereof to adjust the balance of prana (life energy) therein, promote and/or assist in purifying accumulated negative energy therein, enhancing inner peace, improving concentration, awakening one's natural healing ability, improving spiritual, mental, emotional and/or physical well-being, or a combination thereof; providing long distance energy focus services, namely, providing vibrational energy healing services via the Internet; providing vibrational energy healing services via the Internet, namely, long distance energy focus services to the body, mind, soul or a combination thereof to adjust the balance of prana (life energy) therein, promote and/or assist in purifying accumulated negative energy therein, enhancing inner peace, improving concentration, awakening one's natural healing ability, improving spiritual, mental, emotional and/or physical well-being, or a combination thereof; holistic health services and holistic wellness services being healthcare services, in Class 44.
Providing divine light to the body, mind, soul or a combination thereof, all in the nature of religious prayer services, in Class 45.
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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.
5) Multiple-classification Requirements
(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 fee(s) already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least three (3) classes; however, applicant submitted a fee(s) sufficient for only one (1) class. 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.
6) Information Requirement
1) Do applicant’s services feature radiant energy?
2) If the services do not feature radiant energy, then what type of energy is featured?
3) What is “divine light” as applied to applicant’s services?
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Advisory
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.
Please do not hesitate to contact the undersigned with any questions.
/MaureenDallLott/
Maureen Dall Lott
Trademark Examining Attorney, Law Office 105
United States Patent and Trademark Office
571-272-9714
maureen.lott@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.