To: | Fortuna Advisors LLC (aebdocket@hbiplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88396266 - VIBE - 2777-4 |
Sent: | September 28, 2019 01:25:54 PM |
Sent As: | ecom127@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88396266
Mark: VIBE
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Correspondence Address:
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Applicant: Fortuna Advisors LLC
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Reference/Docket No. 2777-4
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: September 28, 2019
SUMMARY OF ISSUES that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant has applied to register VIBE in standard character form for “Business consultation services and providing business information in the field of share repurchases; business investigations, evaluations, expert appraisals, information and research; Expert evaluations and reports relating to corporate share repurchases; Consultancy services regarding business strategies with regard to corporate stock repurchases; consulting services in the field of corporate share repurchases; providing counseling to businesses regarding the financial impacts associated with share repurchases; advising companies as to timing share repurchases to enhance profitability; providing analytical services to businesses as to the desirability of stock repurchases at a given point in time” in International Class 35.
Registrant has registered VIBE in standard character form (RN: 4070825) for, in relevant part, “Business management; consultancy, advisory and information services to the aforementioned services” in International Class 35.
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.
Comparison of the Marks
In the present case, applicant’s mark is VIBE and registrant’s mark is VIBE. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Similarity of the Services
Applicant has applied to register VIBE in standard character form for “Business consultation services and providing business information in the field of share repurchases; business investigations, evaluations, expert appraisals, information and research; Expert evaluations and reports relating to corporate share repurchases; Consultancy services regarding business strategies with regard to corporate stock repurchases; consulting services in the field of corporate share repurchases; providing counseling to businesses regarding the financial impacts associated with share repurchases; advising companies as to timing share repurchases to enhance profitability; providing analytical services to businesses as to the desirability of stock repurchases at a given point in time” in International Class 35.
Registrant has registered VIBE in standard character form (RN: 4070825) for, in relevant part, “Business management; consultancy, advisory and information services to the aforementioned services” in International Class 35.
The marks are on encompassing services. 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 the broad wording “business management; consultancy, advisory and information services to the aforementioned services,” which presumably encompasses all goods and/or services of the type described, including applicant’s narrower listing of “Business consultation services and providing business information in the field of share repurchases; business investigations, evaluations, expert appraisals, information and research; Expert evaluations and reports relating to corporate share repurchases; Consultancy services regarding business strategies with regard to corporate stock repurchases; consulting services in the field of corporate share repurchases; providing counseling to businesses regarding the financial impacts associated with share repurchases; advising companies as to timing share repurchases to enhance profitability; providing analytical services to businesses as to the desirability of stock repurchases at a given point in time.” 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). Specifically, registrant’s broad business management consulting services encompass applicant’s various business management consulting services. 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 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.
Accordingly, use of identical VIBE marks by different parties on the identified services is likely to lead to consumer confusion or mistake as to the source of the services. Thus, registration is refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
IDENTIFICATION/CLASSIFICATION OF SERVICES
Applicant may adopt the following identification, if accurate, with changes highlighted in bold:
Class 35: Business consultation services; Providing business information; business investigations, evaluations, expert appraisals, information and research; Expert evaluations and reports relating to business matters; Consultancy services regarding business strategies with regard to corporate stock repurchases; business consulting services in the field of corporate share repurchases
Class 36: Financial consulting services in the field of corporate share repurchases; providing financial counseling to businesses regarding the financial impacts associated with share repurchases; providing financial advising to companies as to timing share repurchases to enhance profitability
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is not acceptable for any international class. See more information about specimens.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE GUIDELINES
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action
/Brandon Marsh/
Brandon N. Marsh
Senior Attorney
Law Office 127
(571) 270-3553
brandon.marsh@uspto.gov
RESPONSE GUIDANCE