Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  May 27, 2020

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

This Office action is in response to applicant’s communication filed on March 27, 2020.

 

In a previous Office action dated September 28, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: 

 

·         Section 2(d) Refusal—Likelihood of Confusion

·         Identification/Classification of Services

·         Multiple-Class Application Requirements

 

REQUIREMENTS SATISFIED: Based on applicant’s response, the following requirements have been satisfied:

 

·         Identification/Classification of Services

·         Multiple-Class Application Requirements

 

The examining attorney recognizes applicant’s arguments in favor of registration, but finds them unpersuasive for the reasons stated below. See rebuttal section. Accordingly, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

·         Section 2(d) Refusal—Likelihood of Confusion

 

All Relevant Arguments and Evidence Included with the Previous Office Action are Continued and Maintained and Incorporated Herein by Reference

 

SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION

 

Registration remains refused under Trademark Act Section 2(d), §1052(d), because the applicant’s mark so resembles the mark in U.S. Registration No. 4070825 as to cause confusion, to cause mistake, or to deceive. See TMEP §§1207.01 et seq.  See the previously enclosed registration.

 

In this case, applicant has applied to register the mark VIBE in connection with the following relevant goods: “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” in Class 36.  

 

The mark in Registration No. 4070825 is VIBE for use with “advertising; business management; business administration; the bringing together for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a retail audio specialist store, or from an audio specialist catalogue or internet website specializing in the sale of audio equipment and by mail order or by means of telecommunications; consultancy, advisory and information services to the aforementioned services” in Class 35.

 

Introduction to Section 2(d) Analysis

 

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 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).   

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.  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 and differences in the marks.”); TMEP §1207.01.

            Similarity 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

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. 

 

Relatedness of the Services

 

The compared 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 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).

 

Aapplicant has applied to register VIBE in standard character form for “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” in International Class 36.

 

Registrant has registered VIBE in standard character form for, in relevant part, “Business management; consultancy, advisory and information services to the aforementioned services” in International Class 35.

 

In this case, the following internet evidence, consisting of market evidence, establishing that the relevant services often emanates from a common source.  Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).  See, e.g.,

 

1. http://www.schgroup.com/ (showing SCH Group offers financial consulting and business management in the same channels of trade and the same field of use).

 

2. http://www.dmj.com/ (showing DMJ offers financial consulting and business consulting in the same channels of trade and the same field of use).

 

3. http://www.crcpallc.com/ (showing COSTAROTHBORT offers financial consulting and business consulting in the same channels of trade and the same field of use).

 

4. http://www.carminesrobbins.com/ (showing Carmines Robbins offers financial consulting and business consulting in the same channels of trade and the same field of use).

 

5. http://clarityfi.com/ (showing Clarityfi offers financial consulting and business consulting in the same channels of trade and the same field of use).

 

The attached evidence establishes that the services recited in the application and registration often travel in the same channels of trade and emanate from a common source. This evidence is probative in establishing that the services are indeed related, contrary to applicant’s assertion.  Thus, applicant’s assertion that the nature of the services are not similar is unpersuasive.   

 

Based on the relatedness of the services concerned, and as these services are identified by identical marks, contemporaneous use of the marks at issue is likely to lead consumers to mistakenly believe that the services emanate from a common source, or are otherwise affiliated. Because of the likelihood of source confusion, registration of the applied-for mark is refused under Section 2(d) of the Trademark Act.

 

Rebuttal

 

The applicant has argued that no likelihood of confusion exists, asserting: (1) significant difference between the services weighs heavily against a finding of a likelihood of confusion; (2) the nature of the services also weigh against a finding of a likelihood of confusion; and (3) sophisticated clients will be able to differentiate between the relevant services.

 

The examining attorney has considered the arguments by the applicant but has determined that they are not persuasive.

 

The attached evidence establishes that business management and consulting services are related to financial consulting services.  Further, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the services of the parties is required to support a finding of likelihood of confusion.  In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).  Where the marks of the respective parties are identical, as in this case, the degree of similarity or relatedness between the services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).  Here, given that the concerned marks are identical, the examining attorney need not show a high degree of relatedness between the services.  The attached evidence suffices to establish relatedness between the services.

 

Moreover, even if consumers of the compared services could be considered sophisticated and discriminating, it is settled that “even sophisticated purchasers are not immune from source confusion, especially in cases such as the present one involving identical marks and related services.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015) (citing In re Research & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); see also In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  The identity of the marks and the relatedness of the services “outweigh any presumed sophisticated purchasing decision.”  In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014).  Thus, applicant’s assertion that the consumers of registrant’s and applicant’s respective services are sophisticated purchasers is unpersuasive.

 

In conclusion, the attached evidence established that the relevant services are related and applicant has failed to include sufficient evidence or arguments to rebut such a determination.  As such, the refusal to register under Section 2(d) is hereby maintained and made FINAL.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

Byron S. Barahona, Esq.

/Byron Steve Barahona/

Examining Attorney

Law Office 127

Phone: (571)-270-5579

Byron.Barahona@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on May 27, 2020 for

U.S. Trademark Application Serial No. 88396266

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Byron S. Barahona, Esq.

/Byron Steve Barahona/

Examining Attorney

Law Office 127

Phone: (571)-270-5579

Byron.Barahona@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from May 27, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”