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: 7/8/2019

 

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:

• PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
• PRIOR FILED APPLICATIONS
• IDENTIFICATION OF SERVICES MUST BE AMENDED
• DISCLAIMER REQUIRED

 

PARTIAL 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. 4443588, 5232676, and 5645934.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

This refusal applies to “charitable services, namely, facilitating administrative coordination among charitable organizations; Outsourcing services in the nature of arranging service contracts for others in the fields of medicine, tutoring, and food services” in Class 35, “Counseling in the field of mental health and wellness; counseling services in the fields of health, nutrition and lifestyle wellness; counseling services in the field of drug rehabilitation; charitable services, namely, sourcing of medical professionals to provide medical services for disadvantaged children” in Class 44, and “counseling services in the field of family preservation and teenage pregnancy and drug rehabilitation” in Class 45 only.

 

The applied-for mark is CHS with design identified for “Promoting the interests of children by means of public advocacy; promoting public awareness of disadvantaged children, abuse and neglect of children, child welfare issues and child safety; promoting public awareness in the field of social welfare; charitable services, namely, facilitating administrative coordination among charitable organizations; Outsourcing services in the nature of arranging service contracts for others in the fields of medicine, tutoring, and food services” in Class 35, “Charitable services, namely, providing financial assistance to meet the physical, psychological, social and other special needs of children; charitable foundation services, namely, providing fundraising activities, funding, scholarships and or financial assistance for children; charitable services, namely, fundraising services by means of organizing special events for disadvantaged children” in Class 36, “Charitable services, namely, sourcing of tutors and mentors to provide educational assistance to disadvantaged children; educational services in the nature of early childhood instruction; educational services, namely, providing a community school for disadvantaged children” in Class 41, and “Child welfare services, namely, providing children's residential homes and housing for at-risk children and youth, emergency shelters, and group homes for children; charitable services, namely, providing child care for disadvantaged children; charitable services, namely, sourcing of food services to provide food for disadvantaged children” in Class 43, “Counseling in the field of mental health and wellness; counseling services in the fields of health, nutrition and lifestyle wellness; counseling services in the field of drug rehabilitation; charitable services, namely, sourcing of medical professionals to provide medical services for disadvantaged children” in Class 44, and “Adoption placement; adoption agency services; adoption counseling; counseling services in the field of family preservation and teenage pregnancy and drug rehabilitation; foster care” in Class 45.

 

U.S. Registration No. 4443588 CHS COGNITIVE HEALTH SOLUTIONS with design is identified for “Mental health services; Psychological counseling” in Class 44.

 

U.S. Registration No. 5232676 CHS with design is identified for “Educational services, namely, providing classes, lectures and interviews for therapists and clients in the field of sex therapy, sexual addiction therapy, sexual anorexia, and human sexuality at physical venues and via the Internet; providing continuing education classes for sex therapists and sex addiction therapists; providing daily quotes, meditations and tasks in the field of human sexuality via email to individuals who are interested in developing emotional and sexual intimacy; and providing tests on sex addiction via the Internet” in Class 41, and “Sex therapy and sexual addiction therapy for adults in individual, couple and group sessions” in Class 44.

 

U.S. Registration No. 5645934 CHS is identified for, in part, “Marketing services; market research; public opinion polling; advertising services; business and promotional services, namely, promoting the sale of goods and services of others; business research services; publicity services, namely, publicity and sales promotion services; business strategy development services; collection of information for market research; compilation of business data; business management services; business administration services; research in the field of marketing, retail sales, customer behaviour, customer trends and customer experience for business purposes; data retrieval services, namely, compiling business data; business data analysis services; analysis of market research data and statistics; data processing services; compilation and systemisation of information into computer databases; business and marketing analysis of web sites; marketing off-line data to aid media targeting, namely, analyzing and compiling business data for determining the perceived image of a service; content personalisation and customer experience; computerised point of sale data collection services for business purposes; data analysis of customer transactions and customer behavior for business purposes; business advice relating to brand placement, retailing, marketing, advertising, promotion, product ranging and communication strategies; collection and analysis of customer loyalty data for business purposes; business administration, namely, organising, operating and managing customer loyalty programmes and sales and promotional incentive schemes; organising and arranging sweepstakes, games and customer competitions for advertising, marketing, research and business purposes; organising and arranging trade fairs for business and promotional purposes; direct mail advertising services; business information, advisory and consultancy services relating to all the aforesaid services” in Class 35.

 

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 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 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 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).

 

U.S. Registration No. 4443588

 

The applied-for mark is CHS with design.

 

U.S. Registration No. 4443588 is CHS COGNITIVE HEALTH SOLUTIONS with design.

 

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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).

 

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 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)). Therefore, the wording in each mark, CHS in the applied-for mark and CHS COGNITIVE HEALTH SOLUTIONS in the registered mark, are more dominant than the design portion of each mark.

 

Additionally, disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Here, the wording COGNITIVE HEALTH SOLUTIONS is disclaimed in the registered mark, making the wording CHS the dominant portion of the mark.

 

Therefore, the most dominant portion of each mark is the identical wording CHS, being identical in sound and commercial impression of an acronym, and are thus substantially similar.

 

U.S. Registration No. 5232676

 

The applied-for mark is CHS with design.

 

U.S. Registration No. 5232676 is CHS with design.

 

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 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)). Therefore, the wording in each mark, CHS in the applied-for mark and CHS in the registered mark, are more dominant than the design portion of each mark.

 

In the present case, applicant’s mark is CHS with design and registrant’s mark is CHS with design characters. Thus, the word portion of the marks is identical in terms of sound and commercial impression of an acronym, “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 virtually 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. 

 

U.S. Registration No. 5645934

 

The applied-for mark is CHS with design.

 

U.S. Registration No. 5645934 is CHS.

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

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 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)). Therefore, the wording in the applied-for mark, CHS, is the dominant portion of the mark.

 

Additionally, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

In the present case, applicant’s mark is CHS with design and registrant’s mark is CHS in standard characters.  Thus, the word portion of the marks is identical in terms of sound and commercial impression of an acronym, “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 virtually 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

 

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 applied-for mark is identified for “Promoting the interests of children by means of public advocacy; promoting public awareness of disadvantaged children, abuse and neglect of children, child welfare issues and child safety; promoting public awareness in the field of social welfare; charitable services, namely, facilitating administrative coordination among charitable organizations; Outsourcing services in the nature of arranging service contracts for others in the fields of medicine, tutoring, and food services” in Class 35, “Charitable services, namely, providing financial assistance to meet the physical, psychological, social and other special needs of children; charitable foundation services, namely, providing fundraising activities, funding, scholarships and or financial assistance for children; charitable services, namely, fundraising services by means of organizing special events for disadvantaged children” in Class 36, “Charitable services, namely, sourcing of tutors and mentors to provide educational assistance to disadvantaged children; educational services in the nature of early childhood instruction; educational services, namely, providing a community school for disadvantaged children” in Class 41, and “Child welfare services, namely, providing children's residential homes and housing for at-risk children and youth, emergency shelters, and group homes for children; charitable services, namely, providing child care for disadvantaged children; charitable services, namely, sourcing of food services to provide food for disadvantaged children” in Class 43, “Counseling in the field of mental health and wellness; counseling services in the fields of health, nutrition and lifestyle wellness; counseling services in the field of drug rehabilitation; charitable services, namely, sourcing of medical professionals to provide medical services for disadvantaged children” in Class 44, and “Adoption placement; adoption agency services; adoption counseling; counseling services in the field of family preservation and teenage pregnancy and drug rehabilitation; foster care” in Class 45.

 

U.S. Registration No. 4443588

 

The applied-for mark is identified for, in relevant part, “Counseling in the field of mental health and wellness; counseling services in the fields of health, nutrition and lifestyle wellness; counseling services in the field of drug rehabilitation; charitable services, namely, sourcing of medical professionals to provide medical services for disadvantaged children” in Class 44, and “counseling services in the field of family preservation and teenage pregnancy and drug rehabilitation” in Class 45.

 

U.S. Registration No. 4443588 CHS design is identified for “Mental health services; Psychological counseling” in Class 44.

 

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)).  

 

In this case, the registration uses broad wording to describe “Mental health services; Psychological counseling”, which presumably encompasses all services of the type described, including applicant’s more narrow “Counseling in the field of mental health and wellness; counseling services in the fields of health, nutrition and lifestyle wellness; counseling services in the field of drug rehabilitation; charitable services, namely, sourcing of medical professionals to provide medical services for disadvantaged children” and “counseling services in the field of family preservation and teenage pregnancy and drug rehabilitation”.  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.

 

U.S. Registration No. 5232676

 

The applied-for mark is identified for, in relevant part, “Counseling in the field of mental health and wellness; counseling services in the fields of health, nutrition and lifestyle wellness” in Class 44, and “counseling services in the field of family preservation and teenage pregnancy and drug rehabilitation” in Class 45.

 

U.S. Registration No. 5232676 is identified for, in relevant part, “Sex therapy and sexual addiction therapy for adults in individual, couple and group sessions” in Class 44.

 

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)).  

 

In this case, the application uses broad wording to describe “Counseling in the field of mental health and wellness; counseling services in the fields of health, nutrition and lifestyle wellness” and “counseling services in the field of family preservation and teenage pregnancy and drug rehabilitation”, which presumably encompasses all services of the type described, including registrant’s more narrow “Sex therapy and sexual addiction therapy for adults in individual, couple and group sessions”.  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.

 

U.S. Registration No. 5645934

 

U.S. Registration No. 5645934 is identified for, in relevant part, “business administration services; [and] …business information, advisory and consultancy services relating to all the aforesaid services” in Class 35.

 

The applied-for mark is identified for, in relevant part, “charitable services, namely, facilitating administrative coordination among charitable organizations; Outsourcing services in the nature of arranging service contracts for others in the fields of medicine, tutoring, and food services” in Class 35.

 

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)).  

 

In this case, the application uses broad wording to describe “business administration services; [and] …business information, advisory and consultancy services relating to all the aforesaid services”, which presumably encompasses all services of the type described, including registrant’s more narrow “charitable services, namely, facilitating administrative coordination among charitable organizations; Outsourcing services in the nature of arranging service contracts for others in the fields of medicine, tutoring, and food 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).  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.

 

Conclusion

 

For the above reasons, registration is refused as to “charitable services, namely, facilitating administrative coordination among charitable organizations; Outsourcing services in the nature of arranging service contracts for others in the fields of medicine, tutoring, and food services” in Class 35, “Counseling in the field of mental health and wellness; counseling services in the fields of health, nutrition and lifestyle wellness; counseling services in the field of drug rehabilitation; charitable services, namely, sourcing of medical professionals to provide medical services for disadvantaged children” in Class 44, and “counseling services in the field of family preservation and teenage pregnancy and drug rehabilitation” in Class 45, under Section 2(d) of the Trademark Act.

 

PRIOR FILED APPLICATIONS

 

The filing date of pending U.S. Application Serial No. 88240748 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION OF SERVICES MUST BE AMENDED

 

Class 35

 

The wording “promoting public awareness of disadvantaged children, abuse and neglect of children, child welfare issues and child safety” in the identification of goods is indefinite and must be clarified because it is unclear of which topic awareness is being promoted.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Class 36

 

Applicant has included the term “and/or” or “or” in the identification of services.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, it is unclear whether applicant is using the mark on all the identified services, providing each “fundraising activities”, “funding”, “scholarships” and “financial assistance” or only some of these services.

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language. 

 

Class 41

 

The wording “Charitable services, namely, sourcing of tutors and mentors to provide educational assistance to disadvantaged children” in the identification of goods is indefinite and must be clarified because it is not clear what the service is.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Charitable services, namely, outsource service provider in the field of tutors and mentors to provide educational assistance to disadvantaged children”.

 

The wording “educational services, namely, providing a community school for disadvantaged children” in the identification of goods is indefinite and must be clarified because “providing a community school” could contain many different educational services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Class 43

 

The wording “charitable services, namely, sourcing of food services to provide food for disadvantaged children” in the identification of goods is indefinite and must be clarified because it is not clear what the service is.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Charitable services, namely, outsource service provider in the field of food services to provide food for disadvantaged children”.

 

Class 44

 

The wording “charitable services, namely, sourcing of medical professionals to provide medical services for disadvantaged children” in the identification of goods is indefinite and must be clarified because it is not clear what the service is.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate: “Charitable services, namely, outsource service provider in the field of medical professionals to provide medical services for disadvantaged children”.

 

Class 45

 

Applicant has classified “counseling services in the field of …teenage pregnancy and drug rehabilitation;” in International Class 45; however, the proper classification is International Class 44.  Therefore, applicant may respond by (1) reclassifying these services in the proper international class or (2) deleting the wording “and teenage pregnancy and drug rehabilitation” from the Class 45 identification.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. 

 

Suggested Amendment

 

The wording with additions in bold in the identification of goods and services is indefinite and must be clarified because the nature of the goods and services are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods and services.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Applicant may adopt the following wording, if accurate, with suggested changes in bold:

 

Class 35: Promoting the interests of children by means of public advocacy; promoting public awareness of the interests of disadvantaged children, abuse and neglect of children; Promoting public awareness of child welfare issues and child safety; promoting public awareness in the field of social welfare; charitable services, namely, facilitating administrative coordination among charitable organizations; Outsourcing services in the nature of arranging service contracts for others in the fields of medicine, tutoring, and food services

 

Class 36: Charitable services, namely, providing financial assistance to meet the physical, psychological, social and other special needs of children; charitable foundation services, namely, providing fundraising activities, funding, scholarships and financial assistance for disadvantaged children; charitable services, namely, fundraising services by means of organizing special events for disadvantaged children

 

Class 41: Charitable services, namely, outsource service provider in the field of tutors and mentors to provide educational assistance to disadvantaged children; educational services in the nature of early childhood instruction; educational services, namely, providing courses of instruction at the grade school level for disadvantaged children

 

Class 43: Child welfare services, namely, providing children's residential homes and housing for at-risk children and youth, emergency shelters, and group homes for children; charitable services, namely, providing child care for disadvantaged children; charitable services, namely, outsource service provider in the field of food services to provide food for disadvantaged children

 

Class 44: Counseling in the field of mental health and wellness; counseling services in the fields of health, nutrition and lifestyle wellness; counseling services in the field of drug rehabilitation; charitable services, namely, outsource service provider in the field of medical professionals to provide medical services for disadvantaged children; counseling services in the field of teenage pregnancy and drug rehabilitation

 

Class 45: Adoption placement; adoption agency services; adoption counseling; counseling services in the field of family preservation; foster care

 

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 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.

 

DISCLAIMER REQUIRED

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim all the wording in the mark because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from Acronym Finder and the Merriam Webster Dictionary shows this wording stands for “Children's Home Society”, with CHILDREN defined as “a young person especially between infancy and youth”, HOME defined as “an establishment providing residence and care for people with special needs”, and SOCIETY defined as “a voluntary association of individuals for common ends”. See attached http://www.acronymfinder.com/CHS.html; http://www.merriam-webster.com/dictionary/children; http://www.merriam-webster.com/dictionary/home; http://www.merriam-webster.com/dictionary/society. Thus, the wording merely describes a characteristic of applicant’s services because they are provided by “an establishment providing residence and care for people with special needs”, for “young [people]”, by “a voluntary association of individuals for common ends”.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “CHS” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

INFORMATION REGARDING THIS APPLICATION

 

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.  

 

 

 

Michael Larkey

/Michael Larkey/

Trademark Examining Attorney

Law Office 116

(571) 270-5492

michael.larkey@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 7/8/2019 FOR U.S. APPLICATION SERIAL NO. 88389432

 

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 7/8/2019 (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.